Paper 9
`Entered: February 16, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01727
`Patent 5,659,891
`____________
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Entered: February 16, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01727
`Patent 5,659,891
`____________
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2015-01727
`Patent 5,659,891
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`
`I. INTRODUCTION
`
`A. Background
`Petitioner, Samsung Electronics Co., Ltd., filed a Petition to institute
`an inter partes review of claims 1–5 of U.S. Patent No. 5,659,891 (“the ’891
`patent”). Paper 3 (“Pet.”). Patent Owner, Mobile Telecommunications
`Technologies, LLC, timely filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
`of the evidence in the Petition and the Preliminary Response, we determine
`that Petitioner has not established a reasonable likelihood of prevailing on
`the claims challenged in the Petition. Accordingly, we do not institute an
`inter partes review of any of the challenged claims of the ’891 patent.
`B. Additional Proceedings
`The ’891 patent is also challenged, currently, by Petitioner in
`IPR2015-01726. Petitioner states that the ’891 patent is asserted against
`Petitioner in the U. S. District Court for the Eastern District of Texas,
`Mobile Telecommunications Technologies, LLC v. Samsung Electronics Co.,
`Case No. 2:15-CV-183. Pet. 1. Petitioner also notes that the ’891 patent is
`asserted against other parties in at least (1) Mobile Telecommunications
`Technologies, LLC v. Apple, Inc., Case No. 2:13-CV-258 (“the Apple
`lawsuit”); (2) Mobile Telecommunications Technologies, LLC v. Leap
`Wireless International, Inc., Case No. 2:13-CV-885 (“the Leap lawsuit”); (3)
`Mobile Telecommunications Technologies, LLC v. T-Mobile USA, Inc., Case
`No. 2:13-CV-886, (“the T-Mobile lawsuit”); and (4) Mobile
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`Telecommunications Technologies, LLC v. AT&T Mobility LLC, Case No.
`2:14-CV-897, all in the Eastern District of Texas. Id. at 1–2.
`Petitioner states further that the ’891 patent was also challenged in
`other inter partes review proceedings, namely Apple Inc. v. Mobile
`Telecommunications Technologies, LLC, Case IPR2014-01035 (PTAB filed
`June 27, 2014); and T-Mobile USA, Inc. v. Mobile Telecommunications
`Technologies, LLC, Case IPR2015-00018 (PTAB filed Oct. 3, 2014).1 Id. at
`2.
`
`The ’891 Patent
`The ’891 patent (Ex. 1001), titled “Multicarrier Techniques in
`Bandlimited Channels,” generally relates to a method for multicarrier
`modulation (“MCM”) using geographically co-located transmitters to
`achieve a higher frequency transmission capacity within FCC emission mask
`limits. The method provides for a plurality of overlapping subchannels
`within a single bandlimited channel to provide higher data transmission
`capacity for a mobile paging system. Ex. 1001, 2:15–59. The technique
`involves transmitting a plurality of paging carriers, in corresponding
`overlapping subchannels, from the same location and within the mask-
`defined bandlimited channel, without bandlimiting each of the individual
`subchannels. Id. In this way, with the center frequencies of the plurality of
`modulated carriers within the single bandlimited channel, an optimum
`
`
`1 IPR2014-01035 and IPR2015-00018 were both terminated pursuant to
`settlement agreements between the respective parties. See T-Mobile USA,
`Inc. v. Mobile Telecomms. Techs., LLC, Case IPR2015-00018 (PTAB filed
`Oct. 3, 2014) (Paper 14); Apple Inc. v. Mobile Telecomms. Techs., LLC,
`Case IPR2014-01035 (PTAB filed June 27, 2014) (Paper 21).
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`transmission capacity is provided and the plurality of carriers may emanate
`from the same transmission source, i.e., an antenna. Id.
`An annotated version of Figure 3B of the ’891 patent, reproduced
`below, depicts two adjacent carriers asymmetrically located within a single,
`mask-defined, bandlimited channel.
`
`
`
`As depicted by Figure 3B of the ’891 patent, above, two carriers 32a
`and 32b are shown operating over two subchannels (no reference number)
`within a bandlimiting mask (annotated in yellow) defining the channel. The
`subchannels are asymmetrically aligned within the mask resulting in partial
`subchannel overlap. Id. at 4:24–30. The center frequencies of the carriers
`32a and 32b are shown by the vertical dashed lines, and, concomitant with
`the subchannels, carriers 32a and 32b also overlap. According to the ’891
`patent, geographic co-location of the transmitters reduces interference
`problems between adjacent subcarriers, thus allowing the spacing between
`subchannels to be reduced. Id. at 4:12–20. The ’891 patent explains that the
`practical implications of such an asymmetrical arrangement are a greater
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`range of operating parameters, essentially because more subchannels can be
`fit within the bandlimited mask without undue interference. Id. at 4:36–46.
`C. Illustrative Claim
`Claims 1, 3, and 5 are independent. Each of dependent claims 2 and 4
`depend directly from claims 1 and 3 respectively. Claim 1 illustrates the
`claimed subject matter and is reproduced below:
`1. A method of operating a plurality of paging carriers in
`a single mask-defined, bandlimited channel comprising the
`step of transmitting said carriers from the same location with
`said carriers having center frequencies within said channel
`such that the frequency difference between the center frequency
`of the outer most of said carriers and the band edge of the mask
`defining said channel is more than half the frequency difference
`between the center frequencies of each adjacent carrier.
`
`The Alleged Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable on the
`following specific grounds.2
`References
`Basis
`Cimini3
`§ 103
`Cimini, Raith4, and
`§ 103
`Alakija5
`
`Claims Challenged
`1–4
`5
`
`
`2 Petitioner supports its challenge with a Declaration of Dr. Apostolos K.
`Kakaes, Ph.D. (Ex. 1003, “Kakaes Decl.”). See infra.
`3 Ex. 1013, Leonard J. Cimini Jr., Analysis and Simulation of a Digital
`Mobile Channel Using Orthogonal Frequency Division Multiplexing, IEEE
`TRANSACTIONS ON COMM. 665 (1985).
`4 Ex. 1014, WO 89/08355 (Sept. 8, 1989).
`5 Ex. 1015, C. Alakija & S.P. Stapleton, A Mobile Base Station Phased
`Array Antenna, IEEE INT’L CONF. ON SELECTED TOPICS WIRELESS COMM.,
`June 1992, at 118.
`
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`II. CLAIM CONSTRUCTION
`A. Legal Standard
`The ’891 patent is expired, and “the Board’s review of the claims of
`an expired patent is similar to that of a district court’s review.” In re
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms
`generally are given their ordinary and customary meaning, as understood by
`a person of ordinary skill in the art, at the time of the invention, taking into
`consideration the language of the claims, the specification, and the
`prosecution history of record because the expired claims are not subject to
`amendment. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc).
`
`1. Single mask-defined, bandlimited channel
`Independent claims 1, 3, and 5 recite a “single mask-defined,
`bandlimited channel.” According to Petitioner, the term means: “a channel
`confined to a frequency range.”6 Pet. 5. Petitioner urges that we adopt the
`same construction set forth in other IPR decisions construing this term and
`as the District Court construed the same term in the T-Mobile lawsuit.
`Patent Owner proposes we interpret the term as a “channel confined to a
`frequency range and power spectral density mask.” Prelim. Resp. 10.
`The ’891 patent indicates that a mask-defined bandlimited channel is
`applied where “[t]he FCC requires signals to be confined within emission
`limit masks in order to prevent interference caused by signals straying or
`spilling into adjacent channels.” Ex. 1001, 1:57–59. In the context of the
`
`6 In the Apple lawsuit, the parties stipulated that a “single mask-defined,
`bandlimited channel” means, “a channel confined to a frequency range.”
`Ex. 1006, 76.
`
`6
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`’891 patent, a “bandlimited channel” is also where “carriers operating at
`different frequencies are fit within a single bandwidth allocation in a manner
`consistent with FCC mask requirements.” Id. at 5:15–19. The Specification
`thus describes this term essentially as a single range of frequencies in the
`frequency band where a spectral power mask limits the frequency range.
`We agree with Patent Owner’s position that one of ordinary skill in
`the art would have at least a bachelor’s degree in electrical engineering,
`several years of experience in wireless telecommunications “and would
`possess knowledge regarding frequency, amplitude, and masks as used in
`telecommunications.” Prelim. Resp. 10. Because one of ordinary skill in
`the art understands the concepts and relationship of frequency, channel,
`bandwidth and mask, Patent Owner’s claim construction is essentially a
`restatement of the plain meaning of the claim language itself. That is, one of
`ordinary skill in the art would understand from a reasonable reading of the
`claim language on its face that a “bandlimited channel” is a single limited
`frequency range, and that a “mask” is the constraint applied to define that
`limited frequency range. Petitioner’s claim construction, on the other hand,
`states that the channel is “confined,” but that does not sufficiently, in our
`view, account for the term “mask-defined,” as it is recited expressly in the
`claims. This is consistent with the Specification further explaining that
`“carriers operating at different frequencies are fit within a single bandwidth
`allocation in a manner consistent with FCC mask requirements.” Ex. 1001,
`5:11–19.
`Although both parties have proposed claim constructions for this
`phrase, on the record before us we are not apprised as to any reason why this
`phrase needs to be construed apart from the plain language of the claim.
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`Accordingly, we interpret this phrase according to its plain and ordinary
`meaning as understood by one of ordinary skill in the art in light of the
`specification.
`2. Plurality of transmitters
`Independent claim 5 recites a “plurality of transmitters.” According
`to Petitioner, the term means: “at least two transmitters.” Pet. 5. Patent
`Owner does not provide a construction.
`It is well settled that “‘plurality,’ when used in a claim, refers to two
`or more items, absent some indication to the contrary.” Dayco Prods., Inc.
`v. Total Containment, Inc., 258 F.3d 1317, 1327-28 (Fed. Cir. 2001) (citing
`York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1575
`(Fed. Cir. 1996)). Thus, for purposes of this Decision, we interpret
`“plurality of transmitters” as two or more transmitters.
`3. Band edge
`Independent claims 1, 3, and 5 recite the limitation, “the band edge,”
`without proper antecedent basis. Patent Owner proposes that “the band
`edge” means “the innermost frequencies at which the mask requires
`attenuation of the signal.” Prelim. Resp. 14. Petitioner contends that “the
`band edge” should be construed as “a band edge of the single mask-defined,
`bandlimited channel.” Pet. 7.
`On its face, in each of claims 1, 3, and 5, the limitation reads in
`context “the band edge of the mask defining said channel” (emphasis added),
`clearly referring to the mask in the “single mask-defined, bandlimited
`channel” limitation. Patent Owner asserts that the edges of a mask are
`defined with respect to frequency on the y-axis, not power as shown on the
`x-axis, for example in Figures 3B and 4 of the ’891 patent. Prelim. Resp.
`
`8
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`15–17. We agree with this position to an extent, because as we discussed
`above, one of ordinary skill in the art would have understood a bandlimited
`channel defined by a mask as essentially a single range of frequencies in the
`frequency band along the y-axis where a spectral power mask limits the
`frequency range. Ex. 1001, 5:15–19.
`Our review of the Specification reveals, however, no evidence of the
`term “innermost,” or any persuasive description or definition of “band edge”
`that portrays the mask having, for instance, innermost and outermost edges.
`In the Brief Description of the Drawings, the Specification describes the
`graph in Figure 3A as, “a graph depicting two submasks defining two
`subchannels in a single, mask-defined bandlimited channel.” Id. at 3:11–12
`(emphasis added). In Figure 3A, below, the single mask-defined
`bandlimited channel 31 is illustrated by two spaced apart vertical lines (∆y =
`0) extending from the frequency (f) (y-axis) with each vertical line joined by
`two diagonal lines to a horizontal line (∆x = 0). Id. at 4:24–34.
`
`
`Because there are no values shown on the x or y axis, Figure 3A in the
`’891 patent illustrates, somewhat arbitrarily, the boundaries, or edges, in
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`terms of frequency and power of a “single mask-defined bandlimited
`channel.”
`Keeping Patent Owner’s assertion in mind, i.e. that the band limited
`channel is specifically the frequency range along the y-axis, (Prelim. Resp.
`15–17), than the vertical lines (∆y = 0) at their intersection with the y-axis
`depict the frequency boundaries, or edges, of the single mask defined
`bandlimited channel. The Specification of the ’891 patent explains that an
`emission mask attenuates the signal at the “band edge”:
`The FCC requires signals to be confined within emission limit
`masks in order to prevent interference caused by signals
`straying or spilling into adjacent channels. FCC masks typically
`require the power spectral density of a signal to be attenuated at
`least 70 dB at the band edge.
`
`
`Ex. 1001, 1:57–61 (emphasis added). The Specification depicts an example
`of attenuation at 70dB, 10 kHz from the center frequency, in Figure 4,
`shown below:
`
`
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`10
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`
`Figure 4 is a graph of an FCC emissions mask requiring the power
`spectral density to be attenuated to at least 70dB within 10 kHz from center
`frequency. Id. at 16–18.
`From the Specification and the drawings, it is a reasonable reading of
`the written description to understand “the band edge” as the vertical lines at
`10 kHz either side of the center frequency. What is not clear from the
`description, is that “the band edge” is, or includes, the specific frequencies
`between 5 and 10 kHz along the diagonal line, such that an “innermost”
`frequency, e.g. 5 kHz from center frequency, is the claimed “band edge.”
`Patent Owner contends that construing the band edge as, “the
`innermost frequencies at which the mask requires attenuation of the signal”
`is proper because the Specification states that “the frequency difference
`between the center frequency of each carrier and the nearest band edge of
`the mask is greater than half the frequency difference between the center
`frequencies of the two carriers.” Prelim. Resp. 18 (quoting Ex. 1001, 4:30–
`35). We are not persuaded at this point in the proceeding to read such a
`limitation from the Specification into the claims. As an initial matter, on
`their face, claims 1, 3, and 5 simply recite “the band edge,” not the “nearest
`band edge.” Ex. 1001, 6:9, 21, 40–41. See Phillips, 415 F.3d at 1314
`(“Quite apart from the written description and the prosecution history, the
`claims themselves provide substantial guidance as to the meaning of
`particular claim terms.”). Although understanding the claim language may
`be aided by the explanations contained in the written description, it is
`important not to import into a claim limitations that are not a part of the
`claim. See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
`Cir.), cert. denied, 135 S. Ct. 719 (2014) (“While we read claims in view of
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`the specification, of which they are a part, we do not read limitations from
`the embodiments in the specification into the claims.”). The Specification
`support relied on by Patent Owner is an embodiment relating to
`asymmetrically located subchannels as shown for example in Figure 3B. It
`is well-settled that a particular embodiment appearing in the written
`description may not be read into a claim when the claim language is broader
`than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
`870, 875 (Fed. Cir. 2004).
`Additionally, we consider the Specification to understand how one of
`ordinary skill in the art would have interpreted specific claim terms. Phillips
`415 F.3d at 1313 (“Importantly, the person of ordinary skill in the art is
`deemed to read the claim term not only in the context of the particular claim
`in which the disputed term appears, but in the context of the entire patent,
`including the specification.”). The embodiment disclosed in the
`Specification of the ’891 patent to which Patent Owner refers does not,
`however, describe or define the term “nearest band edge” with any
`specificity. The Specification states:
`[i]n accordance with this asymmetry, the frequency difference
`between the center frequency of each carrier and the nearest
`band edge of the mask is greater than half the frequency
`difference between the center frequencies of the two carriers
`
`Ex. 1001 4:30–34. We understand this embodiment to define, in the
`circumstance of asymmetrically located subchannels, a relative frequency
`difference between the center frequency and the nearest band edge. But we
`are not persuaded from the context of the description that one of ordinary
`skill in the art would have understood that the “nearest band edge” includes
`merely frequencies along diagonal lines as shown for example in Figures
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`3A, 3B and 4. Indeed, from a plain reading of the Specification and
`observing Figure 3B, it is at least as likely from this description that the
`“nearest band edge” refers to the vertical line depicting the band edge of the
`mask on the left side of Figure 3B, reproduced below, and its relationship to
`the center frequency of the left-most carrier 32a, as compared with the
`vertical line depicting the band edge of the mask, farther away, on the right
`side of Figure 3B.
`
`
`Figure 3B of the ’891 patent, above, depicts two carriers 32a and 32b
`operating over two subchannels (no reference number) within a bandlimited
`mask (also no reference number) defining the channel.
`
`Additionally, Patent Owner argues that their asserted construction is
`consistent with the District Court’s construction in the Leap lawsuit. Prelim.
`Resp. 17–18. We have reviewed the District Court’s Claim Construction
`Order (Ex. 1007) in the Leap lawsuit. At this stage of the proceeding,
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`however, we recognize that we have not been presented with the same
`evidence and arguments presented to the District Court.
`Nothing in the intrinsic or extrinsic record proffered by Patent Owner,
`at this point in the proceeding, persuades us that “band edge” should be
`construed as “innermost band edge” or a “nearest band edge” in accordance
`with Patent Owner’s characterization of an embodiment described in the
`Specification. Accordingly, we are not persuaded that the evidence supports
`Patent Owner’s asserted claim construction for the reasons stated above. For
`purposes of this Decision, “the band edge” means: “a band edge of the single
`mask-defined, bandlimited channel.”
`4. Each adjacent carrier
`Patent Owner asserts that “each adjacent carrier” should be construed
`as “every single carrier, two of which having a common endpoint or border.”
`Prelim. Resp. 28–29. Specifically, Patent Owner relies upon the definition
`of “adjacent” as meaning “having a common endpoint or border,” from
`Merriam-Webster’s Online Dictionary. Id. (citing Adjacent, MERRIAM-
`WEBSTER, http://www.merriam-webster.com/dictionary/adjacent).
`Petitioner argues that the term should be given its plain and ordinary
`meaning. Pet. 8.
`Upon review, we disagree with Patent Owner that the meaning of
`“adjacent” as used in the ’891 patent is limited to requiring that adjacent
`carriers must have a common endpoint or border. When construing claims,
`our “focus must begin and remain centered on the language of the claims
`themselves, for it is that language that the patentee chose to use ‘to
`particularly point[ ] out and distinctly claim[ ] the subject matter which the
`patentee regards as his invention.’” Brookhill-Wilk 1, LLC v. Intuitive
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`Surgical, Inc., 326 F.3d 1215, 1220 (Fed. Cir. 2003) (alterations in original)
`(quoting Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323,
`1331 (Fed. Cir. 2001)). Nowhere in the specification or claims do we find
`the phrase “having a common endpoint or border.” Nor have the parties
`pointed to any description indicating such a requirement. In the context of
`the claims, “adjacent” means simply “next to.” Consulting Merriam-
`Webster’s Online Dictionary from this perspective, we note that “adjacent”
`is also defined as “immediately preceding or following.” MERRIAM-
`WEBSTER, http://www.merriam-webster .com/dictionary/adjacent (last
`visited Feb. 10, 2016. This dictionary definition aligns with the claim
`language and is consistent with use of the term throughout the Specification.
`The Specification states that:
`Moreover, the carriers need not be symmetrically or
`evenly spaced within the mask defining the channel. That is, the
`frequency spacings between adjacent carriers, while symmetric
`to each other, can be smaller than the frequency spacings
`between the band edges of the mask and the nearest respective
`carrier. Indeed, carrier spacings may be irregular such that the
`carriers are asymmetrically located within the mask without
`incurring undue interference.
`
`Ex. 1001, 4:15–23 (emphasis added). We understand in the context of
`this disclosure that adjacent carriers (i.e., carriers next to one another) may
`have symmetric frequency spacings with respect to one another, or
`potentially “irregular” asymmetrical spacing with respect to one another,
`within the mask. Id. Whether the carriers are symmetric or asymmetrically
`spaced, we find no persuasive intrinsic or extrinsic evidence requiring that
`adjacent carriers must have a common endpoint or border as Patent Owner
`asserts.
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`Consequently, for the purpose of this Decision, we construe the term
`“adjacent” in the phrase “each adjacent carrier,” according to its plain and
`ordinary meaning in the context of the claims and Specification, to mean
`“next to.”
`5. Other constructions
`We decline to provide explicit constructions for the remaining claim
`terms provided by the parties. In the case of “paging carriers,” the
`construction is immaterial to our Decision to Institute, as the parties do not
`dispute that certain elements are disclosed by the prior art. For the words
`“operating” and “transmitter,” we do not consider the proffered
`constructions to provide any clarity over the terms themselves.
`III. ANALYSIS
`We turn now to Petitioner’s asserted grounds of unpatentability to
`determine whether Petitioner has met the threshold standard of 35 U.S.C.
`§ 314(a).
`A. Claims 1–4 – Obviousness over Cimini in view of the ordinary
`skill in the art
`
`
`Petitioner asserts that claims 1–4 would have been obvious over
`Cimini. Pet. 11. We determine that Petitioner has not established a
`reasonable likelihood of prevailing on its assertion that claims 1–4 are
`obvious for the reasons explained below.
`1. Overview of Cimini
`Cimini is titled “Analysis and Simulation of a Digital Mobile Channel
`Using Orthogonal Frequency Division Multiplexing,” and relates to
`problems associated with multi-path signal propagation in a mobile cellular
`system when carrier signals being transmitted to a mobile unit are scattered,
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`for example by buildings and other structures. Ex. 1013 § I. Another issue
`Cimini explains is co-channel interference in a cellular system caused by
`“mobiles simultaneously using the same channel in different locations.” Id.
`Cimini proposes to improve mobile cellular systems by providing symbols,
`i.e. carriers, that are transmitted simultaneously in parallel, and rather than
`being “divided into N nonoverlapping frequency subchannels . . . [a] more
`efficient use of bandwidth can be obtained with a parallel system if the
`spectra of the individual subchannels are permitted to overlap.” Id.; see also
`id. § II. Cimini teaches a modulation scheme using Orthogonal Frequency
`Division Multiplexing (“OFDM”), for N subcarrier frequencies across a
`bandwidth ∆f. Cimini explains further with respect to the subcarrier
`bandwidth ∆f that:
`For orthogonal frequency spacing and strictly band-limited
`spectra (bandwidth ∆f) with δ = ½ ∆f = ½ N∆t, β = log2 M
`bits/s/Hz. In reality, however, the spectra overflow this
`minimum bandwidth by some factor . . .
`
`Id. § II. A.
`In Figure 10, below, Cimini depicts a “[d]ata setup used in
`simulations” illustrating subcarrier group 1, subcarrier group 2, and
`subcarrier group 3 along with Pilot signals extending across a 7.5 kHz
`channel or “data window.” Id. § III. B.
`
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`With respect to Figure 10 above, Cimini describes 86 subcarriers
`across 5 kHz with each subcarrier separated by ∆f 58.59 Hz and all within
`subcarrier groups 1–3. Id. § III. C. Pilot carriers account for 2 kHz between
`the subcarrier groups, and, Cimini further explains that “the design of a
`mobile telephone system must also include measures to limit adjacent
`channel interference. This is accomplished by leaving 250 Hz gaps at each
`end of the band.” Id. § III. B.
`2. Discussion
`As discussed below, claims 1–4 are asserted to be unpatentable over
`Cimini under 35 U.S.C. § 103(a).
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” In Graham v. John Deere Co., 383 U.S. 1 (1966),
`the Court set out a framework for applying the statutory language of § 103:
`Under § 103, the scope and content of the prior art are to
`be determined; differences between the prior art and the
`claims at issue are to be ascertained; and the level of
`ordinary skill in the pertinent art resolved. Against this
`background, the obviousness or nonobviousness of the
`subject matter is determined.
`Id. at 17. “While the sequence of these questions might be reordered in any
`particular case, the factors continue to define the inquiry that controls.” KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007).
`For an inter partes review, under the statute, any petition must
`“identif[y] . . . with particularity . . . the grounds on which the challenge to
`each claim is based.” 35 U.S.C. § 312(a)(3). Petitioner has the burden of
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`proof to establish that it is entitled to the requested relief. Id. § 42.20(c).
`The Petition must include a full statement of the reasons for the relief
`requested, including a detailed explanation of the significance of the
`evidence. Id. § 42.22(a). The Petition must include a statement of the
`relevance of the evidence to the challenge raised. 37 C.F.R. § 104(b)(5).
`“The Board may exclude or give no weight to the evidence where a party
`has failed to state its relevance or to identify specific portions of the
`evidence that support the challenge.” Id. “Thus, we will address only the
`basis, rationale, and reasoning put forth by the Petitioner in the petition, and
`resolve all vagueness and ambiguity in Petitioner’s arguments against the
`Petitioner.” Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case
`CBM2012-00003, slip op. at 10 (PTAB Oct. 25, 2012) (Paper 8). It is
`Petitioner’s responsibility “to explain specific evidence that support its
`arguments, not the Board’s responsibility to search the record and piece
`together what may support Petitioner’s arguments.” Dominion Dealer Sols.,
`LLC v. AutoAlert, Inc., Case IPR2013-00225, slip op. at 4 (PTAB Oct. 10,
`2013) (Paper 15).
`Against this general background, we consider the reference, the level
`of ordinary skill in the art, as well as other evidence and arguments on which
`Petitioner relies.
`a. Claim 1
`Petitioner argues that Cimini discloses a plurality of carriers operating
`in a “narrow-band digital mobile channel.” Pet. 14–15 (quoting Ex. 1013,
`Abstract). Also, Petitioner contends that, although Cimini describes a
`mobile cellular network, one of ordinary skill in the art would have known
`that a pager was “one of the most well-known devices for operation in a
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`IPR2015-01727
`Patent 5,659,891
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`‘narrow-band digital mobile channel’” described by Cimini. Id. at 15.
`Petitioner further asserts that Cimini discloses a “mask-defined bandlimited
`channel” as recited in claim 1 because Cimini “specifies that the spectra is
`‘strictly band-limited’ [and] one of ordinary skill in the art would understand
`the channel described by Cimini to be mask-defined and bandlimited.” Id. at
`13 (quoting Ex. 1013, 3 § II.A) (citing Ex. 1003 ¶ 21). Based on this
`disclosure, Petitioner argues essentially that the 7.5 kHz channel shown in
`Cimini’s Figure 10, above, is a “mask-defined bandlimited channel.” Id.
`Additionally, Petioner’s declarant, Dr. Kakaes, states that one or ordinary
`skill “would have at least a B.S. degree in electrical engineering, computer
`science, computer engineering, or equivalent education. This person would
`also need to have at least two years of experience in the design and
`configuration of wireless paging systems, or other two-way wireless
`communications systems.” Ex. 1003 ¶ 10.
`Patent Owner contends that a person of ordinary skill in the art would
`have possessed “a bachelor’s degree in electrical [engineering] or its
`equivalent and about four years working in the field of wireless
`telecommunications networks and would possess knowledge regarding
`frequency, amplitude, and masks as used in telecommunications, or
`equivalent education and work experience.” Prelim. Resp. 10. Based on the
`level of ordinary skill in the art, upon which the parties essentially agree, we
`are persuaded by Patent Owner’s contention that one of ordinary skill at the
`time of filing of the application that became the ’891 patent, would have
`understood “[a] mask in telecommunications . . . to be an emission mask or
`power spectral density mask,” and that “the bandlimited channel is defined
`by a single power spectral density mask.” Id. at 10–11.
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`IPR2015-01727
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`
`Based on the level of ordinary skill in the art, as we turn to address the
`scope and content of the prior art, we are not persuaded by Petitioner’s
`evidence and analysis that Cimini, as understood by one of ordinary skill in
`the art, discloses either expressly or inherently a “mask-defined bandlimited
`channel.”
`As an initial matter, we are not persuaded that the plain reading of the
`phrase used in Cimini, “strictly band-limited spectra,” describes a frequency
`spectra “mask” as one of ordinary skill in the art would understand it. The
`“mask,” as described in the specification of the ’891 patent, is a specific
`requirement that defines frequency attenuation or emission limit
`requirements that confines the spectral limits of a signal within
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