`
`
`In re Patent of: Hays et al.
`U.S. Patent No.: 5,659,891
`Issue Date:
`August 19, 1997
`Appl. Serial No.: 08/480,718
`Filing Date:
`June 7, 1995
`Title:
`
`Multicarrier Techniques in Bandlimited Channels
`IPR:
`
`IPR2016-00766
`
`
`
`
`DECLARATION OF DR. JAY P. KESAN
`
`1. My name is Dr. Jay P. Kesan. I understand that I am submitting a
`
`declaration for Mobile Telecommunications Technologies LLC (MTel”),
`
`offering technical opinions in connection with the above-referenced Inter
`
`Partes Review proceeding pending in the United States Patent and
`
`Trademark Office for U.S. Patent No. 5,659,891 (the “’891 patent”), and
`
`prior art references relating to its subject matter. My current curriculum
`
`vitae is attached as Appendix A.
`
`2. I also provide selected background information here relevant to myself,
`
`my experience, and this proceeding.
`
`3. I am a Professor at the University of Illinois at Urbana-Champaign,
`
`where I am appointed in the College of Law, the Department of Electrical
`
`and Computer Engineering, the Coordinated Science Laboratory, and the
`
`Information Trust Institute. I have a Ph.D. in Electrical and Computer
`
`
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 1, IPR2016-00766
`
`
`
`Engineering from the University of Texas at Austin and a J.D., summa
`
`cum laude from Georgetown University. I have also worked as a
`
`research scientist at the IBM T.J. Watson Research Center, and I am a
`
`named inventor on several United States patents. I have also served as a
`
`technical expert and legal expert in patent infringement lawsuits. I have
`
`been appointed to serve as a Special Master in patent disputes.
`
`Additionally, I have been appointed as a Thomas Edison Scholar at the
`
`United States Patent and Trademark Office (“USPTO”).
`
`4. My opinions in this report are based on my experience and expertise in
`
`the field relevant to the Asserted Patents. To prepare this Report, I have
`
`reviewed and considered materials shown in Appendix B and referred to
`
`herein, principally including the ‘891 patent and its file history, the
`
`Petrovic reference, and the extrinsic evidence cited.
`
`5. I anticipate using some of the above-referenced documents and
`
`information, or other information and material that may be produced
`
`during the course of this proceeding (such as by deposition testimony), as
`
`well as representative charts, graphs, schematics and diagrams,
`
`animations, and models that will be based on those documents,
`
`information, and material, to support and to explain my testimony before
`
`the Board regarding the validity of the ’891 patent.
`
`
`
`2
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 2, IPR2016-00766
`
`
`
`6. This report is based on information currently available to me. To the
`
`extent that additional information becomes available (whether from
`
`documents that may be produced, from testimony that may be given or in
`
`depositions yet to be taken, or from any other source), I reserve the right
`
`to continue the investigation and study. I may thus expand or modify my
`
`opinions as that investigation and study continues. I may also
`
`supplement my opinions in response to such additional information that
`
`becomes available to me, any matters raised by and/or opinions provided
`
`by MTel’s experts, or in light of any relevant orders from the Board.
`
`7. Throughout this report, I cite to certain documents or testimony that
`
`support my opinions. These citations are not intended to be and are not
`
`exhaustive examples. Citation to documents or testimony is not intended
`
`to signify and does not signify that my expert opinions are limited by or
`
`based solely on the cited sources.
`
`8. I am an attorney, registered to practice before the United States Patent
`
`and Trademark Office, and a legal expert in United States Patent Law.
`
`9. A person of ordinary skill in the art at the time of the invention (POSA)
`
`of the ’891 Patent would possess 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
`
`
`
`3
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 3, IPR2016-00766
`
`
`
`regarding frequency, amplitude, and masks as used in
`
`telecommunications, or equivalent education and work experience.
`
`10. The ‘891 Patent is directed to the field of telecommunications and to
`
`systems and methods for operating paging carriers.
`
`11. A brief background on carriers is helpful in understanding how the ‘891
`
`Patent is operating carriers.
`
`12. Most simply, in telecommunications an unmodulated carrier is, in general,
`
`sinusoidal waveform. Drawing 1 below illustrates a carrier with a
`
`frequency of 1 Hz and an amplitude Ac.
`
`Amplitude
`
`Ac
`
`0
`
`1
`
`Time (s)
`Drawing 1
`
`
`
`13. Drawing 1 depicts an ideal carrier in the time domain. However, in
`
`telecommunications, it is frequently useful to view carriers in the
`
`frequency domain. In the frequency domain, the ideal carrier of Drawing
`
`1 has just a single frequency of 1 Hz. Drawing 2 below illustrates the
`
`carrier of Drawing 1 as shown in the frequency domain.
`
`
`
`4
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 4, IPR2016-00766
`
`
`
`0
`
`1
`Frequency (Hz)
`Drawing 2
`
`
`
`14. In Drawing 2, the carrier is shown as an impulse with a single frequency.
`
`This is because the sinusoidal waveform of Drawing 1 is ideal.
`
`15. In the real word, it is not possible to transmit an ideal sinusoidal
`
`waveform even for an unmodulated carrier. Additional unwanted
`
`frequencies are generated. As a result, even in the frequency domain, a
`
`carrier has more than one frequency.
`
`16. In Drawing 2, the y-axis is not specified. In telecommunications, the
`
`frequencies of a carrier are often plotted in relation to their peaks
`
`intensities or their power levels. These types of plots can be referred to
`
`as an emission spectra. Drawing 3 below illustrates an emission
`
`spectrum for a real world carrier.
`
`
`
`5
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 5, IPR2016-00766
`
`
`
`0
`
`1
`Frequency (Hz)
`Drawing 3
`
`
`
`0
`
`‐50
`
`Power (dB)
`From Max.
`Attenuation
`
`17. In Drawing 3, the carrier’s attenuated power levels are plotted versus
`
`frequency. Drawing 3 shows that a real unmodulated carrier in an
`
`emission spectrum has a shape that is dependent on frequency.
`
`18. Radio frequency carriers are regulated in the United States by the FCC.
`
`The FCC specifies frequency channels or ranges for carriers and specifies
`
`a specific use for each channel. The FCC also specifies the maximum
`
`power levels for the carriers in each channel.
`
`19. In col. 1, ln. 12-14, the ‘891 Patent describes that, at that time, the
`
`number of channels allocated by the FCC for mobile page use was
`
`limited. However, at that time, the demand for those channels was
`
`increasing rapidly. 1001 at 1:11-18. As a result, the ‘891 Patent is
`
`directed to the problem of the limited channels allocated for mobile
`
`paging at the time of the ‘891 Patent.
`
`
`
`6
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 6, IPR2016-00766
`
`
`
`20. The ‘891 Patent discusses two known solutions to this problem. The first
`
`solution is to increase the number of messages transmitted in a channel in
`
`a given period of time. Id. at 1:25-27. This can be stated most simply as
`
`increasing the message rate of the channel. The second solution is to
`
`increase the number of messages send at the same time by placing
`
`multiple carriers in the same channel. Id. at 1:37-46. This can be stated
`
`most simply as increasing the message capacity of the channel.
`
`21. The ‘891 Patent describes that a known method of increasing the
`
`message capacity of a channel is to use more than one carrier in the
`
`channel. Id.
`
`22. The ‘891 Patent explains, however, that placing more than one carrier in
`
`the same channels has traditionally required “stringent protection levels
`
`between subchannels” of the multiple carriers. Id. at 2:1-6. The stringent
`
`protection levels described by the ‘891 Patent are the additional
`
`limitations the FCC places on each type channel. Id. at 1:57-67. These
`
`additional limitations are referred to as an emission mask for the channel.
`
`23. 47 C.F.R. §22.99 of the current FCC regulations defines an emission
`
`mask as “[t]he design limits imposed, as a condition or certification, on
`
`the mean power of emissions as a function of frequency both within the
`
`authorized bandwidth and in the adjacent spectrum.”
`
`
`
`7
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 7, IPR2016-00766
`
`
`
`24. The ‘891 Patent describes that FCC emission masks are directed to the
`
`near-far interference problem that occurs between carriers. Ex. 1001 at
`
`4:12-13.
`
`25. The near-far interference problem can be illustrated by considering two
`
`adjacent carriers that are very close in frequency. Drawing 4 below
`
`illustrates two adjacent carriers that are very close in frequency.
`
`Carrier 1
`
`Carrier 2
`
`0
`
`‐50
`
`Power (dB)
`From Max.
`Attenuation
`
`0
`
`1.4
`1
`Frequency (Hz)
`Drawing 4
`
`
`
`26. In Drawing 4, Carrier 1 has a center frequency of 1 Hz and Carrier 2 has
`
`a center frequency of 1.4 Hz. Near-far interference occurs when a
`
`receiver is much closer (near) to, for example, Carrier 1 and much farther
`
`(far) from Carrier 2. Drawing 5 below illustrates the near-far interference
`
`experienced by a receiver that receives Carrier 1 and Carrier 2.
`
`
`
`8
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 8, IPR2016-00766
`
`
`
`Carrier 1
`
`Carrier 2
`
`Far
`
`Near
`Receiver
`Transmitter 1
`Drawing 5
`
`Transmitter 2
`
`
`
`27. In Drawing 5, the Receiver receives Carrier 1 from Transmitter 1, which
`
`is close. The Receiver receives Carrier 2 from Transmitter 2, which is far.
`
`Due to the inverse square law of electromagnetic power transmission the
`
`Receiver receives much more power from Transmitter 1 than from
`
`Transmitter 2. See https://en.wikipedia.org/wiki/Near-far_problem as of
`
`June 13, 2016. As a result, at the Receiver, Carrier 2 cannot be
`
`distinguished from a portion of Carrier 1.
`
`28. The ‘891 Patent explains that near-far problem of Drawing 5, for
`
`example, can be eliminated by placing emission mask limitations on the
`
`two carriers. Drawing 6 below illustrates how placing emission mask
`
`limitations on the two carriers eliminates the near-far problem for the two
`
`carriers of Drawing 4.
`
`
`
`9
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 9, IPR2016-00766
`
`
`
`Carrier 1
`
`Carrier 2
`
`Mask 1
`
`Mask 2
`
`0
`
`‐50
`
`Power (dB)
`From Max.
`Attenuation
`
`0
`
`1.4
`1
`Frequency (Hz)
`Drawing 6
`
`
`
`29. In Drawing 6, Mask 1 requires that Carrier 1 is narrowed so that
`
`additional frequencies are not generated at a level that will interfere with
`
`Carrier 2. Similarly, Carrier 2 is narrowed so that additional frequencies
`
`are not generated at a level that will interfere with Carrier 1. Drawing 7
`
`below illustrates how these masks can eliminate the near-far interference
`
`problem.
`
`Carrier 1
`
`Carrier 2
`
`Far
`
`Near
`Receiver
`Transmitter 1
`Drawing 7
`
`Transmitter 2
`
`
`
`
`
`10
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 10, IPR2016-00766
`
`
`
`30. In Drawing 7, the Receiver again receives Carrier 1 from Transmitter 1,
`
`which is close. And, the Receiver receives Carrier 2 from Transmitter 2,
`
`which is far. Carrier 1 and Carrier 2 are also still received at the Receiver
`
`at different power levels due to the inverse square law. However, Carrier
`
`1 no longer interferes with Carrier 2, because Carrier 1 was required to
`
`attenuate its signal more at the frequencies that would interfere with
`
`Carrier 2.
`
`31. Although the “stringent protection levels” afforded by the subchannel
`
`masks of Drawing 6 eliminate the near-far problem as shown in Drawing
`
`7, the ‘891 Patent teaches away from this solution by listing its
`
`drawbacks. Ex. 1001 at 2:1-12. The chief drawback listed is a
`
`symmetric condition required by this approach. This symmetric
`
`condition is that “[t]he carriers are symmetrically located within the
`
`channel such that they are evenly spaced relative to each other and to the
`
`band edges of the primary mask defining the primary channel.” Id. at
`
`2:6-9. Drawing 8 below illustrates the symmetric condition.
`
`
`
`11
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 11, IPR2016-00766
`
`
`
`Symmetric Condition Dm = Dc
`Carrier 1
`Carrier 2
`Primary
`Mask
`Dc
`
`Dm
`
`0
`
`‐50
`
`Power (dB)
`From Max.
`Attenuation
`
`0
`
`1.4
`1
`Frequency (Hz)
`Drawing 8
`
`
`32. In Drawing 8, distance Dc is the spacing between Carrier 1 and Carrier 2.
`
`Distance Dm is the spacing between Carrier 1 and the band edge of the
`
`Primary Mask of the channel. The symmetric condition of the ‘891
`
`Patent, therefore, occurs when Dc = Dm.
`
`33. The ‘891 Patent teaches away from the symmetric condition by
`
`describing that it “often necessitates the need for sophisticated receiver
`
`and transmitter schemes.” Ex. 1001 at 2:11-12.
`
`34. Instead of using subchannels that require the symmetric condition, the
`
`‘891 Patent describes and claims transmitting multiple carriers from the
`
`same location that are in the same channel in order to increase the
`
`message capacity of the channel. Id. at 3:44-46.
`
`35. The co-location of the transmission by the invention of the ‘891 Patent is
`
`shown in Figures 1 and 2. Figure 1 is reproduced below.
`12
`
`
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 12, IPR2016-00766
`
`
`
`
`
`36. Figure 1 of the ‘891 Patent shows that two carriers are transmitted from
`
`the same location by one antenna. From Figure 1 and the stated purpose
`
`of the ‘891 Patent, a POSA would also conclude that the two carriers are
`
`transmitted at the same time. For example, as described above, the
`
`purpose of the ‘891 is to increase the message capacity of the channel. If
`
`the two carriers of Figure 1 are not transmitting at the same time, there is
`
`no improvement in message capacity of the channel. As a result, there is
`
`no need for multiple carriers.
`
`37. The ‘891 Patent describes that co-location does not give rise to the near-
`
`far problem. Ex. 1001 at 4:12-15. Since all carriers are transmitted from
`
`the same location, at any receiver, all carriers are attenuated the same
`
`amount. In other words, there are no longer near and far distances.
`
`
`
`13
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 13, IPR2016-00766
`
`
`
`38. Because there is no near-far problem with co-location, carriers can be
`
`spaced closer together than when subchannels are used. Id. This means
`
`that the symmetric condition does not apply. Id. at 4:15-17.
`
`39. The ‘891 Patent defines a new condition for co-located carriers. This
`
`condition provides that “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.” Id. at 4:17-20. In other words, the distance between carriers can
`
`be smaller than the distance between an outer carrier and the band edge.
`
`The ‘891 Patent refers to this condition as an asymmetry. Id. at 4:24-34.
`
`Drawing 9 below illustrates this asymmetric condition.
`
`Asymmetric Condition Dm > Dc
`Carrier 3
`Carrier 2
`Carrier 1
`0
`Primary
`Mask
`Dc
`
`Power (dB)
`From Max.
`Attenuation
`
`‐50
`
`Dm
`
`0
`
`1.4
`1
`Frequency (Hz)
`Drawing 9
`
`
`40. In Drawing 9, distance Dc is the spacing between Carrier 1 and the next
`
`adjacent carrier, which is now Carrier 3. Distance Dm is the spacing
`
`
`
`14
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 14, IPR2016-00766
`
`
`
`between Carrier 1 and the band edge of the Primary Mask of the channel.
`
`The asymmetric condition of the ‘891 Patent, requires that Dm > Dc.
`
`41. In comparison with the symmetric condition (Drawing 8), the asymmetric
`
`condition of Drawing 9 allows closer spacing of carriers. Ex. 1001 at
`
`4:14-15. This closer spacing allows Carrier 3 to be added between
`
`Carrier 1 and Carrier 2. The additional Carrier 3 means an additional
`
`message is sent in the same channel at the same time. Thus, the addition
`
`of Carrier 3 increases the message capacity of the channel, which is the
`
`purpose of the ‘891 Patent.
`
`42. In addition, the asymmetric condition allows carriers to overlap. Id. at
`
`4:24-30. In Drawing 9, Carrier 1 and Carrier 3 overlap, and Carrier 3 and
`
`Carrier 2 overlap.
`
`43. Independent claims 1, 3, and 5 of the ‘891 Patent all recite (1)
`
`transmitting multiple carriers from the same location, and (2) and
`
`transmitting the multiple carriers according to the asymmetric condition.
`
`As described above, these two limitations are solutions to the problem of
`
`increasing the message capacity of the channel. As a result, the language
`
`of these claims should be considered in relation to solving the problem of
`
`increasing the message capacity of the channel.
`
`
`
`15
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 15, IPR2016-00766
`
`
`
`44. In regard to the limitation of (1) transmitting multiple carriers from the
`
`same location, a POSA would understand this limitation to mean
`
`transmitting multiple carriers from the same location at the same time.
`
`As described in above paragraph 36 and in reference to Figure 1 of the
`
`‘891 Patent, if the two carriers of Figure 1 are not transmitting at the
`
`same time, there is no improvement in message capacity of the channel.
`
`As a result, there is no need for co-location.
`
`45. Further, the ‘891 Patent is not directed to increasing the message rate of a
`
`channel, where multiple carriers may transmit parts of the same message
`
`at different times. Ex. 1001 at 1:25-27. The ‘891 Patent specifically
`
`teaches away from increasing the message rate of a channel. The ‘891
`
`Patent provides that “[s]ystems employing techniques to increase
`
`transmission rates, however, are prone to higher error rates. In addition,
`
`high data rates tend to generate greater transmission interference.” Id. at
`
`1:32-35.
`
`46. In addition, the ‘891 Patent provides an example that shows it is directed
`
`to transmitting different messages on different carriers at the same time.
`
`The ‘891 Patent describes that “the modulation technique of the present
`
`invention may also be suited for use in areas where the incidence of
`
`unacceptable interference is high, such as international border regions. In
`
`
`
`16
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 16, IPR2016-00766
`
`
`
`that type of environment. Transmissions from the respective bordering
`
`countries can be assigned to one of the carriers operating within the
`
`channel to reduce the risk of interference.” Id. at 5:32-38. First of all,
`
`interference between carriers can only occur if they are transmitting at the
`
`same time. Secondly, the example shows that a message from another
`
`country is assigned to one of the carriers, so the carriers must have
`
`different messages.
`
`47. In regard to the limitation of (2) transmitting the multiple carriers
`
`according to the asymmetric condition, a POSA would understand this
`
`limitation to mean transmitting the multiple carriers so that each carrier
`
`meets the asymmetric condition of the claim. The asymmetric condition
`
`of claim 1, for example, is 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.” This is more
`
`simply described in Drawing 9 as Dm > Dc.
`
`48. One problem with the ‘891 Patent is that it does not explicitly define the
`
`band edge that should be used in the calculation of the asymmetric
`
`condition. The simplified mask of Drawing 9 has only one band edge, so
`
`there is no problem determining the band edge in Drawing 9.
`
`
`
`17
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 17, IPR2016-00766
`
`
`
`Unfortunately, however, actual FCC emission masks are more complex
`
`and have multiple band edges.
`
`49. The word “band” of “band edge” refers to a frequency band or range. A
`
`POSA would, therefore, understand that the term “band edge of a mask”
`
`means an edge of a mask that limits the frequency band.
`
`50. In 47 C.F.R. §90.210 of the current FCC regulations, for example, the
`
`FCC lists the emission masks for a number of different channels. The
`
`table from 47 C.F.R. §90.210 is shown below.
`
`51. Exhibit 2002 is an application from Silicon Labs that includes figures of
`
`some current FCC emission masks. Figures 1-3 of Exhibit 2002 are
`
`
`
`shown below.
`
`
`
`18
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 18, IPR2016-00766
`
`
`
`
`
`
`
`
`
`52. Figures 1-3 of Exhibit 2002 demonstrate that FCC emission masks can
`
`have multiple band edges.
`
`
`
`19
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 19, IPR2016-00766
`
`
`
`53. In determining the band edge of the asymmetric condition of the ‘891
`
`Patent, a POSA would first look to the purpose of the band edge in the
`
`asymmetric condition.
`
`54. In the asymmetric condition, the band edge is used to determine a
`
`frequency distance between the outer most carriers and the mask. In
`
`Drawing 9, this distance is Dm, for example. However, the purpose of the
`
`frequency distance, Dm, is also not explicitly defined in the ‘891 Patent.
`
`55. Again, a POSA would first look to the purpose of the frequency distance,
`
`Dm, to determine how it is defined.
`
`56. A POSA would conclude from the specification of the ‘891 Patent that
`
`the purpose of the frequency distance, Dm, is to prevent the outer most
`
`carriers from exceeding the mask limits when they are modulated. In
`
`other words, the purpose of the frequency distance, Dm, is to prevent the
`
`outer most carriers from exceeding the band edge.
`
`57. This conclusion is made by first determining the type of modulation used
`
`in the ‘891 Patent. Figures 5A, 6A, and 7A all depict modulated carriers
`
`of the ‘891 Patent. All three figures include a maximum frequency
`
`deviation. A frequency deviation is known by a POSA to be a parameter
`
`of frequency shift keying (FSK) modulation.
`
`
`
`20
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 20, IPR2016-00766
`
`
`
`58. Exhibit 2003 is an exemplary tutorial on digital modulation techniques
`
`provided by Electronic Design magazine. Exhibit 2003 describes that
`
`there are three basic ways to modulate a sinusoidal carrier to transmit
`
`digital data. Ex. 2003 at 1. These three ways are using amplitude shift
`
`keying (ASK), on-off keying (OOK), or frequency shift keying (FSK).
`
`These three modulation methods are graphically depicted in Figure 1 of
`
`Exhibit 2003, which is shown below.
`
`Figure 1 of Exhibit 2003
`
`
`
`59. Exhibit 2003 describes that FSK modulation shifts the carrier between
`
`two different frequencies, fm and fs. fm is the mark or binary 1 frequency,
`
`
`
`21
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 21, IPR2016-00766
`
`
`
`and fs is the space or binary 0 frequency. The frequency deviation, ∆f, of
`
`FSK is calculated as ∆f = fs - fm.
`
`60. Because FSK modulation is the only digital modulation method to
`
`include a frequency deviation, Exhibit 2003 confirms that it is the
`
`modulation technique used in the ‘891 Patent.
`
`61. After determining that the modulation technique used in the ‘891 Patent
`
`is FSK, a POSA would consider how FSK is related to the frequency
`
`distance, Dm, of the asymmetric condition.
`
`62. A POSA would realize that the frequency deviation, ∆f, of FSK
`
`modulation causes a carrier to get wider or spread out in terms of
`
`frequency. Exhibit 2004 is another tutorial on modulation provided by
`
`www.complextoreal.com as of June 12, 2016. Exhibit 2004 includes a
`
`detailed description of FSK modulation. Figure 9 of Exhibit 2004 is
`
`shown below.
`
`Figure 9 of Exhibit 2004
`
`
`
`
`
`22
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 22, IPR2016-00766
`
`
`
`63. Figure 9 of Exhibit 2004 is a spectrum showing a carrier with a center
`
`frequency of 4 that has been modulated with FSK. Figure 9 shows that
`
`the carrier now has a frequency deviation, ∆f, of 2 on either side of the
`
`center frequency of 4. In other words, the shape of the carrier is now
`
`spread out between frequencies 2 and 6. As a result, Figure 9 of Exhibit
`
`2004 confirms that the frequency deviation, ∆f, of FSK modulation
`
`causes a carrier to get wider or spread out in terms of frequency.
`
`64. Because FSK modulation causes a carrier to get wider and the frequency
`
`distance, Dm, of the asymmetric condition specifies a buffer distance
`
`between the band edge of a mask and the carrier, a POSA would
`
`conclude that the purpose of the frequency distance, Dm, is to prevent the
`
`outer most carriers from exceeding the mask limits when they are spread
`
`out in frequency due to modulation.
`
`65. Indeed, the ‘891 Patent confirms this by describing in reference to the
`
`modulated carriers of Figure 5A that “the carriers remained within the
`
`FCC mask while providing an acceptable error-rate versus signal strength
`
`performance.” Ex. 1001 at 4:61-63. In other words, the ‘891 Patent
`
`explicitly points out that the carriers remain within the mask limits after
`
`applying the asymmetric condition and even after modulation.
`
`
`
`23
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 23, IPR2016-00766
`
`
`
`66. As described above, the purpose of the frequency distance, Dm, is to
`
`determine what band edge to use in the calculation of the asymmetric
`
`condition. Since the purpose of the frequency distance, Dm, is to ensure
`
`that the modulated carrier does not exceed a mask limit, a POSA would
`
`conclude that the band edge of the asymmetric condition is the edge of
`
`the mask that is likely to be closest in frequency to the outer most carrier
`
`when that carrier is modulated.
`
`67. Another way of describing the band edge, for FSK modulation, is the first
`
`limit of the mask to be exceeded as the frequency deviation of the carrier
`
`is increased.
`
`68. A POSA would understand that the band edge closest in frequency to the
`
`outer most carrier would be chosen for the asymmetric condition in order
`
`to minimize the frequency distance, Dm, of Drawing 9. Minimizing Dm.
`
`necessarily minimizes the frequency distance between carriers, Dc,
`
`according to the asymmetric condition (Dm > DC). This allows more
`
`carriers to be placed in the channel, which increases the message capacity
`
`of the channel.
`
`69. Alternatively, if the farthest frequency limit of the mask is used as the
`
`band edge for the asymmetric condition, the frequency distance, Dm, is
`
`maximized, allowing the frequency distance between carriers, Dc, to be
`
`
`
`24
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 24, IPR2016-00766
`
`
`
`larger. This would not allow more carriers to be placed in the channel
`
`and would not increase the message capacity of the channel.
`
`70. As shown above in the figures of FCC emission masks of above
`
`paragraph 51, the frequency limitations of masks generally become
`
`increasing less restrictive as the power level decreases. As a result, the
`
`band edges at higher power levels are likely to be closer to the outer most
`
`carriers.
`
`71. Two masks described in the ‘891 Patent and its prosecution history can
`
`be used to confirm that the band edge of the asymmetric condition is the
`
`edge of the mask that is closest to the outer most carrier when that carrier
`
`is modulated. This is confirmed by hypothetically applying the two
`
`masks to the examples of the ‘891 Patent application. Note that there is
`
`no indication in the ‘891 Patent that the examples of Figures 5A, 6A, or
`
`7A were intended to work with the two masks described below and
`
`shown in Drawing 10 and Drawing 11.
`
`72. The first mask applied is the mask of Figure 4 of the ‘891 Patent, which
`
`is reproduced below. Suppose, for example, the vertical mask edges at -
`
`10 kHz and 10 kHz of the mask of Figure 4 of the ‘891 Patent are
`
`selected as the band edges of the asymmetric condition.
`
`
`
`25
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 25, IPR2016-00766
`
`
`
`
`
`73. Figure 5A of the ‘891 Patent shows that the applicants of the ‘891 Patent
`
`selected edges at -10 kHz and 10 kHz as the band edges of the
`
`asymmetric condition. Figure 5A is reproduced below.
`
`74. A POSA would understand that Figure 5A of the ‘891 Patent was meant
`
`to show that placing two carriers in a channel according to the
`
`
`
`
`
`26
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 26, IPR2016-00766
`
`
`
`asymmetric condition produced good results. In Figure 5A, the two
`
`carriers are centered at -4.590 kHz and 4.590 kHz. The frequency
`
`distance between carriers, Dc, is, therefore, 4.590 kHz. If the band edges
`
`are at -10 kHz and 10 kHz, then the frequency distance between an outer
`
`carrier and a band edge, Dm, is 5.410 kHz. As a result, Dm > Dc and the
`
`asymmetric condition is met.
`
`75. A POSA would understand that using the mask of Figure 4 of the ‘891
`
`Patent, for the example, in Figure 5A of the ‘891 Patent would not
`
`produce the desired result, even though the mask of Figure 4 includes
`
`edges at -10 kHz and 10 kHz. This is because the edges at -10 kHz and
`
`10 kHz are not the closest edges. Drawing 10 below shows the mask of
`
`Figure 4 drawn on Figure 5A.
`
`Drawing 10
`
`
`
`
`
`27
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 27, IPR2016-00766
`
`
`
`76. Drawing 10 shows that not choosing the closest edges creates a problem,
`
`because centering two carriers at -4.590 kHz and 4.590 kHz based on the
`
`vertical mask edges of the mask in Figure 4 at -10 kHz and 10 kHz puts
`
`the modulated carriers outside of the mask limits. The two carriers
`
`exceed the diagonal mask edges. This would be a problem, because the
`
`‘891 Patent, in reference to Figure 5A, explicitly states that “carriers
`
`remained within the FCC mask limits.” Ex. 1001 at 4:61-62. They
`
`would not remain within the mask limits of Figure 4 of the ‘891 Patent.
`
`77. The application of the mask in Figure 4 to Figure 5A as shown in
`
`Drawing 10, however, confirms that the band edge that should be chosen
`
`for the asymmetric condition is the edge of the mask that is closest in
`
`frequency to the outer most carrier when that carrier is modulated. In
`
`Drawing 10, for example, the band edges that should have been chosen
`
`are just where the diagonal band edges begin near the 0 power level
`
`attenuation. These are the only band edges that would ensure that
`
`carriers remain in the mask after modulation.
`
`78. The second mask applied to Figure 5A is a replacement mask the
`
`applicants of the ‘891 Patent provided in the prosecution history. On
`
`June 7, 1995 the applicants filed an information disclosure statement
`
`(IDS) with a replacement mask for Figure 4 and the FCC Part 22
`
`
`
`28
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 28, IPR2016-00766
`
`
`
`regulations at the time. Ex. 1012 at 79-84. In the IDS, they provided the
`
`replacement mask was drawn according to the correct interpretation of
`
`the FCC Part 22 regulations at the time. Id. at 84. This mask is shown
`
`below.
`
`79. The IDS also provided an excerpt of the FCC Part 22 regulations at the
`
`time. Id. at 82-83. The relevant passages are reproduced below.
`
`
`
`
`
`29
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 29, IPR2016-00766
`
`
`
`
`
`80. The application of this second mask further confirms the meaning of the
`
`band edge. The second mask of the graph of the IDS applied to Figure
`
`5A of the ‘891 Patent is shown below in Drawing 11.
`
`
`
`Drawing 11
`
`30
`
`
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 30, IPR2016-00766
`
`
`
`81. Drawing 11 shows that even if the diagonal edges of the mask at -10 kHz
`
`and 10 kHz (now with power levels of -25 dB and 25 dB) are chosen,
`
`which are well inside the actual mask, the modulated carriers still do not
`
`remain in the mask. This further confirms that band edge has to be
`
`chosen where the limit of the mask is most likely to be first exceeded by
`
`the frequency spread of the carrier due to modulation.
`
`82. In Drawing 11, for example, the band edges that should be chosen are
`
`again just where the diagonal band edges begin near the 0 power level
`
`attenuation. These are the only band edges that would ensure that
`
`carriers remain in the mask after modulation. Any other band edges
`
`chosen would allow the modulated carriers to exceed the mask limits.
`
`83. In summary, a POSA would understand that the purpose of ‘891 Patent is
`
`to increase the message capacity of a channel.
`
`84. Independent claims 1, 3, and 5 of the ‘891 Patent all recite (1)
`
`transmitting multiple carriers from the same location, and (2) and
`
`transmitting the multiple carriers according to the asymmetric condition.
`
`85. In regard to the limitation of (1) transmitting multiple carriers from the
`
`same loca