UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`ARUBA NETWORKS, INC., HEWLETT PACKARD ENTERPRISE
`COMPANY, AND HP INC., AND ARRIS GROUP, INC.
`Petitioner
`
`
`v.
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
`
`____________
`
`
`Case IPR2016-00768
`Patent 5,659,891
`
`____________
`
`
`PATENT OWNER’S CORRECTED RESPONSE TO DECISION TO
`INITIATE TRIAL FOR INTER PARTES REVIEW
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`B.
`
`C.
`
`
`
`
`BACKGROUND ............................................................................................. 1 
`I.
`SUMMARY OF ARGUMENTS .................................................................... 2 
`II.
`III. PROPER CLAIM CONSTRUCTION ............................................................ 6 
`A.
`Rules Governing Claim Construction - Phillips Standard
`Governs ................................................................................................. 6 
`1.
`Look to Claims Themselves and Then Specification ................. 7 
`2.
`Can Read Specification Limitations into Claims ........................ 7 
`3.
`Can Rely on Extrinsic Evidence ................................................. 8 
`Background on the Technology and the ’891 Patent ............................ 8 
`1.
`Person of Ordinary Skill in the Art ............................................. 8 
`2.
`Claim Limitations and Increased Channel Capacity .................. 8 
`Construction of Independent Claim Terms ........................................... 9 
`1.
`“single mask-defined, bandlimited channel” of claims 1,
`3, and 5 ........................................................................................ 9 
`“band edge of the mask” of claims 1, 3, and 5 ........................... 9 
`i.
`Board’s Argument Regarding Nearest Band Edge
`in Prior IPRs ................................................................... 10 
`Board’s Argument Regarding Nearest Band Edge
`in this IPR ....................................................................... 12 
`iii. Dr. Kesan’s Band Edge Determination .......................... 21 
`iv. Nearest Band Edge Increases Message Capacity ........... 27 
`v.
`Intrinsic Masks Confirm Nearest Band Edge ................. 28 
`vi. Dr. Kakaes’ Band Edge Determination .......................... 34 
`vii. Summary ......................................................................... 37 
`“transmitting carriers from the same location” of claims
`1, 3, and 5 .................................................................................. 37 
`IV. GROUND 1: CLAIMS 1-5 ARE NOT ANTICIPATED BY
`PETROVIC. ................................................................................................... 40 
`
`ii.
`
`2.
`
`3.
`
`

`

`ii.
`
`C.
`
`A.
`B.
`
`Burden of Proof ................................................................................... 40 
`Petrovic does not anticipate claims 1, 3, and 5. .................................. 40 
`1.
`Petitioner’s Argument ............................................................... 41 
`2.
`Patent Owner’s Argument ......................................................... 41 
`i.
`FIG. 1 of Petrovic does not disclose “operating or
`transmitting said carriers… such that the frequency
`difference between the center frequency of the
`outer most of said carriers and the band edge of the
`mask … is more than half the frequency difference
`between the center frequencies of each adjacent
`carrier,” if the “band edge” is interpreted under
`Phillips ............................................................................ 42 
`Petrovic does not disclose “transmitting said
`carriers from the same location” ..................................... 51 
`Petrovic does not anticipate dependent claims 2 and 4. ..................... 53 
`1.
`Patent Owner’s Argument ......................................................... 53 
`2.
`Petitioner’s Argument ............................................................... 57 
`3.
`Summary ................................................................................... 59 
`V. GROUND 2: CLAIM 5 IS NOT OBVIOUS OVER PETROVIC IN
`VIEW OF RAITH AND ALAKIJA. ............................................................... 60 
`A.
`Petrovic in view of Raith and Alakija does not render claim 5
`obvious. ............................................................................................... 60 
`VI. CONCLUSION .............................................................................................. 63 
`
`
`
`
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES 
`Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir.
`2000) ................................................................................................................... 40
`Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986) ................ 7
`In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) ............................. 7
`In re Nuvasive, Inc., No. 15-1670 (Fed. Cir. December 7, 2016) ........................... 63
`In re Royka, 490 F.2d 981 (CCPA 1974) ................................................................ 60
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ..................... 40
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ................................. passim
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) ........... 8
`Vitrionics Corp. v. Conceptronic, 90 F.3d 1576 (Fed. Cir. 1996) ............................. 7
`Xerox Corp. v. 3Com Corp., 458 F.3d 1310 (Fed. Cir. 2006) ................................. 40
`OTHER AUTHORITIES 
`35 United States Code § 103 .................................................................................... 60
`37 C.F.R. § 42.100 ..................................................................................................... 1
`Manual of Patent Examining Procedure § 2111.01 ................................................... 7
`Manual of Patent Examining Procedure § 2558 ........................................................ 6
`
`
`
`
`iii
`
`

`

`2003.
`
`2004.
`
`2005.
`
`2006.
`
`2007.
`
`2008.
`
`2009.
`
`2010.
`
`
`PATENT OWNER UPDATED EXHIBIT LIST
`2001.
`Declaration of Dr. Jay P. Kesan.
`2002.
`Application note from Silicon Labs that demonstrates the compliance
`of Si446x RFICs with the regulatory requirements of FCC Part 90 in
`the 450-470 MHz band.
`Tutorial from Electronic Design magazine on understanding modern
`digital modulation techniques.
`Tutorial from www.complextoreal.com on understanding frequency
`shift keying (FSK) and more.
`Declaration of Hostile Expert Paul S. Min, Ph.D., Regarding the
`Constructions of Certain Claim Limitations of U.S. Patent Nos.
`5,659,891 and 5,809,428.
`Deposition of William Hays in MTel v. Apple Inc. (CASE NO. 2:13-
`cv-258-JRG-RSP) on Apr. 1, 2014.
`Deposition of Dr. Rade Petrovic in MTel v. Apple Inc. (CASE NO.
`2:13-cv-258-JRG-RSP) on May 1, 2014.
`Deposition of Dr. Rade Petrovic in MTel v. Leap (CASE NO. 2:13-cv-
`00885-JRG-RSP) on Apr. 3, 2015.
`Deposition of Dr. Rade Petrovic in MTel v. AT&T (CASE NO. 2:14-
`cv-00897-RSP) on Oct 22, 2015.
`Exhibit 2 of Deposition of Dr. Kesan in MTel v. Samsung (CASE NO.
`2:15-cv-00183-JRG-RSP) Sep. 4, 2015 (annotated Figure 3B from the
`’891 Patent).
`Second Declaration of Dr. Jay P. Kesan.
`Transcript of the deposition of Dr. Apostolos Kakaes on December 15,
`2016.
`Transcript of the deposition of Dr. Apostolos Kakaes on December 16,
`2016.
`
`2011.
`2012.
`
`2013.
`
`
`
`iv
`
`

`

`
`2014.
`
`2015.
`
`Redlined version of Patent Owner’s Corrected Response compared to
`Patent Owner’s Response filed January 9, 2017, Paper 28.
`Patent Owner’s Listing of All of Petitioner’s Reply Citations to Patent
`Owner’s Response and the Corresponding Page and Line Numbers in
`Patent Owner’s Corrected Response.
`
`
`
`
`
`v
`
`

`

`
`
`Mobile Telecommunications Technologies, LLC (“Patent Owner”), hereby
`
`responds to the Decision to Institute Trial for Inter Partes Review of claims 1-5 of
`
`U.S. Patent No. 5,659,891 (“the ’891 patent”).
`
`I.
`
`BACKGROUND
`
`On March 16, 2016, Petitioner Aruba Networks, Inc., Hewlett Packard
`
`Enterprise Company, and HP Inc. (“Aruba” or “Petitioner”) filed a Petition for
`
`Inter Partes Review under 37 C.F.R. § 42.100, IPR2016-00768, requesting inter
`
`partes review of claims 1-5 of the ’891 Patent. On the same day, Petitioner ARRIS
`
`Group, Inc. (“ARRIS” or “Petitioner”) filed an almost identical Petition for Inter
`
`Partes Review under 37 C.F.R. § 42.100, IPR2016-00766, requesting inter partes
`
`review of claims 1-5 of the ’891 Patent. IPR2016-00766 was later joined with
`
`IPR2016-00768. See IPR2016-00768, Paper 26. Petitioner Aruba Networks, Inc.,
`
`Hewlett Packard Enterprise Company, and HP Inc. and ARRIS Group, Inc. will be
`
`collectively referred to as “Petitioner.”
`
`On September 21, 2016, the Patent Trial and Appeal Board (the “Board”)
`
`issued a Decision to Institute Trial for Inter Partes Review (“Institution Decision”)
`
`as to claims 1-5 of the ’891 patent based on the following grounds:
`
`(1) Claims 1-5 as anticipated by Dr. Rade Petrovic et al., Permutation
`
`Modulation for Advanced Radio Paging, IEEE Proceedings of Southeastcon ‘93 (7
`
`April, 1993) (Ex. 1013, “Petrovic”). IPR2016-00768, Paper 13 at pp. 14-22.
`
`1
`
`

`

`
`
`(2) Claim 5 as obvious over Petrovic in view of Raith, WO8908355 (Ex.
`
`1014, “Raith”) and Alakija et al., A Mobile Base Station Phased Array Antenna
`
`(Ex. 1014, “Raith”). Id.
`
`Patent Owner deposed Petitioner’s expert Dr. Paul Kakaes on December 15-
`
`16, 2016.
`
`II.
`
`SUMMARY OF ARGUMENTS
`By this response, Patent Owner respectfully submits the following
`
`arguments and supporting evidence.
`
`The ’891 Patent, entitled “Multicarrier Techniques
`
`in Bandlimited
`
`Channels,” was filed on June 7, 1995 and issued on August 19, 1997. The ’891
`
`Patent expired on June 7, 2015.
`
`The ’891 Patent describes and claims methods and systems for multicarrier
`
`modulation using co-located transmitters to achieve higher transmission capacity
`
`for mobile paging and two-way digital communication in a manner consistent with
`
`FCC emission mask limits. Ex. 1001 at Abstract. In addition to co-location, these
`
`systems and methods describe transmitting the carriers in a way that the frequency
`
`difference between the center frequency of the outer most carrier and the band
`
`edge of the mask defining the channel (hereafter Dm) is more than half the
`
`frequency difference between each adjacent carrier (hereafter Dc). See the ’891
`
`
`
`2
`
`

`

`
`Patent, Ex. 1001, claims 1, 3, and 5. Using this notation, this claim limitation can
`
`be expressed as Dm > Dc, and is described below as the asymmetric condition.
`
`Each of the claims 1, 3, and 5 of the ’891 Patent recite “the band edge of the
`
`mask” in the asymmetric condition. The construction of this term applied by
`
`Petitioner and adopted by the Board in instituting this IPR is that the band edge is
`
`any band edge of the mask. This is the broadest interpretation possible. The ’891
`
`Patent has expired so this term should be construed under district court rules.
`
`These rules require that the Specification be considered when construing claim
`
`terms.
`
`Patent Owner respectfully submits that neither Petitioner nor the Board in
`
`instituting this IPR provided evidence that the Specification teaches or suggests
`
`that the band edge is any band edge of the mask. In addition, neither Petitioner nor
`
`the Board in instituting this IPR provided evidence that any band edge of the mask
`
`would satisfy the purpose of the claimed invention as described in the
`
`Specification.
`
`In contrast, Patent Owner has provided evidence that the Specification
`
`plainly states that the band edge of the mask is the nearest band edge to the outer
`
`most carriers. Patent Owner has also provided lengthy evidence that its
`
`construction satisfies the purpose of the claimed invention as described in the
`
`Specification.
`
`
`
`3
`
`

`

`
`
`As a result, the preponderance of evidence shows that the band edge of the
`
`mask should be construed as the nearest band edge to the outer most carriers.
`
`Based upon this construction, Petrovic does not teach or suggest claims 1, 3,
`
`and 5 of the ’891 Patent. As a result, claims 1, 3, and 5 should be confirmed.
`
`Similarly, claim 2 and 4 that depend from claims 1 and 3 should be confirmed at
`
`least for the same reason as claims 1 and 3 and the additional features they recite.
`
`Further, each of the claims 2 and 4 of the ’891 Patent recite overlapping
`
`adjacent carriers. Petitioner has provided evidence in the form of expert witness
`
`testimony that the carriers of Petrovic overlap. The Board in instituting this IPR
`
`has relied on this evidence.
`
`Patent Owner has provided evidence in the form of expert witness testimony
`
`that the carriers of Petrovic do not overlap as required by claims 2 and 4. Patent
`
`Owner has further shown that the Specification of the ’891 Patent explicitly
`
`discloses that carrier overlap is a result of the asymmetric condition, while the
`
`description of Petrovic is completely silent with regard to carrier overlap.
`
`It is Petitioner’s burden to show by the preponderance of the evidence that
`
`Petrovic teaches overlapping carriers. Because the preponderance of the evidence
`
`does not show this, claims 2 and 4 should be confirmed.
`
`More specifically, the arguments with regard to the Petition grounds are as
`
`follows. First, with regard to Ground 1, Petrovic does not teach, at least, (i)
`
`
`
`4
`
`

`

`
`“operating or transmitting said carriers… such that the frequency difference
`
`between the center frequency of the outer most of said carriers and the band edge
`
`of the mask … is more than half the frequency difference between the center
`
`frequencies of each adjacent carrier;” and (ii) “operating or transmitting said
`
`carriers from the same location.” Dependent claims 2 and 4 are not anticipated by
`
`Petrovic, because Petrovic does not teach or suggest adjacent carriers that overlap
`
`with each other and adjacent subchannels that overlap with each other.
`
`Additionally, dependent claims 2 and 4 are not anticipated by Petrovic, because
`
`independent claims 1 and 3, from which they depend respectively, are not
`
`anticipated by Petrovic and because of the additional features they recite.
`
`In regard to limitations (i) and (ii), the ’891 Patent has expired requiring
`
`claim construction under district court rules. Patent Owner submits that under its
`
`construction of the “band edge of the mask” and “transmitting multiple carriers
`
`from the same location,” Petrovic cannot teach limitations (i) and (ii).
`
`Second, with regard to Ground 2, Petrovic does not teach limitations (i) and
`
`(ii) of claim 5, as described above. Therefore, Petrovic does not teach claim 5.
`
`Raith and Alakija, either alone or in combination, do not cure the defect of
`
`Petrovic with regard to limitation (i). With regard to limitation (ii), Raith and
`
`Alakija do not cure the defect of Petrovic for at least two reasons. First, Petitioner
`
`has provided no articulated reasoning with some rational underpinning to support
`
`
`
`5
`
`

`

`
`the legal conclusion of obviousness. Second, the combination would render the
`
`purpose of Petrovic locating two transmitters at different locations inoperable.
`
`Further in regard to Ground 2, there would be no motivation to combine
`
`Petrovic with the teachings of either Raith or Alakija. Ex. 2011 at ¶ 128. Petrovic
`
`specifically states that its teachings cannot be applied in cellular systems as these
`
`systems are inherently different: “the higher efficiency attained in cellular
`
`networks is a result of the inherent differences in the type of services offered.” Ex.
`
`1013 at 4, col. 1, ¶ 1. While the spectral efficiency of Petrovic’s system improved
`
`upon that of paging systems at the time, it could not attain the spectral efficiency of
`
`cellular networks. Since both Raith and Alakija disclose cellular systems, it would
`
`be nonsensical to implement Petrovic’s modulation technique since it would
`
`reduce spectral efficiency of the new system.
`
`Therefore, claims 1-5 of the ’891 Patent should be confirmed.
`
`III. PROPER CLAIM CONSTRUCTION
`
`A. Rules Governing Claim Construction - Phillips Standard Governs
`
`The ’891 Patent expired on June 7, 2015, so the proper claim construction is
`
`that used in district court review. In regard to the proper claim construction used
`
`in district court review, MPEP 2258 provides that “[i]n a reexamination proceeding
`
`involving claims of an expired patent, claim construction pursuant to the principle
`
`set forth by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d
`
`
`
`6
`
`

`

`
`1321, 1329 (Fed. Cir. 2005) (words of a claim “are generally given their plain and
`
`ordinary meaning” as understood by a PHOSITA at the time of the invention)
`
`should be applied since the expired claims are not subject to amendment. See Ex
`
`parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986).”
`
`1.
`Look to Claims Themselves and Then Specification
`The first step in construing claims under Phillips is to “look to the words of
`
`the claims themselves.” Vitrionics Corp. v. Conceptronic, 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996). Second, the specification must be considered when construing
`
`claim terms. Id. “[T]he specification is always highly relevant.” Id.
`
`2.
`Can Read Specification Limitations into Claims
`Claim construction under Phillips varies from the BRI standard in at least
`
`two important ways. Claim construction under Phillips may read limitations in the
`
`specification into the claims. For example, “[t]he presumption that a term is given
`
`its plain and ordinary meaning may be rebutted by the applicant by clearly setting
`
`forth a different definition of the term in the specification. In re Morris, 127 F.3d
`
`1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) (the USPTO looks to the
`
`ordinary use of the claim terms taking into account definitions or other
`
`“enlightenment” contained in the written description). MPEP 2111.01.
`
`
`
`7
`
`

`

`
`
`3.
`Can Rely on Extrinsic Evidence
`Under Phillips, “it is entirely appropriate, perhaps even preferable, for a
`
`court to consult trustworthy extrinsic evidence to ensure that the claim construction
`
`it is tending to from the patent file is not inconsistent with clearly expressed,
`
`plainly apposite, and widely held understandings from the pertinent technical
`
`field.” Pitney Bowes, Inc. v. HP Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999).
`
`B.
`
`Background on the Technology and the ’891 Patent
`
`1.
`Person of Ordinary Skill in the Art
`As Dr. Kesan has described, a person of ordinary skill in the art at the time
`
`of the invention (PHOSITA) 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 regarding
`
`frequency, amplitude, and masks as used in telecommunications, or equivalent
`
`education and work experience. Ex. 2011 at ¶ 9.
`
`2.
`Claim Limitations and Increased Channel Capacity
`Dr. Kesan analyzed independent claims 1, 3, and 5 and found they all are (1)
`
`transmitting multiple carriers from the same location, and (2) transmitting the
`
`multiple carriers according to the asymmetric condition. Id. at ¶ 44. As a result,
`
`
`
`8
`
`

`

`
`Dr. Kesan finds that “the language of these claims should be considered in relation
`
`to solving the problem of increasing the message capacity of the channel.” Id.
`
`C. Construction of Independent Claim Terms
`
`1.
`
`“single mask-defined, bandlimited channel” of claims
`1, 3, and 5
`
`Challenged claims 1, 3, and 5 recite a “single mask-defined, bandlimited
`
`channel.” Patent Owner agrees with the Board that this term should be given plain
`
`and ordinary meaning with the understanding that “a reasonable reading of the
`
`claim language on its face is that a ‘bandlimited channel’ is a single limited
`
`frequency range, and that a ‘mask’ is the constraint applied to define that limited
`
`frequency range.”
`
`2.
`
`“band edge of the mask” of claims 1, 3, and 5
`
`Challenged claims 1, 3, and 5 recite a “band edge of the mask.” Here, the
`
`term “band edge of the mask” means “nearest band edge of the mask.” Below
`
`Patent Owner provides evidence that the Specification plainly states that the band
`
`edge of the mask is the nearest band edge to the outer most carriers in reference to
`
`the asymmetric condition. Patent Owner also provides extensive testimonial
`
`evidence from Dr. Kesan that its construction satisfies the purpose of the claimed
`
`invention as described in the Specification. For example, Dr. Kesan’s declaration
`
`
`
`9
`
`

`

`
`cites to the Specification no less than 26 times, while the declaration of Petitioner’s
`
`expert makes only 6 references to the Specification.
`
`Patent Owner’s construction of the term “band edge” is based on Dr.
`
`Kesan’s determination regarding the band edge and on the plain language of the
`
`Specification. As described below in detail, Dr. Kesan determined that “the band
`
`edge of the asymmetric condition is the edge of the mask that is nearest in
`
`frequency to the outer most carrier when that carrier is modulated.” Ex. 2011 at ¶
`
`65. In other words, Dr. Kesan’s determination is that the band edge is the nearest
`
`band edge to an outer most carrier.
`
`Dr. Kesan’s determination is confirmed by the Specification of the ’891
`
`Patent. It describes that in accordance with the asymmetric condition, “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 at 4:30-34 (emphasis added). In
`
`other words, the Specification itself describes that the band edge is the nearest
`
`band edge to a carrier.
`
`i.
`
`Board’s Argument Regarding Nearest Band Edge in
`Prior IPRs
`In IPR2014-01035 (“the Apple IPR”) and in IPR2015-01726 (“the Samsung
`
`IPR”) the same panel as in this IPR provided constructions of the term “band edge”
`
`
`
`10
`
`

`

`
`in their respective decisions to institute (Exs. 1004 and 1016, respectively). In the
`
`Apple IPR, the ’891 Patent had not expired, so construction was under BRI. This
`
`construction was that the band edge is “band edge of the single mask-defined,
`
`bandlimited channel.” Ex. 1004 at 9.
`
`In the Samsung IPR, the ’891 Patent had expired, so construction was
`
`supposed to be under Phillips. Under Phillips, a finder of fact must look to the
`
`specification
`
`if
`
`the
`
`term
`
`is not clear from
`
`the plain
`
`language of
`
`the
`
`claim. Petitioner’s expert has confirmed that the term “band edge” is not clear
`
`from the plain language of the claim, as shown below. Ex. 2012 at 35:22-25-36:1-
`
`2.
`
`Id.
`
`22· · · · Q.· ·Sure.· Is the band edge of the mask at
`23· ·frequency -- or let me rephrase the question, more
`24· ·open-ended.
`25· · · · · · ·Where is the band edge of the mask?
`1· · · · A.· ·Like I said, it's not clear where the band
`2
`edge of the mask is.
`
`Yet, the Board in the Samsung IPR maintained that the construction of the
`
`band edge is “band edge of the single mask-defined, bandlimited channel,” which
`
`is the construction under BRI. Ex. 1016 at 14. The Board did, however, look to
`
`the Specification and admitted that the Specification described the “band edge” as
`
`
`
`11
`
`

`

`
`the “nearest band edge” with respect to the asymmetric condition embodiment. Id.
`
`at 12. This is the same embodiment regarding which the Specification explained
`
`that the frequency difference is measured from the outer most carrier to the nearest
`
`band edge of the mask. Oddly, however, the Board argued that a particular
`
`embodiment appearing in the Specification may not be read into the claim. Id.
`
`This was odd in that the claims at issue were explicitly directed to the asymmetric
`
`condition embodiment.
`
`ii.
`
`Board’s Argument Regarding Nearest Band Edge in
`this IPR
`In the Preliminary Response in this IPR, Patent Owner addressed the
`
`Board’s argument in the decision to institute the Samsung IPR regarding “the
`
`nearest band edge” being a particular embodiment. Paper 12 at 31. As described
`
`above, this argument was that the Specification’s explicit use of the term “nearest
`
`band edge” was in relation to the asymmetric condition, and the asymmetric
`
`condition is just a particular embodiment. Id. Patent Owner argued that its expert,
`
`Dr. Kesan, had shown that the asymmetric condition is not merely a particular
`
`embodiment, but a limitation included by each of the claims. Id.
`
`In the Institution Decision of this IPR, the Board dropped this argument,
`
`essentially conceding that the Specification explicitly describes the “band edge” as
`
`
`
`12
`
`

`

`
`the “nearest band edge” with regard to the specific embodiment described in the
`
`claims.
`
`The Board, however, in this IPR maintains the BRI construction of the term
`
`“band edge” by repeating an argument also made in the Samsung IPR. Paper 13 at
`
`12. This argument is that the Specification does not define the “nearest band edge”
`
`with any specificity. See Paper 13 at 10 and Ex. 1016 at 12.
`
`Patent Owner notes that in the Preliminary Response it submitted the term
`
`“nearest band edge” provides more specificity than the term “band edge.” Paper
`
`12 at 32. Patent Owner now further respectfully submits that the nearest band edge
`
`is defined with mathematical specificity in the Specification as described below.
`
`In addition, Patent Owner respectfully submits that Petitioner and the Board
`
`made little attempt to determine what was meant by nearest band edge by further
`
`analyzing the Specification. In contrast, Dr. Kesan's declaration is a line by line
`
`analysis of the Specification showing with mathematical specificity why the band
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`edge of the claims is the “nearest band edge” and how the “nearest band edge”
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`should be defined. Specifically, in the Institution Decision, the Board makes two
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`points with regard to the description of the “band edge” as the “nearest band edge”
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`in the Specification. (1) The Board declares that the Specification “does not
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`describe or define the term “nearest band edge” with any specificity. Paper 13 at
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`10. (2) The Board presents Figure 3B of the ’891 Patent and says that it is at least
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`as likely that the “nearest band edge” can refer to “the vertical line depicting the
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`band edge of the mask on the left side of Figure 3B” as compared with “the
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`vertical line depicting the band edge of the mask, farther away, on the right side of
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`Figure 3B.” Id. at 11.
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`In regard to point (1) Patent Owner respectfully submits that the
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`Specification in 4:30-34 describes the nearest band edge with mathematical
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`specificity. Dr. Kesan describes that this section of the Specification provides that
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`the “nearest band edge” recites a frequency difference that is “between the center
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`frequency of each carrier and the nearest band of the mask.” Ex. 2011 at ¶ 127.
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`He says that “[a] PHOSITA would, therefore, understand that the … nearest band
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`edge refers to the band edge that is nearest to the center frequency of each outer
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`most carrier.” Id.
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`This mathematical specificity is shown in Annotation A of Figure 3B below.
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`In this annotation, Dm is the frequency difference between the center
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`frequency of each carrier and the nearest band edge of the mask. Dc is half the
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`frequency difference between the center frequencies of the two carriers. The
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`annotation shows and the Specification in 4:30-34 requires Dm > Dc. This is the
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`asymmetric condition included in each claim of the ’891 Patent.
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`Dm is, therefore, measured between the center frequency of each carrier and
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`the nearest band edge of the mask. Because this measurement is between the
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`center frequency of each carrier and the nearest band edge of the mask, a
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`PHOSITA would understand that the most reasonable interpretation of the nearest
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`band edge is the band edge that is nearest to the center frequency of each outer
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`most carrier.
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`In regard to point (2), the Board appears to be arguing that the “nearest band
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`edge” is simply used to distinguish the nearest of two symmetric band edges of a
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`mask rather than to specify the exact point or points closest to an outer most
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`carrier. For example, in reference to Annotation A of Figure 3B, vertical lines 31a
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`and 31b are symmetric band edges with respect to carrier 32a.
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`The Board appears to make this argument in response to the Patent Owner’s
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`previous construction that the “nearest band edge” is the inner most frequencies,
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`such as diagonal lines 31c and 31d shown in Annotation A of Figure 3B. See
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`Paper 13 at 10.
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`Patent Owner respectfully submits three arguments with regard to this point.
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`(i) Patent Owner no longer construes the band edge to be the inner most
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`frequencies. (ii) There is no evidence in the Specification that “nearest” was meant
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`to simply distinguish symmetric band edges of a mask. (iii) The point the Board is
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`making is really the same argument made by the panel in the Samsung IPR that
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`vertical lines 31a and 31b and the diagonal lines 31c and 31d of the mask in
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`Annotation A of Figure 3B are equally likely to be the “nearest band edge.” The
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`Patent Owner submits that both the vertical lines 31a and 31b and the diagonal
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`lines 31c and 31d cannot both be the nearest band edge.
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`In regard to (i), Patent Owner no longer construes the band edge to be the
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`inner most frequencies, so any issue with regard to inner most frequencies is moot.
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`In regard to (ii), the Board is suggesting that the “nearest band edge” may
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`simply be used to distinguish the nearest of two symmetric band edges of a mask.
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`The Patent Owner has provided the extensive testimony of Dr. Kesan that a plain
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`reading of the Specification is that the “nearest band edge” is the nearest point or
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`points to the center frequencies of the outer most carriers. Since masks are
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`mathematically defined by making required signal power attenuation dependent on
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`frequency, a typical mask has multiple points at which the signal power attenuation
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`requirement changes. In order to identify which of these points—in relation to the
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`outer most carrier—is of interest, the ’891 Patent specifically references “the
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`nearest.”
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`This is further corroborated by the stated goal of the ’891 Patent: to decrease
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`carrier spacing to improve spectral efficiency. Decreasing the distance between
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`the outer most carrier and the band edge of the mask necessarily decreases adjacent
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`carrier spacing, per the asymmetric condition in the claims. Finally, even if, as the
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`Board states, it is as likely as not that the reference to the “nearest band edge”
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`refers to one of two symmetric edges as opposed to a point on the closest side of
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`the mask, the ’891 Patent should be confirmed since it is Petitioner’s burden to
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`show by a preponderance of the evidence that its point is correct. Petitioner has
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`not done this.
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`In regard to (iii), in its decision to institute in the Samsung IPR, the panel in
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`that case described that it was “not persuaded from the context of the description
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`that one of ordinary skill in the art would have understood that the ‘nearest band
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`edge’ are the frequencies along the diagonal lines as shown for example in” Figure
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`3B of the ’891 Patent. Ex. 1016 at 12.
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`In Annotation A of Figure 3B, the diagonal lines of the mask are labeled as
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`diagonal lines 31c and 31d. The issue then is whether or not a point or points on
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`diagonal lines 31c and 31d are the nearest band edges to the center frequencies
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`rather than vertical lines 31a and 31b.
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`Patent Owner respectfully submits that diagonal lines 31c and 31d of this
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`annotation do not include points that are the nearest band edges to the center
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`frequencies of carriers 32a and 32b. This is only because the power levels of
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`carriers 32a and 32b are shown to be limited by subchannels 30a and 30b,
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`respectively, to levels that are below diagonal lines 31c and 31d. Below
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`Annotation A of Figure 3A of the ’891 Patent shows subchannels 30a and 30b
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`more clearly.
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`Annotation A of Figur