IPR2016-00768
`U.S. Patent No. 5,659,891
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`ARRIS GROUP, INC., ARUBA NETWORKS, INC.,
`HEWLETT PACKARD ENTERPRISE COMPANY, and HP, INC.,
`Petitioner,
`v.
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner.
`______________________
`Case IPR2016-00768
`Patent 5,659,8911
`______________________
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`CORRECTED PETITIONERS’ CONSOLIDATED REPLY TO
`PATENT OWNER’S RESPONSE
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`1 Case IPR2016-00766 has been joined with the instant proceeding.
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`U.S. Patent No. 5,659,891
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`ARRIS GROUP, INC., ARUBA NETWORKS, INC.,
`HEWLETT PACKARD ENTERPRISE COMPANY, and HP, INC.,
`Petitioner,
`v.
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner.
`______________________
`Case IPR2016-00768
`Patent 5,659,8911
`______________________
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`CORRECTED PETITIONERS’ CONSOLIDATED REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2016-00766 has been joined with the instant proceeding.
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`IPR2016-00768
`U.S. Patent No. 5,659,891
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`TABLE OF CONTENTS
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` CLAIM CONSTRUCTION ............................................................................... 1 I.
`A. “the band edge of the mask” (cls. 1, 3, 5) ....................................................... 1
`B. “transmitting carriers from the same location” (cls. 1, 3) ............................ 14
`C. “single mask-defined, bandlimited channel” (cls. 1, 3, 5) ............................ 16
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` THE PRIOR ART ............................................................................................. 16 II.
`A. Petrovic discloses cls. 1.C, 3.C, 5.D ............................................................. 16
`B. Petrovic discloses cls. 1.B, 3.B ..................................................................... 26
`C. Petrovic discloses cls. 2, 4 ............................................................................ 28
`D. Petrovic in view of Raith and Alakija renders obvious cl. 5.B .................... 36
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`IPR2016-00768
`U.S. Patent No. 5,659,891
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` LIST OF EXHIBITS
`
`Description
`U.S. Patent 5,659,891 to Hays et al., filed June 7, 1995
`Mobile Telecommunications Technologies, LLC v. Aruba
`Networks, Inc., et al., Case No. 2:16-cv-00012, Plaintiff
`Mobile Telecommunications Technologies, LLC’s Original
`Complaint (Jan. 4, 2016)
`Declaration of Apostolos (Paul) Kakaes
`Apple Inc. v. Mobile Telecommunications Technologies, LLC,
`Case IPR2014-01035, Decision on Institution of Inter Partes
`Review (Jan. 22, 2015)
`Mobile Telecommunications Technologies, LLC v. T-Mobile
`USA, Inc., et al., Case No. 2:13-cv-00886-JRG-RSP, Claim
`Construction Memorandum and Order (Jan. 23, 2015)
`Mobile Telecommunications Technologies, LLC v. Sprint
`Nextel Corp., et al., Case No. 2:12-cv-00832-JRG-RSP, Claim
`Construction Memorandum and Order (May 2, 2014)
`Mobile Telecommunications Technologies, LLC v. Leap
`Wireless International, Inc., et al., Case No. 2:13-cv-00885-
`JRG-RSP, Claim Construction Memorandum and Order (May
`12, 2015)
`The American Heritage Dictionary of the English Language,
`1902, (3rd ed. 1992)
`Standards Coordinating Committee 10, Terms and Definitions,
`The IEEE Standard Dictionary of Electrical and Electronics
`Terms, 1140, (6th ed. 1996)
`McGraw-Hill Dictionary of Scientific and Technical Terms,
`1644, (5th ed. 1993)
`Mobile Telecommunications Technologies, LLC v. Clearwire
`Corp., et al., Case No. 2:12-cv-00308-JRG-RSP, Claim
`Construction Memorandum and Order (July 1, 2013)
`Prosecution History of U.S. Patent 5,659,891 to Hays et al.,
`filed June 7, 1995
`Rade Petrovic, et al., Permutation Modulation for Advanced
`Radio Paging, IEEE Proceedings of Southeastcon ‘93 (Apr. 7,
`1993)
`International Patent WO 89/08355 to Raith et al., filed Feb. 8,
`1989
`
`ii
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`Exhibit
`Ex. 1001
`Ex. 1002
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`Ex. 1003
`Ex. 1004
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`Ex. 1005
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`Ex. 1006
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`Ex. 1007
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`Ex. 1008
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`Ex. 1009
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`Ex. 1010
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`Ex. 1011
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`Ex. 1012
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`Ex. 1013
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`Ex. 1014
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`
`Description
`C. Alakija and S. P. Stapleton, A Mobile Base Station Phased
`Array Antenna, 1992 IEEE International Conference on
`Selected Topics in Wireless Communications 118 (Jun. 1992)
`IPR2015-01726, Paper No. 9 (Institution Decision)
`IPR2016-00768, Conference Call Hearing on Motions
`(Apr. 20, 2016)
`Rebuttal Declaration of Dr. Apostolos K. Kakaes
`U.S. Patent No. 5,590,403
`Declaration of Marissa B. Golub
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`Exhibit
`Ex. 1015
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`Ex. 1016
`Ex. 1017
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`Ex. 1018
`Ex. 1019
`Ex. 1020
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`iii
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`IPR2016-00768
`U.S. Patent No. 5,659,891
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`IPR2016-00768, Pap. 13 (“Inst.”), 2.
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` Patent Owner’s (“PO”) Response (“POR,” Pap. 28)
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` .2, 3
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`I.
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`CLAIM CONSTRUCTION4
` A.
` “the band edge of the mask” (cls. 1, 3, 5)
` The Board correctly construed “the band
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`edge of the mask” as “a band edge of the single mask-defined bandlimited
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`channel.” Inst. 12. The Board’s construction is consistent with the ‘891’s
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`disclosure and a POSITA’s understanding. Ex. 1001, cls. 1, 3, 5, 1:57-61, 3:16-18,
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`2 PO fails to cite and waives any arguments in Ex. 2011 ¶¶ 1-8, 10-18, 39, 43, 45,
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`47, 59-60, 64, 70, 79-80, 86, 88-92, 97-98, 100-104, 107-108, 111, 113, 123-126,
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`129-134. Pap. 14, 3; 37 C.F.R. § 42.6(a)(3). Arguments
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`not made in POR are waived. Id.
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`3
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`4
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`4:47-49, Fig. 4; Ex. 1018 ¶¶ 9-10, 1-8. PO’s construction (POR 27) is
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`divorced from the Claims and specification and should be rejected.
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` The Claims recite “the band edge of the mask
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`defining said channel,” referring back to the “single mask-defined
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`bandlimited channel.” Id.; Ex. 1001, cls. 1, 3, 5.
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`The specification states “FCC masks typically require the power spectral density
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`of a signal to be attenuated at least 70 dB at the band edge.” Ex. 1001, 1:57-61;
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`Inst. 9; Ex. 1012, 48. Figure 4 is “an exemplary FCC
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`emissions mask,” requiring “attenuat[ion] at least 70 dB within 10 kHz from
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`center frequency.” Ex. 1001, 3:16-18, 4:47-49.
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` “[T]he band edge” of the mask in Figure 4 “includ[es] the
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`vertical lines at 10 kHz either side of the center frequency.” Inst. 10.5
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`Contrary to PO (POR 17-18), a POSITA would have understood
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`“the band edge” in Figure 4’s mask is at “plus 10 kilohertz” and “minus 10
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`kilohertz” from the center frequency, “supported by…the fact that it’s a 70-dB
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`attenuation, consistent with the specification.” Ex. 2012, 68:10-69:3; see also Ex.
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`1018 ¶ 10; Ex. 2012, 78:1-6.
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`5 Ex. 2012, 63:16-64:16.
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`IPR2016-00768
`U.S. Patent No. 5,659,891
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`Ex. 1001, Fig. 4.
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` The specification describes a “bandlimited
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`channel” as “a single range of frequencies.” Inst. 7; Ex. 1001, 5:15-19, 1:57-59. As
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`the Claims are directed to a “single mask-defined bandlimited channel”
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`and a “band edge of the mask defining said channel,” the Claims
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`require the mask to define that single range of frequencies. Each of
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`the left and right sides of the band edge of the mask must be located at respective
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`frequencies such that, at minimum, they include the frequency range of the
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`bandlimited channel—otherwise the mask would no longer be “defining [the]
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`3
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`U.S. Patent No. 5,659,891
`channel.” Ex. 1001, cls. 1, 3, 5. This is consistent with a POSITA’s understanding.6
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`Ex. 2012, 37:11-25 (Kakaes: “the band edge of the mask defining the channel must
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`be in a place where the channel has been included, or else it will not be the band
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`edge defining the channel.”), 38:1-15, 46:24-47:10; Ex. 2013, 180:5-181:4;
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`Ex. 1018 ¶ 9. This is consistent with the specification, which describes
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`Figure 4 as “attenuated at least 70 dB at the band edge,” and shows the band edge
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`of the mask defining the channel (at ±10 kHz), and including the channel.
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`Ex. 1001, 1:57-61, 3:16-18, 4:47-49, Fig. 4; Ex. 1018 ¶ 10; Ex. 2012, 68:21-69:3;
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`§ II.A.
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`Abandoning its prior construction
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`(POR 22), PO now asserts the proper construction is “the band edge that is nearest
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`to the center frequency of each outer most carrier at the highest power level of
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`each outer most carrier.” POR 27; POR 16-27. PO’s construction should
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`be rejected because it reads in limitations contrary to the claim
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`language and unsupported by the specification.
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`6 PO mischaracterizes Kakaes’ testimony regarding Petrovic (POR 17-18)
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` . See n. 10.
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`4
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`IPR2016-00768
`U.S. Patent No. 5,659,891
` The Claims recite “the band edge of the
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`mask” (Inst. 9), and do not require the extraneous limitations PO seeks
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`to add. PO
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`asserts “[c]laim construction under Phillips may read limitations in the
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`specification into the claims” (POR 6-7), but “one of the cardinal sins of patent
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`law—[is] reading a limitation from the written description into the claims.”
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`Phillips v. AWH Corp., 415 F.3d 1303, 1319-20 (Fed. Cir. 2005).
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` Nowhere does the ‘891 describe, much less require, calculating the
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`“nearest” band edge “at the highest power level of each outer most carrier.”
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`PO argues the specification describes a “nearest band edge” of “interest” that
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`must be “identif[ied]” out of multiple band edges on a given side of the mask.
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`POR 22-23. Contrary to PO, the specification uses the term “nearest” to distinguish
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`the left band edge from the right band edge relative to a particular outermost
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`carrier, and does not describe a “nearest band edge” out of multiple band edges on
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`a given side of the mask. Ex. 1018 ¶¶ 12-13. The passage PO cites
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`(Ex. 1001, 4:30-34) describes “the frequency difference between the center
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`frequency of each carrier and the nearest band edge….” POR 16-17, 20-28, 43, 49-
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`50. But “it is at least as likely from this description that the
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`‘nearest band edge’ can refer to…the vertical line depicting the band edge of the
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`5
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`mask on the left side…and its relationship to the center frequency of the left-most
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`carrier 32a, as compared with the vertical line depicting the band edge of the
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`mask, farther away, on the right side...” Inst. 11. The preceding paragraph
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`of the specification confirms the claimed “frequency difference” addresses the
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`relationship between “the band edges of the mask and the nearest respective
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`carrier” (Ex. 1001, 4:17-23), i.e., the band edge of the mask on the left side and
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`the left-most carrier (as opposed to the right-most carrier), and vice-versa.
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`Ex. 1018 ¶ 13.
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`Moreover, the Board correctly found the specification does not contain any
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`description of “band edge” that portrays the mask having multiple
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`edges (“for instance, innermost and outermost edges”)—rejecting PO’s argument
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`that the specification describes a “nearest” band edge out of multiple band edges
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`on a given side from the center frequency. Inst. 9; POR 27-29. Instead,
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` the specification describes the band edge in Figure 4’s mask is at 10 kHz
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`to the left and 10 kHz to the right of the center frequency
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` . Inst. 9-10; Ex. 1018 ¶ 10; Ex. 2012, 63:9-15; 36:9-16; cf.
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`POR 3, 50 (the band edge is not “any” band edge as PO asserts).
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`PO relies on the unsubstantiated testimony of Kesan, to
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`argue other masks show “multiple band edges,” but this extrinsic
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`evidence is inconsistent with the specification and should be disregarded. Phillips,
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`6
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`418 F.3d at 1318. Kesan testifies without support “FCC emission masks can have
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`multiple band edges,” meaning “all points along the edge of the mask that limits
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`the frequency band” (Ex. 2011 ¶¶ 51, 48; see also ¶¶ 49-50)—but the materials
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`cited do not use the phrase “band edge” much less describe “multiple band edges.”
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`POR 28; Ex. 1018 ¶¶ 14-15. Kesan’s testimony about “current” masks
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`(Ex. 2011 ¶¶ 49-51) in 2015 is irrelevant to the understanding of a POSITA
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`“at the time of the invention.” Phillips, 415 F.3d at 1313.
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`PO erroneously argues “[h]alf the distance between carriers, Dc, needs
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`to be minimized to increase the message capacity ” and is
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`only possible by choosing the “nearest,” not “farthest” band edge, to minimize
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`“Dm.” POR 33-34; POR 29-32, 42-43, 51-53. But the claims do not require
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`minimizing the frequency difference between carriers, nor do they require
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`minimizing the frequency difference between the band edge and the outermost
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`carrier.7 Instead, the claims state the frequency difference between the
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`band edge and outermost carrier is more than half the frequency difference
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`between carriers. The specification explains with transmitter co-
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`U.S. Patent No. 5,659,891
`location, a range of carrier spacings (“e.g., 5 to 10 kHz”) is achievable, but does
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`not require minimizing carrier spacing to, e.g., 5 kHz. Ex. 1001, 4:12-15.
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` Carrier spacing is just one variable considered
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` . Ex. 1001, 4:42-46; see also Ex. 2013, 191:3-192:3,
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`192:22-194:15, 211:17-212:8. ‘891’s Figure 3B shows Dm is not
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`minimized to minimize Dc (confirmed by PO’s annotation
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` ). See POR 21; Ex. 1018 ¶¶ 16-18.
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`U.S. Patent No. 5,659,891
` Kakaes did not agree “minimizing Dm necessarily minimizes Dc”—he
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` testified decreasing Dm does not necessarily decrease Dc to satisfy the
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`Claims (and increasing Dc does not necessarily mean increasing Dm).
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`POR 33, 43; Ex. 2013, 185:7-17, 186:12-18; Ex. 1018 ¶ 18.
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` For example—if Dm in Figure 3B is decreased, Dc need not
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`necessarily be decreased to meet Dm > Dc (and vice-versa
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` ).
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`PO argues “the nearest band edge” means “the band edge
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`that is nearest to the center frequency of each outer most carrier at the highest
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`power level of each outer most carrier.” POR 27; POR 23-27. But the
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`specification—including Figures 3A and 3B (POR 23-27)—
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`does not describe the band edge is determined according to “the
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`highest power level of each outer most carrier.” Ex. 1018 ¶ 19. PO describes a
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`hypothetical where “carriers 32c and 32d are not power level limited”
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` but hypothetical carriers 32c and 32d
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`as well as hypothetical points 31e and 31f are not described in the
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`specification. POR 26-27.
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` PO relies on Kesan’s incorrect testimony regarding the
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`placement of Figure 4’s mask over Figure 5A’s carriers. POR 34-37, 51.
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`U.S. Patent No. 5,659,891
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`But Kesan’s arbitrary placement of Figure 4’s mask in Figure 5A is
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` incorrect because it ignores the FCC specifications stating the mask
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` is defined relative to the total power of the unmodulated carrier. Ex. 1012,
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`82 (47 C.F.R. § 22.106 (1994) (“the power of any emission shall be attenuated
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`below the unmodulated carrier power (P)”)); Ex. 1001, 5:10-15. Kesan’s
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`testimony that carriers should be transmitted at less than “full power” to fit within
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`the mask is nonsensical, as the mask is defined relative to the total power of
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`the unmodulated signal. Ex. 1018 ¶¶ 19-25. The carriers’ power level cannot
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`be arbitrarily lowered to fit under a mask, as Kesan has done.8 Id.
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`As Petitioners’ expert, Kakaes, explains, based on the FCC requirements,
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` “0 dB” in Figure 4 indicates a power level as a
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`frame of reference relative to the total power of an unmodulated carrier, and “0
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`dB” in Figure 5A indicates a power level as a frame of reference relative to the
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`maximum power level of the modulated carrier at a given frequency.
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`Ex. 1018 ¶¶ 20-21; Ex. 2012, 133:10-135:8. To correctly determine how
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`Figure 4’s mask is placed in Figure 5A, it is necessary to determine the total power
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`of the unmodulated carrier (P). Ex. 1018 ¶ 23. Based on the total power of the
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`8 Kesan’s analysis with respect to the mask submitted in an IDS during prosecution
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`is likewise incorrect . POR 37-40, 51; Ex. 1018 ¶ 26-28.
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`11
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`unmodulated carrier, the correct placement of
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`Figure 4’s mask over Figure 5A’s carriers is at about 8.9-10.1 dB above the 0 dB
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`reference point in Figure 5A (shown below in blue). Ex. 1018 ¶ 23-24. This is
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`consistent with the ‘891: “carriers [in Figure 5A] remained within the FCC mask.”
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`Ex. 1001, 4:56-63; Ex. 1018 ¶ 24.
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`Ex. 1001, Figure 5A; Ex. 1018 ¶ 24.
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` Correctly applying Figure 4’s mask in Figure 5A
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`demonstrates PO’s construction is wrong. Using PO’s construction, the alleged
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`“nearest band edge” of Figure 4’s mask
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` is at approximately ±7.5 kHz, but the ‘891 specifies “the
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`band edge” is ±10 kHz from the center frequency (at 70 dB) .
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`12
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`Ex. 1001, 1:57-61, 3:16-18, 4:47-48; Ex. 1018 ¶ 25; see also Ex. 2011 ¶ 73.
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`Moreover, a band edge of ±7.5 kHz does not even meet the claim
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`limitations. Ex. 1018 ¶ 25.
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`Ex. 1001, Fig. 5A.
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`Thus, PO’s reliance on Kesan’s extrinsic hypotheticals should be rejected as
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`incorrect and inconsistent with the specification and claims. Contrary to Kesan, a
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`POSITA
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` would not have understood the
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`specification as describing selecting a “nearest band edge” from, e.g., points along
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`the diagonal lines of Figure 4’s mask based on the highest power level of the
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`carriers. Ex. 1018 ¶¶ 9-28.
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`IPR2016-00768
`U.S. Patent No. 5,659,891
` B.
`“transmitting carriers from the same location” (cls. 1, 3)9
`PO’s proposed construction of “transmitting carriers from the same location”
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`to require transmitting “at the same time” should be rejected because
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`it improperly reads in an extraneous limitation. POR 44-46; Hoganas v. Dresser
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`Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993). The
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`Claims “do[] not recite any temporal requirement, i.e., that all the carriers must be
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`transmitted at the same time, only that the carriers must be transmitted from the
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`same location.” Inst. 17 (emph. orig.). PO concedes the “claims do not
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`recite a temporal component with regard to transmitting.” POR 59.
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`PO’s construction finds no support in the specification, which
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` never once mentions
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`transmission “at the same time.” Ex. 1001, 2:26-36, 2:37-46, 2:47-59, 4:8-11;
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`Ex. 1018 ¶ 29. PO relies on Figure 1 (POR 59), but there is no disclosure
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`Figure 1 requires transmission “at the same time”—nor is Figure 1 limited to a
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`specific modulation method. Ex. 1018 ¶¶ 30-31. Besides, limitations
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`from embodiments are not read into claims. Hill-Rom Servs., Inc. v. Stryker Corp.,
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`755 F.3d 1367, 1371-72 (Fed. Cir. 2014).
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`9 For the same reasons
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`Claim 5 does not require transmitting “at the same time.”
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`14
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`Kesan’s extrinsic testimony regarding the alleged “reasons” for co-location
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` (POR 44-46) also provides no support for PO’s construction. PO
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`asserts transmission “at the same time” is required to achieve the “purpose” of
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`increasing “message capacity.” POR 45, 59. But the claim
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`language recites a “method of operating…carriers.” Inst. 17; POR 60
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` . Further,
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`PO’s own patent (U.S. 5,590,403) explains in modulation schemes,
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`such as modulated on/off keying (“OOK”), the amount of information
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` transmitted is a function of the number of carriers that are operational,
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`not of the number transmitting “at the same time.” Ex. 1019, 13:57-14:15;
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`Ex. 1018 ¶¶ 36, 32-39
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` . Ex. 1019, 14:10-12, Fig. 10;
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`Ex. 1018 ¶¶ 37-39.
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`Ex. 1018 ¶ 39; Ex. 2012, 123:5-124:13; Ex. 1019, 14:13-15, 13:64-67
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` .
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` PO argues transmission “at the same time” is required to “prevent[] [near-
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`far] interference .” POR 45. But the Claims do not
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`require “preventing [near-far] interference.” The Claims recite
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`U.S. Patent No. 5,659,891
`“transmitting said carriers,” and, as PO and Kesan acknowledge, near-far
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`interference occurs at the receivers—not at the transmitters. Ex. 2011 ¶ 27
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` ; POR 10-11; Ex. 1018 ¶ 40. Contrary
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`to PO’s assertion that “interference between carriers can only occur if they are
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`transmitting at the same time” (POR 45), whether a receiver experiences
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`interference depends on many factors, including receiver design, power level per
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`carrier, and receiver’s distance from the transmitter. Ex. 1018 ¶ 41.
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`Simultaneous carrier transmission is not a necessary condition for interference.
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`Ex. 1018 ¶ 41. In multicarrier modulation schemes like OOK, during
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`operation, all adjacent subcarriers overlap (i.e., interfere) even though all
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`subcarriers may not be keyed “ON” at every instant. Ex. 1018 ¶ 41.
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`“single mask-defined, bandlimited channel” (cls. 1, 3, 5)
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` C.
`Construction of this term is unnecessary as it is undisputed the prior art
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`discloses a “single mask-defined, bandlimited channel.” Inst. 8; Ex. 1001, 1:57-59,
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`5:11-19; POR 6-7; Vivid Techs. v. Am. Sci. & Eng’g, 200 F.3d 795, 803 (Fed. Cir.
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`1999).
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` THE PRIOR ART
`II.
` A.
`Petrovic discloses
` cls. 1.C, 3.C, 5.D
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`PO argues Petrovic does not disclose the frequency difference between the
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`outermost carrier and the band edge of the mask defining said channel is more than
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`16
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`half the frequency difference between adjacent carriers (POR 48-58), but Petrovic
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`discloses this limitation under the Board’s correct construction, and even under
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`PO’s construction.
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`Under the Board’s construction (§ I.A), Petrovic discloses this limitation.
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`Pet. 20-21; Inst. 14. Petrovic discloses “doubling the channel bandwidth” of a
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`known 25 kHz channel to a 50 kHz channel to provide “a 35 kHz pass band in the
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`middle of the channel and 7.5 kHz guard bands on each side,” with “eight
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`subcarriers spaced 5kHz apart.” Ex. 1013, 1; Pet. 20-21; Ex. 1003 ¶ 19; Inst. 14,
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`18-19. Petrovic thus discloses the frequency difference between the outermost
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`carriers and the band edge of the mask defining the channel (at least 7.5 kHz) is
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`more than half the frequency difference between adjacent carriers (2.5 kHz, which
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`is half of 5 kHz). Pet. 21; Ex. 1003 ¶¶ 21-22. PO argues “the guard bands” cannot
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`be “us[ed]…in relation to the mask.” POR 52-53. But Petrovic expressly discloses
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`an “emission mask” represented by “dashed-lines” (in Figures 1 and 2) defining a
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`50 kHz channel that includes “a 35 kHz pass band in the middle of the channel
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`and 7.5 kHz guard bands on each side.” Ex. 1013, 1-2; Pet. 20-21; Ex. 1003 ¶ 19;
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`Ex. 1018 ¶¶ 42-43 Ex. 2012, 32:6-33:12; Ex. 2012, 223 (Kakaes 4); Ex. 2013,
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`148:5-14.
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`17
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`Ex. 1013, Fig. 1; Pet. 18; Ex. 1003 ¶ 19.
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`
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`As explained (§ I.A), the ‘Claims recite a “single mask-defined bandlimited
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`channel” and “[a] band edge of the mask defining said channel”— thus, the band
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`edge of the mask defines the channel. Id.; Ex. 1001, cls. 1, 3, 5; Phillips, 415 F.3d
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`at 1314.
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`
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`Ex. 2012, 37:11-25, 38:1-15, 46:24-47:10;
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`Ex. 2013, 180:5-181:4; Ex. 1018 ¶ 44. This is consistent with the specification,
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`where Figure 4 shows the “band edge of the mask” defining the channel and
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`including the entire channel, not a portion of the channel. Ex. 1001, 1:57-61,
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`3:16-18, 4:47-49, Fig. 4; Ex. 1018 ¶ 44; Ex. 2012, 68:21-69:3; § I.A.
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`18
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`U.S. Patent No. 5,659,891
`Because Petrovic discloses the 7.5 kHz guard bands are part of the 50 kHz
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`channel, “the band edge of the mask,” at minimum, is located 7.5 kHz from “the
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`center frequency of the outer most of said carriers” to define the channel.10
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`Ex. 1013, 1-2; Pet. 20-21; Ex. 1003 ¶¶ 19-20; Ex. 1018 ¶ 44; Ex. 2012, 32:6-33:12,
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`37:11-25, 38:1-15, 46:24-47:10; Ex. 2013, 180:5-181:4. PO admits “the 7.5
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`kHz guard bands are actually the edges of the 50 kHz channel itself.” POR 53.
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`Furthermore, Petrovic discloses a modulation technique, “included in
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`MTEL’s petition to the FCC” requiring “attenuat[ion] of at least 70 dB” even
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`beyond the 7.5 kHz guard bands (see pink arrows below). Ex. 1013, 4, Figs. 1, 2;
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`Ex. 2012, 39:2-25 (Kakaes: Petrovic’s mask requires “attenuation…[of] at least 70
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`dB”), 223 (Kakaes 4); Ex. 1001, Fig. 4, 1:57-61 (“FCC masks typically
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`require…attenuat[ion] [of] at least 70 dB at the band edge”), 2:16-18, 4:47-49.
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` A frequency difference of at least 7.5 kHz is more than
`
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`10 Contrary to PO (POR 41-43, 18), Kakaes did not need to determine definitively
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`the outer bounds of “the band edge of the mask,” as Petrovic discloses the
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`limitation regardless of the outer bounds. Ex. 2012, 36:17-24, 64:17-65:21;
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`Ex. 1003 ¶ 20; Ex. 1018 ¶¶ 11,44-45; Vivid, 200 F.3d at 803 (“only those terms
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`need [to] be construed that are in controversy, and only to the extent necessary to
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`resolve the controversy”).
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`19
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`U.S. Patent No. 5,659,891
`2.5 kHz (half of the 5 kHz between adjacent subcarriers) and meets this limitation.
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`Pet. 14-15, 21.
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`Ex. 1013, Fig. 1.
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`
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` Applying its incorrect construction (§ I.A), PO argues “the band edge of
`
`the mask” is based on the power level of the outermost carriers as shown
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`in “Drawing 12.” POR 53-55. But applying PO’s construction to Petrovic
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`excludes portions of the 50 kHz channel, inconsistent with the Claims’
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`recitation of “[a] band edge of the mask defining said channel”—not portions of a
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`channel. Ex. 1018 ¶¶ 46-47.
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`
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`
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`20
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`
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`PO further argues in Petrovic’s Figure 1, Carrier 4—not Carrier 7—is
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`adjacent to Carrier 8. POR 55. But Petrovic discloses Carriers 7 and 8 are
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`adjacent. Petrovic’s system has “eight
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`subcarriers spaced 5 kHz apart” and operates using 70 symbols (representing all
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`combinations of four of the eight subcarriers). Ex. 1013, 1; Ex. 1003 ¶¶ 18, 21;
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`Ex. 1018 ¶ 48. Petrovic’s “transmitter output is presented in Fig. 1, and 2”—Figure
`
`1 shows “a single symbol…repeatedly transmitted” and Figure 2 shows “pseudo
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`random data,” (Ex. 1013, 2) where “the set of four [i]s
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`continuously changing.” (Ex. 2012, 101:15-103:8); Pet. 13-16; Ex. 1003 ¶ 18;
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`Ex. 1018 ¶ 48; see also Ex. 2012, 112:9-17; § I.B (claims do not require
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`transmitting at the same time). Accordingly, Carrier 7 is adjacent to Carrier 8.
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`
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`21
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`Ex. 1013, Fig. 1; Pet. 16.
`Ex. 1013, Fig. 1; Pet. 16.
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`22
`22
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`Ex. 1013, Fig. 2; Pet. 13.
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`
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` Even under PO’s incorrect construction of “the band edge of
`
`the mask,” Petrovic’s Figure 2 shows the
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`frequency difference between the outermost carriers and the band edge (orange
`
`arrows below) is more than half the frequency difference between adjacent
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`carriers, for both Carriers 1 and 8.11 As shown below, the orange arrows are larger
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`than the purple arrows. Ex. 1018 ¶ 49.
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`11 The “transmitter output” of Petrovic’s modulation scheme is shown in Figures 1
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`and 2 (Ex. 1013, 2; Pet. 13) and is not limited to Figure 1 (cf. POR 49).
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`23
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`Ex. 1013, Fig. 2 (excerpted); Pet. 13; Ex. 1003 ¶¶ 18-19.
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` Even applying PO’s incorrect constructions for “transmitting carriers
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`from the same location” and “the band edge,” Petrovic still discloses this
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`limitation.
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` Ex. 1013, 1-2; Pet. 19, 21; Ex. 1003 ¶ 21.
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`When Carriers 3, 4, 5, and 6 are transmitted,
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`the frequency difference between the outermost carriers and the band edge (orange
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`arrows below) is more than half the frequency difference between adjacent carriers
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`(purple arrows below), for both Carriers 3 and 6. Ex. 1018 ¶ 50; Ex. 1013, 1-2
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`(Petrovic’s system operates using all combinations of
`
`24
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`U.S. Patent No. 5,659,891
`four of the eight subcarriers); Ex. 2012, 113:14-114:6. As shown below, the orange
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`arrows are larger than the purple arrows.
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`
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`Ex. 1013, Fig. 1 (excerpted); Pet. 13; Ex. 1003 ¶¶ 23, 25-26.
`
`
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`PO’s attempts to distinguish Petrovic based on its “purpose” and
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`“modulation method” (POR 55-58) also fail, as Petrovic describes the same
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`purpose as the ‘891 (§ II.B), and discloses “multicarrier permutation modulation”
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`“capable of 4-FSK.” Ex. 1013, 1-2. Nor are the claims or specification limited to a
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`specific modulation method. Ex. 1018 ¶ 51.
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`25
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`U.S. Patent No. 5,659,891
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` B.
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`Petrovic discloses
` cls. 1.B, 3.B12
` Petrovic discloses “transmitting said carriers
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`from the same location.” Inst. 17; Pet. 17-18, 19-20; Ex. 1013, 2; Ex. 1003 ¶¶ 25-
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`26; Ex. 1018 ¶ 52. PO does not dispute that . Rather, PO relies
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` on its construction requiring transmission “at the same time.”
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`POR 58-60.
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` The Claims
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`are directed to a “method of operating…carriers.” Inst. 17; POR 60. As explained
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`(§ I.B) and contrary to PO (POR 60), all eight of Petrovic’s subcarriers are
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` operating at the same time (even if the carriers at an instant in time
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`may not all be transmitting power “at the
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