Paper 10
`Entered: January 22, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01035
`Patent 5,659,891
`
`
`
`Before MIRIAM L. QUINN, MEREDITH C. PETRAVICK, and SCOTT A.
`DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`DECISION
`Decision on Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Petitioners, Ex. 1004, Page 1
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`

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`IPR2014-01035
`Patent 5,659,891
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`A. Background
`
`I. INTRODUCTION
`
`Apple Inc., (“Petitioner”) filed a Petition to institute an inter partes
`
`review of claims 1–5 of U.S. Patent No. 5,659,891 (“the ’891 patent”).
`
`Paper 7 (“Pet.”). Mobile Telecommunications Technologies, LLC, (“Patent
`
`Owner”) timely filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
`
`We have authority to determine whether to institute an inter partes
`
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
`
`of the Petition and the Preliminary Response, we determine that Petitioner
`
`has established a reasonable likelihood of prevailing on the claims
`
`challenged in the Petition. Accordingly, we institute an inter partes review
`
`of claims 1–5 of the ’891 patent.
`
`B. Additional Proceedings
`
`Petitioner states that the ’891 patent presently is asserted against
`
`Petitioner in Mobile Telecommunications Technologies, LLC v. Apple Inc.,
`
`Case No. 2:13-CV-258, in the U.S. District Court for the Eastern District of
`
`Texas (hereinafter “Apple lawsuit”). Pet. 1. Petitioner also points out that
`
`the ’891 patent is asserted against other parties in Mobile
`
`Telecommunications Technologies, LLC v. Leap Wireless International, Inc.,
`
`Case No. 2-13-CV-885; and Mobile Telecommunications Technologies, LLC
`
`v. T-Mobile USA, Inc., Case No. 2-13-CV-886, both also in the Eastern
`
`District of Texas. Id.
`
`C. The ’891 Patent
`
`The ’891 patent (Ex. 1001), titled “Multicarrier Techniques in
`
`Bandlimited Channels,” generally relates to a method and apparatus for
`
`multicarrier modulation (“MCM”) using geographically co-located
`
`2
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`
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`Petitioners, Ex. 1004, Page 2
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`

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`IPR2014-01035
`Patent 5,659,891
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`transmitters to achieve a higher frequency transmission capacity within FCC
`
`emission mask limits. The method provides for a plurality of overlapping
`
`subchannels within a single bandlimited channel to provide higher data
`
`transmission capacity for a mobile paging system. Ex. 1001, 2:15–59. The
`
`technique involves transmitting a plurality of paging carriers, in
`
`corresponding overlapping subchannels, from the same location and within
`
`the umbrella bandlimited channel, without bandlimiting each of the
`
`individual subchannels. Id. In this way, with the center frequencies of the
`
`plurality of modulated carriers within the single bandlimited channel, an
`
`optimum transmission capacity is provided and the plurality of carriers may
`
`emanate from the same transmission source, i.e., an antenna. Id.
`
`Figure 3B of the ’891 patent, reproduced below, depicts two adjacent
`
`carriers asymmetrically located within a single, mask-defined, bandlimited
`
`channel.
`
`3
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`
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`Petitioners, Ex. 1004, Page 3
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`

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`IPR2014-01035
`Patent 5,659,891
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`
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`As depicted by Figure 3B of the ’891 patent, above, two carriers 32a
`
`and 32b are shown operating over two subchannels (no reference number)
`
`within a bandlimited mask (also no reference number) defining the channel.
`
`The subchannels are asymmetrically aligned within the mask resulting in
`
`partial subchannel overlap. Id. at 4:24–30. The center frequencies of the
`
`carriers 32a and 32b are shown by the vertical dashed lines, and,
`
`concomitant with the subchannels, carriers 32a and 32b also overlap.
`
`According to the ’891 patent, geographic co-location of the transmitters
`
`reduces interference problems between adjacent subcarriers, thus allowing
`
`the spacing between subchannels to be reduced. Id. at 4:12–20. The ’891
`
`patent explains that the practical implications of such an asymmetrical
`
`arrangement are a greater range of operating parameters, essentially because
`
`4
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`Petitioners, Ex. 1004, Page 4
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`

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`IPR2014-01035
`Patent 5,659,891
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`more subchannels can be be fit within the bandlimited mask without undue
`
`interference. Id. at 4:36–46.
`
`D. Illustrative Claim[s]
`
`Of the challenged claims, claims 1, 3, and 5 are independent. Each of
`
`dependent claims 2 and 4 depend directly from claims 1 and 3 respectively.
`
`Claim 1 illustrates the claimed subject matter and is reproduced below:
`
`1. A method of operating a plurality of paging carriers in
`a single mask-defined, bandlimited channel comprising the
`step of transmitting said carriers from the same location with
`said carriers having center frequencies within said channel
`such that the frequency difference between the center frequency
`of the outer most of said carriers and the band edge of the mask
`defining said channel is more than half the frequency difference
`between the center frequencies of each adjacent carrier.
`
`
`E. The Alleged Grounds of Unpatentability
`
`Petitioner contends that the challenged claims are unpatentable on the
`
`following specific grounds.1
`
`
`
`References
`
`Petrovic2
`
`Petrovic, Raith3, and
`
`Alakija4
`
`Basis
`
`§ 102
`
`§ 103
`
`Claims Challenged
`
`1–5
`
`5
`
`
`1 Petitioner supports its challenge with a Declaration of Dr. Apostolos K.
`Kakaes, Ph.D. (Ex. 1004, “Kakaes Decl.”).
`
` 2
`
` Ex. 1008, Rade Petrovic, Walt Roehr & Dennis Cameron, Permutation
`Modulation For Advanced Radio Paging, IEEE, 1993, at 1.
`3 Ex. 1010, WO 89/08355 (Aug. 9, 1989).
`
`5
`
`
`
`Petitioners, Ex. 1004, Page 5
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`

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`Patent 5,659,891
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`References
`
`Cimini5
`
`Cimini, Raith, and
`
`Alakija
`
`
`
`Basis
`
`§ 102
`
`§ 103
`
`Claims Challenged
`
`1–5
`
`5
`
`II. CLAIM CONSTRUCTION
`
`A. Legal Standard
`
`We interpret claims of an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[they] appear[].” 37 C.F.R. § 42.100(b); see also Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms
`
`are given their ordinary and customary meaning as would be understood by
`
`a person of ordinary skill in the art at the time of the invention and in the
`
`context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). If the specification “reveal[s] a special
`
`definition given to a claim term by the patentee that differs from the
`
`meaning it would otherwise possess[,] . . . the inventor’s lexicography
`
`governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
`
`banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`
`(Fed. Cir. 2002)). We apply this standard to the claims of the ’891 patent.
`
`
`4 Ex. 1011, C. Alakija & S.P. Stapleton, A Mobile Base Station Phased
`Array Antenna, IEEE, Feb. 1992, at 1.
`5 Ex. 1009, Leonard J. Cimini, Jr., Analysis and Simulation of a Digital
`Mobile Channel Using Orthogonal Frequency Division Multiplexing, IEEE,
`July 1985, at 1.
`
`6
`
`
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`Petitioners, Ex. 1004, Page 6
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`
`1. Single mask-defined, bandlimited channel
`
`
`
`Independent claims 1, 3, and 5 recite a “single mask-defined,
`
`bandlimited channel.” According to Petitioner, the term means: “a channel
`
`confined to a frequency range.”6 Pet. 3–4. Patent Owner proposes we
`
`interpret the term as a “channel whose bandwidth is further limited by a
`
`single emission mask.” Prelim. Resp. 6.
`
`Patent Owner’s construction relies on the premise that a channel has a
`
`certain limited bandwidth, and “[a] bandlimited channel, therefore, is a
`
`channel whose bandwidth is further limited.” Id. at 7. The main problem
`
`with this argument is the word “further.” A single channel is, essentially, a
`
`slice of a frequency band. The term “bandlimited,” itself, conveys that a
`
`channel is defined within a prescribed portion of a frequency band. The
`
`word “further” is superfluous because the ordinary meaning of the word
`
`“limited” is understood as establishing boundaries for the channel.
`
`The ’891 patent indicates that a mask-defined bandlimited channel is
`
`applied where “[t]he FCC requires signals to be confined within emission
`
`limit masks in order to prevent interference caused by signals straying or
`
`spilling into adjacent channels.” Ex. 1001, 1:57–59. In the context of the
`
`’891 patent, a “bandlimited channel” is also where “carriers operating at
`
`different frequencies are fit within a single bandwidth allocation in a manner
`
`consistent with FCC mask requirements.” Id. at 5:15–19. The Specification
`
`thus describes this term essentially as a single range of frequencies in the
`
`
`6 In the Apple lawsuit, the parties stipulated that a “single mask-defined,
`bandlimited channel” means, “a channel confined to a frequency range.”
`Ex. 1006, 76.
`
`7
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`
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`Petitioners, Ex. 1004, Page 7
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`IPR2014-01035
`Patent 5,659,891
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`frequency band, not as a specific range which is then again, i.e., further,
`
`limited.
`
`We find Petitioner’s proposed claim construction to be reasonable for
`
`the purposes of this Decision. In light of the Specification, the ordinary and
`
`customary meaning of a “single mask-defined, bandlimited channel” is: “a
`
`channel confined to a frequency range.” See Ex. 1006, 76.
`
`2. Plurality of Transmitters
`
`Independent claim 5 recites a “plurality of transmitters.” According
`
`to Petitioner, the term means: “a configuration in which multiple carriers are
`
`emanated from the same transmission source (e.g., as illustrated in FIGS. 1
`
`and 2).”7 Pet. 6. Patent Owner does not provide a construction.
`
`Petitioner’s claim construction, however, incorporates an additional
`
`limitation from claim 5, namely that, “said plurality of carriers can be
`
`emanated from the same transmission source.” (Emphasis added). Under
`
`the broadest reasonable interpretation standard, we reject the implication that
`
`a “plurality of transmitters” by itself means anything other than “more than
`
`one transmitter.” It is well settled that “‘plurality,’ when used in a claim,
`
`refers to two or more items, absent some indication to the contrary.” Dayco
`
`Products, Inc. v. Total Containment, Inc., 258 F.3d 1317, 1327-28 (Fed. Cir.
`
`2001) (citing York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99
`
`F.3d 1568, 1575 (Fed. Cir. 1996)). Thus, for purposes of this Decision, we
`
`interpret “plurality of transmitters” as two or more transmitters.
`
`
`7 In the Claim Construction Order in the Apple lawsuit, the parties agreed
`that the term means: “at least two transmitters,” Ex. 1006, 76.
`
`8
`
`
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`Petitioners, Ex. 1004, Page 8
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`3. Band edge
`
`Independent claims 1, 3, and 5 recite the limitation, “the band edge,”
`
`without proper antecedent basis. Patent Owner proposes that “the band edge
`
`is the edge of the single emission mask defining the bandlimited channel.”
`
`Prelim. Resp. 8. Petitioner did not construe this term.
`
`On its face, in each of claims 1, 3, and 5, the limitation reads in
`
`context “the band edge of the mask defining said channel,” clearly referring
`
`to the “single mask-defined, bandlimited channel.” (Emphasis added). To
`
`the extent Patent Owner’s proffered construction is consistent with the
`
`preceding limitation to which “the mask” refers, it is not in error.
`
`Nevertheless, for purposes of this decision, for “the band edge,” we adopt
`
`the following construction for clarity and for consistency with the usage of
`
`the term in the claims: “a band edge of the single mask-defined, bandlimited
`
`channel.”
`
`4. Each adjacent carrier
`
`Patent Owner asserts that “each adjacent carrier” should be construed
`
`as “every single carrier, two of which having a common endpoint or border.”
`
`Prelim. Resp. 9. Specifically, Patent Owner relies upon the definition of
`
`“adjacent” as meaning “having a common endpoint or border,” from
`
`Merriam Webster’s Online Dictionary. Id. (citing MERRIAM WEBSTER
`
`ONLINE DICTIONARY, http://www.merriam-
`
`webster.com/dictionary/adjacent). Petitioner did not provide a construction
`
`for this term.
`
`Upon review, we disagree that the meaning of “adjacent” as used in
`
`the ’891 patent is limited to requiring that adjacent carriers must have a
`
`common endpoint or border. When construing claims, our “focus must
`
`9
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`Petitioners, Ex. 1004, Page 9
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`IPR2014-01035
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`begin and remain centered on the language of the claims themselves.”
`
`Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed.
`
`Cir. 2001). In the context of the claims, “adjacent” means “next to.”
`
`Consulting Merriam Webster’s Online Dictionary from this perspective, we
`
`note that “adjacent” is also defined as “immediately preceding or following.”
`
`MERRIAM WEBSTER ONLINE DICTIONARY, http://www.merriam-webster
`
`.com/dictionary/adjacent (last visited Dec. 18, 2014). This dictionary
`
`definition aligns with the claim language and the context of the
`
`Specification, and, therefore we find this to be more consistent with the
`
`broadest reasonable interpretation than the definition proffered by Patent
`
`Owner. The Specification is silent with respect to any interpretation
`
`narrower than this. The Specification states that:
`
`Moreover, the carriers need not be symmetrically or evenly
`spaced within the mask defining the channel. That is, the
`frequency spacings between adjacent carriers, while symmetric
`to each other, can be smaller than the frequency spacings
`between the band edges of the mask and the nearest respective
`carrier. Indeed, carrier spacings may be irregular such that the
`carriers are asymmetrically located within the mask without
`incurring undue interference.
`
`Ex. 1001, 4:15–23 (emphasis added). We understand from this disclosure
`
`that adjacent carriers (i.e., carriers next to one another) may have symmetric
`
`frequency spacings with respect to one another, or potentially “irregular”
`
`asymmetrical spacing with respect to one another, within the mask. Id.
`
`Whether the carriers are symmetric or asymmetrically spaced, we find no
`
`language in the claims requiring that adjacent carriers must have a common
`
`endpoint or border, nor do we find evidence in the specification of such a
`
`requirement. Furthermore, Patent Owner has not pointed us to any
`
`persuasive evidence that “adjacent” is restricted to carriers “having a
`
`10
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`Petitioners, Ex. 1004, Page 10
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`IPR2014-01035
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`common endpoint or border.”
`
`Consequently, for the purpose of this Decision, we construe the term
`
`“adjacent” in the phrase “each adjacent carrier,” according to its plain and
`
`ordinary meaning in the context of the Specification, to mean “next to.”
`
`5. Other constructions
`
`We do not provide explicit constructions for the remaining claim
`
`terms disputed by the parties because doing so is not necessary for our
`
`determination of whether to institute inter partes review of the asserted
`
`claims.
`
`III. ANALYSIS
`
`We turn now to Petitioner’s asserted grounds of unpatentability, and
`
`Patent Owner’s arguments in its Preliminary Response, to determine
`
`whether Petitioners have met the threshold standard of 35 U.S.C. § 314(a).
`
`
`
`A. Claims 1– 5 – Anticipation by Petrovic
`
`Petitioner asserts that claims 1–5 would have been anticipated by
`
`Petrovic. Pet. 9. Petitioner has established a reasonable likelihood of
`
`prevailing on its assertion that claims 1–5 are anticipated for the reasons
`
`explained below.
`
`1. Overview of Petrovic
`
`Petrovic discloses a multicarrier modulation technique for a radio
`
`paging system, simultaneously broadcasting the same information, in the
`
`same channel, by different transmitters with overlapping coverage areas, to
`
`improve the reliability of reception by a receiver, i.e., a pager device, in any
`
`given coverage area. Ex. 1008 1 ¶¶ 1–3. Petrovic explains that this
`
`simulcasting technique also provide an increased bit rate and better
`
`11
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`Petitioners, Ex. 1004, Page 11
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`frequency spectrum efficiency across paging radio channels. Id.
`
`Figure 1 of Petrovic, reproduced below, depicts a signal spectrum
`
`having four carriers, all within an emission mask denoted by the dashed line.
`
`
`
`Figure 1 illustrates a spectrum of a
`single symbol repeatedly transmitted.
`
`
`
`
`
`Pointing out that radio paging systems generally were known to
`
`operate within a 25 kHz channel, Petrovic’s modulation technique proposes
`
`“doubling the channel bandwidth in order to allow higher throughput. This
`
`should be done by moving the current emission mask boundaries away from
`
`the center frequency by +/- 12.5 kHz.” Id. at 1 ¶ 6. Petrovic further explains
`
`that the 50 kHz frequency range provides “a 35 kHz pass band in the middle
`
`of the channel and 7.5kHz guard bands on each side.” Id.
`
`Petrovic explains, in accordance with the symbols shown in Figure 1,
`
`that to best utilize the allocated 50 kHz spectrum, the multicarrier
`
`12
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`Petitioners, Ex. 1004, Page 12
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`modulation technique uses eight (8) symbols, i.e., carriers, each center
`
`frequency spaced 5 kHz apart, and that in any given carrier interval, 4 of the
`
`carriers are “ON,” while 4 others are “OFF.” Id. ¶ 7.
`
`Petrovic also describes a series of laboratory and field experiments in
`
`the 930 MHz frequency band where “[e]ach transmitter has four
`
`subtransmitters capable of 4-FSK over a subset of the 8 frequencies.
`
`Outputs of the subtransmitters are combined and sent to a common antenna.”
`
`Id. at 2 ¶ 6. The experiments included two transmitters “installed seven
`
`miles apart and synchronized to provide a simulcast overlap area with
`
`approximately 35 dBµV/m signal strength.” Id.
`
`2. Discussion
`
`a) Claim 1
`
`Addressing the limitations of claim 1, Petitioner asserts that Petrovic
`
`discloses a radio paging system utilizing a plurality, i.e., eight, paging
`
`carriers within a single mask-defined, 50 kHz bandlimited channel. Pet. 15–
`
`16 (citing Ex. 1008, Abstract). Drawing attention to the “Experiments”
`
`section in Petrovic, Petitioner argues that Petrovic’s experiments describe
`
`transmitting the plurality of carriers from the same location. Id. at 15 (citing
`
`Ex. 1008, 2, Experiments). Petitioner contends that by doubling the 25 kHz
`
`bandwidth to 50 kHz, Petrovic provides an emission mask having a pass
`
`band of 35 kHz, and guard bands of 7.5 kHz on either side of the spectrum.
`
`Id. at 18–19. Petrovic’s eight subcarriers, Petitioner argues, are each spaced
`
`5 kHz apart, which places the center frequency of the end most subcarriers
`
`35 kHz apart, leaving 7.5 kHz between the end most subcarriers and the
`
`channel boundary. Id. Petitioner explains that, “[i]n other words, there is 5
`
`kHz between the center frequencies of each adjacent carrier and 7.5 kHz
`
`13
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`Petitioners, Ex. 1004, Page 13
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`between the center frequency of the outer most of said carriers and the band
`
`edge of the mask defining the channel. 7.5 is more than half of 5.” Id. at 19
`
`(citing Ex. 1004 ¶¶ 21–22). Petitioner argues that according to this
`
`disclosure, “Petrovic describes 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,” as recited by claim
`
`1.
`
`Petitioner supports its position with respect to the outer carrier and
`
`band edge position limitations in claim 1 with Dr. Kakaes Declaration,
`
`which states in part that:
`
`the frequency difference between the center frequency of the
`outer most of the carriers and the band edge of the mask
`defining said channel (which is greater than 7.5 kHz) is more
`than half
`the frequency difference between
`the center
`frequencies of each adjacent carrier (which is 5 kHz), as
`required by claim 1. Thus, Petrovic describes the feature that
`led to the allowance of the ‘891 patent.
`
`Ex. 1004 ¶ 22.
`
`Patent Owner makes three arguments, first that Petrovic does not
`
`disclose “a single mask-defined, bandlimited channel.” Second, Patent
`
`Owner contends that Petrovic fails to 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;” and third, that Petrovic is not “operating or transmitting
`
`said carriers from the same location.” Prelim. Resp. 17.
`
`We are not persuaded by Patent Owner’s first argument because, as
`
`14
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`Petitioners, Ex. 1004, Page 14
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`discussed above, Petrovic has been shown to disclose a 50 kHz spectra
`
`emission mask defining a bandlimited channel that is “a channel confined to
`
`a frequency range,” i.e., a channel confined within a 50 kHz slice of the 930
`
`MHz frequency band as shown in Petrovic’s Figure 1. Ex. 1008, 1 ¶ 6; Ex.
`
`1004 ¶¶ 18–19. With regards to Patent Owner’s second argument, we are
`
`not persuaded that the 35 kHz pass band, which is only a portion of the 50
`
`kHz channel described in Petrovic, is the channel bandlimit. See Prelim.
`
`Resp. 19–20. This assertion fails to account for the 7.5 kHz guard bands on
`
`either end of the spectrum which, together with the 35 kHz passband, make
`
`up the 50 kHz bandlimited channel according to Petitioner’s expert Dr.
`
`Kakaes. Ex. 1004 ¶ 19.
`
`Patent Owner argues that the pass band frequency of 35 kHz is “the
`
`band edge, so there is no difference between the center frequency of an outer
`
`most carrier and the band edge as required by the claims.” Prelim. Resp. 23.
`
`At this stage in this proceeding, the evidence of record indicates that the
`
`“band edge,” construed above as “a band edge of the single mask-defined,
`
`bandlimited channel” is inclusive of a 50 kHz frequency range.
`
`Accordingly, with the guard bands extending 7.5 kHz beyond the center
`
`frequency of the outermost carriers, and given a 5 kHz spacing between
`
`subcarriers, we are persuaded by the record before us that Petrovic’s 7.5 kHz
`
`guard band discloses “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,” as called for in claim 1.
`
`(Emphasis added).
`
`We also are not persuaded by Patent Owner’s argument that
`
`15
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`Petitioners, Ex. 1004, Page 15
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`Petrovic’s disclosure that four carriers are “ON,” and four are “OFF,” fails
`
`to meet the “each adjacent carrier” limitation in claim 1. Prelim. Resp. 27.
`
`Petitioner has shown persuasively that Petrovic discloses eight adjacent
`
`carriers spaced 5 kHz apart within the 50 kHz Channel. Pet 16–17 (citing
`
`Ex. 1008, 1). Claim 1 does not recite any temporal requirement, i.e., that all
`
`the carriers must be transmitted at the same time, only that the carriers must
`
`be transmitted from the same location.
`
`We are also not convinced that Petrovic fails to disclose “transmitting
`
`said carriers from the same location,” as claim 1 recites. Petitioner has
`
`shown persuasively that Petrovic’s “Experiments” section describes that
`
`“[e]ach transmitter has four subtransmitters capable of 4-FSK over a subset
`
`of the 8 frequencies.” Ex. 1008, 2 ¶ 6. Based on this, Petitioner’s expert
`
`testimony alleges that Petrovic uses “a transmitter with four subtransmitters
`
`to transmit the eight subcarriers . . . [t]hus, each of the eight subcarriers are
`
`transmitted from the same location (i.e., the common antenna). Ex. 1004
`
`¶ 25. At this point in the record, without sufficient evidence to the contrary,
`
`Petitioner’s factually-supported argument that Petrovic describes
`
`transmitting all the carriers from the same location is persuasive.
`
`For the reasons provided above, Petitioner has established a
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`reasonable likelihood of prevailing on the ground of unpatentability of claim
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`1 as anticipated by Petrovic under 35 U.S.C. § 102(b).
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`b) Claims 2 and 4
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`With respect to claims 2 and 4, Petitioner relies on Petrovic’s Figure 1
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`to show that adjacent carriers (claim 2) and subchannels (claim 4) “overlap
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`with each other,” as recited in these claims. Pet. 13–14.
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`Patent Owner asserts only that claims 2 and 4 are not anticipated by
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`Petrovic because their respective base claims 1 and 3 are not anticipated by
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`Petrovic. Prelim. Resp. 29.
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`We have reviewed Petitioner’s factually-supported arguments and the
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`evidence presented regarding claims 2 and 4 (Pet. 17–19, 22), and we are
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`persuaded that sufficient evidence demonstrates a reasonable likelihood of
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`prevailing as to the unpatentability of those claims.
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`For the reasons provided above, Petitioner has established a
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`reasonable likelihood of prevailing on the ground of unpatentability of
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`claims 2 and 4 as anticipated by Petrovic under 35 U.S.C. § 102(b).
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`c) Claims 3 and 5
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`Petitioner advances essentially the same arguments for independent
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`claims 3 and 5, as asserted with respect to claim 1. See Pet. 21–24.
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`For its part, Patent Owner argues that claim 3 is not anticipated by
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`Petrovic for the same reasons as claim 1. Prelim. Resp. 17–29.
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`As discussed above, we are persuaded that Petitioner has shown
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`sufficiently that Petrovic describes a 50 kHz spectra emission mask defining
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`a bandlimited channel that is “a channel confined to a frequency range,” i.e.,
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`a channel confined within a 50 kHz slice of the 930 MHz frequency band,
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`such that Petrovic discloses “a single mask-defined, bandlimited channel” as
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`recited in claim 3. Ex. 1008, 1 ¶ 6; Ex. 1004 ¶¶ 18–19. For the same
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`reasons stated above in connection with claim 1, we are not persuaded by
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`Patent Owner’s argument that the 35 kHz pass band is the channel bandlimit.
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`See Prelim Resp. 19–20.
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`Different from independent claims 1 and 3, claim 5 specifically recites
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`“co-locating said plurality of transmitters.” (Emphasis added.) Patent
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`Owner argues that Petrovic discloses spacing the transmitters seven miles
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`apart, not “co-locating” them. Prelim. Resp. 28. Petitioner asserts that
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`Petrovic discloses a plurality of co-located transmitters where it states that
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`“[e]ach transmitter has four subtransmitters capable of 4-FSK over a subset
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`of the 8 frequencies. Outputs of the subtransmitters are combined and sent
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`to a common antenna.” Ex. 1008, 2 ¶ 6. Dr. Kakaes’s Declaration supports
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`this position explaining that “[a] block diagram of the four “subtransmitters”
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`described by Petrovic would be structured in a similar manner to the systems
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`shown in either of Figures 1 and 2 of the ’891 patent, except with four data
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`sources and modulators instead of two.” Ex. 1004 ¶ 26.
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`For the reasons provided above, we are persuaded that Petitioner has
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`established a reasonable likelihood of prevailing on the ground of
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`unpatentability of claims 3 and 5 as anticipated by Petrovic under 35 U.S.C.
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`§ 102(b).
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`B. Claim 5 – Obviousness over Petrovic, Raith, and Alakija
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`Petitioner has established a reasonable likelihood of prevailing on its
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`assertion that claim 5 is obvious for the reasons explained below.
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`Patent Owner contends that Petitioner cannot rely upon litigation
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`positions in the Apple lawsuit as a basis for claim construction of the word
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`“transmitter.” Prelim. Resp. 31. We note that in this proceeding neither
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`party has asked the Board to construe the word “transmitter” by itself.
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`Moreover, our Decision does not turn upon a specific interpretation of the
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`word “transmitter” alone. Patent Owner’s argument here, thus, is
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`unpersuasive with respect to the obviousness analysis.
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`We also are not persuaded by Patent Owner’s argument that Petitioner
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`has failed to present articulated reasoning with rational underpinnings.
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`Prelim. Resp. 31–32. Petitioner provides an articulated reason with a
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`rational underpinning to combine Petrovic with Raith, stating that:
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`one of ordinary skill in the art would have been motivated to
`expand the experimental paging system configuration described
`in Petrovic to include multiples adjacent paging cells/regions
`similar in structure illustrated in Figure 1 of Raith . . . in order
`to provide messaging services to a larger geographic area and a
`larger number of mobile devices (e.g., pagers).
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`Pet. 31–32 (citing Ex. 1004 ¶ 32). We are persuaded that, on the record
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`before us, Petitioner also provides a sufficient reason with rational
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`underpinnings for adding the single antenna structure from Alakija,
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`specifically:
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`One of ordinary skill in the art would have been motivated to
`utilize a single cylindrical antenna structure to emit the output
`signals of the three co-located transmitters described by
`Petrovic in view of Raith instead of three separate antennas,
`because a single antenna structure “[c]an be used to realize
`advantages such as . . . hardware savings, low manufacturing
`costs, [and] low installation costs,” as recognized by Alakija.
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`Pet. 34–35 (citing Ex. 1011, 3). On the current record, Petitioner’s
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`explanations constitute articulated reasoning with rational underpinnings to
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`justify the legal conclusion of obviousness.
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`Patent Owner also argues that these references cannot be combined
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`“because the combination would render the purpose of Petrovic locating two
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`transmitters at different locations inoperable.” Prelim. Resp. 32–33. Patent
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`Owner suggests that the approximately 35 dBμV/m signal strength in the
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`overlap area, as described by Petrovic, might be compromised by “co-
`
`locating” the transmitters. Id. at 33. This position, however, does not
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`explain why Petrovic’s modulation technique, or experiment, would be
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`inoperable, only that the overlap signal strength potentially could be
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`affected.
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`Patent Owner’s arguments are not sufficient to overcome the evidence
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`provided by the Petitioner at this stage of the proceeding. We are persuaded
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`for purposes of this decision, by the reasons set forth by Petitioner, that
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`Petrovic, Raith, and Alakija disclose the claim limitations in claim 5 relating
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`to “co-locating said plurality of transmitters,” and that one of ordinary skill
`
`in the art would have been motivated to combine these references.
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`Accordingly, based on the record before us, Petitioner establishes a
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`reasonable likelihood of prevailing on the ground of unpatentability of claim
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`5 as obvious over Petrovic, Raith, and Alakija.
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`C. Additional Grounds
`
`Turning to grounds 3 and 4, Petitioner requests that we consider
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`anticipation of claims 1–5 by Cimini (ground 3), and obviousness of claim 5
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`(ground 4) in view of Cimini, Raith, and Alakija. Petitioner argues
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`specifically that the grounds not be considered redundant by the board as
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`“Petitioner has already limited its petitions to a reasonable number of
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`grounds, Petitioner respectfully requests that the Board institute rejections
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`on all grounds presented in this petition to avoid prejudicing Petitioner.”
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`Pet. 57.
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`For these additional grounds, we exercise our discretion, and we do
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`not institute review regarding the alleged grounds of unpatentability that
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`claims 1-5 would have been anticipated by Cimini, or that claim 5 would
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`have been obvious based on Cimini in view of Raith and Alakija. See 37
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`C.F.R. § 42.108(a).
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`Petitioners, Ex. 1004, Page 20
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