Paper 9
`Entered: February 16, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01726
`Patent 5,659,891
`____________
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Decision on Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Petitioners, Ex. 1016, Page 1
`
`
`Entered: February 16, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01726
`Patent 5,659,891
`____________
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Decision on Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Petitioners, Ex. 1016, Page 1
`
`
`
`IPR2015-01726
`Patent 5,659,891
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Petitioner, Samsung Electronics Co., Ltd., filed a Petition to institute
`an inter partes review of claims 1–5 of U.S. Patent No. 5,659,891 (“the ’891
`patent”). Paper 2 (“Pet.”). Patent Owner, Mobile Telecommunications
`Technologies, LLC, timely filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
`of the evidence in the Petition and the Preliminary Response, we determine
`that Petitioner has 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
`The ’891 patent is also challenged, currently, by Petitioner in
`IPR2015-01727. Petitioner states that the ’891 patent is asserted against
`Petitioner in the U. S. District Court for the Eastern District of Texas,
`Mobile Telecommunications Technologies, LLC v. Samsung Electronics Co.,
`Case No. 2:15-CV-183. Pet. 1. Petitioner also notes that the’891 patent is
`asserted against other parties in at least (1) Mobile Telecommunications
`Technologies, LLC v. Apple, Inc., Case No. 2:13-CV-258 (“the Apple
`lawsuit”); (2) Mobile Telecommunications Technologies, LLC v. Leap
`Wireless International, Inc., Case No. 2:13-CV-885 (“the Leap lawsit”); (3)
`Mobile Telecommunications Technologies, LLC v. T-Mobile USA, Inc., Case
`No. 2:13-CV-886, (“the T-Mobile lawsuit”); and (4) Mobile
`
`2
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`Petitioners, Ex. 1016, Page 2
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`Telecommunications Technologies, LLC v. AT&T Mobility LLC, Case No.
`2:14-CV-897, all in the Eastern District of Texas. Id. at 1–2.
`Petitioner states further that the ’891 patent was also challenged in
`previous inter partes review proceedings, namely Apple Inc. v. Mobile
`Telecommunications Technologies, LLC, Case IPR2014-01035 (PTAB filed
`June 27, 2014); and T-Mobile USA, Inc. v. Mobile Telecommunications
`Technologies, LLC, Case IPR2015-00018 (PTAB filed Oct. 3, 2014).1 Id.
`at 2.
`
`C. The ’891 Patent
`The ’891 patent (Ex. 1001), titled “Multicarrier Techniques in
`Bandlimited Channels,” generally relates to a method for multicarrier
`modulation (“MCM”) using geographically co-located transmitters to
`achieve a higher frequency transmission capacity within FCC emission mask
`limits. The method provides for a plurality of overlapping subchannels
`within a single mask-defined bandlimited channel to provide higher data
`transmission capacity for a mobile paging system. Ex. 1001, 2:15–59. The
`technique involves transmitting a plurality of paging carriers, in
`corresponding overlapping subchannels, from the same location and within
`the mask-defined bandlimited channel, without bandlimiting each of the
`individual subchannels. Id. In this way, with the center frequencies of the
`plurality of modulated carriers within the single bandlimited channel, an
`
`
`1 IPR2014-01035 and IPR2015-00018 were both terminated pursuant to
`settlement agreements between the respective parties. See T-Mobile USA,
`Inc. v. Mobile Telecomms. Techs., LLC, Case IPR2015-00018 (PTAB filed
`Oct. 3, 2014) (Paper 14); Apple Inc. v. Mobile Telecomms. Techs., LLC,
`Case IPR2014-01035 (PTAB filed June 27, 2014) (Paper 21).
`3
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`Petitioners, Ex. 1016, Page 3
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`optimum transmission capacity is provided and the plurality of carriers may
`emanate from the same transmission source, i.e., an antenna. Id.
`An annotated version of Figure 3B of the ’891 patent, reproduced
`below, depicts two adjacent carriers asymmetrically located within a single,
`mask-defined, bandlimited channel.
`
`
`
`
`As depicted by Figure 3B of the ’891 patent, above, two carriers 32a
`and 32b are shown operating over two subchannels (no reference number)
`within a bandlimiting mask (annotated in yellow) defining the channel. The
`subchannels are asymmetrically aligned within the mask resulting in partial
`subchannel overlap. Id. at 4:24–30. The center frequencies of the carriers
`32a and 32b are shown by the vertical dashed lines, and, concomitant with
`the subchannels, carriers 32a and 32b also overlap. According to the ’891
`patent, geographic co-location of the transmitters reduces interference
`problems between adjacent subcarriers, thus allowing the spacing between
`subchannels to be reduced. Id. at 4:12–20. The ’891 patent explains that the
`practical implications of such an asymmetrical arrangement are a greater
`
`4
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`Petitioners, Ex. 1016, Page 4
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`range of operating parameters, essentially because more subchannels can be
`fit within the bandlimited mask without undue interference. Id. at 4:36–46.
`D. Illustrative Claim
`Claims 1, 3, and 5 are independent. Each of dependent claims 2 and 4
`depend directly from claims 1 and 3 respectively. Claim 1 illustrates the
`claimed subject matter and is reproduced below:
`1. A method of operating a plurality of paging carriers in
`a single mask-defined, bandlimited channel comprising the
`step of transmitting said carriers from the same location with
`said carriers having center frequencies within said channel
`such that the frequency difference between the center frequency
`of the outer most of said carriers and the band edge of the mask
`defining said channel is more than half the frequency difference
`between the center frequencies of each adjacent carrier.
`
`E. The Alleged Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable on the
`following specific grounds.2
`References
`Basis
`Petrovic3
`§ 102
`Petrovic, Raith,4 and
`§ 103
`Alakija5
`
`Claims Challenged
`1–5
`5
`
`
`2 Petitioner supports its challenge with a Declaration of Dr. Apostolos K.
`Kakaes, Ph.D. (Ex. 1003, “Kakaes Decl.”). See infra.
`3 Ex. 1013, Rade Petrovic, Walt Roehr & Dennis Cameron, Permutation
`Modulation for Advanced Radio Paging, IEEE PROC. SOUTHEASTCON, Apr.
`1993.
`4 Ex. 1014, WO 89/08355 (Sept. 8, 1989).
`5 Ex. 1015, C. Alakija & S.P. Stapleton, A Mobile Base Station Phased
`Array Antenna, IEEE INT’L CONF. ON SELECTED TOPICS WIRELESS COMM.,
`June 1992, at 118.
`
`5
`
`
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`Petitioners, Ex. 1016, Page 5
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`CLAIM CONSTRUCTION
`
`II.
`A. Legal Standard
`The ’891 patent is expired, and “the Board’s review of the claims of
`an expired patent is similar to that of a district court’s review.” In re
`Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms
`generally are given their ordinary and customary meaning, as understood by
`a person of ordinary skill in the art, at the time of the invention, taking into
`consideration the language of the claims, the specification, and the
`prosecution history of record because the expired claims are not subject to
`amendment. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc).
`
`1. Single mask-defined, bandlimited channel
`Independent claims 1, 3, and 5 recite a “single mask-defined,
`bandlimited channel.” According to Petitioner, the term means: “a channel
`confined to a frequency range.”6 Pet. 5. Petitioner urges that we adopt the
`same construction set forth in other IPR decisions construing this term and
`as the District Court construed the same term in the T-Mobile lawsuit.
`Patent Owner proposes we interpret the term as a “channel confined to a
`frequency range and power spectral density mask.” Prelim. Resp. 9.
`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
`
`
`6 In the Apple lawsuit, the parties stipulated that a “single mask-defined,
`bandlimited channel” means, “a channel confined to a frequency range.”
`Ex. 1006, 76.
`
`6
`
`
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`Petitioners, Ex. 1016, Page 6
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`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
`frequency band where a spectral power mask limits the frequency range.
`We agree with Patent Owner’s position that one of ordinary skill in
`the art would have at least a bachelor’s degree in electrical engineering,
`several years of experience in wireless telecommunications “and would
`possess knowledge regarding frequency, amplitude, and masks as used in
`telecommunications.” Prelim. Resp. 9. Because one of ordinary skill in the
`art understands the concepts and relationship of frequency, channel,
`bandwidth and mask, Patent Owner’s claim construction is essentially a
`restatement of the plain meaning of the claim language itself. That is, one of
`ordinary skill in the art would understand from a reasonable reading of the
`claim language on its face that a “bandlimited channel” is a single limited
`frequency range, and that a “mask” is the constraint applied to define that
`limited frequency range. Petitioner’s claim construction, on the other hand,
`states that the channel is “confined,” but that does not sufficiently, in our
`view, account for the term “mask-defined,” as it is recited expressly in the
`claims. This is consistent with the Specification further explaining that
`“carriers operating at different frequencies are fit within a single bandwidth
`allocation in a manner consistent with FCC mask requirements.” Ex. 1001,
`5:11–19.
`Although both parties have proposed claim constructions for this
`phrase, on the record before us we are not apprised as to any reason why this
`
`7
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`Petitioners, Ex. 1016, Page 7
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`phrase needs to be construed apart from the plain language of the claim.
`Accordingly, we interpret this phrase according to its plain and ordinary
`meaning as understood by one of ordinary skill in the art in light of the
`specification.
`2. Plurality of transmitters
`Independent claim 5 recites a “plurality of transmitters.” According
`to Petitioner, the term means: “at least two transmitters.” Pet. 5. Patent
`Owner does not provide a construction.
`It is well settled that “‘plurality,’ when used in a claim, refers to two
`or more items, absent some indication to the contrary.” Dayco Prods., Inc.
`v. Total Containment, Inc., 258 F.3d 1317, 1327–28 (Fed. Cir. 2001) (citing
`York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1575
`(Fed. Cir. 1996)). Thus, for purposes of this Decision, we interpret
`“plurality of transmitters” as two or more transmitters.
`3. Band edge
`Independent claims 1, 3, and 5 recite the limitation, “the band edge,”
`without proper antecedent basis. Patent Owner proposes that “the band
`edge” means “the innermost frequencies at which the mask requires
`attenuation of the signal.” Prelim. Resp. 14. Petitioner contends that “the
`band edge” should be construed as “a band edge of the single mask-defined,
`bandlimited channel.” Pet. 7.
`On its face, in each of claims 1, 3, and 5, the limitation reads in
`context “the band edge of the mask defining said channel” (emphasis added),
`clearly referring to the “single mask-defined, bandlimited channel.” Patent
`Owner asserts that the edges of a mask are defined with respect to frequency
`on the y-axis, not power as shown on the x-axis, for example in Figures 3B
`
`8
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`Petitioners, Ex. 1016, Page 8
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`IPR2015-01726
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`and 4 of the ’891 patent. Prelim. Resp. 15–17. We agree with this position
`to an extent, because as we discussed above, one of ordinary skill in the art
`would have understood a mask-defined bandlimited channel as essentially a
`single range of frequencies in the frequency band along the y-axis where a
`spectral power mask limits the frequency range. Ex. 1001, 5:15–19.
`Our review of the Specification reveals, however, no evidence of the
`term “innermost,” or any persuasive description or definition of “band edge”
`that portrays the mask having, for instance, innermost and outermost edges.
`In the Brief Description of the Drawings, the Specification describes the
`graph in Figure 3A as, “a graph depicting two submasks defining two
`subchannels in a single, mask-defined bandlimited channel.” Id. at 3:11–12
`(emphasis added). In Figure 3A, below, the single mask-defined
`bandlimited channel 31 is illustrated by two spaced apart vertical lines (∆y =
`0) extending from the frequency (f) (y-axis) with each vertical line joined by
`two diagonal lines to a horizontal line (∆x = 0). Id. at 4:24–34.
`
`
`Because there are no values shown on the x or y axis, Figure 3A in the ’891
`patent illustrates, somewhat arbitrarily, the boundaries, or edges, in terms of
`
`9
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`Petitioners, Ex. 1016, Page 9
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`frequency and power of a “single mask-defined bandlimited channel.”
`Keeping Patent Owner’s assertion in mind, i.e., that the band limited
`channel is specifically the frequency range along the y-axis, (Prelim. Resp.
`15–17), then the vertical lines, (∆y = 0) at their intersection with the y-axis,
`depict the frequency boundaries or edges of the single mask-defined
`bandlimited channel. The Specification of the ’891 patent explains that an
`emission mask attenuates the signal at the “band edge”:
`The FCC requires signals to be confined within emission limit
`masks in order to prevent interference caused by signals
`straying or spilling into adjacent channels. FCC masks
`typically require the power spectral density of a signal to be
`attenuated at least 70 dB at the band edge.
`
`
`Ex. 1001, 1:57–61 (emphasis added). The Specification depicts an example
`of the described 70dB attenuation at the band edge 10 kHz from the center
`frequency, in Figure 4, shown below:
`
`
`
`10
`
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`Petitioners, Ex. 1016, Page 10
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`Figure 4 is a graph of an FCC emissions mask requiring the power spectral
`density to be attenuated to at least 70dB within 10 kHz from center
`frequency. Id. at 3:16–18.
`From the Specification and the drawings, it is a reasonable reading of
`the written description to understand “the band edge” as the vertical lines at
`10 kHz either side of the center frequency. What is not clear from the
`description, is that “the band edge” is, or includes, the specific frequencies
`between 5 and 10 kHz along the diagonal line, such that an “innermost”
`frequency, e.g., 5 kHz from center frequency, is the claimed “band edge.”
`Patent Owner contends that construing the band edge as, “the
`innermost frequencies at which the mask requires attenuation of the signal”
`is proper because the Specification states that “the frequency difference
`between the center frequency of each carrier and the nearest band edge of
`the mask is greater than half the frequency difference between the center
`frequencies of the two carriers.” Prelim. Resp. 18 (quoting Ex. 1001, 4:30–
`35). We are not persuaded at this point in the proceeding to read such a
`limitation from the Specification into the claims. As an initial matter, on
`their face, claims 1, 3, and 5 simply recite “the band edge,” not the “nearest
`band edge.” Ex. 1001, 6:9, 21, 40–41. See Phillips, 415 F.3d at 1314
`(“Quite apart from the written description and the prosecution history, the
`claims themselves provide substantial guidance as to the meaning of
`particular claim terms.”). Although understanding the claim language may
`be aided by the explanations contained in the written description, it is
`important not to import into a claim limitations that are not a part of the
`claim. See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
`Cir.), cert. denied, 135 S. Ct. 719 (2014) (“While we read claims in view of
`
`11
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`Petitioners, Ex. 1016, Page 11
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`the specification, of which they are a part, we do not read limitations from
`the embodiments in the specification into the claims.”). Further, the
`Specification support relied on by Patent Owner is an embodiment relating
`to asymmetrically located subchannels as shown in Figure 3B. It is well-
`settled that a particular embodiment appearing in the written description may
`not be read into a claim when the claim language is broader than the
`embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875
`(Fed. Cir. 2004).
`Additionally, we consider the Specification to understand how one of
`ordinary skill in the art would have interpreted specific claim terms.
`Phillips, 415 F.3d at 1313 (“Importantly, the person of ordinary skill in the
`art is deemed to read the claim term not only in the context of the particular
`claim in which the disputed term appears, but in the context of the entire
`patent, including the specification.”). The embodiment disclosed in the
`Specification of the ’891 patent to which Patent Owner refers does not,
`however, describe or define the term “nearest band edge” with any
`specificity. The Specification states:
`In accordance with this asymmetry, the frequency difference
`between the center frequency of each carrier and the nearest
`band edge of the mask is greater than half the frequency
`difference between the center frequencies of the two carriers.
`
`Ex. 1001, 4:30–34. We understand this embodiment to define, in the
`circumstance of asymmetrically located subchannels, a relative frequency
`difference between the center frequency and the nearest band edge. But we
`are not persuaded from the context of the description that one of ordinary
`skill in the art would have understood that the “nearest band edge” are the
`frequencies along the diagonal lines as shown for example in Figures 3A, 3B
`
`12
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`Petitioners, Ex. 1016, Page 12
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`and 4. Indeed, from a plain reading of the Specification and observing
`Figure 3B, it is at least as likely from this description that the “nearest band
`edge” refers to the vertical line depicting the band edge of the mask on the
`left side of Figure 3B, reproduced below, and its relationship to the center
`frequency of the left-most carrier 32a, as compared with the vertical line
`depicting the band edge of the mask, farther away, on the right side of
`Figure 3B.
`
`
`
`Figure 3B of the ’891 patent, above, depicts two carriers 32a and 32b
`operating over two subchannels (no reference number) within a bandlimited
`mask (also no reference number) defining the channel.
`
`Additionally, Patent Owner argues that their asserted construction is
`consistent with the District Court’s construction in the Leap lawsuit. Prelim.
`Resp. 17–18. We have reviewed the District Court’s Claim Construction
`
`13
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`Order (Ex. 1007) in the Leap lawsuit. At this stage of the proceeding,
`however, we recognize that we have not been presented with the same
`evidence and arguments presented to the District Court.
`Nothing in the intrinsic or extrinsic record proffered by Patent Owner,
`at this point in the proceeding, persuades us that “band edge” should be
`construed as “innermost band edge” or a “nearest band edge” in accordance
`with Patent Owner’s characterization of an embodiment described in the
`Specification. Accordingly, we are not persuaded that the evidence supports
`Patent Owner’s asserted claim construction for the reasons stated above. For
`purposes of this Decision, “the band edge” means: “a band edge of the single
`mask-defined, bandlimited channel.”
`4. Each adjacent carrier
`Patent Owner asserts that “each adjacent carrier” should be construed
`as “every single carrier, two of which having a common endpoint or
`border.” Prelim. Resp. 28–29. Specifically, Patent Owner relies upon the
`definition of “adjacent” as meaning “having a common endpoint or border,”
`from Merriam-Webster’s Online Dictionary. Id. (citing Adjacent, MERRIAM-
`WEBSTER, http://www.merriam-webster.com/dictionary/adjacent).
`Petitioner argues that the term should be given its plain and ordinary
`meaning. Pet. 8.
`Upon review, we disagree with Patent Owner that the meaning of
`“adjacent” as used in the ’891 patent is limited to requiring that adjacent
`carriers must have a common endpoint or border. When construing claims,
`our “focus must begin and remain centered on the language of the claims
`themselves.” Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1354
`(Fed Cir. 2014) (quoting Interactive Gift Express, Inc. v. Compuserve Inc.,
`
`14
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`Petitioners, Ex. 1016, Page 14
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`256 F.3d 1323, 1331 (Fed. Cir. 2001)). Nowhere in the specification or
`claims do we find the phrase “having a common endpoint or border.” Nor
`have the parties pointed to any description indicating such a requirement. In
`the context of the claims, “adjacent” means simply “next to.” Consulting
`Merriam-Webster’s Online Dictionary as Patent Owner relies on, we note
`that “adjacent” is also defined as “immediately preceding or following.”
`Adjacent, MERRIAM-WEBSTER, http://www.merriam-webster.com/
`dictionary/adjacent (last visited Feb. 10, 2016). This dictionary definition
`aligns with the claim language and is consistent with use of the term
`throughout the Specification. The Specification states that:
`Moreover, the carriers need not be symmetrically or evenly
`spaced within the mask defining the channel. That is, the
`frequency spacings between adjacent carriers, while symmetric
`to each other, can be smaller than the frequency spacings
`between the band edges of the mask and the nearest respective
`carrier. Indeed, carrier spacings may be irregular such that the
`carriers are asymmetrically located within the mask without
`incurring undue interference.
`
`Ex. 1001, 4:15–23 (emphasis added). We understand in the context of this
`disclosure that adjacent carriers (i.e., carriers next to one another) may have
`symmetric frequency spacings with respect to one another, or potentially
`“irregular” asymmetrical spacing with respect to one another, within the
`mask. Id. Whether the carriers are symmetric or asymmetrically spaced, we
`find no persuasive intrinsic or extrinsic evidence requiring that adjacent
`carriers must have a common endpoint or border as Patent Owner asserts.
`Consequently, for the purpose of this Decision, we construe the term
`“adjacent” in the phrase “each adjacent carrier,” according to its plain and
`
`15
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`ordinary meaning in the context of the claims and Specification, to mean
`“next to.”
`5. Other constructions
`We decline to provide explicit constructions for the remaining claim
`terms provided by the parties. In the case of “paging carriers,” the
`construction is immaterial to our Decision to Institute as the parties do not
`dispute that certain elements are disclosed by the prior art. For the words
`“operating” and “transmitter,” we do not consider the proffered
`constructions to provide any clarity over the terms themselves.
` ANALYSIS
`III.
`We turn now to Petitioner’s asserted grounds of unpatentability to
`determine whether Petitioner has met the threshold standard of 35 U.S.C.
`§ 314(a).
`A. Claims 1–5 – Anticipation by Petrovic
`
`Petitioner asserts that claims 1–5 would have been anticipated by
`Petrovic. Pet. 11. We determine that 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. 1013, 1 ¶¶ 1–3. Petrovic explains that this
`simulcasting technique also provides an increased bit rate and better
`frequency spectrum efficiency across paging radio channels. Id.
`
`16
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`
`Figure 1 of Petrovic, reproduced below, depicts a signal spectrum
`having four carriers, all within an emission mask denoted by the dashed line.
`Id. at 2 ¶ 8.
`
`
`
`
`
`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.
`17
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`
`Petrovic explains, in accordance with the symbols shown in Figure 1,
`that to best utilize the allocated 50 kHz spectrum, the multicarrier
`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. at 1 ¶ 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. 12–
`13 (citing Ex. 1013, 1 ¶¶ 1, 7, Fig. 1). 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 18 (citing Ex. 1013, 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 17. 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 at least 7.5 kHz between the
`
`18
`
`
`
`Petitioners, Ex. 1016, Page 18
`
`
`
`IPR2015-01726
`Patent 5,659,891
`
`end most subcarriers and the channel boundary. Id. at 17–18. Relying on
`the testimony of its expert, Dr. Kakaes, Petitioner explains that, “[i]n other
`words, there is 5 kHz between the center frequencies of each adjacent carrier
`and 7.5 kHz 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 20 (citing Ex. 1003 ¶¶ 21–22). Petitioner argues based on this
`disclosure that, 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. Id. at 19.
`Petitioner further supports its position with respect to the outer carrier
`and band edge position limitations in claim 1 with Dr. Kakaes’s 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. 1003 ¶ 22.
`Patent Owner argues that there are three reasons why Petrovic does
`not anticipate independent claim 1. Prelim. Resp. 39. First, Patent Owner
`contends that the difference between the band edge and the center frequency
`of the outermost carrier “is not more than half the frequency difference
`between the center frequencies of each adjacent carrier.” Id. Second, Patent
`Owner asserts that, when Petrovic’s transmitter is “operating,” “the
`
`19
`
`
`
`Petitioners, Ex. 1016, Page 19
`
`
`
`IPR2015-01726
`Patent 5,659,891
`
`difference between the center frequencies of adjacent carriers varies”
`because not all 8 carriers are “on,” i.e., transmitting, at the same time. Id. at
`39, 52. Third, Patent Owner contends that “Petrovic does not disclose
`operating or transmitting all of the carriers from the same location.” Id. at
`39–40.
`We are not persuaded by Patent Owner’s first argument because, as
`discussed above, Petrovic has been shown to disclose a 50 kHz spectral
`emission mask defining a bandlimited channel, i.e., a channel confined
`within a 50 kHz slice of the 930 MHz frequency band, as shown in
`Petrovic’s Figure 1. Ex. 1013, 1 ¶ 6; Ex. 1003 ¶¶ 18–19. As discussed in
`our claim construction, supra, we determined that “band edge” is not limited
`to “innermost band edge.” We are not persuaded, therefore, that the recited
`“band edge” is limited to the 35 kHz pass band, which is only a portion of
`the 50 kHz channel described in Petrovic. See Prelim. Resp. 19–20. Patent
`Owner’s 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 declarant, Dr. Kakaes.
`Ex. 1003 ¶ 19.
`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
`
`20
`
`
`
`Petitioners, Ex. 1016, Page 20
`
`
`
`IPR2015-01726
`Patent 5,659,891
`
`defining said channel is more than half the frequency difference between the
`center frequencies of each adjacent carrier,” as called for in claim 1. Id.
`(emphasis added).
`We are not persuaded by Patent Owner’s second argument that the
`claims require that each adjacent carrier must transmit simultaneously.
`Prelim. Resp. 52–53. We find no such limitation, either express or implied,
`in the claimed “method of operating” as recited in claim 1. Petitioner has
`shown persuasively that Petrovic discloses eight adjacent carriers spaced 5
`kHz apart within the 50 kHz Channel. Pet. 18 (citing Ex. 1013, 1 ¶ 7; Ex.
`1003 ¶ 21). 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 persuaded that Petrovic fails to disclose “transmitting
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