ARRIS Group, Inc., Aruba Networks, Inc.,
`Hewlett Packard Enterprise Company, and
`HP Inc. v. Mobile Telecommunications
`Technologies, LLC
`
`Inter Partes Review of U.S. Patent No. 5,659,891
`IPR2016-00768*
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`June 20, 2017
`
`*Case IPR2016-00766 has been joined with the instant proceeding
`
`1
`
`IPR2016-00768
`Petitioners, Ex. 1022 Page 00001
`
`
`

`

`Table of Abbreviations
`
`Abbreviation
`Pet.
`
`POR
`
`CPOR
`
`Reply
`
`Inst.
`
`Description
`IPR2016-00768, Paper 1, Petition for Inter Partes Review of
`U.S. Patent No. 5,659,891
`IPR2016-00768, Paper 28, Patent Owner’s Response to Decision to
`Initiate Trial for Inter Partes Review
`IPR2016-00768, Paper 42, Patent Owner’s Corrected Response to
`Decision to Institute Trial for Inter Partes Review
`IPR2016-00768, Paper 44, Corrected Petitioners’ Consolidated Reply to
`Patent Owner’s Response
`IPR2016-00768, Paper 13, Decision Instituting Inter Partes Review
`
`Kakaes Decl.
`Kakaes Reb.
`Decl.
`
`IPR2016-00768, Exhibit 1003, Declaration of Dr. Apostolos K. Kakaes
`IPR2016-00768, Exhibit 1018, Rebuttal Declaration of Dr. Apostolos K.
`Kakaes in Support of Petitioner’s Reply to Patent Owner’s Response
`
`2
`
`

`

`Instituted Grounds
`
`Ground
`Petrovich
`(Anticipation)
`Petrovich in view of Raith and Alakija
`(Obviousness)
`
`’891 Claims
`Claims 1-5
`
`Claim 5
`
`3
`
`

`

`Overview of the Issues
`
`• Whether Petrovic discloses “the band edge of the mask”
`limitation
`• Whether Petrovic discloses “transmitting said carriers
`from the same location”
`• Whether Petrovic discloses “adjacent carriers overlap
`with each other”
`• Whether there is motivation to combine Petrovic with
`Raith and Alakija
`
`4
`
`

`

`“The Band Edge of the Mask”
`(Claims 1, 3, 5)
`
`5
`
`

`

`The Board’s Construction of “the Band Edge of the Mask”
`Is Consistent With the ‘891 Claims
`Board’s/Petitioners’ Construction
`
`Patent Owner’s Construction
`
`“a band edge of the single mask-defined,
`bandlimited channel”
`
`“the nearest band edge of the mask”
`
`Inst. 12; Pet. 7-8; Reply 1-13.
`
`POR 16 (CPOR 9).
`
`Claim 1 (representative):
`“. . . a single mask-defined, bandlimited 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.”
`
`Dr. Kakaes:
`“[T]he band edge of the mask defining the channel must be in a place where the channel
`has been included, or else it will not be the band edge defining the channel.”
`
`Ex. 1001, cl. 1.
`
`Ex. 2012 (Dr. Kakaes Depo. Tr.), 37:11-25; Reply 4;
`see also Ex. 2012, 38:1-5, 46:24-47:10, 68:10-69:3, 78:1-6;
`Ex. 2013, 180:5-181:4; Kakaes Reb. Decl. ¶¶ 9-11; Inst. 9.
`
`6
`
`

`

`The Board’s Construction of “the Band Edge of the Mask”
`Is Consistent With the ’891 Specification
`’891 Patent:
`“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”
`
`’891 Patent, Fig. 4:
`
`Ex. 1001, 1:57-61; Reply 2, 4; Inst. 9.
`
`’891 Patent:
`“FIG. 4 is a graph
`depicting an exemplary
`FCC emissions mask that
`requires the power
`spectral density to be
`attenuated at least 70
`dB within 10 kHz from
`center frequency.”
`
`Ex. 1001, 3:16-18; Reply 2, 4;
`see also Ex. 1001, 4:47-49; Inst. 10.
`
`Ex. 1001, Fig. 4; Reply 3.
`
`7
`
`

`

`The Board’s Construction of “the Band Edge of the Mask”
`Is Consistent With the Understanding of a POSITA
`Dr. Kakaes:
`“[A] POSITA would have understood the ‘891 specification describes ‘the band edge’ in
`Figure 4’s mask is at ±10 kHz from the center frequency . . . . A POSITA would have also
`understood that Figure 4 depicts the band edge of the mask at ±10 kHz, which defines
`the channel and includes the entire channel.”
`Kakaes Reb. Decl. ¶ 10; Reply 2, 4, 6; see also Ex. 1001, 1:57-61, 3:16-18, 4:47-49, Fig. 4; Ex. 2012, 68:10-69:3, 78:1-6.
`’891 Patent, Fig. 4:
`
`A.
`
`Dr. Kakaes:
`Q. Okay. So looking at Figure 4,
`can you tell where is the band
`edge of the mask?
`* * *
`. . . the right side of it is at plus
`10 kilohertz and the left side
`of it is at minus 10 kilohertz.
`* * *
`I mean, that is supported by
`having the -- the fact that it’s a
`70-dB attenuation, consistent
`with the specification.
`Ex. 2012, 68:10-69:3; Reply 2, 4;
`see also Kakaes Reb. Decl. ¶ 10; Ex. 2012, 78:1-6.
`
`A.
`
`Ex. 1001, Fig. 4; Reply 3.
`
`8
`
`

`

`Patent Owner’s Construction Reads Limitations Into the
`Claims That Are Not Supported by the Specification
`Board’s/Petitioners’ Construction
`Patent Owner’s Construction
`
`“a band edge of the single mask-defined,
`bandlimited channel”
`
`“the nearest band edge of the mask”
`
`Inst. 12; Pet. 7-8; Reply 1-13.
`
`POR 16 (CPOR 9).
`
`Patent Owner:
`“[A]nother way of expressing the ‘nearest band edge’ is that it refers to the band edge that is
`Claim 1 (representative):
`nearest to the center frequency of each outer most carrier at the highest power level of each
`outer most carrier”
`
`POR 27 (CPOR 21).
`
`“[O]ne of the cardinal sins of patent law—[is] reading a limitation . . . into the claims.”
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1319-20 (Fed. Cir. 2005); Reply 5.
`
`9
`
`

`

`Patent Owner’s Construction of “the Band Edge of the Mask” as
`the “Nearest Band Edge” Out of Multiple Band Edges on a
`Given Side of the Mask Is Inconsistent With the Specification
`Patent Owner Argues:
`The specification describes a “nearest band edge” of “interest” that must be “identif[ied]” out of multiple
`band edges on a given side of the mask.
`
`POR 22-23 (CPOR 15-17); Ex. 2011 (Kesan Decl.) ¶ 51.
`’891 Patent, Fig. 3B:
`
`’891 Patent:
`“[T]he frequency spacings between adjacent
`carriers . . . can be smaller than the frequency
`spacings between the band edges of the
`mask and the nearest respective carrier.”
`
`Ex. 1001, 4:17-20; Reply 6.
`“[T]he frequency difference between the
`center frequency of each carrier and the
`nearest band edge of the mask . . .”
`Ex. 1001, 4:30-34; Reply 5.
`
`Dr. Kakaes:
`“But a POSITA would have understood . . . the phrase ‘nearest band edge’ to distinguish the left
`band edge from the right band edge of the mask, and not selecting a ‘nearest band edge’ to be a
`frequency corresponding to a frequency along for example, the ‘diagonal’ or ‘slanted’ lines of the Figure
`3B mask.”
`
`Ex. 1001, Fig. 3B; Kakaes Reb. Decl. ¶ 12.
`
`Kakaes Reb. Decl. ¶ 12; Reply 5; see also Kakaes Reb. Decl. ¶ 13; Inst. 11.
`10
`
`

`

`Patent Owner’s Construction Requiring the Band Edge To Be Determined
`According to “the Highest Power Level of Each Outer Most Carrier”
`Is Inconsistent With the Specification and Claims
`Patent Owner Argues:
`“[T]he nearest band edge” means “the band edge that is nearest to the center frequency of each outer
`most carrier at the highest power level of each outer most carrier.”
`
`Dr. Kesan’s Hypothetical:
`
`Dr. Kakaes’ Response:
`
`POR 27 (CPOR 21).
`
`POR 37 (CPOR 30).
`
`Ex. 1001, Fig. 5A; Reply 13; Kakaes Reb. Decl. ¶ 25;
`Dr. Kakaes:
`see also Reply 11-12; Kakaes Reb. Decl. ¶¶ 19-25.
`“Using Patent Owner’s construction . . . . [a] band edge of approximately ±7.5 kHz . . . is . . . inconsistent
`with the ’891 specification, which specifies ‘the band edge’ of Figure 4’s mask is ±10 kHz from the center
`frequency.”
`“[A] band edge of approximately ±7.5 kHz . . . does not even meet the claim limitations . . . .”
`Kakaes Reb. Decl. ¶ 25; Reply 12-13;
`’891 Patent:
`see also Ex. 1001, 1:57-61, 3:16-18, 4:47-48, Fig. 4.
`“FIG. 5A . . . the carriers remained within the FCC mask . . . .”
`Dr. Kakaes Reb. Decl. ¶25 (citing Ex.1001, 1:57-61, 3:16-18, 4:47-48, Fig.4); Reply 12-13.
`11
`Ex. 1001, 4:56-63; Kakaes Reb. Decl. ¶ 24; Reply 12.
`
`

`

`Under the Board’s Correct Construction of “the Band
`Edge,” Petrovic Discloses “the Band Edge” Limitation
`Petrovic, Fig. 1:
`Petrovic:
`
`Ex. 1013 (Petrovic), 1; Pet. 20-21, 13-14; Kakaes Decl. ¶¶ 19, 21;
`Inst. 14, 18-19; Kakaes Reb. Decl. ¶ 43; Reply 17.
`Dr. Kakaes:
`Ex. 1013 (Petrovic), Fig. 1; Pet. 14; Kakaes Decl. ¶ 19; Reply 18; Kakaes Reb. Decl. ¶ 43.
`“Petrovic describes a guard band of 7.5 kHz . . . and a spacing between the center frequency of adjacent
`carriers of 5 kHz . . . . In other words, 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.”
`
`Kakaes Decl. ¶ 22; Pet. 21; see also Reply 18; Kakaes Reb. Decl. ¶ 43.
`“[B]ecause Petrovic discloses the 7.5 kHz guard bands are part of the 50 kHz channel, ‘the band edge of
`the mask,’ at minimum, is located 7.5 kHz from ‘the center frequency of the outer most of said carriers’ to
`define the channel.”
`
`Kakaes Reb. Decl. ¶ 44; Reply 19.
`
`12
`
`

`

`Even Under Patent Owner’s Incorrect Construction of “the
`Band Edge,” Petrovic Discloses “the Band Edge” Limitation
`Dr. Kakaes:
`“Using Patent Owner’s proposed construction, the ‘frequency difference between the center
`frequency of the outer most of said carriers and the band edge of the mask’ (indicated by
`the orange arrows below) is more than ‘half the frequency difference between the center
`frequencies of each adjacent carrier,’ (indicated by the purple arrows below), with respect
`to both the outer most carrier on the left (‘Carrier 1’) and the right (‘Carrier 8’).”
`Kakaes Reb. Decl. ¶ 49; Reply 23-24.
`
`Petrovic, Fig. 2:
`
`Ex. 1013 (Petrovic), Fig. 2 (excerpted); Reply 23-24; Kakaes Reb. Decl. ¶ 49;
`see also Pet. 13; Kakaes Decl. ¶¶ 18-19.
`
`13
`
`

`

`Even Under Patent Owner’s Incorrect Constructions of
`“the Band Edge” and “Transmitting Carriers From the Same Location,”
`Petrovic Discloses “the Band Edge” Limitation
`Dr. Kakaes:
`“[I]n Petrovic’s multicarrier permutation modulation system with eight subcarriers and four
`transmitters, when Carriers 3, 4, 5, and 6 are transmitted, the ‘frequency difference
`between the center frequency of the outer most of said carriers and the band edge of
`the mask defining said channel’ (indicated by the orange arrows below) is more than
`‘half the frequency difference between the center frequencies of each adjacent carrier,’
`(indicated by the purple arrows below), with respect to both the outer most carrier on
`the left (‘Carrier 3’) and the right (‘Carrier 6’).”
`
`Kakaes Reb. Decl. ¶ 50; Reply 24-25;
`see also Ex. 1013 (Petrovic), 1-2; Pet. 19, 21; Kakaes Decl. ¶ 21; Ex. 2012, 113:14-114:6.
`
`Petrovic, Fig. 1:
`
`Ex. 1013 (Petrovic), Fig. 1 (excerpted); Kakaes Reb. Decl. ¶ 50; Reply 25;
`see also Ex. 1013 (Petrovic), 1-2; Ex. 2012, 113:14-114:6; Kakaes Decl. ¶¶ 21-23, 25-26; Pet. 13, 17, 19.
`
`14
`
`

`

`“Transmitting Said Carriers
`From the Same Location”
`(Claims 1, 3, 5)
`
`15
`
`

`

`Patent Owner’s Construction of “Transmitting Said Carriers From the
`Same Location” Improperly Adds An Extraneous Limitation to the Claims
`
`Board’s/Petitioners’ Construction
`
`Patent Owner’s Construction
`
`plain and ordinary meaning
`
`Inst. 17; Reply 14-16, 26-28.
`
`“transmitting multiple carriers from the same
`location at the same time”
`
`POR 46 (CPOR 39).
`
`Claim 1 (representative):
`“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 . . . .”
`
`Board:
`“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.”
`
`Ex. 1001, cl. 1.
`
`Patent Owner Concedes:
`“The claims do not recite a temporal component with regard to transmitting . . . .”
`
`Inst. 17;
`see also Inst. 18-19; Reply 14.
`
`POR 59 (CPOR 51); see also Reply 14.
`
`“It is improper for a court to add ‘extraneous’ limitations to a claim . . . .”
`Hoganas v. Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993); Reply 14.
`
`16
`
`

`

`Transmission of All Carriers “at the Same Time” Is Not
`Required to Increase Message Capacity
`Patent Owner Argues:
`Transmission of all carriers “at the same time” is required to achieve the ’891 patent’s
`“purpose” of “increasing the message capacity of a channel.”
`
`Claim 1 (representative):
`“A method of operating a plurality of paging carriers . . .”
`
`POR 45, 59 (CPOR 39, 52).
`
`Ex. 1001, cl.1.
`
`Dr. Kakaes:
`“A POSITA would have known that the ‘message capacity’ or ‘transmission capacity’ of a
`channel is not determined by the number of carriers that are transmitted ‘at the same
`time.’ Rather, a POSITA would have understood that the ‘message capacity’ of a channel
`is determined, among other things, by the number of carriers that are operational . . . .”
`Kakaes Reb. Dec. ¶ 36; Reply 15.
`
`17
`
`

`

`Near-Far Interference Occurs at the Receivers,
`Not Transmitters
`Patent Owner Argues:
`Transmission “at the same time” is required to “prevent[] [near-far] interference among co-located carriers”
`POR 45 (CPOR 39).
`
`Claim 1 (representative):
`“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 . . .”
`
`Dr. Kakaes:
`“[T]he claims do not require ‘preventing [near-far] interference.’ . . . the Claims recite
`‘transmitting said carriers’ while near-far interference between carriers occurs at the
`receiver. . . .”
`Dr. Kesan concedes:
`
`Kakaes Reb. Decl. ¶ 40; Reply 15-16;
`see also Kakaes Reb. Decl. ¶ 41.
`
`Ex. 1001, cl.1.
`
`“Near-far interference occurs when a receiver is much closer (near) to the transmission
`source of, for example, Carrier 1 and much farther (far) from the transmission source of
`Carrier 2. Drawing 5 below illustrates the near-far interference experienced by a
`receiver that receives Carrier 1 and Carrier 2.”
`
`Ex. 2011 (Kesan Decl.) ¶ 27; Reply 16; see also POR 11.
`
`18
`
`

`

`Under the Correct Construction, Petrovic Discloses
`“Transmitting Said Carriers From the Same Location”
`
`Petrovic:
`“Each 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.”
`
`Ex. 1013 (Petrovic), 2; Pet. 17-20; Kakaes Decl. ¶¶ 25-26;
`see also Kakaes Reb. Decl. ¶ 52; Inst. 17.
`
`Dr. Kakaes:
`
`“Petrovic describes using a transmitter with four subtransmitters to transmit the
`eight subcarriers . . . . Thus, each of the eight subcarriers are transmitted
`from the same location (i.e., the common antenna).”
`
`Kakaes Decl. ¶ 25; Pet. 19;
`see also Kakaes Decl. ¶ 26; Kakaes Reb. Decl. ¶ 52; Reply 26; Inst. 17.
`
`19
`
`

`

`Even Under Patent Owner’s Incorrect Construction, Petrovic
`Discloses “Transmitting Said Carriers From the Same Location”
`Petrovic:
`“Outputs of the subtransmitters are combined and sent to a common antenna.”
`Ex.1013 (Petrovic), 2; Pet. 19; Kakaes Decl. ¶ 25;
`see also Reply 28; Kakaes Reb. Decl. ¶¶ 53-54; Inst. 17.
`
`Dr. Kakaes:
`“Petrovic teaches that in its permutation modulation scheme ‘a combination of four distinct
`carriers is ON, while other four are OFF’ during each symbol interval. Therefore, according
`to Petrovic’s express disclosure, at all times some combination of four carriers is being
`transmitted ‘at the same time’.”
`
`Kakaes Reb. Decl. ¶ 53; Reply 28;
`see also Ex. 2012, 113:14-114:6, 119:13-120:8; Ex. 1013 (Petrovic), 1.
`“In Petrovic’s MOOK embodiment, Petrovic teaches that ‘all eight subcarriers [are]
`independently keyed,’ which means that at any instant in time any of the carriers can be
`keyed ‘ON’ or ‘OFF.’ Ex.1013, 2. Therefore, in a given instant, when all eight subcarriers are
`keyed ‘ON,’ all eight subcarriers are transmitted ‘at the same time,’ even under PO’s
`incorrect construction.”
`
`Kakaes Reb. Decl. ¶58; Reply 28; see also Ex. 1013 (Petrovic), 2.
`
`20
`
`

`

`“Adjacent Carriers Overlap
`With Each Other” (Claims 2, 4)
`
`21
`
`

`

`Petrovic Discloses “Adjacent Carriers Overlap With Each Other”
`
`Petrovic, Fig. 1:
`
`Claim 2 (representative):
`“The method of claim 1 wherein
`adjacent carriers overlap with
`each other.”
`
`Ex. 1001, cl. 2.
`
`Dr. Kakaes:
`“Where the value of the transmitted
`signal between carrier/subchannel 1
`and carrier/subchannel 2
`(highlighted in blue . . . ) does not
`return to practical zero (highlighted
`as a red broken line that extends the
`lowest point of the mask), the
`carrier/subchannel 1 overlaps
`adjacent carrier/subchannel 2.”
`
`Kakaes Decl. ¶24; Pet. 15-17, 22-23, 27; see also Reply 28-29; Inst. 19-20.
`
`Ex. 1013 (Petrovic), Fig. 1 (excerpted);
`Kakaes Decl. ¶ 24; Pet. 16-17, 21-23, 27; Reply 28-29.
`
`22
`
`

`

`Neither the Claims Nor Specification Requires the “Overlap”
`of Adjacent Carriers to be “Above Power Level P”
`Patent Owner Argues:
`“Because there is no overlap of Carrier 1 and Carrier 2 above Power Level P, it is not the type of overlap
`required by dependent claims 2 and 4 of the ’891 Patent.”
`
`POR 64 (CPOR 56).
`
`’891 Patent, Fig. 6A:
`
`Dr. Kesan’s “Power Level P”:
`
`Ex. 1001, Fig. 6A; Reply 32; Kakaes Reb. Decl. ¶ 62;
`see also Reply 30; Kakaes Reb. Decl. ¶¶ 60-61.
`
`Ex. 2011 (Kesan Decl.) ¶ 116; POR 63 (CPOR 55).
`
`Dr. Kakaes:
`“[T]he point of overlap in Figure 6A of the ’891 patent occurs at approximately 70 dB from the
`modulated carriers’ peak, which is an even higher level of attenuation . . . than the point of overlap
`between Carriers 1 and 2 in Figure 1 of Petrovic (~55 dB from the modulated carriers’ peak).”
`Kakaes Reb. Decl. ¶ 66; Reply 32.
`
`23
`
`

`

`Dr. Kesan Admits “Overlap” of Adjacent Carriers Occurs
`Below “Power Level P”
`Patent Owner Argues:
`“Because there is no overlap of Carrier 1 and Carrier 2 above Power Level P, it is not the type of overlap
`required by dependent claims 2 and 4 of the ’891 Patent.”
`
`POR 64 (CPOR 56).
`
`Dr. Kesan’s “Overlap”:
`
`Dr. Kesan Admits:
`In Drawing 9,
`“In Drawing 9, Carrier 1 and Carrier 3 overlap, and Carrier 3 and Carrier 2 overlap.”
`Carrier 1 and Carrier 3 overlap, and Carrier 3 and Carrier 2 overlap.
`Ex. 2011 (Kesan Decl.) ¶ 43; Reply 32-33.
`
`Ex. 2011 (Kesan Decl.) ¶¶ 40,43;
`Kakaes Reb. Decl. ¶ 67; Reply 32-33.
`
`24
`
`

`

`Petrovic Discloses Carriers 1 and 2 “Overlap With Each Other”
`
`Dr. Kakaes:
`
`Petrovic, Fig. 1:
`
`“Carriers 1 and 2 of Petrovic’s Figure 1
`overlap because the transmission
`signal between them does not reach
`practical zero . . . shown . . . as a red
`broken line extending the lowest point of
`the mask.”
`
`Kakaes Reb. Decl. ¶ 63; Reply 30-31;
`see also Pet. 16-17, 22-23; Kakaes Decl. ¶ 24.
`
`“[A] POSITA would have understood that
`at 55 dB—which is where Carriers 1
`and 2 overlap in Petrovic’s Figure 1
`(measured from the peak of the
`modulated carriers)—the signal
`contributions of Carriers 1 and 2 are
`sufficiently strong to overlap.”
`
`Kakaes Reb. Decl. ¶ 65; Reply 31-32.
`
`Kakaes Reb. Decl. ¶ 64; Ex. 1013 (Petrovic), Fig. 1; Reply 31.
`
`25
`
`

`

`While Not Required by the Claims,
`Petrovic Discloses That Each Pair of Adjacent Carriers Overlap
`Patent Owner Argues:
`“[A]ctive carriers 4 and 8 . . . do not overlap” and “[P]aging carriers 3, 5, 6, and 7
`are not transmitting paging information, and those paging carriers that are turned
`off . . . do not overlap. . . .”
`
`Claim 2 (representative):
`“The method of claim 1 wherein adjacent carriers overlap with each other.”
`
`POR 66 (CPOR 58).
`
`Dr. Kakaes:
`“Claims 2 and 4 require only that ‘adjacent carriers overlap with each other,’ not that
`each pair of adjacent carriers overlap with each other.’ Thus, a POSITA would
`have understood that Claims 2 and 4 require only one pair of adjacent carriers
`to overlap with each other.”
`
`Kakaes Reb. Decl. ¶ 70; Reply 34.
`
`Ex. 1001, cl. 2.
`
`“Carriers 4 and 8 are not adjacent carriers . . . Carriers 4 and 5 are adjacent
`carriers, and when Carriers 4 and 5 are ‘ON,’ those carriers overlap.”
`Kakaes Reb. Decl. ¶ 68; Reply 33;
`See also Ex. 2012 (Kakaes Depo. Tr.), 112:2-23.
`26
`
`

`

`Even Under Patent Owner’s Incorrect Reading of the Claims,
`Petrovic Discloses “Adjacent Carriers Overlap With Each Other”
`Petrovic, Fig. 1:
`
`Dr. Kakaes:
`
`Ex. 1014 (Petrovic), Fig.1; Kakaes Reb. Decl. ¶ 69; Reply 34.
`
`“Petrovic . . . discloses the scenario where Carriers 3, 4, 5, and 6 are ‘ON.’ . . . Under that
`scenario, each pair of adjacent Carriers 3, 4, 5, and 6 overlaps with each other . . . .”
`Kakaes Reb. Decl. ¶ 71; Reply 34;
`see also Ex. 1013 (Petrovic), 2, 3; Kakaes Reb. Decl. ¶ 72; Reply 35.
`
`27
`
`

`

`Motivation to Combine
`Petrovic with Raith and Alakija
`(Claim 5)
`
`28
`
`

`

`A POSITA Would Have Been Motivated to Combine
`Petrovic With Raith and Alakija
`
`Raith, Fig. 1:
`
`Raith:
`“For each cell C1-C24 there is an ordinary
`base station transmitter B51-B524. For
`contiguous cells these transmitters are
`conventionally colocated in groups
`of three.”
`
`Ex. 1014 (Raith), 6:11-13;
`Pet. 32; Kakaes Decl. ¶ 29.
`
`Dr. Kakaes:
`
`Ex. 1014 (Raith), Fig. 1; Pet. 35; Kakaes Decl. ¶ 31.
`
`“[O]ne 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).”
`
`Kakaes Decl. ¶¶ 31-32; Pet. 34-35;
`see also Pet. 31-35; Kakaes Reb. Decl. ¶ 73; Reply 36-37; Inst. 20-21.
`29
`
`

`

`A POSITA Would Have Been Motivated to Combine
`Petrovic With Raith and Alakija
`Alakija Fig. 9
`(Single Antenna):
`
`Raith, Fig. 1
`(Co-location of Transmitters):
`
`Alakija:
`“The antenna can be used to
`realize advantages such as
`reduced portable transmit
`power, reduced co-channel
`interference, hardware
`savings, low manufacturing
`costs, low installation costs,
`and increased system capacity.”
`Ex. 1015 (Alakija), 3; Pet. 38; Kakaes Decl. ¶ 36;
`see also Reply 37.
`
`Dr. Kakaes:
`
`Ex. 1015 (Alakija), Fig. 9; Ex. 1014 (Raith), Fig. 1;
`Pet. 38; Kakaes Decl. ¶ 35.
`
`“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.”
`
`Kakaes Decl. ¶ 36; Pet. 38;
`see also Pet. 36-38; Ex. 1015 (Alakija), 3; Reply 37; Kakaes Reb. Decl. ¶ 73; Inst. 21.
`30
`
`

`

`Petrovic Is Not Rendered Inoperable When Combined With Raith and
`Alakija, and Patent Owner Provides No Evidence of Inoperability
`Patent Owner Argues:
`“Raith and Alakija cannot be combined with Petrovic, because the combination would render
`the purpose of Petrovic [sic] locating two transmitters at different locations inoperable.”
`POR 70 (CPOR 62).
`
`Dr. Kakaes:
`“A POSITA would have understood Petrovic’s modulation technique would not be rendered
`inoperable by co-locating the two transmitters. . . . [C]o-location of transmitters was
`well-known in the art and the number and location of transmitters in a paging system like
`that described in Petrovic would have been a matter of design choice and obvious to a
`POSITA.”
`
`“[A] POSITA would have been motivated to co-locate the transmitters, as taught by Raith,
`because doing so would beneficially provide message services to a larger geographic area
`and larger number of mobile devices . . . and motivated to utilize a single antenna structure,
`as taught by Alakija, to emit the output signals of the co-located transmitters because
`doing so would beneficially provide ‘hardware savings,’ ‘low manufacturing costs,’ and ‘low
`installation costs’. . . . And a POSITA would have been motivated to do so even if it
`meant that a trade-off of those benefits would be a decrease in Petrovic’s signal
`strength for the simulcast overlap area.”
`
`Kakaes Reb. Decl. ¶ 73; Reply 37;
`see also Kakaes Decl. ¶¶ 28, 31-33, 36; Pet. 32, 34-38; Ex. 2012 (Kakaes Depo. Tr.), 125:21-126:5; Inst. 21-22;
`In re Urbanski, 809 F.3d 1237, 1243-44 (Fed. Cir. 2016).
`
`31
`
`

`

`Patent Owner Misunderstands the Combination: Petitioners
`Are Applying Raith’s and Alakija’s Teachings to Petrovic
`Patent Owner Argues:
`“Since both Raith and Alakija disclose cellular systems, it would be nonsensical to
`implement Petrovic’s modulation technique in these systems since it would reduce spectral
`efficiency of the new system.”
`
`POR 72 (CPOR 63).
`
`Dr. Kakaes:
`“a POSITA would have been motivated and found it obvious and straightforward to apply
`Raith’s and Alakija’s teachings to Petrovic’s system.”
`
`“As previously explained, Petrovic, Raith, and Alakija all describe similar systems
`in the same field of art . . . . Contrary to Dr. Kesan’s argument, a POSITA would have
`understood that the features described in Raith (co-location of transmitters) and
`Alakija (single antenna) could be implemented in Petrovic’s mobile paging system,
`and that the combination (yielding the claim limitation) would work as expected.”
`
`Kakaes Reb. Decl. ¶ 74; Reply 37-38;
`see also Kakaes Decl. ¶¶ 27-36; Pet. 34-38;
`Ex. 2012 (Kakaes Depo. Tr.), 125:21-126:5; Ex. 1015 (Alakija), 1, 3.
`
`32
`
`

`

`Challenged Claims
`
`Claim 1
`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.
`
`Claim 3
`3. A method of operating at
`least two paging carriers each
`in a corresponding subchannel
`of a single mask-defined,
`bandlimited channel
`comprising the step of
`transmitting said carriers
`from the same location with
`each carrier centrally located in
`said corresponding subchannel
`wherein the frequency
`difference between the center
`frequency of the outer most of
`said corresponding
`subchannels 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.
`
`Claim 2
`2. The method of claim 1
`wherein adjacent carriers
`overlap with each other.
`
`Claim 4
`4. The method of claim 3
`wherein adjacent subchannels
`overlap with each other.
`
`Claim 5
`5. In a paging system having a plurality of
`transmitters transmitting a plurality of
`modulated carriers over a single mask-defined,
`bandlimited channel and a plurality of mobile
`receiving units independently receiving one of
`said plurality of carriers, a method of operating
`said plurality of carriers in said channel to
`achieve higher transmission capacity comprising
`the steps of:
`co-locating said plurality of transmitters such
`that said plurality of carriers can be emanated
`from the same transmission source; and
`transmitting said plurality of carriers over a
`plurality of subchannels spaced within the mask
`defining said channel
`wherein the frequency difference between the
`center frequency of the outer most carriers and
`the band edge of said mask is greater than half
`the frequency difference between the center
`frequencies of each adjacent carrier.
`
`33
`
`