`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 51
`Entered: September 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC., ARUBA NETWORKS, INC.,
`HEWLETT PACKARD ENTERPRISE COMPANY, and
`HP, INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`
`____________
`
`Case IPR2016-007681
`Patent 5,659,891
`____________
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Case IPR2016-00766 has been joined with the instant proceeding.
`
`
`

`

`IPR2016-00768
`Patent 5,659,891
`
`
`I. INTRODUCTION
`
`A. Background
`Aruba Networks, Inc., Hewlett Packard Enterprise Company, and HP
`Inc. (collectively, Petitioner) filed a Petition requesting inter partes review
`of claims 1–5 of U.S. Patent No. 5,659,891 (Ex. 1001, “the ’891 patent”).
`Paper 1 (“Pet.”). ARRIS Group, Inc. filed a nearly identical Petition, which
`was the subject of IPR2016-00766, and we joined IPR2016-00766 to the
`instant inter partes review. See Paper 26.
`Inter partes review was instituted (Paper 13, “Inst. Dec.”) on the
`following grounds:
`Basis
`References
`§ 102
`Petrovic2
`Petrovic, Raith,3 and Alakija4 § 103
`
`Claims Challenged
`1–5
`5
`
`Patent Owner, Mobile Telecommunications Technologies, LLC, filed
`a Corrected Patent Owner’s Response on June 12, 2017. Paper 42 (“PO
`Resp.”). Petitioner filed a Corrected Reply to the Patent Owner’s Response.
`Paper 44 (“Pet. Reply”).
`An oral hearing was held on June 20, 2017. A transcript of the
`hearing is included in the record. Paper 50 (“Tr.”).
`
`
`
`2 Ex. 1013, Rade Petrovic, Walt Roehr & Dennis Cameron, Permutation
`Modulation for Advanced Radio Paging, IEEE PROC. SOUTHEASTCON, Apr.
`1993.
`3 Ex. 1014, Raith et al., WO 89/08355 (Sept. 8, 1989).
`4 Ex. 1015, C. Alakija & S.P. Stapleton, A Mobile Base Station Phased
`Array Antenna, IEEE INT’L CONF. ON SELECTED TOPICS WIRELESS COMM.,
`188 (June 1992).
`
`
`
`2
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`
`B. Related Proceedings
`Both parties indicate that the ’891 patent is the subject of numerous
`district court proceedings. Pet. 1–2; Paper 8, 2–4.
`In addition, both parties also indicate that the ’891 patent was the
`subject of other inter partes review proceedings. Pet. 2–3; Paper 8, 4.
`Juniper Networks, Inc. v. Mobile Telecommunications Technologies, LLC,
`Case IPR2017-00640 (PTAB filed Jan. 10, 2017) (“the Juniper IPR”) is
`pending. The following inter partes review proceedings were terminated,
`during trial, pursuant to settlement agreements between the respective
`parties: Apple Inc. v. Mobile Telecommunications Technologies, LLC, Case
`IPR2014-01035 (PTAB filed June 27, 2014); T-Mobile USA Inc. v. Mobile
`Telecommunications Technologies, LLC, Case IPR2015-00018 (PTAB filed
`Oct. 3, 2014), and Samsung Electronics Co., Ltd. v. Mobile
`Telecommunications Technologies, LLC, Case IPR2015-01726 (PTAB filed
`Aug. 13, 2015) (“the Samsung IPR”). Institution was denied in Samsung
`Electronics Co., Ltd. v. Mobile Telecommunications Technologies, LLC,
`Case IPR2015-01727 (PTAB filed Aug. 13, 2015).
`
`C. The ’891 Patent
`The ’891 patent (Ex. 1001), titled “Multicarrier Techniques in
`Bandlimited Channels,” generally relates to a method for multicarrier
`modulation 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
`
`
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`3
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`IPR2016-00768
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`involves transmitting a plurality of paging carriers, in corresponding
`overlapping subchannels, from the same location and within the mask-
`defined, bandlimited channel, without band-limiting 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.
`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.
`
`
`
`
`“FIG. 3B is a graph depicting the power spectra of two carriers
`asymmetrically located within a single mask-defined, bandlimited channel.”
`Id. at 3:13–15. The vertical axis represents the power level of the signal in
`decibels (dB), and the horizontal axis represent the frequency (ƒ). 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
`band-limiting mask (annotated in yellow) defining the channel. The
`subchannels are asymmetrically aligned within the mask resulting in partial
`
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`IPR2016-00768
`Patent 5,659,891
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`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 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. Claims 2 and 4 depend 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.
`
`
`
`II. CLAIM CONSTRUCTION
`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
`
`
`
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`
`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). Only terms which are in controversy need to be construed,
`and then only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`1. Asymmetric Condition
`Independent claims 1, 3, and 5 of the ’891 patent recite 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.” Patent Owner refers to this limitation as “the asymmetric
`condition” in its Response. PO Resp. 2–3. For convenience, we shall also
`refer to the limitation, as it is recited by the claims, as the asymmetric
`condition.
`
`i. Parties’ Proposed Constructions and Arguments
`Petitioner and Patent Owner dispute the proper construction of the
`term “the band edge” in the asymmetric condition. Petitioner proposes that
`“the band edge” should be construed as “a band edge of the single mask-
`defined, bandlimited channel.” See Pet. 7–8; Pet. Reply 1–16. Patent
`Owner proposes that the “band edge of the mask” should be construed as
`“the nearest band edge of the mask,” where “the nearest band edge” is
`defined as “the band edge that is nearest to the center frequency of each
`
`
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`outer most carrier at the highest power level of each outer most carrier.”5
`See PO Resp. 9–37.
`Annotation B of Figure 3B of the ’891 patent from the Patent Owner’s
`Response (PO Resp. 20) is reproduced below and is helpful for illustrating
`the parties’ proposed constructions of “band edge of the mask.”
`
`
`
`
`5 Patent Owner’s proposed construction in its Patent Owner’s Response is
`different from its proposed construction in its Preliminary Response (Paper
`12, “Prelim. Resp.”) and in related district court proceedings. There, Patent
`Owner proposed that “the band edge” be construed as “the innermost
`frequencies at which the mask requires attenuation of the signal.” See
`Prelim. Resp. 14; Ex. 1007, 30–35. Patent Owner abandons this proposed
`construction in its Patent Owner’s Response. PO Resp. 16 (“Patent Owner
`no longer construes the band edge to be the inner most frequencies”). Patent
`Owner’s proposed construction in its Patent Owner’s Response is also
`different than in the Juniper IPR. There, Patent Owner proposed that the
`mask must be defined relative to the center frequencies of the carriers, when
`the carrier is unmodulated, and does not argue that the “the band edge”
`should be construed to mean “the nearest band edge of the mask.” The
`Juniper IPR, Paper 13, 14.
`
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`Annotation B of Figure 3B depicts carriers 32a and 32b operating over two
`subchannels within a band-limiting mask defining the channel. The band-
`limiting mask is annotated to label the mask as having left vertical line 31a,
`right vertical line 31b, diagonal line 31c, and diagonal line 31d. Dashed
`lines are added allegedly to depict carriers 32a and 32b when the carriers are
`not power limited by the subchannels. See PO Resp. 20.
`Under Petitioner’s proposed construction, “the band edge of the
`mask” in Annotation B of Figure 3B is at left vertical line 31a or right
`vertical line 31b because those are the edges of the mask that define the
`channel (i.e., the frequency range). See generally Pet. Reply 2–9; Ex. 1018
`¶¶ 9, 12–14. Under Patent Owner’s proposed construction, “the band edge
`of the mask” is at point 31e along diagonal line 31c or point 31f along
`diagonal line 31d because those are the points of the mask that are allegedly
`nearest to the center frequencies of carriers 32a and 32b at the highest power
`level of carriers 32a and 32b, when carriers 32a and 32b are not power level
`limited by subchannels.
`ii. Analysis
`We are persuaded by Petitioner that the correct construction of “the
`band edge” is “a band edge of the single mask-defined, bandlimited
`channel” because Petitioner’s proposed construction is consistent with the
`plain language of the claims, the specification, and the drawing of the ’891
`patent. See Pet. 7–8; Pet. Reply 1–16. Additionally, we are also persuaded
`by Petitioner’s declarant Dr. Kakaes’s testimony that its proposed
`construction is consistent with how a person of ordinary skill in the art
`(“POSITA”) would have understood “the band edge.” See Ex. 1018 ¶¶ 9–
`28.
`
`
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`
`The asymmetrical condition recites “the band edge of the mask
`defining the channel,” referring to the “single mask-defined, bandlimited
`channel” also recited by the claims. A channel is a range or band of
`frequencies. See Pet. 5–6; see also Ex. 2001 ¶ 49; Ex. 2011 ¶ 48 (testimony
`of Patent Owner’s declarant Dr. Kesan that “[t]he word ‘band’ of ‘band
`edge’ refers to a frequency band or range.”). The language of the claims,
`themselves, thus indicates that “the band edge” is the edge of the mask that
`defines the range or band of frequencies of the channel. For example, in
`Annotation B of Figure 3B the left vertical line 31a and right vertical line
`31b are the edges of the mask that define the range or band of frequencies of
`the channel. In other words, the entire range or band of frequencies of the
`channel are between left vertical line 31a and right vertical line 31b.
`
`The specification of the ’891 patent also indicates that “the band
`edge” is the edge of the mask that defines the range or band of frequencies
`of the 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 (emphases 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:
`
`
`
`
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`IPR2016-00768
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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. The specification and the drawings, thus,
`indicate that the “the band edge” is at 10 kHz either side of the center
`frequency. See Ex. 1018 ¶ 10.
`
`Dr. Kakaes testifies that:
`a POSITA would have understood that the band edge of the
`mask defines the channel, as required by the claims, which
`expressly recite: “the band edge of the mask defining said
`channel” and a “single mask-defined bandlimited channel.”
`Ex.1001, claims 1, 3, 5. In my opinion, a POSITA would have
`understood the ‘891 claims thus require “the band edge of the
`mask defining the channel” to be located where the entire
`channel has been included. If “the band edge of the mask” is
`located so as to include only a portion of the channel, it will no
`longer “defin[e] the channel.”
`Id. ¶ 9; see also id. ¶¶ 10–14; Ex. 2012, 37:11–25, 38:1–15, 46:24–47:10;
`Ex. 2013, 180:5–181:4. Dr. Kakaes’s testimony is persuasive. We agree
`that if “the band edge” is located so as to include only a portion of the
`channel, as it would under Patent Owner’s proposed construction, the band
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`edge no longer defines the channel and the claims explicitly recite “the band
`edge of the mask defining said channel” (Ex. 1001, claims 1, 3, 5). As Dr.
`Kakaes testifies, “a POSITA would have understood the ’891 specification
`describes ‘the band edge of the mask’ as one point on the left side of the
`mask and one point on the right side of the mask—not as multiple points
`along the mask.” Ex. 1018 ¶ 15.
`
`For the above reasons, we are persuaded by Petitioner that the correct
`construction of “the band edge” is “a band edge of the single mask-defined,
`bandlimited channel.”
`
`We are not persuaded by Patent Owner that the correct construction of
`“the band edge” is “the nearest band edge of the mask,” where “the nearest
`band edge” is defined as “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,” because Patent Owner’s proposed construction improperly
`imports limitations into the claims. If a feature is not necessary to give
`meaning to what the inventor means by a claim term, it would be
`“extraneous,” and should not be read into the claim. Renishaw PLC v.
`Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du
`Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433
`(Fed. Cir. 1988). Patent Owner’s proposed construction imports the word
`“nearest” into the claims from the specification of the ’891 patent and also
`imports a requirement that “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,” based upon the testimony of Patent Owner’s declarant Dr.
`Kesan. See generally PO Resp. 9–37.
`
`
`
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`IPR2016-00768
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`
`Patent Owner argues that “the band edge” of the mask can include any
`point along the mask not just at the edge of the mask where it defines the
`channel and, thus, for clarity, we must import a limitation from the
`specification of the ’891 patent to specify a certain point on the one of the
`alleged multiple band edges of the mask. See, e.g., PO Resp. 22 (“these
`masks can have multiple band edges”); Ex. 2011 ¶¶ 49, 50, 51. Patent
`Owner directs our attention to the following statement in the ’891 patent:
`“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, 4:31–34 (emphasis added). Patent Owner
`argues that we should import the word “nearest” into the claims because
`otherwise the meaning of “the band edge” is not clear from the plain
`language of the claim. PO Resp. 11.
`Patent Owner’s argument is unpersuasive. The meaning of “the band
`edge” is clear from plain language of the claims. The claims do not recite
`the word “nearest” and, as discussed above, the claims, themselves, indicate
`that the “the band edge” is an edge of the mask that limits or defines the
`range or band of frequencies of the channel (i.e., one point on the left side of
`the mask and one point on the right side of the mask). Patent Owner’s
`proposed construction, where the band edge is 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, thus, is contrary to the language of the claims.
`Patent Owner points to the cross-examination testimony of
`Petitioner’s declarant Dr. Kakaes to support its assertion that the term “the
`band edge of the mask” is not clear. Id. at 11 (citing Ex. 2012, 35:22–36:2),
`
`
`
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`IPR2016-00768
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`34–37. For example, Patent Owner relies upon the following portion of Dr.
`Kakaes’s testimony.
`22 Q. Sure. Is the band edge of the mask at
`23
`frequency -- or let me rephrase the question, more
`24
`open-ended.
`25 Where is the band edge of the mask?
`1
`A.
`Like I said, it’s not clear where the band
`2
`edge of the mask is.
`Ex. 2012, 35:22–36:2. Patent Owner, however, mischaracterizes Dr.
`Kakaes’s testimony. The testimony reproduced above is part of a lengthy
`exchange concerning where the band edge of the mask is in Figure 1 of
`Petrovic and is not directed to the meaning of “the band edge” in the claims.
`See generally id. at 13:4–36:2; see also Ex. 1018 ¶¶ 11, 18. The relied upon
`testimony, thus, does not support Patent Owner’s argument that the term
`“the band edge” is not clear from the plain language of the claims.
`In addition, Patent Owner’s argument that the specification of the
`’891 patent supports its proposed construction of “the band edge” is
`unpersuasive. First, Patent Owner’s reliance upon the statement that “[i]n
`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, 4:31–34 (emphasis added)) fails to take into
`account the context in which the statement is made. For example, in the
`paragraph proceeding the statement, the specification discusses the
`frequency spacing “between the band edges of the mask and the nearest
`respective carrier.” Id. at 4:17–20. This discussion, combined with the
`other disclosures concerning “the band edge” being at 70dB in Figure 4,
`suggests that “the nearest band edge” refers to, for example, left vertical line
`
`
`
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`31a in Annotation B of Figure 3B and its relationship to the center frequency
`of the left-most carrier 32a, as compared with right vertical line 31b, farther
`away, on the right side of Figure 3B. See Ex. 1018 ¶¶ 12–13. The
`specification of the ’891 patent contains no discussion of the band edge
`being the nearest to the center frequency of each outer most carrier at the
`highest power level of each outer most carrier and provides no explicit
`example of a band edge at any point along the mask defining the channel.
`Second, Patent Owner asserts that if carriers 32c and 32d in
`Annotation B of Figure 3B “are not power level limited by subchannels,” the
`nearest band edges to the center frequencies of carriers 32c and 3d are points
`31e and 31f. PO Resp. 20. Patent Owner, however, cites no evidence to
`support this assertion. See generally id. at 19–21. Attorney arguments and
`conclusory statements that are unsupported by factual evidence are entitled
`to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
`1997).
`Third, according to Dr. Kesan, example masks described in the
`specification of the ’891 and other extrinsic evidence support Patent
`Owner’s proposed construction. PO Resp. 21–33 (citing Ex. 2011). Dr.
`Kesan’s testimony is unpersuasive because it is not adequately supported by
`the cited evidence. See Pet Reply. 6–13. For example, Dr. Kesan testifies
`that “FCC emission masks can have multiple band edges,” meaning “all
`points along the edge of the mask that limits the frequency band” (Ex. 2011
`¶¶ 48–51 (citing id. at Appendix C). However, the material cited by Dr.
`Kesan does not mention the term “the band edges.” See id. at Appendix C.
`As another example, Dr. Kesan testifies that drawing the mask depicted in
`Figure 4 of the ’891 patent on Figure 5A of the ’891 patent proves that “not
`
`
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`choosing the nearest band edges of the mask of Figure 4 would cause the
`two carriers of Figure 5A to exceed the diagonal band edges of the masks
`when the carriers are modulated.” PO Resp. 28–30 (citing Ex. 2011 ¶¶ 71–
`76). Dr. Kesan, however, does not sufficiently explain why his placement of
`the Figure 4 mask on Figure 5A is the correct placement. See generally Ex.
`2011 ¶¶ 71–76; see also Ex. 1018 ¶¶ 20–25 (testimony of Dr. Kakaes
`indicating the Dr. Kesan’s placement is incorrect).
`Further, Patent Owner’s argument that a POSITA would construe “the
`band edge” according to its proposed construction is unpersuasive. See
`generally PO Resp. 21–30. Patent Owner relies upon the testimony of Dr.
`Kesan for support. Id. We give Dr. Kesan’s testimony little weight because
`it is not credible due to inconsistency in his testimony. For example, in its
`Preliminary Response, Patent Owner points to an annotation of Figure 3B of
`the ’891 patent by Dr. Kesan in related district court litigation. See Prelim.
`Resp. 27 (reproducing a figure from Ex. 20106, 5). Annotated Figure 3B
`from the related district court litigation is reproduced below.
`
`
`6 The Preliminary Response (Paper 12) mistakenly cites to Exhibit 2009.
`The figure, however, is actually found in Exhibit 2010.
`
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`
`
`On Annotated Figure 3B, Dr. Kesan identifies the band edge of the mask at a
`different point than point 31e along diagonal line 31c or point 31f along
`diagonal line 31d in Annotation B of Figure 3B of the ’891 patent from the
`Patent Owner’s Response. See Ex. 2010, 5; PO Resp. 20. Dr. Kesan labels
`the band edge as the inner most frequency in Annotated Figure 3B from the
`Preliminary Response, yet testifies in a later-filed declaration that “a
`POSITA would understand that the band edge of the asymmetric condition is
`the edge of the mask that is nearest to the outer most carrier when that
`carrier is modulated” (Ex. 2011 ¶ 90).7
`For the above reasons, we are not persuaded by Patent Owner that the
`correct construction of “the band edge” is “the nearest band edge of the
`mask,” where “the nearest band edge” is defined as “the band edge that is
`
`
`7 Dr. Kesan’s testimony in the Juniper IPR is also inconsistent with his
`testimony here. In the Juniper IPR, Dr. Kesan testifies that a POSITA would
`understand that asymmetric condition “must be defined relative to the center
`frequencies of the unmodulated carriers.” The Juniper IPR, Ex. 2001 ¶ 20.
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`nearest to the center frequency of each outer most carrier at the highest
`power level of each outer most carrier.”
`After consideration of both Petitioner’s and Patent Owner’s arguments
`and evidence, we are persuaded by Petitioner that the construction, using the
`plain and ordinary meaning to a person of ordinary of skill in the art, of “the
`band edge” is “a band edge of the single mask-defined, bandlimited
`channel.”
`2. Transmitting Carriers from the Same Location
`Claims 1 and 38 recite “transmitting said carriers from the same
`location.” Ex. 1001, 6:6, 6:17–18. Patent Owner proposes that this
`limitation should be construed to mean “transmitting multiple carriers from
`the same location at the same time.” PO Resp. 37–39. Patent Owner argues
`that because the purpose of the asymmetric condition is “that adjacent
`carriers can be spaced closer together due to co-location, which in turn,
`means more carriers can be used to increase the message capacity of a
`channel” and the purpose of co-location is the solution to the near-far
`interference problem, the “at the same time” requirement should be imported
`into the claims. Id. at 37–39. Patent Owner relies upon Dr. Kesan’s
`testimony for support.9 Id. at 37–39 (citing Ex. 2011 ¶¶ 21, 34, 36, 41, 87).
`
`8 Patent Owner asserts that claim 5 recites “transmitting carriers from the
`same location.” PO Resp. 37. Claim 5 does not recite this limitation, but
`recites a similar limitation, “co-locating said plurality of transmitters such
`that said plurality of carriers can be emanated from the same transmission
`source.” See Ex. 1001, 6:27–44. In as much as Patent Owner’s proposed
`construction applies to claim 5, we are not persuaded by Patent Owner that
`claim 5 requires that the carriers be emanated at the same time for the same
`reasons as discussed with respect to claims 1 and 3.
`9 Dr. Kesan’s testimony in the Juniper IPR is inconsistent with his testimony
`here. In the Juniper IPR, Dr. Kesan testifies that a POSITA would
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`
`Petitioner disagrees and argues that Patent Owner’s proposed construction
`improperly imports a temporal limitation, “at the same time,” into the
`claims. Pet. Reply 14–15 (citing Ex. 1018, testimony of Dr. Kakaes). We
`are not persuaded by Patent Owner that its proposed construction is the
`correct construction because Patent Owner’s proposed construction
`improperly imports limitations into the claims. Claims 1 and 3 do 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.
`See Ex. 1001, 6:6, 6:17–18. Nor does the specification of the ’891 patent
`explicitly disclose that the carriers must be transmitted at the same time. See
`generally Ex. 1001; Ex. 1018 ¶ 29. For example, the ’891 patent does not
`explicitly disclose that that the carriers depicted in Figure 1 must be
`transmitted at the same time. See Ex. 1018 ¶ 30.
`We also are not persuaded by Dr. Kesan’s testimony that the carriers
`must be transmitted at the same time in order to improve message capacity
`or prevent near-far interference. See Ex. 2011 ¶¶ 37, 45 89–88, 21, 42, 44.
`As Dr. Kakaes testifies, message capacity may be increased by being able to
`operate multiple carriers in a channel, though not necessarily at the same
`time, and interference can be caused by things other than carriers being
`operated at the same time. Ex. 1018 ¶¶ 32–39. In any event, claims 1 and 3
`do not require a method of operating carriers to increase message capacity or
`prevent near-far interference. The claims simply recite “[a] method of
`operating.” Ex. 1001, 6:4–12, 6:15–24.
`
`understand that “transmitting said carriers from the same location” means
`“the multiple paging carriers emanate from the same location or antenna.”
`The Juniper IPR, Ex. 2001 ¶ 13.
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`After consideration of both Petitioner’s and Patent Owner’s argument
`and evidence, we are not persuaded by Patent Owner that the correct
`construction of “transmitting said carriers from the same location” is
`“transmitting multiple carriers from the same location at the same time.”
`3. Adjacent Carriers Overlap
`Claim 2 depends from claim 1 and additionally recites “wherein
`
`adjacent carriers overlap with each other.” Ex. 1001, 6:13–14. Similarly,
`claim 4 depends from claim 3 and recites “wherein adjacent subchannels
`overlap with each other”. Id. at 6:25–26.
`Patent Owner does not propose an explicit construction for this
`limitation but does imply that the claimed overlap is required to be “overlap
`that causes two signals to interfere in the near-far problem” (PO Resp. 54)
`or, in other words, overlap above a certain power level. See id. at 53–56
`(citing Ex. 2011 ¶¶ 112, 114, 116–122). Petitioner disagrees. See Pet.
`Reply 28–32.
`We are not persuaded by Patent Owner that its implied construction is
`the correct construction because Patent Owner’s implied construction
`improperly imports limitations into the claims. Claims 2 and 4 do not recite
`that the overlap is of those portions of the carriers that would be recognized
`by a receiver as the carrier except for near-far interference. Claims 2 and 4
`broadly recite that the carriers overlap, and are silent as to the amount of
`overlap. Nor does the specification of the ’891 patent explicitly disclose that
`the overlap is such. See Ex. 1018 ¶¶ 59–62. We are not persuaded by Dr.
`Kesan’s testimony that a POSITA would from the ’891 patent’s
`specification that the overlap must be above a certain power level. Ex. 2011
`¶¶ 111–112. As Dr. Kakaes testifies, and we agree, the overlap disclosed in
`
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`the ’891 patent occurs at different power levels ranging from 35dB to 70dB.
`See Ex. 1018 ¶¶ 59–62.
`After consideration of both Petitioner’s and Patent Owner’s argument
`and evidence, we are not persuaded by Patent Owner that the correct
`construction of “overlap” requires “overlap that causes two signals to
`interfere in the near-far problem.” PO Resp. 54.
`
`
`III. ANALYSIS
`A. Claims 1–5 – Anticipation by Petrovic
`Petitioner asserts that claims 1–5 are anticipated by Petrovic. Pet. 12–
`30 (citing Ex. 1003 for support). Patent Owner disagrees. PO Resp. 40–59
`(citing Ex. 2001 for support). “A claim is anticipated only if each and every
`element as set forth in the claim is found, either expressly or inherently
`described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union
`Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). We determine that
`Petitioner has shown by a preponderance of the evidence 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. Petrovic explains that this simulcasting
`technique also provides an increased bit rate and better frequency spectrum
`efficiency across paging radio channels. Id.
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`Figure 1 of Petrovi