UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`ARUBA NETWORKS, INC., HEWLETT PACKARD ENTERPRISE
`COMPANY, AND HP INC.,
`Petitioner
`
`v.
`
`
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
`
`____________
`
`
`
`Case IPR2016-00769
`Patent 5,915,210
`
`____________
`
`
`
`PATENT OWNER MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC’S PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`BACKGROUND ............................................................................................. 1 
`I.
`INTRODUCTION ........................................................................................... 1 
`II.
`III. PROPER CLAIM CONSTRUCTION ............................................................ 3 
`A.
`Rules Governing Claim Construction ................................................... 4 
`1.
`Person of Ordinary Skill in the Art ............................................. 4 
`2.
`Precise Statement on Claim Construction .................................. 4 
`3.
`New Testimonial Evidence Allowed .......................................... 5 
`4.
`Phillips Standard Governs .......................................................... 6 
`i.
`Look to Claims Themselves and Then
`Specification ..................................................................... 6 
`ii.
`Can Read Specification Limitations into Claims ............. 7 
`iii. Can Rely on Extrinsic Evidence ....................................... 7 
`5.
`Samsung IPR Construction of “Substantially” ........................... 8 
`Construction of Independent Claim Terms ......................................... 11 
`1.
`“representing substantially the same information as” of
`claims 1, 10, and 19 .................................................................. 11 
`“transmit[] [the] second plurality of carrier signals in
`simulcast with the first plurality of carrier signals” of
`claims 1, 10, and 19 .................................................................. 12 
`“each of the first plurality of carrier signals representing
`a portion of the information signal substantially not
`represented by others of the first plurality of carrier
`signals” of claims 1, 10, and 19 ................................................ 14 
`i.
`No Redundancy Limitation ............................................ 14 
`ii. Meaning of “substantially” ............................................. 15 
`IV. SUMMARY OF ARGUMENTS .................................................................. 20 
`V.
`REFERENCES RELIED UPON BY PETITIONER .................................... 24 
`A.
`Saalfrank ............................................................................................. 24 
`
`B.
`
`2.
`
`3.
`
`i
`
`

`
`
`
`B.
`
`B.
`Nakamura ............................................................................................ 24 
`VI. GROUND 1 – CLAIMS 1, 10 AND 19 ARE NOT ANTICIPATED
`BY SAALFRANK. .......................................................................................... 25 
`A.
`Saalfrank does not disclose the non-redundancy limitation of
`elements 1(a), 10(a), and 19(a). ........................................................... 25 
`Saalfrank does not disclose the “transmit . . . in simulcast”
`limitation of elements 1(b), 10(d), and 19(b). ..................................... 31 
`VII. GROUND 2 – CLAIM 19 IS NOT OBVIOUS OVER SAALFRANK
`IN VIEW OF NAKAMURA. .......................................................................... 33 
`A.
`Saalfrank in view of Nakamura does not disclose the non-
`redundancy limitation of element 19(a). ............................................. 33 
`1.
`Saalfrank does not disclose the non-redundancy
`limitation of element 19(a). ....................................................... 34 
`Nakamura does not disclose the non-redundancy
`limitation of element 19(a). ....................................................... 34 
`Saalfrank in view of Nakamura does not disclose the “transmit .
`. . in simulcast” limitation of element 19(b). ....................................... 36 
`VIII. CONCLUSION .............................................................................................. 37 
`
`B.
`
`2.
`
`ii
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES 
`Ex parte Frye, 94 USPQ 2d 1072 (BPAI 2010) ...................................................... 35
`Ex Parte Lazzara, Appeal No. 2007-0192 (BPAI Nov. 13, 2007) ......... 9, 10, 15, 16
`Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986) ................ 6
`Ex Parte Ronald A. Katz Tech. Licensing L.P., Appeal 2008-005127 (BPAI
`Mar. 15, 2010)....................................................................................................... 6
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 70 USPQ2d 1827 (Fed.
`Cir. 2004) .............................................................................................................. 7
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) .............................................................. 35
`In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) ............................. 7
`In re Royka, 490 F.2d 981 (CCPA 1974) ................................................................ 33
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 35
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ................................. passim
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) ........... 8
`Vitrionics Corp. v. Conceptronic, 90 F.3d 1576 (Fed. Cir. 1996) ............................. 6
`OTHER AUTHORITIES 
`35 United States Code § 102 ...................................................................................... 1
`35 United States Code § 103 ...................................................................................... 1
`35 United States Code § 312(c) ................................................................................. 4
`37 C.F.R. § 42.107 ..................................................................................................... 5
`37 C.F.R. § 42.208(c) ................................................................................................. 6
`37 Code of Federal Regulations § 42.104(b)(3) ........................................................ 4
`Manual of Patent Examining Procedure § 2111.01 ................................................... 7
`Manual of Patent Examining Procedure § 2558 ........................................................ 6
`
`iii
`
`

`
`
`
`2001.
`2002.
`
`2003.
`
`2004.
`
`2005.
`
`2006.
`
`
`
`PATENT OWNER EXHIBIT LIST
`Declaration of Dr. Jay P. Kesan.
`Tutorial from www.radio-electronics.com on OFDM orthogonal
`frequency division multiplexing
`Excerpts from the book entitled “Multi-carrier technologies for
`wireless communication” by Nassar et al.
`A technical report on the guidelines and rules for implementation and
`operation of DAB from the European Telecommunications Standards
`Institute (ETSI) in the year 2000.
`Excerpts from the book entitled “Digital audio broadcasting:
`principles and applications of DAB, DAB+ and DMB” by Hoeg et al.
`A publication entitled “DAB radio design and implementation” by
`Fredrik Forsberg of Chalmers University of Technology in Goteborg,
`Sweden.
`
`iv
`
`

`
`
`I.
`
`BACKGROUND
`
`On March 16, 2016, Petitioner Aruba Networks, Inc., Hewlett Packard
`
`Enterprise Company, and HP Inc. (“Aruba” or “Petitioner”) filed a Petition for
`
`Inter Partes Review under 37 C.F.R. § 42.100, requesting inter partes review of
`
`claims 1, 7-8, 10, 15-17, and 19 of the ’210 Patent. Petitioner asserts that claims 1,
`
`7-8, 10, 15-17, and 19 of the ’210 Patent are unpatentable over the following
`
`references under 35 U.S.C. §§ 102 and 103:
`
`Ground 1 - Claims 1, 7, 10, 16, 17, and 19 as anticipated by Saalfrank; and
`
`Ground 2 - Claims 8, 15, and 19 as obvious over Saalfrank in view of
`
`Nakamura.
`
`The ‘210 Patent, entitled “Method and System for Providing Multicarrier
`
`Simulcast Transmission,” was filed on July 24, 1997 and issued on June 22, 1999.
`
`The ‘210 Patent claims priority to U.S. Application No. 07/973,918, filed
`
`November 12, 1992, U.S. Patent No. 5,590,403 (“the ‘403 patent”).
`
`The ‘210 Patent describes and claims a method and system for providing
`
`multicarrier simulcast transmission.
`
`II.
`
`INTRODUCTION
`
`Patent Owner, Mobile Telecommunications Technologies, LLC, submits this
`
`Preliminary Response to the Petition for Inter Partes Review of claims 1, 7-8, 10,
`
`1
`
`

`
`
`15-17, and 19 of U.S. Patent No. 5,915,210 (“the ‘210 Patent”). 37 C.F.R. §
`
`42.107.
`
`Patent Owner respectfully requests that the Board deny the Petition on every
`
`ground alleged by Petitioner for, at least, the following reasons.
`
`First, with regard to Ground 1, German Patent Publication No. DE4102408
`
`(Ex. 1015, “Saalfrank”) does not disclose “each of the first plurality of carrier
`
`signals representing a portion of the information signal substantially not
`
`represented by others of the first plurality of carrier signals,” and “transmit[ a]
`
`second plurality of carrier signals [] in simulcast with the first plurality of carrier
`
`signals.” Thus, claims 1, 10, and 19 of the ‘210 Patent are not anticipated by
`
`Saalfrank.
`
`Second, with regard to Ground 2, Saalfrank does not disclose “each of the
`
`first plurality of carrier signals representing a portion of the information signal
`
`substantially not represented by others of the first plurality of carrier signals” and
`
`“transmitting a second plurality of carrier signals in simulcast with the first
`
`plurality of carrier signals” as recited in claim 19 of the ‘210 Patent. Nakamura et
`
`al., 256 QAM Modem for Multicarrier 400 Mbit/s Digital Radio, 5 IEEE Journal
`
`on Selected Areas in Communications 329 (Apr. 1987) (Ex. 1019, “Nakamura”)
`
`does not cure Saalfrank’s defect and does not disclose or suggest these features.
`
`2
`
`

`
`
`Thus, claim 19 of the ‘210 Patent is not obvious over Saalfrank in view of
`
`Nakamura.
`
`Dependent claims 7 and 16-17 are not anticipated by Saalfrank because
`
`independent claims 1 and 10, from which they depend, respectively, are not
`
`anticipated by Saalfrank and because of the additional features these claims recite.
`
`Dependent claims 8 and 15 are not obvious over Saalfrank in view of
`
`Nakamura because independent claims 1 and 10, from which they depend,
`
`respectively, are not obvious over Saalfrank in view of Nakamura and because of
`
`the additional features these claims recite. Therefore, there is no reasonable
`
`likelihood that Petitioner can prevail with regard to claims 1, 7-8, 10, 15-17, and
`
`19 of the ‘210 Patent.
`
`III. PROPER CLAIM CONSTRUCTION
`
`In this section the rules governing claim construction are provided. These
`
`rules are then applied to provide evidence regarding the technology at issue in the
`
`‘210 Patent. Finally, from this evidence, some independent claim terms are
`
`construed.
`
`
`
`3
`
`

`
`
`
`A. Rules Governing Claim Construction
`
`Claims 1, 7, 8, 10, 15, 16, 17, and 19 of the ‘210 Patent were most recently
`
`the subject of IPR2015-01724 (“the Samsung IPR”). The Samsung IPR was
`
`instituted on February 16, 2016. The Samsung IPR was terminated on May 3,
`
`2016 in response to a joint request from Petitioner and Patent Owner.
`
`1.
`Person of Ordinary Skill in the Art
`As Dr. Kesan has described, a person of ordinary skill in the art at the time
`
`of the invention (POSA) of the ’210 Patent would possess a bachelor’s degree in
`
`electrical or its equivalent and about four years working in the field of wireless
`
`telecommunications networks and would possess knowledge regarding frequency,
`
`amplitude, and masks as used in telecommunications, or equivalent education and
`
`work experience. Ex. 2001 at 9.
`
`2.
`Precise Statement on Claim Construction
`By statute, Petitioner must identify “in writing, and with particularity, each
`
`claim challenged, the grounds on which [each] challenge … is based, and the
`
`evidence that supports the grounds . . . .” 35 U.S.C. § 312(c). This requires a
`
`precise statement on “[h]ow the challenged claim is to be construed.” 37 C.F.R. §
`
`42.104(b)(3).
`
`4
`
`

`
`
`
`The Petition fails to set forth how the independent claims are to be
`
`construed. Petitioner construes only three terms, among which one is directed to
`
`means plus function terms of claim 19. Paper 1 at 5-11.
`
`By leaving the entire breadth of the independent claims without an
`
`articulated construction, Petitioner’s asserted grounds for unpatentability are
`
`deficient because the basis of Petitioner’s conclusion that a particular claim
`
`element or limitation is taught in the asserted references is unclear.
`
`Petitioner’s approach unfairly forces Patent Owner (as well as the Board) to
`
`guess at how Petitioner is construing any given term. Consequently, on its face,
`
`the Petition is deficient and fails to meet the standard for institution of review. If
`
`the Board does not summarily deny the Petition for this reason, Patent Owner
`
`respectfully submits the following proposed constructions for purposes of this
`
`proceeding.
`
`3.
`New Testimonial Evidence Allowed
`Since the Samsung IPR was instituted, new rules have gone into effect
`
`allowing the Patent Owner to file new testimonial evidence in its preliminary
`
`response without any limitation on the scope of that evidence. See 37 C.F.R.
`
`§42.107. The Patent Owner has provided such testimonial evidence below
`
`regarding the proper claim construction of the ‘210 Patent. These rules, however,
`
`caution that any dispute regarding material facts “created by such testimonial
`
`5
`
`

`
`
`evidence will be viewed in the light most favorable to the petitioner solely for
`
`purposes of deciding whether to institute.” 37 C.F.R. §42.208(c).
`
`4.
`Phillips Standard Governs
`MPEP 2258 provides that “[i]n a reexamination proceeding involving claims
`
`of an expired patent, claim construction pursuant to the principle set forth by the
`
`court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329
`
`(Fed. Cir. 2005) (words of a claim “are generally given their plain and ordinary
`
`meaning” as understood by a person of ordinary skill in the art in question at the
`
`time of the invention) should be applied since the expired claim are not subject to
`
`amendment. See Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter.
`
`1986).”
`
`The ‘210 Patent has expired, and therefore, the claim terms should be
`
`construed according to the principles of Phillips, not under the broadest reasonable
`
`interpretation (BRI) standard. See Ex Parte Ronald A. Katz Tech. Licensing L.P.,
`
`Appeal 2008-005127 (BPAI Mar. 15, 2010).
`
`i.
`Look to Claims Themselves and Then Specification
`The first step in construing claims under Phillips is to “look to the words of
`
`the claims themselves.” Vitrionics Corp. v. Conceptronic, 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996). Second, the specification must be considered when construing
`
`claim terms. Id. “[T]he specification is always highly relevant to the claim
`
`6
`
`

`
`
`construction analysis. Usually, it is dispositive; it is the single best guide to the
`
`meaning of a disputed term.” Id.
`
`ii.
`Can Read Specification Limitations into Claims
`Claim construction under Phillips varies from the BRI standard in at least
`
`two important ways. First, the BRI standard includes a prohibition on reading
`
`limitations in the specification into the claims. In contrast, claim construction
`
`under Phillips does not include this prohibition. For example, “[t]he presumption
`
`that a term is given its plain and ordinary meaning may be rebutted by the
`
`applicant by clearly setting forth a different definition of the term in the
`
`specification.” In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed.
`
`Cir. 1997) (the USPTO looks to the ordinary use of the claim terms taking into
`
`account definitions or other “enlightenment” contained in the written description);
`
`But c.f. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827,
`
`1834 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim
`
`from the preferred embodiment described in the specification, even if it is the only
`
`embodiment described, absent clear disclaimer in the specification.”). MPEP
`
`2111.01.
`
`iii. Can Rely on Extrinsic Evidence
`Second, the BRI standard does not rely heavily on extrinsic evidence. In
`
`contrast, when performing claim construction under Phillips, “it is entirely
`
`7
`
`

`
`
`appropriate, perhaps even preferable, for a court to consult trustworthy extrinsic
`
`evidence to ensure that the claim construction it is tending to from the patent file is
`
`not inconsistent with clearly expressed, plainly apposite, and widely held
`
`understandings from the pertinent technical field.” Pitney Bowes, Inc. v. Hewlett-
`
`Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999).
`
`In summary, under Phillips the first step in construing claims is to look to
`
`the words of the claims themselves. The second step is to consider the
`
`specification. Additionally, there is no prohibition on reading limitations in the
`
`specification into the claims, and it is entirely appropriate to consult trustworthy
`
`extrinsic evidence.
`
`5.
`Samsung IPR Construction of “Substantially”
`In the decision to institute of the Samsung IPR, the Board addressed the term
`
`“substantially” in the claim limitation that requires each of the carrier signals to
`
`represent a portion of the information signal “substantially” not represented by the
`
`other carriers signals. IPR2015-01724 Paper 11 at 12. The Board found that “we
`
`understand from reading the claims that the carrier signals are not excluded from
`
`carrying some of the same information.” Id. Further citing the 1996 Federal
`
`Circuit cases of York Prods., Inc., v. Central Tractor Farm & Family Center and
`
`Amhil Enterprises Ltd. v. Wawa, Inc., the Board pronounced that “[i]t is well
`
`settled that the term ‘substantially’ is often used to mean largely but not wholly
`
`8
`
`

`
`
`what is specified.” Id. In other words, the Board suggested that there is a per se
`
`rule regarding the term “substantially.”
`
`Patent Owner respectfully submits that the construction of the term
`
`“substantially” in regard to the above-referenced limitation by the Board in the
`
`Samsung IPR is at odds with the Board’s informative opinion in Ex parte Lazzara
`
`Appeal No. 2007-0192 (BPAI Nov. 13, 2007), which was decided on November
`
`13, 2007. In Ex parte Lazzara), the Ex parte Lazzara Board describes that
`
`“Appellants request that we reconsider our decision in light of Federal Circuit
`
`cases which found, within the context of claim interpretation post-grant in an
`
`infringement dispute, that the term ‘substantially’ and the phrase ‘substantially
`
`uniform’ are amenable to interpretation using their ordinary and customary
`
`meanings (Request for Rehearing 2-4). The Appellants appear to be arguing that
`
`the cited Federal Circuit case law stands for a per se rule that if the term
`
`“substantially” is used in a claim, and if the Specification fails to provide a
`
`definition of the term with numerical specificity, then the term must be interpreted
`
`broadly in accordance with its customary meaning.” Ex parte Lazzara at 2-3).
`
`Patent Owner respectfully submits that the Samsung IPR Board is making
`
`precisely the same argument as the appellants in Ex parte Lazzara). Its
`
`interpretation is certainly from ordinary and customary meanings of the term. It
`
`also appears to be arguing that the cited Federal Circuit case law stands for a per se
`
`9
`
`

`
`
`rule that if the term “substantially” is used in a claim, then the term must be
`
`interpreted broadly in accordance with its customary meaning. Moreover, as
`
`described below, the specification in this case also fails to provide a definition of
`
`the term with numerical specificity.
`
`The Ex parte Lazzara Board, however, rejected the appellants arguments in
`
`Ex parte Lazzara. It found that “[w]e do not read Federal Circuit cases to stand for
`
`such a per se rule. Id. at 3.
`
`Instead, the Ex parte Lazzara Board found that terms of degree such as the
`
`term “substantially” should be interpreted according to a standard derived from
`
`information in the patent regarding the purpose of the invention, which one of
`
`ordinary skill in the art can measure. Specifically the Ex parte Lazzara Board
`
`found that “the case law requires some sort of standard by which one of ordinary
`
`skill in the art can measure a term of degree such as ‘substantially’ so as to
`
`understand what is claimed. While the standard for measuring a term of degree
`
`need not be defined with numerical specificity, the standard must be able to be
`
`derived from information in the patent regarding the purpose of the invention – or
`
`of the specific aspect of the invention to which the term of degree applies - as well
`
`as from experimentation.” Id.
`
`Patent Owner submits that neither the Petitioner nor the Board in the
`
`Samsung IPR interpreted the term “substantially” according to a standard derived
`
`10
`
`

`
`
`from information in the patent regarding the purpose of the invention, which one of
`
`ordinary skill in the art can measure. Also, Patent Owner submits that the
`
`Petitioner in the present IPR has not interpreted the term “substantially” according
`
`to a standard derived from information in the patent regarding the purpose of the
`
`invention, which one of ordinary skill in the art can measure. Patent Owner does
`
`provide such an interpretation below.
`
`B. Construction of Independent Claim Terms
`1.
`
`“representing substantially the same information as” of
`claims 1, 10, and 19
`
`Challenged claims 1, 10, and 19 recite “each of the second plurality of
`
`carrier signals [] representing substantially the same information as a respective
`
`carrier signal of the first plurality of carrier signals.” Here, “representing
`
`substantially the same information as” means “the first plurality of carrier signals
`
`and the second plurality of carrier signals substantially represent the same
`
`information.”
`
`This construction reflects the plain and ordinary meaning of the words and is
`
`supported by the specification. Ex. 1001 at 1:54, 5:26-40 (reproduced below).
`
`Since the “information” conveyed by the second plurality of carrier signals refer to
`
`the same “information” conveyed by the first plurality of carrier signals, they
`
`substantially represent the same information.
`
`11
`
`

`
`
`
`
`
`As a result, under the Phillips standard, the term “representing substantially
`
`the same information as” means “the first plurality of carrier signals and the second
`
`plurality of carrier signals substantially represent the same information.”
`
`2.
`
`“transmit[] [the] second plurality of carrier signals in
`simulcast with the first plurality of carrier signals” of
`claims 1, 10, and 19
`
`Challenged claim 1 recites that the second transmitter is configured “to
`
`transmit a second plurality of carrier signals in simulcast with the first plurality of
`
`carrier signals.”
`
`12
`
`

`
`
`
`Challenged claim 10 similarly recites “transmitting the second plurality of
`
`carrier signals from a second transmitter in simulcast with transmission of the first
`
`plurality of carrier signals from the first transmitter.”
`
`Similar to claims 1 and 10, challenged claim 19 recites “means for
`
`transmitting a second plurality of carrier signals in simulcast with the first plurality
`
`of carrier signals.”
`
`Here, this transmission is “transmitting at the same time the first plurality of
`
`carrier signals from the first transmitter and the second plurality of carrier signals
`
`from the second transmitter.”
`
`The plain and ordinary meaning of simulcast is “to broadcast (a program) by
`
`radio
`
`and
`
`television
`
`at
`
`the
`
`same
`
`time.”
`
`
`
`http://www.merriam-
`
`webster.com/dictionary/simulcast. Therefore, simulcast means that the first and
`
`second transmitters transmit the first and second plurality of carrier signals,
`
`respectively, at the same time.
`
`13
`
`

`
`
`
`3.
`
`“each of the first plurality of carrier signals representing a
`portion of
`the
`information signal substantially not
`represented by others of the first plurality of carrier
`signals” of claims 1, 10, and 19
`
`i.
`No Redundancy Limitation
`Challenged claims 1, 10, and 19 recite “each of the first plurality of carrier
`
`signals representing a portion of the information signal substantially not
`
`represented by others of the first plurality of carrier signals.” Here, this limitation
`
`means “there is no redundancy among the information represented by each of the
`
`carriers of the first plurality of carrier signals.”
`
`This construction reflects the plain and ordinary meaning of the words.
`
`Consider the opposite of what the limitation is describing. The opposite is that a
`
`carrier of the first plurality of carrier signals represents a portion of the information
`
`signal substantially represented by at least one other of the first plurality of carrier
`
`signals. This means that there is redundant information conveyed by at least two
`
`carriers. Therefore the actual limitation prohibits this by providing that there can
`
`be no redundancy in the information represented by different carriers.
`
`The specification also supports this construction by reciting the unique data
`
`streams may be modulated onto respective carriers. Ex. 1001 at 13:34-35. Dr.
`
`Kesan has described that a POSA “would understand this to mean that each portion
`
`of the information signal represented by a carrier is unique to that carrier.” Ex.
`
`14
`
`

`
`
`2001 at 20. He further explains that a “POSA would also understand this
`
`limitation to mean that there can be no redundancy in the information represented
`
`by different carriers.” Id. at 21. He therefore refers to this limitation as the non-
`
`redundancy limitation. Id. at 23.
`
`Therefore, under the Phillips standard, the term “each of the first plurality of
`
`carrier signals representing a portion of the information signal substantially not
`
`represented by others of the first plurality of carrier signals” means “there is no
`
`redundancy among the information represented by each of the carriers of the first
`
`plurality of carrier signals.”
`
`ii. Meaning of “substantially”
`As described above, the Ex parte Lazzara Board found that terms of degree
`
`such as the term “substantially” should be interpreted according to a standard
`
`derived from information in the patent regarding the purpose of the invention,
`
`which one of ordinary skill in the art can measure.
`
`As a result, Dr. Kesan was asked to determine how a POSA would interpret
`
`the term “substantially” in the above-referenced non-redundancy limitation based
`
`on information in the patent regarding the purpose of the invention. Ex. 2001 at
`
`43.
`
`Dr. Kesan concludes that “a POSA would interpret the term ‘substantially’
`
`in the non-redundancy limitation as allowing a carrier to include a small amount of
`
`15
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`
`
`the same information included by another carrier due to frequency interference
`
`between the two carriers.” Id. at 60. He further points out that “POSA would not
`
`interpret the term to mean deliberately modulating a carrier with redundant
`
`information according to an error correction code.” Id.
`
`Dr. Kesan reached these conclusions by analyzing the specification and
`
`prosecution history of the ‘210 Patent. Id. at 44 and 46. From this analysis he first
`
`found that the term “substantially” and the other words of the non-redundancy
`
`limitation as recited in the claims are not found in the specification. Id. at 44 and
`
`45. The non-redundancy limitation first appears in the prosecution history of the
`
`‘210 Patent in a preliminary amendment of a preceding continuation application.
`
`Ex. 1014 at 246. As a result, he determines that the specification fails to provide a
`
`definition of “substantially” in relation to portions of an information signal or in
`
`relation to multi-carrier modulation, as was the case in Ex parte Lazzara. Ex. 2001
`
`at 44.
`
`He then looks for the purpose of multi-carrier modulation in the ‘210 Patent
`
`in order to interpret the term “substantially.” Id. at 48. The specification of the
`
`‘210 Patent describes this purpose as providing high data transfer rates, while
`
`keeping below the baud rate limitations of simulcast transmission techniques. Ex.
`
`1001 13:11-13. Dr. Kesan interprets this to mean that the purpose of multi-carrier
`
`modulation in the ‘210 Patent is to send more information at the same time rather
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`16
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`

`
`
`than to increase the rate at which information is sent. Ex. 2001 at 50. The rate at
`
`which information is sent cannot be increased because the time shifting present
`
`simulcast systems prevents high baud rate transmissions. Ex. 1001 2:32-35.
`
`Dr. Kesan describes that from this purpose of multi-carrier modulation a
`
`“POSA would understand that the use of the term ‘substantially’ in conjunction
`
`with the non-redundancy limitation does not mean that the information modulated
`
`onto multiple carriers can be somewhat the same or somewhat redundant.” Ex.
`
`2001 at 51. This is because any deliberate overlap in information among carriers
`
`defeats the purpose of sending the most amount of different information at the
`
`same time. Id.
`
`Instead, he finds that a POSA would conclude that the term “substantially”
`
`in the non-redundancy limitation is used to account for inadvertent interference
`
`between carrier channels. Id. at 53. Closely spaced multi-carriers under some
`
`circumstances can interfere with one another causing a portion of the information
`
`of one carrier to spill over into the channel of another carrier. Id. at 52. Also, the
`
`term “substantially” is used throughout the specification in relation to the
`
`frequencies of simulcast transmissions. Ex. 1001 at 1:52-54, 5:35-37, and 11:63-
`
`65.
`
`Dr. Kesan points out that the ‘210 Patent does mention error correcting
`
`codes. Ex. 2001 at 54. However, the use of error correcting codes in the ‘210
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`17
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`
`
`Patent is limited to codes placed in the information signals themselves. Ex. 1001
`
`at 27: 42-46. He says this is further evidence that the ‘210 Patent does not use
`
`error correcting codes as part of multi-carrier modulation. Ex. 2001 at 54. He
`
`contrasts the use of error correcting codes in the ‘210 Patent with how error
`
`correcting codes are used in the COFDM of Saalfrank in Drawing 3 and Drawing 4
`
`shown below.
`
`Error-correcting 
`bits
`Information Signal
`10111001110101011000010001000100
`
`
`
`...010
`
`...001
`
`...011
`
`...101
`
`C1 C2 C3 C4
`Drawing 3
`
`No multi-carrier
`redundancy
`
`Drawing 3 shows how error correcting codes are used in the ‘210 Patent.
`
`The Information Signal of the ‘210 Patent can include error-correcting bits. Id. at
`
`56. However, unique portions of the Information Signal are still transmitted on the
`
`different multi-carriers C1, C2, C3, and C4. Id. Drawing 3 is contrasted with
`
`Drawing 4 below, which depicts the COFDM of Saalfrank.
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`18
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`

`
`Error-correcting 
`bits
`Information Signal
`10111001110101011000010001000100
`
`Carriers with 
`error-correcting 
`bits
`
`
`
`101
`
`100
`
`011
`
`C5 C6 C7
`
`...010
`
`...001
`
`...011
`
`...101
`
`C1 C2 C3 C4
`Drawing 4
`
`With multi-carrier
`redundancy
`
`
`
`In Drawing 4, additional multi-carriers C5, C6, and C7 only carry the error-
`
`correcting bits determined from the information signal bits of multi-carriers C1, C2,
`
`C3, and C4. Id. at 57. Dr. Kesan shows that the modulation in Drawing 4 does not
`
`meet the non-redundancy limitation of the claims of the ‘210 Patent, because
`
`multi-carriers C5, C6, and C7 are representing entirely portions of the information
`
`signal represented by multi-carriers C1, C2, C3, and C4. Id.
`
`Dr. Kesan describes that this is consistent with the COFDM description in
`
`Ex. 2003. Id. 59. “In Drawing 4, l = 4 input bits are channel coded to n = 7 output
`
`bits. Id. It also includes the decreased throughput that Ex. 2003 says is inherent in
`
`COFDM. Id. As a result of this decreased throughput, the error correction of
`
`COFDM is at odds with the purpose of multi-carrier modulation in the ‘210 Patent.
`
`Id.
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`19
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`

`
`
`
`Patent Owner, therefore, submits that based on information in the ‘210
`
`Patent regarding the purpose of multi-carrier modulation, a POSA would interpret
`
`the term “