Patent No. 9,282,396
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`Paper No. 24
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Sony Corporation,
`Petitioner,
`
`v.
`
`One-E-Way, Inc.
`Patent Owner.
`
`
`
`
`IPR2016-01639
`
`Patent No. 9,282,396
`
`Issue Date: March 8, 2016
`
`Title: Wireless Digital Audio Music System
`
`
`REPLY IN SUPPORT OF PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 9,282,396 UNDER
`35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.100 ET SEQ.
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`Paper No. 24
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Sony Corporation,
`Petitioner,
`
`v.
`
`One-E-Way, Inc.
`Patent Owner.
`
`
`
`
`IPR2016-01639
`
`Patent No. 9,282,396
`
`Issue Date: March 8, 2016
`
`Title: Wireless Digital Audio Music System
`
`
`REPLY IN SUPPORT OF PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 9,282,396 UNDER
`35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.100 ET SEQ.
`
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`Patent No. 9,282,396
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES ................................................................................................ ii
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`I.
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`II.
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`PATENT OWNER DOES NOT DISPUTE CERTAIN FACTS ..................... 1
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`RESPONSES TO PATENT OWNER SPECIFIC ARGUMENTS
`FOR EACH GROUND ............................................................................................. 1
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`A. Ground 1 ............................................................................................................ 1
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`1.
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`2.
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`3.
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`4.
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`The ’892 Patent disclosure incorporates the 1998 Haartsen
`paper by reference and should be considered a single piece
`of prior art .............................................................................................. 1
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`Patent Owner’s “separate embodiments” argument is
`wrong as a matter of law ...................................................................... 3
`
`The system disclosed in Haartsen anticipates claims of the
`’396 patent .............................................................................................. 7
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`Patent Owner’s criticisms of the Board’s claim
`interpretations are unfounded and do not support
`patentability of the challenged claims ..............................................10
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`B. Ground 2 ..........................................................................................................12
`Petitioner and the Board correctly applied Graham analysis .........12
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`1.
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`2.
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`A person of ordinary skill in the art would be motivated to
`combine the Giannakis and Haartsen disclosures .........................13
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`III. CONCLUSION..........................................................................................................18
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`i
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`Patent No. 9,282,396
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`Allergan, Inc. v. Apotex Inc.,
`754 F.3d 952 (Fed. Cir. 2014) .............................................................................................. 5
`
`Celeritas Techs. Ltd. v. Rockwell Int’l Corp.,
`150 F.3d 1354 (Fed. Cir. 1998) ............................................................................................ 6
`
`Cook Biotech Inc. v. Acell, Inc.,
`460 F.3d 1365 (Fed. Cir. 2006) ............................................................................................ 2
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ......................................................................................................... 10
`
`Harari v. Lee,
`656 F.3d 1331 (Fed. Cir. 2011) ............................................................................................ 2
`
`In re Heck,
`699 F.2d 1331 (Fed. Cir. 1983) ................................................................................... 3, 4, 9
`
`In re Inland Steel Co.,
`265 F.3d 1354 (Fed. Cir. 2001) ............................................................................................ 6
`
`In re Kelley,
`305 F.2d 909 (C.C.P.A. 1962) .............................................................................................. 9
`
`In re Young,
`927 F.2d 588 (Fed. Cir. 1991) ......................................................................................... 3, 9
`
`Merck & Co. v. Biocraft Labs.,
`874 F.2d 804 (Fed. Cir. 1989). ............................................................................................. 6
`
`Upsher-Smith Labs. v. Pamlab, LLC,
`412 F.3d 1319 (Fed. Cir. 2005) ............................................................................................ 6
`
`Zenon Env’l, Inc. v. U.S. Filter Corp.,
`506 F.3d 1370 (Fed. Cir. 2007) ............................................................................................ 2
`
`
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`ii
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`Patent No. 9,282,396
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`Statutes
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`35 U.S.C. § 318(b).................................................................................................................... 18
`Rules
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`37 C.F.R. § 42.100(b) .............................................................................................................. 10
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`
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`iii
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`Patent No. 9,282,396
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`Paper No. 24
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`Petitioner Sony Corporation hereby submits a reply in support of its Petition
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`for inter partes review of claims 1-17 of U.S. Patent No. 9,282,396 (“the ’396 patent”)
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`(Ex. 1001).
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`I.
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`PATENT OWNER DOES NOT DISPUTE CERTAIN FACTS
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`In its response, Patent Owner does not dispute certain facts relevant to this
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`inter partes review. Patent Owner does not dispute the description of the ’396 patent
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`invention, and that the references the Petitioner relies upon are prior art to the ’396
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`patent. Patent Owner also does not dispute the level of a person of ordinary skill in
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`the art. See Paper 23. Therefore, these facts should be considered established by the
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`Petitioner for purposes of this inter partes review.
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`II. RESPONSES TO PATENT OWNER SPECIFIC ARGUMENTS FOR
`EACH GROUND
`A. Ground 1
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`The ’892 Patent Anticipates Claims 1-17 of the ’396 Patent.
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`1.
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`The ’892 Patent disclosure incorporates the 1998 Haartsen
`paper by reference and should be considered a single piece
`of prior art
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`The ’892 patent, disclosing an improved element of a larger system,
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`incorporates by reference the 1998 paper written by the inventor Haartsen (“the 1998
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`paper”), disclosing a complete Bluetooth system. As discussed in the Petition and
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`agreed by the Board in its Institution Decision (“Thus, we agree with Petitioner that
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`Haartsen sufficiently incorporates by reference the entire disclosure of the 1998
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`Patent No. 9,282,396
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`Paper,” Paper 8 at 13-14), such incorporation by reference allows two references to be
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`treated as a single item of prior art. See Harari v. Lee, 656 F.3d 1331, 1334 (Fed. Cir.
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`2011); see also, Paper 1 at 9.
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`Patent Owner relies on the Cook Biotech and Zenon cases to argue that the
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`statement in the ’892 patent “did not incorporate the entirety of the referenced” 1998
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`paper. (Paper 23 at 12-13, citing Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365 (Fed. Cir.
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`2006), Zenon Env’l, Inc. v. U.S. Filter Corp., 506 F.3d 1370 (Fed. Cir. 2007)). Patent
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`Owner is incorrect. The issue in Cook Biotech was not whether some or all material
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`from another patent was incorporated by reference into the patent at issue, but
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`whether certain disclosure was sufficiently incorporated by reference such that the
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`patentee’s definition of a claim term from that other disclosure would apply to the
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`patent at issue. Cook Biotech, 460 F.3d at 1375-78. In Zenon, the incorporation by
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`reference language was as follows: “the relevant disclosures of each [patent] are included
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`by reference thereto as if fully set forth herein,” 506 F.3d at 1379 (emphasis added),
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`and the Federal Circuit held that this language is insufficient to incorporate by
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`reference the entire disclosure of the referenced patents. Id. Here, the incorporation
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`by reference statement is not limited to “relevant disclosure” of the 1998 paper, but
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`instead reads “1998 [paper], the disclosure of which is incorporated here by reference.”
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`Ex. 1006 at 2:23-29 (emphasis added).
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`Moreover, whether the Patent Owner is correct in its reliance on Cook Biotech
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`and Zenon makes no difference in this case. The Patent Owner agrees that at the very
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`least, the ’892 patent incorporates by reference the “various details regarding
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`Bluetooth technology” from the 1998 paper (Paper 23 at 13). Since the entire 1998
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`paper deals with various details of Bluetooth technology, its entire disclosure is
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`incorporated by reference through this statement. Either way, all aspects of Bluetooth
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`technology described in the 1998 paper have to be considered together with the ’892
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`patent disclosure.
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`2.
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`Patent Owner’s “separate embodiments” argument is wrong
`as a matter of law
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`Patent Owner is also wrong when it argues that the Haartsen patent and the
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`1998 paper cannot be considered a single piece of prior art because they disclose
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`“separate and distinct embodiments” (Paper 23 at 15-16). Because the 1998 paper is
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`properly incorporated by reference into the ’892 patent, they constitute a single piece
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`of prior art. And it has long been the case that patents as prior art references “are part
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`of the literature of the art and are relevant for all they contain.” In re Young, 927 F.2d
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`588, 591 (Fed. Cir. 1991); see also In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983).
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`Patent Owner argues that Petitioner’s anticipation theory is wrong because it is
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`based on “two separate embodiments and on isolated references to other elements
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`that are never disclosed as part of any embodiment” (Paper 23 at 15-18), relying on its
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`expert’s declaration for support (Id. at 17, 19, 21, 23, 24, 26, citing Ex. 2007 ¶¶ 16, 23,
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`25, 28, 33). But the declaration of Patent Owner’s expert, Mr. McAlexander
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`improperly focuses on the “invention of the ’892 patent”—not the entire disclosure
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`of the ’892 patent. Ex. 2007 at ¶¶ 3, 15, 16-18, 23-25, 28, 30, 33, 35. This is the
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`incorrect analysis because the “use of patents as references is not limited to what the
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`patentees describe as their own inventions or to the problems with which they are
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`concerned.” In re Heck, 699 F.2d at 1332-33. Mr. McAlexander’s conclusions as to
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`what constitutes the invention of the ’892 patent are irrelevant to whether the
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`disclosure of the ’892 patent, together with the 1998 paper (which is expressly
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`incorporated by reference therein), anticipates the challenged claims.
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`Patent Owner also relies on Petitioner expert’s testimony as allegedly
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`supporting its “separate embodiments” argument. (Id. at 16-17). But Patent Owner
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`did not question Petitioner’s expert, Mr. Moring, about the complete disclosure of the
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`’892 patent and the 1998 paper. Instead, at his deposition, Mr. Moring was repeatedly
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`asked by the Patent Owner’s counsel about the “invention” of the ’892 patent—and
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`in some cases was asked to expressly ignore the incorporated 1998 paper:
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`Q.· So my question is, is it right that, from the standpoint of a
`person of ordinary skill, there's nothing that the person of ordinary skill
`would need to know from the Haartsen paper in order to make and use
`the invention shown in Figure 6?
`A.· That seems a reasonable conclusion.
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` …
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`Q. Okay.· I think I understand what you're saying. I'm trying to
`just limit my questioning now to the components needed just for
`the invention of the '892 patent. Right.
`It's an invention that is designed to address slowly varying
`disturbances in signals; right?
`A. Yes.
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`Q. So maybe another way to look at it is if we consider the '892
`patent and we omit the incorporation of the Haartsen paper, then
`what's left would describe an invention that's useful to detect binary
`information in the presence of slowly varying disturbances; correct?
`MR. QUALEY:· Objection to form.
`THE WITNESS:· Yes.
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`(e.g. Ex. 2006 at 14:1-6; 16:20-17:2 (emphasis added); 20:14-21 (emphasis added); see
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`also id. at pp. 9-26, 35-37, 55, 61-70, 77-79, 82-85). Mr. Moring agreed to certain
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`statements about the “’892 invention,” which Patent Owner misrepresents now in its
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`Response. Mr. Moring was not asked about the full disclosure of the ’892 patent that
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`incorporates by reference the 1998 paper. Moreover, Mr. Moring explained multiple
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`times that the invention of the ’892 patent “resides in the context of a larger
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`communication system, an example of which is described in the Haartsen paper.”
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`E.g., Ex. 2006 at 16:2-19; see also 17:3-21; 21:17-22:5; 22:20-24:12. Thus, the ’892
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`patent is not a “separate and distinct embodiment,” but an improvement to the larger
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`system disclosed in the 1998 paper.
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`Moreover, Patent Owner’s position is incorrect as a matter of law. A prior art
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`reference may be relied upon for all that it would have reasonably suggested to one
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`having ordinary skill the art, including nonpreferred embodiments. See, e.g., Allergan,
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`Inc. v. Apotex Inc., 754 F.3d 952, 959 (Fed. Cir. 2014) (“Indeed, even if the reference
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`discloses the option within the context of a reference that ‘disparages’ or ‘teaches
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`away,’ we do not consider those issues in the context of an anticipation analysis.”);
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`Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323 (Fed. Cir. 2005) (reference
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`disclosing optional inclusion of a particular component teaches compositions that
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`both do and do not contain that component); In re Inland Steel Co., 265 F.3d 1354,
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`1361 (Fed. Cir. 2001); Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361
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`(Fed. Cir. 1998) (“The fact that a modem with a single carrier data signal is shown to
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`be less than optimal does not vitiate the fact that it is disclosed.”); Merck & Co. v.
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`Biocraft Labs., 874 F.2d 804, 807-08 (Fed. Cir. 1989).
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`Patent Owner also argues that anticipation cannot be found here because the
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`elements in the Haartsen reference are not arranged as required by the challenged
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`claims of the ’396 patent. (Paper 23 at 15-17). Patent Owner, however, ignores the
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`overall context of the Haartsen disclosure—a portable wireless digital audio system
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`with a wireless headset is one of the Bluetooth applications disclosed in Haartsen
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`(Paper 1 at 7-8, citing Ex. 1007 at 110, 112). The Haartsen 1998 paper and the ’892
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`patent describe technical details of such a system and, specifically, the ’892 patent
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`discloses variations and improvements to the receiver portion of the Bluetooth system
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`including the use of DPSK and homodyne receivers. (Paper 1 at 9-10, citing Ex.
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`1006). The system and arrangement of its components disclosed in Haartsen is,
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`therefore, as recited in the claims of the ’396 patent, and the Petitioner properly relied
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`on the Haartsen disclosures as anticipating the claims of the ’396 patent.
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`3.
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`The system disclosed in Haartsen anticipates claims of the
`’396 patent
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`Patent Owner argues that Petitioner “fails to show” that certain elements of the
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`challenged claims are disclosed in the Haartsen reference. (Paper 23 at 18-36). But
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`Patent Owner does not dispute that:
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`• The 1998 paper discloses a headphone/receiver, and the ’892 patent
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`discloses a homodyne receiver (Paper 23 at 20);
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`• The 1998 paper discloses a module used for “capture of packets
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`corresponding to a unique user code” (Paper 23 at 21);
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`• The ’892 patent discloses DPSK and the 1998 paper discloses a
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`transmitter or headphone (Paper 23 at 25, 26);
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`• DPSK coding is a form of “reduced intersymbol interference coding”
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`and is capable of “lowering signal detection error” (Paper 23 at 26-27);
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`• Patent Owner explained to the examiner during prosecution that DPSK
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`meets the “reduced ISI encoding” limitation; and
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`• The ’892 patent discloses CDMA (Paper 23 at 28, 30).
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`Indeed, Patent Owner does not dispute that all elements of the ’396 patent
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`claims are disclosed in the 1998 paper or the ’892 patent—together, the Haartsen
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`reference. Patent Owner’s arguments instead assume the Board will agree as to the
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`alleged improper combination of the disclosure of the ’892 patent with the 1998
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`paper. As discussed above, that argument lacks merit. The Haartsen references are
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`inextricably linked together by an express incorporation by reference statement, and
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`Petitioner’s expert provided additional “linking disclosure” when he explained that the
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`’892 patent discloses an improvement to a receiver component of a communication
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`system, such as that described in the 1998 paper. See Ex. 2006 at 16:2-19; see also 17:3-
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`21; 21:17-22:5; 22:20-24:12. Thus, the Haartsen disclosures are “linked” and the
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`implementation of the ’892 patent is properly viewed as incorporated into the system
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`of the 1998 paper.
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`Patent Owner also repeatedly points to Mr. Moring’s statements that the ’892
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`patent does not expressly disclose a Bluetooth embodiment and is not necessary to
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`the implementation of Bluetooth. This is irrelevant. As Mr. Moring explained, the
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`’892 patent is an improvement of one component of a larger system, of which the
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`Bluetooth system described in the 1998 paper is one example. While not necessary for
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`an implementation of Bluetooth, the ’892 patent is expressly disclosed as useful for
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`improving Bluetooth technology:
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`The exemplary radio communication systems discussed
`herein are described as useful in systems employing the
`Bluetooth technology, e.g., having operating characteristics
`such as frequency hopped CDMA, low transmit power, etc.
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`Ex. 1006 at 4:12-15. This improved Bluetooth system, as described in the Haartsen
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`reference, anticipates the ’396 claims.
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`Patent Owner also argues that the ’892 patent’s disclosure including a single
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`mention of DPSK is insufficient to anticipate the elements of the challenged claims
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`that include DPSK. (Paper 23 at 22-27, 30-32). First, as discussed above, the Patent
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`Owner is incorrect that the DPSK disclosure in the ’892 patent can be ignored
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`because it is only “one isolated mention of DPSK not linked to any embodiment”
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`(Paper 23 at 24), because the prior art references “are relevant for all they contain.” In
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`re Young, 927 F.2d 588, 591 (Fed. Cir. 1991); see also In re Heck, 699 F.2d 1331, 1332-33
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`(Fed. Cir. 1983). Second, the Patent Owner does not dispute that it admitted during
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`prosecution of the parent application for the ’396 patent that “the invention utilizes
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`differential encoding” (DPSK) for “noise immunity (e.g., inter-symbol interference
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`noise reduction) as claimed”—that is, that DPSK encoding satisfies the “reduced ISI”
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`elements of the ’396 patent claims. See Paper 1 at 23, 25, 26, 29, 31, citing Ex. 1016 at
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`0160. Patent Owner’s arguments about the alleged insufficiency of the DPSK
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`disclosure in Haartsen are therefore incorrect.
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`Patent Owner also argues that “the recited encoder cannot be a DPSK
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`implementation” because the challenged claims “recite a DPSK implementation
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`separate and distinct from the recited encoder” and the Haartsen reference to DPSK
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`allegedly “does not satisfy both.” (Paper 23 at 27). This is incorrect because the same
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`prior art disclosure can satisfy two separate claim limitations. See, e.g., In re Kelley, 305
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`F.2d 909, 915-16 (C.C.P.A. 1962) (finding different claim terms addressing different
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`functions may properly read on the same element).
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`4.
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`Patent Owner’s criticisms of the Board’s claim
`interpretations are unfounded and do not support
`patentability of the challenged claims
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`Patent Owner states that the Board is “unreasonable” in interpreting certain
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`elements of the challenged claims. (Paper 23 at 29, 33, 36, discussing elements 1(d),
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`1(f), 1(g), 1(j)). The Board, in its Institution Decision, stated that “on this record and
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`for purposes of this decision, we determine that no claim terms require express
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`construction to resolve the parties’ disputes regarding the asserted grounds of
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`unpatentability” (Paper 8 at 6). And, when deciding to institute the present review, it
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`made implicit interpretations of the claim scope, using the “broadest reasonable
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`interpretation” standard as required by law. (Id. at 5, citing 37 C.F.R. § 42.100(b);
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–45 (2016)).
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`Indeed, the Board determined under the BRI standard that “independent code
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`division multiple access (CDMA) communication operation” means that the CDMA
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`operation is performed “independent of the portable audio source.” (Paper 8 at 16).
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`The Patent Owner disagrees but does not propose a different interpretation or explain
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`how the outcome would be different under another interpretation.
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`Similarly, the Board interpreted, under the BRI standard, the claim term “a
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`decoder operative to decode the applied reduced intersymbol interference coding.” to
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`mean a decoder that “decodes the encoded symbols and retrieves the desired signal.”
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`(Paper 8 at 18-19). The Patent Owner faults this interpretation because “doing so
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`renders meaningless the words ‘applied reduced intersymbol interference coding.’”
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`But this is not true: as the Petitioner explained, and the Board agreed, if the DPSK
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`encoding is applied, a decoder disclosed in the “exemplary method” of the ’892 patent
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`would employ DPSK decoding to undo “the effects of the filter on the desired binary
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`signal (e.g., intersymbol interference).” (Paper 1 at 26, Paper 8 at 18-19). And again,
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`the Patent Owner does not propose a different interpretation.
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`Finally, the Board correctly interpreted under the BRI standard that the
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`Haartsen reference discloses claim term 1(j). The Patent Owner states that the
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`“Board’s apparent interpretation of the scope of the claim term is unreasonable”
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`because “[m]ere mention of interference suppression does not disclose the inaudibility
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`required by the ’396 patent claims.” (Paper 23 at 36). But, as the Board explained,
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`even if “suppressing interference only partially reduces interference, Mr. McAlexander
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`does not testify that suppressing interference is insufficient to render the interference
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`inaudible.” (Paper 8 at 20; see also Ex. 2001 ¶ 17). Mr. McAlexander does not address
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`this issue in his Supplemental declaration. See Ex. 2007. And, Petitioner’s expert Mr.
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`Moring testified that Haartsen reference describes how to prevent interfering signals
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`from producing audible sounds. (Ex. 2006 at 50:12-51:25.)1
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`1
`Mr. Moring also testified that even though a “microwave oven generates radio
`frequency energy potentially in the same frequency band that a communication system
`would use, specifically Bluetooth,” he called it “an energy source to distinguish it from
`an interfering signal. Because a signal -- the term ‘signal’ implies that there’s some
`organization to that energy, such as a modulated carrier wave, which the microwave
`oven does not have.” Ex. 2006 at 94:6-95:17.
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`B. Ground 2
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`Claims 1–17 of the ’396 patent are also obvious over the combination of the
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`Haartsen reference with the Giannakis paper. This is an alternative invalidity ground,
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`that was included in the Petition in the event that the Board does not agree with the
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`Petitioner that Haartsen discloses the “reduced ISI” limitations of the challenged
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`claims. Paper 1 at 34. Since Patent Owner does not dispute or even address its
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`statements during prosecution that DPSK satisfies the “reduced ISI” elements of the
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`patent claims, the Board should find all claims of the ’396 patent to be unpatentable
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`based on Ground 1. Nevertheless, Patent Owner’s arguments with respect to Ground
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`2 are addressed below.
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`1.
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`Petitioner and the Board correctly applied Graham analysis
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`The Graham factors have been properly addressed in the Petition. See, e.g.,
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`Paper 1 at 7-11 (determining the scope and content of the prior art); id. at 11
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`(determining the level of ordinary skill in the art); id. at 11-12, 20-33, 35-36, Appendix
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`(explaining the differences between the claimed invention and the prior art). The
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`Petitioner did not address the fourth factor, secondary considerations of non-
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`obviousness, because at the time of the Petition filing it was not aware of any
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`secondary considerations in connection with the challenged ’396 patent or other
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`patents in the same family. The Patent Owner Response does not argue that the
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`Board should consider any secondary considerations of non-obviousness in
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`determining patentability of the challenged claims (Paper 23); therefore, the fourth
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`Graham factor is moot.
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`2.
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`A person of ordinary skill in the art would be motivated to
`combine the Giannakis and Haartsen disclosures
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`As discussed in the Petition, and acknowledged by the Board (Paper 8 at 21-
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`22), Giannakis directly refers to “Bluetooth-like systems,” expressly tying Giannakis’
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`disclosure to such systems, and cites one of Haartsen’s own works. (Paper 1 at 35 and
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`n.9). This statement provides a direct motivation for a person of ordinary skill to
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`combine the disclosures of Haartsen and Giannakis and use the teachings of
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`Giannakis to improve aspects of a system discussed in Haartsen, achieving the
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`invention of the ’396 patent claims. See Paper 1 at 35-36, citing Ex. 1013 (Moring
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`Decl.) at ¶41-43. Nothing more is required to support a motivation to combine the
`
`references for an obviousness combination.
`
`Patent Owner argues that “the Haartsen reference is a fiction” and the
`
`Petitioner supposedly should have provided a motivation to combine the Giannakis
`
`paper with the ’892 patent (Paper 23 at 40-42). This argument is based on Patent
`
`Owner’s mistaken belief that the ’892 patent and the 1998 paper cannot be considered
`
`a single reference. But as discussed above in section II.A, the 1998 paper is correctly
`
`incorporated by reference in its entirety into the ’892 patent disclosure, and they are
`
`properly considered together as a single prior art reference for all purposes. The
`
`Haartsen disclosure covers a Bluetooth system with improved signal receiving
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`13
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`Patent No. 9,282,396
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`capabilities, and one of ordinary skill in the art would have been able to apply
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`Giannakis’ solution for reducing ISI to further improve such a system. Patent Owner
`
`does not argue that the Petitioner failed to establish a motivation to combine
`
`Giannakis with the Haartsen disclosure, if that disclosure is properly understood to
`
`include the ’892 patent and the 1998 paper. Patent Owner’s argument, again,
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`singularly focuses on the “invention” of the ’892 patent, ignores the reality of the
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`Haartsen disclosure and fails to establish an absence of a motivation to combine the
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`references in Ground 2.
`
`Patent Owner next faults Petitioner’s expert for replacing a part of the
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`Giannakis quote with an ellipsis—arguing that Mr. Moring ignored Giannakis’
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`warning that “his approach would have appeal only ‘if frequency-hopping is introduced via
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`ɸm.’” (Paper 23 at 45-46, italics in original, bold underlining added). The complete
`
`quote from Giannakis reads:
`
`in wireless
`Our work has a significant practical appeal
`environments. The
`latter
`include cellular and ad hoc
`(Bluetooth[8]-like) networking if frequency-hopping is introduced
`via ɸm along the lines of [26].
`
`Reference [8] is the 2000 paper written by Haartsen, Ex. 1008 (Paper 1 at 35 n.9); and
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`reference [26] is the Zhou paper, Ex. 2002. The Petitioner’s expert replaced the last
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`“if” clause with an ellipsis. Ex. 1013 at ¶43. Patent Owner’s argument is wrong.
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`First, the “if” clause in Giannakis’ statement does not read “only if.” The
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`clause simply explains that Giannakis’ disclosure can be applied to ad hoc networking
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`14
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`Patent No. 9,282,396
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`systems with ɸm-based frequency hopping but, critically, does not restrict its
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`applicability to only such systems, as Patent Owner argues. The Board in its
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`Institution Decision noted as much. Paper 8 at 23 (“Giannakis, however, does not
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`state that its teachings are incompatible with Bluetooth systems that do not use the
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`Φm technique.”). Patent Owner did not provide any contrary evidence in its
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`Response.
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`Second, the evidence in this case contradicts Patent Owner’s interpretation.
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`Patent Owner attempts to support its “only if” position by citing to Mr. Moring’s
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`deposition testimony (Paper 23 at 46-47), but this effort fails. At his deposition, Mr.
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`Moring was asked to consider “whether Giannakis discloses any technique for
`
`eliminating MUI other than one that uses a phi sub M subcarrier selection” (Ex. 2006
`
`at 90:10-13). After reviewing the Giannakis paper during the lunch break, Mr. Moring
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`testified:
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`Yes, I find other disclosures within Giannakis to the -- that
`address that without mentioning the phi sub M. []·Well, so I can point to
`one that might answer that question. In the second paragraph of the
`introduction to Giannakis, it says, "In the downlink, orthogonal division
`multiple access (OFDMA) is capable of complete MUI elimination,
`provided that a sufficiently long cyclic prefix is used at the transmitter."
`So that's an example of, according to Giannakis, compete MUI
`elimination under certain conditions.
`
`(Ex. 2006 at 92:25-93:18). Patent Owner falsely states that Mr. Moring “could not
`
`identify any technique being advanced by Giannakis—other than the ɸm technique—
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`Patent No. 9,282,396
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`to eliminate multi-user interference.”2 (Paper 23 at 46). As the excerpt above shows,
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`he did just that. While Mr. Moring agreed that this technique was not the one that
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`Giannakis was further “advancing in the paper” (Ex. 2006 at 93:18-21), the technique
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`was nevertheless disclosed in Giannakis. As discussed in detail above (section II.A.3),
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`a prior art reference may be relied upon for all that it would have reasonably
`
`suggested to one having ordinary skill the art.
`
`In the remaining part of its response, the Patent Owner seeks to support its
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`interpretation of limited applicability of Giannakis’ disclosure by referring to another
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`paper [26] cited in Giannakis—the paper by Zhou, Giannakis and Swami titled
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`“Frequency-Hopped Generalized MC-CDMA for Multipath and Interference
`
`Suppression.” (Ex. 2002). Paper 23 at 47-52. Patent Owner’s arguments based on the
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`Zhou paper are a red herring.
`
`The Zhou paper discusses “generalized multi-carrier
`
`(GMC) CDMA
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`transceivers equipped with frequency hopping,” providing (Ex. 2002 at Abstract). It
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`thus teaches how to apply the general technique of Giannakis to specific network
`
`systems. As an initial matter, the Patent Owner misstates the limitation in Zhou when
`
`it says: “Zhou states that ‘coding for fast hopping systems is beyond the scope of this
`
`
`Patent Owner also falsely attributes to Mr. Moring the statement that “the ɸm
`2
`technique is a prerequisite to applying the technique taught by Giannakis.” Mr.
`Moring never testified to this effect; in fact, the word “prerequisite” does not appear
`in the discussion of Giannakis. See Ex. 2006 at 86-93.
`
`16
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`Patent No. 9,282,396
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`paper.’” Paper 23 at 47 (citing Ex. 2002 at 3). The actual statement in Zhou reads:
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`“To avoid consistent fading, frequency hopping is proposed (coding or fast hopping
`
`is beyond the scope of this paper).” (Ex. 2002 at 3, underlining added). This means
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`that Zhou’s discussion does not include coding or fast hopping systems.
`
`The parties agree that Bluetooth is an example of a fast-hopping system. But it
`
`does not follow from Zhou’s statements that the disclosure of Giannakis is similarly
`
`limited, as the Patent Owner argues. Indeed, by arguing that Zhou’s stated limited
`
`applicability affects the applicability of Giannakis’ disclosure, the Patent Owner
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`exacerbates its logical fallacy that “if” equals “only if.”
`
`As discussed above, the Giannakis disclosure, while applicable to systems
`
`where “frequency-hopping is introduced via ɸm” as explained in Zhou, is not limited
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`to only such systems. As such, the limitations of the Zhou disclosure do not affect the
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`applicability of Giannakis to Bluetooth systems. Because of this, neither the Petition
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`nor the Petitioner’s expert considered the Zhou reference before fili
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