Inter Partes Review
`United States Patent No. 5,915,210
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`United States Patent No.: 5,915,210
`Inventors: Dennis Wayne Cameron, et al.
`Formerly Application No.: 08/899,476
`Issue Date: Jun. 22, 1999
`
`Filing Date: Jul. 24, 1997
`Former Group Art Unit: 2649
`Former Examiner: Thanh Cong Le
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`Attorney Docket No.:
`109109-0017-652
`Customer No. 28120
`
`Petitioners: Aruba Networks,
`Inc.; Hewlett Packard
`Enterprise Company; HP Inc.;
`ARRIS Group, Inc.; Juniper
`Networks, Inc.; Brocade
`Communications Systems, Inc.;
`Ruckus Wireless Inc.
`
`
`
`
`
`For: METHOD AND SYSTEM FOR PROVIDING MULTICARRIER
`SIMULCAST TRANSMISSION
`
`
`
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 5,915,210
`
`
`
`
`
`

`
`
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................. 1
`I.
`II. MANDATORY NOTICES UNDER §42.8 ..................................................... 3
`III. PETITIONERS HAVE STANDING ............................................................... 7
`A. GROUNDS FOR STANDING UNDER §42.104(a) ................................................... 7
`B. CLAIMS AND STATUTORY GROUNDS UNDER §§42.22 AND 42.104(b) .............. 7
`IV. THE FACTS SUPPORT INSTITUTION UNDER §325(d) ......................... 8
`V. SUMMARY OF THE ’210 AND ITS FIELD............................................... 15
`A. ’210 OVERVIEW .............................................................................................. 15
`B. OVERVIEW OF THE ’210 PATENT PROSECUTION HISTORY .............................. 17
`VI. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONERS
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM ................ 18
`A. CLAIM CONSTRUCTION UNDER §42.104(b)(3) ............................................... 18
`B. LEVEL OF ORDINARY SKILL IN THE ART ......................................................... 23
`C. OBVIOUSNESS ANALYSIS: GROUND 1: RAULT IN VIEW OF THE KNOWLEDGE OF
`A POSITA RENDERS OBVIOUS CLAIMS 1, 7-8, 10, 15-17, 19; GROUND 2: RAULT IN
`VIEW OF MOJOLI RENDERS OBVIOUS CLAIMS 7-8, 15, 19 ..................................... 24
`1. Overview of Rault ...................................................................................... 24
`2. Overview of Mojoli .................................................................................... 28
`3. Motivation to Combine Rault with Mojoli ................................................ 29
`4. Grounds 1 and 2 Claim Charts ................................................................... 30
`D. OBVIOUSNESS ANALYSIS: GROUND 3 ............................................................. 48
`1. Overview of Nakamura .............................................................................. 48
`2. Overview of Saalfrank ............................................................................... 50
`3. Motivation to Combine Nakamura with Saalfrank .................................... 51
`4. Ground 3 Claim Charts .............................................................................. 53
`VII. CONCLUSION ............................................................................................ 65
`
`
`
`ii
`
`
`
`
`
`

`
`
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`LIST OF EXHIBITS
`
`
`Exhibit Description
`Ex.1001 U.S. Patent No. 5,915,210
`Ex.1002 U.S. Patent No. 5,915,210 File History
`Ex.1003 Declaration of Anthony Acampora, Ph.D.
`Ex.1004 Declaration of Gerard Grenier - J.C. Rault, D. Castelain, and B. Le
`Floch, The coded orthogonal frequency division multiplexing
`(COFDM) technique, and its application to digital radio broadcasting
`towards mobile receivers, in IEEE GLOBAL
`TELECOMMUNICATIONS CONFERENCE & EXHIBITION 428-
`432 (Dallas, 1989)
`Ex.1005 U.S. Patent No. 4,615,040 (“Mojoli”)
`Ex.1006 U.S. Patent No. 5,191,576 (“Pommier”)
`Ex.1007 U.S. Patent No. 5,197,061 (“Halbert-Lassalle”)
`Ex.1008 U.S. Patent No. 4,660,193 (“Young”)
`Ex.1009 German Patent DE 41 024 08 A1 (Certificate of English Translation)
`Ex.1010 German Patent DE 41 024 08 A1 (English Translation) (“Saalfrank”)
`Ex.1011 German Patent DE 41 024 08 A1 (German)
`Ex.1012 Declaration of Gerard Grenier - Yasuhisa Nakamura and Yoichi Saito,
`256 QAM Modem for Multicarrier 400 Mbit/s Digital Radio, in IEEE
`JOURNAL ON SELECTED AREAS IN COMMUNICATIONS, Vol.
`5, No. 3 329-335 (April 1987)
`Ex.1013 Library of Congress Certificate and an Article (Yasuhisa Nakamura
`and Yoichi Saito, 256 QAM Modem for Multicarrier 400 Mbit/s Digital
`Radio) in IEEE JOURNAL ON SELECTED AREAS IN
`COMMUNICATIONS, Vol. 5, No. 3 329-335 (April 1987)
`Ex.1014 Library of Congress Certificate and an Article (J.C. Rault, D. Castelain,
`and B. Le Floch, The coded orthogonal frequency division multiplexing
`(COFDM) technique, and its application to digital radio broadcasting
`towards mobile receivers) in IEEE GLOBAL
`TELECOMMUNICATIONS CONFERENCE & EXHIBITION 428-
`432 (Dallas, 1989)
`Ex.1015 Declaration of Marissa Golub
`Ex.1016 Declaration of Sharon Lee
`
`
`
`iii
`
`

`
`Inter Partes Review
`United States Patent No. 5,915,210
`Pursuant to §§311-319 and Rule §42,1 the undersigned, acting in a
`
`representative capacity for Petitioners, hereby petition for inter partes review of
`
`claims 1, 7-8, 10, 15-17, and 19 (“Claims”/“Challenged Claims”) of U.S.P.N.
`
`5,915,210 (“the ’210”), issued to Destineer Corporation and assigned to Mobile
`
`Telecommunications Technologies, LLC (“PO”/“Patent Owner”). There is a
`
`reasonable likelihood that at least one claim is unpatentable, and Petitioners
`
`request judgment against the Claims as unpatentable under §103.
`
`I.
`
`INTRODUCTION
`
`The ’210 generally relates to a “two-way communication system” between
`
`base transmitters and pagers that “broadcast[s] in simulcast using multi-carrier
`
`modulation techniques.” Ex1001, Abstract; Ex1003 ¶34. According to the ’210,
`
`the use of multi-carrier modulation solves the well-known problem of “intersymbol
`
`interference,” which is caused by timing shifts between signals received from
`
`simulcast transmitters, and limits the baud rate at which information may be
`
`transferred. Ex1001, 2:49-53; see also id., 2:33-49; 2:62-67; 3:26-50; Ex1003
`
`¶¶35-37. But, the Claims’ supposed “invention” was well-known and obvious long
`
`before the asserted November 12, 1992 effective filing date.
`
`The Claims generally recite (1) splitting an information signal into multiple
`
`portions such that each of a plurality of carriers “represent[s] a portion of the
`
`1 Section cites are to 35 U.S.C. or 37 C.F.R., and emphases is added unless noted.
`
`
`
`1
`
`

`
`
`information signal substantially not represented by others” and (2) transmitting the
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`plurality of carriers in simulcast from a first and second transmitter. These features
`
`were well-known long before November 1992. Ex1003 ¶37. For example, Rault
`
`(Ex1004) (pub’d 1989), discloses a multicarrier system for digital audio
`
`broadcasting (“DAB”) and teaches that (1) “the information to be transmitted is
`
`split into a large number of modulated carriers,” Ex1004, 8 ¶1, and (2) the carriers
`
`are broadcast by a “single-frequency network” “consisting [of] a network of
`
`synchronized transmitters working on the same signal.” Id., 10 ¶2. Like the ’210,
`
`Rault uses multi-carrier modulation for the express purpose of “suppress[ing] the
`
`intersymbol interference due to the frequency selectivity of the channel,” and
`
`“demonstrate[s] that the OFDM technique wipes out the intersymbol interference
`
`in the multipath channel.” Ex. 1004, 8 ¶¶1, 11. Saalfrank (Ex1010) (pub’d 1992)
`
`also teaches these features by disclosing a “high-quality radio transmission”
`
`system (1) utilizing “a plurality of individual carriers” for broadcasting “stereo
`
`programs” and “data related to or independent from said programs” and (2)
`
`employing “common-wave radio operation,” meaning “all transmitter stations
`
`simultaneously emit transmission signals with the same modulation content on the
`
`very same transmission frequency and/or the same carrier frequencies.” Ex1010, 2
`
`¶¶3-4. Additional references further confirm these features were well known. See,
`
`e.g., Ex1007 (“Lassalle”) (multicarrier COFDM system for “radio broadcasting”)
`
`
`
`2
`
`

`
`
`and Ex1006 (“Pommier”) (COFDM system for “broadcasting of digital data”).
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`Thus, a person of ordinary skill in the art at the time of the invention (POSITA)
`
`would have understood how to utilize multicarrier modulation and simulcasting.
`
`Ex1003 ¶38.
`
`As demonstrated below, every Claim element was in the prior art. The
`
`Claims are nothing more than a routine and predictable combination of these well-
`
`known elements. Thus, Petitioners request the Board find each Claim unpatentable
`
`under §103.
`
`II. MANDATORY NOTICES UNDER §42.8
`Petitioners are the Real Parties in Interest Under §42.8(b)(1). The real
`
`parties-in-interest are Petitioners Aruba Networks, Inc., Hewlett Packard
`
`Enterprise Company, HP Inc., ARRIS Group, Inc., Juniper Networks, Inc.,
`
`Brocade Communications Systems, Inc., and Ruckus Wireless, Inc.
`
`
`
`Related Matters Under Rule §42.8(b)(2). PO has asserted claims 1, 7-8, 10,
`
`15-17, and 19 of the ’210 against Petitioners and other defendants in In re: Mobile
`
`Telecommunications Technologies, Case No. 1:16-md-2722 (D. Del.). PO has also
`
`asserted the ’210 in Mobile Telecommunications Technologies, LLC v. Cellco
`
`Partnership d/b/a Verizon Wireless, Case No. 2:16-cv-1324 (E.D. Tex.). PO
`
`previously asserted the ’210 in the following cases, which are now closed: Mobile
`
`Telecommunications Technologies, LLC v. Leap Wireless International, Inc. et al.,
`
`
`
`3
`
`

`
`
`Case No. 2:13-cv-885 (E.D. Tex.); Mobile Telecommunications Technologies, LLC
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`v. AT&T Mobility LLC et al., Case No. 2:14-cv-897 (E.D. Tex.); Mobile
`
`Telecommunications Technologies, LLC v. T-Mobile USA, Inc. et al., Case No.
`
`2:13-cv-886 (E.D. Tex.); Mobile Telecommunications Technologies, LLC v. Apple
`
`Inc., Case No. 2:13-cv-258 (E.D. Tex.); Mobile Telecommunications Technologies,
`
`LLC v. Samsung Electronics Co., Ltd. et al., Case No. 2:15-cv-183 (E.D. Tex.).
`
`
`
`Three inter partes review actions—now terminated—were previously
`
`instituted on the ’210: Samsung Electronics Co., Ltd. v. Mobile
`
`Telecommunications Technologies, LLC, IPR2015-01724; Apple Inc. v. Mobile
`
`Telecommunications Technologies, LLC, IPR2014-01036; and T-Mobile USA Inc.
`
`v. Mobile Telecommunications Technologies, LLC, IPR2015-00015. The Board
`
`also denied institution of inter partes review of three petitions previously filed on
`
`the ’210: Samsung Electronics Co., Ltd. v. Mobile Telecommunications
`
`Technologies, LLC, IPR2015-01725; ARRIS Group, Inc. v. Mobile
`
`Telecommunications Technologies, LLC, IPR2016-00765; Aruba Networks, Inc. et
`
`al. v. Mobile Telecommunications Technologies, LLC, IPR2016-00769.
`
`Lead and Back-Up Counsel Under Rules 42.8(b)(3) and (4).
`
`Lead Counsel (Aruba Networks, Inc., Hewlett Packard Enterprise Company, and
`HP Inc.): J. Steven Baughman, USPTO Reg. No. 47,414
`ROPES & GRAY LLP, 2099 Pennsylvania Ave. NW, Washington, D.C. 20006-
`
`
`
`4
`
`

`
`
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`6807; P: (202) 508-4606; F: (202) 383-8371; steven.baughman@ropesgray.com;
`HP_PTAB_Service_MTel@ropesgray.com
`Back-Up Counsel (Aruba Networks, Inc., Hewlett Packard Enterprise Company,
`and HP Inc.): Megan F. Raymond, USPTO Reg. No. 72,997
`ROPES & GRAY LLP, 2099 Pennsylvania Ave. NW, Washington, D.C. 20006-
`6807; P: (202) 508-4741; F: (202) 383-8347; megan.raymond@ropesgray.com
`Back-Up Counsel (Aruba Networks, Inc., Hewlett Packard Enterprise Company,
`and HP Inc.): Sharon Lee, pro hac vice pending2
`ROPES & GRAY LLP, 2099 Pennsylvania Ave. NW, Washington, D.C. 20006-
`6807; P: (202) 508-4728; F: (202) 383-7762; sharon.lee@ropesgray.com
`Back-Up Counsel (Patent Agent) (Aruba Networks, Inc., Hewlett Packard En-
`terprise Company, and HP Inc.): Stefan Geirhofer, USPTO Reg. No. 71,879
`ROPES & GRAY LLP, 2099 Pennsylvania Ave. NW, Washington, D.C. 20006-
`6807; P: (202) 508-4690; F: (202) 383-7778; stefan.geirhofer@ropesgray.com
`Back-Up Counsel (Arris Group, Inc.): Patrick D. McPherson, USPTO Reg. No.
`46,255
`DUANE MORRIS LLP, 505 9th St. NW, Suite 1000, Washington, D.C. 20004
`P: (202) 776-5214; F: (202) 776-7801; PDMcPherson@duanemorris.com
`Back-Up Counsel (Arris Group, Inc.): Joseph A. Powers, USPTO Reg. No.
`47,006
`DUANE MORRIS LLP, 30 South 17th Street, Philadelphia, PA 19103-4196
`P:(215) 979-1842; F: (215) 689-3797; JAPowers@duanemorris.com
`Back-Up Counsel (Arris Group, Inc.): Patrick Muldoon, USPTO Reg. No.
`
`
`2 Petitioner hereby requests authorization to file a motion for Sharon Lee, Rebecca
`
`Carson, Jonathan Kagan, and Korula Cherian to appear pro hac vice.
`
`
`
`5
`
`

`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`47,343
`DUANE MORRIS LLP, 505 9th St. NW, Suite 1000, Washington, D.C. 20004
`P: (202) 776-7840; F: (202) 776-7801; PCMuldoon@duanemorris.com
`Back-Up Counsel (Juniper Networks, Inc.): Nima Hefazi, USPTO Reg. No.
`63,658
`IRELL & MANELLA, LLP 840 Newport Center Dr., Suite 400, Newport Beach,
`CA; P: (949) 760-0991; F: (949) 760-5200; nhefazi@irell.com.
`Backup Counsel (Juniper Networks, Inc.): Rebecca Carson, pro hac vice pend-
`ing2
`IRELL & MANELLA, LLP 840 Newport Center Dr., Suite 400, Newport Beach,
`CA; P: (949) 760-0991; F: (949) 760-5200; rcarson@irell.com.
`Backup Counsel (Juniper Networks, Inc.): Jonathan Kagan, pro hac vice pend-
`ing2
`IRELL & MANELLA, LLP 1800 Avenue of the Stars, Suite 900, Los Angeles,
`CA; P: (310) 277-1010; F: (310) 203-7199; jkagan@irell.com.
`Backup Counsel (Brocade Communications Systems, Inc. and Ruckus Wireless,
`Inc.): Ronald Wielkopolski USPTO Reg. No. 69,359
`RuyakCherian LLP, 1776 Eye St. NW, Suite 750, Washington, DC 20006
`P: (202) 838-1568; ronw@ruyakcherian.com
`Backup Counsel (Brocade Communications Systems, Inc. and Ruckus Wireless,
`Inc.): Don F. Livornese USPTO Reg. No. 32,040
`RuyakCherian LLP, 222 N. Sepulveda Blvd., Suite 2000, El Segundo, CA 90245
`P: (310) 586-7689; donl@ruyakcherian.com.
`Backup Counsel (Brocade Communications Systems, Inc. and Ruckus Wireless,
`Inc.): Korula T. Cherian, pro hac vice pending2
`RuyakCherian LLP, 1936 University Ave., Suite 350, Berkeley, CA 94704
`
`6
`
`
`
`
`
`

`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`
`
`P: (510) 944-0185; sunnyc@ruyakcherian.com.
`
`III. PETITIONERS HAVE STANDING
`A. Grounds for Standing Under §42.104(a)
`Petitioners certify pursuant to §42.104(a) that the ’210 is eligible for (and
`
`Petitioners are not barred or estopped from requesting) IPR. Petitioners (except
`
`ARRIS) were each served with a Complaint asserting infringement of the ’210 on
`
`or after January 11, 2016. ARRIS was not served a complaint. Neither Petitioners
`
`nor any other RPI, nor privy, was served before that date, or has initiated a civil
`
`action challenging the ’210’s validity.
`
`B. Claims and Statutory Grounds Under §§42.22 and 42.104(b)
`Petitioners request IPR of claims 1, 7-8, 10, 15-17, and 19. These claims are
`
`unpatentable under §103 as follows: Ground 1: Claims 1, 7-8, 10, 15-17, and 19
`
`are obvious over Rault in view of the knowledge of a POSITA; Ground 2: Claims
`
`7-8, 15, and 19 are obvious over Rault in view of Mojoli; and Ground 3: Claims 1,
`
`7-8, 10, 15-17, and 19 are obvious over Nakamura in view of Saalfrank3.
`
`None of the Grounds is redundant as each is directed to different Claims or
`
`
`3 Although Nakamura and Saalfrank were previously considered in IPR2014-
`
`01036, IPR2015-00015, IPR2015-01724, IPR2016-00765, and IPR2016-00769,
`
`this Petition presents new arguments about these references.
`
`
`
`7
`
`

`
`
`addresses anticipated challenges by PO. IPR2014-01448, Pap.25, 4-5.
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`Specifically, Ground 2 adds Mojoli to address specific limitations not expressly
`
`disclosed in Rault. While Grounds 1 and 3 address the same claims, Petitioners
`
`anticipate PO will argue the presence of coding is incompatible with the “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”
`
`limitation. Thus, Ground 1 is based upon a Rault embodiment in which
`
`information signals do not contain coding, while Ground 3 applies the teachings of
`
`Nakamura and Saalfrank, which contain coding. The grounds are, accordingly, not
`
`redundant.
`
`§§VI.C.4, VI.D.4 below provide charts specifying how the prior art renders
`
`obvious the Claims. In further support, the Declaration of technical expert Dr.
`
`Anthony Acampora is attached (Ex1003).
`
`IV. THE FACTS SUPPORT INSTITUTION UNDER §325(d)
`PO may urge the Board to deny this Petition under §325(d) in light of prior
`
`petitions by certain Petitioners—namely, IPR2016-00765 by ARRIS and IPR2016-
`
`00769 (“’769IPR”) by Aruba, Hewlett Packard Enterprise, and HP Inc. (collec-
`
`tively, the “copycat petitions”). This Petition, however, is readily distinguishable
`
`from cases where the Board discretionarily denied institution, and the circumstanc-
`
`es here warrant institution.
`
`
`
`8
`
`

`
`First, this Petition introduces new grounds (e.g., Rault and Rault in view of
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`
`
`Mojoli), including new legal and factual arguments, new references (e.g., Rault,
`
`Mojoli, Halbert-Lassalle, and Pommier), and new declaration testimony from a
`
`new expert. Further, while this Petition includes a Ground based on Nakamura and
`
`Saalfrank—which were part of the copycat petitions—they are presented different-
`
`ly because this Ground: (1) presents a new combination with Nakamura as the base
`
`reference (Saalfrank was the base in the copycat petitions), (2) relies on portions of
`
`Nakamura not previously presented, (3) applies these references to all challenged
`
`claims (whereas the copycat petitions challenged only a subset (claims 8, 15, and
`
`19) based on these references, and the rest on anticipation by Saalfrank alone), and
`
`(4) also includes new arguments explicitly rebutting PO’s erroneous assertions in
`
`the copycat IPRs, as discussed below. Accordingly, this Petition does not involve,
`
`under §325(d), “the same or substantially the same prior art or arguments previous-
`
`ly [] presented” in the copycat petitions. See, e.g., IPR2014-00059, Pap.9, 40-42
`
`(rejecting §325(d) argument where, inter alia, petition presented new testimony,
`
`witnesses, and portions of art already considered); IPR2016-00151, Pap.10, 5-7
`
`(noting, despite “overlap,” “material differences in the arguments” and “different
`
`grounds”); IPR2015-00852, Pap.14 at 3-7 (noting “some similarities” but “differ-
`
`ent testimony from a different witness”); IPR2015-00854, Pap.14, 3-7 (same); see
`
`
`
`9
`
`

`
`
`also, e.g., IPR2014-01208, Pap.13, 12-15; IPR2016-01437, Pap.6, 5-6; IPR2016-
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`01436, Pap.7, 3-4; IPR2015-00607, Pap.7, 9-10; CBM2015-00061, Pap.9, 38-41.
`
`Second, Petitioners Juniper, Brocade, and Ruckus have never previously
`
`filed IPRs against the ’210, and were neither privies nor RPIs in the copycat peti-
`
`tions. Thus, denial under §325(d) would deprive these new petitioners of their op-
`
`portunity to challenge the ’210. See, e.g., IPR2015-00401, Pap.13, 8-9 (“Each of
`
`the proceedings includes a different petitioner and others include altogether differ-
`
`ent grounds than those asserted here”); IPR2015-00607, Pap.7, 9-10 (same); see
`
`also, e.g., IPR2016-00159, Pap.13, 6-8; IPR2016-00649, Pap.10, 6-7; CBM2015-
`
`00027, Pap.9, 3-4; CBM2014-00182, Pap.16, 8; cf. also, e.g., CBM2015-00067,
`
`Pap.14, 6 (criticizing “almost identical challenges to the same claims…on the
`
`same statutory basis, by the same Petitioner”) (emphases added).
`
`Moreover, the prior petitions were “copycat” petitions—virtually identical to,
`
`and filed solely for purposes of seeking joinder with, the earlier-instituted
`
`IPR2015-01724 petition filed by Samsung (IPR2016-00765, Pap.5, 1; IPR2016-
`
`00769, Pap.3, 1)—to ensure the already-instituted trial would continue to final
`
`written decision if the parties settled and sought termination (which ultimately oc-
`
`curred). See IPR2015-01724, Pap.16, 1-2; IPR2016-00765, Pap.5, 9; IPR2016-
`
`00769, Pap.3, 1. Further, filing copycat petitions was the most efficient approach
`
`and most consistent with the Board’s guidance concerning joinder—indeed, the
`
`
`
`10
`
`

`
`
`Board had already instituted the prior petition’s grounds. E.g., CBM2015-00015,
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`Pap.23, 18 (denying institution of claims for which another CBM review by differ-
`
`ent petitioner was already instituted on same ground). The Board routinely insti-
`
`tutes and/or grants joinder in such proceedings. See, e.g., IPR2016-00962, Pap.12,
`
`9 (“Board routinely grants motions for joinder where the party seeking joinder in-
`
`troduces identical arguments and the same grounds.” (quoting petitioner and col-
`
`lecting citations)); IPR2015-00854, Pap.14, 7-9; IPR2015-00852, Pap.14, 7-9;
`
`IPR2016-00472, Pap.9, 10; IPR2016-00934, Pap.11, 8, 12-13; CBM2015-00059,
`
`Pap.13, 3, 5, 8. Given that the earlier petitions were strictly copycats, the petition-
`
`ers could not have expanded on the grounds already presented or added new
`
`grounds. Cf., e.g., IPR2015-00521, Pap.14, 4-5 (denying petition and joinder be-
`
`cause new proceeding “includes at least one new substantive issue”). This Petition
`
`thus represents Petitioners’ first practical attempt to advance their own grounds of
`
`invalidity.
`
`In addition, the denial of the previous copycat IPRs was based on PO’s
`
`incorrect and contradictory assertions. While, as shown below, Petitioners’ three
`
`newly-argued Grounds here demonstrate unpatentability even under PO’s
`
`mischaracterization of its claims, PO’s misstatements to secure denial of the prior
`
`IPRs underscore why discretionary denial here under §325(d) would be
`
`inappropriate. In the prior IPRs, PO sought to distinguish Saalfrank by construing
`
`
`
`11
`
`

`
`
`the language that each “carrier signal[] represent[] a portion of the information
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`signal substantially not represented by others” to require “no redundancy” even
`
`though the term “redundancy” never appears in the ’210. PO relied on this
`
`incorrect “no redundancy” interpretation to exclude prior art—like Saalfrank—that
`
`uses error-correction coding with the multicarrier and simulcast techniques
`
`described above. IPR2016-00769, Pap.11 (“’769POPR”), 14, 21; Ex1003 ¶39.
`
`However, the ’210 does not exclude information signals from falling within the
`
`Challenged Claims for containing error correcting coding. Ex1003 ¶39. PO even
`
`admits the ’210 includes error-correction coding. Indeed, the ’210 teaches that
`
`transmitted information can be “protected against error by encoding it using a
`
`forward error correcting code,” that “[t]hese error correcting codes add additional
`
`digits to the information digits in a code word, where the additional digits are a
`
`specific function of the information digits” and that “an appropriate error
`
`correcting code” may be used “to successfully deliver a message.” Ex1001, 27:43-
`
`49, 12:32-35, 17:16-19; see also id., 27:57-59 (incorporating by reference well-
`
`known 1968 textbook by Gallagher, summarizing numerous error-correcting code
`
`types). Ex1003, ¶40. And PO’s expert offered contradictory testimony that cannot
`
`be reconciled with PO’s own construction. Ex1003, ¶41.
`
`PO’s false assertion that DAB systems like Saalfrank “necessarily involve
`
`transmitting carriers that include redundant information,” because “[t]he
`
`
`
`12
`
`

`
`
`convolutional encoding process involves adding redundancy” taking it outside the
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`scope of the ’210 claims (’769POPR, 30), is belied by PO’s admission that the
`
`“Information Signal of the ‘210 Patent can include error-correcting
`
`bits.” ’769POPR, 18. In fact, in attempting to characterize the error-correction
`
`coding employed by the ’210 itself, PO admitted systems employing systematic
`
`error-correction codes4 have “[n]o multi-carrier redundancy” and are thus within
`
`the scope of the claims. ’769POPR, Fig. 3; Ex1003 ¶¶44-45. But systematic codes
`
`were well-known long before the ’210, as was their use in multicarrier broadcast
`
`systems. Ex1003 ¶45. Indeed, while Petitioners rely below on Rault’s disclosure
`
`of transmissions with no coding, Rault itself discloses the use of concatenated
`
`Reed Solomon codes, and a POSITA would have understood from this disclosure
`
`that Reed Solomon codes—a systematic code also expressly disclosed in
`
`
`4 In a systematic code, the original uncoded bits of a message signal reappear as
`
`part of the coded information signal, along with additional error-correcting bits that
`
`allow a receiver to determine whether the original bits have were correctly received
`
`and to correct, if possible, errors introduced by the transmission. Ex1003 ¶¶42-43.
`
`For example, if the message to be communicated were THANKYOU, a systematic
`
`encoding of that message could result in the information signal
`
`THANKYOUWBDVXAEF. Id.
`
`
`
`13
`
`

`
`
`the ’210—can be used in Rault’s system. Id.; Ex1004, 9 ¶9; Ex1001, 27:33-59.
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`For non-systematic codes,5 which include the convolutional codes discussed
`
`in Saalfrank, the same reasoning applies. Ex1003 ¶46. The encoded message
`
`signal clearly represents an “information signal” even though the uncoded message
`
`does not explicitly appear in it. Id. An argument to the contrary would imply that
`
`a coded message does not qualify as an “information signal” merely because it has
`
`been subject to error-correction coding—an assertion that would contradict the
`
`plain and ordinary meaning of “information signal,” as well as PO’s admission that
`
`“[t]he Information Signal of the ’210 can include error-correcting
`
`bits.” ’769POPR, 18. Ex1003 ¶47.
`
`Nonetheless, PO took this position to avoid institution in the ‘769IPR,
`
`mischaracterizing Saalfrank’s system codes by arguing they add additional
`
`subcarriers which “only carry the error-correcting bits determined from the
`
`
`5 In a non-systematic code, bits of the original message signal do not explicitly re-
`
`appear as part of the information signal, but are transformed into a different format
`
`that can still be used to uniquely reconstruct the message (and detect/correct errors)
`
`at the receiver. Ex1003 ¶42. For example, a non-systematic encoding of the
`
`THANKYOU message could result in the information signal QRVFTJPKDSLKS-
`
`FMV. Id.
`
`
`
`14
`
`

`
`
`information signal bits” of the other carriers. ’769POPR, 18-19, Fig. 4. But this is
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`false: Saalfrank’s described DAB systems use non-systematic convolutional codes
`
`in which the uncoded message bits do not reappear in the coded information signal,
`
`so it would be impossible to isolate and transmit the uncoded message on some
`
`subcarriers and error-correction bits on others, as PO argued. Ex1003 ¶¶48-49.
`
`And in DAB systems like Saalfrank, error-correction coding is performed
`
`independently of multicarrier modulation, and the coded information signal is both
`
`frequency and time interleaved. Thus, there are no subcarriers carrying only error-
`
`correction bits as PO wrongly alleged. Ex1003 ¶49.
`
`PO’s attempts to distinguish Saalfrank in the ‘769IPR thus rested on false
`
`premises about Saalfrank and the ’210, which Petitioners have highlighted so PO is
`
`not tempted to repeat them here, and to underscore that the Board should not
`
`exercise its discretion to deny institution based on the copycat IPRs, where PO
`
`avoided institution only by mischaracterizing the ’210 and prior art.
`
`V.
`
`SUMMARY OF THE ’210 AND ITS FIELD
`A.
`The ’210 claims priority to a November 12, 1992 application and relates to
`
`’210 Overview
`
`systems for providing communication capability between a central network and a
`
`mobile unit located somewhere in a geographic region. Ex1001, Abstract, 1:11-16.
`
`The ’210’s “primary object [is] to provide a communication system with wide area
`
`
`
`15
`
`

`
`
`coverage and high message throughput while minimizing frequency bandwidth us-
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`age.” Ex1001, 4:44-48. Fig. 6, annotated below, illustrates the major elements of
`
`the communication system. Ex1001 8:46-48; Ex1003 ¶23.
`
`
`
`As depicted by Fig. 6, the communication system includes network opera-
`
`tions center 600 connected to satellite uplink 602, which provides data to satellite
`
`606. Ex1001, 8:46-51. Satellite 606 communicates the received data to several
`
`satellite downlink stations, including 608 and 610. Ex1001, 8:51-53. Then, satel-
`
`lite downlink stations 608 and 610 send the data to spatially separated base trans-
`
`mitters 612 and 614, which transmit the data for reception by a mobile unit 624.
`
`
`
`16
`
`

`
`
`Ex1001, 8:62-9:11. Dashed line 660 in Fig. 6, indicates the boundary between
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`zones 1 and 2. Ex1001, 9:42-43; Ex1003 ¶24.
`
`According to the ’210, in one embodiment of the alleged invention, base
`
`transmitters 612 and 614 receive a data signal from satellite 606 via downlink sta-
`
`tions 608 and 610, and then transmit the data in simulcast, i.e., transmitters operate
`
`on substantially the same frequency and transmit the same information. Ex1001
`
`10:35-41; see also id., 1:52-55; 9:66-10:3. This embodiment is “useful to deliver
`
`the message, if, for example, the location of mobile unit 624 in zone 1 or zone 2 is
`
`unknown and broad coverage is desired.” Id., 10:41-44; Ex1003 ¶25.
`
`The ’210 further explains that the base transmitters 612 and 614 preferably
`
`utilize a multi-carrier modulation format—i.e., the simultaneous transmission of
`
`several closely spaced carrier frequencies within a desired frequency band, each
`
`individually modulated to convey an information signal. Ex1001 13:3-27. Ac-
`
`cording to the ’210, multi-carrier modulation allows high data transfer rates while
`
`keeping below baud rate limitations of simulcast transmission techniques. Id.,
`
`13:10-14; Ex1003 ¶¶26-27.
`
`B. Overview of the ’210 Patent Prosecution History
`U.S. Appl’n 08/899,476, the ’210 application, was filed July 24, 1997, as a
`
`continuation of abandoned U.S. Appl’n 08/760,457. Ex1002, 270-76. The ’457
`
`application (filed December 6, 1996) was a continuation of U.S. Appl’n
`
`
`
`17
`
`

`
`
`07/973,918 (U.S.P.N. 5,590,403). Ex1002, 64-259. The Examiner subsequently
`
`Inter Partes Review
`United States Patent No. 5,915,210
`
`issued a notice of allowance followed by a notice of abandonment for failure to
`
`timely correct drawings or submit new drawings. Id., 261-67; Ex1003 ¶¶28-29.
`
`The applicant then filed the ’476 application. Ex1002, 270-80. The reasons
`
`for allowance were as follows: “As to claims 2 and 16 [issued Claims 1 and 10],
`
`the prior art of record fails to show a multi-carrier simulcast transmission system
`
`comprising the first and second transmitters for simultaneously transmitting the
`
`same information signals. The system comprises a plurality of carrier signals in
`
`each of the transmitters wherein each of the carrier signals represent a portion of
`
`the information signal not represented by others of the plurality of carrier signals.”
`
`Ex1002, 288; Ex1003 ¶¶30-31. Rault, Nakamura, and Saalfrank were not identified
`
`during prosecution. See generally Ex1002.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONERS
`WILL PREVAIL WITH RESPECT TO AT