In re Patent of: Cameron et al.
`U.S. Patent No.: 5,915,210
`Issue Date:
`June 22, 1999
`Appl. Serial No.: 08/899,476
`Filing Date:
`July 24, 1997
`Title:
`
`Method and system for providing multicarrier simulcast
`Transmission
`IPR2016-00765
`
`IPR:
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`DECLARATION OF DR. JAY P. KESAN
`
`1. My name is Dr. Jay P. Kesan. I understand that I am submitting a
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`declaration for Mobile Telecommunications Technologies LLC (MTel”),
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`offering technical opinions in connection with the above-referenced Inter
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`Partes Review (IPR) proceeding pending in the United States Patent and
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`Trademark Office for U.S. Patent No. 5,915,210 (the “’210 patent”), and
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`prior art references relating to its subject matter. My current curriculum
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`vitae is attached as Appendix A.
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`2. I also provide selected background information here relevant to myself,
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`my experience, and this proceeding.
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`3. I am a Professor at the University of Illinois at Urbana-Champaign,
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`where I am appointed in the College of Law, the Department of Electrical
`
`and Computer Engineering, the Coordinated Science Laboratory, and the
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`Information Trust Institute. I have a Ph.D. in Electrical and Computer
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`Engineering from the University of Texas at Austin and a J.D., summa
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`cum laude from Georgetown University. I have also worked as a
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`research scientist at the IBM T.J. Watson Research Center, and I am a
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`named inventor on several United States patents. I have also served as a
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`technical expert and legal expert in patent infringement lawsuits. I have
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`been appointed to serve as a Special Master in patent disputes.
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`Additionally, I have been appointed as a Thomas Edison Scholar at the
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`United States Patent and Trademark Office (“USPTO”).
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`4. My opinions in this report are based on my experience and expertise in
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`the field relevant to the Asserted Patents. To prepare this Report, I have
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`reviewed and considered materials shown in Appendix B and referred to
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`herein, principally including the ‘210 Patent, the Saalfrank reference, and
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`the extrinsic evidence cited.
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`5. I anticipate using some of the above-referenced documents and
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`information, or other information and material that may be produced
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`during the course of this proceeding (such as by deposition testimony), as
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`well as representative charts, graphs, schematics and diagrams,
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`animations, and models that will be based on those documents,
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`information, and material, to support and to explain my testimony before
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`the Board regarding the validity of the ’210 Patent.
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`
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`6. This report is based on information currently available to me. To the
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`extent that additional information becomes available (whether from
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`documents that may be produced, from testimony that may be given or in
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`depositions yet to be taken, or from any other source), I reserve the right
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`to continue the investigation and study. I may thus expand or modify my
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`opinions as that investigation and study continues. I may also supplement
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`my opinions in response to such additional information that becomes
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`available to me, any matters raised by and/or opinions provided by
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`MTel’s experts, or in light of any relevant orders from the Board.
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`7. Throughout this report, I cite to certain documents or testimony that
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`support my opinions. These citations are not intended to be and are not
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`exhaustive examples. Citation to documents or testimony is not intended
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`to signify and does not signify that my expert opinions are limited by or
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`based solely on the cited sources.
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`8. I am an attorney, registered to practice before the United States Patent
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`and Trademark Office, and a legal expert in United States Patent Law.
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`9. A person of ordinary skill in the art at the time of the invention (POSA)
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`of the ’210 Patent would possess a bachelor’s degree in electrical or its
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`equivalent and about four years working in the field of wireless
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`telecommunications networks and would possess knowledge regarding
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`
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`frequency, amplitude, and masks as used in telecommunications, or
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`equivalent education and work experience.
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`10. The ‘210 Patent is directed to the field of telecommunications and to
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`systems and methods for transmitting multiple carriers in simulcast.
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`11. Independent claims 1, 10, and 19 of the ‘210 Patent are part of the
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`petition in the above referenced IPR.
`
`12. Independent claims 1, 10, and 19 all recite transmitting in simulcast a
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`first group of multiple carriers within a frequency band and a second
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`group of multiple carriers within the same frequency band, where each
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`carrier of the second group corresponds to and includes the same
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`information as a respective carrier of the first group. These limitations
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`are graphically depicted below in Drawing 1.
`
`Transmitter 1
`
`Transmitter 2
`
`A B C
`
`C11 C12 C13
`Band M
`A B C
`
`C21 C22 C23
`Band M
`Drawing 1
`
`First
`Group of
`Multiple
`Carriers
`
`Second
`Group of
`Multiple
`Carriers
`
`
`
`
`
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`13. In Drawing 1, Transmitter 1 and Transmitter 2 are shown transmitting in
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`simulcast.
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`14. The ‘210 Patent describes that simulcast “provides multiple transmitters,
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`operating on substantially the same frequencies and transmitting the same
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`information positioned to cover extended areas.” Ex. 1001 at 1:52-55.
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`15. A POSA would understand that simulcast means transmitting the same
`
`information at the same time from two or more different transmitters.
`
`16. As a result, Drawing 1 shows Transmitter 1 and Transmitter 2
`
`transmitting the same information (A, B, and C) at the same time.
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`17. Drawing 1 also shows Transmitter 1 and Transmitter 2 transmitting using
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`multiple carriers within the same frequency band M. For example,
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`Transmitter 1 uses carrier C11 to send information A, carrier C12 to send
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`information B, and carrier C13 to send information C. Similarly,
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`Transmitter 2 uses carrier C21 to send information A, carrier C22 to send
`
`information B, and carrier C23 to send information C.
`
`18. Claims 1, 10, and 19 of the ‘210 Patent require that the carriers of
`
`Transmitter 2 correspond to and include the same information as the
`
`respective carriers of Transmitter 1. A POSA would understand this to
`
`mean that C11 and C21 have the same frequency and include the same
`
`information, C12 and C22 have the same frequency and include the same
`
`
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`information, and C13 and C23 have the same frequency and include the
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`same information.
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`19. These claims also include the limitation that “each of the first plurality of
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`carrier signals representing a portion of the information signal
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`substantially not represented by others of the first plurality of carrier
`
`signals.”
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`20. A POSA would understand this to mean that each portion of the
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`information signal represented by a carrier is unique to that carrier.
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`Indeed, the specification describes that unique data streams are
`
`modulated onto the respective carriers. Ex. 1001 at 13:34-35.
`
`21. A POSA would also understand this limitation to mean that there can be
`
`no redundancy in the information represented by different carriers. This
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`prohibition of redundancy is graphically depicted below in Drawing 2.
`
`No Redundancy in Information Carried
`A B C
`
`Transmitter 1
`
`Transmitter 2
`
`C11 C12 C13
`Band M
`A B C
`
`C21 C22 C23
`Band M
`Drawing 2
`
`6
`
`
`
`A ∩ B = {}
`A ∩ C = {}
`B ∩ C = {}
`
`
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`22. In Drawing 2, the prohibition of redundancy among the information
`
`carried by the multiple carriers of the first group is graphically depicted
`
`in set notation. For example, the intersection (∩) of information A and
`
`information B is the empty set ({}). The entire limitation for the example
`
`in Drawing 2 is A ∩ B = {}, A ∩ C = {}, and B ∩ C = {}.
`
`23. Therefore, the limitation of independent claims 1, 10, and 19 of the ‘210
`
`Patent that each of the first plurality of carrier signals represent a portion
`
`of the information signal substantially not represented by others of the
`
`first plurality of carrier signals can be referred to as the non-redundancy
`
`limitation.
`
`24. I have reviewed the Saalfrank reference in regard to the non-redundancy
`
`limitation of claims 1, 10, and 19 of the ‘210 Patent.
`
`25. Saalfrank is directed to a method for identifying a transmitter or region in
`
`common-wave radio broadcasting. Ex. 1015, Title at 1. The common-
`
`wave radio broadcasting of Saalfrank is done using a digital transmission
`
`process called digital audio broadcasting (DAB). Id., col. 1 ¶ 3 at 2.
`
`26. Saalfrank explicitly describes that DAB uses the coded orthogonal
`
`frequency division multiplex (COFDM) transmission procedure. Id. col.
`
`1 ¶ 4 at 2. The COFDM transmission procedure includes transmitting
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`from more than one transmitter 448 different carriers within a 1.5 MHz
`
`
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`bandwidth. Id. Each of the 448 different carriers is modulated using
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`differential phase shift keying (DPSK). Id.
`
`27. Exhibit 2002 is an OFDM tutorial provided by www.radio-
`
`electronics.com. http://www.radio-electronics.com/info/rf-technology-
`
`design/ofdm/ofdm-basics-tutorial.php as of June 21, 2016. OFDM “is a
`
`form of signal modulation that divides a high data rate modulating stream
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`placing them onto many slowly modulated narrowband close-spaced
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`subcarriers, and in this way is less sensitive to frequency selective
`
`fading.” Ex. 2002 at 1.
`
`28. Normally when subcarriers are closely spaced, they must have a guard
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`band between them, so that a receiver can separate them. Id. “This is not
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`the case with OFDM. Although the sidebands from each carrier overlap,
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`they can still be received without the interference that might be expected
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`because they are orthogonal to each another.” Id. In other words, OFDM
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`is a transmission procedure that allows multiple carriers to be closely
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`spaced as long as they are orthogonal to each other.
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`29. The DAB of Saalfrank uses a special form of OFDM called COFDM.
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`This is a “form of OFDM where error correction coding is incorporated
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`into the signal.” Id. at 4.
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`
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`30. A POSA would understand the error correction coding of COFDM
`
`implies information redundancy.
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`31. This is confirmed in Exhibit 2003, which includes excerpts from the book
`
`entitled “Multi-carrier Technologies For Wireless Communication” by
`
`Nassar et al. Chapter 6 of this book is directed to a type of OFDM called
`
`carrier interferometry OFDM (CI/OFDM). Ex. 2003 at 3. Chapter 6
`
`compares the redundancy of COFDM to CI/OFDM. Id. at 8.
`
`32. Exhibit 2003 describes that “channel coding is incorporated into most
`
`traditional OFDM architectures, leading to coded OFDM (COFDM). In
`
`typical COFDM systems, prior to the serial to parallel conversion of
`
`Figure l(a), each l input bits (typically l = 1) are channel coded to n
`
`output bits (typically n = 2). Then, in the same serial-to-parallel manner,
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`each bit is transmitted on its own carrier for a total of N/(n/l) information
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`bits sent on N carriers. In this way, l information bits are effectively sent
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`on n carriers, enabling frequency diversity benefits at a cost of decreased
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`throughput.” Id. at 7. In other words, if l information bits are effectively
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`sent on n carriers, and l < n, then there is redundancy in the information
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`sent on the n carriers.
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`33. Indeed, Exhibit 2003 confirms this redundancy of COFDM in its
`
`comparison with CI/OFDM. It provides that “CI/COFDM has the same
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`
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`degree of redundancy (i.e. same throughput) as COFDM, but instead of
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`the redundant bits being transmitted on the carriers at the same time, they
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`are time interleaved.” Id. at 8. In other words, it explicitly confirms that
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`typical COFDM involves transmitting redundant bits on carriers at the
`
`same time.
`
`34. In order to determine if the COFDM of the DAB method of Saalfrank
`
`involves transmitting redundant information, a POSA would look to the
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`type of coding used in the COFDM of the DAB.
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`35. Exhibit 2004 is a technical report on the guidelines and rules for
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`implementation and operation of DAB from the European
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`Telecommunications Standards Institute (ETSI) in the year 2000. The
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`ETSI provides that “data representing each of the programme services
`
`being broadcast (digital audio with some ancillary data, and maybe also
`
`general data) are subjected to energy dispersal scrambling, convolutional
`
`coding and time interleaving.” Ex. 2004 § 4.3.6 at 13. In other words, in
`
`DAB the data is subject to convolutional coding.
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`36. The ETSI also explicitly defines convolutional coding as a procedure that
`
`generates redundancy. Id. § 3.1 at 6. Convolutional coding is a “coding
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`procedure which generates redundancy in the transmitted data stream in
`
`order to provide ruggedness against transmission distortions.” Id.
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`
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`37. Exhibit 2005 shows that convolutional coding has been a part of DAB
`
`since its inception. As a result, a POSA would understand that the DAB
`
`recited by Saalfrank included convolutional coding.
`
`38. Exhibit 2005 includes excerpts from the book entitled “Digital audio
`
`broadcasting: principles and applications of DAB, DAB+ and DMB” by
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`Hoeg et al. It describes that DAB was “developed in the 1990s by the
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`Eureka 147/DAB project.” Ex. 2005 § 1.1 at 3. “Towards the end of
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`1986 a consortium of 19 organisations … applied for notification as a
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`Eureka project. At the meeting in December 1986 of the High Level
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`Representatives of the Eureka partner states in Stockholm the project,
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`now called 'Digital Audio Broadcasting, DAB', was notified as the
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`Eureka 147 project. National research grants were awarded to that
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`project in France, Germany and The Netherlands. However, owing to
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`granting procedures official work on the project could not start before the
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`beginning of 1988 and was supposed to run for four years.” Id. § 1.4.1 at
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`8. As a result, the Eureka 147 project predates Saalfrank, which was
`
`filed in 1991.
`
`39. Exhibit 2005 describes that convolutional coding was part of the original
`
`Eureka 147 DAB system and added redundancy. “In the Eureka 147
`
`DAB system, the data representing each of the programme services being
`
`
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`broadcast is subjected to energy dispersal scrambling, convolutional
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`coding and time interleaving. The convolutional encoding process
`
`involves adding redundancy to the service data using a code with a
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`constraint length of 7.” Id. § 3.8.5.1 at 9. As a result, a POSA would
`
`understand that the DAB described by Saalfrank in 1991 included
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`convolutional coding and redundancy.
`
`40. Additionally, Exhibit 2006 is a publication directed to DAB radio design
`
`and implementation. Exhibit 2006 provides that in DAB “[t]he audio
`
`frames, the packet data and the streamed data are then separately
`
`processed by an energy dispersal scrambler, a convolutional encoder and
`
`a time interleaver.” Ex. 2006 § 2.1at 12. It explicitly describes that the
`
`“convolutional encoder adds redundancy to the signal for error
`
`protection.” Id.
`
`41. As a result, a POSA would conclude that the COFDM of the DAB
`
`includes convolutional coding. Convolutional coding necessarily adds
`
`redundant information to the COFDM carriers. Convolutional coding has
`
`been used in DAB since its inception. Consequently, the DAB taught by
`
`Saalfrank necessarily involves transmitting carriers that include
`
`redundant information.
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`
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`42. Because independent claims 1, 10, and 19 of the ‘210 Patent all include
`
`the non-redundancy limitation, Saalfrank cannot teach these claims. In
`
`fact, Saalfrank teaches away from these claims by teaching the use of
`
`COFDM in DAB, which requires redundancy.
`
`43. I was further asked to determine how a POSA would interpret the term
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`“substantially” in the non-redundancy limitation based on information in
`
`the ‘210 Patent regarding the purpose of the invention.
`
`44. First of all, I have reviewed the specification of the ‘210 Patent, and it
`
`does not use the term “substantially” in regard to the non-redundancy
`
`limitation. More specifically, the term “substantially” is not used in the
`
`specification in relation to portions of an information signal or in relation
`
`to multi-carrier modulation.
`
`45. In fact, the actual words of the non-redundancy limitation do not appear
`
`in the specification of the ‘210 Patent. As described above, however, a
`
`POSA would understand that this limitation is provided in the recitation
`
`of modulating unique data streams onto multi-carrier signals. Ex. 1001 at
`
`13:34-35.
`
`46. A review of the prosecution history explains why the actual words of the
`
`non-redundancy limitation are not in the specification. The non-
`
`redundancy limitation was added in a preliminary amendment filed in
`
`
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`1996 in the preceding continuation application no. 08/760,457 (now
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`abandoned. Ex. 1014 at 246.
`
`47. The preliminary amendment describes that that cancelled claims were
`
`considered in related applications. Id. at 250. It also says that the
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`amended claims are now not disclosed or suggested in any other related
`
`application. Id. at 251. A POSA would conclude from this information
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`that the non-redundancy limitation was added to claim an embodiment
`
`not already claimed in the previous applications. Indeed modulating
`
`unique data streams onto multi-carrier signals is described in the
`
`specification as a particular embodiment. Ex. 1001 at 13:34-35.
`
`48. Even though the term “substantially” is not used in the specification in
`
`relation to portions of an information signal or in relation to multi-carrier
`
`modulation, a POSA would understand what it can and cannot mean from
`
`the information in the ‘210 Patent regarding the purpose of multi-carrier
`
`modulation.
`
`49. The specification of the ‘210 Patent is explicit in describing the purpose
`
`of multi-carrier modulation. It says that this purpose is to provide high
`
`data transfer rates, while keeping below the baud rate limitations of
`
`simulcast transmission techniques. Ex. 1001 13:11-13. It earlier
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`describes that the time shifting present in simulcast systems prevents high
`
`
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`baud rate transmissions. Id. at 2:32-53. In other words, more data cannot
`
`be sent by just increasing the rate of transmission.
`
`50. As a result, a POSA would understand that the purpose of multi-carrier
`
`modulation is to increase the amount of data transmitted while keeping
`
`the data rate low. In other words, the purpose of multi-carrier modulation
`
`in the ‘210 Patent is to send more information in the same time period.
`
`Multi-carrier modulation allows more information to be sent in the same
`
`time period, because each of the multiple carriers can send a piece of the
`
`information at the same time.
`
`51. 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. This is because any overlap in the information
`
`sent by the multiple carriers defeats the purpose of sending the most
`
`amount of different information at the same time.
`
`52. A POSA would, however, understand that even the best real world
`
`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. A POSA familiar with
`
`
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`patents would also know that terms of degree like “substantially” are
`
`often used in claims to account for these minor real world problems.
`
`53. As a result, a POSA would conclude that the term “substantially” in the
`
`non-redundancy limitation is used to account for inadvertent interference
`
`between carrier channels rather that to suggest that the modulation
`
`deliberately includes some overlap in the information sent. The latter
`
`would be in direct opposition to the purpose of the multi-carrier
`
`modulation. In addition, 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.
`
`54. In accordance with this interpretation of the term “substantially” in the
`
`non-redundancy limitation, the ‘210 Patent does not describe using error
`
`correcting codes as part of multi-carrier modulation even though error
`
`correcting codes are described in the specification.
`
`55. The use of error correcting codes in the ‘210 Patent is limited to codes
`
`placed in the information signals themselves. Ex. 1001 at 27: 42-46. In
`
`contrast, the error correcting codes of the COFDM of Saalfrank, for
`
`example, are part of the multicarrier modulation. Drawings 3 and 4
`
`below illustrate the difference.
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`
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`Error-correcting
`bits
`Information Signal
`10111001110101011000010001000100
`
`
`
`...010
`
`...001
`
`...011
`
`...101
`
`C1 C2 C3 C4
`Drawing 3
`
`No multi-carrier
`redundancy
`
`56. In Drawing 3, unique portions of the Information Signal are transmitted
`
`on the different multi-carriers C1, C2, C3, and C4. The Information Signal
`
`can include error-correcting bits. However, this does not prevent the
`
`portions of the information signal from being unique. Contrast Drawing
`
`3 with Drawing 4 shown below.
`
`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
`
`57. Like the COFDM of Saalfrank, Drawing 4 includes additional multi-
`
`carriers C5, C6, and C7, which only carry the error-correcting bits
`
`
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`determined from the information signal bits of multi-carriers C1, C2, C3,
`
`and C4. A POSA would understand that the modulation scheme of
`
`Drawing 4 does not meet the non-redundancy limitation of the claims,
`
`because multi-carriers C5, C6, and C7 are not each representing a portion
`
`of the information signal substantially not represented by the others. In
`
`fact, multi-carriers C5, C6, and C7 are representing entirely portions of the
`
`information signal represented by the others.
`
`58. A POSA would also understand that Drawing 4 depicts how multi-
`
`carriers can be used to implement the classic Hamming (7,4) error-
`
`correcting code. See https://en.wikipedia.org/wiki/Hamming(7,4).
`
`59. Note that Drawing 4 is entirely consistent with the COFDM description
`
`in Exhibit 2003. Ex. 2003 at 7. In Drawing 4, l = 4 input bits are channel
`
`coded to n = 7 output bits. In this way, 4 information bits are effectively
`
`sent on 7 carriers. However, as Exhibit 2003 describes this scheme
`
`results in decreased throughput, which is entirely at odds with the
`
`purpose of multi-carrier modulation in the ‘210 Patent.
`
`60. Again, based on information in the ‘210 Patent regarding the purpose of
`
`multi-carrier modulation, a POSA would interpret the term
`
`“substantially” in the non-redundancy limitation as allowing a carrier to
`
`include a small amount of the same information included by another
`
`
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`carrier due to frequency interference between the two carriers. A POSA
`
`would not interpret the term to mean deliberately modulating a carrier
`
`with redundant information according to an error correction code,
`
`because this would be contrary to the purpose of multi-carrier modulation
`
`in the ‘210 Patent.
`
`61. I hereby declare that all statements made herein of my own knowledge
`
`are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are
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`punishable by fine or imprisonment, or both, under Section 100l of Title
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`18 of the United States Code.
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`
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`19
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`MTel., Exhibit 2001, ARRIS v. MTel., Page 19, IPR2016-00765
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`

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`Dated:
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`6127116
`
`Respectfully submitted,
`
`saw
`
`Dr. Jay P. Kesan
`
`
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`20
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`MTe|., Exhibit 2001, ARRIS V. MTeI., Page 20, |PR2016-00765
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`MTel., Exhibit 2001, ARRIS v. MTel., Page 20, IPR2016-00765
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`

`

`Appendix A
`
`Vitae of Dr. Jay P. Kesan
`
`
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 21, IPR2016-00765
`
`

`

`JAY P. KESAN
`2709 Windward Blvd.
`Champaign, IL 61821
`(217)333-7887 (Work)
`kesan@illinois.edu
`http://www.jaykesan.com
`
`
`2004-Present
`2010-Present
`2003-Present
`1999-Present
`2008-Present
`2004-Present
`2007-Present
`
`2006-2015
`2007-2009
`2009-2011
`
`Fall 2010
`
`Fall 2009
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`Summer 2002-
`2007
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`Spring 2004
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`Fall 2001
`
`
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`2000-2001
`
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`ACADEMIC WORK EXPERIENCE:
`
`University of Illinois at Urbana-Champaign
`Professor & Director, Program in Intellectual Property & Technology Law
`H. Ross & Helen Workman Research Scholar
`
`
`
`Research Professor, Coordinated Science Laboratory
`
`
`
`Affiliate Professor, Department of Electrical & Computer Engineering
`
`Professor, College of Business
`
`
`
`Professor, Agricultural & Consumer Economics
`
`
`
`Program Leader, Biofuel Law & Regulation, Energy Biosciences Institute (EBI)
`Professor & Group Leader, Business, Economics and Law of Genomic Biology
`
`
`(BioBEL) research theme, Institute of Genomic Biology (IGB)
`
`
`Mildred Van Voorhis Jones Faculty Scholar
`
`
`
`Faculty Fellow, Office of the Vice President for Technology & Economic Development
`Associate Professor, College of Law and the Institute of Government
`2002-2004
`
`
`& Public Affairs (IGPA)
`
`
`1998-2002
`
`
`Assistant Professor, College of Law
`
`
`1999-2002
`
`
`Assistant Professor, Institute of Government & Public Affairs (IGPA)
`Subjects Taught: Civil Procedure; Property; Introduction to Intellectual Property; Patent Law;
`Managing Intellectual Property; Intellectual Property Transactions; Patent Litigation; Law of Renewable
`Energy; Law & Regulation of Cyberspace; Law & Economics; Theoretical Foundations of
`Intellectual Property; Legal Issues in Technology Entrepreneurship
`
`Areas of Interest: Patent Law; Intellectual Property; Cyber Security and Privacy; Internet Law & Regulation;
` Renewable Energy/Biofuel Regulation; Empirical & Analytical Methods in the Law; Law and Computation;
`
`Law and Economics; Agricultural Biotechnology Law
`
`Florida State University School of Law
`Visiting Professor of Law
`Subject Taught: Introduction to Intellectual Property
`
`Seattle University School of Law
`Visiting Professor of Law
`Subject Taught: Patent Litigation
`
`University of Illinois, USA – Oxford University, UK – University of Victoria, BC
`Co-Director, Summer Study Abroad Program in International & Comparative
`
`Intellectual Property
`
`
`
`Subjects Taught: Int’l & Comparative Patent Law; IP Issues in Emerging Technologies
`
`DePaul University College of Law
`Jerold Hosier Distinguished Visiting Chair in Intellectual Property
`
`Georgetown University Law Center
`
`
`
`Visiting Assistant Professor
`Subjects Taught: Patent Law; Theoretical Foundations of Intellectual Property
`
`
`
`
`University of Illinois at Urbana-Champaign
`
`
`
`
`Resident Associate, Center for Advanced Study (CAS)
`Co-organizer of year-long seminar series on “The University=s Changing Role: Defining
`Values for Research & Technology”
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`1
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`MTel., Exhibit 2001, ARRIS v. MTel., Page 22, IPR2016-00765
`
`

`

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`University of Tokyo, Japan
`JSPS Invited Fellow and Visiting Associate Professor
`
`University of Washington, Seattle
`Fellow, CASRIP Intellectual Property Summer Institute
`Invited Faculty
`
`Institute of Intellectual Property (IIP), Tokyo, Japan
`Invited Foreign Research Fellow
`
`
`LEGAL & SCIENTIFIC WORK EXPERIENCE:
`
`United States Patent & Trademark Office (USPTO), Alexandria, VA
`Thomas A. Edison Scholar
`
`
`Expert/Adviser
`
`
`
`
`
`
`
`
`Legal and/or Technical Expert & Consultant
`Served as Technical Expert and/or Patent Law Expert or Co-Counsel in numerous
`
`patent litigations and PTAB proceedings at USPTO
`Technical expert in microelectronics, optoelectronics, communication systems, wireless
`
`systems, nanotechnology and software;
`Appointed by U.S. federal judges as Special Master in patent litigations;
`Served on the Board of Directors/Advisors of technology start-ups.
`
`
`
`Pennie & Edmonds LLP, Washington, DC
`Associate Attorney (1996-97); Patent Agent & Law Clerk (1993-96)
`Patent and Trademark Litigation: Oral hearings; preparation of memoranda/motions
`
`and discovery requests; depositions; preparation of infringement and validity opinions.
`Patent Prosecution: Preparation and prosecution of several hundred U.S. and PCT patent
`
`applications in a variety of technologies, including computer software and hardware.
`
`Law Clerk to the Hon. Patrick E. Higginbotham, Dallas, TX
`U.S. Circuit Judge, U.S. Court of Appeals for the Fifth Circuit
`
`
`IBM T.J. Watson Research Center, Yorktown Heights, NY
`Research Staff Scientist (1990-93); Post-Doctoral Associate (1989-90)
`
`Massachusetts Institute of Technology, Cambridge, MA (concurrent with IBM)
`Visiting Scientist, National Magnet Laboratory
`
`Columbia University, New York, NY (concurrent with IBM)
`Thesis Supervisor of Doctoral Students
`
`
`EDUCATION:
`
`Georgetown University Law Center, Washington, DC
`J.D., December 1996, summa cum laude (2 conferred out of 623 graduates)
`GPA:
`11.59/12.0
`Honors:
`Charles A. Keigwin Award for Academic Excellence
`Order of the Coif; Dean's List All Years
`Best Paper Awards in Criminal Justice, Constitutional Law and
` Commercial Law
`Law Review: The Georgetown Law Journal, Associate Editor
`
`Hebrew University, Faculty of Law, Jerusalem, Israel
`Tulane/Cardozo Uri & Caroline Bauer Program, August 1996
`Studied religious, international and comparative law
`
`
`
`2
`
`Dec. 2000-Jan. 2001
`
`July 2000
`July 2001-04
`
`Nov.-Dec. 2003
`
`Oct. 2012-Feb. 2013
`July 2013-June 2014
`
`1998-Present
`
`1993-1997
`
`1997-1998
`
`1989-1993
`
`1990-1993
`
`1989-1993
`
`
`
`MTel., Exhibit 2001, ARRIS v. MTel., Page 23, IPR2016-00765
`
`

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`GPA:
`
`3.89/4.0
`
`
`University of Texas at Austin, Austin, TX
`Ph.D. in Electrical & Computer Engineering, 1989
`M.S. in Electrical & Computer Engineering, 1986
`GPA:
`3.86/4.0
`Honors:
`Commendation from the Dean of the Graduate School for
` Outstanding Doctoral Dissertation
`
`
`National Institute of Technology, Karnataka (NITK)
`Surathkal, India
`B.S. in Electrical Engineering, Highest Honors, 1984
`
`
`BAR AND COURT ADMISSIONS:
`
`U.S. Patent & Trademark Office (1993 - Reg. No. 37,488); Virginia (1997); District of Columbia (1998);
`Fourth Circuit; Fifth Circuit; Federal Circuit; U.S. Dist. Court, Eastern Dist. of VA; Sup. Ct. of VA
`
`
`HONORS AND AWARDS:
`
` 
`
` Senior Commentator, Edison Fellowship Program, Center for Protection of Intellectual Property (CPIP), George
` Mason University, Arlington, VA, 2014-15
` Microsoft Faculty Research Award for work on software patents, 2015 ($40,000)
` Named by Intellectual Asset Management (IAM) Magazine in their list of “Top 12 IP Personalities of 2012” (only
`
`two academics in this list), 2013
` Thomas A. Edison Scholar, United States Patent & Trademark Office (USPTO), 2012-2013
` Honorable Mention Award ($1,000), Research Competition on Cyberdeterrence conducted by the National
` Research Council (NRC) for work on “Thinking Through Active Defense in Cyberspace,” 2011
` Best Paper Award for Contributions to Foundations of Electronic Governance at the 4th International Conference
` on Theory and Practic