`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 15
`Entered: September 21, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC.,
`Petitioner,
`
`ARUBA NETWORKS, INC.,
`HEWLETT PACKARD ENTERPRISE COMPANY, and HP, INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`___________
`
`Case IPR2016-00765 (Patent 5,915,210)
` Case IPR2016-00769 (Patent 5,915,210)1
`____________
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`1 The dispositive issue is the same in each of the proceedings listed above.
`We, therefore, issue one Decision to be filed in each proceeding.
`
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`IPR2016-00765 (Patent 5,915,210)
`IPR2016-00769 (Patent 5,915,210)
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`
`I. INTRODUCTION
`
`A. Background
`Petitioner, ARRIS Group, Inc., filed a Petition to institute an inter
`partes review of U.S. Patent No. 5,915,210 (“the ’210 patent”). Paper 12
`(“Pet.”). Petitioners, Aruba Networks, Inc., Hewlett Packard Enterprise
`Company, and HP, Inc., filed a nearly identical Petition to institute an inter
`partes review of the ’210 patent. ARRIS Group, Inc., Aruba Networks, Inc.,
`Hewlett Packard Enterprise Company, and HP, Inc. (collectively,
`“Petitioners”) challenge the patentability claims 1, 7, 8, 10, 15–17, and 19 of
`the ’210 patent. Pet. 1. In response, Mobile Telecommunications
`Technologies, LLC (“Patent Owner”), timely filed a substantially identical
`Preliminary Response in both proceedings. Paper 14 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
`of the analysis and evidence in the Petitions and the Preliminary Responses,
`we determine that Petitioners fail to establish a reasonable likelihood of
`prevailing on any of claims challenged in the Petitions. Accordingly, we do
`not institute an inter partes review of claims 1, 7, 8, 10, 15–17, and 19 of the
`’210 patent.
`
`B. Additional Proceedings
`Both parties indicate that the ’210 patent is the subject of numerous
`district court proceedings. Pet. 1–2; Paper 8, 2–4.
`In addition, both parties also indicate that the ’210 patent was the
`subject of numerous inter partes review proceedings. Pet. 2–3; Paper 8, 4.
`
`2 Unless otherwise indicated, citations are to IPR2015-00765.
`
`2
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`The following inter partes review proceedings were all terminated pursuant
`to settlement agreements between the respective parties: Apple Inc. v.
`Mobile Telecommunications Technologies, LLC, Case IPR2014-01036
`(PTAB June 27, 2014); T-Mobile USA Inc. v. Mobile Telecommunications
`Technologies, LLC, Case IPR2015-00015 (PTAB filed Oct. 3, 2014), and
`Samsung Electronics Co., Ltd. V. Mobile Telecommunications Technologies,
`LLC, Case IPR2015-01724 (PTAB filed Aug. 13, 2015). Institution was
`denied in Samsung Electronics Co., Ltd. V. Mobile Telecommunications
`Technologies, LLC, Case IPR2015-01725 (PTAB filed Aug. 13, 2015).
`
`C. The ’210 Patent
`The ’210 patent (Ex. 1001), titled “Method and System for Providing
`Multicarrier Simulcast Transmission,” describes a system for two-way
`communication between a network operations center and a mobile device
`located somewhere in a wide geographic region. Ex. 1001, Abstract. The
`’210 patent explains that an important aspect of the invention is to “provide
`a communication system with wide area coverage and high message
`throughput while minimizing frequency bandwidth usage.” Id. at 4:46–48.
`Annotated Figure 6 of the ’210 patent, reproduced below, illustrates
`the major components of the communication system for sending a data
`signal between networks operation center 600, highlighted in yellow, and
`mobile unit 624, highlighted in green. Id. at 8:46–48.
`
`
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`
`Annotated Figure 6 is a schematic diagram of a communication
`system.
`As depicted by Figure 6 of the ’210 patent, above, the communication
`system provides network operations center 600 connected to satellite uplink
`602, which in turn, provides data to satellite 606. Id. at 8:48–51. Satellite
`606 communicates the received data to several satellite downlink stations
`608, 610. Id. at 8:52–53. Satellite downlink stations 608, 610 send the data
`signal to geographically spaced apart base transmitters 612, 614 which emit
`the signal via antennas 620 and 622, respectively, in different geographic
`defined regions, i.e., “zones,” for reception by mobile unit 624. Id. at 8:62–
`9:5. Dash line 660 indicates the boundary between zones 1 and 2, and each
`zone may include additional base transmitters 613, 615, respectively, as
`shown in Figure 6. Id. at 8:62–9:56. Mobile unit 624, shown in zone 1, is a
`
`
`
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`portable communication device, for instance, a pager, and can both receive
`and transmit a signal. Id. at 9:6–11.
`
`Observing Figure 6 of the ’210 patent, above, in one embodiment of
`the invention base transmitters 612, 614 receive a data signal from satellite
`606 via down link stations 608, 610, and then transmit the same data signal
`at the same time, i.e., in simulcast, in both zones 1 and 2, to be received by
`mobile unit 624. Id. at 10:35–41. The ’210 patent explains that this method
`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. at
`10:41–44 (emphasis added). In another embodiment, if for instance the
`location of mobile unit 624 is known to be in zone 1, base transmitter 614
`transmits a data signal within zone 1, and at the same time, base transmitter
`612 can transmit different data for a different mobile unit within zone 2 to
`“increase information throughput and system efficiency.” Id. at 10:45–59.
`
`
`transmission
`
`system
`
`D. Illustrative Claim
`Claims 1, 10, and 19 are independent. Claim 1 illustrates the subject
`matter at issue and is reproduced below:
`1. A multi-carrier
`simulcast
`transmitting
`in a desired frequency band at least one message contained in
`an information signal, the system comprising:
`a first transmitter configured to transmit a first plurality of
`carrier signals within the desired frequency band, each of the
`first plurality of carrier signals representing a portion of the
`information signal substantially not represented by others of the
`first plurality of carrier signals; and
`the first
`a second
`transmitter, spatially separated from
`transmitter, configured to transmit a second plurality of carrier
`
`for
`
`
`
`
`5
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`signals in simulcast with the first plurality of carrier signals,
`each of the second plurality of carrier signals corresponding to
`and representing substantially the same information as a
`respective carrier signal of the first plurality of carrier signals.
`
`E. The Alleged Grounds of Unpatentability
`Petitioners contend that the challenged claims are unpatentable on the
`following specific grounds.
`References
`Basis
`Saalfrank3
`§ 102
`Saalfrank and
`§ 103
`Nakamura4
`
`Petitioners support its challenge with a Declaration of Dr. Apostolos
`K. Kakaes, Ph.D. (Ex. 1003, “Kakaes Decl.”).
`Patent Owner supports its Preliminary Response with a Declaration of
`Dr. Jay Kesan, Ph.D. (Ex. 2001, “Kesan Decl.”).
`
`
`
`Claims Challenged
`1, 7, 10, 16, 17, and 19
`8, 15, and 19
`
`II. CLAIM CONSTRUCTION
`The ’210 patent is expired, and “the Board’s review of the claims of
`an expired patent is similar to that of a district court’s review.” In re
`
`
`3 Ex. 1016, DE 41 02 408 A1 (filed Jan. 28, 1991). An English language
`translation of Saalfrank appears as Exhibit 1015. We refer to the English
`language translation in our Decision.
`4 Ex. 1019, Yasuhisa Nakamura, Yoichi Saito, and Satoru Aikawa, 256
`QAM Modem for Multicarrier 400 Mbit/s Digital Radio, IEEE JOURNAL ON
`SELECTED AREAS IN COMMUNICATIONS, Vol. SAC-5, NO. 3 April 1987, at
`329.
`
`
`
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`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms
`generally are given their ordinary and customary meaning, as understood by
`a person of ordinary skill in the art, at the time of the invention, taking into
`consideration the language of the claims, the specification, and the
`prosecution history of record because the expired claims are not subject to
`amendment. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc).
`We determine that no explicit claim construction is required for the
`purposes of this Decision.
`
`
`III. ANALYSIS
`
`A. Claims 1, 7, 10, 16, 17, and 19 – Anticipation by Saalfrank
`Petitioners assert that claims 1, 7, 10, 16, 17, and 19 would have been
`
`anticipated by Saalfrank.5 Pet. 13–34.
`
`Patent Owner disputes that claims 1, 7, 10, 16, 17, and 19 would have
`been anticipated by Saalfrank. Prelim. Resp. 20–33. In particular, Patent
`Owner disputes that Saalfrank describes a first plurality of carrier signals
`where “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” as required by claims 1, 10, and 19 (Ex. 1001,
`33:51–55, 34:50–53, 36:13–16, “the No Redundancy Limitation”). Prelim.
`Resp. 25–31.
`
`For the reasons discussed below, we determine that Petitioners fail to
`
`
`5 Petitioners’ heading “[GROUND 1]” references claim 1, 7–8, 10, and 15–
`17. The Petitions actually discuss with respect to anticipation claims 1, 7,
`10, 16, 17, and 19. See Pet. 20–38.
`
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`meet its burden to establish that Saalfrank discloses the No Redundancy
`Limitation.
`
`
`Overview of Saalfrank
`Saalfrank discloses particular aspects of “common-wave radio
`operation of a transmitter,” including digital audio broadcasting (“DAB”) a
`digital radio broadcasting technology by which transmitter stations in a
`particular geographic region “simultaneously emit transmission signals with
`the same modulation content on the very same transmission frequency
`and/or the same carrier frequencies.” Ex. 1008, col. 1 ¶ 4. Saalfrank
`explains that broad area coverage is accomplished by providing at least 4
`different transmission channels in a particular bandwidth B, where the
`frequency bandwidth totals 4 x B. Id. at col. 1 ¶ 7– col. 2 ¶ 1.
`Saalfrank also describes a transmission procedure referred to as
`Coded Orthogonal Frequency Division Multiplex (“COFDM”) using a
`carrier frequency across a bandwidth of 1.5 MHz, and “[w]ithin the channel
`bandwidth available here a plurality of individual carriers (e.g., 448 carrier
`frequencies equidistantly spaced over the frequency axis) is impinged with a
`4-DPSK-modulation.” Id. at col. 1 ¶ 5. Referring to Figure 1a, Saalfrank
`explains that within a region of a larger area network, “carrier frequencies
`are transmitted simultaneously with equidistant frequency distances Δf in a
`frequency range with the bandwidth B. The individual carriers are each
`modulated with one part of the digital data, with the modulation content of
`the individual carriers being identical for all transmitter stations of the
`transmission region.” Id. at col. 2 ¶ 8.
`
`
`
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`Although Saalfrank’s disclosure relates specifically to a radio
`network, the written description further explains that the transmitted data
`content is not limited to radio signals, and could include partial or complete
`information, or control data, as well as image data. Id.
`
`Petitioners’ Contention
`According to Petitioners, Saalfrank meets the No Redundancy
`
`Limitation because Saalfrank describes modulating individual carriers of a
`plurality of carriers with one part of the digital data of a radio program. Id.
`at 20–24 (citing Ex. 1015, col. 2, ¶ 9). Petitioner’s declarant Dr. Kakaes
`similarly testifies that that Saalfrank meets the No Redundancy Limitation
`based upon the same description of Saalfrank. Kakaes Decl. ¶¶ 25–26. Dr.
`Kakaes states that ‘the digital data that represents that multiple stereo radio
`programs is split into multiple “parts” and each different “part” is used to
`modulate one of the multiple carrier signals” and annotates Figure 1a of
`Saalfrank to illustrate the signals. Id. ¶ 26. Annotated Figure 1a of
`Saalfrank is reproduced below.
`
`
`
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`Annotated Figure 1a of Saalfrank illustrates carrier frequencies 1, 2, 3
`
`. . . n within the frequency band B. Each carrier has been annotated with a
`label indicating that the carrier corresponds to a 1st, 2nd, 3rd . . . mth part
`portion of the radio program.
`
`
`Patent Owner’s Contention
`Patent Owner disputes that Saalfrank describes the No Redundancy
`Limitation. Prelim. Resp. 25–31. Saalfrank uses a DAB digital
`transmission process that uses COFDM. Ex. 1015, col. 1, ¶¶ 2–3. Patent
`Owner contends that the type of DAB and COFDM described in Saalfrank
`necessarily includes substantial redundancy. See Prelim. Resp. 26–30.
`Patent Owner proffers the testimony of Dr. Kesan and several exhibits
`discussing DAB and COFDM to support this contention. Kesan Decl. ¶¶
`19–42; Ex. 2002–2006. Dr. Kesan explains that the DAB and COFDM used
`by Saalfrank would code redundant bits into the signal for error correcting
`purposes and, thus, Saalfrank does not satisfy the No Redundancy
`Limitation. See Kesan Decl. ¶¶ 19–60.
`
`
`Discussion
`“A claim is anticipated only if each and every element as set forth in
`
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987). Under principles of inherency, when a reference is
`silent about an asserted inherent characteristic, it must be clear that the
`missing descriptive matter is necessarily present in the thing described in the
`reference, and that it would be so recognized by persons of ordinary skill.
`
`
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`Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
`1991).
`
` It is Petitioners’ burden to demonstrate how Saalfrank anticipates the
`challenged claims. Petitioners rely upon Saalfrank’s statement that “[t]he
`individual carriers are each modulated with one part of the digital data” (Ex.
`1015, col. 2, ¶ 9) to meet the No Redundancy Limitation. This statement,
`however, does not explicitly describe the No Redundancy Limitation’s
`requirement that the modulation is such that the carriers represent a portion
`of the digital data substantially not represented by the others. The Petitions
`and testimony of Dr. Kakaes is conclusory in this regard and does not
`adequately explain how Saalfrank’s statement would necessarily mean that
`the carriers are modulated in such a way that they meet the No Redundancy
`Limitation. In other words, Petitioner does not adequately demonstrate that
`each of Saalfrank’s first plurality of carrier signals represent a portion of the
`information signal substantially not represented by the others of the first
`plurality of carrier signals. Dr. Kesan’s testimony and the other exhibits
`proffered by Patent Owner persuasively show that the DAB and COFDM
`transmission procedures used by Saalfrank can include redundant
`information on the carriers and that the inclusion of this redundant
`information may mean that Saalfrank’s does not meet the No Redundancy
`Limitation. 6
`
`6 In the previous related inter partes review proceedings, we determined
`that the petitioners demonstrated a reasonable likelihood that Saalfrank
`anticipated claims 1, 7, 19, 16, 17, and 19. The record in those proceedings,
`however, did not include Dr. Kesan’s testimony or the other exhibits
`showing substantial redundancy in signals transmitting using DAB and
`COFDM. Petitioners did not seek authorization to file a Reply to the
`Preliminary Response to address this new testimony and evidence.
`
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`Neither Petitioners nor Dr. Kakaes provides any sufficient explanation
`
`as to whether a person of ordinary skill in the art would consider inclusion of
`such redundant information by the DAB and COFDM transmission
`procedures to be substantial or not. Petitioners provide no discussion as to
`what amount or portion of the information signal has to be substantially not
`represented by the other signals to meet the No Redundancy Limitation.
`Petitioners proffered no proposed construction of the term substantially with
`regards to the No Redundancy Limitation.
`
`We, thus, determine that Petitioner has not met its burden of
`demonstrating that Saalfrank describes the No Redundancy Limitation
`sufficiently to establish that there is a reasonable likelihood that claims 1, 7,
`10, 16, 17, and 19 are anticipated by Saalfrank.
`
`
`B. Dependent Claims 8 and 15 and Independent Claim 19 –
`Obviousness over Saalfrank and Nakamura
`Petitioner does not rely upon Nakamura to cure the deficiency of
`Saalfrank discussed above. Accordingly, we determine that Petitioners fail
`to establish a reasonable likelihood of prevailing on their assertion that
`dependent claims 8 and 15 and claim 19 would have been obvious over
`Saalfrank and Nakamura.
`
`
`IV. MOTIONS FOR JOINDER
`Petitioners’ filed Motions for Joinder seeking to join these
`proceedings with Samsung Electronics Co., Ltd. V. Mobile
`Telecommunications Technologies, LLC, Case IPR2015-01724 (PTAB filed
`Aug. 13, 2015) (“Samsung proceeding”). Paper 5. The Samsung
`
`
`
`
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`proceedings terminated on May 3, 2016 due to settlement between the
`parties. See Samsung, Case IPR2015-01724, Paper 16. Because the
`Samsung proceeding is no longer pending, it cannot serve as a proceeding to
`which another proceeding may be joined. We, thus, deny Petitioners’
`Motions for Joinder.
`
`
`V. CONCLUSION
`Petitioners fail to establish a reasonable likelihood that any of the
`
`challenged claims are unpatentable. We, therefore, deny the Petitions.
`
`
`
`
`VI. ORDER
`
` For the reasons given, it is
`ORDERED that the Petitions are denied; and
`FURTHER ORDERED that the Motions for Joinder are denied.
`
`
`
`
`For PETITIONER IPR2016-00765:
`
`Charles Grigger
`THOMAS | HORSTEMEYER, LLP
`charles.griggers@thomashorstemeyer.com
`
`Dan Gresham
`THOMAS | HORSTEMEYER, LLP
`dan.gresham@thomashorstemeyer.com
`
`
`
`
`
`
`
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`IPR2016-00765 (Patent 5,915,210)
`IPR2016-00769 (Patent 5,915,210)
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`For PETITIONER IPR2016-00769:
`
`James M. Heintz
`Brian K. Erickson
`DLA PIPER LLP (US)
`HP-MTel-210IPR-DLA@dlapiper.com
`
`For PATENT OWNER:
`
`John R. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`
`Kelly L. Kasha
`KASHA LAW LLC
`kelly.kasha@kashalaw.com
`
`
`
`
`
`14
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`