Inter Partes Review
`United States Patent No. 5,659,891
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`JUNIPER NETWORKS, INC., BROCADE COMMUNICATIONS SYS., INC.,
`RUCKUS WIRELESS, INC.,
`Petitioners,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner.
`
`
`
`U.S. Patent No. 5,659,891
`Issue Date: August 19, 1997
`Title: MULTICARRIER TECHNIQUES IN BANDLIMITED CHANNEL
`
`_____________________
`
`Inter Partes Review No.: Unassigned
`_____________________
`
`DECLARATION OF DR. TIM A. WILLIAMS IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 5,659,891
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`
`
`
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`
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`TABLE OF CONTENTS
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`Page
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`2. 
`
`3. 
`
`VI. 
`
`B. 
`
`INTRODUCTION ............................................................................................................ 1 
`I. 
`BACKGROUND AND QUALIFICATIONS .................................................................. 1 
`II. 
`LEVEL OF ORDINARY SKILL IN THE ART .............................................................. 4 
`III. 
`IV.  MATERIALS RELIED UPON......................................................................................... 6 
`ANALYSIS OF THE ’891 PATENT ............................................................................... 7 
`V. 
`A. 
`OVERVIEW OF THE ’891 PATENT .................................................................. 7 
`B. 
`OVERVIEW OF THE ’891 PATENT PROSECUTION HISTORY ................. 10 
`C. 
`CLAIM CONSTRUCTION OF THE ’891 PATENT CLAIMS ........................ 11 
`THE CHALLENGED CLAIMS ARE INVALID .......................................................... 16 
`A. 
`LEGAL STANDARDS ...................................................................................... 16 
`1. 
`ANTICIPATION .................................................................................... 16 
`2. 
`OBVIOUSNESS ..................................................................................... 17 
`CLAIMS 1-5 ARE OBVIOUS ........................................................................... 21 
`CLAIMS 1-4: THE MTEL PETITION RENDERS CLAIMS 1-4
`1. 
`OBVIOUS (GROUND 1) ....................................................................... 21 
`CLAIM 5: THE MTEL PETITION IN VIEW OF THE ’960
`PUBLICATION RENDERS CLAIM 5 OBVIOUS(GROUND 2) ........ 47 
`CLAIM 5: PETROVIC IN VIEW OF THE MTEL PETITION
`RENDERS OBVIOUS CLAIM 5 (GROUND 3) ................................... 72 
`SECONDARY CONSIDERATOINS ............................................................................ 86 
`VII. 
`VIII.  CONCLUSION ............................................................................................................... 86 
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`Inter Partes Review
`United States Patent No. 5,659,891
`I, Tim A Williams, hereby declare under penalty of perjury under the laws of
`
`the United States of America:
`
`I.
`
`INTRODUCTION
` My name is Tim A. Williams. I understand that I am submitting a
`1.
`
`declaration offering technical opinions in connection with the above-referenced In-
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`ter Partes Review proceeding pending in the United States Patent and Trademark
`
`Office for U.S. Patent No. 5,659,891 (the “’891 Patent”) and prior art references
`
`relating to its subject matter. My current curriculum vitae is attached as Appendix
`
`A and some highlights follow.
`
`
`2.
`
`I have personal knowledge of the facts and opinions set forth in this
`
`declaration, and believe them to be true. If called upon to do so, I would testify
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`competently thereto. I have been warned that willful false statements and the like
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`are punishable by fine or imprisonment, or both.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`3.
`I have over 40 years of professional experience in wireless communi-
`
`cations and telecommunications technology. I earned a Bachelor of Science (B.S.)
`
`in Electrical Engineering from Michigan Technological University in 1976. I sub-
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`sequently earned a Master of Science (M.S.) in 1982 and Doctor of Philosophy
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`(Ph.D.) 1985 in Electrical Engineering from the University of Texas at Austin. My
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`Ph.D. dissertation was titled “Digital Signal Processing Techniques for Acoustic
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`Inter Partes Review
`United States Patent No. 5,659,891
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`Log Data.”
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`
`4.
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`Between 1976 and 1991, I worked at Motorola, Inc. as an engineer,
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`and later senior engineer, project leader and business manager. Between 1976 and
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`1979, I was an engineer on the team that built the first commercial digitally en-
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`crypted two-way FM land mobile radio system. Between 1979 and 1991, I was a
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`senior engineer on teams responsible for product development of chipsets for cellu-
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`lar communications including: GSM voice codec and channel model; TDMA voice
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`codec and channel modem; CDMA voice codec and channel modem; and Japanese
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`digital cellular voice codec and channel modem.
`
`
`5.
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`In 1991, I cofounded Wireless Access, Inc., a startup company focus-
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`ing on the Narrow Band PCS equipment market, which developed over the air pro-
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`tocols, subscriber equipment and ICs to deploy two-way paging services. In 1999,
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`I served as the interim chief executive officer for Atheros Communications, a
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`company that built ICs for wireless LAN products including 802.11 based LANs.
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`Between 2004 and 2006, I founded and served as the chief executive officer for
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`SiBEAM Inc., a fabless semiconductor company developing high-speed 60 GHz
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`wireless LAN networking ICs.
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`6.
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`I am a named inventor on twenty-six patents. These are listed in my
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`attached CV.
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`7.
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`In preparing this declaration, I was asked to review and analyze a
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`Inter Partes Review
`United States Patent No. 5,659,891
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`
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`number of documents. Specifically, I have reviewed and am familiar with the con-
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`tent of the ‘891 Patent and its prosecution history. In addition, I have considered
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`the various documents referenced in my declaration as well as additional back-
`
`ground materials, including the three prior art references: (1) Mobile Telecommu-
`
`nications Technologies, LLC (“MTel”), Petition for Rulemaking to Allocate 150
`
`kHz in the 930-931 MHz Band and to Establish Rules and Policies for a New Na-
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`tionwide Wireless Network (NWN) Service, Federal Trade Commission (July 14,
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`1992) (“MTel Petition”); (2) WO 94/11960, titled "Mobile Two-Way Communica-
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`tion System" (May 26, 1994) (’’960 Publication”); and (3) Dr. Rade Petrovic, et.
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`al., Permutation Modulation for Advanced Radio Paging, IEEE Proceedings of
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`Southeastcon ’93 (April 7, 1993) (“Petrovic”). I have also reviewed the claim con-
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`struction orders from Mobile Telecommunications Technologies, LLC v. T-Mobile
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`USA, Inc., et al., Case No. 2:13-cv-00886-JRG-RSP (E.D. Tex.); Mobile Telecom-
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`munications Technologies, LLC v. Sprint Nextel Corp. et al., Case No. 2:12-cv-
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`00832-JRG-RSP (E.D. Tex.); Mobile Telecommunications Technologies, LLC v.
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`Leap Wireless International, Inc., et al., Case No. 2:13-cv-00885-JRG-RSP (E.D.
`
`Tex.); and Mobile Telecommunications Technologies, LLC v. Clearwire Corp., et
`
`al., Case No. 2:13-cv-00308-JRG-RSP (E.D. Tex.). I have also reviewed the insti-
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`tution decisions issued by the Patent Trial and Appeal Board (“Board”) instituting
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`Inter Partes Review of the ‘891 Patent in IPR2014-01035 (“Apple IPR”) on Janu-
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`Inter Partes Review
`United States Patent No. 5,659,891
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`ary 22, 2015, IPR2015-00018 (“T-Mobile IPR”) on April 8, 2015, IPR2015-01726
`
`(“Samsung IPR”) on February 16, 2016, and IPR2016-00766 (“Arris IPR”) and
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`IPR2016-00768 (“Aruba IPR”), both instituted in the same decision on September
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`21, 2016.
`
`
`8.
`
`I have no financial interest in either party or in the outcome of this
`
`proceeding. I am being compensated for my work as an expert on an hourly basis.
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`My compensation is not dependent on the outcome of these proceedings or the
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`content of my opinions.
`
` My findings, as explained below, are based on my study, experience,
`9.
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`and background in the fields, discussed above, informed by my education in elec-
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`trical engineering, and my experience in the design and analysis of fixed and mo-
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`bile communications systems.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`10.
`I understand that the factors considered in determining the ordinary
`
`level of skill in a field of art include the level of education and experience of per-
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`sons working in the field; the types of problems encountered in the field; and the
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`sophistication of the technology at the time of the purported invention, which I un-
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`derstand is asserted to be June 7, 1995. I understand that a person of ordinary skill
`
`in the art (“POSA”) is not a specific real individual, but rather is a hypothetical in-
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`dividual having the qualities reflected by the factors above. I understand that a
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`Inter Partes Review
`United States Patent No. 5,659,891
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`POSA would also have knowledge from the teachings of the prior art, including
`
`the art cited below.
`
`
`11.
`
`In my opinion, on or before June 7, 1995, a POSA relating to the
`
`technology of the ’891 patent would have been familiar with wireless communica-
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`tions networks by way of experience and schooling. That person would have a
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`working knowledge of the protocols and architecture of a wireless communications
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`network, and would have been aware that there are specifications and regulations
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`governing transmission of communications on wireless communication networks.
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`The experience and education levels may vary between persons of ordinary skill,
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`with some persons having a Bachelor’s degree in electrical engineering and four
`
`years of experience, and others holding a Master’s degree in electrical engineering,
`
`but having only one to two years of experience..
`
` My opinions are based on my educational background, my commer-
`12.
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`cial experience in the field of art, the technical training required to reduce to prac-
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`tice the system described in the ’891 patent, the relevant prior art, my reading of
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`the ’891 patent and technical literature, and my experience consulting in many cas-
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`es involving related technology.
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`13.
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`I understand that a POSA is presumed to have knowledge of all rele-
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`Inter Partes Review
`United States Patent No. 5,659,891
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`
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`vant prior art. Therefore, a POSA would have been familiar with each of the refer-
`
`ences cited herein and the full range of teachings they contain
`
` Well before June 7, 1995, my level of skill in the art was at least that
`14.
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`of a POSA, as discussed above. I am qualified to provide opinions concerning
`
`what a POSA would have known and understood at that time, and my analysis and
`
`conclusions herein are from the perspective of a POSA as of June 7, 1995.
`
`IV. MATERIALS RELIED UPON
`
`15.
`In reaching the conclusions described in this declaration, I have relied
`
`on the documents and materials cited herein as well as those identified in Appendix
`
`B attached to this declaration. These materials comprise patents, file histories, and
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`other prior art documents. Each of these materials is a type of document that ex-
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`perts in my field would reasonably rely upon when forming their opinions.
`
` My opinions are also based upon my education, training, research,
`16.
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`knowledge, and personal and professional experience.
`
`V. ANALYSIS OF THE ’891 PATENT
`A. Overview of the ’891 Patent
` The ’891 Patent is generally directed to multicarrier modulation tech-
`17.
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`niques for operating more than one carrier in a single mask-defined, bandlimited
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`channel. Ex. 1001, 1:5-8. The ’891 Patent describes an existing problem with
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`mobile paging services. Specifically, that the demand for such services was ex-
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`Inter Partes Review
`United States Patent No. 5,659,891
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`ceeding the capacity of the available channels. Id. 1:11-25.
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` The ’891 Patent describes two known avenues to address this capacity
`18.
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`issue: (1) increase the data rate for a given channel, or (2) increase the transmission
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`capacity of the channel. Id. 1:25-47. The ’891 Patent is directed at increasing the
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`transmission capacity of a channel using multicarrier modulation. However, mul-
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`ticarrier modulation is susceptible to interference, particularly due to the “near-far”
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`problem. Id. 1:47-56. The ’891 Patent suggests co-location of transmitters as a
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`known solution to avoid the near-far problem. Id. 1:54-56.
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` The ’891 Patent states that traditionally “carriers are symmetrically
`19.
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`located within the channel such that they are evenly spaced relative to each other
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`and to the band edges of the primary mask defining the primary channel.” Id. 2:7-
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`9. “Although such symmetry achieves maximum inter-carrier spacing and reduces
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`the opportunity for interference among adjacent carriers, it often necessitates the
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`need for sophisticated receiver and transmitter schemes.” Id. 2:9-13. The ’891 Pa-
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`tent purports to propose a way to increase throughput by positioning the carrier
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`frequencies asymmetrically in the bandlimited channel. Id. 2:54-59. The ’891 Pa-
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`tent describes that the frequency difference between the center frequency of the
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`outermost carrier and the band edge of the mask is more than half the frequency
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`difference between the center frequencies of each adjacent carrier. Id., 2:26-36.
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` The ’891 Patent also discloses two embodiments for a “co-located 20.
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`Inter Partes Review
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`multicarrier transmitter system” that may be used with the invention:
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`Id., Figs. 1-2; see also id., 3:4-7 (“FIG. 1 is a block diagram of a co-located multi-
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`carrier transmitter system in a linear amplifier configuration for using the present
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`invention”), 3:8-10 (“FIG. 2 is a block diagram of a co-located multicarrier trans-
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`mitter system in a composite transmitter configuration for using the present inven-
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`Inter Partes Review
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`tion”).
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` Both embodiments modulate individual paging carriers with data and
`21.
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`sum those modulated carriers into a composite signal. Id., 3:39-4:6. The only dif-
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`ference is that the embodiment of FIG. 1 amplifies the modulated carriers after
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`summing them, whereas the embodiment of FIG. 2 amplifies the modulated carri-
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`ers before summing them. Id.
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`B. Overview of the ’891 Patent Prosecution History
` The ’891 Patent issued on August 19, 1997 from U.S. Patent Applica-
`22.
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`tion No. 08/480,718, which was filed on June 7, 1995 with original claims 1-8, of
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`which claims 1, 3, and 5 were independent. See Ex. 1002, 21-22.
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`23.
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`In the first Office Action, the Examiner allowed claims 1 and 2, re-
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`jected claims 3 and 4 solely under 35 U.S.C. § 112, rejected claims 5-7 based on
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`U.S. Patent No. 3,488,445 and objected to claim 8 as being allowable if rewritten
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`in independent format. In particular, the Office Action noted:
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`As to claims 1, 3 and 8, the frequency difference between the center
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`frequency of the outer most paging carriers and the band edge of the
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`mask is greater than half the frequency difference between the center
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`frequencies of each adjacent paging carrier, is not taught or suggested
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`in the prior art of record.
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`Id., 67. The Applicant amended claim 3 to overcome the § 112 rejection,
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`Inter Partes Review
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`rewrote claim 8 in independent form to include the features of independent
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`claim 5, and eventually cancelled rejected claims 5-7. Id. at 100-101.
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` None of the prior art references forming the basis for the grounds of
`24.
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`rejection discussed below were disclosed to the Examiner during the prosecution of
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`the ’891 Patent.
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`C. Claim Construction of the ’891 Patent Claims
`
`I understand from counsel’s instructions, that because the ’891 Patent
`25.
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`is expired, the Board’s claim construction analysis is similar to that of a district
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`court, and that the claims should be given “their ordinary and customary meaning”
`
`as understood by a person of ordinary skill at the time of the claimed invention. I
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`also understand that the Board may rely on MTel’s implicit or explicit statements
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`regarding the meaning of the claim terms at issue.
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`1.
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`“the band edge of the mask” (Claims 1, 3, 5)
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`26.
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`
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`Independent Claims 1, 3 and 5 include the limitation: “the frequency
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`difference between the center frequency of the outer most of said [carri-
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`ers/corresponding subchannels] and the band edge of the mask defining said chan-
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`nel is more than half the frequency difference between the center frequencies of
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`each adjacent carrier.”
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`27.
`
`In prior IPR proceedings, the Board has rejected (correctly, in my
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`opinion) MTel’s assertion that “the band edge of the mask” means “the innermost
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`frequencies at which the mask requires attenuation of the signal” in its Institution
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`Decisions. See IPR2015-01726, Paper 9 at 8; IPR2016-00766, Paper 14 at 8 ;
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`IPR2016-00768, Paper 13 at 8. Instead, the Board has correctly found that such a
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`limitation does not exist in the claims and the term should instead be construed for
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`purposes of IPR as: “a band edge of the single mask-defined, bandlimited chan-
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`nel.” See 01726, Paper 9 at 14; IPR2016-0766, Paper 14 at 9; IPR2016-00768, Pa-
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`per 13 at 9.
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`28.
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`
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`I have applied the Board’s prior construction in my analyses here.
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`Given that the Board has yet to make a final determination on this claim construc-
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`tion issue, however, I have also analyzed the prior art under MTel’s prior proposed
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`construction. As I explain below—and unlike with the pending IPRs—the con-
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`struction of this term has no impact on the proposed grounds in the Petition be-
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`cause each of them clearly discloses or renders obvious “the band edge of the
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`mask” limitation under the construction adopted by the Board in the prior IPRs, as
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`well as under the narrower construction MTel previously proposed.
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` To the extent MTel again attempts advance a construction of “the
`29.
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`band edge of the mask” that limits the term to the innermost frequency at which
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`there must be attenuation, this construction is contrary to how a POSA would un-
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`derstand the term and should be rejected. “The band edge of the mask” is not a
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`Inter Partes Review
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`term used in the art, and the specification of the ’891 Patent does not ever refer to
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`the innermost frequency of a mask as “the band edge.” To the contrary, the ’891
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`Patent states that Figure 4 depicts “an exemplary FCC emissions mask” in which a
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`signal is typically to be “attenuated at least 70 dB at the band edge.”
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`
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`Ex. 1001, Fig. 4; see also id., 1:59-61 (“FCC masks typically require the power
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`spectral density of a signal to be attenuated at least 70 dB at the band edge”), 3:15-
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`18 (“FIG. 4 is a graph depicting an exemplary FCC emissions mask that requires
`
`the power spectral density to be attenuated at least 70 dB within 10 kHz from cen-
`
`ter frequency.”). Put another way, to the extent the ’891 Patent refers to “the band
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`edge of the mask,” it refers to point where the signal is attenuated to 70 dB (i.e., +/-
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`10 kHz), not the innermost frequency at which there is attenuation (i.e., +/- 5 kHz).
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`Inter Partes Review
`United States Patent No. 5,659,891
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`1. “co-locating said plurality of transmitters” (Claim 5)
`
` Claim 5 includes the limitation “co-locating said plurality of transmit-
`30.
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`ters.” Ex. 1001, 6:34. It is my opinion that this term should be accorded its plain
`
`and ordinary meaning, which is co-locating two or more transmitters, including
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`e.g., co-located sub-transmitters such as the ones depicted in Figures 1 and 2 of the
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`’891 Patent.
`
` This construction is supported by the specification, which describes
`31.
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`the systems of Figures 1 and 2 as “co-located multicarrier transmitter system[s].”
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`Id., 3:4-9; see also id., 3:4-7 (“FIG. 1 is a block diagram of a co-located multicarri-
`
`er transmitter system in a linear amplifier configuration for using the present in-
`
`vention”), 3:8-10 (“FIG. 2 is a block diagram of a co-located multicarrier transmit-
`
`ter system in a composite transmitter configuration for using the present inven-
`
`tion”). The only difference between the Figure 1 system and the Figure 2 system is
`
`that the embodiment of Figure 1 amplifies the modulated carriers after summing
`
`them, whereas the embodiment of Figure 2 amplifies the modulated carriers before
`
`summing them.
`
` A POSA would have understood Figures 1 and 2 to illustrate two co-
`32.
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`located transmitters or subtransmitters transmitting from the same source. For ex-
`
`ample, a POSA would have recognized that Figures 1 and 2 illustrate two co-
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`located subtransmitters that each includes its own modulator connected to a data
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`source, power amplifier, and antenna. I have reproduced as Petitioners’ Illustration
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`Inter Partes Review
`United States Patent No. 5,659,891
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`1 Figures 1 and 2 of the ’891 Patent with annotations to identify the co-located
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`subtransmitters:
`
`Petitioners’ Illustration 1
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`
`
` The claim language also supports my construction. For example,
`33.
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`claim 5 recites “co-locating said plurality of transmitters . . . such that said plurali-
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`ty of carriers can be emanated from the same transmission source.” A POSA
`
`would understand that the “same transmission source” refers to a common antenna,
`
`thereby further confirming that Figures 1 and 2 represent a co-located transmitter
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`system and that this term encompasses two or more transmitters or subtransmitters
`
`connected to a common antenna.
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` Thus, a POSA would understand that “co-locating said plurality of 34.
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`Inter Partes Review
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`transmitters” as used in claim 5 of the ’891 patent should be given its plain and or-
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`dinary meaning, which is co-locating two or more transmitters, including, e.g., sub-
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`transmitters such as the ones depicted in Figures 1 and 2 of the ’891 patent.
`
`VI. THE CHALLENGED CLAIMS ARE INVALID
`A. Legal Standards
`1.
`Anticipation
`I understand that the following standards govern the determination of
`
`
`35.
`
`whether a patent claim is "anticipated" by the prior art. I have applied these stand-
`
`ards in my evaluation of whether the '891 patent claims are anticipated.
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`36.
`
`I understand that a patent claim is anticipated (or lacks "novelty") if
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`what is claimed is not new. Anticipation occurs if, within a single prior art refer-
`
`ence, each and every limitation or requirement of the patent claim is disclosed, ei-
`
`ther explicitly or inherently. I understand that a claim limitation that is not express-
`
`ly found in a prior art reference is inherently disclosed where it would have been
`
`necessarily present in the prior art device or method. I am further informed that
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`material not explicitly contained in the single prior art reference may still be con-
`
`sidered for purposes of anticipation if that material is incorporated by reference in-
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`to the prior art reference.
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`37.
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`I understand that it is acceptable to examine evidence outside the prior
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`art reference (extrinsic evidence) in determining whether a feature, while not ex-
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`pressly discussed in the reference, is necessarily present within that reference.
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`2. Obviousness
`I have been advised that a claim may be invalid under 35 U.S.C.
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`38.
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`§ 103(a) if the subject matter described by the claim as a whole would have been
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`obvious to a hypothetical person of ordinary skill in the art in view of a prior art
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`reference or in view of a combination of references at the time the claimed inven-
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`tion was made. Therefore, I understand that obviousness is determined from the
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`perspective of a hypothetical POSA and that the asserted claims of the patent
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`should be read from the point of view of such a person at the time the claimed in-
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`vention was made. I further understand that a hypothetical POSA is assumed to
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`know and to have all relevant prior art in the field of endeavor covered by the pa-
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`tent in suit.
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`39.
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`I have also been advised that an analysis of whether a claimed inven-
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`tion would have been obvious should be considered in light of the scope and con-
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`tent of the prior art, the differences (if any) between the prior art and the claimed
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`invention, and the level of ordinary skill in the pertinent art involved. I understand
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`as well that a prior art reference should be viewed as a whole.
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`40.
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`I have also been advised that in considering whether an invention for a
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`Inter Partes Review
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`claimed combination would have been obvious, I may assess whether there are ap-
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`parent reasons to combine known elements in the prior art in the manner claimed
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`in view of interrelated teachings of multiple prior art references, the effects of de-
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`mands known to the design community or present in the market place, and/or the
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`background knowledge possessed by a person having ordinary skill in the art. I
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`understand that other principles may be relied on in evaluating whether a claimed
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`invention would have been obvious, and that these principles include the follow-
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`ing:
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` A combination of familiar elements according to known methods is likely to
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`be obvious when it does no more than yield predictable results;
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` When a device or technology is available in one field of endeavor, design
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`incentives and other market forces can prompt variations of it, either in the
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`same field or in a different one, so that if a person of ordinary skill can im-
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`plement a predictable variation, the variation is likely obvious;
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` If a technique has been used to improve one device, and a person of ordinary
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`skill in the art would recognize that it would improve similar devices in the
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`same way, using the technique is obvious unless its actual application is be-
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`yond his or her skill;
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`Inter Partes Review
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` An explicit or implicit teaching, suggestion, or motivation to combine two
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`prior art references to form the claimed combination may demonstrate obvi-
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`ousness, but proof of obviousness does not depend on or require showing a
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`teaching, suggestion, or motivation to combine;
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` Market demand, rather than scientific literature, can drive design trends and
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`may show obviousness;
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` In determining whether the subject matter of a patent claim would have been
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`obvious, neither the particular motivation nor the avowed purpose of the
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`named inventor controls;
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` One of the ways in which a patent’s subject can be proved obvious is by not-
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`ing that there existed at the time of invention a known problem for which
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`there was an obvious solution encompassed by the patent’s claims;
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` Any need or problem known in the field of endeavor at the time of invention
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`and addressed by the patent can provide a reason for combining the elements
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`in the manner claimed;
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` “Common sense” teaches that familiar items may have obvious uses beyond
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`their primary purposes, and in many cases a person of ordinary skill will be
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`able to fit the teachings of multiple patents together like pieces of a puzzle;
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`
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` A person of ordinary skill in the art is also a person of ordinary creativity,
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`and is not an automaton;
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`United States Patent No. 5,659,891
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` A patent claim can be proved obvious by showing that the claimed combina-
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`tion of elements was “obvious to try,” particularly when there is a design
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`need or market pressure to solve a problem and there are a finite number of
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`identified, predictable solutions such that a person of ordinary skill in the art
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`would have had good reason to pursue the known options within his or her
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`technical grasp; and
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` One should be cautious of using hindsight in evaluating whether a claimed
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`invention would have been obvious.
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`41.
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`I further understand that, in making a determination as to whether or
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`not the claimed invention would have been obvious to a person of ordinary skill,
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`the Board may consider certain objective factors if they are present, such as: com-
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`mercial success of products practicing the claimed invention; long-felt but un-
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`solved need; teaching away; unexpected results; copying; and praise by others in
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`the field. These factors are generally referred to as “secondary considerations” or
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`“objective indicia” of nonobviousness. I understand, however, that for such objec-
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`tive evidence to be relevant to the obviousness of a claim, there must be a causal
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`relationship (called a “nexus”) between the claim and the evidence and that this
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`nexus must be based on a novel element of the claim rather than something in the
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`prior art. I also understand that even when they are present, secondary considera-
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`tions may be unable to overcome primary evidence of obviousness (e.g., motiva-
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`United States Patent No. 5,659,891
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`tion to combine with predictable results) that is sufficiently strong.
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`42.
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`I have been asked to consider the validity of the challenged claims. I
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`understand that for inter partes reviews, invalidity must be shown under a prepon-
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`derance of the evidence standard.
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`B. Claims 1-5 Are Obvious
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`43.
`In my expert opinion, for the reasons detailed herein, a POSA would
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`recognize that each and every limitation of claims 1-5 of the ’891 patent, is taught
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`by the prior art, and that the claims are obvious under 35 U.S.C. § 103. Specifical-
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`ly, it is my opinion that of claims 1-5 are rendered obvious at least by the teachings
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`of the MTel Petition, alone or in combination with the ’960 Publication, and/or Pe-
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`trovic.
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`1.
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`Claims 1-4: The MTEL Petition Renders Claims 1-4 Obvi-
`ous (Ground 1)
` The MTel Petition was submitted to the FCC on November 12, 1991
`44.
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`and subsequently published by the FCC by July 14, 1992. Ex. 1005, 1. MTel did
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`not disclose the MTel Petition to the PTO during prosecution, and it thus was not
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`considered by the Examiner.
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` The MTel Petition “urges the [FCC] to adopt rules and policies
`45.
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`providing for the licensing of carriers to operate in a new Nationwide Wireless
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`Network (“NWN”) Service.” Ex. 1005, iv. The MTel Petition seeks the creation
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`Inter Partes Review
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`of three 50kHz channels in the 930-931 MHz band for its NWN service. Id. It fur-
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`ther discloses that the NWN service will provide a “high speed, spectrally efficient
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`enhanced multitone modulation technique” that is “particularly appropriate for
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`simulcast systems.” Id., iv, 8, 14. The MTel Petition also discloses that the NWN
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`system is to be employed for use with “pagers” and other “portable computers.”
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`Id., 5, 8, 13 n.11; see also id., Fig. A5 (“subscriber’s pager”).
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`1. Claim 1
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`a. A method of operating a plurality of paging carriers in a
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`single mask-defined, bandlimited channel
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` To the extent the preamble is limiting, the MTel Petition discloses it.
`46.
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`The MTel Petition teaches a paging system. For example, it discloses that its
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`NWN Service may be used with a range of services, including “pagers.” Ex. 1005,
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`5 (“demand from . . . pager units even higher”), 13 n.11 (“NWN will accommodate
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`a substantial number of