UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`ARRIS GROUP, INC.,
`Petitioner
`
`v.
`
`
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
`
`____________
`
`
`
`Case IPR2016-00766
`Patent 5,659,891
`
`____________
`
`
`
`PATENT OWNER MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC’S PRELIMINARY RESPONSE
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Juniper Ex 1015-p. 1
`Juniper v MTel891
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`
`
`TABLE OF CONTENTS
`
`Page
`
`
`BACKGROUND ............................................................................................. 1 
`I.
`INTRODUCTION ........................................................................................... 2 
`II.
`III. PROPER CLAIM CONSTRUCTION ............................................................ 4 
`A.
`Rules Governing Claim Construction ................................................... 4 
`1.
`New Testimonial Evidence Allowed .......................................... 4 
`2.
`Phillips Standard Governs .......................................................... 4 
`i.
`Look to Claims Themselves and Then
`Specification ..................................................................... 5 
`ii.
`Can Read Specification Limitations into Claims ............. 5 
`iii. Can Rely on Extrinsic Evidence ....................................... 5 
`3.
`District Court Construction Must Be Assessed .......................... 6 
`Background on the Technology and the ‘891 Patent ............................ 7 
`1.
`Person of Ordinary Skill in the Art ............................................. 7 
`2.
`Demand for Channels Exceeds Supply ....................................... 7 
`3.
`Increased Channel Capacity with Multiple Carriers ................... 7 
`4.
`Near-far Interference ................................................................... 8 
`5.
`Symmetric Condition .................................................................. 9 
`6.
`No Near-Far Problem with Co-location .................................... 11 
`7.
`Asymmetric Condition .............................................................. 12 
`8.
`Claim Limitations and Increased Channel Capacity ................ 13 
`Construction of Independent Claim Terms ......................................... 13 
`1.
`“single mask-defined, bandlimited channel” of claims 1,
`3, and 5 ...................................................................................... 13 
`“band edge of the mask” of claims 1, 3, and 5 ......................... 14 
`i.
`Patent Owner’s Construction .......................................... 14 
`ii.
`Closest Band Edge Increases Message Capacity ........... 20 
`
`B.
`
`C.
`
`2.
`
`i
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`
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`3.
`
`V.
`
`iii. Masks Confirm Closest Band Edge ................................ 21 
`iv.
`Samsung IPR Construction ............................................. 25 
`“transmitting carriers from the same location” of claims
`1, 3, and 5 .................................................................................. 32 
`i.
`Patent Owner’s Construction .......................................... 32 
`ii.
`“Samsung IPR Construction” ......................................... 34 
`IV. REFERENCES RELIED UPON BY PETITIONER .................................... 35 
`A.
`Petrovic................................................................................................ 35 
`B.
`Raith .................................................................................................... 37 
`C.
`Alakija.................................................................................................. 38 
`EMISSION MASK GROUND 1 – CLAIMS 1-5 ARE NOT
`ANTICIPATED BY PETROVIC. ................................................................. 39 
`A.
`Petrovic does not anticipate claims 1, 3, and 5. .................................. 39 
`1.
`Petitioner’s argument ................................................................ 40 
`2.
`Patent Owner’s Argument ......................................................... 43 
`i.
`FIG. 1 of Petrovic does not disclose “operating or
`transmitting said carriers… such that the frequency
`difference between the center frequency of the
`outer most of said carriers and the band edge of the
`mask … is more than half the frequency difference
`between the center frequencies of each adjacent
`carrier,” if the “band edge” is interpreted under
`Phillips ............................................................................ 44 
`Petrovic does not disclose “transmitting said
`carriers from the same location” ..................................... 50 
`iii. Dr. Petrovic testified that his paper does not relate
`to the ’891 Patent. ........................................................... 52 
`B.
`Petrovic does not anticipate dependent claims 2 and 4. ..................... 53 
`VI. GROUND 2 – CLAIM 5 IS NOT OBVIOUS OVER PETROVIC IN
`VIEW OF RAITH AND ALAKIJA. ............................................................... 56 
`A.
`Petrovic in view of Raith and Alakija does not render claim 5
`obvious. ............................................................................................... 56 
`
`ii.
`
`ii
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`VII. CONCLUSION .............................................................................................. 59 
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`iii
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`
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`TABLE OF AUTHORITIES
`
`Page
`
`CASES 
`Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir.
`2000) ................................................................................................................... 39
`Ex parte Frye, 94 USPQ 2d 1072 (BPAI 2010) ...................................................... 58
`Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986) ................ 5
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) .............................................................. 58
`In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) ............................. 5
`In re Royka, 490 F.2d 981 (CCPA 1974) ................................................................ 56
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 58
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ..................... 39
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ................................. passim
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) ........... 6
`Power Integrations, Inc. v. Michelle K. Lee, Director, USPTO, Case 2014-
`1123 (Fed. Cir. Decided August 12, 2015) ........................................................... 6
`Vitrionics Corp. v. Conceptronic, 90 F.3d 1576 (Fed. Cir. 1996) ............................. 5
`Xerox Corp. v. 3Com Corp., 458 F.3d 1310 (Fed. Cir. 2006) ................................. 39
`OTHER AUTHORITIES 
`35 United States Code § 102 ...................................................................................... 1
`35 United States Code § 103 ............................................................................... 1, 56
`37 C.F.R. § 42.100 ..................................................................................................... 1
`37 C.F.R. § 42.107 .................................................................................................2, 4
`Manual of Patent Examining Procedure § 2111.01 ................................................... 5
`Manual of Patent Examining Procedure § 2558 ........................................................ 4
`
`
`
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`iv
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`
`
`2001.
`2002.
`
`2003.
`
`2004.
`
`2005.
`
`2006.
`
`2007.
`
`2008.
`
`2009.
`
`2010.
`
`PATENT OWNER EXHIBIT LIST
`Declaration of Dr. Jay P. Kesan.
`Application note from Silicon Labs that demonstrates the compliance
`of Si446x RFICs with the regulatory requirements of FCC Part 90 in
`the 450-470 MHz band.
`Tutorial from Electronic Design magazine on understanding modern
`digital modulation techniques.
`Tutorial from www.complextoreal.com on understanding frequency
`shift keying (FSK) and more.
`Declaration Of Hostile Expert Paul S. Min, Ph.D., Regarding The
`Constructions Of Certain Claim Limitations Of U.S. Patent Nos.
`5,659,891 And 5,809,428.
`Deposition of William Hays in MTel v. Apple Inc. (CASE NO. 2:13-
`cv-258-JRG-RSP) on Apr. 1, 2014.
`Deposition of Dr. Rade Petrovic in MTel v. Apple Inc. (CASE NO.
`2:13-cv-258-JRG-RSP) on May 1, 2014.
`Deposition of Dr. Rade Petrovic in MTel v. Leap (CASE NO. 2:13-cv-
`00885-JRG-RSP) on Apr. 3, 2015.
`Deposition of Dr. Rade Petrovic in MTel v. AT&T (CASE NO. 2:14-
`cv-00897-RSP) on Oct 22, 2015.
`Exhibit 2 of Deposition of Dr. Kesan in MTel v. Samsung (CASE NO.
`2:15-cv-00183-JRG-RSP) Sep. 4, 2015 (annotated Figure 3B
`from ’891 Patent).
`
`
`
`v
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`Juniper Ex 1015-p. 6
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`
`
`I.
`
`BACKGROUND
`
`On March 16, 2016, Petitioner ARRIS Group, Inc. (“ARRIS” or
`
`“Petitioner”) filed a Petition for Inter Partes Review under 37 C.F.R. § 42.100,
`
`requesting inter partes review of claims 1-5 of the ’891 Patent on two grounds.
`
`Petitioner asserts that claims 1-5 of the ’891 Patent are unpatentable over the
`
`following references under 35 U.S.C. §§ 102 and 103:
`
`Ground 1 - Claims 1-5 as anticipated by Petrovic; and
`
`Ground 2 - Claim 5 as obvious over Petrovic in view of Raith and Alakija.
`
`The ‘891 Patent, entitled “Multicarrier Techniques
`
`in Bandlimited
`
`Channels,” was filed on June 7, 1995 and issued on August 19, 1997. The ‘891
`
`Patent expired on June 7, 2015.
`
`The ‘891 Patent describes and claims methods and systems for multicarrier
`
`modulation using co-located transmitters to achieve higher transmission capacity
`
`for mobile paging and two-way digital communication in a manner consistent with
`
`FCC emission mask limits. Ex. 1001 at Abstract. In addition to co-location, these
`
`systems and methods describe transmitting the carriers in a way that the frequency
`
`difference (Dm) between the center frequency of the outer most carrier and the
`
`band edge of the mask defining the channel is more than the frequency difference
`
`(Dc) between adjacent carriers. Dc is half the frequency difference between the
`
`center frequencies of each adjacent carrier. See the ‘891 Patent, Ex. 1001, claims
`
`1
`
`Juniper Ex 1015-p. 7
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`1, 3, and 5. In other words, this limitation is Dm > Dc, and is described below as
`
`the asymmetric condition.
`
`II.
`
`INTRODUCTION
`
`Patent Owner, Mobile Telecommunications Technologies, LLC, submits this
`
`Preliminary Response to the Petition for Inter Partes Review of claims 1-5 of U.S.
`
`Patent No. 5,659,891 (“the ‘891 Patent”). 37 C.F.R. § 42.107.
`
`Patent Owner respectfully requests that the Board deny the Petition on every
`
`ground alleged by Petitioner for, at least, the following reasons.
`
`First, with regard to Ground 1, Dr. Rade Petrovic et al., Permutation
`
`Modulation for Advanced Radio Paging, IEEE Proceedings of Southeastcon ‘93 (7
`
`April, 1993) (Ex. 1013, “Petrovic”) does not teach, at least, (i) “operating or
`
`transmitting said carriers… such that the frequency difference between the center
`
`frequency of the outer most of said carriers and the band edge of the mask … is
`
`more than half the frequency difference between the center frequencies of each
`
`adjacent carrier;” and (ii) “operating or transmitting said carriers from the same
`
`location.” Dependent claims 2 and 4 are not anticipated by Petrovic, because
`
`Petrovic does not teach or suggest adjacent carriers that overlap with each other
`
`and adjacent subchannels that overlap with each other. Additionally, dependent
`
`claims 2 and 4 are not anticipated by Petrovic, because independent claims 1 and
`
`
`
`2
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`3, from which they depend respectively, are not anticipated by Petrovic and
`
`because of the additional features they recite.
`
`In regard to limitations (i) and (ii), the ‘891 Patent has expired requiring
`
`claim construction under district court rules. Patent Owner submits that under its
`
`“band edge of the mask” and “transmitting multiple carriers from the same
`
`location,” Petrovic cannot teach limitations (i) and (ii).
`
`Second, with regard to Ground 2, Petrovic does not teach limitations (i) and
`
`(ii) of claim 5, as described above. Therefore, Petrovic does not teach claim 5.
`
`Raith and Alakija, either alone or in combination, do not cure the defect of
`
`Petrovic with regard to limitation (i). With regard to limitation (ii), Raith and
`
`Alakija do not cure the defect of Petrovic for at least two reasons. First, Petitioner
`
`has provided no articulated reasoning with some rational underpinning to support
`
`the legal conclusion of obviousness. Second, the combination would render the
`
`purpose of Petrovic locating two transmitters at different locations inoperable.
`
`Therefore, there is no reasonable likelihood that Petitioner can prevail with
`
`regard to claims 1-5 of the ‘891 Patent.
`
`
`
`3
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`III. PROPER CLAIM CONSTRUCTION
`A. Rules Governing Claim Construction
`
`Claims 1-5 of the ‘891 Patent were the subject of IPR2015-01726 (“the
`
`Samsung IPR”). The Samsung IPR was instituted on Feb. 16, 2016 and terminated
`
`on May 3, 2016 in response to a joint request from Petitioner and Patent Owner.
`
`1.
`New Testimonial Evidence Allowed
`Since the Samsung IPR was instituted, new rules have gone into effect
`
`allowing the Patent Owner to file new testimonial evidence in its preliminary
`
`response without any limitation on the scope of that evidence. See 37 C.F.R.
`
`§42.107. The Patent Owner has provided such testimonial evidence below
`
`regarding the proper claim construction of the ‘891 Patent.
`
`2.
`Phillips Standard Governs
`The ‘891 Patent expired on June 7, 2015, so the proper claim construction is
`
`that used in district court review. The broadest reasonable interpretation (BRI)
`
`standard does not apply. In regard to the proper claim construction used in district
`
`court review, MPEP 2258 provides that “[i]n a reexamination proceeding involving
`
`claims of an expired patent, claim construction pursuant to the principle set forth
`
`by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321,
`
`1329 (Fed. Cir. 2005) (words of a claim “are generally given their plain and
`
`ordinary meaning” as understood by a POSA at the time of the invention) should
`
`
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`4
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`be applied since the expired claims are not subject to amendment. See Ex parte
`
`Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986).”
`
`i.
`Look to Claims Themselves and Then Specification
`The first step in construing claims under Phillips is to “look to the words of
`
`the claims themselves.” Vitrionics Corp. v. Conceptronic, 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996). Second, the specification must be considered when construing
`
`claim terms. Id. “[T]he specification is always highly relevant.” Id.
`
`ii.
`Can Read Specification Limitations into Claims
`Claim construction under Phillips varies from the BRI standard in at least
`
`two important ways. Claim construction under Phillips may read limitations in the
`
`specification into the claims. For example, “[t]he presumption that a term is given
`
`its plain and ordinary meaning may be rebutted by the applicant by clearly setting
`
`forth a different definition of the term in the specification. In re Morris, 127 F.3d
`
`1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) (the USPTO looks to the
`
`ordinary use of the claim terms taking into account definitions or other
`
`“enlightenment” contained in the written description). MPEP 2111.01.
`
`iii. Can Rely on Extrinsic Evidence
`Under Phillips, “it is entirely appropriate, perhaps even preferable, for a
`
`court to consult trustworthy extrinsic evidence to ensure that the claim construction
`
`it is tending to from the patent file is not inconsistent with clearly expressed,
`
`
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`5
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`plainly apposite, and widely held understandings from the pertinent technical
`
`field.” Pitney Bowes, Inc. v. HP Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999).
`
`In summary, under Phillips the first step in construing claims is to look to
`
`the words of the claims themselves. The second step is to consider the
`
`specification. Additionally, there is no prohibition on reading limitations in the
`
`specification into the claims, and to consult trustworthy extrinsic evidence.
`
`3.
`District Court Construction Must Be Assessed
`In Power Integrations, Inc. v. Michelle K. Lee, Director, USPTO, Case
`
`2014-1123 (Fed. Cir. Aug. 12, 2015), the CAFC found that the “fact that the board
`
`is not generally bound by a previous judicial interpretation of a disputed claim term
`
`does not mean, however, that it has no obligation to acknowledge that
`
`interpretation or to assess whether it is consistent with the broadest reasonable
`
`construction of the term.” See Id. at 14. This means that Board should, at least,
`
`assess the claim construction of a district court if proffered by a party.
`
`Under Power Integrations, the Board should, at least, assess the claim
`
`interpretation of a district court. This ruling is particular important in this IPR,
`
`because the Board is not being asked to assess whether a district court’s
`
`construction is consistent with the BRI standard, but whether a district court’s
`
`construction is consistent with Phillips, the same standard used in district court.
`
`
`
`6
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`
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`B.
`
`Background on the Technology and the ‘891 Patent
`1.
`Person of Ordinary Skill in the Art
`As Dr. Kesan has described, a person of ordinary skill in the art at the time
`
`of the invention (POSA) of the ’891 Patent would possess a bachelor’s degree in
`
`electrical engineering or its equivalent and about four years working in the field of
`
`wireless telecommunications networks and would possess knowledge regarding
`
`frequency, amplitude, and masks as used in telecommunications, or equivalent
`
`education and work experience. Ex. 2001 at 9.
`
`2.
`Demand for Channels Exceeds Supply
`Per Dr. Kesan, the FCC regulates the frequency ranges or channels of
`
`carriers and their maximum allowable power levels in each channel. Ex. 2001 at
`
`18. The ‘891 Patent describes that, at that time, demand for channels allocated to
`
`mobile paging exceeded supply. Id. at 19. As a result, Dr. Kesan finds that the
`
`‘891 Patent was directed to finding a solution to this problem. Id.
`
`3.
`Increased Channel Capacity with Multiple Carriers
`The ‘891 Patent lists two possible know solutions. Dr. Kesan describes
`
`these as (1) increasing the message rate of a channel and (2) increasing the
`
`message capacity of a channel. Id. at 20. Id. at 19. The ‘891 Patent further
`
`describes that a known method of (2) increasing the message capacity of a channel
`
`is to use more than one carrier in the channel. Id. at 21.
`
`
`
`7
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`4.
`Near-far Interference
`A problem with this method, however, is that “stringent protection levels”
`
`must be maintained between the multiple carriers. Ex. 2011 at 22. These stringent
`
`protection levels are additional FCC regulations called emission masks. Id. at 22-
`
`23. The ‘891 Patent describes that FCC emission masks are directed to the near-far
`
`interference problem. Id. at 24. Dr. Kesan explains the near-far interference
`
`problem in regard to the two adjacent carriers shown below in Drawing 4. Id. at 25.
`
`Carrier 1
`
`Carrier 2
`
`0
`
`‐50
`
`Power (dB)
`From Max. 
`Attenuation
`
`0
`
`1.4
`1
`Frequency (Hz)
`Drawing 4
`
`
`Dr. Kesan describes that “[n]ear-far interference occurs when a receiver is
`
`much closer (near) to, for example, Carrier 1 and much farther (far) from Carrier
`
`2,” as shown below in Drawing 5. Id. at 26.
`
`
`
`8
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`
`
`Carrier 1
`
`Carrier 2
`
`Far
`
`Near
`Receiver
`Transmitter 1
`Drawing 5
`
`Transmitter 2
`
`
`Dr. Kesan explains that, due to the inverse square law, the Receiver in
`
`Drawing 5 receives much more power from Transmitter 1 than from Transmitter 2.
`
`Id. at 27. “As a result, at the Receiver, Carrier 2 cannot be distinguished from a
`
`portion of Carrier 1.” Id.
`
`5.
`Symmetric Condition
`The ‘891 Patent explains that a traditional method of overcoming near-far
`
`interference with multiple carriers in the same channel is to place emission mask
`
`limits on the individual carriers. Ex. 2001 at 28. Dr. Kesan has shown this
`
`graphically by placing masks on the carriers of Drawing 4 as shown below. Id.
`
`Carrier 1
`
`Carrier 2
`
`Mask 1
`
`Mask 2
`
`0
`
`‐50
`
`Power (dB)
`From Max. 
`Attenuation
`
`0
`
`1.4
`1
`Frequency (Hz)
`Drawing 6
`
`9
`
`
`
`
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`The masks of Drawing 6 narrow the adjacent carriers, so the power of
`
`interfering frequencies is reduced. Id. at 29. See Dr. Kesan’s Drawing 7:
`
`Carrier 1
`
`Carrier 2
`
`Far
`
`Near
`Receiver
`Transmitter 1
`Drawing 7
`
`Transmitter 2
`
`
`Because the masks of Drawing 6 cause Carrier 1 to attenuate its signal at
`
`higher frequencies, those frequencies no longer interfere with Carrier 2 at the
`
`Receiver and the near-far interference is eliminated. Id. at 30. According to the
`
`‘891 Patent, however, this requires that “[t]he carriers are symmetrically located
`
`within the channel such that they are evenly spaced relative to each other and to the
`
`band edges of the primary mask defining the primary channel.” Ex. 1001 at 2:6-9.
`
`Dr. Kesan illustrates this “symmetric condition” in Drawing 8. Ex. 2001 at 31.
`
`Symmetric Condition Dm = Dc
`Carrier 1
`Carrier 2
`Primary
`Mask
`Dc
`
`0
`
`‐50
`
`Power (dB)
`From Max. 
`Attenuation
`
`Dm
`
`0
`
`1.4
`1
`Frequency (Hz)
`Drawing 8
`
`10
`
`
`
`
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`Dr. Kesan describes that “distance Dc is the spacing between Carrier 1 and
`
`Carrier 2. Distance Dm is the spacing between Carrier 1 and the band edge of the
`
`Primary Mask of the channel. The symmetric condition of the ‘891 Patent,
`
`therefore, occurs when Dc = Dm.” Id. at 32. Dr. Kesan finds that the 891 Patent
`
`teaches away from the symmetric condition. Id. at 33.
`
`6.
`No Near-Far Problem with Co-location
`Dr. Kesan explains that instead of mask limited subchannels within the
`
`primary channel that are subject to the symmetric condition, the ‘891 Patent’s
`
`inventive solution to the near-far problem is transmitting the multiple carriers from
`
`the same location. Ex. 2001 at 34. There is no near-far problem, because with co-
`
`location, “there are no longer near and far distances.” Id. at 37. Figure 1 of the
`
`‘891 Patent, which is shown below, “shows that two carriers are transmitted from
`
`the same location by one antenna.” Id. at 35-36.
`
`
`
`
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`11
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`
`Dr. Kesan further describes that Figure 1 also shows that two carriers are
`
`transmitting at the same time. Id. at 36. This makes sense in order to “increase the
`
`message capacity of the channel.” Otherwise, “there is no improvement in
`
`message capacity of the channel.” Id.
`
`7.
`Asymmetric Condition
`Because the ‘891 Patent uses co-location, the symmetric condition is no
`
`longer required. Ex. 2001 at 34. As result, the ‘891 Patent provides that “the
`
`frequency spacings between adjacent carriers, while symmetric to each other, can
`
`be smaller than the frequency spacings between the band edges of the mask and the
`
`nearest respective carrier.” Ex. 1001 at 4:17-20. Dr. Kesan explains that this
`
`asymmetry in carrier spacing is a new asymmetric condition. Ex. 2001 at 39. He
`
`describes this condition graphically in Drawing 9 shown below.
`
`Asymmetric Condition Dm > Dc
`Carrier 3
`Carrier 2
`Carrier 1
`0
`Primary
`Mask
`Dc
`
`Power (dB)
`From Max. 
`Attenuation
`
`‐50
`
`Dm
`
`0
`
`1.4
`1
`Frequency (Hz)
`Drawing 9
`
`
`
`
`
`12
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`Juniper Ex 1015-p. 18
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`Dr. Kesan describes that in Drawing 9 “distance Dc is the spacing between
`
`Carrier 1 and the next adjacent carrier, which is now Carrier 3. Distance Dm is the
`
`spacing between Carrier 1 and the band edge of the Primary Mask of the channel.
`
`The asymmetric condition of the ‘891 Patent, requires that Dm > Dc.” Id. at 40.
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`By comparing Drawing 8 and Drawing 9, Dr. Kesan shows that the
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`asymmetric condition allows closer spacing of adjacent carriers that the symmetric
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`condition. Id. at 41. This, in turn, allows an additional carrier to be added to the
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`channel. Id. An additional carrier “increases the message capacity of the channel,
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`which is the purpose of the ‘891 Patent.” Id.
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`8.
`Claim Limitations and Increased Channel Capacity
`Dr. Kesan analyzed independent claims 1, 3, and 5 and found they all are 1)
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`transmitting multiple carriers from the same location, and (2) and transmitting the
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`multiple carriers according to the asymmetric condition. Id. As a result, Dr. Kesan
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`finds that “the language of these claims should be considered in relation to solving
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`the problem of increasing the message capacity of the channel.” Id.
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`C. Construction of Independent Claim Terms
`1.
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`“single mask-defined, bandlimited channel” of claims
`1, 3, and 5
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`Challenged claims 1, 3, and 5 recite a “single mask-defined, bandlimited
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`channel.” Here, a “single mask-defined, bandlimited channel” means that the
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`“bandlimited channel is a single limited frequency range, and that the mask is the
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`constraint applied to define that limited frequency range.”
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`This is the construction that was adopted by the Board in its decision to
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`institute in the Samsung IPR. See IPR2015-01726 Paper 9 at 7. The Board found
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`this construction to be in accordance with the phrase’s plain meaning as
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`understood by one of ordinary skill in the art. Id. at 8. This construction is also
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`consistent with the Patent Owner’s construction in the Samsung IPR, which was a
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`“channel confined to a frequency range and power spectral density mask.”
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`2.
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`“band edge of the mask” of claims 1, 3, and 5
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`Challenged claims 1, 3, and 5 recite a “band edge of the mask.” Here, the
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`term “band edge of the mask” means “the innermost frequencies at which the mask
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`requires attenuation of the signal,” i.e. the frequency limiting edge of the mask that
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`is closest in frequency to the outer most carrier when that carrier is modulated.
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`i.
`Patent Owner’s Construction
`Patent Owner adopts the construction of the EDTX Leap Order finding that
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`“a person of ordinary skill in the art would readily conclude that the ‘band edge’
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`frequencies are the innermost frequencies at which the mask requires attenuation of
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`the signal.” Ex. 1007 at 35. This construction was confirmed in MTel v. AT&T.
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`This construction is consistent with Dr. Kesan’s determination that “the band
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`edge of the asymmetric condition is the edge of the mask that is likely to be closest
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`in frequency to the outer most carrier when that carrier is modulated.” Like the
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`Leap Order, Dr. Kesan’s review is consistent with the Phillips standard.
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`Per Dr. Kesan the term “band” of “band edge” refers to a frequency band or
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`range. Ex. 2001 at 49. He says that a POSA would “understand that the term
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`‘band edge of a mask’ means an edge of a mask that limits the frequency band.”
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`Id. A band edge is, therefore, a frequency limiting edge of the mask.
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`A claim term must be understood in terms of the entire claim. The band
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`edge described in the claims is part of the condition that the carriers have center
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`frequencies within the channel “such that the frequency difference between the
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`center frequency of the outer most of said carriers and the band edge of the mask
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`defining said channel is more than half the frequency difference between the center
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`frequencies of each adjacent carrier.” Ex. 1001 at 6:7-12. This is what Dr. Kesan
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`has described as the asymmetric condition. Ex. 2001 at 39.
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`As described above, under Phillips the second step in construing claims is to
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`consider the specification and trustworthy extrinsic evidence. Dr. Kesan considers
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`both in determining the band edge of the asymmetric condition is the edge of the
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`mask closest in frequency to the outer-most carrier. There are many different FCC
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`emission masks, and these masks can have multiple band edges. Ex. 2001 at 48,
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`50, and 51. He provides Figures 1-3 of Ex. 2002, shown below, as examples of
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`some current masks as defined by 47 C.F.R. §90.210. Ex. 2001 at 51.
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`Dr. Kesan notes that all of these masks have multiple band edges. Ex. 2001
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`at 52. A POSA would look to the purpose of the band edge in the asymmetric
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`condition to determine which band edge to use. Id. at 53. Since the band edge is
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`used in the calculation of the distance, Dm, as shown in Drawing 9, he determines
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`that its purpose is linked to the purpose of the distance Dm. Id. at 54.
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`To determine the purpose of Dm, Dr. Kesan looks to the specification. Id. at
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`54. From the specification he concludes that the purpose of Dm “is to prevent the
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`outer most carriers from exceeding the mask limits when they are modulated.” Ex.
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`2001 at 56. He draws this conclusion by first determining that frequency shift
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`keying (FSK) is the type of modulation used in the ‘891 Patent. Id. at 57. FSK is
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`one of the three basic methods to modulate a carrier to transmit digital as shown
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`below in Figure 1 of Ex. 2003.
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`Juniper Ex 1015-p. 22
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`Figure 1 of Exhibit 2003
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`
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`Dr. Kesan describes that when a carrier is modulated using FSK, it causes
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`the carrier to get wider or spread out in
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`terms of frequency. Id. at 62. This is
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`called the frequency deviation, ∆f. Id.
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`This is shown, for example, in Figure 9 of
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`Ex. 2004, which is shown here:
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`Dr. Kesan explains that in Figure 9 of Ex. 2004, a carrier with a center
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`frequency of 4 is now spread out between frequencies 2 and 6 using FSK
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`modulation with a frequency deviation, ∆f, of 2. Ex. 2001 at 63.
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`Juniper Ex 1015-p. 23
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`Dr. Kesan then logically outlines how a POSA would determine the purpose
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`of Dm of the asymmetric condition from the modulation technique. FSK
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`modulation causes a modulated carrier to get wider in frequency. Id. at 64. Dm of
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`the asymmetric condition specifies a buffer frequency difference between the band
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`edge of a mask and the carrier. Id. Therefore, “a POSA would conclude that the
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`purpose of the frequency distance, Dm, is to prevent the outer most carriers from
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`exceeding the mask limits when spread out in frequency due to modulation.” Id.
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`Dr. Kesan finds confirmation of this purpose of Dm in the specification of
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`the ‘891 Patent (Id. at 65.) which recites in reference to the modulated carriers of
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`Figure 5A that “the carriers remained within the FCC mask while providing an
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`acceptable error-rate versus signal strength performance.” Ex. 1001 at 4:61-63.
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`From the purpose of Dm, Dr. Kesan determines the band edge of the mask.
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`Ex. 2001 at 67. He says that “[s]ince the purpose of the frequency distance, Dm, is
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`to ensure that the modulated carrier does not exceed a mask limit, a POSA would
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`conclude that the band edge of the asymmetric condition is the edge of the mask
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`that is likely to be closest in frequency to the outer most carrier when that carrier is
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`modulated.” Id. He also says that more specifically for FSK modulation the band
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`edge can be viewed as “the first limit of the mask to be exceeded as the frequency
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`deviation of the carrier is increased.” Id. at 67.
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`Juniper Ex 1015-p. 24
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`Dr. Kesan’s construction is consistent with the Leap Order where the EDTX
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`found that “a person of ordinary skill in the art would readily conclude that the
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`‘band edge’ frequencies are the innermost frequencies at which the mask requires
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`attenuation of the signal.” Ex. 1007 at 35.
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`The court provided the reproduction of FIG. 3B of the ‘891 Patent, shown
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`below, that identified the relevant band edges frequencies with arrows. In other
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`words, the court identified the inner most points of the diagonal edges of
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`Annotation 2 as the band edges. Note that the court is not necessarily referring to a
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`single point, but