Patent No. 5,659,891
`Petition For Inter Partes Review
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`Juniper Networks, Inc., Brocade Communications Systems, Inc., and
`Ruckus Wireless, Inc.
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner.
`
`
`
`U.S. Patent No. 5,659,891
`Issue Date: August 19, 1997
`Title: Multicarrier Techniques In Bandlimited Channels
`_____________________
`
`Inter Partes Review No.: Unassigned
`_____________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 5,659,891
`UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.80, 42.100-.107
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
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`Page
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`I. 
`
`INTRODUCTION ........................................................................................ 1 
`
`II.  MANDATORY NOTICES UNDER 37 C.F.R. §42.8 ................................. 1 
`
`A. 
`
`B. 
`
`C. 
`
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)). ................................. 1 
`
`Related Matters (37 C.F.R. § 42.8(b)(2)). .......................................... 2 
`
`Lead/Back-up Counsel (37 C.F.R. § 42.8(b)(3)) & Notice of
`Service Information (37 C.F.R. § 42.8(b)(4)): ................................... 2 
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`III. 
`
`Power of Attorney (37 C.F.R. § 42.10(b)) ................................................... 4 
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`IV.  Payment of Fees (37 C.F.R. § 42.103) ......................................................... 5 
`
`V. 
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104(a) .................... 5 
`
`A. 
`
`B. 
`
`37 C.F.R. § 42.104(A) Grounds for Standing .................................... 5 
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`37 C.F.R. § 42.104(B) Statement and Relief Requested .................... 5 
`
`VI.  SUMMARY OF THE ’891 PATENT AND FILE HISTORY .................... 6 
`
`A. 
`
`B. 
`
`’891 Patent .......................................................................................... 6 
`
`Prosecution History ............................................................................ 9 
`
`VII.  CLAIM CONSTRUCTION ....................................................................... 10 
`
`1. 
`
`2. 
`
`“the band edge of the mask” (Claims 1, 3, 5) ........................ 11 
`
`“co-locating said plurality of transmitters” (Claim 5) ........... 13 
`
`VIII.  PRIORITY DATE ...................................................................................... 17 
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`IX.  PERSON OF SKILL IN THE ART (“POSA”) .......................................... 17 
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`X. 
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`XI. 
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`PROCEDURAL BACKGROUND ............................................................ 17 
`
`IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE
`UNPATENTABLE ..................................................................................... 20 
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`Page
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`A.  Ground 1: Claims 1-4 Are Obvious Over The MTel Petition ......... 20 
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`1. 
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`2. 
`
`3. 
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`4. 
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`Claim 1 ................................................................................... 21 
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`Claim 2 ................................................................................... 36 
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`Claim 3 ................................................................................... 38 
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`Claim 4 ................................................................................... 47 
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`B. 
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`Ground 2: The MTel Petition In View Of The ’960 Publication
`Renders Claim 5 Obvious ................................................................ 47 
`
`1. 
`
`2. 
`
`3. 
`
`The ’960 Publication .............................................................. 47 
`
`The Motivation to Combine the ’960 Publication with the MTel
`Petition ................................................................................... 55 
`
`Claim 5 ................................................................................... 57 
`
`C. 
`
`Ground 3: Petrovic In View Of The MTel Petition Renders
`Obvious Claim 5 ............................................................................... 71 
`
`1. 
`
`Claim 5 ................................................................................... 74 
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`XII.  CONCLUSION ........................................................................................... 85 
`
`CERTIFICATION OF SERVICE ON PATENT OWNER .................................. 87 
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
`
`Petitioners’ Exhibit List
`
`Exhibit #
`1001
`1002
`1003
`1004
`
`1005
`
`Exhibit Description
`U.S. Patent No. 5,659,891 (“the ’891 Patent”)
`’891 Patent File History (“File History”)
`Declaration of Petitioners’ Expert Dr. Tim Williams (“Williams”)
`List of Pending Civil Actions and IPRs for U.S. Patent Nos. 5,659,891,
`5,915,210, 5,590,403
`In the Matter of Mobile Telecommunication Technologies
`Corporation, Petition for Rulemaking, dated November 12, 1991
`(“MTel Petition”)
`1006 WO 94/11960 (“’960 Publication”)
`1007
`Dr. Rade Petrovic, et al., Permutation Modulation for Advanced Radio
`Paging, IEEE Proceedings of SoutheastCon ’93 (Apr. 7, 1993)
`(“Petrovic”)
`U.S. Patent No. 5,414,734
`Technical Feasibility Demonstration, dated June 1, 1992 (“MTel
`Demonstration”)
`1010 WO/08355 (“Raith”)
`1011
`Alakija & S.P. Stapleton, A Mobile Base Station Phased Array
`Antenna, IEEE INT’L CONF. On SELECTED TOPICS WIRELESS
`COMM., June 1992, at 118. (“Alakija”)
`1012 MTel v. T-Mobile Claim Construction Order
`1013
`Excerpts from McGraw-Hill Dictionary of Scientific and Technical
`Terms, Fifth Edition.
`U.S. Patent No. 4,513,443 (“Louttit”)
`Arris Group v. MTel, IPR2016-00766, Patent Owner Preliminary
`Response
`FCC Filing Information for MTel Petition
`FCC Filing Information for MTel Demonstration
`
`1008
`1009
`
`1014
`1015
`
`1016
`1017
`
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 311 et seq. and 37 C.F.R. § 42.1 et seq., Juniper
`
`Networks, Inc., Brocade Communications Systems, Inc. and Ruckus Wireless, Inc.
`
`(collectively “Petitioners”) hereby petition for an inter partes review of U.S. Patent
`
`No. 5,659,891 (“the ’891 Patent”). Petitioners submit that Claims 1-5 (the
`
`“Challenged Claims”) of the ’891 Patent are unpatentable under 35 U.S.C. § 103 in
`
`view of the prior art discussed herein. This Petition demonstrates by a
`
`preponderance of the evidence that there is a reasonable likelihood that Petitioners
`
`will prevail with respect to at least one of these claims. Accordingly, Petitioners
`
`respectfully request that the Board institute an inter partes review of the ’891
`
`Patent pursuant to 37 C.F.R. § 42.108.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8
`
`A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)).
`
`The real-parties in interest for this Petition are Juniper Networks, Inc.,
`
`Brocade Communications Systems, Inc., and Ruckus Wireless, Inc. Petitioners
`
`also identify Hewlett Packard Enterprise Company, HP Inc., Aruba Networks, Inc.,
`
`and ARRIS Group, Inc. as real-parties in interest at this time.1
`
`
`1 Out of an abundance of caution, Petitioners are identifying and naming Hewlett
`
`Packard Enterprise Company, HP Inc., Aruba Networks, Inc., and ARRIS Group,
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`B. Related Matters (37 C.F.R. § 42.8(b)(2)).
`
`The ’891 Patent has been involved in numerous district court litigations, as
`
`well as several prior IPR proceedings, all of which are identified in Exhibit 1004.
`
`Exhibit 1004 also separately identifies district court litigations involving U.S.
`
`Patent Nos. 5,915,210 and 5,590,403, which have also been asserted against
`
`Petitioners in the co-pending litigation.
`
`C. Lead/Back-up Counsel (37 C.F.R. § 42.8(b)(3)) & Notice of
`
`Service Information (37 C.F.R. § 42.8(b)(4)):
`
`Lead Counsel (Juniper Networks, Inc.): Nima Hefazi (Reg. No. 63,658),
`
`IRELL & MANELLA, LLP, 840 Newport Center Drive, Suite 400, Newport
`
`Beach, CA, Telephone: (949) 760-0991, Fax: (949) 760-5200,
`
`Email: nhefazi@irell.com.
`
`Backup Counsel (Juniper Networks, Inc.): Rebecca Carson, pro hac vice
`
`pending, IRELL & MANELLA, LLP, 840 Newport Center Drive, Suite 400,
`
`
`Inc. as real-parties in interest at this time, given that there is no bright-line
`
`definition of the term. Petitioners, however, do not believe these parties would
`
`constitute RPIs under the guidance provided by the PTAB trial practice guide
`
`because, amongst other things, they did not fund or exercise control over this IPR.
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`Newport Beach, CA, Telephone: (949) 760-0991, Fax: (949) 760-5200,
`
`Email: rcarson@irell.com.2
`
`Backup Counsel (Juniper Networks, Inc.): Jonathan Kagan, pro hac vice
`
`pending, IRELL & MANELLA, LLP, 1800 Avenue of the Stars, Suite 900, Los
`
`Angeles, CA, Telephone: (310) 277-1010, Fax: (310) 203-7199,
`
`Email: jkagan@irell.com.3
`
`Backup Counsel (Brocade Communications Systems, Inc., and Ruckus
`
`Wireless, Inc.): Ronald Wielkopolski (Reg. No. 69,359), Ruyak Cherian LLP,
`
`1776 Eye St. NW, Suite 750, Washington, DC 20006, Telephone: (202) 838-1568,
`
`Email: ronw@ruyakcherian.com.
`
`
`2 Petitioner hereby requests authorization to file a motion for Rebecca Carson to
`
`appear pro hac vice, as Ms. Carson is an experienced litigation attorney who is
`
`counsel for Juniper in the concurrent litigation and has established familiarity with
`
`the subject matter at issue.
`
`3 Petitioner hereby requests authorization to file a motion for Jonathan Kagan to
`
`appear pro hac vice, as Mr. Kagan is an experienced litigation attorney who is
`
`counsel for Juniper in the concurrent litigation and has established familiarity with
`
`the subject matter at issue.
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`Backup Counsel (Brocade Communications Systems, Inc., and Ruckus
`
`Wireless, Inc.): Don F. Livornese (Reg. No. 32,040), Ruyak Cherian LLP, 222 N.
`
`Sepulveda Blvd., Suite 2000, El Segundo, CA 90245, Telephone: (310) 90245,
`
`Email: donl@ruyakcherian.com.
`
`Backup Counsel (Brocade Communications Systems, Inc., and Ruckus
`
`Wireless, Inc.): Korula T. Cherian, pro hac vice pending, Ruyak Cherian LLP,
`
`1936 University Ave., Suite 350, Berkeley, CA 94704, Telephone: (510) 944-
`
`0185, Email: sunnyc@ruyakcherian.com.4
`
`Please address all correspondence to lead and back-up counsel. Petitioners
`
`also consent to electronic service by email.
`
`III. POWER OF ATTORNEY (37 C.F.R. § 42.10(B))
`Power of attorney documents for each of the Petitioners are being filed
`
`concurrently.
`
`
`4 Petitioner hereby requests authorization to file a motion for Korula Cherian to
`
`appear pro hac vice, as Mr. Cherian is an experienced litigation attorney who is
`
`counsel for Brocade and Ruckus in the concurrent litigation and has established
`
`familiarity with the subject matter at issue.
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`IV. PAYMENT OF FEES (37 C.F.R. § 42.103)
`The Office is authorized to charge Deposit Account No. 09-0946 for any
`
`fees required for this Petition, including the fee set forth in 37 C.F.R. § 42.15(a),
`
`referencing Docket No. 159291-0075 (891IPR), and for any other required fees.
`
`V. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104(A)
`
`A.
`
`37 C.F.R. § 42.104(A) Grounds for Standing
`
`Petitioners certify that this patent is eligible for inter partes review and that
`
`Petitioners are not barred or estopped from requesting an inter partes review of the
`
`Challenged Claims on the grounds identified herein. This Petition is filed pursuant
`
`to 37 C.F.R. § 42.106(a).
`
`B.
`
`37 C.F.R. § 42.104(B) Statement and Relief Requested
`
`Petitioners request IPR of the Challenged Claims of the ’891 Patent on the
`
`grounds set forth in the table below, and request that each of the claims be found
`
`unpatentable:
`
`Ground
`
`Claims
`
`Basis
`
`Reference
`
`1
`
`2
`
`3
`
`
`
`1-4
`
`5
`
`5
`
`103
`
`103
`
`103
`
`MTel Petition
`
`MTel Petition and ’960 Publication
`
`Petrovic and MTel Petition
`
`Each of the above references qualify as prior art under 35 U.S.C. § 102(b).
`
`Specifically, these references were published and publicly available no later than
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`April 7, 1993, more than one year before the ’891 Patent’s June 7, 1995 priority
`
`date. See, e.g., Ex. 1008 (U.S. Patent No. 5,414,734) (filed January 6, 1993) at
`
`1:66-2:2 (evidencing public availability of MTel Petition by discussing the “‘MTel
`
`Petition for Rule Making to Allocate Frequencies for New Nationwide Wireless
`
`Network Services,’ a petition submitted to the FCC on Nov. 12, 1991”).
`
`An explanation of how these claims are unpatentable under the statutory
`
`grounds identified below, including an identification of where each element is
`
`found in the prior art patents and/or printed publications and the relevance of each
`
`prior art reference, is provided in the detailed description below. In further support
`
`of the proposed grounds of rejection, the declaration of Dr. Timothy Williams is
`
`attached as Ex. 1003 (hereinafter “Williams”).
`
`VI. SUMMARY OF THE ’891 PATENT AND FILE HISTORY
`
`A.
`
`’891 Patent
`
`The ’891 Patent is generally directed to multicarrier modulation techniques
`
`for operating more than one carrier in a single mask-defined, bandlimited
`
`channel. Ex. 1001, 1:5-8. The ’891 Patent describes an existing problem with
`
`mobile paging services. Specifically, that the demand for such services was
`
`exceeding the capacity of the available channels. Id. 1:11-25.
`
`The ’891 Patent describes two known avenues to address this capacity issue:
`
`(1) increase the data rate for a given channel, or (2) increase the transmission
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`capacity of the channel. Id. 1:25-47. The ’891 Patent is directed at increasing the
`
`transmission capacity of a channel using multicarrier modulation. However,
`
`multicarrier modulation is susceptible to interference, particularly due to the “near-
`
`far” problem. Id. 1:47-56. The ’891 Patent suggests co-location of transmitters as
`
`a known solution to avoid the near-far problem. Id. 1:54-56.
`
`The ’891 Patent states that traditionally “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.” Id. 2:7-
`
`9. “Although such symmetry achieves maximum inter-carrier spacing and reduces
`
`the opportunity for interference among adjacent carriers, it often necessitates the
`
`need for sophisticated receiver and transmitter schemes.” Id. 2:9-13. The ’891
`
`Patent purports to propose a way to increase throughput by positioning the carrier
`
`frequencies asymmetrically in the bandlimited channel. Id. 2:54-59. The ’891
`
`Patent describes that the frequency difference between the center frequency of the
`
`outermost carrier and the band edge of the mask is more than half the frequency
`
`difference between the center frequencies of each adjacent carrier. Id., 2:26-36
`
`The ’891 Patent also discloses two embodiments for a “co-located
`
`multicarrier transmitter system” that may be used with the invention:
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`Id., Figs. 1-2; see also id., 3:4-7 (“FIG. 1 is a block diagram of a co-located
`
`multicarrier transmitter system in a linear amplifier configuration for using the
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`present invention”), 3:8-10 (“FIG. 2 is a block diagram of a co-located multicarrier
`
`transmitter system in a composite transmitter configuration for using the present
`
`invention”). Both embodiments modulate individual paging carriers with data and
`
`sum those modulated carriers into a composite signal. Id., 3:39-4:6. The only
`
`difference is that the embodiment of FIG. 1 amplifies the modulated carriers after
`
`summing them, whereas the embodiment of FIG. 2 amplifies the modulated
`
`carriers before summing them. Id.
`
`B.
`
`Prosecution History
`
`The ’891 Patent issued on August 19, 1997 from U.S. Patent Application
`
`No. 08/480,718, which was filed on June 7, 1995 with original claims 1-8, of
`
`which claims 1, 3, and 5 were independent. See Ex. 1002, 21-22.
`
`In the first Office Action, the Examiner allowed claims 1 and 2, rejected
`
`claims 3 and 4 solely under 35 U.S.C. § 112, rejected claims 5-7 based on U.S.
`
`Patent No. 3,488,445 and objected to claim 8 as being allowable if rewritten in
`
`independent format. In particular, the Office Action noted:
`
`As to claims 1, 3 and 8, the frequency difference between the center
`
`frequency of the outer most paging carriers and the band edge of the
`
`mask is greater than half the frequency difference between the center
`
`frequencies of each adjacent paging carrier, is not taught or suggested
`
`in the prior art of record.
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`Id., 67. The Applicant amended claim 3 to overcome the § 112 rejection, rewrote
`
`claim 8 in independent form to include the features of independent claim 5, and
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`eventually cancelled rejected claims 5-7. Id., 100-101.
`
`None of the prior art references forming the basis for the grounds of
`
`rejection discussed below were disclosed to the Examiner during the prosecution of
`
`the ’891 Patent.
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`VII. CLAIM CONSTRUCTION
`
`Because the ’891 Patent is expired, the Board’s claim construction analysis
`
`is similar to that of a district court. In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir.
`
`2012). 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.
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005). However, the
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`Board may also rely on MTel’s implicit or explicit statements regarding the
`
`meaning of the claim terms at issue. See 37 C.F.R. § 1.104 (“[T]he examiner may
`
`rely upon admissions by the applicants, or the patent owner in a reexamination
`
`proceeding, as to any matter affecting patentability.”); Google Inc. v. Intellectual
`
`Ventures II LLC, IPR2014-01031 (PTAB Dec. 7, 2015), Paper 41 at 11
`
`(appropriate to consider evidence from Patent Owner’s claim construction brief in
`
`district court case “because it sheds light on whether [Patent Owner] is being
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`consistent on the claim construction positions that it is taking in two different
`
`forums.”).
`
`1.
`
`“the band edge of the mask” (Claims 1, 3, 5)
`
`Independent Claims 1, 3 and 5 include the limitation: “the frequency
`
`difference between the center frequency of the outer most of said
`
`[carriers/corresponding subchannels] and the band edge of the mask defining said
`
`channel is more than half the frequency difference between the center frequencies
`
`of each adjacent carrier.”
`
`In prior IPR proceedings, the Board has rejected (correctly) MTel’s assertion
`
`that “the band edge of the mask” means “the innermost frequencies at which the
`
`mask requires attenuation of the signal” in its Institution Decisions. See IPR2015-
`
`01726, Paper 9 at 8; IPR2016-00766, Paper 14 at 8 ; IPR2016-00768, Paper 13 at
`
`8. Instead, the Board has correctly found that such a limitation does not exist in
`
`the claims and the term should instead be construed for purposes of IPR as: “a
`
`band edge of the single mask-defined, bandlimited channel.” See 01726, Paper 9
`
`at 14; IPR2016-0766, Paper 14 at 9; IPR2016-00768, Paper 13 at 9.
`
`Petitioners have applied the Board’s prior construction in its analyses here.
`
`Given that the Board has yet to make a final determination on this claim
`
`construction issue, however, Petitioners have also analyzed the prior art under
`
`MTel’s improper construction. As shown below—and unlike with the pending
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`IPRs—the construction of this term has no impact on the proposed grounds in this
`
`Petition because each of them clearly discloses or renders obvious “the band edge
`
`of the mask” limitation under the construction adopted by the Board in the prior
`
`IPRs, as well as under the narrower (and improper) construction MTel previously
`
`proposed.
`
`To the extent MTel proposes a construction of “the band edge of the mask”
`
`that limits the term to the innermost frequency at which there must be attenuation,
`
`this construction is wrong and should be rejected. “The band edge of the mask” is
`
`not a term used in the art, and the specification of the ’891 Patent never refers to
`
`the innermost frequency of a mask as “the band edge.” Williams ¶ 29. To the
`
`contrary, the ’891 Patent states that Figure 4 depicts “an exemplary FCC emissions
`
`mask” in which a signal is typically to be “attenuated at least 70 dB at the band
`
`edge.”
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`
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`Ex. 1001, Fig. 4; see also id., 1:59-61 (“FCC masks typically require the power
`
`spectral density of a signal to be attenuated at least 70 dB at the band edge”), 3:15-
`
`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
`
`center frequency.”); Williams ¶ 29. Put another way, to the extent the ’891 Patent
`
`refers to “the band edge of the mask,” it refers to the frequency where the signal is
`
`attenuated to 70 dB (i.e., +/- 10 kHz), not the innermost frequency at which there is
`
`attenuation (i.e., +/- 5 kHz). Williams ¶ 29.
`
`2.
`
`“co-locating said plurality of transmitters” (Claim 5)
`
`Claim 5 includes the limitation “co-locating said plurality of transmitters.”
`
`Ex. 1001, 6:34. Petitioners contend that this terms should be accorded its plain and
`
`ordinary meaning, which is co-locating two or more transmitters, including e.g.,
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`Petition for Inter Partes Review of U. S. Patent No. 5,659,891
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`co-located sub-transmitters such as the ones depicted in Figures 1 and 2 of the ’891
`
`Patent.
`
`This construction is supported by the specification, which describes the
`
`systems of Figures 1 and 2 as “co-located multicarrier transmitter system[s].” Id.,
`
`3:4-9; see also id., 3:4-7 (“FIG. 1 is a block diagram of a co-located multicarrier
`
`transmitter system in a linear amplifier configuration for using the present
`
`invention”), 3:8-10 (“FIG. 2 is a block diagram of a co-located multicarrier
`
`transmitter system in a composite transmitter configuration for using the present
`
`invention”). The only difference between the Figure 1 system and the Figure 2
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`system is that the embodiment of Figure 1 amplifies the modulated carriers after
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`summing them, whereas the embodiment of Figure 2 amplifies the modulated
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`carriers before summing them. Williams ¶ 31.
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`A POSA would have understood Figures 1 and 2 to illustrate two co-located
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`transmitters or subtransmitters transmitting from the same source. See Williams
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`¶ 32. For example, a POSA would have recognized that Figures 1 and 2 illustrate
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`two co-located subtransmitters that each includes its own modulator connected to a
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`data source, power amplifier, and antenna. Id. Dr. Williams has reproduced as
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`Petitioners’ Illustration 1 Figures 1 and 2 of the ’891 Patent with annotations to
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`identify the co-located subtransmitters:
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`Petitioners’ Illustration 1
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`The claim language also supports Petitioners’ construction. For example,
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`claim 5 recites “co-locating said plurality of transmitters . . . such that said
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`plurality of carriers can be emanated from the same transmission source.” A
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`POSA would understand that the “same transmission source” refers to a common
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`antenna, thereby further confirming that Figures 1 and 2 represent a co-located
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`transmitter system and that this term encompasses two or more transmitters or
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`subtransmitters connected to a common antenna. Williams ¶ 33.
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`Thus, a POSA would understand that “co-locating said plurality of
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`transmitters” as used in claim 5 of the ’891 patent should be given its plain and
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`ordinary meaning, which is co-locating two or more transmitters, including, e.g.,
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`subtransmitters such as the ones depicted in Figures 1 and 2 of the ’891 patent.
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`Williams ¶ 34.
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`VIII. PRIORITY DATE
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`The priority date of the Challenged Claims is June 7, 1995.
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`IX. PERSON OF SKILL IN THE ART (“POSA”)
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`While the specific experience and education levels may vary, a POSA would
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`have likely had Bachelor’s degree in electrical engineering or its equivalent and
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`four years of experience, or a Master’s degree in electrical engineering or its
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`equivalent and one to two years of experience. Williams ¶¶ 10-14.
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`X.
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`PROCEDURAL BACKGROUND
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`The Challenged Claims are currently at issue in IPR2016-00766 and
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`IPR2016-00768, filed by Arris Group, Inc., Aruba Networks, Inc., Hewlett Packard
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`Enterprise Company, and HP, Inc. Those petitions identified two grounds:
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` Ground 1: claims 1-5 are anticipated by Petrovic (Ex. 1007).
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` Ground 2: claim 5 is obvious over Petrovic, in view of Raith,5 in
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`further view of Alakija.6
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`Cognizant that the Board has discretion to deny petitions when “the same or
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`substantially the same prior art or arguments previously were presented to the
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`Office” under 35 USC § 325(d), Petitioners assert that the Board should grant the
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`current Petition for several reasons.
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`First, the Petitioners in this IPR (Juniper, Brocade, and Ruckus) are not
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`parties, real parties in interest, or privies to the prior proceedings and have not
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`previously filed any IPR regarding the ’891 Patent. As a result, they had no
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`control over the arguments that were presented or the challenges that were made in
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`the prior, pending proceedings. Refusal to substantively consider this Petition
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`would cause Petitioners unfair prejudice by depriving them of the opportunity to
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`challenge the ’891 Patent.
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`Second, Petitioners would suffer substantial prejudice if the Board fails to
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`institute this proceeding and the other proceedings concerning the ’891 Patent are
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`5 Ex. 1010 , WO/08355 (Sept. 8, 1989).
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`6 Ex. 1011, Alakija & S.P. Stapleton, A Mobile Base Station Phased Array
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`Antenna, IEEE INT’L CONF. On SELECTED TOPICS WIRELESS COMM.,
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`June 1992, at 118.
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`terminated prior to a final written decision. Petitioners would be left with no
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`standing to continue those proceedings or initiate new proceedings at that time
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`because the one year statutory bar would have lapsed. This represents a real risk to
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`Petitioners as MTel has already successfully terminated several prior IPRs on the
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`’891 Patent by settling with the petitioners of those proceedings. IPR2014-01035,
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`Paper 21 (granting “joint motion to terminate the instant proceedings pursuant to
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`settlement agreement); IPR2015-00018, Paper 14 (same); IPR2015-01726, Paper
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`14 (same).
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`Third, the grounds submitted in this Petition are not based on the same or
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`substantially the same prior art or arguments. Instead, the arguments are new, non-
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`cumulative and non-redundant. In particular, the current Petition includes three
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`new grounds. All of those grounds include new art that the Board has yet to
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`consider in an IPR proceeding concerning the ’891 Patent. Moreover, the new
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`grounds identified by Petitioners are not based on the same or substantially the
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`same arguments because, for example, the new art discloses or renders obvious
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`each element of the Challenged Claims under MTel’s own proposed construction
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`of “band-edge of the mask.” For instance, in past IPRs MTel has argued that the
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`“band edge of the mask” should be construed as the “innermost frequencies at
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`which the mask requires attenuation of the signal,” and that under such a
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`construction the spacing limitation present in each of the claims would not be
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`satisfied: “the frequency difference between the center frequency of the outer most
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`of said [carriers/corresponding subchannels] 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.” While the Board has rejected MTel’s claim
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`construction position in its Institution Decisions in the prior IPRs, the Board has
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`yet to make a final determination on this issue. In the event that the Board is
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`ultimately persuaded by MTel’s arguments, the grounds Petitioners present in this
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`IPR would satisfy the spacing requirements of the claims even under MTel’s
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`incorrect construction of “band edge of the mask.” As a result, they are not
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`redundant. By the time that the Board makes a final determination in the prior
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`IPRs on the key claim construction issue, it would be too late for Petitioners to file
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`an IPR with the grounds contained herein, and thus the Board’s use of its discretion
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`under 35 USC § 325(d) would be highly prejudicial.
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`XI.
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`IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE
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`UNPATENTABLE
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`A. Ground 1: Claims 1-4 Are Obvious Over The MTel Petition
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`Mobile Telecommunications Technologies Corporation (“Original
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`Assignee”), the original assignee of the ‘891 Patent and predecessor in interest to
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`MTel, submitted the MTel Petition to the FCC on November 12, 1991, which was
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`subsequently published by the FCC by July 14, 1992. Ex. 1016, 1 (print out from
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`FCC website showing “date posted” of “Jul. 14, 1992”). The Original Assignee
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`did not disclose the MTel Petition to the PTO during prosecution, and it thus was
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`not considered by the Examiner.
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`The MTel Petition “urges the [FCC] to adopt rules and policies providing for
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`the licensing of carriers to operate in a new Nationwide Wireless Network
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`(“NWN”) Service.” Ex. 1005, iv. The MTel Petition seeks the creation of three
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`50kHz channels in the 930-931 MHz band for its NWN service. Id. It further
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`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.
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`Claim 1
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`a.
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`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. The
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`MTel Petition teaches a paging system. For example, it discloses that its NWN
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`Service may be used with a range of services, including “pagers.” Ex. 1005, 5
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`(“demand from . . . pager units even higher”), 13 n.11 (“NWN will accommodate a
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`substantial number of ‘answer-back’ pagers”); see also id. Fig. A5 (“pager”).
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`The MTel Petition also teaches “operating a plurality of paging carriers in a
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`single mask-defined bandlimited channel.” For example, the MTel Petition seeks
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`authorization from the FCC to use “50 kHz channels” within the “930-931 MHz
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`band” for its NWN service. Id., 18-19. This 50 kHz band limited channel is made-
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`up of “30 kHZ . . .