throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Hays et al.
`U.S. Patent No.: 5,659,891
`Issue Date:
`August 19, 1997
`Appl. Serial No.: 08/480,718
`Filing Date:
`June 7, 1995
`Title:
`Multicarrier techniques in bandlimited channels
`IPR:
`IPR2017-00640
`
`
`
`
`
`DECLARATION OF DR. JAY P. KESAN
`
`1. My name is Dr. Jay P. Kesan. I understand that I am submitting a
`
`declaration for Mobile Telecommunications Technologies LLC (MTel”),
`
`offering technical opinions in connection with the above-referenced Inter
`
`Partes Review (IPR) 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.
`
`2.
`
`I also provide selected background information here relevant to
`
`myself, my experience, and this proceeding.
`
`3.
`
`I am a Professor at the University of Illinois at Urbana-Champaign,
`
`where I am appointed in the College of Law, the Department of Electrical
`
`and Computer Engineering, the Coordinated Science Laboratory, and the
`
`Information Trust Institute. I have a Ph.D. in Electrical and Computer
`
`Engineering from the University of Texas at Austin and a J.D., summa
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`cum laude from Georgetown University. I have also worked as a
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`research scientist at the IBM T.J. Watson Research Center, and I am a
`
`named inventor on several United States patents. I have also served as a
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`technical expert and legal expert in patent infringement lawsuits. I have
`
`been appointed to serve as a Special Master in patent disputes.
`
`Additionally, I have been appointed as a Thomas Edison Scholar at the
`
`United States Patent and Trademark Office (“USPTO”).
`
`4. My opinions in this report are based on my experience and expertise
`
`in the field relevant to the Asserted Patents. To prepare this Report, I
`
`have reviewed and considered materials shown in Appendix B and
`
`referred to herein, principally including the ‘891 Patent, the MTel
`
`Petition, ‘960 Publication, and Petrovic references, and the extrinsic
`
`evidence cited.
`
`5.
`
`I anticipate using some of the above-referenced documents and
`
`information, or other information and material that may be produced
`
`during the course of this proceeding (such as by deposition testimony), as
`
`well as representative charts, graphs, schematics and diagrams,
`
`animations, and models that will be based on those documents,
`
`information, and material, to support and to explain my testimony before
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`the Board regarding the validity of the ’891 Patent.
`
`
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`6. This report is based on information currently available to me. To the
`
`extent that additional information becomes available (whether from
`
`documents that may be produced, from testimony that may be given or in
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`depositions yet to be taken, or from any other source), I reserve the right
`
`to continue the investigation and study. I may thus expand or modify my
`
`opinions as that investigation and study continues. I may also
`
`supplement my opinions in response to such additional information that
`
`becomes available to me, any matters raised by and/or opinions provided
`
`by MTel’s experts, or in light of any relevant orders from the Board.
`
`7. Throughout this report, I cite to certain documents or testimony that
`
`support my opinions. These citations are not intended to be and are not
`
`exhaustive examples. Citation to documents or testimony is not intended
`
`to signify and does not signify that my expert opinions are limited by or
`
`based solely on the cited sources.
`
`8.
`
`I am an attorney, registered to practice before the United States Patent
`
`and Trademark Office, and a legal expert in United States Patent Law.
`
`9. A person of ordinary skill in the art at the time of the invention
`
`(PHOSITA) of the ’891 Patent would possess a bachelor’s degree in
`
`electrical or its equivalent and about four years working in the field of
`
`wireless telecommunications networks, or the equivalent.
`
`
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`10.
`
`Independent Claims 1, 3, and 5 of the ‘891 Patent are challenged in
`
`the Petition in the above referenced IPR.
`
`11. Claim 1 recites transmitting a plurality of paging carriers “from the
`
`same location.” Claim 3 recites transmitting at least two paging carriers
`
`“from the same location.” As a result, both Claims 1 and 3 recite
`
`transmitting multiple carriers from the same location.
`
`12. FIGs. 1 and 2 of the ‘891 Patent, reproduced below, show that all of
`
`the paging carriers emanate from the same location or antenna (antennas
`
`15 and 25, respectively).
`
`Ex. 1001 at FIG. 1.
`
`
`
`
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`4
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`
`
`Id. at FIG. 2.
`
`13. A PHOSITA, therefore, would understand that, according to the ‘891
`
`Patent, transmitting multiple carriers from the same location means that
`
`“the multiple paging carriers emanate from the same location or
`
`antenna.” This limitation can be referred to as the Same Location
`
`Limitation.
`
`14. Claim 5 recites “a plurality of mobile receiving units independently
`
`receiving one of said plurality of carriers.”
`
`15. The Specification of the ’891 Patent also describes “independent
`
`receiving units capable of receiving one of said plurality of carriers.” Ex.
`
`1001 at 2:53-54.
`
`
`
`5
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`
`
`Ex. 1001 at 2:47-59 (emphasis added).
`
`16. From the plain language of the claim and Specification, a PHOSITA
`
`would understand that “a plurality of mobile receiving units
`
`independently receiving one of said plurality of carriers” means “a
`
`mobile receiving unit is capable of receiving one carrier of the plurality
`
`of carriers independent from the other carriers of the plurality of
`
`carriers.” This limitation can be referred to as the Independent Carrier
`
`Reception Limitation.
`
`17. Claims 1, 3, and 5 recite that “the frequency difference between the
`
`center frequency of the outer most of said carriers 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.” This limitation
`
`can be called the Asymmetric Condition Limitation. I have previously
`
`
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`described the asymmetric condition of the ’891 Patent in IPR2016-00768
`
`(the “ARRIS IPR”). See Ex. 2003 at 40-42.
`
`18. The petitioner in the ARRIS IPR provided extrinsic evidence that can
`
`be used in the construction of the Asymmetric Condition Limitation.
`
`That petitioner asserts that FCC specifications state that “the mask itself
`
`is defined relative to the total power of the unmodulated carrier,” citing
`
`47 C.F.R. §22.106 (1994). Ex. 2002 at 11. 47 C.F.R. §22.106(b) (1994)
`
`provides that “the power of any emission shall be attenuated below the
`
`unmodulated carrier power (P).” Ex. 1002 at 82. (emphasis added).
`
`
`
`Ex. 1002 at 82. (emphasis added).
`
`19.
`
`47 C.F.R. §22.106(b) (1994) provides that the “measurements of
`
`emission power can be expressed in peak or average values provided they
`
`are expressed in the same parameters as the unmodulated transmitter
`
`carrier power.” Ex. 1002 at 82. (emphasis added).
`
`
`
`
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`Ex. 1002 at 82. (emphasis added).
`
`20. Therefore, a PHOSITA would understand that the FCC regulations at
`
`the time of the ’891 Patent required that a mask be defined with respect
`
`to the unmodulated carriers. The Asymmetric Condition Limitation of
`
`Claims 1, 3, and 5 is a condition that defines a mask with respect to the
`
`center frequencies of carriers. Therefore, the mask of the Asymmetric
`
`Condition Limitation must be defined relative to the center frequencies of
`
`the unmodulated carriers.
`
`21. The Specification of the ‘891 Patent also supports defining the mask
`
`relative to the center frequencies of the unmodulated carriers. For
`
`example, FIG. 5A, shown below shows two modulated carriers of the
`
`‘891 Patent.
`
`
`
`8
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`Ex. 1001 at FIG. 5A.
`
`FIG. 5A describes that its 2 modulated carriers have a frequency
`
`deviation of 2400 HZ and center frequencies at ± 4590. From the
`
`frequency deviation, a PHOSITA would understand that that the
`
`modulation is frequency shift keying (FSK), or more specifically, 2-FSK.
`
`2-FSK is depicted below in this figure from Appendix C.
`
`
`
`In this figure, the unmodulated carrier with a center frequency at 1 Hz, is
`
`frequency shifted, producing 2 modulated peaks at 0.9 Hz and 1.1 Hz.
`
`Similarly, FIG. 5A actually depicts 2 modulated peaks in each of the 2
`
`modulated carriers. The modulated peaks in FIG. 5A are each shifted ±
`
`2400 HZ from the center frequencies at ± 4590 Hz. Thus, even though
`
`FIG. 5A has 4 modulated peaks shifted ± 2400 HZ from the center
`
`frequencies at ± 4590 Hz, the center frequencies of the 2 modulated
`
`carriers are still ± 4590 Hz, which are the center frequencies of the
`9
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`unmodulated carriers. As a result, even though Claim 5, for example,
`
`refers to “modulated” carriers, the center frequencies of these carriers are
`
`still the center frequencies of the unmodulated carriers and not the center
`
`frequencies of the 4 modulated peaks of the 2 modulated carriers.
`
`22.
`
`I understand that the prior art reference MTel Petition is cited in
`
`reference to Claims 1 and 3 of the ‘891 Patent in the Petition of this IPR.
`
`23. MTel Petition is directed to rulemaking petition to the Federal
`
`Communications Commission (FCC). In the rulemaking petition
`
`“Mobile Telecommunication Technologies Corporation (‘Mtel’) urges
`
`the Commission to adopt rules and policies providing for the licensing of
`
`carriers to operate in a new Nationwide Wireless Network (‘NWN’)
`
`Service. Three nationwide licensees should be authorized. Each of these
`
`licensees would employ a 50 kHz channel in the 930-931 MHz band for a
`
`two-way, high speed messaging service to portable terminals.
`
`To illustrate the vast capabilities and potential of an NWN service,
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`Mtel also describes in its petition an efficient means for implementing
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`NWN. As operated by Mtel, an NWN facility would feature:
`
`• Nationwide determination of the relative location of subscribers;
`
` Two-way and one-way high speed data communications;
`
` •
`
` •
`
` Wide area coverage expandable in a straightforward and economic
`fashion using proven simulcast techniques;
`
`
`
`10
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` Spectrum efficient enhanced multitone modulation; and,
`
` Large regional zoning for capacity re-use.” Ex. 1005 at iv.
`
` •
`
` •
`
`24.
`
`I understand that in the Petition it is asserted that MTel Petition
`
`teaches or suggests the Same Location Limitation of Claims 1 and 3.
`
`Paper 1 at 27. The Petition makes this assertion based on disclosures in
`
`MTel Petition (1) that the NWN system includes “wide area transmitters”
`
`that “send message data to individual user terminals slaved to the base
`
`station transmitters” and (2) the NWN system includes a modulation
`
`scheme in which 8 tones and a pilot tone are transmitted in a 50 kHz
`
`channel. See Ex. 1005 at A3 and 19.
`
`25. MTel Petition does not teach or suggest that its multiple tones
`
`emanate from the same location or antenna. MTel Petition does not even
`
`describe where its wide area transmitters are located. In fact, in MTel
`
`Petition, the only reference to the word “location” in conjunction with
`
`transmitters is in the passage shown below. This passage certainly does
`
`not teach or suggest the Same Location Limitation.
`
`
`
`Ex. 1005 at C2 (emphasis added).
`
`
`
`11
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`26. MTel Petition also does not describe if one transmitter at a single
`
`location transmits all of the tones of the multitone modulation scheme or
`
`if different transmitters at different locations transmit each tone of the
`
`multitone modulation scheme. MTel Petition provides no description of
`
`its transmitters with respect to tones. As a result, a PHOSITA would not
`
`conclude that MTel Petition teaches or suggests the Same Location
`
`Limitation.
`
`27.
`
`I understand that in the Petition it is also asserted that MTel Petition
`
`teaches or suggests the Asymmetric Condition Limitation of Claims 1, 3,
`
`and 5. Paper 1 at 32. Essentially, the Petition combines MTel Petition’s
`
`description of proposed multitones in FIG. 1, shown below, with MTel
`
`Petition’s description of a proposed FCC mask, also shown below.
`
`Ex. 1005 at FIG. 1.
`
`
`
`12
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`
`
`Id. at FIG. 24.
`
`28. Dr. Williams has drawn MTel Petition’s proposed FCC mask on top
`
`of MTel Petition’s proposed multitones in FIG. 1 as shown below in
`
`Petitioner’s Illustration 6. The Petition essentially finds that this
`
`combination meets the Asymmetric Condition Limitation of Claims 1 3,
`
`and 5.
`
`
`
`13
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`Paper 1 at 34.
`
`29. A PHOSITA would not conclude from Petitioner’s Illustration 6 that
`
`MTel Petition teaches or suggests the Asymmetric Condition Limitation,
`
`because the multitones of MTel Petition’s FIG. 1 are not unmodulated
`
`carriers. Instead, they are modulated carriers. Because they are
`
`modulated carriers, MTel Petition’s mask cannot be defined with respect
`
`to them. As described above, the FCC regulations at the time of the ’891
`
`Patent required that a mask be defined with respect to the unmodulated
`
`carriers. This is why MTel Petition never shows the proposed mask with
`
`respect to the multitones as shown in Petitioner’s Illustration 6.
`
`30. MTel Petition explicitly describes that the multitones of MTel
`
`Petition’s FIG. 1 are modulated signals. For example, MTel Petition
`
`describes that “[t]one signaling (e.g., FSK, MFSK) ideally is suited for a
`
`simulcast network.” Ex. 1005 at A6. MTel Petition then goes on to
`
`describe many different modulation techniques for tone signaling, as
`
`shown below.
`
`
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`14
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`Ex. 1005 at A6.
`
`Because the multitones of MTel Petition’s FIG. 1 are modulated signals,
`
`MTel Petition never refers to these signals as carriers.
`
`
`
`
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`15
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`31. A PHOSITA would understand that because MTel Petition’s
`
`multitones are modulated carriers and not unmodulated carriers, MTel
`
`Petition cannot teach or suggest the Asymmetric Condition Limitation.
`
`This is because the Asymmetric Condition Limitation requires the center
`
`frequencies of the unmodulated carriers. The center frequencies of the
`
`unmodulated carriers of MTel Petition are unknown, because MTel
`
`Petition does not specify how exactly the tones of FIG. 1 are modulated.
`
`I note again that Claim 5 explicitly calls carriers “modulated carriers.”
`
`However a PHOSITA would understand the center frequency of a
`
`modulated carrier, modulated with FSK for example, is the center
`
`frequency of the unmodulated carrier and not the center frequency of the
`
`modulated peaks of the modulated carrier.
`
`32. MTel Petition, for example, considers multitone variants of frequency
`
`shift keying (FSK) for tone signaling or modulation. Ex. 1005 at A6. I
`
`have previously discussed FSK. See Ex. 2003 at 58. I have also recently
`
`refreshed my recollection on multitone variants of FSK describe as 2-
`
`FSK, 4-FSK, 8-FSK,…, n-FSK. Appendix C, attached hereto, is an
`
`article from the learned periodical, RF Wireless World, describing the
`
`difference between 2-FSK - 4-FSK.
`
`
`
`16
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`33. The figure below from Appendix C shows an example of a carrier
`
`modulated according to 2-FSK. In this figure, the unmodulated carrier
`
`with a center frequency at 1 Hz, is frequency shifted, producing 2
`
`modulated peaks at 0.9 Hz and 1.1 Hz. The 2 modulated peaks are, for
`
`example, two tones.
`
`
`
`34. The figure below from Appendix C shows an example of a carrier
`
`modulated according to 4-FSK. In this figure, the unmodulated carrier
`
`with a center frequency at 10 Hz, is frequency shifted, producing 4
`
`modulated peaks at 7, 9, 11 and 13 Hz. The 4 modulated peaks are, for
`
`example, four tones.
`
`
`
`17
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`
`
`35. MTel Petition’s FIG. 1 is shown again below. Without knowing the
`
`actual modulating technique used to produce the tones of FIG. 1, a
`
`PHOSITA could not determine the center frequencies of the unmodulated
`
`carriers. If, however, for example, it was known that this was 8-FSK,
`
`then there would be one carrier at displacement 0, and the 8 tones would
`
`be the 8 modulated peaks. In this scenario, the Asymmetric Condition
`
`Limitation certainly would not be met by FIG. 1, because there are no
`
`adjacent carriers.
`
`
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`18
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`
`
`Ex. 1005 at FIG. 1.
`
`36.
`
`I understand that the prior art references MTel Petition, ‘960
`
`Publication, and Petrovic are cited in reference to Claim 5 of the ‘891
`
`Patent in the Petition of this IPR.
`
`37.
`
`‘960 Publication is directed to a “two-way communication system for
`
`communication between a system network and a mobile unit. The
`
`system network includes a plurality of base transmitters and base
`
`receivers included in the network. The base transmitters are divided into
`
`zonal assignments and broadcast in simulcast using multi-carrier
`
`modulation techniques. The system network controls the base
`
`transmitters to broadcast in simulcast during both systemwide and zonal
`
`time intervals. The system network dynamically alters zone boundaries
`
`to maximize information throughput. The system also uses a mobile unit
`
`
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`19
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`which receives messages from the network and transmits messages to the
`
`network. The mobile unit includes a switch that allows a user to request
`
`the network to retransmit a received message that contains errors. Ex.
`
`1006 at Abstract.
`
`38. Petrovic is directed to a multicarrier permutation modulation
`
`technique that can be used in simulcast networks with high power
`
`transmitters. Ex. 1007 at Abstract.
`
`39. Reference is made to previous paging systems. The bandwidth of
`
`these systems is described as being 25 kHz.
`
`Ex. 1007 col. 1, ¶ 2 at 1 (emphasis added).
`
`40. Petrovic then proposes doubling the channel bandwidth as described
`
`
`
`below.
`
`
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`20
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`
`
`Ex. 1007 col. 2, ¶ 3 at 1 (emphasis added).
`
`41. The bandwidth is doubled by moving the current emission mask
`
`boundaries away from the center frequency by ±12.5 kHz. In other
`
`words, the current emission or spectrum mask boundaries, presumably
`
`±12.5 kHz, are moved another ±12.5 kHz for the new total bandwidth of
`
`50 kHz. The additional ±12.5 kHz on either side also includes ±7.5 kHz
`
`of guard bands.
`
`42. The technique disclosed by Petrovic involves “eight subcarriers
`
`spaced 5 kHz apart, so that there is exactly 35 kHz spacing between end
`
`subcarriers.” Ex. 1007 col. 2, ¶ 4 at 1. However, Petrovic specifically
`
`discloses that “we propose that during each symbol interval a
`
`combination of four distinct carriers is ON, while other four are OFF.”
`
`Id. (reproduced below).
`
`43.
`
`In other words, when functioning, only four (4) carriers are turned
`
`“ON,” while the other four (4) carriers are turned “OFF.”’ This point is
`
`
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`also shown above in Annotation 6 of FIG. 1, where only four (4) carriers
`
`are shown within the 50 kHz channel bandwidth.
`
`44.
`
`I understand that in the Petition it is asserted that MTel Petition
`
`teaches or suggests the Independent Carrier Reception Limitation of
`
`Claim 5. Paper 1 at 60. Again, the Petition makes this assertion based on
`
`disclosures in MTel Petition (1) that the NWN system includes “wide
`
`area transmitters” that “send message data to individual user terminals
`
`slaved to the base station transmitters” and (2) the NWN system includes
`
`a modulation scheme in which 8 tones and a pilot tone are transmitted in
`
`a 50 kHz channel. See Ex. 1005 at A3 and 19.
`
`45. A PHOSITA would not find that MTel Petition teaches or suggests the
`
`Independent Carrier Reception Limitation. For example, MTel Petition
`
`does not even reference the words “tone” or “multitoned” in conjunction
`
`with its user terminals. All of the references to the words “tone” or
`
`“multitoned” in MTel Petition are with respect to transmission and not
`
`reception. For example, the Petition says MTel Petition discloses that in
`
`“the NWN system ‘a pilot tone’ may be used to ‘establish an “on”
`
`threshold for the baud interval’ and then the ‘data are transmitted by
`
`keying the remaining tones.’” Paper 1 at 60 (emphasis added). These
`
`references are clearly directed to transmission only.
`
`
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`46.
`
`I understand that in the Petition it is also asserted that the common
`
`knowledge of a PHOSITA and the Louttit reference demonstrate how
`
`MTel Petition suggests the Independent Carrier Reception Limitation.
`
`Paper 1 at 63.
`
`47. First of all, the Louttit reference does not even include a plurality of
`
`tones transmitted in a single, bandlimited channel, so it cannot help in
`
`determining if MTel Petition suggests that its user terminal is capable of
`
`receiving one tone of a multitone modulation independent of other tones
`
`of the multitone modulation.
`
`48. Second, the teachings of Petrovic, described below, directly contradict
`
`Dr. Williams’ assertion that the common knowledge of a PHOSITA and
`
`Louttit would suggest the Independent Carrier Reception Limitation.
`
`Petrovic teaches that receivers capable of receiving one tone of a
`
`multitone modulation independent of other tones of the multitone
`
`modulation were more complex and found by computer simulation to
`
`cause high intercarrier interference. It should be noted that Petrovic
`
`specifically references MTel Petition, so Petrovic describes the common
`
`knowledge of a PHOSITA at the time of MTel Petition. Ex. 1007 col. 1 ¶
`
`3 and col. 2 ¶ 4 at 4.
`
`
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`23
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`
`
`
`Id. col. 1 ¶ 3 and col. 2 ¶ 4 at 4. Id. (emphasis added).
`
`49.
`
`I understand that in the Petition it is asserted that Petrovic teaches or
`
`suggests the Independent Carrier Reception Limitation of Claim 5. Paper
`
`1 at 76. The Petition essentially asserts that Petrovic description of an
`
`RF section that receives a signal teaches or suggests the Independent
`
`Carrier Reception Limitation.
`
`50.
`
`In fact, Petrovic explicitly teaches away from the Independent Carrier
`
`Reception Limitation.
`
`51. Since the Independent Carrier Reception Limitation means that a
`
`mobile receiving unit can get all of its information from one carrier, one
`
`carrier must be able to contain information that is independent from the
`
`information of other carriers. In the proposed modulation technique of
`
`Petrovic, however, the information is transmitted using combinations of
`
`the carriers. In particular, Petrovic recites “that during each symbol
`
`
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`24
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`interval a combination of four distinct carriers is on, while other four are
`
`off.” Ex. 1007 col. 2 ¶ 4 at 1. This means that each symbol of an
`
`information signal is carried on more than one carrier. As a result, one
`
`carrier alone cannot provide an information signal to a mobile receiving
`
`unit. Therefore, the proposed modulation technique of Petrovic cannot
`
`teach or suggest the Independent Carrier Reception Limitation.
`
`
`
`Ex. 1007 col. 2 ¶ 4 at 1 (emphasis added).
`
`52. Further, Petrovic more explicitly teaches away from the Independent
`
`Carrier Reception Limitation. Petrovic describes that in an alternative
`
`modulation technique that was considered, called multicarrier on-off
`
`keying (MOOK), all eight carriers would be independently keyed. Id. at
`
`2. If the carriers are independently keyed, the one carrier can provide an
`
`information signal to a mobile receiving unit. However, Petrovic
`
`explicitly rejected this alternative modulation technique because it would
`
`
`
`25
`
`MTel., Exhibit 2001, Juniper v. MTel., Page 25, IPR2017-00640
`
`

`

`“increase the complexity of both transmitters and receivers.” Ex. 1007
`
`col. 2 ¶ 5 at 2.
`
`53. Specifically, with regard to receivers, Petrovic’s alternative receiver
`
`design for MOOK, which would require a battery of filters instead of
`
`simple FFT processing, was rejected “based on computer simulation
`
`which predicted high intercarrier interference.” Ex. 1007 col. 2 ¶ 7 at 2.
`
`Id. col. 2 ¶¶ 5-7 at 2. (emphasis added).
`
`54.
`
`In other words, Petrovic considered a modulation technique that could
`
`allow the Independent Carrier Reception Limitation, but explicitly
`
`
`
`
`
`26
`
`MTel., Exhibit 2001, Juniper v. MTel., Page 26, IPR2017-00640
`
`

`

`rejected it because, at the time of Petrovic, it was thought to be too
`
`complex and was predicted to provide high intercarrier interference.
`
`Therefore, Petrovic cannot teach or suggest the Independent Carrier
`
`Reception Limitation.
`
`55.
`
`It should be noted that this teaching of Petrovic contradicts Dr.
`
`Williams’ assertion that the common knowledge of a PHOSITA and
`
`Louttit would suggest the Independent Carrier Reception Limitation as
`
`described above in ¶ 45.
`
`
`
`56.
`
`I understand that in the Petition it is also asserted that Petrovic teaches
`
`or suggests the Asymmetric Condition Limitation of Claim 5. Paper 1 at
`
`79. Essentially, the Petition asserts that Petrovic’s FIG. 1, shown below
`
`as Petitioner’s Illustration 16, discloses the Asymmetric Condition
`
`Limitation. More specifically it is asserted that the relationship between
`
`the subcarriers of FIG. 1 and the emission mask disclose the Asymmetric
`
`Condition Limitation.
`
`
`
`27
`
`MTel., Exhibit 2001, Juniper v. MTel., Page 27, IPR2017-00640
`
`

`

`
`
`Paper 1 at 81.
`
`57. A PHOSITA would not conclude from Petitioner’s Illustration 16 that
`
`Petrovic teaches or suggests the Asymmetric Condition Limitation,
`
`because the subcarriers of Petrovic’s FIG. 1 are not unmodulated carriers.
`
`Instead, they are modulated carriers. Because they are modulated carriers,
`
`Petrovic’s mask cannot be defined with respect to them. As described
`
`above, the FCC regulations at the time of the ’891 Patent required that a
`
`mask be defined with respect to the unmodulated carriers. This is likely
`
`why Petrovic shows the proposed mask as dotted lines with respect to the
`
`modulated carriers in Petitioner’s Illustration 16.
`
`58. Petrovic explicitly describes that the subcarriers of Petrovic’s FIG. 1
`
`are modulated signals. For example, the title of FIG. 1 is “[s]pectrum of
`
`
`
`28
`
`MTel., Exhibit 2001, Juniper v. MTel., Page 28, IPR2017-00640
`
`

`

`a single symbol repeatedly transmitted.” Ex. 1007 at FIG. 1. Petrovic
`
`also describes turning on an off four subcarriers in each symbol interval
`
`is a type of modulation called permutation modulation. Id. col. 2 ¶ 4 at 1.
`
`Most telling, however, is Petrovic’s description that “[e]ach transmitter
`
`has four subtransmitters capable of 4-FSK over a subset of the 8
`
`frequencies.” Id. col. 2 ¶ 4 at 1. In other words, Petrovic describes that
`
`the 8 subcarriers of FIG. 1 are created from four subtransmitters each
`
`producing a carrier that is modulated with 4-FSK.
`
`59. A PHOSITA would understand that because Petrovic’s subcarriers are
`
`modulated carriers and not unmodulated carriers, Petrovic cannot teach
`
`or suggest the Asymmetric Condition Limitation. This is because the
`
`Asymmetric Condition Limitation requires the center frequencies of the
`
`unmodulated carriers. The center frequencies of the unmodulated
`
`carriers of Petrovic are unknown, because Petrovic does not specify how
`
`exactly the subcarriers of FIG. 1 are modulated.
`
`60. The figure from Appendix C showing an example of a carrier
`
`modulated according to 4-FSK is shown again below. In this figure, the
`
`unmodulated carrier with a center frequency at 10 Hz, is frequency
`
`shifted, producing 4 modulated peaks at 7, 9, 11 and 13 Hz. The 4
`
`modulated peaks are, for example, four subcarriers.
`
`
`
`29
`
`MTel., Exhibit 2001, Juniper v. MTel., Page 29, IPR2017-00640
`
`

`

`
`
`A PHOSITA would compare this figure with FIG. 1 of Petrovic, shown
`
`below, and Petrovic’s description that “[e]ach transmitter has four
`
`subtransmitters capable of 4-FSK over a subset of the 8 frequencies.” Id.
`
`col. 2 ¶ 4 at 1.
`
`
`
`Ex. 1007 at FIG. 1.
`
`61. A PHOSITA would conclude from this comparison that FIG. 1 of
`
`Petrovic is showing a combination of 4 carriers, each modulated with 4-
`
`FSK. However, Petrovic explicitly, says that each subtransmitter is
`
`
`
`30
`
`MTel., Exhibit 2001, Juniper v. MTel., Page 30, IPR2017-00640
`
`

`

`capable of 4-FSK over a subset of the 8 frequencies. As a result, a
`
`PHOSITA would not be able to determine what subset of the 8
`
`frequencies each subtransmitter is producing with the 4-FSK. In other
`
`words, a PHOSITA would not be able to determine the center frequencies
`
`of the actual unmodulated carriers used. As a result, a PHOSITA would
`
`not be able to determine that Petrovic teaches or suggests the
`
`Asymmetric Condition Limitation.
`
`62. However, a PHOSITA would definitely be able to say that FIG. 1
`
`alone does not teach or suggest the Asymmetric Condition Limitation,
`
`because the center frequencies of the actual unmodulated carriers cannot
`
`be discerned from FIG. 1.
`
`63.
`
`I have also reviewed dependent claims 2 and 4 of the ’891 Patent. In
`
`my opinion, a PHOSITA would understand that claim 2 requires that
`
`adjacent carriers overlap, i.e. if two carriers are adjacent, they must
`
`overlap to meet this claim limitation. Similarly, a PHOSITA would
`
`understand that claim 4 requires that adjacent subchannels overlap, i.e. if
`
`two subchannels are adjacent, they must overlap to meet this claim
`
`limitation.
`
`
`
`31
`
`MTel., Exhibit 2001, Juniper v. MTel., Page 31, IPR2017-00640
`
`

`

`64.
`
`I have reviewed the Fig. 1 in the MTel Petition, reproduced and
`
`annotated by Petitioner as Illustration 7, and reproduced the same, in part,
`
`below.
`
`
`In the above reproduction of Petitioner’s Illustration 7, a PHOSITA
`
`65.
`
`would consider the following pairs of carriers to be adjacent to each other:
`
`[1, 2]; [2, 3]; [3, 4]; [4, 5]; [5, 6]; [6, 7]; and [7, 8]. As is clearly visible
`
`in the above illustration, adjacent carriers 4 and 5 do not overlap.
`
`Therefore, they do not meet the limitations of claim 2. Similarly. a
`
`PHOSITA would consider the following pairs of corresponding
`
`subchannels to be adjacent to each other: [1, 2]; [2, 3]; [3, 4]; [4, 5]; [5,
`
`6]; [6, 7]; and [7, 8]. As is clearly visible in the above illustration,
`
`adjacent subchannels 4 and 5 do not overlap.
`
`66. A PHOSITA would further understand that the MTel Petition
`
`discloses that the pilot tone is required and that removal of the pilot tone
`
`would render the system non-functional: “In addition, for multitone
`
`
`
`32
`
`MTel., Exhibit 2001, Juniper v. MTel., Page 32, IPR2017-00640
`
`

`

`on/off keying (‘MOOK’) modulation schemes, additional spectrum also
`
`is required for a ‘pilot’ tone in the center of the tone band.” Ex. 1005 at
`
`19.
`
`67. Petitioner’s Illustration 8, reproduced below in part, shows an
`
`identification of the subchannel corresponding to carrier 1. Extrapolating
`
`this to carriers 4 and 5, and corresponding subchannels 4 and 5, a
`
`PHOSITA would understand that subchannels 4 and 5, while directly
`
`adjacent, do not overlap.
`
`
`I have annotated Petitioner’s illustration 8 to show subchannels 4 and
`
`68.
`
`5 below. As is clearly visible in the diagram, these subchannels do not
`
`overlap.
`
`
`
`33
`
`MTel., Exhibit 2001, Juniper v. MTel., Page 33, IPR2017

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