`
`
`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
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`declaration for Mobile Telecommunications Technologies LLC (MTel”),
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`offering technical opinions in connection with the above-referenced Inter
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`Partes Review (IPR) proceeding pending in the United States Patent and
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`Trademark Office for U.S. Patent No. 5,659,891 (the “’891 Patent”), and
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`prior art references relating to its subject matter. My current curriculum
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`vitae is attached as Appendix A.
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`2.
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`I also provide selected background information here relevant to
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`myself, my experience, and this proceeding.
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`3.
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`I am a Professor at the University of Illinois at Urbana-Champaign,
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`where I am appointed in the College of Law, the Department of Electrical
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`and Computer Engineering, the Coordinated Science Laboratory, and the
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`Information Trust Institute. I have a Ph.D. in Electrical and Computer
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`Engineering from the University of Texas at Austin and a J.D., summa
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`1
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`MTel., Exhibit 2001, Juniper v. MTel., Page 1, IPR2017-00640
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`
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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
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`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
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`been appointed to serve as a Special Master in patent disputes.
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`Additionally, I have been appointed as a Thomas Edison Scholar at the
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`United States Patent and Trademark Office (“USPTO”).
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`4. My opinions in this report are based on my experience and expertise
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`in the field relevant to the Asserted Patents. To prepare this Report, I
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`have reviewed and considered materials shown in Appendix B and
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`referred to herein, principally including the ‘891 Patent, the MTel
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`Petition, ‘960 Publication, and Petrovic references, and the extrinsic
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`evidence cited.
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`5.
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`I anticipate using some of the above-referenced documents and
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`information, or other information and material that may be produced
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`during the course of this proceeding (such as by deposition testimony), as
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`well as representative charts, graphs, schematics and diagrams,
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`animations, and models that will be based on those documents,
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`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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`
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`2
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`MTel., Exhibit 2001, Juniper v. MTel., Page 2, IPR2017-00640
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`
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`6. This report is based on information currently available to me. To the
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`extent that additional information becomes available (whether from
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`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
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`to continue the investigation and study. I may thus expand or modify my
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`opinions as that investigation and study continues. I may also
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`supplement my opinions in response to such additional information that
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`becomes available to me, any matters raised by and/or opinions provided
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`by MTel’s experts, or in light of any relevant orders from the Board.
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`7. Throughout this report, I cite to certain documents or testimony that
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`support my opinions. These citations are not intended to be and are not
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`exhaustive examples. Citation to documents or testimony is not intended
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`to signify and does not signify that my expert opinions are limited by or
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`based solely on the cited sources.
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`8.
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`I am an attorney, registered to practice before the United States Patent
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`and Trademark Office, and a legal expert in United States Patent Law.
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`9. A person of ordinary skill in the art at the time of the invention
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`(PHOSITA) of the ’891 Patent would possess a bachelor’s degree in
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`electrical or its equivalent and about four years working in the field of
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`wireless telecommunications networks, or the equivalent.
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`
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`3
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`MTel., Exhibit 2001, Juniper v. MTel., Page 3, IPR2017-00640
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`
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`10.
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`Independent Claims 1, 3, and 5 of the ‘891 Patent are challenged in
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`the Petition in the above referenced IPR.
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`11. Claim 1 recites transmitting a plurality of paging carriers “from the
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`same location.” Claim 3 recites transmitting at least two paging carriers
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`“from the same location.” As a result, both Claims 1 and 3 recite
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`transmitting multiple carriers from the same location.
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`12. FIGs. 1 and 2 of the ‘891 Patent, reproduced below, show that all of
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`the paging carriers emanate from the same location or antenna (antennas
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`15 and 25, respectively).
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`Ex. 1001 at FIG. 1.
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`
`
`
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`4
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`MTel., Exhibit 2001, Juniper v. MTel., Page 4, IPR2017-00640
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`
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`Id. at FIG. 2.
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`13. A PHOSITA, therefore, would understand that, according to the ‘891
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`Patent, transmitting multiple carriers from the same location means that
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`“the multiple paging carriers emanate from the same location or
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`antenna.” This limitation can be referred to as the Same Location
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`Limitation.
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`14. Claim 5 recites “a plurality of mobile receiving units independently
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`receiving one of said plurality of carriers.”
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`15. The Specification of the ’891 Patent also describes “independent
`
`receiving units capable of receiving one of said plurality of carriers.” Ex.
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`1001 at 2:53-54.
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`
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`5
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`MTel., Exhibit 2001, Juniper v. MTel., Page 5, IPR2017-00640
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`
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`
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`Ex. 1001 at 2:47-59 (emphasis added).
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`16. From the plain language of the claim and Specification, a PHOSITA
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`would understand that “a plurality of mobile receiving units
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`independently receiving one of said plurality of carriers” means “a
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`mobile receiving unit is capable of receiving one carrier of the plurality
`
`of carriers independent from the other carriers of the plurality of
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`carriers.” This limitation can be referred to as the Independent Carrier
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`Reception Limitation.
`
`17. Claims 1, 3, and 5 recite 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 defining said channel is more than half the frequency difference
`
`between the center frequencies of each adjacent carrier.” This limitation
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`can be called the Asymmetric Condition Limitation. I have previously
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`
`
`6
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`MTel., Exhibit 2001, Juniper v. MTel., Page 6, IPR2017-00640
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`
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`described the asymmetric condition of the ’891 Patent in IPR2016-00768
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`(the “ARRIS IPR”). See Ex. 2003 at 40-42.
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`18. The petitioner in the ARRIS IPR provided extrinsic evidence that can
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`be used in the construction of the Asymmetric Condition Limitation.
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`That petitioner asserts that FCC specifications state that “the mask itself
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`is defined relative to the total power of the unmodulated carrier,” citing
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`47 C.F.R. §22.106 (1994). Ex. 2002 at 11. 47 C.F.R. §22.106(b) (1994)
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`provides that “the power of any emission shall be attenuated below the
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`unmodulated carrier power (P).” Ex. 1002 at 82. (emphasis added).
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`
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`Ex. 1002 at 82. (emphasis added).
`
`19.
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`47 C.F.R. §22.106(b) (1994) provides that the “measurements of
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`emission power can be expressed in peak or average values provided they
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`are expressed in the same parameters as the unmodulated transmitter
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`carrier power.” Ex. 1002 at 82. (emphasis added).
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`
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`
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`7
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`MTel., Exhibit 2001, Juniper v. MTel., Page 7, IPR2017-00640
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`
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`Ex. 1002 at 82. (emphasis added).
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`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
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`to the unmodulated carriers. The Asymmetric Condition Limitation of
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`Claims 1, 3, and 5 is a condition that defines a mask with respect to the
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`center frequencies of carriers. Therefore, the mask of the Asymmetric
`
`Condition Limitation must be defined relative to the center frequencies of
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`the unmodulated carriers.
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`21. The Specification of the ‘891 Patent also supports defining the mask
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`relative to the center frequencies of the unmodulated carriers. For
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`example, FIG. 5A, shown below shows two modulated carriers of the
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`‘891 Patent.
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`
`
`8
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`
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`MTel., Exhibit 2001, Juniper v. MTel., Page 8, IPR2017-00640
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`
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`Ex. 1001 at FIG. 5A.
`
`FIG. 5A describes that its 2 modulated carriers have a frequency
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`deviation of 2400 HZ and center frequencies at ± 4590. From the
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`frequency deviation, a PHOSITA would understand that that the
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`modulation is frequency shift keying (FSK), or more specifically, 2-FSK.
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`2-FSK is depicted below in this figure from Appendix C.
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`
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`In this figure, the unmodulated carrier with a center frequency at 1 Hz, is
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`frequency shifted, producing 2 modulated peaks at 0.9 Hz and 1.1 Hz.
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`Similarly, FIG. 5A actually depicts 2 modulated peaks in each of the 2
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`modulated carriers. The modulated peaks in FIG. 5A are each shifted ±
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`2400 HZ from the center frequencies at ± 4590 Hz. Thus, even though
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`FIG. 5A has 4 modulated peaks shifted ± 2400 HZ from the center
`
`frequencies at ± 4590 Hz, the center frequencies of the 2 modulated
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`carriers are still ± 4590 Hz, which are the center frequencies of the
`9
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`
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`MTel., Exhibit 2001, Juniper v. MTel., Page 9, IPR2017-00640
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`
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`unmodulated carriers. As a result, even though Claim 5, for example,
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`refers to “modulated” carriers, the center frequencies of these carriers are
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`still the center frequencies of the unmodulated carriers and not the center
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`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.
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`23. MTel Petition is directed to rulemaking petition to the Federal
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`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
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`carriers to operate in a new Nationwide Wireless Network (‘NWN’)
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`Service. Three nationwide licensees should be authorized. Each of these
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`licensees would employ a 50 kHz channel in the 930-931 MHz band for a
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`two-way, high speed messaging service to portable terminals.
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`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:
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`• Nationwide determination of the relative location of subscribers;
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` Two-way and one-way high speed data communications;
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` •
`
` •
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` Wide area coverage expandable in a straightforward and economic
`fashion using proven simulcast techniques;
`
`
`
`10
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`MTel., Exhibit 2001, Juniper v. MTel., Page 10, IPR2017-00640
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`
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` Spectrum efficient enhanced multitone modulation; and,
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` Large regional zoning for capacity re-use.” Ex. 1005 at iv.
`
` •
`
` •
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`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.
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`Paper 1 at 27. The Petition makes this assertion based on disclosures in
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`MTel Petition (1) that the NWN system includes “wide area transmitters”
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`that “send message data to individual user terminals slaved to the base
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`station transmitters” and (2) the NWN system includes a modulation
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`scheme in which 8 tones and a pilot tone are transmitted in a 50 kHz
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`channel. See Ex. 1005 at A3 and 19.
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`25. MTel Petition does not teach or suggest that its multiple tones
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`emanate from the same location or antenna. MTel Petition does not even
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`describe where its wide area transmitters are located. In fact, in MTel
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`Petition, the only reference to the word “location” in conjunction with
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`transmitters is in the passage shown below. This passage certainly does
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`not teach or suggest the Same Location Limitation.
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`
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`Ex. 1005 at C2 (emphasis added).
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`
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`11
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`MTel., Exhibit 2001, Juniper v. MTel., Page 11, IPR2017-00640
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`
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`26. MTel Petition also does not describe if one transmitter at a single
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`location transmits all of the tones of the multitone modulation scheme or
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`if different transmitters at different locations transmit each tone of the
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`multitone modulation scheme. MTel Petition provides no description of
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`its transmitters with respect to tones. As a result, a PHOSITA would not
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`conclude that MTel Petition teaches or suggests the Same Location
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`Limitation.
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`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
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`description of proposed multitones in FIG. 1, shown below, with MTel
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`Petition’s description of a proposed FCC mask, also shown below.
`
`Ex. 1005 at FIG. 1.
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`
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`12
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`
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`MTel., Exhibit 2001, Juniper v. MTel., Page 12, IPR2017-00640
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`
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`Id. at FIG. 24.
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`28. Dr. Williams has drawn MTel Petition’s proposed FCC mask on top
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`of MTel Petition’s proposed multitones in FIG. 1 as shown below in
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`Petitioner’s Illustration 6. The Petition essentially finds that this
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`combination meets the Asymmetric Condition Limitation of Claims 1 3,
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`and 5.
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`
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`13
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`
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`MTel., Exhibit 2001, Juniper v. MTel., Page 13, IPR2017-00640
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`
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`Paper 1 at 34.
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`29. A PHOSITA would not conclude from Petitioner’s Illustration 6 that
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`MTel Petition teaches or suggests the Asymmetric Condition Limitation,
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`because the multitones of MTel Petition’s FIG. 1 are not unmodulated
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`carriers. Instead, they are modulated carriers. Because they are
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`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
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`respect to the multitones as shown in Petitioner’s Illustration 6.
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`30. MTel Petition explicitly describes that the multitones of MTel
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`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
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`simulcast network.” Ex. 1005 at A6. MTel Petition then goes on to
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`describe many different modulation techniques for tone signaling, as
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`shown below.
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`
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`14
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`MTel., Exhibit 2001, Juniper v. MTel., Page 14, IPR2017-00640
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`
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`Ex. 1005 at A6.
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`Because the multitones of MTel Petition’s FIG. 1 are modulated signals,
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`MTel Petition never refers to these signals as carriers.
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`
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`
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`15
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`MTel., Exhibit 2001, Juniper v. MTel., Page 15, IPR2017-00640
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`
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`31. A PHOSITA would understand that because MTel Petition’s
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`multitones are modulated carriers and not unmodulated carriers, MTel
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`Petition cannot teach or suggest the Asymmetric Condition Limitation.
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`This is because the Asymmetric Condition Limitation requires the center
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`frequencies of the unmodulated carriers. The center frequencies of the
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`unmodulated carriers of MTel Petition are unknown, because MTel
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`Petition does not specify how exactly the tones of FIG. 1 are modulated.
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`I note again that Claim 5 explicitly calls carriers “modulated carriers.”
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`However a PHOSITA would understand the center frequency of a
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`modulated carrier, modulated with FSK for example, is the center
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`frequency of the unmodulated carrier and not the center frequency of the
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`modulated peaks of the modulated carrier.
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`32. MTel Petition, for example, considers multitone variants of frequency
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`shift keying (FSK) for tone signaling or modulation. Ex. 1005 at A6. I
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`have previously discussed FSK. See Ex. 2003 at 58. I have also recently
`
`refreshed my recollection on multitone variants of FSK describe as 2-
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`FSK, 4-FSK, 8-FSK,…, n-FSK. Appendix C, attached hereto, is an
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`article from the learned periodical, RF Wireless World, describing the
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`difference between 2-FSK - 4-FSK.
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`
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`16
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`MTel., Exhibit 2001, Juniper v. MTel., Page 16, IPR2017-00640
`
`
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`33. The figure below from Appendix C shows an example of a carrier
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`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.
`
`
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`34. The figure below from Appendix C shows an example of a carrier
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`modulated according to 4-FSK. In this figure, the unmodulated carrier
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`with a center frequency at 10 Hz, is frequency shifted, producing 4
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`modulated peaks at 7, 9, 11 and 13 Hz. The 4 modulated peaks are, for
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`example, four tones.
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`
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`17
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`MTel., Exhibit 2001, Juniper v. MTel., Page 17, IPR2017-00640
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`
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`
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`35. MTel Petition’s FIG. 1 is shown again below. Without knowing the
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`actual modulating technique used to produce the tones of FIG. 1, a
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`PHOSITA could not determine the center frequencies of the unmodulated
`
`carriers. If, however, for example, it was known that this was 8-FSK,
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`then there would be one carrier at displacement 0, and the 8 tones would
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`be the 8 modulated peaks. In this scenario, the Asymmetric Condition
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`Limitation certainly would not be met by FIG. 1, because there are no
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`adjacent carriers.
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`
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`18
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`MTel., Exhibit 2001, Juniper v. MTel., Page 18, IPR2017-00640
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`
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`Ex. 1005 at FIG. 1.
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`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
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`communication between a system network and a mobile unit. The
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`system network includes a plurality of base transmitters and base
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`receivers included in the network. The base transmitters are divided into
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`zonal assignments and broadcast in simulcast using multi-carrier
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`modulation techniques. The system network controls the base
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`transmitters to broadcast in simulcast during both systemwide and zonal
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`time intervals. The system network dynamically alters zone boundaries
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`to maximize information throughput. The system also uses a mobile unit
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`
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`19
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`MTel., Exhibit 2001, Juniper v. MTel., Page 19, IPR2017-00640
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`
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`which receives messages from the network and transmits messages to the
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`network. The mobile unit includes a switch that allows a user to request
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`the network to retransmit a received message that contains errors. Ex.
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`1006 at Abstract.
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`38. Petrovic is directed to a multicarrier permutation modulation
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`technique that can be used in simulcast networks with high power
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`transmitters. Ex. 1007 at Abstract.
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`39. Reference is made to previous paging systems. The bandwidth of
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`these systems is described as being 25 kHz.
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`Ex. 1007 col. 1, ¶ 2 at 1 (emphasis added).
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`40. Petrovic then proposes doubling the channel bandwidth as described
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`
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`below.
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`
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`20
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`MTel., Exhibit 2001, Juniper v. MTel., Page 20, IPR2017-00640
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`
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`Ex. 1007 col. 2, ¶ 3 at 1 (emphasis added).
`
`41. The bandwidth is doubled by moving the current emission mask
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`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
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`50 kHz. The additional ±12.5 kHz on either side also includes ±7.5 kHz
`
`of guard bands.
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`42. The technique disclosed by Petrovic involves “eight subcarriers
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`spaced 5 kHz apart, so that there is exactly 35 kHz spacing between end
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`subcarriers.” Ex. 1007 col. 2, ¶ 4 at 1. However, Petrovic specifically
`
`discloses that “we propose that during each symbol interval a
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`combination of four distinct carriers is ON, while other four are OFF.”
`
`Id. (reproduced below).
`
`43.
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`In other words, when functioning, only four (4) carriers are turned
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`“ON,” while the other four (4) carriers are turned “OFF.”’ This point is
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`
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`21
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`MTel., Exhibit 2001, Juniper v. MTel., Page 21, IPR2017-00640
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`
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`also shown above in Annotation 6 of FIG. 1, where only four (4) carriers
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`are shown within the 50 kHz channel bandwidth.
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`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
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`“multitoned” in MTel Petition are with respect to transmission and not
`
`reception. For example, the Petition says MTel Petition discloses that in
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`“the NWN system ‘a pilot tone’ may be used to ‘establish an “on”
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`threshold for the baud interval’ and then the ‘data are transmitted by
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`keying the remaining tones.’” Paper 1 at 60 (emphasis added). These
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`references are clearly directed to transmission only.
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`
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`22
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`MTel., Exhibit 2001, Juniper v. MTel., Page 22, IPR2017-00640
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`
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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
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`MTel Petition suggests the Independent Carrier Reception Limitation.
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`Paper 1 at 63.
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`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
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`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 ¶
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`3 and col. 2 ¶ 4 at 4.
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`
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`23
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`MTel., Exhibit 2001, Juniper v. MTel., Page 23, IPR2017-00640
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`
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`
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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.
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`50.
`
`In fact, Petrovic explicitly teaches away from the Independent Carrier
`
`Reception Limitation.
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`51. Since the Independent Carrier Reception Limitation means that a
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`mobile receiving unit can get all of its information from one carrier, one
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`carrier must be able to contain information that is independent from the
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`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
`
`
`
`24
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`MTel., Exhibit 2001, Juniper v. MTel., Page 24, IPR2017-00640
`
`
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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
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`information signal is carried on more than one carrier. As a result, one
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`carrier alone cannot provide an information signal to a mobile receiving
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`unit. Therefore, the proposed modulation technique of Petrovic cannot
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`teach or suggest the Independent Carrier Reception Limitation.
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`
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`Ex. 1007 col. 2 ¶ 4 at 1 (emphasis added).
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`52. Further, Petrovic more explicitly teaches away from the Independent
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`Carrier Reception Limitation. Petrovic describes that in an alternative
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`modulation technique that was considered, called multicarrier on-off
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`keying (MOOK), all eight carriers would be independently keyed. Id. at
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`2. If the carriers are independently keyed, the one carrier can provide an
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`information signal to a mobile receiving unit. However, Petrovic
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`explicitly rejected this alternative modulation technique because it would
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`25
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`“increase the complexity of both transmitters and receivers.” Ex. 1007
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`col. 2 ¶ 5 at 2.
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`53. Specifically, with regard to receivers, Petrovic’s alternative receiver
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`design for MOOK, which would require a battery of filters instead of
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`simple FFT processing, was rejected “based on computer simulation
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`which predicted high intercarrier interference.” Ex. 1007 col. 2 ¶ 7 at 2.
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`Id. col. 2 ¶¶ 5-7 at 2. (emphasis added).
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`54.
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`In other words, Petrovic considered a modulation technique that could
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`allow the Independent Carrier Reception Limitation, but explicitly
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`
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`26
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`rejected it because, at the time of Petrovic, it was thought to be too
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`complex and was predicted to provide high intercarrier interference.
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`Therefore, Petrovic cannot teach or suggest the Independent Carrier
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`Reception Limitation.
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`55.
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`It should be noted that this teaching of Petrovic contradicts Dr.
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`Williams’ assertion that the common knowledge of a PHOSITA and
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`Louttit would suggest the Independent Carrier Reception Limitation as
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`described above in ¶ 45.
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`
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`56.
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`I understand that in the Petition it is also asserted that Petrovic teaches
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`or suggests the Asymmetric Condition Limitation of Claim 5. Paper 1 at
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`79. Essentially, the Petition asserts that Petrovic’s FIG. 1, shown below
`
`as Petitioner’s Illustration 16, discloses the Asymmetric Condition
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`Limitation. More specifically it is asserted that the relationship between
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`the subcarriers of FIG. 1 and the emission mask disclose the Asymmetric
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`Condition Limitation.
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`
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`27
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`Paper 1 at 81.
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`57. A PHOSITA would not conclude from Petitioner’s Illustration 16 that
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`Petrovic teaches or suggests the Asymmetric Condition Limitation,
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`because the subcarriers of Petrovic’s FIG. 1 are not unmodulated carriers.
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`Instead, they are modulated carriers. Because they are modulated carriers,
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`Petrovic’s mask cannot be defined with respect to them. As described
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`above, the FCC regulations at the time of the ’891 Patent required that a
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`mask be defined with respect to the unmodulated carriers. This is likely
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`why Petrovic shows the proposed mask as dotted lines with respect to the
`
`modulated carriers in Petitioner’s Illustration 16.
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`58. Petrovic explicitly describes that the subcarriers of Petrovic’s FIG. 1
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`are modulated signals. For example, the title of FIG. 1 is “[s]pectrum of
`
`
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`28
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`
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`a single symbol repeatedly transmitted.” Ex. 1007 at FIG. 1. Petrovic
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`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.
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`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
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`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
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`Asymmetric Condition Limitation requires the center frequencies of the
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`unmodulated carriers. The center frequencies of the unmodulated
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`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
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`modulated according to 4-FSK is shown again below. In this figure, the
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`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.
`
`
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`29
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`
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`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.
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`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
`
`
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`30
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`
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`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.
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`
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`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
`
`
`
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`
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`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.
`
`
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