UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`JUNIPER NETWORKS, INC., BROCADE COMMUNICATIONS SYS., INC.,
`AND RUCKUS WIRELESS, INC.
`Petitioner
`
`v.
`
`
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
`
`____________
`
`
`
`Case IPR2017-00640
`Patent 5,659,891
`
`____________
`
`
`
`PATENT OWNER MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC’S CORRECTED PRELIMINARY RESPONSE
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`
`BACKGROUND ............................................................................................. 1 
`I.
`INTRODUCTION ........................................................................................... 2 
`II.
`III. PROPER CLAIM CONSTRUCTION ............................................................ 5 
`A.
`Rules Governing Claim Construction – The Phillips Standard
`Governs. ................................................................................................ 5 
`1.
`A person of ordinary skill in the art would have the
`following qualifications. ............................................................. 5 
`The ‘891 Patent has expired so the Phillips standard
`governs. ....................................................................................... 5 
`i. When construing claim terms look to claims
`themselves and then the specification. ............................. 6 
`Limitations from the specification can be read into
`the claims. ......................................................................... 6 
`iii.
`Extrinsic evidence can be relied upon. ............................. 7 
`Construction of Independent Claim Terms ........................................... 8 
`1.
`Claims 1 and 3 – Same Location Limitation – The
`limitation of transmitting the plurality of paging carriers
`or at least two paging carriers “from the same location”
`means that “the multiple paging carriers emanate from
`the same location or antenna.” .................................................... 8 
`Claim 5 – Independent Carrier Reception Limitation –
`The limitation of “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.” .......................... 11 
`Claims 2 and 4 – adjacent [carriers/subchannels] overlap
`with each other. ......................................................................... 13 
`Claims 1, 3, and 5 – Asymmetric Condition Limitation –
`This limitation means that “the frequency difference
`between the center frequency of the outer most of said
`
`ii.
`
`B.
`
`2.
`
`2.
`
`3.
`
`4.
`
`i
`
`

`

`
`
`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
`where the mask is defined relative to the center
`frequencies of the unmodulated carriers.” ............................... 14 
`i.
`The asymmetric condition of the ’891 Patent,
`requires that Dm > Dc. ..................................................... 19 
`IV. REFERENCES RELIED UPON BY PETITIONER .................................... 21 
`A. MTel Petition ....................................................................................... 21 
`B.
`‘960 Publication .................................................................................. 22 
`C.
`Petrovic................................................................................................ 22 
`V. GROUND 1 – CLAIMS 1-4 ARE NOT OBVIOUS OVER MTEL
`PETITION. ..................................................................................................... 25 
`A. A patent claim is obvious only if all of its limitations are taught
`or suggested by prior art and combined in a manner that
`contains articulated reasoning and a rational underpinning. ............... 25 
`B. MTel Petition does not teach or suggest all of the claim
`limitations of independent Claims 1 and 3. ......................................... 26 
`1. MTel Petition does not teach or suggest the Same
`Location Limitation of independent Claims 1 and 3, so
`Claims 1 and 3 are not rendered obvious. ................................. 26 
`2. MTel Petition does not teach or suggest the Asymmetric
`Condition Limitation of independent Claims 1 and 3, so
`Claims 1 and 3 are not rendered obvious. ................................. 31 
`Dependent Claims 2-4 are not rendered obvious by MTel
`Petition, because independent Claims 1 and 3 are not
`rendered obvious by MTel Petition. .......................................... 38 
`VI. GROUND 2 – CLAIM 5 IS NOT OBVIOUS OVER MTEL
`PETITION IN VIEW OF ‘960 PUBLICATION. ........................................... 40 
`A. A patent claim is obvious only if all of its limitations are taught
`or suggested by prior art and combined in a manner that
`contains articulated reasoning and a rational underpinning. ............... 40 
`
`3.
`
`ii
`
`

`

`
`
`B. MTel Petition in view of ‘960 Publication does not teach or
`suggest all the claim limitations of Claim 5, so Claim 5 is not
`rendered obvious. ................................................................................ 41 
`1.
`Neither MTel Petition nor ‘960 Publication teaches or
`suggests the Independent Carrier Reception Limitation of
`Claim 5, so Claim 5 is not rendered obvious. ........................... 41 
`Neither MTel Petition nor ‘960 Publication teaches or
`suggests the Asymmetric Condition Limitation of Claim
`5, so Claim 5 is not rendered obvious. ...................................... 49 
`VII. GROUND 3 – CLAIM 5 IS NOT OBVIOUS OVER PETROVIC IN
`VIEW OF MTEL PETITION. ........................................................................ 50 
`A. A patent claim is obvious only if all of its limitations are taught
`or suggested by prior art and combined in a manner that
`contains articulated reasoning and a rational underpinning. ............... 50 
`Petrovic in view of MTel Petition does not teach or suggest all
`the claim limitations of Claim 5, so Claim 5 is not rendered
`obvious. ............................................................................................... 51 
`1.
`Neither Petrovic nor MTel Petition teaches or suggests
`the Independent Carrier Reception Limitation of Claim 5,
`so Claim 5 is not rendered obvious. .......................................... 51 
`Neither Petrovic nor MTel Petition teaches or suggests
`the Asymmetric Condition Limitation of Claim 5, so
`Claim 5 is not rendered obvious. .............................................. 57 
`VIII. CONCLUSION .............................................................................................. 62 
`
`B.
`
`2.
`
`2.
`
`iii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES 
`Ex parte Frye, 94 USPQ 2d 1072, 1076 (BPAI 2010) ............................... 25, 40, 51
`Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986) ................ 6
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 70 USPQ2d 1827 (Fed.
`Cir. 2004) .............................................................................................................. 7
`In re Kahn, 41 F.3d 977, 988 (Fed. Cir. 2006) ........................................... 25, 40, 51
`In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) ............................. 7
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ........................... 25, 40, 51
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ................................. passim
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) .... 7, 15
`Vitrionics Corp. v. Conceptronic, 90 F.3d 1576 (Fed. Cir. 1996) .........................6, 8
`OTHER AUTHORITIES 
`35 United States Code § 103 ...................................................................................... 1
`37 C.F.R. § 42.100 ..................................................................................................... 1
`37 C.F.R. § 42.107 ..................................................................................................... 2
`Manual of Patent Examining Procedure § 2111.01 ................................................... 7
`Manual of Patent Examining Procedure § 2558 ........................................................ 5
`
`
`
`
`iv
`
`

`

`
`
`2001.
`2002.
`2003.
`2004.
`
`PATENT OWNER EXHIBIT LIST
`Declaration of Dr. Jay P. Kesan in this IPR.
`Petitioner’s reply in IPR2016-00768 (the “ARRIS IPR”).
`Declaration of Dr. Jay P. Kesan in the ARRIS IPR.
`Rough Draft of Transcript of Teleconference of June 9, 2017.
`
`
`
`
`v
`
`

`

`
`I.
`
`BACKGROUND
`
`On January 10, 2017, Petitioners Juniper Networks, Inc., Brocade
`
`Communications Sys., Inc., and Ruckus Wireless, Inc. (“Juniper” or “Petitioner”)
`
`filed a Petition for Inter Partes Review under 37 C.F.R. § 42.100, requesting inter
`
`partes review of Claims 1-5 of U.S. Patent No. 5,659,891 (“the ‘891 Patent”).
`
`Petitioner asserts that Claims 1-5 of the ’891 Patent are unpatentable over the
`
`following references under 35 U.S.C. § 103:
`
`Ground 1 – Claims 1-4 as obvious over In the Matter of Mobile
`
`Telecommunication Technologies Corporation, Petition for Rulemaking,
`
`dated November 12, 1991 (Exhibit 1005, “MTel Petition”);
`
`Ground 2 – Claim 5 as obvious over MTel Petition in view of PCT
`
`Publication WO9411960 (Exhibit 1006, “‘960 Publication”); and
`
`Ground 3 – Claim 5 as obvious over Dr. Rade Petrovic, et al., Permutation
`
`Modulation
`
`for Advanced Radio Paging,
`
`IEEE Proceedings of
`
`SoutheastCom ’93 (Apr. 7, 1993) (Exhibit 1007, “Petrovic”) in view of
`
`MTel Petition.
`
`The ‘891 Patent, entitled “Multicarrier Techniques
`
`in Bandlimited
`
`Channels,” was filed on June 7, 1995, and issued on August 19, 1997. The ‘891
`
`Patent has expired.
`
`1
`
`

`

`
`II.
`
`INTRODUCTION
`
`Patent Owner, Mobile Telecommunications Technologies, LLC, submits this
`
`Preliminary Response (“Preliminary Response”) to the Petition for Inter Partes
`
`Review of Claims 1-5 of the ‘891 Patent. 37 C.F.R. § 42.107.
`
`Patent Owner respectfully requests that the Board deny the Petition on every
`
`ground alleged by Petitioner for, at least, the following reasons.
`
`In regard to Ground 1, Claims 1-4 are not obvious over MTel Petition,
`
`because all of the claim limitations of independent Claims 1 and 3 are not taught or
`
`suggested by this reference. First, MTel Petition does not teach or suggest that
`
`“the multiple paging carriers emanate from the same location or antenna,” which is
`
`described below as the Same Location Limitation. MTel Petition does not disclose
`
`or suggest the Same Location Limitation, because there is no evidence or
`
`suggestion in MTel Petition that each of the tones of the multitone modulation
`
`scheme of MTel Petition is transmitted from the same location.
`
`Second, MTel Petition does not teach or suggest 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 where the mask
`
`is defined relative to the center frequencies of the unmodulated carriers,” which is
`
`described below as the Asymmetric Condition Limitation. MTel Petition does not
`
`
`
`2
`
`

`

`
`disclose or suggest the Asymmetric Condition Limitation, because MTel Petition’s
`
`multitones are modulated carriers and not unmodulated carriers as required by the
`
`limitation.
`
`Thus, independent Claims 1 and 3 of the ‘891 Patent are not obvious over
`
`MTel Petition.
`
`Dependent Claims 2 and 4 are not rendered obvious by MTel Petition,
`
`because independent Claims 1 and 3, from which they depend respectively, are not
`
`rendered obvious by MTel Petition and because of the additional features they
`
`recite. Dependent Claims 2 and 4 are not rendered obvious by MTel Petition,
`
`because it does not disclose that all adjacent carriers or subchannels overlap.
`
`In regard to Ground 2, Claim 5 is not obvious over MTel Petition in view of
`
`‘960 Publication, because all of the claim limitations of Claim 5 are not taught or
`
`suggested by theses references. First, MTel Petition does not teach or suggest that
`
`“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,” which is
`
`described below as the Independent Carrier Reception Limitation. MTel Petition
`
`does not disclose or suggest the Independent Carrier Reception Limitation, because
`
`there is no evidence or suggestion in MTel Petition a user terminal is capable of
`
`receiving one tone of a multitone modulation independent of other tones of the
`
`multitone modulation. ‘960 Publication does not cure the defect of MTel Petition.
`
`
`
`3
`
`

`

`
`
`Second, as just described with regard to Ground 1, MTel Petition also does
`
`not disclose or suggest the Asymmetric Condition Limitation, because MTel
`
`Petition’s multitones are modulated carriers and not unmodulated carriers as
`
`required by the limitation.
`
`Thus, independent Claim 5 the ‘891 Patent is not obvious over MTel Petition
`
`in view of ‘960 Publication.
`
`In regard to Ground 3, Claim 5 is not obvious over Petrovic in view of MTel
`
`Petition, because all of the claim limitations of Claim 5 are not taught or suggested
`
`by theses references. First, Petrovic does not teach or suggest the Independent
`
`Carrier Reception Limitation. Petrovic does not teach or suggest the Independent
`
`Carrier Reception Limitation, because Petrovic’s proposed modulation technique
`
`both implicitly and explicitly teaches away from a mobile receiving unit receiving
`
`one carrier of a plurality of carriers independent from the other carriers of the
`
`plurality of carriers. MTel Petition does not cure the defect of Petrovic, as
`
`described in Ground 1. Thus, Petrovic in view of MTel Petition does not teach or
`
`suggest the Independent Carrier Reception Limitation.
`
`Second, Petrovic does not teach or suggest the Asymmetric Condition
`
`Limitation. Petrovic does not teach or suggest the Asymmetric Condition
`
`Limitation, because Petrovic’s subcarriers are modulated carriers and not
`
`unmodulated carriers as required by the limitation
`
`
`
`4
`
`

`

`
`
`As a result, Claim 5 of the ‘891 Patent is not obvious over Petrovic in view
`
`of MTel Petition.
`
`Therefore, there is no reasonable likelihood that Petitioner can prevail with
`
`regard to Claims 1-5 of the ‘891 Patent.
`
`III. PROPER CLAIM CONSTRUCTION
`
`A. Rules Governing Claim Construction – The Phillips Standard
`Governs.
`1.
`A person of ordinary skill in the art would have the
`following qualifications.
`According to Dr. Kesan, “[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.”
`
`2.
`
`The ‘891 Patent has expired so the Phillips standard
`governs.
`The ‘891 Patent has expired, so the proper claim construction is that used in
`
`district court review. The broadest reasonable interpretation (BRI) standard does
`
`not apply. In regard to the proper claim construction used in district court review,
`
`MPEP 2258 provides that “[i]n a reexamination proceeding involving claims of an
`
`expired patent, claim construction pursuant to the principle set forth by the court in
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir.
`
`
`
`5
`
`

`

`
`2005) (words of a claim “are generally given their plain and ordinary meaning” as
`
`understood by a person of ordinary skill in the art in question at the time of the
`
`invention) should be applied since the expired claim are not subject to amendment.
`
`See Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986).”
`
`i. When construing claim
`look
`terms
`themselves and then the specification.
`The first step in construing claims under Phillips is to “look to the words of
`
`to claims
`
`the claims themselves.” Vitrionics Corp. v. Conceptronic, 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996). Second, the specification must be considered when construing
`
`claim terms. Id. “[T]he specification is always highly relevant to the claim
`
`construction analysis. Usually, it is dispositive; it is the single best guide to the
`
`meaning of a disputed term.” Id.
`
`ii.
`
`Limitations from the specification can be read into
`the claims.
`Claim construction under Phillips varies from the BRI standard in at least
`
`two important ways. First, the BRI standard includes a prohibition on reading
`
`limitations in the specification into the claims. In contrast, claim construction
`
`under Phillips does not include this prohibition. For example, “[t]he presumption
`
`that a term is given its plain and ordinary meaning may be rebutted by the
`
`applicant by clearly setting forth a different definition of the term in the
`
`specification.” In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed.
`
`
`
`6
`
`

`

`
`Cir. 1997) (the USPTO looks to the ordinary use of the claim terms taking into
`
`account definitions or other “enlightenment” contained in the written description);
`
`But c.f. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827,
`
`1834 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim
`
`from the preferred embodiment described in the specification, even if it is the only
`
`embodiment described, absent clear disclaimer in the specification.”). MPEP
`
`2111.01.
`
`iii. Extrinsic evidence can be relied upon.
`Second, the BRI standard does not rely heavily on extrinsic evidence. In
`
`contrast, when performing claim construction under Phillips, “it is entirely
`
`appropriate, perhaps even preferable, for a court to consult trustworthy extrinsic
`
`evidence to ensure that the claim construction it is tending to from the patent file is
`
`not inconsistent with clearly expressed, plainly apposite, and widely held
`
`understandings from the pertinent technical field.” Pitney Bowes, Inc. v. Hewlett-
`
`Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999).
`
`In summary, under Phillips, the first step in construing claims is to look to
`
`the words of the claims themselves. The second step is to consider the
`
`specification. Additionally, there is no prohibition on reading limitations in the
`
`specification into the claims, and it is entirely appropriate to consult trustworthy
`
`extrinsic evidence.
`
`
`
`7
`
`

`

`
`
`B. Construction of Independent Claim Terms
`
`As described above, the ’891 Patent has expired, so the claims terms should
`
`be interpreted according to the Phillips standard. Phillips requires construing
`
`claim terms based on the words of the claims themselves and the specification.
`
`The first step in construing claims under Phillips is to “look to the words of the
`
`claims themselves.” Vitrionics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed.
`
`Cir. 1996). Second, the specification must be considered when construing claim
`
`terms. Id. (“[T]he specification is always highly relevant.”).
`
`1.
`
`Claims 1 and 3 – Same Location Limitation – The limitation
`of transmitting the plurality of paging carriers or at least
`two paging carriers “from the same location” means that
`“the multiple paging carriers emanate from the same
`location or antenna.”
`Independent Claim 1 is directed to a method of operating a plurality of
`
`paging carriers in a single mask-defined, bandlimited channel. Claim 1 recites
`
`transmitting the plurality of paging carriers “from the same location.” Independent
`
`Claim 3 is directed to a method of operating at least two paging carriers in a single
`
`mask-defined, bandlimited channel. Claim 3 recites transmitting the at least two
`
`paging carriers “from the same location.” The limitation of transmitting the
`
`plurality of paging carriers or at least two paging carriers “from the same location”
`
`is construed to mean that “the multiple paging carriers emanate from the same
`
`
`
`8
`
`

`

`
`location or antenna.” This limitation is referred to as the Same Location
`
`Limitation.
`
`The construction of the Same Location Limitation reflects the plain and
`
`ordinary meaning of the words. It is also supported by the Specification of the
`
`‘891 Patent.
`
`According to Dr. Kesan, “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. 2001 at 12.
`
`Ex. 1001 at FIG. 1.
`
`
`
`
`
`9
`
`

`

`
`
`
`
`Id. at FIG. 2.
`
`Dr. Kesan further describes that “[a] PHOSITA, therefore, would understand
`
`that, according 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.”
`
`Ex. 2001 at 13.
`
`As a result, under the Phillips standard, the limitation of transmitting the
`
`plurality of paging carriers or at least two paging carriers “from the same location”
`
`means that “the multiple paging carriers emanate from the same location or
`
`antenna.”
`
`
`
`10
`
`

`

`
`
`2.
`
`Claim 5 – Independent Carrier Reception Limitation – The
`limitation of “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.”
`Claim 5 is directed to a method of operating a plurality of modulated carriers
`
`in a single mask-defined, bandlimited channel. The method is performed in a
`
`paging system having a plurality of transmitters for transmitting the plurality of
`
`carriers and having a plurality of mobile receiving units for receiving the plurality
`
`of carriers. Specifically, Claim 5 recites “a plurality of mobile receiving units
`
`independently receiving one of said plurality of carriers.” This limitation is
`
`construed to mean “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 is referred to as the Independent Carrier Reception
`
`Limitation.
`
`The construction of the Independent Carrier Reception Limitation reflects
`
`the plain and ordinary meaning of the words. The construction is also consistent
`
`with the understanding a PHOSITA would have from the plain language of the
`
`claim and Specification.
`
`
`
`11
`
`

`

`
`
`Dr. Kesan describes that [t]he Specification of the ’891 Patent also describes
`
`‘independent receiving units capable of receiving one of said plurality of carriers.’”
`
`Ex. 2001 at 15.
`
`50
`
`55
`
`in another aspect, the invention provides a method of
`operating a plurality of carriers in a single mask-defined,
`bandlimited channel to achieve higher transmission capacity
`over the channel in a mobile paging system having a
`plurality of transmitters generating a plurality of modulated
`carriers over a single bandlimited channel and a plurality of
`mobile, independent receiving units capable of receiving
`one of said plurality of carriers. The method comprises the
`steps of co-locating the plurality of transmitters such that the
`plurality of carriers can be emanated from the same trans-
`mission source, and transmitting the carriers over a plurality
`of subchannels spaced asymmetrically within the mask
`defining the channel.
`
`Ex. 1001 at 2:47-59 (emphasis added).
`
`According to Dr. Kesan, “[f]rom 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
`
`
`
`12
`
`

`

`
`independent from the other carriers of the plurality of carriers.’ This limitation can
`
`be referred to as the Independent Carrier Reception Limitation.” Ex. 2001 at 16.
`
`As a result, under the Phillips standard, the limitation of “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.”
`
`3.
`
`Claims 2 and 4 – adjacent [carriers/subchannels] overlap
`with each other.
`Petitioner submits that plain and ordinary meaning should govern the
`
`construction of this phrase, i.e. that if two carriers are adjacent, they must overlap
`
`with each other to satisfy this claim element. Petitioner’s implied construction of
`
`this phrase is either that “some adjacent [carriers/subchannels] overlap,” or that “at
`
`least one pair of adjacent [carriers/subchannels] overlap with each other.”
`
`However, Petitioner provides no justification for introducing the additional
`
`limitations of “some” or “at least one pair.” The claim language is clear on its
`
`face: “adjacent [carriers/subchannels]” must “overlap with each other.” The claim
`
`language makes no exceptions for any adjacent [carriers/subchannels] that do not
`
`have to meet this requirement. Dr. Kesan agrees that “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
`
`
`
`13
`
`

`

`
`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.” Ex. 2001 at 63.
`
`4.
`
`Claims 1, 3, and 5 – Asymmetric Condition Limitation –
`This limitation means 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 where the
`mask is defined relative to the center frequencies of the
`unmodulated carriers.”
`Claims, 1, 3, and 5 all 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 is construed to mean 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 where
`
`the mask is defined relative to the center frequencies of the unmodulated
`
`carriers.” This limitation is referred to as the Asymmetric Condition Limitation.
`
`The asymmetric condition of the ’891 Patent is described in detail below.
`
`As described above, when performing claim construction under Phillips, “it
`
`is entirely appropriate, perhaps even preferable, for a court to consult trustworthy
`
`
`
`14
`
`

`

`
`extrinsic evidence to ensure that the claim construction it is tending to from the
`
`patent file is not inconsistent with clearly expressed, plainly apposite, and widely
`
`held understandings from the pertinent technical field.” Pitney Bowes, Inc. v.
`
`Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999).
`
`The construction of the Asymmetric Condition Limitation is based on the
`
`extrinsic evidence provided by the petitioner in co-pending IPR2016-00768 (the
`
`“ARRIS IPR”). As Dr. Kesan describes, “[t]hat 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. 2001 at 18.
`
`(b) For transmitters not equipped
`with an audio low pass filter required
`by the provisions of paragraphs (f) and
`(g) of §22.508, and for those employing
`digital modulation techniques, the
`power of any emission shall be attenu-
`ated below the unmodulated carrier
`power (P) in accordance with the fol-
`lowing schedule:
`
`
`
`15
`
`

`

`
`
`Ex. 1002 at 82. (emphasis added).
`
`“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).” Ex. 2001 at 19.
`
`NOTE: The measurements of emission
`power can be expressed in peak or average
`values provided they are expressed in the
`same parameters as the unmodulated trans-
`mitter carrier power.
`
`Ex. 1002 at 82. (emphasis added).
`
`According to Dr. Kesan, 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.” Ex. 2001 at 20.
`
`In addition, Dr. Kesan provides that the “Specification of the ‘891 Patent
`
`also supports defining the mask relative to the center frequencies of the
`
`
`
`16
`
`

`

`
`unmodulated carriers. For example, FIG. 5A, shown below shows two modulated
`
`carriers of the ‘891 Patent. ” Ex. 2001 at 21.
`
`
`
`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.
`
`
`
`17
`
`

`

`
`
`
`
`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 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.” Ex. 2001 at 21.
`
`As a result, under the Phillips standard, the limitation that “the frequency
`
`difference between the center frequency of the outer most of said carriers and the
`
`
`
`18
`
`

`

`
`band edge of the mask defining said channel is more than half the frequency
`
`difference between the center frequencies of each adjacent carrier” means 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 where
`
`the mask is defined relative to the center frequencies of the unmodulated
`
`carriers.”
`
`i.
`
`The asymmetric condition of the ’891 Patent, requires
`that Dm > Dc.
`The ’891 Patent provides that “the frequency spacings between adjacent
`
`carriers, while symmetric to each other, can be smaller than the frequency spacings
`
`between the band edges of the mask and the nearest respective carrier.” Ex. 1001
`
`at 4:17-20. As Dr. Kesan explained in the ARRIS IPR, this asymmetry in carrier
`
`spacing is a new asymmetric condition. Ex. 2003 at ¶ 40. He describes this
`
`condition graphically in Drawing 9 shown below.
`
`
`
`19
`
`

`

`Power (dB)
`From Max. 
`Attenuation
`
`
`
`Asymmetric Condition Dm > Dc
`Carrier 3
`Carrier 2
`Carrier 1
`0
`Primary
`Mask
`Dc
`
`‐50
`
`Dm
`
`0
`
`1.4
`1
`Frequency (Hz)
`Drawing 9
`
`
`
`Dr. Kesan describes that in Drawing 9 “distance Dc is half of