`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper No.16
` Filed: July 28, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC., BROCADE COMMUNICATIONS
`SYSTEMS, INC., and RUCKUS WIRELESS, INC.,
`Petitioner,
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`
`____________
`
`Case IPR2017-00640
`Patent 5,659,891
`____________
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Decision Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`IPR2017-00640
`Patent 5,659,891
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`I. INTRODUCTION
`
`A. Background
`Petitioner, as captioned above, filed a Petition to institute an inter
`partes review of U.S. Patent No. 5,659,891 (“the ’891 patent”) pursuant to
`35 U.S.C. § 311−319. Paper 1 (“Pet.”). Mobile Telecommunications
`Technologies, LLC (“Patent Owner”) timely filed a Preliminary Response
`(Paper 8) and a Corrected Preliminary Response (Paper 13, “Prelim.
`Resp.”). We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a).
`For the reasons discussed below, we determine that Petitioner
`establishes a reasonable likelihood of prevailing on the challenged claims.
`Accordingly, we institute an inter partes review of claims 1–5 of the ’891
`patent.
`
`B. Additional Proceedings
`Both parties indicate that the ’891 patent is the subject of numerous
`district court proceedings. Pet. 1–2; Paper 7, 1–2.
`In addition, both parties indicate that the ’891 patent is the subject of
`a number of inter partes review proceedings. Pet. 2–3; Paper 7, 2–3.
`ARRIS Group, Inc. v. Mobile Telecommunications Technologies, LLC, Case
`IPR2016-00766 (PTAB filed Mar. 16, 2016) and Aruba Networks, Inc. v.
`Mobile Telecommunications Technologies, LLC, Case IPR2016-00768
`(PTAB filed Mar. 16, 2016) (“the Aruba IPR”) are joined and pending a
`final written decision. The following inter partes review proceedings were
`all terminated pursuant to settlement agreements between the respective
`parties: Apple Inc. v. Mobile Telecommunications Technologies, LLC, Case
`IPR2014-01035 (PTAB June 27, 2014); T-Mobile USA Inc. v. Mobile
`
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`Telecommunications Technologies, LLC, Case IPR2015-00018 (PTAB filed
`Oct. 3, 2014), and Samsung Electronics Co., Ltd. v. Mobile
`Telecommunications Technologies, LLC, Case IPR2015-01726 (PTAB filed
`Aug. 13, 2015). Institution was denied in Samsung Electronics Co., Ltd. v.
`Mobile Telecommunications Technologies, LLC, Case IPR2015-01727
`(PTAB filed Aug. 13, 2015).
`
`
`C. The ’891 Patent
`The ’891 patent (Ex. 1001), titled “Multicarrier Techniques in
`Bandlimited Channels,” generally relates to a method for multicarrier
`modulation (“MCM”) using geographically co-located transmitters to
`achieve a higher frequency transmission capacity within FCC emission
`mask limits. The method provides for a plurality of overlapping
`subchannels within a single mask-defined bandlimited channel to provide
`higher data transmission capacity for a mobile paging system. Ex. 1001,
`2:15–59. The technique involves transmitting a plurality of paging carriers,
`in corresponding overlapping subchannels, from the same location and
`within the mask-defined bandlimited channel, without bandlimiting each of
`the individual subchannels. Id. In this way, with the center frequencies of
`the plurality of modulated carriers within the single bandlimited channel, an
`optimum transmission capacity is provided and the plurality of carriers may
`emanate from the same transmission source, i.e., an antenna. Id.
`An annotated version of Figure 3B of the ’891 patent, reproduced
`below, depicts two adjacent carriers asymmetrically located within a single,
`mask-defined, bandlimited channel.
`
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`As depicted by Figure 3B of the ’891 patent, above, two carriers 32a and
`32b are shown operating over two subchannels (no reference number)
`within a bandlimiting mask (annotated in yellow) defining the channel. The
`subchannels are asymmetrically aligned within the mask resulting in partial
`subchannel overlap. Id. at 4:24–30. The center frequencies of the carriers
`32a and 32b are shown by the vertical dashed lines, and, concomitant with
`the subchannels, carriers 32a and 32b also overlap. According to the ’891
`patent, geographic co-location of the transmitters reduces interference
`problems between adjacent subcarriers, thus allowing the spacing between
`subchannels to be reduced. Id. at 4:12–20. The ’891 patent explains that
`the practical implications of such an asymmetrical arrangement are a
`greater range of operating parameters, essentially because more
`subchannels can be fit within the bandlimited mask without undue
`interference. Id. at 4:36–46.
`
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`Basis
`§ 103
`§ 103
`
`D. Illustrative Claim
`Claims 1, 3, and 5 are independent. Dependent claims 2 and 4
`depend directly from claims 1 and 3, respectively. Claim 1 illustrates the
`claimed subject matter and is reproduced below:
`1. A method of operating a plurality of paging carriers in a
`single mask-defined, bandlimited channel comprising the step
`of transmitting said carriers from the same location with said
`carriers having center frequencies within said channel such 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.
`
`E. The Alleged Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable on the
`following grounds.
`References
`MTel Petition1
`MTel Petition, the ’960
`Publication2, and Louttit3,4
`
`Claims Challenged
`1–4
`5
`
`
`1 Ex. 1005, In the Matter of Mobile Telecommunication Technologies
`Corporation, Petition for Rulemaking, dated November 12, 1991.
`2 Ex. 1006, WO 94/11960, published May 24, 1994.
`3 Ex. 1014, U.S. Patent No. 4,513,443, issued Apr. 23, 1985.
`4 Petitioner did not include Louttit in its statement of the ground, per 37
`C.F.R. § 42.104(B). See Pet. 5. Petitioner, however, did include a
`discussion of Louttit when addressing this ground in the Petition. See Pet.
`63, n. 9. We, thus, determine that the omission of Louttit from the
`statement of the ground is harmless.
`
`
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`Basis
`References
`Petrovic5 and MTel Petition § 103
`
`Claims Challenged
`5
`
`Petitioner supports its challenge with a Declaration of Dr. Tim A.
`Williams (Ex. 1003). Patent Owner supports its Preliminary Response with
`a Declaration of Dr. Jay P. Kesan, Ph.D. (Ex. 2001).
`
`
`II. CLAIM CONSTRUCTION
`A. Legal Standard
`The ’891 patent is expired, and “the Board’s review of the claims of
`an expired patent is similar to that of a district court’s review.” In re
`Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms
`generally are given their ordinary and customary meaning, as understood by
`a person of ordinary skill in the art, at the time of the invention, taking into
`consideration the language of the claims, the specification, and the
`prosecution history of record because the expired claims are not subject to
`amendment. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc).
`1. “band edge of the mask”
`Independent claims 1, 3, and 5 recite the limitation “the band edge of
`the mask.” In related inter partes reviews, we construed this limitation to
`mean “a band edge of the single mask-defined, bandlimited channel.” See
`the Aruba IPR, Paper 13, 8–12. Petitioner contends that we should adopt
`the same construction here. Pet. 11. Unlike in the related inter partes
`
`
`5 Ex. 1007, Rade Petrovic, Walt Roehr & Dennis Cameron, Permutation
`Modulation for Advanced Radio Paging, IEEE PROC. SOUTHEASTCON, Apr.
`1993.
`
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`reviews, Patent Owner does not propose an explicit construction of “the
`band edge.”6 On this record, we construe “the band edge of the mask” to
`mean “a band edge of the single mask-defined, bandlimited channel” for the
`same reasons set out in our Decision instituting inter partes review in the
`Aruba IPR. See the Aruba IPR, Paper 13, 8–12.
`2. Asymmetric Condition Limitation
`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.”
`Patent Owner refers to this limitation as the Asymmetric Condition
`Limitation and proposes that this limitation be construed to require 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, wherein the mask is defined relative to the center
`frequencies of the unmodulated carriers.
`Prelim. Resp. 14.
`Patent Owner’s declarant Dr. Kesan testifies that “a PHOSITA
`[(person having ordinary skill in the art)] would understand that the FCC
`regulations at the time of the ’891 Patent require that a mask be defined
`with respect to the unmodulated carriers.” Ex. 2001 ¶¶ 19–20 (citing 47
`
`6 In the Aruba IPR, Patent Owner proposed that “the band edge” be
`construed to mean “the innermost frequencies at which the mask requires
`attenuation of the signal” in its Preliminary Response (the Aruba IPR, Paper
`12, 14) and to mean the “nearest band edge of the mask” in its Patent
`Owner Response (the Aruba IPR, Paper 42). Patent Owner does not assert
`this construction here.
`
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`C.F.R. § 22.106(b) (1994)). Patent Owner, thus, argues that the claimed
`center frequencies must be defined relative to the unmodulated carriers.
`Prelim. Resp. 16. Patent Owner also argues the additional requirement is
`consistent with the specification of the ’891 patent. Id. at 15–17. Figure
`5A of the ’891 patent depicts an example spectra graph having two-carriers
`with parameters that meet the plain language of the Asymmetric Condition
`Limitation. See Ex. 1003, 4:56–63. According to Patent Owner’s declarant
`Dr. Kesan, a PHOSITA would understand that the carriers depicted in
`Figure 5A when unmodulated also meet the plain language of the
`Asymmetric Condition Limitation. See Ex. 2001 ¶ 21.
`On this record, we are not persuaded by Patent Owner and Dr. Kesan
`that the Asymmetric Condition Limitation should be construed to require
`that the mask is defined relative to the center frequencies of the
`unmodulated carriers. The plain language of the Asymmetric Condition
`Limitation does not include a requirement that the mask be defined relative
`to unmodulated carriers. Contrary to Patent Owner’s argument, the
`language of claim 5 recites that the carriers are “modulated carriers.”
`Further, we are not persuaded by Dr. Kesan’s testimony that a
`PHOSITA would understand that the mask is defined relative to the center
`frequencies of the unmodulated carriers. At this stage of the proceeding,
`Dr. Kesan has not been cross-examined, and his testimony appears to be
`insufficiently supported by the ’891 patent. The ’891 patent refers to
`certain FCC requirements (e.g., Ex. 1003, 1:57–61) but does not mention
`specifically 47 C.F.R. § 22.106(b) (1994). Further, the ’891 patent
`describes the carriers depicted in Figure 5A as an example of the “present
`invention” (Ex. 1003, 4:53–63), and, as Dr. Kesan testifies, Figure 5A
`
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`depicts modulated carriers (see Ex. 2001 ¶ 63).
`At this stage of the proceeding, we are not persuaded by Patent
`Owner and Dr. Kesan that the Asymmetric Condition Limitation should be
`construed to additionally require that the mask is defined relative to the
`center frequencies of the unmodulated carriers. On this record, we are not
`apprised, at this juncture, as to any other reason why the Asymmetric
`Condition Limitation needs to be construed apart from the plain language of
`the claim. Accordingly, we construe this limitation according to its plain
`and ordinary meaning as understood by one of ordinary skill in the art in
`light of the specification.
`3. “adjacent carriers overlap with each other” and “adjacent
`subchannels overlap with each other”
`Claim 2 recites “wherein adjacent carriers overlap with each other.”
`Claim 4 recites “wherein adjacent subchannels overlap with each other.”
`Petitioner does not propose an explicit construction for either of these
`limitations. Patent Owner proposes that the limitations be construed to
`require that if two carriers or subchannels are adjacent, they must overlap.
`Prelim. Resp. 13–14. In other words, Patent Owner argues that all, as
`opposed to some, adjacent carriers or subchannels must overlap. See id.
`According to Patent Owner, its construction is consistent with the plain
`language of the limitations and consistent with how a PHOSITA would
`understand the limitations. Id. (citing Ex. 2001 ¶ 63).
`We are not persuaded by Patent Owner’s argument that claims 2 and
`4 require that all adjacent carrier or subchannels must overlap. Contrary to
`Patent Owner’s argument, nothing in the plain language requires that all
`adjacent carriers or subchannels must overlap. As can be seen from the
`limitations quoted above, they are silent as to whether all or just some
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`adjacent carriers or subchannels must overlap. The plain language of
`claims 2 and 4 does not contain a requirement that if carriers or subchannel
`are adjacent, they must overlap.
`Further, the ’891 patent appears to indicate that not all adjacent
`carriers or subchannels must overlap. For example, the ’891 patent states
`that “carriers need not be symmetrically or evenly spaced within the mask
`defining the channel . . . Indeed, carrier spacing may be irregular such that
`carriers are asymmetrically located within the mask without incurring
`undue interferences.” Ex. 1003, 4:15–23. On this record, Patent Owner
`does not point us to anything in the specification of the ’891 patent that
`would indicate that all adjacent carriers or subchannels must be spaced so
`that they overlap.
`Patent Owner cites to paragraph 63 of Dr. Kesan’s declaration to
`support its proposed construction. Prelim. Resp. 13–14. Dr. Kesan testifies
`that:
`
`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.
`Ex. 2001 ¶ 63. As can be seen from the above Dr. Kesan’s testimony is
`conclusory and does not provide a sufficient explanation as to why a
`PHOSITA would understand such a requirement for subchannels to
`overlap. Dr. Kesan’s testimony is not persuasive. See 37 C.F.R. § 42.65(a)
`(“Expert testimony that does not disclose the underlying facts or data on
`which the opinion is based is entitled to little or no weight”); see also Rohm
`and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed.Cir.1997)
`
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`(nothing requires a fact finder to credit the inadequately explained
`testimony of an expert).
`Given the above, we are not persuaded by Patent Owner that the
`limitations of claims 2 and 4 should be construed to require that if carriers
`or subchannels are adjacent, they must overlap. On this record, we are not
`apprised as to any other reason why these limitations needs to be construed
`apart from the plain language of the claim. Accordingly, we construe these
`limitations according to its plain and ordinary meaning as understood by
`one of ordinary skill in the art in light of the specification.
`4. Other constructions
`Petitioner proposes a construction for the limitation “co-locating said
`plurality of transmitters” (Ex. 1003, claim 5). Pet. 13–17. Patent Owner
`proposes constructions for the limitations “transmitting said carriers from
`the same location” (Ex. 1003, claims 1 and 3) and “a plurality of mobile
`receiving unit independently receiving one of said plurality of carriers” (Ex.
`1003, claim 5). Prelim. Resp. 8–13. We decline to provide explicit
`constructions for the remaining claim terms at this stage of the proceeding.
`See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed.
`Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary
`to resolve the controversy.’” (internal citation omitted)).
`
`
`III. ANALYSIS
`We turn now to Petitioner’s asserted grounds of unpatentability to
`determine whether Petitioner has met the threshold standard of 35 U.S.C.
`§ 314(a).
`
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`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The ultimate determination of obviousness under § 103 is a
`question of law based on underlying factual findings. In re Baxter Int’l,
`Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) (citing Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1996)). These underlying factual considerations
`consist of: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope
`and content of the prior art,” (3) the “differences between the prior art and
`the claims at issue,” and (4) “secondary considerations” of non-obviousness
`such as “commercial success, long-felt but unsolved needs, failure of
`others, etc.”7 KSR, 550 U.S. at 406 (quoting Graham, 338 U.S. at 17–18).
`A. Claims 1–4 — Obviousness over the MTel Petition
`Petitioner asserts that claims 1–4 would have been obvious over the
`MTel Petition. Pet. 20–47. Petitioner relies upon the testimony of its
`declarant Dr. Williams for support. Ex. 1003 ¶¶ 44–80.
`Patent Owner disputes that the MTel Petition discloses all of the
`limitations of claims 1 and 3. Prelim. Resp. 26–38. Petitioner relies upon
`the testimony of its declarant Dr. Kesan for support. Ex. 2001 ¶¶ 22–35.
`On this record, we determine that Petitioner has established a
`reasonable likelihood of prevailing on its assertion that claims 1–4 are
`obvious over the MTel Petition for the reasons explained below.
`
`
`7 The record contains no arguments and evidence concerning secondary
`considerations.
`
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`1. Overview of the MTel Petition
`The MTel Petition is a petition to the FCC to adopt rules for licensing
`carriers to operate in a new Nationwide Wireless Network (“NWN”)
`Service. Ex. 1005, iv. It was published by the FCC on July 14, 1992 (Ex.
`1016, 1). The MTel Petition requests a license to employ a 50kHz channel
`in the 930–931 MHz band for two-way, high-speed messaging NWN
`service to portable terminals, such as pagers. Id. at iv, 5. Figure 1 of the
`MTel Petition, with annotations added, is reproduced below.
`
`
`Figure 1 depicts 50 kHz channels made up of “30 kHz . . . in the pass band,
`leaving 10 kHz guardbands on” each side. Id. at 19. “Enhanced multitoned
`modulation schemes” may be used to operate “8 tones” (i.e., carriers)
`within the channel. Id. at 19; Ex. 1003 ¶ 47. As can be seen in Figure 1,
`the center frequencies of the 8 tones are located at -12 kHz (carrier 1), -
`9 kHz (carrier 2), -6 kHz (carrer 3), -3 kHz (carrier 4), 6 kHz (carrier 6),
`9kHz (carrier 7), and 12 kHz (carrier 8). Ex. 1003 ¶ 52.
`
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`2. Discussion
`a. Claims 1 and 3
`Addressing claims 1 and 3, Petitioner contends that the MTel Petition
`discloses all of the limitations of these claims. Pet. 21–36, 38–47. In
`particular, Petitioner contends that the MTel Petition discloses the
`Asymmetric Condition Limitation. Pet. 32–36. Petitioner directs our
`attention to Figure 1 of the MTel Petition. Id. at 32. Petitioner states:
`The farthest spacing between center frequencies of the data
`tones is 6 kHz—corresponding to the distance between the
`center frequencies of the two data tones just to the right and
`left of the channel center (i.e., carriers 1 and 8)—and half this
`amounts to 3 kHz. . . . .
`The MTel Petition further discloses 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 3 kHz (i.e., “half the frequency difference
`between the center frequencies of each adjacent carrier”),
`thereby satisfying [the Asymmetric Condition Limitation].
`Id. at 31–32 (citing Ex. 1003 ¶¶ 57–58).
`Patent Owner argues that the MTel Petition does not teach the
`Asymmetric Condition Limitation because the tones or carries of Figure 1
`of the MTel Petition are not unmodulated carriers. Prelim. Resp. 31–38.
`Patent Owner’s argument is unpersuasive because it is based upon a
`construction of the Asymmetric Condition Limitation which we did not
`adopt. As discussed above, we construe the Asymmetric Condition
`Limitation according to its plain and ordinary meaning as understood by
`one of ordinary skill in the art in light of the specification. The plain and
`ordinary meaning does not require that the mask is defined relative to the
`center frequencies of the unmodulated carriers. When the Asymmetric
`Condition Limitation is given the construction adopted above, we are
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`persuaded by Petitioner that the MTel Petition teaches the Asymmetric
`Condition Limitation.
`Petitioner also contends that the MTel Petition discloses the claimed
`transmitting of carriers from the same location because the MTel Petition
`discloses that “the NWN system is a satellite-fed nationwide simulcast
`network involving side area base station transmitters” and discloses that the
`eight data tones or carriers may be transmitted by a base transmitter at the
`same time. Id. at 27 (citing Ex. 1005, Figs. 1, A1–A4, B1–B4; Ex. 1003 ¶¶
`51). Petitioner alternatively argues that:
`to the extent that MTel asserts that the MTel Petition does not
`disclose that each carrier is transmitted from the same location
`at the same time, it would have been at least obvious to a
`[PHOSITA] to transmit the carriers from the same location. . . .
`A [PHOSITA] would have understood that transmitting the
`carriers from a single base station is more economical than
`transmitting individual carriers from multiple base stations.
`Id. at 30 (citing Ex. 1003 ¶ 55; Ex. 1009, I-1, I-3, I-4 (Technical Feasibility
`Demonstration supporting the MTel Petition)).8
`
`Patent Owner argues that the MTel Petition does not teach
`transmitting carriers from the same location because the MTel Petition does
`not describe where its transmitters are located. Prelim. Resp. 26–30 (citing
`Ex. 2001 ¶¶ 25–26).
`
`
`8 In the Aruba IPR, Patent Owner contends that “transmitting carriers from
`the same location” should be construed to mean “transmitting carriers from
`the same location at the same time.” See the Aruba IPR, Paper 42, 37–39.
`Thus, Petitioner addresses whether the MTel Petition teaches transmitting
`carriers at the same time. Pet. 30. Patent Owner, however, does not raise
`the issue of transmitting carriers at the same time in this inter partes review.
`See Prelim. Resp. 30.
`
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`At this stage of the proceeding, we are persuaded by Petitioner’s
`argument and evidence, discussed above, that the MTel Petition discloses
`transmitting the eight data tone or carriers from the same location because
`the MTel Petition discloses that the NWN system is a simulcast network
`involving wide area base station transmitters and discloses that the eight
`data tones or carriers may be transmitted by a base transmitter at the same
`time. Ex. 1005, Figs. 1, A1–A4, B1–B4; Ex. 1003 ¶ 51. We are further
`persuaded, at this juncture, by Petitioner’s argument and evidence, that it
`would have been obvious to transmit the carriers from the same location,
`because transmitting the carriers from a single base station is more
`economical than transmitting individual carriers from multiple base
`stations. Ex. 1003 ¶¶ 25–26.
`On this record, we are persuaded that Petitioner has established a
`reasonable likelihood of prevailing on the ground of unpatentability of
`claims 1 and 3 as obvious over the MTel Petition.
`b. Claims 2 and 4
`With respect to claims 2 and 4, Petitioner relies on an annotated
`version of the MTel Petition’s Figure 1 (Pet. 37) to show that adjacent
`carriers (claim 2) and subchannels (claim 4) “overlap with each other.” Id.
`at 36–37, 47. Annotated Figure 1 of the MTel Petition is reproduced below.
`
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`Annotated Figure 1 depicts 8 tones or carriers that overlap, as shown by the
`shading. Id. at 37; Ex. 1003 ¶ 65.
`According to Patent Owner, “[c]laims 2 and 4 are not rendered
`obvious by the MTel Petition, because it does not disclose that all adjacent
`carriers or subchannels overlap” and there is no overlap between the center
`carriers. Prelim. Resp. 38–40.
`We are not persuaded by Patent Owner’s argument because it is not
`commensurate with the scope of claims 2 and 4. As discussed above, we
`construe the limitations of claims 2 and 4 according to their plain and
`ordinary meaning as understood by one of ordinary skill in the art in light of
`the specification. The plain language of the limitations do not require that
`all adjacent carriers or subchannels must overlap.
`On this record, we are persuaded by Petitioner that the MTel Petition
`discloses adjacent carriers and subchannels that overlap, and we determine
`that Petitioner has established a reasonable likelihood of prevailing on the
`ground of unpatentability of claims 2 and 4 as obvious over the MTel
`Petition.
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`B. Claim 5 — Obviousness over the MTel Petition, the ’960
`Publication, and Louttit
`Petitioner asserts that claim 5 would have been obvious over the
`MTel Petition, the ’960 Publication, and Louttit. Pet. 47–71. Petitioner
`relies upon the testimony of its declarant Dr. Williams for support.
`Ex. 1003 ¶¶ 81–108.
`Patent Owner disputes that the combination of the MTel Petition, the
`’960 Publication, and Louttit discloses all of the limitations of claims 1 and
`3. Prelim. Resp. 40–50. Petitioner relies upon the testimony of its
`declarant Dr. Kesan for support. Ex. 2001 ¶¶ 36–48.
`We determine that Petitioner has established a reasonable likelihood
`of prevailing on its assertion that claim 5 is obvious over the MTel Petition,
`the ’960 Publication, and Louttit for the reasons explained below.
`1. Overview of the ’960 Publication
`The ’960 Publication is titled “Mobile Two-Way Communication
`System” and published on May 26, 1994. Ex. 1006, (43), (54). The ’960
`Publication lists Mobile Telecommunications Technologies as the
`applicant. Id. at (71). The ’960 Publication discloses embodiments of base
`transmitters, that include multiple subtransmitters, that may be used to
`transmit multi-carrier modulation waveforms from a common antenna. See
`Ex. 1006, 29, Figs. 6, 13, 14.
`2. Overview of Louttit
`Louttit is titled “Radio Receiver Suitable For Use In a Spaced Carrier
`Area Coverage System,” and was published on April 23, 1985. Ex. 1014,
`[45], [54]. Louttit discloses a receiver that can lock onto a selected carrier
`of a multi-carrier signal “[i]n order to reduce the overall noise” and “to
`enable carriers to be spaced more regularly and/or closer” (id. at Abstract)
`
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`and discloses that
`[t]he receiver in accordance with the present invention
`overcomes some of these problems because instead of
`selecting all the carrier wave signals and their side bands
`within a channel, it selects only the strongest signal at a
`particular instant, such as at switch-on and remains locked to
`that frequency until its strength falls by a predetermined
`amount and/or a particular transmission ceases. By selecting
`only one of the three carrier waves rather than all three as in
`the known receiver, then the noise-bandwidth of the channel
`filter can be +3.75 kHz so a great deal of the unwanted
`receiver noise can be avoided
` (id. at 3:35–46).
`3. Discussion
`Addressing claim 5, Petitioner contends that the combination of the
`MTel Petition, the ’960 Publication, and Louttit teaches all of the limitation.
`Pet. 47–71. In particular, with respect to “a plurality of mobile receiving
`units independently receiving one of said plurality of carriers” (Ex. 1001,
`claim 5), Petitioner contends that the MTel Petition discloses such a feature.
`Id. at 60–65. Petitioner states:
`The MTel Petition teaches 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.” Ex. 1005, A6–A7 (“8 tone MOOK, which
`uses 9 tones to transmit 8 bits per baud interval (one tone is the
`‘pilot’). The MTel Petition also discloses that these mobile
`receiving units receive the carriers transmitted from the base
`transmitters. Ex. 1005, iv (“employ a 50 kHZ channel in the
`930–931 MHz band for a two-way, high speed messaging
`service to portable terminals”), A3 (“transmitters will send
`message data to individual user terminals”), 18–19 (“MTel
`believes that a commercially feasible NWN system will be
`required to transmit in excess of 3 bits per baud interval.
`Enhanced multitoned modulation schemes can achieve the
`
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`IPR2017-00640
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`required data rate by utilizing combinations of 8 tones.”); see
`also Figs. A1–A4, Figs. B1–B4.
`Id. at 60. Petitioner argues that “a [PHOSITA] would have understood that
`each mobile receiving unit can tune to a particular subchannel and thereby
`isolate and demodulate a single carrier within the multi-carrier signal.” Id.
`at 61–63. Petitioner also argues that Louttit “reflects the general knowledge
`of a [PHOSITA] in its description of how a receiver can independently
`receive only a single carrier of the multicarrier waveform.” Id. at 63 (citing
`Ex. 1014, 3:35–46). Petitioner argues that using a receiver that can
`independently receive only a single carrier provides an advantage “by
`avoiding the problem of intermodulation noise, the expense associated with
`plural filters, and allowing for lower cost receiver units.” Id. at 64, 63, n. 9.
`Petitioner relies upon the testimony of Dr. Williams for support. Ex. 1003
`¶¶ 98–100.
`With respect to “co-locating a plurality of transmitters such that said
`plurality of carriers can be emanated from the same transmission source”
`(Ex. 1001, claim 5), Petitioner contends that the MTel Petition discloses
`transmitting carriers from the same location, but admits that the MTel
`Petition “does not disclose the specific architecture for its base
`transmitters.” Pet. 55. Petitioner relies upon the ’960 Publication to teach
`the specific architecture. See id. at 55–56. The base transmitter of the ’960
`Publication includes two subtransmitters that transmit via a common
`antenna. See Ex. 1006, 29–30, Figs. 13–14; Ex. 1003 ¶ 89. Petitioner
`argues that using subtransmitters “would have been advantageous because
`their use of a common antenna to transmit the signals of co-located
`transmitters reduce[s] system complexity.” Id. at 56 (citing Ex. 1003 ¶ 92).
`
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`Patent Owner does not dispute that the combination of the MTel
`
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