`U.S. Patent No. 5,659,891
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`ARRIS GROUP, INC., ARUBA NETWORKS, INC.,
`HEWLETT PACKARD ENTERPRISE COMPANY, and HP, INC.,
`Petitioner,
`v.
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner.
`______________________
`Case IPR2016-00768
`Patent 5,659,8911
`______________________
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`PETITIONERS’ CONSOLIDATED REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`1 Case IPR2016-00766 has been joined with the instant proceeding.
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`MTel., Exhibit 2002, Juniper v. MTel., Page 1, IPR2017-00640
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`IPR2016-00768
`U.S. Patent No. 5,659,891
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`TABLE OF CONTENTS
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` CLAIM CONSTRUCTION ............................................................................... 1 I.
`A. “the band edge of the mask” (cls.1, 3, 5) ........................................................ 1
`B. “transmitting carriers from the same location” (cls.1, 3) ............................. 14
`C. “single mask-defined, bandlimited channel” (cls.1, 3, 5) ............................. 16
`
` THE PRIOR ART ............................................................................................. 16 II.
`A. Petrovic discloses “frequency difference…between…the outer
`most…carriers and the band edge of the mask” (cls.1.C, 3.C, 5.D) .................... 16
`B. Petrovic discloses “transmitting said carriers from the same location”
`(cls.1.B, 3.B) ......................................................................................................... 26
`C. Petrovic discloses “adjacent carriers overlap” (cls.2, 4) .............................. 28
`D. Petrovic in view of Raith and Alakija renders obvious “co-locating…such
`that…carriers can be emanated from the same transmission source” (cl.5.B) .... 36
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`MTel., Exhibit 2002, Juniper v. MTel., Page 2, IPR2017-00640
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`IPR2016-00768
`U.S. Patent No. 5,659,891
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` LIST OF EXHIBITS
`
`Description
`U.S. Patent 5,659,891 to Hays et al., filed June 7, 1995
`Mobile Telecommunications Technologies, LLC v. Aruba
`Networks, Inc., et al., Case No. 2:16-cv-00012, Plaintiff
`Mobile Telecommunications Technologies, LLC’s Original
`Complaint (Jan. 4, 2016)
`Declaration of Apostolos (Paul) Kakaes
`Apple Inc. v. Mobile Telecommunications Technologies, LLC,
`Case IPR2014-01035, Decision on Institution of Inter Partes
`Review (Jan. 22, 2015)
`Mobile Telecommunications Technologies, LLC v. T-Mobile
`USA, Inc., et al., Case No. 2:13-cv-00886-JRG-RSP, Claim
`Construction Memorandum and Order (Jan. 23, 2015)
`Mobile Telecommunications Technologies, LLC v. Sprint
`Nextel Corp., et al., Case No. 2:12-cv-00832-JRG-RSP, Claim
`Construction Memorandum and Order (May 2, 2014)
`Mobile Telecommunications Technologies, LLC v. Leap
`Wireless International, Inc., et al., Case No. 2:13-cv-00885-
`JRG-RSP, Claim Construction Memorandum and Order (May
`12, 2015)
`The American Heritage Dictionary of the English Language,
`1902, (3rd ed. 1992)
`Standards Coordinating Committee 10, Terms and Definitions,
`The IEEE Standard Dictionary of Electrical and Electronics
`Terms, 1140, (6th ed. 1996)
`McGraw-Hill Dictionary of Scientific and Technical Terms,
`1644, (5th ed. 1993)
`Mobile Telecommunications Technologies, LLC v. Clearwire
`Corp., et al., Case No. 2:12-cv-00308-JRG-RSP, Claim
`Construction Memorandum and Order (July 1, 2013)
`Prosecution History of U.S. Patent 5,659,891 to Hays et al.,
`filed June 7, 1995
`Rade Petrovic, et al., Permutation Modulation for Advanced
`Radio Paging, IEEE Proceedings of Southeastcon ‘93 (Apr. 7,
`1993)
`International Patent WO 89/08355 to Raith et al., filed Feb. 8,
`1989
`
`ii
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`Exhibit
`Ex. 1001
`Ex. 1002
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`Ex. 1003
`Ex. 1004
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`Ex. 1005
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`Ex. 1006
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`Ex. 1007
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`Ex. 1008
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`Ex. 1009
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`Ex. 1010
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`Ex. 1011
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`Ex. 1012
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`Ex. 1013
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`Ex. 1014
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`MTel., Exhibit 2002, Juniper v. MTel., Page 3, IPR2017-00640
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`IPR2016-00768
`U.S. Patent No. 5,659,891
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`Description
`C. Alakija and S. P. Stapleton, A Mobile Base Station Phased
`Array Antenna, 1992 IEEE International Conference on
`Selected Topics in Wireless Communications 118 (Jun. 1992)
`IPR2015-01726, Paper No. 9 (Institution Decision)
`IPR2016-00768, Conference Call Hearing on Motions
`(Apr. 20, 2016)
`Rebuttal Declaration of Dr. Apostolos K. Kakaes
`U.S. Patent No. 5,590,403
`Declaration of Marissa B. Golub
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`Exhibit
`Ex. 1015
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`Ex. 1016
`Ex. 1017
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`Ex. 1018
`Ex. 1019
`Ex. 1020
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`iii
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`MTel., Exhibit 2002, Juniper v. MTel., Page 4, IPR2017-00640
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`The Board correctly found at institution that Petitioners established a
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`reasonable likelihood of prevailing in proving claims 1-5 (“Claims”) unpatentable.
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`IPR2016-00768, Pap.13 (“Inst.”), 2. Because the Petition demonstrates
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`unpatentability, Patent Owner’s (“PO”) Response (“POR,” Pap.28) improperly
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`injects limitations into the Claims, and ignores the references’ plain disclosures.
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`PO fails to rebut Petitioners’ evidence.2, 3
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`
`I.
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`CLAIM CONSTRUCTION4
` A.
` “the band edge of the mask” (cls.1, 3, 5)
`For purposes of this proceeding, the Board correctly construed “the band
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`edge of the mask” as “a band edge of the single mask-defined bandlimited
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`channel.” Inst.12. The Board’s construction is consistent with the ‘891’s
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`disclosure and a POSITA’s understanding. Ex.1001, cls.1, 3, 5, 1:57-61, 3:16-18,
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`2 PO fails to cite and waives any arguments in Ex.2011¶¶1-8, 10-18, 39, 43, 45, 47,
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`59-60, 64, 70, 79-80, 86, 88-92, 97-98, 100-104, 107-108, 111, 113, 123-126, 129-
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`134. Pap.14, 3; 37 C.F.R. §42.6(a)(3). Arguments in PO’s Preliminary Response
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`not made in POR are waived. Id.
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`3 Emphasis added, internal quotations/citations omitted, unless noted.
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`4 Because the ‘891 has expired, terms are construed under Phillips (Inst.6). Cf.
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`POR49.
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`1
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`U.S. Patent No. 5,659,891
`4:47-49, Fig.4; Ex.1018¶¶9-10, 1-8. In contrast, PO’s construction (POR27) is
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`divorced from the Claims and specification and should be rejected.
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`As the Board properly found, the Claims recite “the band edge of the mask
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`defining said channel,” referring back to the claim language “single mask-defined
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`bandlimited channel.” Id.; Ex.1001, cls.1, 3, 5. With respect to “the band edge,”
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`the specification states “FCC masks typically require the power spectral density of
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`a signal to be attenuated at least 70 dB at the band edge.” Ex.1001, 1:57-61; Inst.
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`9; Ex.1012, 48. The specification states Figure 4 is “an exemplary FCC emissions
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`mask,” requiring “attenuat[ion] at least 70 dB within 10 kHz from center
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`frequency.” Ex.1001, 3:16-18, 4:47-49. Thus, as the Board correctly found, the
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`specification describes “the band edge” of the mask in Figure 4 “includ[es] the
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`vertical lines at 10 kHz either side of the center frequency.” Inst.10.5 And
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`contrary to PO (POR17-18), Kakaes confirmed a POSITA would have understood
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`“the band edge” in Figure 4’s mask is at “plus 10 kilohertz” and “minus 10
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`kilohertz” from the center frequency, “supported by…the fact that it’s a 70-dB
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`attenuation, consistent with the specification.” Ex.2012, 68:10-69:3; see also
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`Ex.1018¶10; Ex.2012, 78:1-6.
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`5 “[T]he band edge” refers to a frequency. Ex.2012, 63:16-64:16.
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`U.S. Patent No. 5,659,891
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`Ex.1001, Fig.4.
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`
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`Moreover, as the Board explained, the specification describes a “bandlimited
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`channel” as “a single range of frequencies.” Inst.7; Ex.1001, 5:15-19, 1:57-59. As
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`the Claims are expressly directed to a “single mask-defined bandlimited channel”
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`and a “band edge of the mask defining said channel,” the Claims themselves
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`require the mask to define that single range of frequencies. Accordingly, each of
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`the left and right sides of the band edge of the mask must be located at respective
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`frequencies such that, at minimum, they include the frequency range of the
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`bandlimited channel—otherwise the mask would no longer be “defining [the]
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`3
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`MTel., Exhibit 2002, Juniper v. MTel., Page 7, IPR2017-00640
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`channel.” Ex.1001, cls.1, 3, 5. This is consistent with a POSITA’s understanding.6
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`Ex.2012, 37:11-25 (Kakaes: “the band edge of the mask defining the channel must
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`be in a place where the channel has been included, or else it will not be the band
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`edge defining the channel.”), 38:1-15, 46:24-47:10; Ex.2013, 180:5-181:4;
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`Ex.1018¶9. This is consistent with the specification, which expressly describes
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`Figure 4 as “attenuated at least 70 dB at the band edge,” and shows the band edge
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`of the mask defining the channel (at ±10 kHz), and including the channel.
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`Ex.1001, 1:57-61, 3:16-18, 4:47-49, Fig.4; Ex.1018¶10; Ex.2012, 68:21-69:3;
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`§II.A.
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`Abandoning its prior construction of “the band edge of the mask” as “the
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`innermost frequencies at which the mask requires attenuation of the signal”
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`(POR22), PO now asserts the proper construction is “the band edge that is nearest
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`to the center frequency of each outer most carrier at the highest power level of
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`each outer most carrier.” POR27; POR16-27. PO’s proposed construction should
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`be rejected because it improperly reads in limitations that are contrary to the claim
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`language and unsupported by the specification.
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`6 PO mischaracterizes Kakaes’ testimony regarding Petrovic (POR17-18)—he did
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`not need to determine the outer bounds of the term as the limitation is disclosed
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`regardless of the outer bounds. See n.10.
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`As the Board correctly found, the Claims merely recite “the band edge of the
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`mask” (Inst.9), and do not require the extraneous limitations PO improperly seeks
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`to add. Moreover, PO’s construction is based on fundamentally incorrect law. PO
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`asserts “[c]laim construction under Phillips may read limitations in the
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`specification into the claims” (POR6-7), but “one of the cardinal sins of patent
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`law—[is] reading a limitation from the written description into the claims.”
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`Phillips v. AWH Corp., 415 F.3d 1303, 1319-20 (Fed. Cir. 2005). Based on its
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`false legal premise, PO reads in limitations not even described in the
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`specification—nowhere does the ‘891 describe, much less require, calculating the
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`“nearest” band edge “at the highest power level of each outer most carrier.”
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`PO argues the specification describes a “nearest band edge” of “interest” that
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`must be “identif[ied]” out of multiple band edges on a given side of the mask.
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`POR22-23. Contrary to PO, the specification uses the term “nearest” to distinguish
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`the left band edge from the right band edge relative to a particular outermost
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`carrier, and does not describe a “nearest band edge” out of multiple band edges on
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`a given side of the mask. Ex.1018¶¶12-13. The passage PO cites in purported
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`support (Ex.1001, 4:30-34) describes “the frequency difference between the center
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`frequency of each carrier and the nearest band edge….” POR16-17, 20-28, 43, 49-
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`50. But the Board found, “it is at least as likely from this description that the
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`‘nearest band edge’ can refer to…the vertical line depicting the band edge of the
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`5
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`MTel., Exhibit 2002, Juniper v. MTel., Page 9, IPR2017-00640
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`mask on the left side…and its relationship to the center frequency of the left-most
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`carrier 32a, as compared with the vertical line depicting the band edge of the
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`mask, farther away, on the right side...” Inst.11. Indeed, the preceding paragraph
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`of the specification confirms the claimed “frequency difference” addresses the
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`relationship between “the band edges of the mask and the nearest respective
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`carrier” (Ex.1001, 4:17-23), i.e., the band edge of the mask on the left side and
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`the left-most carrier (as opposed to the right-most carrier), and vice-versa.
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`Ex.1018¶13.
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`Moreover, the Board correctly found the specification does not contain any
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`description or definition of “band edge” that portrays the mask having multiple
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`edges (“for instance, innermost and outermost edges”)—rejecting PO’s argument
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`that the specification describes a “nearest” band edge out of multiple band edges
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`on a given side from the center frequency. Inst.9; POR27-29. Instead, as
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`explained, the specification describes the band edge in Figure 4’s mask is at 10kHz
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`to the left and 10kHz to the right of the center frequency, as would have been
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`understood by a POSITA. Inst.9-10; Ex.1018¶10; Ex.2012, 63:9-15; 36:9-16; cf.
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`POR 3, 50 (the band edge is not “any” band edge as PO asserts).
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`PO further relies on the unsubstantiated testimony of its expert, Kesan, to
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`argue other masks allegedly show “multiple band edges,” but this extrinsic
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`evidence is inconsistent with the specification and should be disregarded. Phillips,
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`U.S. Patent No. 5,659,891
`418 F.3d at 1318. Kesan testifies without support “FCC emission masks can have
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`multiple band edges,” meaning “all points along the edge of the mask that limits
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`the frequency band” (Ex.2011¶¶51, 48; see also ¶¶49-50)—but the materials cited
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`do not even use the phrase “band edge” much less describe “multiple band edges.”
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`POR28; Ex.1018¶¶14-15. Kesan’s testimony about “current” masks
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`(Ex.2011¶¶49-51) in 2015 is further irrelevant to the understanding of a POSITA
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`“at the time of the invention.” Phillips, 415 F.3d at 1313.
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`PO also erroneously argues “[h]alf the distance between carriers, Dc, needs
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`to be minimized to increase the message capacity of the channel” and doing so is
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`only possible by choosing the “nearest,” not “farthest” band edge, to minimize
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`“Dm.” POR33-34; POR29-32, 42-43, 51-53. But the claims do not require
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`minimizing the frequency difference between carriers, nor do they require
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`minimizing the frequency difference between the band edge and the outermost
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`carrier.7 Instead, the claims simply state the frequency difference between the
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`band edge and outermost carrier is more than half the frequency difference
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`between carriers. Indeed, the specification explains that with transmitter co-
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`7 Nor should “the asymmetric condition” be read into the claims (see POR3, 28);
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`cf. Ex.1012, 47-48, 107-114 (Examiner rejecting prosecution claims directed to
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`spacing carriers “asymmetrically” as “well known in the art”).
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`U.S. Patent No. 5,659,891
`location, a range of carrier spacings (“e.g., 5 to 10 kHz”) is achievable, but does
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`not require minimizing carrier spacing to, e.g., 5 kHz. Ex.1001, 4:12-15.
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`Moreover, the ‘891 describes that carrier spacing is just one variable considered
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`among other parameters: “[i]n accordance with the present invention,” “operating
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`parameters…” and “other parameters can be adjusted” to “provid[e] optimal
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`transmission performance.” Ex.1001, 4:42-46; see also Ex.2013, 191:3-192:3,
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`192:22-194:15, 211:17-212:8. ‘891’s Figure 3B further shows Dm is not
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`minimized to minimize Dc (confirmed by PO’s annotation of Figure 3B reproduced
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`below). See POR21; Ex.1018¶¶16-18.
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`POR21 (yellow highlight added).
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`8
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`U.S. Patent No. 5,659,891
`And Kakaes did not agree “minimizing Dm necessarily minimizes Dc”—he
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`instead testified that decreasing Dm does not necessarily decrease Dc to satisfy the
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`Claims (and likewise, increasing Dc does not necessarily mean increasing Dm).
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`POR33, 43; Ex.2013, 185:7-17, 186:12-18; Ex.1018¶18. This is consistent with
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`the ‘891—for example—if Dm in Figure 3B above is decreased, Dc need not
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`necessarily be decreased to meet Dm > Dc (and vice-versa, if Dc is increased, Dm
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`need not necessarily be increased).
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`PO further incorrectly argues “the nearest band edge” means “the band edge
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`that is nearest to the center frequency of each outer most carrier at the highest
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`power level of each outer most carrier.” POR27; POR23-27. But the
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`specification—including Figures 3A and 3B, on which PO relies (POR23-27)—
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`does not describe or disclose that the band edge is determined according to “the
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`highest power level of each outer most carrier.” Ex.1018¶19. PO describes a
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`hypothetical “scenario” where “carriers 32c and 32d are not power level limited”
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`to allegedly show “the nearest band edges to the center frequencies of carriers 32c
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`and 32d are now points 31e and 31f,” but PO’s hypothetical carriers 32c and 32d
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`as well as hypothetical points 31e and 31f are not described anywhere in the
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`specification. POR26-27.
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`Furthermore, PO relies on Kesan’s incorrect testimony regarding the
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`placement of Figure 4’s mask over Figure 5A’s carriers. POR34-37, 51. As
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`U.S. Patent No. 5,659,891
`shown in Drawings 10 and 10b, Kesan incorrectly places Figure 4’s mask in Figure
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`5A to allegedly show “if the power levels of the carriers are kept below the
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`diagonal lines of the FCC mask as shown in Fig 3B, the nearest band edges of the
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`mask are the vertical lines of the mask.” POR36-37.
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`POR36; Ex.2011¶75.
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`POR37; Ex.2011¶77.
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`10
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`But Kesan’s arbitrary placement of Figure 4’s mask in Figure 5A is
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`fundamentally incorrect because it ignores the FCC specifications stating the mask
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`itself is defined relative to the total power of the unmodulated carrier. Ex.1012,
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`82 (47 C.F.R. §22.106 (1994) (“the power of any emission shall be attenuated
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`below the unmodulated carrier power (P)”)); Ex.1001, 5:10-15. Thus, Kesan’s
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`testimony that carriers should be transmitted at less than “full power” to fit within
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`the mask is nonsensical, as the mask itself is defined relative to the total power of
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`the unmodulated signal. Ex.1018¶¶19-25. The carriers’ power level cannot simply
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`be arbitrarily lowered to fit under a mask, as Kesan has done.8 Id.
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`As Petitioners’ expert, Kakaes, explains, based on the FCC requirements, a
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`POSITA would have understood “0 dB” in Figure 4 indicates a power level as a
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`frame of reference relative to the total power of an unmodulated carrier, and “0
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`dB” in Figure 5A indicates a power level as a frame of reference relative to the
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`maximum power level of the modulated carrier at a given frequency.
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`Ex.1018¶¶20-21; Ex.2012, 133:10-135:8. Thus, to correctly determine how Figure
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`4’s mask is placed in Figure 5A, it is necessary to determine the total power of the
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`unmodulated carrier (P). Ex.1018¶23. Based on the total power of the
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`8 Kesan’s analysis with respect to the mask submitted in an IDS during prosecution
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`is likewise incorrect and should be disregarded. POR37-40, 51; Ex.1018¶26-28.
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`11
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`unmodulated carrier, a POSITA would have understood the correct placement of
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`Figure 4’s mask over Figure 5A’s carriers is at about 8.9-10.1 dB above the 0 dB
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`reference point in Figure 5A (shown below in blue). Ex.1018¶23-24. This is
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`consistent with the ‘891: “carriers [in Figure 5A] remained within the FCC mask.”
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`Ex.1001, 4:56-63; Ex.1018¶24.
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`Ex.1001, Figure 5A; Ex.1018¶24.
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`As shown below, correctly applying Figure 4’s mask in Figure 5A further
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`demonstrates PO’s construction is wrong. Using PO’s construction, the alleged
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`“nearest band edge” of Figure 4’s mask, looking at “the highest power level of
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`each outer most carrier” is at approximately ±7.5kHz, but the ‘891 specifies “the
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`band edge” in Figure 4 is ±10kHz from the center frequency (at 70dB) .
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`Ex.1001, 1:57-61, 3:16-18, 4:47-48; Ex.1018¶25; see also Ex.2011¶73. Moreover,
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`under PO’s construction, a band edge of ±7.5kHz does not even meet the claim
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`limitations. Ex.1018¶25.
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`Ex.1001, Fig.5A.
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`Thus, PO’s reliance on Kesan’s extrinsic hypotheticals should be rejected as
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`incorrect and inconsistent with the specification and claims. Contrary to Kesan, a
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`POSITA would have understood “the band edge” in Figure 4’s mask is at 70 dB at
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`±10kHz from the center frequency and would not have understood the
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`specification as describing selecting a “nearest band edge” from, e.g., points along
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`the diagonal lines of Figure 4’s mask based on the highest power level of the
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`carriers. Ex.1018¶¶9-28.
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`IPR2016-00768
`U.S. Patent No. 5,659,891
` B.
`“transmitting carriers from the same location” (cls.1, 3)9
`PO’s proposed construction of “transmitting carriers from the same location”
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`to additionally require transmitting “at the same time” should be rejected because
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`it improperly reads in an extraneous limitation. POR44-46; Hoganas v. Dresser
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`Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993). As the Board correctly found, the
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`Claims “do[] not recite any temporal requirement, i.e., that all the carriers must be
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`transmitted at the same time, only that the carriers must be transmitted from the
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`same location.” Inst.17 (emph.orig.). Indeed, PO concedes the “claims do not
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`recite a temporal component with regard to transmitting.” POR59.
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`PO’s construction finds no support in the specification, which describes
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`transmitting carriers from the same location, but never once mentions or requires
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`transmission “at the same time.” Ex.1001, 2:26-36, 2:37-46, 2:47-59, 4:8-11;
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`Ex.1018¶29. PO relies on Figure 1 (POR59), but there is no disclosure Figure 1
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`requires transmission “at the same time”—nor is Figure 1 limited to a specific
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`modulation method. Ex.1018¶¶30-31. Besides, it is well-settled that limitations
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`from embodiments are not read into claims. Hill-Rom Servs., Inc. v. Stryker Corp.,
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`755 F.3d 1367, 1371-72 (Fed. Cir. 2014).
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`
`9 This claim language is not in Claim 5. POR44. For the same reasons herein,
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`Claim 5 does not require transmitting “at the same time.”
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`14
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`Kesan’s extrinsic testimony regarding the alleged “reasons” for co-location
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`of carriers (POR44-46) also provides no support for PO’s construction. First, PO
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`asserts transmission “at the same time” is required to achieve the “purpose” of
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`increasing “message capacity.” POR45, 59. But this is wrong in view of the claim
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`language, which recites a “method of operating…carriers.” Inst.17; POR60
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`(Claims “require[] actually ‘operating…paging carriers’”) (emph.orig.). Further,
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`PO’s own patent (U.S. 5,590,403) explains in well-known modulation schemes,
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`such as modulated on/off keying (“OOK”), the amount of information or
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`“messages” transmitted is a function of the number of carriers that are operational,
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`not of the number transmitting “at the same time.” Ex.1019, 13:57-14:15;
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`Ex.1018¶¶36, 32-39. In OOK, “[e]ach carrier frequency transmits a binary ‘one’”
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`if keyed “ON” and “a binary ‘zero’” if keyed “OFF.” Ex.1019, 14:10-12, Fig.10;
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`Ex.1018¶¶37-39. Thus, even when a carrier is “off,” a POSITA would have
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`understood the carrier is active and conveying information—a binary zero.
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`Ex.1018¶39; Ex.2012, 123:5-124:13; Ex.1019, 14:13-15, 13:64-67 (for “n” carrier
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`frequencies, “an n-bit binary word” is conveyed even when some carriers are
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`“off”).
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`Second, PO argues transmission “at the same time” is required to “prevent[]
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`[near-far] interference among co-located carriers.” POR45. But the Claims do not
`
`require “preventing [near-far] interference.” Instead, the Claims recite
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`
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`15
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`“transmitting said carriers,” and, as PO and Kesan acknowledge, near-far
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`interference occurs at the receivers—not at the transmitters. Ex.2011¶27 (“near-
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`far interference experienced by a receiver…”); POR10-11; Ex.1018¶40. Contrary
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`to PO’s assertion that “interference between carriers can only occur if they are
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`transmitting at the same time” (POR45), whether a receiver experiences
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`interference depends on many factors, including receiver design, power level per
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`carrier, and receiver’s distance from the transmitter. Ex.1018¶41. Thus,
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`simultaneous carrier transmission is not a necessary condition for interference.
`
`Ex.1018¶41. Moreover, in multicarrier modulation schemes like OOK, during
`
`operation, all adjacent subcarriers overlap (i.e., interfere) even though all
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`subcarriers may not be keyed “ON” at every time instant. Ex.1018¶41.
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`“single mask-defined, bandlimited channel” (cls.1, 3, 5)
`
` C.
`Construction of this term is unnecessary as it is undisputed the prior art
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`discloses a “single mask-defined, bandlimited channel.” Inst.8; Ex.1001, 1:57-59,
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`5:11-19; POR6-7; Vivid Techs. v. Am. Sci. & Eng’g, 200 F.3d 795, 803 (Fed. Cir.
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`1999).
`
` THE PRIOR ART
`II.
` A.
`Petrovic discloses “frequency difference…between…the outer
`most…carriers and the band edge of the mask” (cls.1.C, 3.C, 5.D)
`
`PO argues Petrovic does not disclose the frequency difference between the
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`outermost carrier and the band edge of the mask defining said channel is more than
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`16
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`half the frequency difference between adjacent carriers (POR48-58), but Petrovic
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`discloses this limitation under the Board’s correct construction, and even under
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`PO’s incorrect construction.
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`Under the Board’s construction (§I.A), Petrovic discloses this limitation.
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`Pet.20-21; Inst.14. Petrovic discloses “doubling the channel bandwidth” of a
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`known 25kHz channel to a 50kHz channel to provide “a 35 kHz pass band in the
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`middle of the channel and 7.5 kHz guard bands on each side,” with “eight
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`subcarriers spaced 5kHz apart.” Ex.1013, 1; Pet.20-21; Ex.1003¶19; Inst.14, 18-
`
`19. Petrovic thus discloses the frequency difference between the outermost
`
`carriers and the band edge of the mask defining the channel (at least 7.5kHz) is
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`more than half the frequency difference between adjacent carriers (2.5kHz, which
`
`is half of 5kHz). Pet.21; Ex.1003¶¶21-22. PO argues “the guard bands” cannot be
`
`“us[ed]…in relation to the mask.” POR52-53. But Petrovic expressly discloses an
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`“emission mask” represented by “dashed-lines” (in Figures 1 and 2) defining a
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`50kHz channel that includes “a 35 kHz pass band in the middle of the channel
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`and 7.5 kHz guard bands on each side.” Ex.1013, 1-2; Pet.20-21; Ex.1003¶19;
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`Ex.1018¶¶42-43 Ex.2012, 32:6-33:12; Ex.2012, 223 (Kakaes 4); Ex.2013, 148:5-
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`14.
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`
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`17
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`Ex.1013, Fig.1; Pet.18; Ex.1003¶19.
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`
`
`As explained (§I.A), the ‘Claims recite a “single mask-defined bandlimited
`
`channel” and “[a] band edge of the mask defining said channel”— thus, the band
`
`edge of the mask defines the channel. Id.; Ex.1001, cls.1, 3, 5; Phillips, 415 F.3d
`
`at 1314. As Kakaes testified, “the band edge of the mask defining the channel
`
`must be in a place where the channel has been included, or else it will not be the
`
`band edge defining the channel.” Ex.2012, 37:11-25, 38:1-15, 46:24-47:10;
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`Ex.2013, 180:5-181:4; Ex.1018¶44. This is consistent with the specification,
`
`where Figure 4 shows the “band edge of the mask” defining the channel and
`
`including the entire channel, not a portion of the channel. Ex.1001, 1:57-61,
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`3:16-18, 4:47-49, Fig.4; Ex.1018¶44; Ex.2012, 68:21-69:3; §I.A.
`
`
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`18
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`Because Petrovic discloses the 7.5kHz guard bands are part of the 50kHz
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`channel, “the band edge of the mask,” at minimum, is located 7.5kHz from “the
`
`center frequency of the outer most of said carriers” to define the channel.10
`
`Ex.1013, 1-2; Pet.20-21; Ex.1003¶¶19-20; Ex.1018¶44; Ex.2012, 32:6-33:12,
`
`37:11-25, 38:1-15, 46:24-47:10; Ex.2013, 180:5-181:4. Indeed, PO admits “the
`
`7.5 kHz guard bands are actually the edges of the 50 kHz channel itself.” POR53.
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`Furthermore, Petrovic discloses a modulation technique, “included in
`
`MTEL’s petition to the FCC” requiring “attenuat[ion] of at least 70 dB” even
`
`beyond the 7.5kHz guard bands (see pink arrows below). Ex.1013, 4, Figs. 1, 2;
`
`Ex.2012, 39:2-25 (Kakaes: Petrovic’s mask requires “attenuation…[of] at least 70
`
`dB”), 223 (Kakaes 4); Ex.1001, Fig.4, 1:57-61 (“FCC masks typically
`
`require…attenuat[ion] [of] at least 70 dB at the band edge”), 2:16-18, 4:47-49.
`
`As Petitioners explained, a frequency difference of at least 7.5kHz is more than
`
`
`10 Contrary to PO (POR41-43, 18), Kakaes did not need to determine definitively
`
`the outer bounds of “the band edge of the mask,” as Petrovic discloses the
`
`limitation regardless of the outer bounds. Ex.2012, 36:17-24, 64:17-65:21;
`
`Ex.1003¶20; Ex.1018¶¶11,44-45; Vivid, 200 F.3d at 803 (“only those terms need
`
`[to] be construed that are in controversy, and only to the extent necessary to
`
`resolve the controversy”).
`
`
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`19
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`2.5kHz (half of the 5kHz between adjacent subcarriers) and meets this limitation.
`
`Pet.14-15, 21.
`
`Ex.1013, Fig.1.
`
`
`
` Applying its incorrect construction (§I.A), PO argues “the band edge of
`
`the mask” is selected based on the power level of the outermost carriers as shown
`
`in “Drawing 12.” POR53-55. But applying PO’s construction to Petrovic
`
`excludes portions of the 50kHz channel, which is inconsistent with the Claims’
`
`recitation of “[a] band edge of the mask defining said channel”—not portions of a
`
`channel. Ex.1018¶¶46-47.
`
`
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`20
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`POR54.
`
`
`
`PO further argues in Petrovic’s Figure 1, Carrier 4—not Carrier 7—is
`
`adjacent to Carrier 8. POR55. But Petrovic discloses Carriers 7 and 8 are
`
`adjacent. Petrovic’s “Multicarrier Modulation [MCM]” system has “eight
`
`subcarriers spaced 5 kHz apart” and operates using 70 symbols (representing all
`
`combinations of four of the eight subcarriers). Ex.1013, 1; Ex.1003¶¶18, 21;
`
`Ex.1018¶48. Petrovic’s “transmitter output is presented in Fig. 1, and 2”—Figure
`
`1 shows “a single symbol…repeatedly transmitted” and Figure 2 shows “pseudo
`
`random data,” (Ex.1013, 2) where, as Kakaes explained, “the set of four [i]s
`
`continuously changing.” (Ex.2012, 101:15-103:8); Pet.13-16; Ex.1003¶18;
`
`Ex.1018¶48; see also Ex.2012, 112:9-17; §I.B (claims do not require transmitting
`
`at the same time). Accordingly, Carrier 7 is adjacent to Carrier 8.
`
`
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`21
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`
`Carrier?
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`Fig. 1 Spectrum of a single symbol repeatedly transmitted
`
`RBSO00Hz
`
`YVBikHz
`
`
`
`Ex.1013,