throbber
IPR2016-00768
`U.S. Patent No. 5,659,891
`
`
`
`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.
`
`
`
`
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 1, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`
`
`
`TABLE OF CONTENTS
`
`
`  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 
`
`
`
`
`
`
`
`
`
`
`
`i
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 2, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`
` 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
`
`Exhibit
`Ex. 1001
`Ex. 1002
`
`Ex. 1003
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 3, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`
`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
`
`Exhibit
`Ex. 1015
`
`Ex. 1016
`Ex. 1017
`
`Ex. 1018
`Ex. 1019
`Ex. 1020
`
`
`
`
`iii
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 4, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`The Board correctly found at institution that Petitioners established a
`
`reasonable likelihood of prevailing in proving claims 1-5 (“Claims”) unpatentable.
`
`IPR2016-00768, Pap.13 (“Inst.”), 2. Because the Petition demonstrates
`
`unpatentability, Patent Owner’s (“PO”) Response (“POR,” Pap.28) improperly
`
`injects limitations into the Claims, and ignores the references’ plain disclosures.
`
`PO fails to rebut Petitioners’ evidence.2, 3
`
`
`I.
`
`CLAIM CONSTRUCTION4
` A.
` “the band edge of the mask” (cls.1, 3, 5)
`For purposes of this proceeding, the Board correctly construed “the band
`
`edge of the mask” as “a band edge of the single mask-defined bandlimited
`
`channel.” Inst.12. The Board’s construction is consistent with the ‘891’s
`
`disclosure and a POSITA’s understanding. Ex.1001, cls.1, 3, 5, 1:57-61, 3:16-18,
`
`
`2 PO fails to cite and waives any arguments in Ex.2011¶¶1-8, 10-18, 39, 43, 45, 47,
`
`59-60, 64, 70, 79-80, 86, 88-92, 97-98, 100-104, 107-108, 111, 113, 123-126, 129-
`
`134. Pap.14, 3; 37 C.F.R. §42.6(a)(3). Arguments in PO’s Preliminary Response
`
`not made in POR are waived. Id.
`
`3 Emphasis added, internal quotations/citations omitted, unless noted.
`
`4 Because the ‘891 has expired, terms are construed under Phillips (Inst.6). Cf.
`
`POR49.
`
`
`
`1
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 5, IPR2017-00640
`
`

`

`IPR2016-00768
`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
`
`divorced from the Claims and specification and should be rejected.
`
`As the Board properly found, the Claims recite “the band edge of the mask
`
`defining said channel,” referring back to the claim language “single mask-defined
`
`bandlimited channel.” Id.; Ex.1001, cls.1, 3, 5. With respect to “the band edge,”
`
`the specification states “FCC masks typically require the power spectral density of
`
`a signal to be attenuated at least 70 dB at the band edge.” Ex.1001, 1:57-61; Inst.
`
`9; Ex.1012, 48. The specification states Figure 4 is “an exemplary FCC emissions
`
`mask,” requiring “attenuat[ion] at least 70 dB within 10 kHz from center
`
`frequency.” Ex.1001, 3:16-18, 4:47-49. Thus, as the Board correctly found, the
`
`specification describes “the band edge” of the mask in Figure 4 “includ[es] the
`
`vertical lines at 10 kHz either side of the center frequency.” Inst.10.5 And
`
`contrary to PO (POR17-18), Kakaes confirmed a POSITA would have understood
`
`“the band edge” in Figure 4’s mask is at “plus 10 kilohertz” and “minus 10
`
`kilohertz” from the center frequency, “supported by…the fact that it’s a 70-dB
`
`attenuation, consistent with the specification.” Ex.2012, 68:10-69:3; see also
`
`Ex.1018¶10; Ex.2012, 78:1-6.
`
`
`5 “[T]he band edge” refers to a frequency. Ex.2012, 63:16-64:16.
`
`
`
`2
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 6, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`
`Ex.1001, Fig.4.
`
`
`
`Moreover, as the Board explained, the specification describes a “bandlimited
`
`channel” as “a single range of frequencies.” Inst.7; Ex.1001, 5:15-19, 1:57-59. As
`
`the Claims are expressly directed to a “single mask-defined bandlimited channel”
`
`and a “band edge of the mask defining said channel,” the Claims themselves
`
`require the mask to define that single range of frequencies. Accordingly, each of
`
`the left and right sides of the band edge of the mask must be located at respective
`
`frequencies such that, at minimum, they include the frequency range of the
`
`bandlimited channel—otherwise the mask would no longer be “defining [the]
`
`
`
`3
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 7, IPR2017-00640
`
`

`

`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
`
`Ex.2012, 37:11-25 (Kakaes: “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.”), 38:1-15, 46:24-47:10; Ex.2013, 180:5-181:4;
`
`Ex.1018¶9. This is consistent with the specification, which expressly describes
`
`Figure 4 as “attenuated at least 70 dB at the band edge,” and shows the band edge
`
`of the mask defining the channel (at ±10 kHz), and including the channel.
`
`Ex.1001, 1:57-61, 3:16-18, 4:47-49, Fig.4; Ex.1018¶10; Ex.2012, 68:21-69:3;
`
`§II.A.
`
`Abandoning its prior construction of “the band edge of the mask” as “the
`
`innermost frequencies at which the mask requires attenuation of the signal”
`
`(POR22), PO now asserts the proper construction is “the band edge that is nearest
`
`to the center frequency of each outer most carrier at the highest power level of
`
`each outer most carrier.” POR27; POR16-27. PO’s proposed construction should
`
`be rejected because it improperly reads in limitations that are contrary to the claim
`
`language and unsupported by the specification.
`
`
`6 PO mischaracterizes Kakaes’ testimony regarding Petrovic (POR17-18)—he did
`
`not need to determine the outer bounds of the term as the limitation is disclosed
`
`regardless of the outer bounds. See n.10.
`
`
`
`4
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 8, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`As the Board correctly found, the Claims merely recite “the band edge of the
`
`mask” (Inst.9), and do not require the extraneous limitations PO improperly seeks
`
`to add. Moreover, PO’s construction is based on fundamentally incorrect law. PO
`
`asserts “[c]laim construction under Phillips may read limitations in the
`
`specification into the claims” (POR6-7), but “one of the cardinal sins of patent
`
`law—[is] reading a limitation from the written description into the claims.”
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1319-20 (Fed. Cir. 2005). Based on its
`
`false legal premise, PO reads in limitations not even described in the
`
`specification—nowhere does the ‘891 describe, much less require, calculating the
`
`“nearest” band edge “at the highest power level of each outer most carrier.”
`
`PO argues the specification describes a “nearest band edge” of “interest” that
`
`must be “identif[ied]” out of multiple band edges on a given side of the mask.
`
`POR22-23. Contrary to PO, the specification uses the term “nearest” to distinguish
`
`the left band edge from the right band edge relative to a particular outermost
`
`carrier, and does not describe a “nearest band edge” out of multiple band edges on
`
`a given side of the mask. Ex.1018¶¶12-13. The passage PO cites in purported
`
`support (Ex.1001, 4:30-34) describes “the frequency difference between the center
`
`frequency of each carrier and the nearest band edge….” POR16-17, 20-28, 43, 49-
`
`50. But the Board found, “it is at least as likely from this description that the
`
`‘nearest band edge’ can refer to…the vertical line depicting the band edge of the
`
`
`
`5
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 9, IPR2017-00640
`
`

`

`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
`
`carrier 32a, as compared with the vertical line depicting the band edge of the
`
`mask, farther away, on the right side...” Inst.11. Indeed, the preceding paragraph
`
`of the specification confirms the claimed “frequency difference” addresses the
`
`relationship between “the band edges of the mask and the nearest respective
`
`carrier” (Ex.1001, 4:17-23), i.e., the band edge of the mask on the left side and
`
`the left-most carrier (as opposed to the right-most carrier), and vice-versa.
`
`Ex.1018¶13.
`
`Moreover, the Board correctly found the specification does not contain any
`
`description or definition of “band edge” that portrays the mask having multiple
`
`edges (“for instance, innermost and outermost edges”)—rejecting PO’s argument
`
`that the specification describes a “nearest” band edge out of multiple band edges
`
`on a given side from the center frequency. Inst.9; POR27-29. Instead, as
`
`explained, the specification describes the band edge in Figure 4’s mask is at 10kHz
`
`to the left and 10kHz to the right of the center frequency, as would have been
`
`understood by a POSITA. Inst.9-10; Ex.1018¶10; Ex.2012, 63:9-15; 36:9-16; cf.
`
`POR 3, 50 (the band edge is not “any” band edge as PO asserts).
`
`PO further relies on the unsubstantiated testimony of its expert, Kesan, to
`
`argue other masks allegedly show “multiple band edges,” but this extrinsic
`
`evidence is inconsistent with the specification and should be disregarded. Phillips,
`
`
`
`6
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 10, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`418 F.3d at 1318. Kesan testifies without support “FCC emission masks can have
`
`multiple band edges,” meaning “all points along the edge of the mask that limits
`
`the frequency band” (Ex.2011¶¶51, 48; see also ¶¶49-50)—but the materials cited
`
`do not even use the phrase “band edge” much less describe “multiple band edges.”
`
`POR28; Ex.1018¶¶14-15. Kesan’s testimony about “current” masks
`
`(Ex.2011¶¶49-51) in 2015 is further irrelevant to the understanding of a POSITA
`
`“at the time of the invention.” Phillips, 415 F.3d at 1313.
`
`PO also erroneously argues “[h]alf the distance between carriers, Dc, needs
`
`to be minimized to increase the message capacity of the channel” and doing so is
`
`only possible by choosing the “nearest,” not “farthest” band edge, to minimize
`
`“Dm.” POR33-34; POR29-32, 42-43, 51-53. But the claims do not require
`
`minimizing the frequency difference between carriers, nor do they require
`
`minimizing the frequency difference between the band edge and the outermost
`
`carrier.7 Instead, the claims simply state the frequency difference between the
`
`band edge and outermost carrier is more than half the frequency difference
`
`between carriers. Indeed, the specification explains that with transmitter co-
`
`
`7 Nor should “the asymmetric condition” be read into the claims (see POR3, 28);
`
`cf. Ex.1012, 47-48, 107-114 (Examiner rejecting prosecution claims directed to
`
`spacing carriers “asymmetrically” as “well known in the art”).
`
`
`
`7
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 11, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`location, a range of carrier spacings (“e.g., 5 to 10 kHz”) is achievable, but does
`
`not require minimizing carrier spacing to, e.g., 5 kHz. Ex.1001, 4:12-15.
`
`Moreover, the ‘891 describes that carrier spacing is just one variable considered
`
`among other parameters: “[i]n accordance with the present invention,” “operating
`
`parameters…” and “other parameters can be adjusted” to “provid[e] optimal
`
`transmission performance.” Ex.1001, 4:42-46; see also Ex.2013, 191:3-192:3,
`
`192:22-194:15, 211:17-212:8. ‘891’s Figure 3B further shows Dm is not
`
`minimized to minimize Dc (confirmed by PO’s annotation of Figure 3B reproduced
`
`below). See POR21; Ex.1018¶¶16-18.
`
`POR21 (yellow highlight added).
`
`
`
`
`
`8
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 12, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`And Kakaes did not agree “minimizing Dm necessarily minimizes Dc”—he
`
`instead testified that decreasing Dm does not necessarily decrease Dc to satisfy the
`
`Claims (and likewise, increasing Dc does not necessarily mean increasing Dm).
`
`POR33, 43; Ex.2013, 185:7-17, 186:12-18; Ex.1018¶18. This is consistent with
`
`the ‘891—for example—if Dm in Figure 3B above is decreased, Dc need not
`
`necessarily be decreased to meet Dm > Dc (and vice-versa, if Dc is increased, Dm
`
`need not necessarily be increased).
`
`PO further incorrectly argues “the nearest band edge” means “the band edge
`
`that is nearest to the center frequency of each outer most carrier at the highest
`
`power level of each outer most carrier.” POR27; POR23-27. But the
`
`specification—including Figures 3A and 3B, on which PO relies (POR23-27)—
`
`does not describe or disclose that the band edge is determined according to “the
`
`highest power level of each outer most carrier.” Ex.1018¶19. PO describes a
`
`hypothetical “scenario” where “carriers 32c and 32d are not power level limited”
`
`to allegedly show “the nearest band edges to the center frequencies of carriers 32c
`
`and 32d are now points 31e and 31f,” but PO’s hypothetical carriers 32c and 32d
`
`as well as hypothetical points 31e and 31f are not described anywhere in the
`
`specification. POR26-27.
`
`Furthermore, PO relies on Kesan’s incorrect testimony regarding the
`
`placement of Figure 4’s mask over Figure 5A’s carriers. POR34-37, 51. As
`
`
`
`9
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 13, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`shown in Drawings 10 and 10b, Kesan incorrectly places Figure 4’s mask in Figure
`
`5A to allegedly show “if the power levels of the carriers are kept below the
`
`diagonal lines of the FCC mask as shown in Fig 3B, the nearest band edges of the
`
`mask are the vertical lines of the mask.” POR36-37.
`
`POR36; Ex.2011¶75.
`
`
`
`
`
`POR37; Ex.2011¶77.
`
`
`
`10
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 14, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`But Kesan’s arbitrary placement of Figure 4’s mask in Figure 5A is
`
`fundamentally incorrect because it ignores the FCC specifications stating the mask
`
`itself is defined relative to the total power of the unmodulated carrier. Ex.1012,
`
`82 (47 C.F.R. §22.106 (1994) (“the power of any emission shall be attenuated
`
`below the unmodulated carrier power (P)”)); Ex.1001, 5:10-15. Thus, Kesan’s
`
`testimony that carriers should be transmitted at less than “full power” to fit within
`
`the mask is nonsensical, as the mask itself is defined relative to the total power of
`
`the unmodulated signal. Ex.1018¶¶19-25. The carriers’ power level cannot simply
`
`be arbitrarily lowered to fit under a mask, as Kesan has done.8 Id.
`
`As Petitioners’ expert, Kakaes, explains, based on the FCC requirements, a
`
`POSITA would have understood “0 dB” in Figure 4 indicates a power level as a
`
`frame of reference relative to the total power of an unmodulated carrier, and “0
`
`dB” in Figure 5A indicates a power level as a frame of reference relative to the
`
`maximum power level of the modulated carrier at a given frequency.
`
`Ex.1018¶¶20-21; Ex.2012, 133:10-135:8. Thus, to correctly determine how Figure
`
`4’s mask is placed in Figure 5A, it is necessary to determine the total power of the
`
`unmodulated carrier (P). Ex.1018¶23. Based on the total power of the
`
`
`8 Kesan’s analysis with respect to the mask submitted in an IDS during prosecution
`
`is likewise incorrect and should be disregarded. POR37-40, 51; Ex.1018¶26-28.
`
`
`
`11
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 15, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`unmodulated carrier, a POSITA would have understood the correct placement of
`
`Figure 4’s mask over Figure 5A’s carriers is at about 8.9-10.1 dB above the 0 dB
`
`reference point in Figure 5A (shown below in blue). Ex.1018¶23-24. This is
`
`consistent with the ‘891: “carriers [in Figure 5A] remained within the FCC mask.”
`
`Ex.1001, 4:56-63; Ex.1018¶24.
`
`
`
`
`
`Ex.1001, Figure 5A; Ex.1018¶24.
`
`As shown below, correctly applying Figure 4’s mask in Figure 5A further
`
`demonstrates PO’s construction is wrong. Using PO’s construction, the alleged
`
`“nearest band edge” of Figure 4’s mask, looking at “the highest power level of
`
`each outer most carrier” is at approximately ±7.5kHz, but the ‘891 specifies “the
`
`band edge” in Figure 4 is ±10kHz from the center frequency (at 70dB) .
`
`
`
`12
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 16, IPR2017-00640
`
`

`

`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,
`
`under PO’s construction, a band edge of ±7.5kHz does not even meet the claim
`
`limitations. Ex.1018¶25.
`
`Ex.1001, Fig.5A.
`
`
`
`Thus, PO’s reliance on Kesan’s extrinsic hypotheticals should be rejected as
`
`incorrect and inconsistent with the specification and claims. Contrary to Kesan, a
`
`POSITA would have understood “the band edge” in Figure 4’s mask is at 70 dB at
`
`±10kHz from the center frequency and would not have understood the
`
`specification as describing selecting a “nearest band edge” from, e.g., points along
`
`the diagonal lines of Figure 4’s mask based on the highest power level of the
`
`carriers. Ex.1018¶¶9-28.
`
`
`
`13
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 17, IPR2017-00640
`
`

`

`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”
`
`to additionally require transmitting “at the same time” should be rejected because
`
`it improperly reads in an extraneous limitation. POR44-46; Hoganas v. Dresser
`
`Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993). As the Board correctly found, the
`
`Claims “do[] not recite any temporal requirement, i.e., that all the carriers must be
`
`transmitted at the same time, only that the carriers must be transmitted from the
`
`same location.” Inst.17 (emph.orig.). Indeed, PO concedes the “claims do not
`
`recite a temporal component with regard to transmitting.” POR59.
`
`PO’s construction finds no support in the specification, which describes
`
`transmitting carriers from the same location, but never once mentions or requires
`
`transmission “at the same time.” Ex.1001, 2:26-36, 2:37-46, 2:47-59, 4:8-11;
`
`Ex.1018¶29. PO relies on Figure 1 (POR59), but there is no disclosure Figure 1
`
`requires transmission “at the same time”—nor is Figure 1 limited to a specific
`
`modulation method. Ex.1018¶¶30-31. Besides, it is well-settled that limitations
`
`from embodiments are not read into claims. Hill-Rom Servs., Inc. v. Stryker Corp.,
`
`755 F.3d 1367, 1371-72 (Fed. Cir. 2014).
`
`
`9 This claim language is not in Claim 5. POR44. For the same reasons herein,
`
`Claim 5 does not require transmitting “at the same time.”
`
`
`
`14
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 18, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`Kesan’s extrinsic testimony regarding the alleged “reasons” for co-location
`
`of carriers (POR44-46) also provides no support for PO’s construction. First, PO
`
`asserts transmission “at the same time” is required to achieve the “purpose” of
`
`increasing “message capacity.” POR45, 59. But this is wrong in view of the claim
`
`language, which recites a “method of operating…carriers.” Inst.17; POR60
`
`(Claims “require[] actually ‘operating…paging carriers’”) (emph.orig.). Further,
`
`PO’s own patent (U.S. 5,590,403) explains in well-known modulation schemes,
`
`such as modulated on/off keying (“OOK”), the amount of information or
`
`“messages” transmitted is a function of the number of carriers that are operational,
`
`not of the number transmitting “at the same time.” Ex.1019, 13:57-14:15;
`
`Ex.1018¶¶36, 32-39. In OOK, “[e]ach carrier frequency transmits a binary ‘one’”
`
`if keyed “ON” and “a binary ‘zero’” if keyed “OFF.” Ex.1019, 14:10-12, Fig.10;
`
`Ex.1018¶¶37-39. Thus, even when a carrier is “off,” a POSITA would have
`
`understood the carrier is active and conveying information—a binary zero.
`
`Ex.1018¶39; Ex.2012, 123:5-124:13; Ex.1019, 14:13-15, 13:64-67 (for “n” carrier
`
`frequencies, “an n-bit binary word” is conveyed even when some carriers are
`
`“off”).
`
`Second, PO argues transmission “at the same time” is required to “prevent[]
`
`[near-far] interference among co-located carriers.” POR45. But the Claims do not
`
`require “preventing [near-far] interference.” Instead, the Claims recite
`
`
`
`15
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 19, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`“transmitting said carriers,” and, as PO and Kesan acknowledge, near-far
`
`interference occurs at the receivers—not at the transmitters. Ex.2011¶27 (“near-
`
`far interference experienced by a receiver…”); POR10-11; Ex.1018¶40. Contrary
`
`to PO’s assertion that “interference between carriers can only occur if they are
`
`transmitting at the same time” (POR45), whether a receiver experiences
`
`interference depends on many factors, including receiver design, power level per
`
`carrier, and receiver’s distance from the transmitter. Ex.1018¶41. Thus,
`
`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
`
`subcarriers may not be keyed “ON” at every time instant. Ex.1018¶41.
`
`“single mask-defined, bandlimited channel” (cls.1, 3, 5)
`
` C.
`Construction of this term is unnecessary as it is undisputed the prior art
`
`discloses a “single mask-defined, bandlimited channel.” Inst.8; Ex.1001, 1:57-59,
`
`5:11-19; POR6-7; Vivid Techs. v. Am. Sci. & Eng’g, 200 F.3d 795, 803 (Fed. Cir.
`
`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
`
`outermost carrier and the band edge of the mask defining said channel is more than
`
`
`
`16
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 20, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`half the frequency difference between adjacent carriers (POR48-58), but Petrovic
`
`discloses this limitation under the Board’s correct construction, and even under
`
`PO’s incorrect construction.
`
`Under the Board’s construction (§I.A), Petrovic discloses this limitation.
`
`Pet.20-21; Inst.14. Petrovic discloses “doubling the channel bandwidth” of a
`
`known 25kHz channel to a 50kHz channel to provide “a 35 kHz pass band in the
`
`middle of the channel and 7.5 kHz guard bands on each side,” with “eight
`
`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
`
`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
`
`“emission mask” represented by “dashed-lines” (in Figures 1 and 2) defining a
`
`50kHz channel that includes “a 35 kHz pass band in the middle of the channel
`
`and 7.5 kHz guard bands on each side.” Ex.1013, 1-2; Pet.20-21; Ex.1003¶19;
`
`Ex.1018¶¶42-43 Ex.2012, 32:6-33:12; Ex.2012, 223 (Kakaes 4); Ex.2013, 148:5-
`
`14.
`
`
`
`17
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 21, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`
`Ex.1013, Fig.1; Pet.18; Ex.1003¶19.
`
`
`
`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;
`
`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,
`
`3:16-18, 4:47-49, Fig.4; Ex.1018¶44; Ex.2012, 68:21-69:3; §I.A.
`
`
`
`18
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 22, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`Because Petrovic discloses the 7.5kHz guard bands are part of the 50kHz
`
`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.
`
`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”).
`
`
`
`19
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 23, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`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.
`
`
`
`20
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 24, IPR2017-00640
`
`

`

`IPR2016-00768
`U.S. Patent No. 5,659,891
`
`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.
`
`
`
`21
`
`MTel., Exhibit 2002, Juniper v. MTel., Page 25, IPR2017-00640
`
`

`

`IPR2016-00768
`IPR2016-00768
`U.S. Patent No. 5,659,891
`U.S. Patent No. 5,659,891
`
`Carrier?
`Carrier 6
`
`Carrier 2
`
`f
`
`Carrier 5
`Carrier 3
`
`Carrier 4
`
`
`Ri: Lowe’|ATsoUB20. Od3m 3s 0: Pk
`
`
`
`
`| PoE ALLL [| fT
`Carrier 1 a}
`i
`i
`Carrier &
`|
`:
`rh
`I
`i
`Mono off ie
`_
`-
`|
`i
`Pp WR AD
`pg hip ‘\
`Py EE A
`riop edt
`|
`htt
`\
`|
`ti pide!
`i
`[
`\
`|
`Py
`dp ba ba bay.
`Aoop bb bbb. A.
`Peers eatin
`'
`foo
`far bord |
`|
`_
`1
`f alt: Pit [
`\
`i
`|
`t ly picpa
`lity iidiaid
`\
`;
`hf
`i bia
`' a i I NO
`ti
`hi
`i
`A
`od ‘
`a! hy
`'
`|
`mh i
`ae-----d
`|
`\y iy Ni
`iil
`Wee
`Lat Hi
`|
`|
`i
`ill
`|
`flMuti
`|
`1
`Men
`inh
`L,
`a |
`
`
`
`ops Gdtotao dad _
`
`J
`
`f
`
`i
`
`-
`
`_-
`
`\
`
`\
`
`SPF: 100KHz
`Chir; 930. OMMz
`Fig. 1 Spectrum of a single symbol repeatedly transmitted
`
`RBSO00Hz
`
`YVBikHz
`
`
`
`Ex.1013,

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket