Trials@uspto.gov
`571-272-7882
`
`
`
`
`
`Paper No. 25
`Entered: March 9, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`FRAUNHOFER-GESELLSCHAFT ZUR FÖRDERUNG DER
`ANGEWANDTEN FORSCHUNG E.V.,
`Patent Owner.
`____________
`
`Case IPR2018-00681
`Patent 7,061,997 B1
`____________
`
`Before JEFFREY S. SMITH, STACEY G. WHITE, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7882
`
`
`
`
`
`Paper No. 25
`Entered: March 9, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`FRAUNHOFER-GESELLSCHAFT ZUR FÖRDERUNG DER
`ANGEWANDTEN FORSCHUNG E.V.,
`Patent Owner.
`____________
`
`Case IPR2018-00681
`Patent 7,061,997 B1
`____________
`
`Before JEFFREY S. SMITH, STACEY G. WHITE, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2018-00681
`Patent 7,061,997 B1
`
`
`Sirius XM Radio Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Petition” or “Pet.”) requesting inter partes review of claims 1–3 (the
`“challenged claims”) of U.S. Patent No. 7,061,997 B1 (Ex. 1007, “the ’997
`patent”). Patent Owner Fraunhofer-Gesellschaft zur Förderung der
`angewandten Forschung e.V. (“Patent Owner”) filed a Preliminary Response
`(Paper 8, “Prelim. Resp.”). In our Institution Decision, we denied institution
`based on Petitioner’s failure to identify Sirius XM Holdings Inc.
`(“Holdings”) as an RPI in this proceeding. Paper 12, 7. We also denied
`Petitioner authorization to amend its mandatory notice to add Holdings
`without changing the Petition’s filing date. Id. Petitioner requested
`Rehearing (Paper 13), which we granted (Paper 24), finding Petitioner could
`add Holdings as an RPI without changing the Petition’s filing date.
`We now turn to the merits of the Petition. Pursuant to 35 U.S.C.
`§ 314(a), an inter partes review may not be instituted unless “the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least one of the
`claims challenged in the petition.” Having considered the Petition and the
`Preliminary Response, we determine that there is not a reasonable likelihood
`that Petitioner would prevail in establishing that claims 1–3 of the ’997
`patent are unpatentable. Therefore, we decline to institute inter partes
`review.
`
`I. BACKGROUND
`A. RELATED PROCEEDINGS
`The parties assert that the ’997 patent is involved in Fraunhofer-
`Gesellschaft zur Förderung der angewandten Forschung e.V. v. Sirius XM
`Radio Inc., 1:17-cv-00184 (D. Del. Feb. 22 2017).
`
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`Patent 7,061,997 B1
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`B. THE ’997 PATENT
`The ’997 patent relates to fine frequency synchronization in a multi-
`carrier demodulating system. Ex. 1007, code (57), Claim 1. A multi-carrier
`system is useful for broadcasting and receiving digital signals. Id. at 8:24–
`26. The broadcast may be performed over a radio frequency (RF) signal, or
`modulated on a carrier frequency. Pet. 10.
`In a multi-carrier modulation (MCM) differential phase keying coding
`system, the multiple symbols from a variety of sources are compared at a
`receiver to determine the difference between their phases. In a time domain
`approach as shown in Figure 2A of the ’997 patent, the symbols may be
`presented sequentially in time on one carrier frequency, with each of the k
`sub-carriers coding an independent symbol simultaneously. Ex. 1007, 6:32–
`45. The phase shift upon which the bits are encoded is measured according
`to the shift between two temporally adjacent sub-carrier symbols at the same
`frequency. Id. An alternative approach to time domain coding is frequency
`domain coding. In a frequency domain MCM embodiment as shown in
`Figure 2B of the ’997 patent, different symbols are transmitted
`simultaneously on different subcarriers having different frequencies. Id. at
`6:46–7:4. In this embodiment, the difference between two symbols that
`makes up the coding of two bits occurs between simultaneous symbols on
`the different subcarriers having different frequencies. Id.
`The claimed method addresses the problem of desynchronization of
`sub-carrier channels across which a symbol is differentially coded in the
`frequency axis, as in Figure 2B. As Petitioner explains, “a correction of the
`frequency offsets by using a phase rotation with differential decoding and
`
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`de-mapping in the time axis can be used.” Pet. 16 (quoting Ex. 1007, 3:42–
`59). Figures 6 and 7 of the ’997 patent are reproduced below.
`
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`Patent 7,061,997 B1
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`Figure 7 “shows a block diagram of [a] fine frequency error detector” (4:31–
`32, 10:14–16), and Figure 6 shows the Figure 7 fine frequency error detector
`in situ as fine frequency error detector 320 in a feedback loop in an MCM
`receiver preceding differential decoding unit 316. Ex. 1007, 9:55–10:14.
`C. ILLUSTRATIVE CLAIM
`Of the challenged claims, only claim 1 (reproduced below) is
`independent.
`1. A method of performing a fine frequency synchronization
`compensating for a carrier frequency in a multi-carrier demodulation system
`capable of carrying out a differential phase decoding of multi-carrier
`modulated signals, said signals comprising a plurality of symbols, each
`symbol being differentially coded in the direction of the frequency axis, said
`method comprising the steps of:
`a) determining a phase difference between phases of the same carrier
`in different symbols;
`b) determining a frequency offset by eliminating phase shift
`uncertainties related to the transmitted information from said phase
`difference making use of a M-PSK decision device; and
`c) performing a feedback correction of said carrier frequency
`deviation based on said determined frequency offset, wherein
`said steps a) and b) are performed for a plurality of carriers in said
`symbols,
`an averaged frequency offset is determined by averaging said
`determined frequency offsets of said plurality of carriers, and
`said feedback correction of said frequency deviation is performed
`based on said averaged frequency offset.
`
`
`Ex. 1007, 21:41–22:7.
`
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`
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`Pet. 6.
`
`D. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability.
`
`Claims Challenged 35 U.S.C. §1
`1–3
`102(e)
`1–3
`103
`1–3
`103
`
`References/Basis
`Tsujishita2
`Tsujishita
`Tsujishita and Classen3
`
`II. ANALYSIS
`A. CLAIM CONSTRUCTION
`The Petition was filed on February 22, 2018, before the effective date
`of the amendment to 37 C.F.R. § 42.100 that changed the claim construction
`standard applied in inter partes review. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 F.R. 51,340 (Oct. 11. 2018).
`However, because the ’997 patent has expired (see Prelim. Resp. 32), we
`apply the claim construction standard given by Phillips v. AWH Corp., 415
`F.3d 1303, 1312–1314 (2005). See, e.g., Wasica Fin. GmbH v. Cont’l Auto
`Sys., Inc., 853 F.3d 1272, 1279 (Fed. Cir. 2017) (noting that “[t]he Board
`construes claims of an expired patent in accordance with Phillips . . . [and]
`
`1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C.
`§§ 102,103. See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). As the
`application that issued as the ’299 patent was filed before the effective date
`of the relevant amendments, the pre-AIA version of §§ 102, 103 applies.
`2 U.S. Patent No. 6,341,123 B1 (issued Jan. 22, 2002) (Ex. 1002,
`“Tsujishita”)
`3 F. Classen & H. Meyr, “Frequency Synchronization Algorithms for OFDM
`Systems suitable for Communication over Frequency Selective Fading
`Channels”, Proc. of the 1994 IEEE Vehicle Technology Conference 1655–
`1659 (June 1994) (Ex. 1003, “Classen”).
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`[u]nder that standard, words of a claim are generally given their ordinary and
`customary meaning”). This “ordinary and customary meaning” of a claim
`term is “the meaning the term would have to a person of ordinary skill in the
`art in question” at the time of the invention. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`1.
`Claim 1 Preamble
`Claim 1’s preamble recites, in part, “each symbol being differentially
`coded in the direction of the frequency axis” (the “frequency-coding
`recitation”). Petitioner argues that this frequency-coding recitation in the
`preamble is not limiting because it “has no effect on, and is inconsequential,
`to the performance of the limitations in the body of the claim.” Pet. 7. We
`disagree.
`The frequency-coding recitation provides antecedent basis for the
`term “symbols” in claim 1 at step a) and claim 2. We agree with Patent
`Owner that this use of the frequency-coding recitation as providing
`antecedent basis for a claim term supports that it is limiting. Prelim.
`Resp. 33–34; see Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 834–
`835 (Fed. Cir. 2003). In addition, the specification and prosecution history
`further support that the frequency-coding recitation is limiting. The
`specification characterizes “an object of the present invention [is] to provide
`methods and apparatus for performing a fine frequency synchronization . . .
`in which information is differential phase encoded between simultaneous
`carriers having different frequencies.” Ex. 1007, 2:26–33. In more detail,
`the specification describes a Figure 2A time domain differential mapping
`and a Figure 2B frequency domain differential mapping, and states that
`“[t]he present invention is adapted for MCM transmission system using the
`
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`mapping scheme shown in FIG 2B.” Id. at 6:47–48. The discussion of the
`Figure 2A time domain differential mapping has no such language. Id. at
`6:33–45. The prosecution history of the ’997 patent additionally shows that
`the applicant and examiner of record considered the frequency-coding
`recitation as an important limitation when considering the prior art. See
`Ex. 2018, 231 (applicant asserting that the frequency-coding recitation in the
`preamble distinguishes claim 1 from prior art); id. at 256–57 (examiner
`responding by mapping the frequency-coding recitation to a prior art
`disclosure). Considering this, we agree with Patent Owner that “[t]he
`intrinsic record of the ’997 patent makes clear that this claim term is limiting
`as the invention specifically contemplates encoding in the frequency
`direction.” Prelim. Resp. 33–34.
`Petitioner argues additionally that we should construe the preamble’s
`frequency-coding recitation as not limiting because not doing so would
`render the claims “indefinite because a [person of ordinary skill in the art]
`would not understand whether the claims covered coding symbols in the
`frequency domain or the time domain.” Pet. 7–8. We disagree with
`Petitioner’s argument. Contrary to Petitioner’s assertion that “in claim
`limitation 1a, the claim makes clear that coding is in the time domain” (id. at
`8), step a) of claim 1 only recites “determining a phase difference between
`phases of the same carrier in different symbols.” Step a) does not mention
`coding or decoding in the time direction. Similarly, claim 2 recites
`“determining a phase difference between phases of the same carrier in
`symbols which are adjacent in the time axis direction.” Petitioner argues
`that claim 2 requires time-domain coding. See id. However, Petitioner has
`not explained sufficiently why claim 2 requires time-axis coding, rather than
`
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`just time-adjacent symbols within a carrier, including symbols that are
`“differentially coded in the direction of the frequency axis,” as the preamble
`requires. That is, Petitioner has not adequately explained why a phase
`difference between symbols within one carrier cannot exist in the claimed
`Figure 2B embodiment, in which a phase difference between symbols in one
`carrier exists, but is distinct from a coding phase difference between
`symbols in multiple carriers.
`We conclude no additional express claim construction is necessary for
`our determination of whether to institute inter partes review. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy.’”) (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`B. ASSERTED PRIOR ART
`
`1. Tsujishita (Ex. 1002)
`Tsujishita discloses a:
`
`digital audio broadcasting receiver [that] comprises a phase error
`detector for detecting a phase error from data from a differential
`demodulator, an average value processing unit for determining
`the average value of phase errors, a memory for storing the phase
`errors of the carriers outputted from the phase error detector, and
`a phase error correcting unit which excludes a phase error whose
`sign is opposite to that of the average values among the phase
`errors stored in the memory.
`Ex. 1002, Abstract.
`Figure 16 of Tsujishita is reproduced below:
`
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`Figure 16 illustrates a “conventional digital audio broadcasting receiver.”
`Id. at 7:4–5. The Figure 16 conventional receiver contains a feedback loop
`from differential demodulator 11 to frequency converter or MIX 3, the
`feedback loop comprising phase error detector 12, frequency tuning control
`means 13, and local oscillator 4. Id. at 1:21–28.
`2. Classen (Ex. 1003)
`Classen discloses methods for synchronizing multi-carrier signals,
`particularly suitable to a system that uses Orthogonal Frequency Division
`Multiplexing (OFDM). Ex. 1003 § 1.
`C. ANALYSIS
`
`1. Anticipation by Tsujishita
`Petitioner asserts that Tsujishita anticipates claims 1–3. Pet. 6, 23.
`We disagree. Petitioner’s anticipation challenge depends on its contention
`that the frequency-coding recitation claim 1’s preamble is not limiting,
`which we disagree with for the reasons explained above in Section II.A.1.
`Tsujishita encodes in the time domain. Pet. 23. Petitioner does not allege
`
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`that Tsujishita discloses frequency-domain coding, as claimed. See Pet. 25–
`27. A claim is anticipated “only if each and every element as set forth in the
`claim is found, either expressly or inherently described, in a single prior art
`reference.” Verdegaal Bros. v. Union Oil of Calif., 814 F.2d 628, 631 (Fed.
`Cir. 1987). Because Petitioner has not shown that Tsujishita discloses claim
`1’s frequency-coding recitation, we find, on the current record, that
`Petitioner has not made an adequate showing that Tsujishita anticipates
`claims 1–3 of the ’997 patent.
`2. Obviousness in View of Tsujishita
`Petitioner alternatively argues that claims 1–3 would have been
`obvious in view of Tsujishita. Pet. 6, 23. For the reasons below, we find
`Petitioner has not made an adequate showing of obviousness based on
`Tsujishita.
`a) “making use of a M-PSK decision device”
`Step 1(b) of claim 1 requires “determining a frequency offset by
`eliminating phase shift uncertainties related to the transmitted information
`from said phase difference making use of a M-PSK decision device.” For
`this ground, Petitioner asserts that Tsujishita describes removing phase shift
`uncertainties and that “[a person of ordinary skill in the art] would
`understand based on the state of the art that such an approach could be
`accomplished using an M-PSK decision device.” Pet. 30. “Moreover,”
`Petitioner argues, “this [M-PSK decision device] concept was well-known in
`the art prior to the priority date of the ’997 Patent.” Id. To support its
`assertion that using M-PSK decision devices was well known, Petitioner
`explains that “the Gledhill reference [U.S. Patent No. 6,341,123] that formed
`
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`the basis of the Patent Examiner’s rejection during prosecution discloses the
`use of QPSK decision making.” Id. (citing Ex.1004).
`We disagree with Petitioner’s argument because, as Patent Owner
`explains, even if a claim element was well-known in the art, that alone is
`insufficient to show obviousness. See Prelim. Resp. 40–41. An assertion
`that a patent claim is obvious “cannot be sustained by mere conclusory
`statements; instead, there must be some articulated reasoning with some
`rational underpinning to support the legal conclusion of obviousness.” KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As such, obviousness
`analysis requires more than an ipse dixit assertion that everything in the
`claim was also well-known in the art. Instead, for any limitation Petitioner
`argues is well-known, there needs to be evidence of that knowledge and
`evidence of a rationale for modifying the teachings of the reference in
`accordance with that knowledge. Id. Beyond Petitioner’s assertion that
`Tsujishita’s approach “could be accomplished using an M-PSK decision
`device” and that “this concept was well-known in the art,” Petitioner has not
`articulated the required explicit analysis for why one skilled in the art would
`have included the claimed M-PSK decision device. See Pet. 30.
`Considering the above, we agree with Patent Owner that “Petition[er] has
`failed to make a prima facie case that Tsujishita alone or in view of the
`Knowledge of a [person of ordinary skill in the art] discloses or teaches a M-
`PSK decision device as recited in the Challenged Claims.” Prelim. Resp. 43.
`3. Obviousness in View of Tsujishita and Classen
`For its third asserted ground, Petitioner argues that claims 1–3 would
`have been obvious over Tsujishita and Classen. Pet. 41–53. According to
`Petitioner, Classen teaches a “mechanism to correct for frequency offsets
`
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`
`through the use of differential phase decoding of the OFDM transmission,”
`and it would have been obvious to combine Classen with Tsujishita “to solve
`the well-known problem of carrier frequency deviation in a multicarrier
`transmission system.” Id. at 42–43. Specifically, Petitioner asserts that
`Classen discloses claim 1’s step 1(b)—i.e., “determining a frequency offset
`by eliminating phase shift uncertainties related to the transmitted
`information from said phase difference making use of a M-PSK decision
`device.” As support, Petitioner reproduces two passages from Classen. See
`id. at 47–48 (quoting Ex. 1003, 1657).
`We disagree with Petitioner’s argument because Petitioner has not
`adequately explained how Classen accounts for eliminating phase shift
`uncertainties using an M-PSK decision device as claim 1 requires.
`Petitioner’s first reproduced passage from Classen addresses how frequency
`estimation can be performed by considering a phase shift between two
`subsequent subchannel samples. Id. The second reproduced passage briefly
`mentions data and non-data operations, as well as “a decision directed (DD)
`operation.” Id. It is not clear, however, how either of these unexplained
`citations teach or suggest eliminating phase shift uncertainties using an M-
`PSK decision device, as claimed. Beyond simply reproducing the two
`passages from Classen, Petitioner’s only additional argument is the same as
`in its previous ground—that using an M-PSK decision device “was well-
`known in the art,” as evidenced by Gledhill. Id. at 48 (citing Ex. 1004). As
`explained above, we disagree because merely asserting that a claim element
`was well-known in the art is insufficient to show obviousness. We,
`therefore, find that Petitioner has not made an adequate showing, on this
`
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`record, that claims 1–3 would have been obvious over the combination of
`Tsujishita and Classen.
`
`III. CONCLUSION
`For the foregoing reasons, we find that Petitioner has not set forth a
`reasonable likelihood of succeeding on any of the three asserted grounds of
`unpatentability. Accordingly, we decline to institute an inter partes review.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that the Petition is denied as to the challenged claims of
`the ’997 patent; and
`FURTHER ORDERED that no inter partes review is instituted.
`
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`Case IPR2018-00681
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`PETITIONER:
`
`Jonathan S. Caplan
`Jeffrey H. Price
`Shannon H. Hedvat
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jcaplan@kramerlevin.com
`jprice@kramerlevin.com
`shedvat@kramerlevin.com
`
`PATENT OWNER:
`
`Ben J. Yorks
`Babak Redjaian
`David McPhie
`IRELL & MANELLA LLP
`byorks@irell.com
`bredjaian@irell.com
`dmcphie@irell.com
`
`
`
`15
`
`
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