`
`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 IPR2018-00690
`U.S. Patent No. 6,314,289
`__________________________________________________________
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES ...................................................................... iii
`I.
`Introduction ......................................................................................... 1
`II.
`The Challenged Claims are Unpatentable ........................................ 1
`A. GROUND 1: THE CHALLENGED CLAIMS ARE UNPATENTABLE
`OVER CHEN IN VIEW OF CAMPANELLA .................................................. 1
`
`1. Chen Teaches the Claimed Partitioner ......................................... 2
`
`2. The Chen and Campanella Combination Yields Two
`Signals Coded in a “Different Way” ............................................. 3
`
`B.
`
`3. Claims 7 and 24 are Obvious ........................................................ 5
`THE CHALLENGED CLAIMS ARE UNPATENTABLE OVER CHEN
`ALONE .................................................................................................... 6
`C. GROUNDS 2 & 3: THE CHALLENGED CLAIMS ARE UNPATENTABLE ........ 8
`III. Campanella and Smallcomb Are Prior Art ...................................... 9
`A. CAMPANELLA IS PRIOR ART .................................................................... 9
`
`1. Campanella Is Prior Art Under 102(e) As Of The Filing of
`U.S. Patent Application ................................................................. 9
`
`2. Campanella is § 102(e) Prior Art as of the Filing of the
`’591 Provisional ..........................................................................12
`
`3. The Campanella Claims are Supported by the ’591
`Provisional...................................................................................13
`
`4. The Cited Portions of Campanella are Carried Over from
`the ’591 Provisional ....................................................................16
`SMALLCOMB IS PRIOR ART ...................................................................20
`
`B.
`
`1. The ’258 Provisional Supports the Smallcomb Claims ...............22
`i
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`2. The Cited Portions of Smallcomb are Carried Over From
`the ’258 Provisional ....................................................................23
`IV. Conclusion ..........................................................................................26
`
`
`
`
`ii
`
`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Arctic Cat v. Bombardier Recreational Prods.,
`876 F.3d 1350 (Fed. Cir. 2017) ............................................................................ 3
`Dynamic Drinkware, LLC, v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .................................................................... 21, 22
`
`Edward J. DeBartolo Corp. v. Florida Gulf Coast Building & Constr.
`Trades Council,
`485 US 568 (1988) .............................................................................................. 11
`In re Giacomini,
`612 F.3d 1380 (Fed. Cir. 2010) .............................................................. 13, 16, 24
`In re Kubin,
`561 F.3d 1351 (Fed. Cir. 2009) ............................................................................ 5
`Masterimage 3D, Inc. v. RealD Inc.,
`IPR2015-00035, Paper No. 79 (PTAB Apr. 20, 2016) ...................................... 21
`Murray v. Schooner Charming Betsy,
`2 Cranch 64 (1804) ............................................................................................. 11
`Natural Alternatives Int’l, Inc., v. Iancu,
`904 F. 3d 1375 (Fed. Cir. 2018) ......................................................................... 12
`Ex Parte Righi,
`Appeal No. 2007-0590 (PTAB July 25, 2007) ..................................................... 8
`Tech. Licensing Corp. v. Videotek, Inc.,
`545 F. 3d 1316 (Fed. Cir. 2008) ......................................................................... 22
`In re Wertheim,
`646 F.2d 527 (C.C.P.A. 1981) ............................................................................ 13
`Whitney v. Robertson,
`124 US 190 (1888) .............................................................................................. 11
`
`iii
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`
`Williamson v. Citrix Online, LLC,
`792 F. 3d 1339 (Fed. Cir. 2015) ........................................................................... 2
`Statutes
`35 U.S.C. § 102(e) ............................................................................................passim
`35 U.S.C. § 111(a)(4) (1998) ..................................................................................... 9
`35 U.S.C. § 363 .......................................................................................................... 9
`Other Authorities
`MPEP §§ 706.02(f)(1), 2136 ................................................................................... 12
`
`
`
`
`iv
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`
`I.
`
`INTRODUCTION
`Fraunhofer’s Patent Owner Response (Paper 34, “POR”) makes a number of
`
`fundamental technical and procedural errors in an effort to save its invalid claims.
`
`Fraunhofer’s technical arguments regarding the combination of Chen (Ex. 1004)
`
`and Campanella (Ex. 1005) misstate what is required of the claimed “partitioner”
`
`and ignore the explicit motivation to employ Chen’s convolutional coding scheme
`
`in space and time diverse digital broadcast systems, like those of Campanella and
`
`the admitted prior art (“APA”). Fraunhofer’s procedural arguments fair no better.
`
`Campanella and Smallcomb (Ex. 1003) are prior art to the ’289 Patent, and there
`
`are no formal or constitutional infirmities with the instituted proceedings.
`
`II. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Ground 1: The Challenged Claims are Unpatentable Over Chen
`in View of Campanella
`Fraunhofer’s argument that Chen and Campanella do not render the
`
`challenged claims obvious relies on two fundamental mistakes: that (1) the claimed
`
`“partitioner” must partition the two portions of output bits “into two signals” when
`
`the claims recite no such requirement, and (2) a POSITA would not have
`
`implemented Chen’s convolutional coding technique in Campanella’s system in
`
`order to achieve time and/or space diversity when Chen discloses this (at 2:64-67).
`
`- 1 -
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`
`1.
`Chen Teaches the Claimed Partitioner
`Fraunhofer makes a tacit claim construction argument to avoid the
`
`partitioner Chen discloses, asserting that the claimed partitioner must partition “the
`
`second number of output bits into the two portions of output bits” (as recited in
`
`each challenged claim) and must also partition those bits “into two signals,” such
`
`that there are “two respective bit streams… on two respective channels.” Id.
`
`Fraunhofer improperly “import[s] limitations from the written description into the
`
`claims.” Williamson v. Citrix Online, LLC, 792 F. 3d 1339, 1346 (Fed. Cir. 2015)
`
`Fraunhofer does not lodge any arguments about Petitioner’s application of
`
`Chen to the partitioner limitation as claimed. See POR at 25–28. Thus, per the
`
`Petition, “Chen discloses ‘a partitioner’ (i.e. the portion of Chen’s convolutional
`
`encoder that ‘provides a mapping of code bits to sub carriers’) for partitioning the
`
`second number of output bits’ (i.e. the rate-2/5 code) ‘into two portions of output
`
`bits’ (i.e. the bits mapped to the upper and lower sidebands, respectively).” See,
`
`e.g., Chen, 1:62-65; 6:18-23; 6:47-57; Lyon, ¶ 119; Ex. 1025 (“Lyon Reply”), ¶ 5.
`
`Even under Fraunhofer’s construction, Chen (at 3:61-69) discloses the claimed
`
`partitioner through the modulator.
`
`Accordingly, Chen teaches the claimed partitioner.
`
`- 2 -
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`The Chen and Campanella Combination Yields Two Signals
`Coded in a “Different Way”
`Fraunhofer does not dispute that Chen discloses that the first and second
`
`2.
`
`portions of bits are encoded in a different way, but instead argues that a POSITA
`
`would not have implemented Chen’s complementary punctured convolutional
`
`codes in a system like Campanella’s that achieves space and/or time diversity.
`
`POR at 29. Fraunhofer’s argument is premised on the mistaken view that “a
`
`POSITA would have no reason to cede the benefits of frequency diversity in
`
`exchange for spatial diversity.” POR at 29.
`
`Chen’s explicit disclosure contradicts Fraunhofer’s argument because
`
`although the invention was described with respect to a frequency diversity
`
`technique, it could also be implemented in systems that use time and/or space
`
`diversity. See Chen at 3:20-30 (“For example, although the digital audio broadcast
`
`system described herein utilizes a frequency diversity technique, the invention
`
`could also be implemented in systems which utilize time diversity, space
`
`diversity, polarization diversity, as well as other types of diversity techniques.”);
`
`Lyon Reply, ¶ 9. These disclosures provide explicit motivation to use Chen’s
`
`complementary punctured codes in the context of Campanella’s system, which is a
`
`digital audio broadcast system that utilizes time and space diversity. See Arctic
`
`Cat v. Bombardier Recreational Prods., 876 F.3d 1350, 1359 (Fed. Cir. 2017).
`
`- 3 -
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`Fraunhofer acknowledges this disclosure but incorrectly reads Chen arguing
`
`that “its disclosure clearly shows that Chen’s alleged invention is directed to
`
`punctured convolutional codes specifically optimized for frequency diverse IBOC
`
`implementations of DAB.” POR at 33 (citing Chen at 2:25-27, 2:18-22). Not so.
`
`This citation explicitly states that Chen may be applied to “other applications”
`
`beyond IBOC implementations. Lyon Reply, ¶ 10. On cross-examination,
`
`Fraunhofer’s expert confirmed that Chen’s invention was “improved punctured
`
`convolutional codes that can be used in digital audio broadcasting” generally, i.e.,
`
`not “codes specifically optimized for frequency diverse IBOC implementations of
`
`DAB.” See Ex. 1028 at 80:14-81:17.
`
`Fraunhofer’s argument also ignores the Yi reference, which demonstrates
`
`that “a system that applies a code diversity scheme, similar to the complementary
`
`convolutional codes in Chen, and a transmission architecture that achieves space
`
`and time diversity, as in Campanella,” was known in the art. Petition at 24. Thus,
`
`it would have been obvious to use differently coded bitstreams in the context of a
`
`space and time diverse satellite broadcast system, as explicitly contemplated in
`
`Chen, and such a system (Yi) was already known in the art at the time of the
`
`’289 Patent. Petition at 24 (citing Lyon, ¶ 92); Lyon Reply, ¶ 11.
`
`- 4 -
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`
`3.
`Claims 7 and 24 are Obvious
`Claims 7 and 24 are obvious because the claimed polynomials were known,
`
`and a POSITA would have tested well-known generators to determine whether
`
`they “work very well with the puncturing scheme” that was to be used rather than
`
`testing over two million possible generators one-by-one. Petition at 45. In the
`
`POR, Fraunhofer attacked a straw man argument that Petitioner never made,
`
`namely that “an engineer would test over two million possibilities.” POR at 46
`
`(emphasis added). Fraunhofer’s expert testified that he and Fraunhofer misread
`
`this argument and confirmed Petitioner’s argument, i.e. that an engineer would not
`
`have tested “every single 2 to the 21 generators… and so maybe they would test,
`
`you know, a subset.” Ex. 1028 at 91:8–24; Lyon Reply, ¶ 14.
`
`In re Kubin, cited in the POR (at 47), also supports Petitioner’s argument
`
`that the particular polynomial generators recited in claims 7 and 24 were obvious.
`
`Rather than “throw[ing] metaphorical darts at a board filled with combinatorial
`
`prior art possibilities,” Petitioner demonstrated that the claimed polynomials were
`
`disclosed in a well-known digital communications textbook that gave explicit
`
`“direction as to which of many possible choices is likely to be successful.” In re
`
`Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009).
`
`Fraunhofer’s argument that “a POSITA would not be motivated to contradict
`
`Chen’s basic teaching by abandoning codes that were used in IBOC digital audio
`
`- 5 -
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`broadcasting systems,” also supports Petitioner’s argument. POR at 47. A
`
`POSITA would have understood that the IBOC communications system is a
`
`terrestrial digital broadcasting system and therefore recognize that generator
`
`polynomials optimized for use in such a system might not be optimal in other types
`
`of digital audio broadcasting systems Chen explicitly contemplated. Lyon Reply, ¶
`
`15. Therefore, a POSITA would have had motivation to test other well-known
`
`generator polynomials when implementing Chen’s invention in other digital audio
`
`broadcasting systems, such as those of Campanella and Smallcomb. Lyon Reply, ¶
`
`15.
`
`Thus, the challenged claims are unpatentable over the Chen/Campanella
`
`combination.
`
`B.
`The Challenged Claims are Unpatentable Over Chen Alone
`The Petition demonstrates that the challenged claims are unpatentable over
`
`Chen alone because—aside from achieving time and space diversity with a single
`
`satellite and a moving receiver (claims 1 and 18)—the portions of Campanella
`
`relied upon were indicative of the state of the art:
`
`Claim
`Element
`[k] (2
`channels)
`
`State of the Art
`
`“FIG. 7 illustrates a transmitting receiving setup providing for
`time diversity as well as space diversity…. In the case of satellite
`communication, the transmitters 66 a and 66 b are realised by
`
`- 6 -
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`
`two satellites that reside on different orbital positions spaced
`apart from each other.” APA (’289 Patent at 2:23-36).
`
`[l] (single tx) N/A
`
`[m] (dual tx)
`
`“In the case of satellite communication, the transmitters 66 a and
`66 b are realised by two satellites that reside on different
`orbital positions spaced apart from each other.” ’289 Patent at
`2:23-36.
`
`[n] (single
`sat)
`
`[o] (dual sat)
`
`[p] (terrestrial
`sender)
`
`[q] (delay
`means)
`
`[y]
`(combiner)
`
`N/A
`
`“In the case of satellite communication, the transmitters 66 a and
`66 b are realised by two satellites that reside on different orbital
`positions spaced apart from each other.” ’289 Patent at 2:23-36.
`
`“Finally, even with two satellites, signal blockage, shadowing,
`and fading problems continue to occur in urban and suburban
`environments. Conventional DAB systems have sought to solve
`this problem by employing a network of gap filler transmitters
`to provide the signal when both satellites are blocked from
`view.” Yi at 2:6-12.
`In this way, each gap filler transmitter in a given service area
`retransmits the same signals as the two satellites so as to align
`the satellite-delivered and gap filler delivered signals in time at
`each receiver in the gap filler's service area. Yi at 4:16-20.
`To obtain time diversity, a delay element 68 is coupled between
`the duplicator 67 and the second transmitter 66b. ’289 Patent at
`2:31-32.
`
`The DAB method and system of the present invention
`advantageously utilizes code diversity (whereby two different
`non-self-interfering turbo encoded signals are transmitted
`and substantially combined inside the receiver) to provide
`improved performance through higher coding gains, fewer gap
`fillers, and reduced transmit power level requirements from
`either of each of the satellite or the gap fillers. Yi at 2:27-35.
`
`- 7 -
`
`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`
`[ee] (Reed-
`Solomon
`Decoder)
`
`One of the most popular concatenated coding systems uses a
`Viterbi-decoded convolutional inner code and a Reed-Solomon
`(R-S) outer code, with interleaving between the two coding
`steps [23].” Sklar at 365 (cited at Petition at 63-64; Lyon, ¶ 202).
`
`[ff] QPSK
`Demodulation
`
`The transmitter 66 may comprise usual transmitter elements,
`such as a QPSK modulator…. Analogously, the receiver 72
`comprises an HF front end, an analog/digital converter, and a
`QPSK demodulator. ’289 Patent at 3:60-67.
`Lyon Reply, ¶ 17. Thus, as evidenced by the APA, Yi, and the Sklar textbook,
`
`Chen renders obvious claims 2-15, 17, 19-33, and 35. See Ex Parte Righi, Appeal
`
`No. 2007-0590 (informative) (PTAB July 25, 2007) (“The Board may rely on less
`
`than all of the references applied by the Examiner in an obviousness rationale
`
`without designating it as a new ground of rejection.”).
`
`C. Grounds 2 & 3: The Challenged Claims are Unpatentable
`Fraunhofer does not present any technical arguments with respect to
`
`Grounds 2 and 3, assuming incorrectly that Smallcomb and Campanella are not
`
`prior art. POR at 48–49. As established below, the challenged claims are
`
`unpatentable for the reasons established in the Petition as both references are prior
`
`art. Even if Campanella were not prior art, that only affects claims 1 and 18. See
`
`Petition at 83–85 (only relying on Campanella for the disclosure of achieving time
`
`and space diversity with a single satellite).
`
`- 8 -
`
`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`III. CAMPANELLA AND SMALLCOMB ARE PRIOR ART
`A. Campanella is Prior Art
`1.
`Campanella Is Prior Art Under 102(e) As Of The Filing of
`U.S. Patent Application
`Fraunhofer argues that the pre-AIPA version of 35 U.S.C. § 102(e) defeats
`
`Petitioner’s reliance on Campanella as prior art as of the filing date of PCT
`
`Application No. PCT/US98/14280 (Ex. 1028, “Campanella PCT”). See POR at
`
`18–25. Fraunhofer is incorrect. It presumes that only the second clause of pre-
`
`AIPA § 102(e) applies to Campanella. But, Campanella is prior art under the first
`
`clause of pre-AIPA 35 U.S.C. § 102(e) because it is “a patent granted on an
`
`application for patent by another filed in the United States before” the invention of
`
`the ’289 Patent.
`
`Two statutes, 35 U.S.C. § 363 and § 102(e) itself, determine the appropriate
`
`prior art date of a reference under § 102(e). § 363 provides that an international
`
`application (“IA”) designating the U.S. has the same effect as a national
`
`application, except as provided in § 102(e). Thus, an IA filed in the U.S. is an
`
`“application” under § 111 and is provided a filing date as of the filing date of a
`
`specification and drawings. 35 U.S.C. § 111(a)(4) (1998).
`
`Pre-AIPA § 102(e) includes two clauses, each of which is separately
`
`operable to establish a patent’s § 102(e) date for prior art purposes:
`
`(e) the invention was described in a patent granted
`- 9 -
`
`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`[Clause 1] on an application for patent by another filed
`in the United States before the invention thereof by the
`applicant for patent, or
`
`[Clause 2] on an international application by another who
`has fulfilled the requirements of paragraphs (1), (2), and
`(4) of section 371(c) of this title before the invention
`thereof by the applicant for patent.
`
`35 U.S.C. § 102(e) (1998) (emphasis and formatting added). Critically, § 363 does
`
`not state that the first clause of pre-AIPA § 102(e) is inapplicable to IAs filed in
`
`the U.S., nor does the second clause of pre-AIPA § 102(e) state that patents
`
`granted on an IA are only entitled to a § 102(e) date as of the day that the
`
`requirements of § 371(c) are fulfilled.
`
`Under the plain language of these statutes, any patent may qualify as
`
`§ 102(e) prior art independently under its first and/or second clauses. Therefore, a
`
`patent granted on an IA filed in the U.S., like Campanella PCT, obtains a § 102(e)
`
`date as of the IA’s filing date. See Ex. 1028. On the other hand, an IA filed
`
`outside of the U.S. cannot satisfy the first clause of pre-AIPA § 102(e) and would
`
`only receive a § 102(e) date as of the date that paragraphs (1), (2), and (4) of §
`
`371(c) are satisfied.
`
`Separately, the second clause of pre-AIPA § 102(e) was not meant to nullify
`
`the § 102(e) effect of an IA filed in the U.S. PCT Article 64(4)(a) only permits
`
`- 10 -
`
`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`reservations such that“the filing outside that State of an international application
`
`designating that State is not equated to an actual filing in that State for prior art
`
`purposes.” PCT Article 64(4)(a) (emphasis added). Article 64(4)(a) does not
`
`permit a member state to preclude an IA filed inside that State from being
`
`considered prior art in that State as of its filing date. Id. Upon ratification of the
`
`PCT, the U.S.’s reservation under Article 64(4)(a) only applied to IAs filed outside
`
`of the U.S. Ex. 1030.
`
`Under the Charming Betsy canon, “an act of Congress ought never to be
`
`construed to violate the law of nations if any other possible construction remains.”
`
`Murray v. Schooner Charming Betsy, 2 Cranch 64, 118 (1804); Edward J.
`
`DeBartolo Corp. v. Florida Gulf Coast Building & Constr. Trades Council, 485
`
`US 568, 575 (1988) (Charming Betsy canon “has for so long been applied by this
`
`Court”). But, when a later enacted law violates a treaty obligation, “[t]he duty of
`
`the courts is to construe and give effect to the latest expression of the sovereign
`
`will.” Whitney v. Robertson, 124 US 190 (1888). Here, pre-AIPA § 102(e) is at
`
`least ambiguous, so the Charming Betsy canon prevails over the last-in-time rule
`
`from Whitney, thereby demonstrating that § 102(e) was enacted in a manner to not
`
`violate PCT Article 64(4)(a).
`
`Petitioner acknowledges that the MPEP §§ 706.02(f)(1), 2136 conflicts with
`
`this reading of the statute. However, the MPEP does not have the force of law.
`
`- 11 -
`
`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`Natural Alternatives Int’l, Inc., v. Iancu, 904 F. 3d 1375, 1382 (Fed. Cir. 2018).
`
`Further, the MPEP neither explains its rationale for its apparent view that IAs filed
`
`in the U.S. are ineffective under the first clause of § 102(e) nor cites any legal
`
`authority in support thereof. Accordingly, Campanella should be accorded a
`
`§ 102(e) date of at least July 10, 1998 under clause one of pre-AIPA § 102(e).
`
`2.
`
`Campanella is § 102(e) Prior Art as of the Filing of the ’591
`Provisional
`
`
`
`If the MPEP’s apparent position that an IA filed in the U.S. is not a U.S.
`
`filed application under the first clause of pre-AIPA § 102(e), prior U.S. non-
`
`provisional and provisional applications are U.S. filed applications under this
`
`clause:
`
`An application that a patent was “granted on” is the
`first U.S. application to disclose the invention claimed
`in the patent. In re Klesper, 55 C.C.P.A. 1264, 397 F.2d
`882, 885-86 (1968)…. Therefore, an applicant is not
`entitled to a patent if another's patent discloses the same
`invention, which was carried forward from an earlier U.S.
`provisional
`application
`or U.S.
`non-provisional
`application.
`
`- 12 -
`
`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (emphasis added). Thus,
`
`the application that Campanella was “‘granted on’ is the first U.S. application to
`
`disclose the invention claimed in the patent,” i.e. the ’591 Provisional.
`
`The Federal Circuit’s reasoning in In re Giacomini is instructive: an
`
`applicant that filed an application after another’s provisional application “cannot
`
`receive a patent covering the same subject matter under 35 U.S.C. § 102(e)” under
`
`“[t]he fundamental rule… that the patentee must be the first inventor.” Id. at 1384
`
`(citations omittesd); see also In re Wertheim, 646 F.2d 527 (C.C.P.A. 1981) (Ҥ
`
`102(e) was a codification of the historical treatment of a U.S. patent disclosure ‘as
`
`prior art as of the filing date of the earliest U.S. application to which the patent is
`
`entitled, provided the disclosure was contained in substance in the said earliest
`
`application.’”). This binding precedent is in direct conflict with the MPEP’s
`
`prohibition of using an IA to “reach back (bridge) to an earlier filing date.”
`
`Thus, under § 102(e), the “filing date of the earliest U.S. application to
`
`which the [Campanella] is entitled” is the March 27, 1998, the filing date of the
`
`’591 Provisional. Id.
`
`3.
`
`The Campanella Claims are Supported by the ’591
`Provisional
`The following claim chart shows that at least one claim of Campanella is
`
`supported under § 112 by the ’591 Provisional:
`
`- 13 -
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`
`Claim Element
`
`Support
`
`20a. A digital broadcasting system
`for transmitting a broadcast signal,
`said broadcast signal being
`transmitted from an earth station,
`comprising:
`
`20b. a satellite for receiving said
`broadcast signal from said earth
`station and for transmitting a
`satellite signal comprising said
`broadcast signal on a first carrier
`frequency;
`
`The embodiment of the DBS which uses
`two GSO satellites with terrestrial
`reradiators is shown in Fig. 5. In this
`configuration, two satellites are separated
`by between 30 degrees to 40 degrees
`longitude along the GSO circle. One
`satellite repeats a signal sent from a
`ground station, and the other repeats the
`same signal sent from the same ground
`station but delayed by up to 5 to 10 seconds.
`Ex. 1026 at 14:23-27.
`
`In accordance with the present invention, a
`digital broadcast system (DBS) is provided
`which overcomes a number of
`disadvantages associated with existing
`broadcast systems and realizes a number of
`advantages. The DBS of the present
`invention comprises a TDM carrier
`satellite delivery system for digital audio
`broadcasts (DAB) which is combined with
`a network of terrestrial repeaters for the re-
`radiation of satellite downlink signals
`toward radio receivers. Ex. 1026 at 2:27-
`3:5.
`
`20c. a terrestrial repeater for
`receiving said satellite signal and for
`generating and transmitting a
`terrestrial signal from said satellite
`signal comprising said broadcast
`signal on a second carrier frequency
`that is different from said first
`carrier frequency, said terrestrial
`signal being modulated by said
`terrestrial repeater in accordance
`with a multipath-tolerant
`
`The invention relates to a digital broadcast
`system (DBS) for optimized static, portable
`and mobile radio reception. The DBS
`combines line-of-sight (LOS) reception of
`satellite waveforms that are optimized for
`satellite delivery with re-radiation of the
`LOS signal from the satellite via one or
`more terrestrial repeaters. The terrestrial
`repeaters use other waveforms which are
`optimized for terrestrial delivery where
`blockage of the satellite LOS signal occurs.
`
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`
`modulation technique;
`
`a second satellite operable to receive
`said broadcast program from said
`earth station and to transmit a
`second satellite signal comprising
`said broadcast signal on said first
`carrier frequency and delayed a
`predetermined period of time with
`respect to the transmission of the
`first satellite signal.
`
`Lyon Reply, ¶ 18.
`
`LOS signal blockage caused by buildings,
`bridges, trees and other obstructions
`typically occurs in urban centers and
`suburban areas. Waveforms particularly
`suitable for LOS satellite transmission
`are Time Division Multiplex (TDM and
`Code Division Multiple Access (CDMA)).
`Waveforms particularly suitable for
`overcoming terrestrial multipath
`interference encountered in blocked
`urban areas are Adaptive Equalized
`TDM (ATDM), Coherent Frequency
`Hopping Adaptively Equalized TDM
`(CFHATDM) and Multiple Carrier
`Modulation(MCM). Ex. 1026 at 4:17-29.
`The embodiment of the DBS which uses
`two GSO satellites with terrestrial
`reradiators is shown in Fig. 5. In this
`configuration, two satellites are separated
`by between 30 degrees to 40 degrees
`longitude along the GSO circle. One
`satellite repeats a signal sent from a ground
`station, and the other repeats the same
`signal sent from the same ground station
`but delayed by up to 5 to 10 seconds. The
`use of two satellites separated in space
`results in elevation angle diversity in the
`line of sight paths between a radio on the
`earth each satellite. The time delay between
`the two satellite arrivals results in time
`diversity. Ex. 1026 at 14:23-30.
`
`- 15 -
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`The Cited Portions of Campanella are Carried Over from
`the ’591 Provisional
`Campanella is also entitled to claim priority to the ’591 Provisional for prior
`
`4.
`
`art purposes under § 102(e) because the Petition relies on portions of Campanella
`
`that were carried over from the ’591 Provisional as shown below. In re Giacomini,
`
`612 F.3d at 1383 (Fed. Cir. 2010).
`
`(a) Elements [k, m, o, p, and q]: Transmit or Receive Over
`Space and Time Diverse Satellite Channels and/or With a
`Terrestrial Repeater
`The ‘591 Provisional teaches the portions of Campanella relied upon for
`
`elements [k], [m], [o], [p], and [q].
`
`Campanella
`
`‘591
`Provisional
`
`
`
`“The embodiment of the DBS 10 which uses two GSO satellites
`12 and 16 with terrestrial repeater 18 is shown in FIG. 8…. The
`time delay between the two satellite signal arrivals results in time
`diversity.” Campanella at 11:44–55.
`“The embodiment of the DBS which uses two GSO satellites with
`terrestrial reradiators is shown in Fig. 5…. The time delay
`between the two satellite arrivals results in time diversity.” ‘591
`Provisional at 14:23-31.
`
`Lyon Reply, ¶¶ 19-20, 22, 24-26.
`
`(b) Elements [l] and [n]: Space and Time Diversity Using a
`Single Transmitter
`The ‘591 Provisional teaches the portions of Campanella relied upon for
`
`element [l].
`
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`

`

`Campanella
`
`‘591
`Provisional
`
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`“Also, time diversity achieved by repeating a satellite signal
`from a single satellite 12 or 16, or by transmitting a signal from
`two satellites 12 and 16 with the properly selected time difference,
`further enhances the reception availability.” (Campanella at 6:35–
`43).
`“Also time diversity achieved by repeating a satellite signal
`from a single satellite, or transmitting a signal from two satellites
`with the properly selected time difference, further enhances the
`reception availability.” ‘591 Provisional at 8:1-6
`
`
`
`Lyon Reply, ¶¶ 21, 23
`
`(c) Element [y]: combining the first and second portions
`The ‘591 Provisional teaches the portions of Campanella relied upon for
`
`element [y].
`
`Campanella
`
`‘591
`Provisional
`
`
`
`Lyon Reply, 27.
`
`“The next step is to use the maximum likelihood combiner 240
`to combine the bits of the two broadcast channels, bit-by-bit,
`each bit expressed in soft decision form.” (Campanella 12:46–
`56).
`Radio receivers are programmed to select a broadcast channel
`demodulated from the TDM bit stream and the MCM bit
`stream, and to select the broadcast channel recovered with
`the least errors using a diversity combiner. ‘591 Provisional
`at 3:9-12
`
`The radio receiver diversity logic design is shown in Fig. 5. It
`incorporates maximum likelihood combining of the Early
`and Late LOS satellite signals with switched combining
`between the terrestrial re-radiated signal and the output of the
`maximum likelihood combiner 240. Id. at 15:18-21
`
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`

`

`IPR2018-00690 (U.S. Patent No. 6,314,289)
`Petitioner’s Reply
`
`(d) Element [z]: depuncturing
`The ‘591 Provisional teaches the portions of Campanella relied upon for
`
`element [z].
`
`Campanella
`
`‘591
`Provisional
`
`
`
`Lyon Reply, ¶ 28.
`
`““In the receiver 14, a Viterbi soft decision trellis decoder is
`preferably implemented to re-establish the bits or bit pairs
`punctured at the repeater 18, as well as all other bits
`transmitted, by use of an erasure technique. In this technique,
`the decoder simply ignores the bits in locations known to have
`been punctured at the repeater 18.” (Camp