Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 1 of 21 PageID #: 2680
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`REMBRANDT WIRELESS
`TECHNOLOGIES, LP,
`
`v.
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`APPLE INC.,
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`
`
`
`
`Plaintiff,
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`Defendant.
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`
`
`
`
`Case No. 2:19-cv-00025-JRG
`
`Hon. Rodney R. Gilstrap
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`APPLE’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`
`
`
`
`Rembrandt Wireless
`Ex. 2028
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 1 of 21
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`

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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 2 of 21 PageID #: 2681
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION .............................................................................................................. 1
`
`THE PARTIES HAVE AN ACTUAL DISPUTE REGARDING CLAIM SCOPE
`THAT THE COURT, NOT THE JURY, MUST RESOLVE ............................................ 2
`
`III.
`
`LEGAL STANDARDS OF CLAIM CONSTRUCTION .................................................. 4
`
`IV.
`
`THE INTRINSIC EVIDENCE CONFIRMS THAT “DIFFERENT TYPES” OF
`MODULATION METHODS MAY HAVE OVERLAPPING
`CHARACTERISTICS ........................................................................................................ 5
`
`A.
`
`B.
`
`The Claims Contradict Rembrandt’s Restriction of Claim Scope, and Support
`Apple’s Interpretation ............................................................................................. 5
`
`The Specifications Contradict Rembrandt’s Restriction of Claim Scope, and Show
`That “Different Types of Modulation” May Have Overlapping Characteristics. ... 7
`
`1.
`
`2.
`
`The Patents’ Preferred Different Types of Modulation Methods
`Have Overlapping Characteristics .............................................................. 7
`
`The Patents Do Not Differentiate Between “Types” of Modulation
`Techniques Based on Whether They Have Overlapping
`Characteristics ............................................................................................. 9
`
`C.
`
`There Was No Disclaimer During Prosecution Preventing Different Types of
`Modulation From Having Overlapping Characteristics ........................................ 11
`
`V.
`
`VI.
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`REMBRANDT’S POSITION IS INCONSISTENT WITH THE COURT’S
`PRIOR CONSTRUCTION ............................................................................................... 13
`
`REMBRANDT’S RELIANCE ON EX PARTE REEXAMINATION
`PROCEEDINGS IS MISPLACED ................................................................................... 15
`
`VII. CONCLUSION ................................................................................................................. 16
`
`
`
`
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`
`
`
`
`i
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`Rembrandt Wireless
`Ex. 2028
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 2 of 21
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`

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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 3 of 21 PageID #: 2682
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Laitram Corp. v. NEC Corp.,
`62 F.3d 1388 (Fed. Cir. 1995)....................................................................................................6
`
`Lites Out, LLC v. Outdoorlink, Inc.,
`No. 4:17-CV-00192-ALM, 2017 WL 4882613 (E.D. Tex. Oct. 30, 2017) ...............................9
`
`O2 Micro Int’l. Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)..............................................................................................1, 4
`
`Omega Eng’g, Inc., v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003)................................................................................................12
`
`Parthenon Unified Memory Architecture LLC v. ZTE Corp.,
`No. 2:15-cv-00225-JRG-RSP, 2016 WL 310174 (E.D. Tex. Jan. 25, 2016) ............................9
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .........................................................................4, 5, 6
`
`Rembrandt Wireless Tech., LP v. Samsung Elecs. Co., Ltd.,
`853 F.3d 1370 (Fed. Cir. 2017)........................................................................................ passim
`
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007)..............................................................................................7, 8
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)....................................................................................................7
`
`
`
`
`
`ii
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`Rembrandt Wireless
`Ex. 2028
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 3 of 21
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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 4 of 21 PageID #: 2683
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`I.
`
`INTRODUCTION
`
`Although Apple accepts the language used by this Court and affirmed by the Federal
`
`Circuit to construe the claim terms “modulation method[] of a different type” and “different
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`types of modulation methods,” that language should be supplemented to address a dispute
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`between the parties here about claim scope that was neither raised nor resolved during claim
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`construction in the Samsung litigation (No. 2:13-cv-00213-JRG-RSP (E.D. Tex.)). Specifically,
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`Apple’s proposed construction maintains this Court’s previous construction—“different families
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`of modulation techniques, such as the FSK family of modulation methods and the QAM family
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`of modulation methods”—but adds the clarification that “different families” of modulation “may
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`have overlapping characteristics.”
`
`The dispute about claim scope before the Court is clear-cut. A “modulation method” is a
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`way of varying one or more characteristics (e.g., phase, frequency, and amplitude) of an
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`electromagnetic wave (a “carrier wave”) so that the wave carries data. The claim language at
`
`issue requires at least two modulation methods of a “different type.” Rembrandt says the two
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`modulation methods cannot be “different” unless they vary different characteristics of a carrier
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`wave. So, in Rembrandt’s view, if two modulation methods both varied the amplitude of a
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`carrier wave, they would not qualify as “different types,” even if one of those modulation
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`methods also varied the phase and/or frequency of the carrier wave. In other words, Rembrandt
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`restricts the scope of this claim language to exclude modulation methods with any overlapping
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`characteristic, even if those methods also use non-overlapping characteristics. Apple’s view,
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`however, is that such modulation methods can still be of “different types.”
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`This claim construction dispute was neither raised nor resolved during claim construction
`
`in the Samsung litigation. It should be decided now. O2 Micro Int’l. Ltd. v. Beyond Innovation
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`Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (“When the parties raise an actual dispute
`
`regarding the proper scope of these claims, the court, not the jury, must resolve that dispute.”).
`
`1
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`Rembrandt Wireless
`Ex. 2028
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 4 of 21
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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 5 of 21 PageID #: 2684
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`The Court should not permit Rembrandt to improperly restrict the scope of “different
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`types” of modulation methods. Indeed, its restriction conflicts with the intrinsic evidence,
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`excludes preferred embodiments, and renders certain claims nonsensical. Further, the premise of
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`Rembrandt’s argument conflicts with the Court’s prior construction of “different types.” Apple’s
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`proposal suffers none of these flaws, and stays true to the Court’s previous construction, giving it
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`its full breadth. Accordingly, Apple respectfully requests that the Court adopt Apple’s proposed
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`construction of this single disputed claim phrase.
`
`II.
`
`THE PARTIES HAVE AN ACTUAL DISPUTE REGARDING CLAIM SCOPE
`THAT THE COURT, NOT THE JURY, SHOULD RESOLVE
`
`Whether or not “different types” of modulation methods may have overlapping
`
`characteristics is a claim scope dispute between the parties here for the Court to resolve during
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`claim construction. This dispute arises because Rembrandt has taken the position, as a matter of
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`claim construction, that the “different types” language excludes modulation methods having
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`overlapping characteristics.
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`Consider for example, PSK modulation and QAM modulation. PSK (phase shift keying)
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`modulation varies the phase of a carrier wave and QAM (quadrature amplitude modulation)
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`varies the amplitudes of two carrier waves that are added together.1 See, e.g., Ex. A (Newnes
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`Communications Technology Handbook), at 188-189. Rembrandt told the Patent Office during
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`claim construction in a prior inter partes review proceeding related to the Samsung litigation that
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`there are three families, and that “three characteristics, phase, amplitude and frequency of the
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`carrier wave, define these three families…There is some intersections where some modulation
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`techniques use more than one characteristic…our contention is that they are not of different
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`types. They are different in the sense that they are different methods, like QAM and PSK, but
`
`
`1According to Rembrandt, QAM varies both phase and amplitude characteristics of a carrier
`wave. Ex. B (IPR2014-00518 Record of Oral Hearing) at REM_USPTO_00023579.
`2
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`
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`Rembrandt Wireless
`Ex. 2028
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 5 of 21
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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 6 of 21 PageID #: 2685
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`they share a family so, therefore, they are not different types.” Ex. B (IPR2014-00518 Record of
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`Oral Hearing) at REM_USPTO_00023576-00023579. Rembrandt continues this argument here
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`as it has refused to agree with Apple’s proposed construction, which clarifies that “different
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`types” of modulation methods can have overlapping characteristics.
`
`This dispute over claim scope did not arise during claim construction briefing in the
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`Samsung litigation. Rembrandt argued there that “types” is synonymous with “families,” such
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`that the “different types” claim term should mean “different families.” Ex. E (Samsung
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`litigation, Dkt. 97) at APL-REMBR_00991680-00991683; Ex. G (Samsung litigation, Dkt. 103)
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`at APL-REMBR_00991534-00991535. It did not argue during claim construction that the scope
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`of the claims excluded any overlap in the characteristics that are varied by modulation methods
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`of a “different type” or “different family.” See id. And Samsung also was not focused on
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`whether the modulation methods could have common characteristics—it argued that “different
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`types” means “modulation methods that are incompatible with one another.” Ex. F (Samsung
`
`litigation, Dkt. 102) at 16-20. Given that neither party raised it, Magistrate Judge Payne’s claim
`
`construction order does not resolve the current dispute over “overlapping characteristics.” See
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`Rembrandt Ex. 5 (Samsung litigation, Dkt. 114) at 22-29 (construing “different types” of
`
`modulation to mean “different families of modulation techniques, such as the FSK family of
`
`modulation methods and the QAM family of modulation methods.”).
`
`Because this dispute was not presented to the Court in Samsung as an issue of claim
`
`construction, the Federal Circuit did not resolve this issue when affirming this Court’s prior
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`construction. Rather, the Federal Circuit found, based on the record before it, that the dispute
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`over “whether particular modulation techniques are in different families” was a “factual one.”
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`Rembrandt Wireless Tech., LP v. Samsung Elecs. Co., Ltd., 853 F.3d 1370, 1378-79 (Fed. Cir.
`
`2017). To be clear, the precise “factual” question the Court addressed was “whether Boer [a
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`
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`3
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`Rembrandt Wireless
`Ex. 2028
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 6 of 21
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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 7 of 21 PageID #: 2686
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`prior art reference] meets the ‘different types’ limitation under the court’s construction.” Id. at
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`1379 (“Particularly with regard to obviousness, it is a factual question going to the scope and
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`content of the prior art. We review such factual questions regarding obviousness for substantial
`
`evidence.”) (emphasis added, citation omitted). The Federal Circuit did not resolve the question
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`of whether the scope of the phrase “modulation method[] of a different type” excludes
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`modulation methods having overlapping characteristics. See id. at 1377-80.
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`In contrast to Samsung, the question of whether “different families” of modulation
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`excludes overlapping characteristics (Rembrandt’s position) or may include overlapping
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`characteristics (Apple’s position), is presented now to the Court at the claim construction stage.
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`This dispute is not about the scope and content of the prior art (a factual question), but rather
`
`about the scope of a disputed claim term (a legal question). See O2 Micro Int’l. Ltd., 521 F.3d at
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`1360 (“When the parties raise an actual dispute regarding the proper scope of these claims, the
`
`court, not the jury, must resolve that dispute.”). Accordingly, Apple submits that the Court
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`should determine, as a matter of law, whether the scope of the asserted claims should be
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`narrowed as suggested by Rembrandt.
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`III. LEGAL STANDARDS OF CLAIM CONSTRUCTION
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`The words of a claim are generally given the “meaning that the term would have to a
`
`person of ordinary skill in the art in question … as of the effective filing date of the patent
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`application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Courts
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`look to “those sources available to the public that show what a person of skill in the art would
`
`have understood disputed claim language to mean.” Id. at 1314 (quotation omitted). Those
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`sources include “the words of the claims themselves, the remainder of the specification, the
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`prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning
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`of technical terms, and the state of the art.” Id. (quotation omitted). However, extrinsic evidence
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`4
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`Rembrandt Wireless
`Ex. 2028
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 7 of 21
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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 8 of 21 PageID #: 2687
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`is in general “less reliable than the patent and its prosecution history in determining how to read
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`claim terms.” Phillips, 415 F.3d at 1318-19.
`
`IV.
`
`THE INTRINSIC EVIDENCE CONFIRMS THAT “DIFFERENT TYPES” OF
`MODULATION METHODS MAY HAVE OVERLAPPING CHARACTERISTICS
`
`The intrinsic evidence—including the claim language, the specifications, the original
`
`prosecution, and the IPR proceedings—all show that “different types” of modulation may have
`
`overlapping characteristics. No intrinsic evidence supports Rembrandt’s attempt to restrict the
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`scope of the Court’s previous claim construction to exclude modulation methods with
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`overlapping characteristics from being “different types.” Indeed, Rembrandt’s position renders
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`certain claims nonsensical and excludes preferred embodiments, and its premise is inconsistent
`
`with the Samsung claim construction order.
`
`A.
`
`The Claims Contradict Rembrandt’s Restriction of Claim Scope, and
`Support Apple’s Interpretation.
`
`The “claims themselves provide substantial guidance as to the meaning of particular
`
`claim terms.” Philips, 415 F.3d at 1314. All claims in a patent, “both asserted and unasserted,”
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`can provide “valuable sources of enlightenment as to the meaning of a claim term.” Id. Here,
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`there is nothing in the asserted claims of either the ’580 or the ’228 patent that precludes
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`overlapping characteristics between modulation types, nor does Rembrandt identify any claim
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`language that supports such a limitation. Quite the opposite, unasserted claims in the ’228 patent
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`reflect that “different types” of modulation can include overlapping characteristics.2
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`Indeed, claim 46 of the ’228 patent, which depends from claim 26, alone defeats
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`Rembrandt’s attempt to narrow the scope of the claims. Claim 26 recites a “using at least two
`
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`2 The parties agree that the disputed claim term “different type” should be interpreted the same in
`both the ’580 patent and the ’228 patent. See Rembrandt Br. at 4 (neither party separately
`construes the term “different type,” which is in claim 1 of both patents). Accordingly, the
`intrinsic evidence in the claims of the ’228 patent discussed in this section applies with equal
`force to the meaning of the disputed term “different type” as recited in the ’580 patent.
`
`
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`5
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`Rembrandt Wireless
`Ex. 2028
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 8 of 21
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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 9 of 21 PageID #: 2688
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`different types of modulation methods,” and claim 46 further requires “at least one of said first
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`or second modulation methods implements discrete multitone [DMT] modulation.” According
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`to Rembrandt’s Technology Tutorial, DMT modulation varies the carrier wave in three ways—in
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`phase, in frequency, and in amplitude. See Ex. K (Rembrandt Tech. Tutorial) at 7, 10. Since
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`DMT varies all three of these characteristics, DMT necessarily has characteristics that overlap
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`with every other type of modulation method. DMT modulation thus overlaps with QAM
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`modulation because both methods vary amplitude, and DMT also overlaps with FSK modulation
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`because both methods vary frequency. Id. at 10. In other words, according to Rembrandt, DMT
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`shares a family with FSK (frequency), QAM (amplitude), and PSK (phase) and therefore should
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`not be of a “different type” than any other modulation method. Yet claim 26 requires that the
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`first and second modulation methods be of “different types” and claim 46 specifies that at least
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`one of those two modulation methods is DMT modulation. Thus, claim 26 necessarily must
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`allow for “different types” of modulation methods to have overlapping characteristics. Laitram
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`Corp. v. NEC Corp., 62 F.3d 1388, 1392 (Fed. Cir. 1995) (“[D]ependent claims can aid in
`
`interpreting the scope of claims from which they depend”). Rembrandt’s formulation is wrong.
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`Other dependent claims also support Apple’s construction. Claim 43, which also depends
`
`from claim 26, permits “different types” of modulation methods to implement phase modulation
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`(“wherein at least one of said first or second modulation methods implements phase
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`modulation.”) (emphasis added). See Laitram Corp., 62 F.3d at 1392. Since “at least one” of the
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`“first” and “second” modulation methods implements phase modulation, it follows that the first
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`and second modulation methods recited by claim 43 can both implement phase modulation, thus
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`confirming that “different types” of modulation can have overlapping characteristics. Phillips,
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`415 F.3d at 1314 (“Because claim terms are normally used consistently throughout the patent,
`
`the usage of a term in one claim can often illuminate the meaning of the same term in other
`
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`6
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`Rembrandt Wireless
`Ex. 2028
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 9 of 21
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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 10 of 21 PageID #: 2689
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`claims.”). This argument also applies to claim 44 where “at least one of” the first and second
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`modulation methods, and therefore both modulation methods, “implements amplitude
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`modulation.”
`
`B.
`
`The Specifications Contradict Rembrandt’s Restriction of Claim Scope, and
`Show That “Different Types of Modulation” May Have Overlapping
`Characteristics.
`
`The specifications of the asserted patents confirm that different types of modulation may
`
`have overlapping characteristics because they describe preferred embodiments where “different
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`types” of modulation have overlapping characteristics. Rembrandt’s attempt to exclude these
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`preferred methods that have overlapping characteristics invites the Court to commit legal error.
`
`1.
`
`The Patents’ Preferred “Different Types” of Modulation Methods
`Have Overlapping Characteristics.
`
`The specifications describe different types of modulation methods that have overlapping
`
`characteristics. Because Rembrandt’s formulation would exclude these preferred embodiments,
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`the Court should reject it. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.
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`1996) (holding a construction that excludes the preferred embodiment “is rarely, if ever, correct
`
`and would require highly persuasive evidentiary support”); Verizon Servs. Corp. v. Vonage
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`Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007) (“We normally do not interpret claim
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`terms in a way that excludes disclosed examples in the specification.”).
`
`For example, the specifications describe exemplary first modulation methods that are
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`suitable for “high performance” applications: “some applications (e.g., internet access) require
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`high performance modulation, such as quadrature amplitude modulation (QAM), carrier
`
`amplitude modulation and phase (CAP) modulation, or discrete multitone (DMT) modulation.”
`
`’580 patent at 2:1-5. The provisional application to which the patents-in-suit claim priority
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`describes these same examples of “high performance” modulation methods. See Ex. J
`
`(Provisional App 60/067,562) at RIP00007851 (“A high performance modulation, such as QAM,
`
`
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`7
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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 11 of 21 PageID #: 2690
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`CAP, or DMT . . . .”). But, according to Rembrandt, DMT has at least one characteristic that
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`overlaps with every other type of modulation, as DMT modulates the phase, frequency, and
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`amplitude of the carrier wave. Ex. K (Rembrandt Tech. Tutorial) at 7, 10. Thus, if DMT is used
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`as “Type A” modulation in the system of Figure 4, it necessarily has at least one overlapping
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`characteristic with every type of modulation used as “Type B.” As also shown above, DMT is
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`expressly claimed for “at least one of said first or second modulation methods.” Rembrandt’s
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`construction—excluding modulations that have any overlapping characteristics with another
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`modulation—improperly excludes this embodiment. Verizon, 503 F.3d at 1305.
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`The specifications also disclose that “other applications (e.g., power monitoring and
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`control) require only modest data rates and therefore a low performance modulation method.”
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`’580 patent at 2:5-8. While no examples are given in the specifications, the provisional
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`application lists preferred “low performance” modulation methods that may be used as the
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`second modulation method: FSK (frequency-shift keying), PAM (pulse-amplitude modulation),
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`and DSB (double sideband) modulation. See Ex. J (Provisional App 60/067,562) at
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`RIP00007851. But this list is replete with modulation methods that overlap in characteristics
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`with the “high performance” modulations identified in the specifications.
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`For example, each of FSK, PAM, and DSB must overlap with DMT because, under
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`Rembrandt’s formulation, there exists three families of modulation methods and DMT belongs to
`
`all three. See Ex. K (Rembrandt Tech. Tutorial) at 7, 10. Likewise, the provisional application
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`supports Apple’s construction because it puts QAM (quadrature amplitude modulation) in one
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`family (high-performance modulations) and PAM (pulse amplitude modulation) in another
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`family (low-performance modulations), despite the fact that they both modulate amplitude and
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`therefore have an overlapping characteristic.
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`8
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`Rembrandt Wireless
`Ex. 2028
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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 12 of 21 PageID #: 2691
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`Indeed, the patents never suggest that different types of modulation cannot have
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`overlapping characteristics. As this Court and many others have held, reading in a “negative
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`limitation” via claim construction “generally requires support from the intrinsic evidence,”
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`including, for example, the presence of a “disclaimer or disavowal” of claim scope. Parthenon
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`Unified Memory Architecture LLC v. ZTE Corp., No. 2:15-cv-00225-JRG-RSP, 2016 WL
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`310174, at *8-*9 (E.D. Tex. Jan. 25, 2016) (declining to read in a negative limitation, also
`
`finding that it “could be interpreted to exclude [embodiments] disclosed in the specification”);
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`see also Lites Out, LLC v. Outdoorlink, Inc., No. 4:17-CV-00192-ALM, 2017 WL 4882613, at
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`*9 (E.D. Tex. Oct. 30, 2017) (“Outdoorlink link seeks to define the terms in question primarily
`
`through negative limitations. Outdoorlink has pointed to no language of disclaimer, disavowal,
`
`or lexicography in the intrinsic record.”). The Court should therefore reject Rembrandt’s
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`litigation position as contrary to, and unsupported by, the intrinsic evidence.
`
`2.
`
`The Patents Do Not Differentiate Between “Types” of Modulation
`Techniques Based on Whether They Have Overlapping
`Characteristics
`
`The specifications never suggest that whether two modulation methods share any
`
`overlapping characteristic is at all relevant to the purported invention. In fact, the “background”
`
`of the patents describes a very different problem addressed by the inventor and his purported
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`solution. See ’580 Patent (Rembrandt Ex. 1, Dkt. 73-202) at 1:25-2:20; ’228 Patent (Rembrandt
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`Ex. 2, Dkt. 73-3) at 1:26-2:23. The named inventor admits that those of skill in the art knew that
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`“communication between modems is generally unsuccessful unless a common modulation
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`method is used.” ’580 Patent at 1:45-47. This presented a particular problem for
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`“communication systems comprised of both high performance and low or moderate performance
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`applications,” which, due to incompatibility between high and low performance modems, “can
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`be very cost inefficient to construct.” Id. at 1:66-2:1. On the one hand, “some applications (e.g.,
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`9
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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 13 of 21 PageID #: 2692
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`internet access) require high performance modulation, such as quadrature amplitude modulation
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`(QAM), carrier amplitude modulation and phase (CAP) modulation, or discrete multitone (DMT)
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`modulation.” Id. at 2:1-5. On the other hand, “other applications (e.g., power monitoring and
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`control) require only modest data rates and therefore a low performance modulation method.”
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`Id. at 2:5-8.
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`In these mixed-purpose communication networks, “[a]ll users in the system will generally
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`have to be equipped with a high performance modem to ensure modulation compatibility.” ’580
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`Patent at 2:8-10. “These state of the art modems are then run at their lowest data rates for those
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`applications that require relatively low data throughput performance[,]” and the “replacement of
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`inexpensive modems with much more expensive state of the art devices due to modulation
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`compatibility imposes a substantial cost that is unnecessary in terms of the service and
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`performance to be delivered by the end user.” Id. at 2:10-16. “Accordingly, what is sought, and
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`what is not believed to be provided by the prior art, is a system and method of communication in
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`which multiple modulation methods are used to facilitate communication among a plurality of
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`modems in a network, which have heretofore been incompatible.” Id. at 2:16-20. In other
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`words, the purported invention is not directed to the degree of characteristic overlap between two
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`different types of modulation methods; rather it is directed to a method of facilitating
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`communications on a network that includes modems using high-performance modulations for
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`high data rate applications and modems using low-performance modulations for low data rate
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`applications.
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`Consistent with these statements, the differentiation between modulations of high and
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`low performance is reflected in claims 6-9 of the ’228 patent, which are directed to “high data
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`rate applications” or “low data rate applications.” See ’228 patent, claim 6 (“The master
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`communication device of claim 1, wherein the payload portion included in the fourth information
`
`
`
`10
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`Rembrandt Wireless
`Ex. 2028
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 13 of 21
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`

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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 14 of 21 PageID #: 2693
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`is provided for a high data rate application.”); claim 7 (depending from claim 6 “wherein the
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`high data rate application is configured to access the Internet”); claim 8 (“The master
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`communication device of claim 1, wherein the payload portion included in the fourth information
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`is provided for a low data rate application.”); claim 9 (depending from claim 8 “wherein the low
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`data rate application is selected from the group consisting of: power monitoring or control
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`application”). As these claims demonstrate, a focus of the claimed invention is how the
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`respective portions of the transmission are being used—which would then inform whether they
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`require high performance or low performance modulations. But there is simply no support in
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`these claims or the specification to suggest that a high performance modulation method is
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`improper for a “high data rate application” simply because it shares an overlapping characteristic
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`with a modulation method used for a “low data rate application.”
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`Indeed, there is no discussion in the specifications of any reason or need to preclude
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`different types of modulation from having “overlapping characteristics” between them. The
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`different types of modulation according to the purported invention are described generically:
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`“Type A” and “Type B.” See, e.g., ’580 Patent at Figures 4 and 5; id. at 5:47-56 (“In this
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`example, two tribs 66a-66a run a type A modulation method while one trib 66b runs a type B
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`modulation method. The present invention permits a secondary or embedded modulation
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`method (e.g., type B) to replace the standard modulation method (e.g., type A) after an initial
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`training sequence. This allows the master transceiver 64 to communicate seamlessly with tribs
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`of varying types.”).
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`C.
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`No Prosecution Disclaimer Requires “Different Types” of Modulation To
`Exclude Overlapping Characteristics
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`No statement during prosecution supports Rembrandt’s attempt to restrict the claim scope
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`to exclude overlapping characteristics. Rembrandt argues that “[t]o overcome the rejection” of
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`claim 1 of the ’580 patent over the prior art Siwiak reference, “the patentee amended the
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`
`
`11
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`Rembrandt Wireless
`Ex. 2028
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 14 of 21
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`Case 2:19-cv-00025-JRG Document 79 Filed 11/04/19 Page 15 of 21 PageID #: 2694
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`limitation to require ‘wherein the second modulation method is of a different type than the first
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`modulation method.” Rembrandt Br. at 6 (underlining in original). This argument lacks merit
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`for two reasons.
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`First, the claim amendment and the patent applicant’s remarks say nothing at all about
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`whether “overlapping characteristics” is excluded from the scope of the claim, and therefore does
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`not disclaim scope in the way Rembrandt’s construction requires. See, e.g., Omega Eng’g, Inc.,
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`v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003) (“For prosecution disclaimer to attach,
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`our precedent requires that the alleged disavowing actions or statements made during prosecution
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`be both clear and unmistakable.”). Instead, Rembrandt remarked to the USPTO:
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`Applicant thanks Examiner Ha for the indication that claims 1-18, and 37-57 are
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`allowed (office action, p.7). Applicant has further amended claims 1-2, 9-15, 18,
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`37-38, and 45-46 with additional recitations to more precisely claim the subject-
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`matter. For example, the language of independent claim 1 has been clarified to
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`refer to two types of modulation methods, i.e., different families of modulation
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`techniques, such as the FSK family of modulation methods and the QAM family
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`of modulation methods.
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`Ex. I, (’580 File History) at RIP00019073. Notably missing from this statement is any reference
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`to, or discussion of, whether “different types” excludes overlapping characteristics between
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`families. In fact, this statement does not even mention the “three families” (phase, frequency,
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`and amplitude) that Rembrandt later argued in the IPRs restricts the claims. Supra, Section II.
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`Instead, the claim amendment refers simply to the “