IPR2020-00033
`U.S. Patent No. 8,023,580
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00033
`
`U.S. Patent No. 8,023,580
`
`____________
`
`DECLARATION OF MARK R. LANNING
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 8,023,580
`
`Apple Exhibit 1003
`Apple Inc. v. Rembrandt Wireless
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`TABLE OF CONTENTS
`I.
`INTRODUCTION ......................................................................................... 1
`BACKGROUND AND QUALIFICATIONS .............................................. 2
`II.
`III. PRIORITY DATE AND ONE OF ORDINARY SKILL ........................... 7
`IV. MATERIALS RELIED UPON .................................................................... 8
`V.
`BACKGROUND ON THE STATE OF THE ART .................................... 8
`VI. ANALYSIS OF THE ’580 PATENT .........................................................11
`A.
`Overview of the ’580 Patent ................................................................11
`B.
`Overview of the ’580 Patent Prosecution History ..............................17
`C.
`Claim Construction of the ’580 Patent Claims ...................................21
`VII. THE CHALLENGED CLAIMS ARE INVALID ....................................23
`A.
`Legal Standards ...................................................................................23
`B.
`Claims 2 and 59 Are Obvious Under § 103 over Briancon in
`View of Leitch (Ground 1) and Briancon in View of Leitch and
`Ayerst (Ground 2) ...............................................................................27
`1.
`Overview of “Briancon” U.S. Patent No. 5,905,448
`(Ex. 1004) ..................................................................................28
`Overview of “Leitch” U.S. Patent No. 5,689,440
`(Ex. 1005) ..................................................................................48
`Overview of “Ayerst” U.S. Patent No. 5,521,926
`(Ex. 1007) ..................................................................................49
`Motivation to Combine Briancon and Leitch ...........................52
`Motivation to Combine Briancon and Leitch and Ayerst .........54
`Invalidity of Claim 2 Over Briancon in view of Leitch
`(Ground 1) and Briancon in view of Leitch and Ayerst
`(Ground 2) .................................................................................57
`a.
`Element [1.pre] ...............................................................57
`b.
`Element [1.A] .................................................................65
`c.
`Element [1.B] ..................................................................66
`d.
`Element [1.C] ..................................................................71
`
`4.
`5.
`6.
`
`2.
`
`3.
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`i
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`C.
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`7.
`
`e.
`Element [1.D] .................................................................75
`Element [1.E] ..................................................................81
`f.
`Element [1.F] ..................................................................82
`g.
`Element [1.G] .................................................................88
`h.
`Claim 2 ............................................................................89
`i.
`Invalidity of Claim 59 Over Briancon in view of Leitch
`(Ground 1) and Briancon in view of Leitch and Ayerst
`(Ground 2) .................................................................................94
`a.
`Element [58.pre] .............................................................94
`b.
`Element [58.A] ...............................................................95
`c.
`Element [58.B] ................................................................95
`d.
`Element [58.C] ................................................................95
`e.
`Element [58.D] ...............................................................96
`f.
`Element [58.E] ................................................................96
`g.
`Claim 59 ..........................................................................97
`Claims 2 and 59 Are Obvious Under § 103 over Siwiak-306 in
`View of Siwiak-038 (Ground 3)..........................................................97
`1.
`Overview of “Siwiak-306” U.S. Patent No. 5,239,306
`(Ex. 1008) ..................................................................................98
`Overview of “Siwiak-038” U.S. Patent No. 4,875,038
`(Ex. 1009) ................................................................................108
`Invalidity of Claim 2 Over Siwiak-306 in view of
`Siwiak-038 (Ground 3) ...........................................................110
`a.
`Element [1.pre] .............................................................110
`b.
`Element [1.A] ...............................................................119
`c.
`Element [1.B] ................................................................120
`d.
`Element [1.C] ................................................................122
`e.
`Element [1.D] ...............................................................126
`f.
`Element [1.E] ................................................................133
`g.
`Element [1.F] ................................................................134
`h.
`Element [1.G] ...............................................................141
`i.
`Claim 2 ..........................................................................142
`Invalidity of Claim 59 Over Siwiak-306 in view of
`Siwiak-038 (Ground 3) ...........................................................146
`a.
`Element [58.pre] ...........................................................146
`b.
`Element [58.A] .............................................................147
`c.
`Element [58.B] ..............................................................147
`
`2.
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`3.
`
`4.
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`ii
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`d.
`Element [58.C] ..............................................................147
`Element [58.D] .............................................................148
`e.
`Element [58.E] ..............................................................148
`f.
`Claim 59 ........................................................................149
`g.
`D. No Secondary Considerations of Nonobviousness ...........................149
`VIII. CONCLUSION ..........................................................................................151
`
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`I, Mark R. Lanning, hereby declare under penalty of perjury:
`
`I.
`
`INTRODUCTION
`I have been retained on behalf of Apple to provide assistance regarding
`1.
`
`U.S. Patent No. 8,023,580 (“the ’580 patent,” Ex-1001) in connection with Apple’s
`
`Petition for Inter Partes Review.1 Specifically, I have been asked to consider the
`
`validity of Claims 2 and 59 of the ’580 patent (the “Challenged Claims”). I have
`
`personal knowledge of the facts and opinions set forth in this declaration, and, if
`
`called upon to do so, I would testify competently thereto.
`
`2.
`
`I am being compensated for my time at my ordinary and customary
`
`consulting rate of $550 per hour for my work. My compensation is based solely on
`
`the amount of time that I devote to activity related to this case and is in no way
`
`contingent on the nature of my findings, the presentation of my findings in testimony,
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`or the outcome of this or any other proceeding. I have no other financial interest in
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`this proceeding. My opinions are based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials, including
`
`those cited herein.
`
`
`1 Where appropriate, I refer to exhibits that I understand are filed with the Petition
`
`for Inter Partes Review of the ’580 Patent.
`
`
`
`1
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`3.
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`I may rely upon these materials, my knowledge and experience, and/or
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`additional materials to rebut arguments raised by the Patent Owner. Further, I may
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`also consider additional documents and information in forming any necessary
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`opinions, including documents that may not yet have been provided to me.
`
`4. My analysis of the materials produced in this proceeding is ongoing and
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`I will continue to review any new material as it is provided. This declaration
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`represents only those opinions I have formed to date. I reserve the right to revise,
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`supplement, and/or amend my opinions stated herein based on new information and
`
`on my continuing analysis of the materials already provided.
`
`5.
`
`A table of contents is included above and a list of exhibits referenced
`
`herein is attached at Appendix B.
`
`II. BACKGROUND AND QUALIFICATIONS
`All of my opinions stated in this declaration are based on my own
`6.
`
`personal knowledge and professional judgment. In forming my opinions, I have
`
`relied on my knowledge and experience in designing, developing, researching, and
`
`teaching the technology referenced in this declaration.
`
`7.
`
`I am currently the President of three consulting companies: Telecom
`
`Architects, Inc., I.N. Solutions, Inc., and Reticle Consulting, LLC. All three
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`companies provide professional consulting services and custom software
`
`development for one or more particular technical areas. Telecom Architects, Inc.
`
`
`
`2
`
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`was established in 1999 to provide specialized consulting services to fixed and
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`wireless telecom service providers and their suppliers. I.N. Solutions2 (Intelligent
`
`Networking Solutions) was established in 1991 with an emphasis on applications
`
`design and network architecture engineering for telephone-based switching and
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`Advanced Intelligent Networking systems. Reticle Consulting was created in 2009
`
`to provide specialized consulting services for forensic software analysis and
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`software source code comparison for misappropriation cases.
`
`8.
`
`I have over 40 years’ experience in a wide variety of communication
`
`technologies including, but not limited to, paging systems and pager protocols,
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`modems and modem protocols, circuit-switched and packet-switched networks,
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`cellular networks and their components, advanced cellular network based services,
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`Public Switched Telephone Network (“PSTN”) networks, VoIP networks,
`
`Advanced services that use Intelligent Networking (“AIN”) network elements, and
`
`various signaling protocols (e.g., Signaling System 7 (“SS7”) and Integrated Digital
`
`Services Network (“ISDN”)).
`
`9.
`
`For at least 30 years, I have worked directly with hundreds of modems
`
`of different types, including designing, developing, configuring and/or installing
`
`modems for communication systems supporting airline reservations, email, Internet
`
`
`2 I.N. Solutions, Inc. is no longer active.
`
`
`
`3
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`and cellular systems. The modem protocols included are at least: Bell 103/V.21;
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`Bell 212; V.29; V.32; V.32bis; V.34; V.90 and V.92. The modulation methods used
`
`for these modem protocols include at least FSK, PSK, QPSK, and QAM. In addition,
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`each of the three generations of cellular systems that I have worked on as either a
`
`development engineer or system architect has used multiple modulation methods for
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`communications between a base station and cellular phones. In those systems, the
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`cellular phones were capable of adaptively changing modulation methods based on
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`the level of wireless channel interference. The modulation methods used for these
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`systems include at least FSK, BPSK, QPSK, and QAM.
`
`10. While employed at Tandem Computers, Inc., I was the architect and
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`development manager for a large packet switching system that used multiple token
`
`bus LANs for communication between 32 high-speed computers. As part of my
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`responsibilities in that role, I worked with Siemens in Munich, Germany to define,
`
`develop and manufacture specialized modem chips for use in our system.
`
`11.
`
`In the early 1990s, I was consulting for Motorola on its SuperCell base
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`station where I worked directly with the Motorola paging system design engineers
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`to ensure the SuperCell base station could be used for both cellular and paging
`
`applications. As part of my consulting, I performed a detailed analysis of overall
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`paging system functionality including an analysis of the Time Division Multiplexing
`
`
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`protocol used to communicate with pagers and the modulation methods that needed
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`to be supported.
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`12.
`
`In addition, I have also taught a data communication course for
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`Southern Methodist University (SMU), which included a “modems and modulation”
`
`section that included: how noise affects a modem channel; Amplitude Shift Keying
`
`(ASK); Frequency Shift Keying (FSK); Phase Shift Keying (PSK); voice grade
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`modems based on the 103/113 (FSK), 108 (FSK), 202 (FSK), 212 (PSK), 201C
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`(DPSK), 208 (8-PM), and 2096 (16-QAM) modem specifications.
`
`13. My communications experience began in 1976 while I was enlisted in
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`the U.S. Army Signal Corps. Specifically, I worked in the U.S. Army Security
`
`Agency (ASA) where I was a member of a technical team responsible for upgrading
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`worldwide voice and data communications used by the White House staff and other
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`government agencies.
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`14. Beginning in 1984, I was a member of a team responsible for converting
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`a PSTN switch into a cellular mobile switching center that Motorola and other
`
`companies used extensively in cellular networks located the U.S. and other countries.
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`I have also been a member or manager of development teams that built cellular
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`network elements and specialized cellular applications. These network element types
`
`include at least: base station; home location register; short and multimedia message
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`centers; intelligent peripherals; personal number plans; and pre-paid billing systems.
`
`
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`These applications include, but are not limited to, creating, processing and delivering
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`Short Message Service (SMS) and Multimedia Message Service (MMS) messages
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`in cellular networks and cellular phones.
`
`15. Since 1991, I have been responsible for the design and implementation
`
`of multiple packet-switched networks and their required interfaces to different
`
`circuit-switched networks. Examples of these networks are British Telecom, Nextel,
`
`and Sprint.
`
`16.
`
`I am a member of the Institute of Electrical and Electronics Engineers
`
`(IEEE), including the IEEE Standards Association. I am also a member of the
`
`Association for Computing Machinery (ACM). I was also a member of the American
`
`National Standards Institute (ANSI) T1 and T1X1 standard groups responsible for
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`the definition and standardization of the Advanced Intelligent Network (AIN) and
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`Signaling System 7 (SS7) protocol.
`
`17.
`
`I received my Bachelor of Science degree in Computer Science from
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`Southern Methodist University (SMU) in 1983. More details on my education, work
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`experience and technical consulting experience, as well as a list of publications that
`
`I have authored or co-authored, and my testifying experience are contained in my
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`curriculum vitae, included in attached Appendix A.
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`
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`III. PRIORITY DATE AND ONE OF ORDINARY SKILL
`In rendering the opinions set forth in this declaration, I was asked to
`18.
`
`consider the patent claims and the prior art through the eyes of a person of ordinary
`
`skill in the art at the time of the alleged invention, which I understand is asserted to
`
`be December 5th, 1997. I understand that the factors considered in determining the
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`ordinary level of skill in a field of art include the level of education and experience
`
`of persons working in the field; the types of problems encountered in the field; the
`
`teachings of the prior art, and the sophistication of the technology at the time of the
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`alleged invention. I understand that a person of ordinary skill in the art is not a
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`specific real individual, but rather is a hypothetical individual having the qualities
`
`reflected by the factors above. I understand a person of ordinary skill in the art is
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`presumed to have knowledge of all relevant prior art, and would thus have been
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`familiar with each of the references cited herein, as well as the background
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`knowledge in the art discussed herein, and the full range of teachings they contain.
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`19. Taking these factors into consideration, in my opinion, on or before
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`December 5th, 1997, a person of ordinary skill in the art relating to the technology
`
`of the ’580 patent would have had a minimum of a Bachelor’s degree in Electrical
`
`Engineering, Computer Science, or a related field, and approximately two years of
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`experience in the field of communication systems. Additional graduate education
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`
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`could substitute for professional experience, or significant experience in the field
`
`could substitute for formal education.
`
`20. Before December 5th, 1997, my level of skill in the art was at least that
`
`of a person of ordinary skill in the art, for at least having designed and implemented
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`communication systems, including modem and paging systems. I am qualified to
`
`provide opinions concerning what a person of ordinary skill in the art would have
`
`known and understood at that time, based on my education and work experience,
`
`and my analysis and conclusions herein are from the perspective of a person of
`
`ordinary skill in the art as of December 5th, 1997.
`
`IV. MATERIALS RELIED UPON
`In reaching the conclusions described in this declaration, I have relied
`21.
`
`on the documents and materials cited herein as well as those identified in Appendix
`
`B attached to this declaration. Each of these materials is a type of document that
`
`experts in my field would have reasonably relied upon when forming their opinions.
`
`22. My opinions are also based upon my education, training, research,
`
`knowledge, and personal and professional experience.
`
`V. BACKGROUND ON THE STATE OF THE ART
`23. As discussed further below, each element of the Challenged Claims was
`
`well-known to a person of ordinary skill in the art, and disclosed and rendered
`
`obvious by the prior art well before the claimed December 5, 1997, priority date of
`
`
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`the ’580 patent (“’580 Priority Date”). Moreover, the combination of elements
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`recited by the Challenged Claims would have been, at least, obvious and was at most
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`an obvious implementation choice.
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`24. For example, communication systems for transmitting and receiving
`
`data using different modulation methods (including FSK and QAM3) were well-
`
`known in the art before the ’580 Priority Date. It was further well-known in the art
`
`to include an indication of the type of modulation method being used and, in
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`particular, indications of changes in modulation in transmission sequences.
`
`25.
`
`In particular, it was well-known in the art to send transmissions
`
`modulated using two different types of modulation methods. See, e.g., Ex. 1004
`
`(Briancon), 3:49-57, 12:29-60 (disclosing using the non-linear FSK format and
`
`linear modulation formats); Ex. 1005 (Leitch), 6:14-6:26 (teaching using FSK and
`
`QAM); Ex. 1006 (Leitch ’747), 197:19-29; Ex. 1008 (Siwiak-306), 13:46-51, 14:12-
`
`24. It was also well-known in the art for transmissions addressed to a receiver to
`
`include a first portion and a payload portion, wherein the first portion indicates the
`
`
`3 Frequency-shift keying (“FSK”) is a modulation format that modulates frequency;
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`and quadrature amplitude modulation (“QAM”) is a modulation format that
`
`modulates amplitude. E.g., Ex. 1005 (Leitch), 6:14-17, 8:53-56, 13:57-60, 15:15-
`
`17; Ex. 1006 (Leitch ’747), 197:19-22, 201:28-30, 209:34-37, 212:6-8.
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`modulation type of the corresponding payload portion. See, e.g., Ex. 1004
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`(Briancon), 12:13-18, 7:25-31 (disclosing that the address and the vector information
`
`indicates the modulation type); Ex. 1008 (Siwiak-306), 12:59-13:24 (teaching that
`
`the address indicates the modulation type).
`
`26.
`
`In addition, it was well-known in the art that, after transmission of high
`
`speed data modulated using a second modulation format, a subsequent transmission
`
`to a receiver can include a third sequence indicating that communication has reverted
`
`to the first modulation method. See, e.g., Ex. 1004 (Briancon), FIG. 4, 7:22-31,
`
`12:13-18 (disclosing that a control frame indicative of forthcoming data modulated
`
`in the FM-modulated format, can be transmitted after an analog frame of “high speed
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`data” modulated in the linear modulation format); Ex. 1008 (Siwiak-306), 6:43-55,
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`5:66-6:8, 6:19-30 (teaching that following the transmission of the high speed data
`
`216, address information indicative of forthcoming conventionally modulated (i.e.,
`
`FSK-modulated) messages can follow).
`
`27. Finally, systems having a master/slave
`
`relationship between
`
`communication devices also were well-known in the art. See, e.g., Ex. 1004
`
`(Briancon), Abstract, 2:53-58, 3:13-18 (teaching a central transceiver in a
`
`master/slave relationship in which communications from a selective call radio to the
`
`transceiver are made in response to communications from the transceiver to the
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`selective call radio using a synchronous protocol); Ex. 1007 (Ayerst), 5:9-22
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`
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`(disclosing a master/slave relationship in a synchronous pager system); Ex. 1009
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`(Siwiak-038), 2:55-58, 6:37-41 (disclosing a central transceiver in a master/slave
`
`relationship in which communications from a selective call transceiver to the central
`
`transceiver are made in response to communications from the central transceiver to
`
`the selective call transceivers using a synchronous protocol). Ex. 1020 (Kaufman),
`
`5:9-15 (describing master/slave modes in a point to multipoint paging network). I
`
`understand that Patent Owner already acknowledged and the PTAB already
`
`concluded that master/slave communications systems were well-known in the art.
`
`Ex. 1001 (’580 patent), 3:40-4:50, FIG. 1, FIG. 2; Ex. 1015 (IPR2014-00518 Final
`
`Written Decision), 13-18; Ex. 1021 (Upender); Ex. 1024 (Goodman Declaration)
`
`¶¶102-104.
`
`VI. ANALYSIS OF THE ’580 PATENT
`A. Overview of the ’580 Patent
`28. The ’580 patent claims to have invented a system like that shown in
`
`Figure 3, in which a master transceiver 64 is capable of transmitting and receiving
`
`data using different modulation methods. Ex. 1001 (’580 patent), 5:23-33. The
`
`patent identifies the modulation methods as “type A” modulation and “type B”
`
`modulation. Ex. 1001 (’580 patent), 5:23-33.
`
`
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`Transceiver 64 communicates with tributary transceivers (called “tribs”), such as
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`trib 66, each of which communicates using either a type A modulation method or
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`type B modulation method (shown as “type X” in Figure 3). Ex. 1001 (’580 patent),
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`
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`5:34-46.
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`29. Figure 4 shows an exemplary multipoint communication system in
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`which transceiver 64 can communicate with trib 66a using a type A modulation
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`method and trib 66b using a type B modulation method. Ex. 1001 (’580 patent),
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`5:47-51.
`
`
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`30. According to the ’580 patent, the “master transceiver” is capable of
`
`transmitting messages in “either a type A or a type B modulation method.” Ex. 1001
`
`(’580 patent), 5:42-43, 2:28-31, FIGS. 3-8. To switch from type A modulation to
`
`type B modulation, the master transceiver 64 transmits a training sequence in which
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`type A tribs are “notified of an impending change to type B modulation.” Ex. 1001
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`(’580 patent), 6:3-6. Further, the transceiver, “using type B modulation, transmits
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`data along with an address in sequence 108, which is destined for a particular type
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`B trib 66b.” Ex. 1001 (’580 patent), 6:10-12. Finally, “[a]fter completing
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`transmission sequence 108, master transceiver 64 transmits a trailing sequence 114
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`using type A modulation thus notifying all type A tribs 66a that type B modulation
`
`transmission is complete.” Ex. 1001 (’580 patent), 6:16-19.
`
`31. As discussed herein, the alleged invention is no more than a collection
`
`of well-known network communication features already disclosed in the art before
`
`the claimed priority date.
`
`32.
`
`I have considered the Challenged Claims (claims 2 and 59) of the ’580
`
`patent, which depend from claims 1 and 58, respectively. The Challenged Claims
`
`(and the independent claims from which they depend) read as follows:
`
`[1.pre] A communication device capable of communicating according
`to a master/slave relationship in which a slave communication from a
`slave to a master occurs in response to a master communication from
`the master to the slave, the device comprising:
`
`[1.A] a transceiver, in the role of the master according to the
`master/slave relationship,
`
`[1.B] for sending at least transmissions modulated using at least two
`types of modulation methods, wherein the at least two types of
`modulation methods comprise a first modulation method and a second
`modulation method, wherein the second modulation method is of a
`different type than the first modulation method,
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`[1.C] wherein each transmission comprises a group of transmission
`sequences, wherein each group of transmission sequences is structured
`with at least a first portion and a payload portion
`
`[1.D] wherein first information in the first portion indicates at least
`which of the first modulation method and the second modulation
`method is used for modulating second information in the payload
`portion,
`
`[1.E] wherein at least one group of transmission sequences is addressed
`for an intended destination of the payload portion, and
`
`[1.F] wherein for the at least one group of transmission sequences: the
`first information for said at least one group of transmission sequences
`comprises a first sequence, in the first portion and modulated according
`to the first modulation method, wherein the first sequence indicates an
`impending change from the first modulation method to the second
`modulation method, and
`
`[1.G] the second information for said at least one group of transmission
`sequences comprises a second sequence that is modulated according to
`the second modulation method, wherein the second sequence is
`transmitted after the first sequence.
`
`[2] The device of claim 1, wherein the transceiver is configured to
`transmit a third sequence after the second sequence, wherein the third
`sequence is transmitted in the first modulation method and indicates
`that communication from the master to the slave has reverted to the first
`modulation method.
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`[58.pre] A communication device capable of communicating according
`to a master/slave relationship in which a slave message from a slave to
`a master occurs in response to a master message from the master to the
`slave, the device comprising:
`
`[58.A] a transceiver, in the role of the master according to the
`master/slave relationship,
`
`[58.B] capable of transmitting using at least two types of modulation
`methods, wherein the at least two types of modulation methods
`comprise a first modulation method and a second modulation method,
`wherein the second modulation method is of a different type than the
`first modulation method, and
`
`[58.C] wherein the transceiver is configured to transmit messages with:
`a first sequence, in the first modulation method, that indicates at least
`which of the first modulation method and the second modulation
`method is used for modulating a second sequence, wherein, in at least
`one message, the first sequence indicates an impending change from
`the first modulation method to the second modulation method,
`
`[58.D] and wherein the at least one message is addressed for an
`intended destination of the second sequence, and
`
`[58.E] the second sequence, modulated in accordance with the
`modulation method indicated by the first sequence and, in the at least
`one message, modulated using the second modulation method, wherein
`the second sequence is transmitted after the first sequence.
`
`[59] The device of claim 58, wherein the transceiver is configured to
`transmit a third sequence after the second sequence, wherein the third
`
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`sequence is transmitted in the first modulation method and indicates
`that communication from the master to the slave has reverted to the first
`modulation method.
`B. Overview of the ’580 Patent Prosecution History
`33. The ’580 patent issued from U.S. Application No. 12/543,910.
`
`The ’910 Application was a continuation of U.S. Application No. 11/774,803, which
`
`was a continuation of U.S. Application No. 10/412,878, which was a continuation-
`
`in-part of U.S. Application No. 09/205,205, and claims the benefit of the filing date
`
`of U.S. Provisional App. No. 60/067,562, filed Dec. 5, 1997.
`
`34. U.S. Application 12/543,910, which matured into the ’580 patent, was
`
`filed on August 19, 2009. Ex. 1002 (’580 File History), 1-46, 306. The Examiner
`
`issued an Office Action on September 1, 2010, objecting to a number of claims for
`
`antecedent basis that were otherwise deemed allowable, and rejecting other claims
`
`under §§102(b) and 103(a). Ex. 1002 (’580 File History), 70-78. Application claim
`
`1 (which would issue as claim 1) was one such claim deemed allowable but for the
`
`antecedent basis issue. Ex. 1002 (’580 File History), 70-78. In a March 1, 2011,
`
`Response, Patent Owner amended the pending claims, including application claims
`
`1 and 2 (which would issue as claims 1 and 2), cancelled other claims, and added
`
`forty-eight new claims. Ex. 1002 (’580 File History), 127-38. These new claims
`
`included claims 123 and 124, which would issue as claims 58 and 59, respectively.
`
`
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`Ex. 1002 (’580 File History), 135-36. Patent Owner offered the following
`
`explanation for amending claim 1 to introduce the term “type,” stating:
`
`Applicant thanks Examiner Ha for the indication that claims 1-18, and
`37-57 are allowed (office action, p.7). Applicant has further amended
`claims 1-2, 9-15, 18, 37-38, and 45-46 with additional recitations to
`more precisely claim the subject-matter. For example, the language of
`independent claim 1 has been clarified to refer to two types of
`modulation methods, i.e., different families of modulation techniques,
`such as the FSK family of modulation methods and the QAM family
`of modulation methods. [emphasis added]
`
`Ex. 1002 (’580 File History), 140. I understand that Patent Owner relied on this
`
`statement during the Samsung litigation 4 to assert that “different types” of
`
`modulation methods meant “different families of modulation techniques.” The
`
`district court construed “modulation method [] of a different type”/“different types
`
`of modulation methods” to mean “different families of modulation techniques, such
`
`as the FSK family of modulation methods and the QAM family of modulation
`
`methods,” based on this prosecution history (Ex. 1011 (Claim Construction Order),
`
`
`4 Rembrandt Wireless Technologies, LP v. Samsung Electronics Co. Ltd. et al., 2:13-
`
`cv-00213 (E.D. Tex.); Appeal No. 2016-1729 (Fed. Cir.).
`
`
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`22-29), and the Federal Circuit