IPR2015-00555
`Patent 8,457,228 B2
`
`same or substantially the same prior art" previously was "presented to the
`
`Office" in the IPR '892 proceeding. 35 U.S.C. § 325(d); see also Unilever,
`
`Inc., v. The Proctor & Gamble Co., Case IPR2014-00506, slip op. at 6
`
`(PTAB July 7, 2014) (Paper 17) (informative) (seven new references added
`
`to six that were applied in earlier petition).
`
`Petitioner is requesting, essentially, a second chance to challenge the
`
`claims. We, however, are not persuaded that a second chance would help
`
`"secure the just, speedy, and inexpensive resolution of every proceeding."
`
`37 C.F.R. § 42.l(b). Permitting second chances in cases like this one ties up
`
`the Board's limited resources; we must be mindful not only of this
`
`proceeding, but of "every proceeding." Id.; see also ZTE Corp. v.
`
`ContentGuard Holdings, Inc., Case IPR2013-00454, slip op. at 5-6 (PT AB
`
`Sept. 25, 2013) (Paper 12) ("The Board is concerned about encouraging,
`
`unnecessarily, the filing of petitions which are partially inadequate."); cf
`
`Ariosa Diagnostics v. Isis Innovation, Ltd., Cc;ise IPR2013-00250, slip op. at
`
`2, 4 (PTAB Sept. 8, 2013) (Paper 25) (grantingjoinder when a new produ_ct
`
`was launched, leading to a threat of new assertions of infringement) and
`
`Paper 4 at 3; Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109, slip
`
`op. at 3 (PTAB Feb. 25, 2014) (Paper 15) (grantingjoinder when additional
`
`claims had been asserted against petitioner in concurrent district court
`
`litigation).
`
`In this proceeding, however, we are not apprised of a reason that
`
`merits a second chance. Petitioner simply presents arguments now that it
`
`could have made in IPR '892, had it merely chosen to do so. In view of the
`
`foregoing, and especially in light of the fact that, barringjoinder, this
`
`petition is time-barred under 35 U.S.C. § 315(b), we exercise ~ur discretion
`
`s·
`
`Apple Exhibit 1010
`310
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`Ex. 2012
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00034
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`

`

`IPR2015-00555
`Patent 8,457,228 B2
`
`under 35 U.S.C. § 325(d) to deny the petition, because it presents merely
`
`"the same or substantially the same prior art or arguments" presented to us in
`
`IPR '892. As a consequence, Petitioner's motion for joinder is dismissed as
`
`moot.
`
`°III.ORDER
`
`In view of the foregoing, it is
`
`ORDERED that Petitioner's motion for joinder is dismissed; and
`
`FURTHER ORDERED that no trial is instituted.
`
`9
`
`311
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`

`

`IPR2015-00555
`Patent 8,457,228 B2
`
`PETITIONER:
`J. Steven Baughman
`Gabrielle E. Higgins
`Daniel Cardy
`ROPES & GRAY LLP
`steven. baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
`cardyd@dicksteinshapiro.com
`
`PATENT OWNER
`
`Thomas Engellenner ·
`Reza Mollaaghababa
`George Haight
`Lana Gladstein
`PEPPER HAMIL TON LLP
`engellennert@Jlepperlaw.com
`mollaaghababar@Jlepperlaw.com
`haightg@pepperlaw.com
`gladsteinl@Jlepperlaw.com
`
`10
`
`312 .
`
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`

`

`Trials@uspto.gov
`571-272-7822
`
`Paper 44
`Date Entered: September 24, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PA TENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA,
`LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`V.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`
`Case IPR2014-00893
`Patent 8,457,228 B2
`
`Before JAMESON LEE, HOWARD.B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge,
`
`FINAL WRITTEN DECISION
`35 USC.§ 318(a) and 37 C.F.R. § 42.73
`
`I. BACKGROUND
`
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`
`Samsung Telecommunications America, LLC, and Samsung Austin
`
`Semiconductor, LLC ( collectively, "Petitioner") filed a request for inter
`
`313
`
`IPR2020-00036 Page 00508
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`Ex. 2012
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`

`

`IPR2014-00893
`Patent 8,457,228 B2
`
`partes review of claims 22, 23, and 25 of U.S. Patent No. 8,457,228 B2 ("the
`
`'228 patent," Ex. 1401) under 35 U.S.C. §§ 311-319. Paper 2 (Petition or
`
`"Pet."). The Board instituted an inter partes review of daims 22, 23, and 25
`
`on an asserted ground of unpatentability for obviousness. Paper 8 ("Dec. on
`
`Inst.").
`
`Subsequent to institution, Patent Owner Rembrandt Wireless
`
`Technologies, LP, filed a patent owner response (Paper 17, "PO Resp.").
`
`Petitioner filed a reply to the Patent Owner Response (Paper 27, "Pet.
`
`Reply").
`Oral hearing was held on July 21, 2015. 1
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 22, 23, and 25 of the '228 patent
`
`are unpatentable.
`
`A. Related Proceedings
`
`According to Petitioner, the '228 patent is involved in the following
`
`lawsuit: Rembrandt Wireless Technologies, LP v. Samsung Electronics Co.,
`
`No. 2:13-cv-00213 (E.D. Tex. 2013). Pet. 1. The '228 patent also has been
`
`challenged in the following cases: Samsung Electronics Co. v. Rembrandt
`
`Wireless Technologies, LP, IPR2014-00889 (not instituted); Samsung
`
`Electronics Co. v. Rembrandt Wireless Technologies, LP, IPR2014-00890
`
`(not instituted); Samsung Electronics Co. v. Rembrandt Wireless
`
`Technologies, LP, IPR2014-00891 (not instituted); Samsung Electronics Co.
`
`1 The record includes a transcript of the oral hearing. Paper 43.
`2
`
`314
`
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`

`

`IPR2014-00893
`Patent 8,457,228 B2
`
`v. Rembrandt Wireless Technologie,s, LP, IPR2014-00892. (final decision
`
`being issued concurrently); and Samsung Electronics Co. v. Rembrandt
`
`Wireless Technologies, LP, IPR2014-00895 (final decision being issued
`
`concurrently).
`
`B. The '228 Patent
`
`The '228 Patent issued from an application filed August 4, 2011,
`
`which claimed priority under 35 U.S.C. § 120 through a chain ofintervening
`
`applications to an application filed December· 4, 1998, and which further
`
`cl~imed priority under 35 U.S.C. § 119 to a provisional application filed .
`
`December 5, 1997.
`
`The technical field of the patent relates to data communications and
`
`modulators/demodulators (modems), and in particular to a data
`
`communications system in which a plurality of modems use different types
`
`of modulation in a network. Ex. 1401, col. 1, ll. 21-25; col. 1, l. 58 - col. 2,
`
`l. 23.
`
`C. Illustrative Claim
`
`Of the challenged claims, only claim 22 is independent.
`
`22. A communication device configured to communicate
`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
`compnsmg:
`a transceiver in the role of the master according to the
`master/slave relationship that is configured to send at least a
`plurality of communications, wherein each communication
`from among said plurality of communications comprises at
`least a respective first portion and a respective payload portion,
`
`3
`
`315
`
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`

`

`IPR2014-00893
`Patent 8,457,228 B2
`
`wherein each communication from among said plurality of
`communications is addressed for an intended destination of the
`respective payload portion of that communication, and wherein
`for each communication from among said plurality of
`communications:
`. said respective first portion is modulated according to a
`first modulation method from among at least two types of
`modulation methods, wherein the at least two types of
`modulation methods comprise the first modulation method and
`a second modulation method, wherein the second modulation
`method is of a different type than the first modulation method,
`said respective first portion comprises an indication of
`which of the first modulation method and the second
`modulation method is used for modulating respective payload
`data in the respective payload portion, and
`.
`the payload data is modulated according to at least one of
`the first modulation method or the second modulation method
`in accordance with what is indicated by the respective first
`portion;
`the transceiver further configured to send at least a first
`communication of the plurality of communications such that
`payload data included in a payload portion of the first
`communication is modulated according to the second
`modulation method based on a first portion of the first
`communication indicating that the second modulation method
`will be used for modulating the payload data in the payload
`portion of the first communication, wherein the payload data is
`included in the first communication after the first portion of the
`first communication;
`the transceiver further configured to send at least a
`second communication of the plurality of communications such
`that payload data included in a payload portion of the second
`communication is modulated according to the first modulation
`method based on a first portion of the second communication
`indicating that the first modulation method will be used for
`modulating the payload data in the payload portion of the
`second communication.
`
`4
`
`316
`
`IPR2020-00036 Page 00511
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`

`

`IPR2014-00 893
`Patent 8,457,228 B2
`
`D. Prior Art
`us 5,706,428
`
`Boer
`
`Jan.6, 1998
`
`(Ex.1404)
`
`E. Asserted Ground of Unpatentability
`
`The Board instituted inter partes review on the following asserted
`
`ground of unpatentability under 35 U.S.C. § 103(a) (Dec. on Inst. 14):
`
`claims 22, 23, and 25 of the '228 patent on the ground of obviousness over
`
`Admitted Prior Art ("AP A") and Boer.
`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`In an inter partes review, the Board construes claim terms in an
`
`unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.l00(b); In
`
`re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275-79 (Fed. Cir. 2015).
`
`The claim language should be read in light of the specification as it would be
`
`interpreted by one of ordinary skill in the art. In re Am. A cad. of Sci. Tech.
`
`Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must apply the
`
`broadest reasonable meaning to the claim language, taking into account any
`
`definitions presented in the specification. Id. (citing In re Bass, 314 F.3d
`
`575, 577 (Fed. Cir. 2002)). The "ordinary and customary meaning" is that
`
`which the term would have to a person of ordinary skill in the art in
`
`question. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007).
`
`5
`
`317
`
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`

`

`IPR2014-00893
`Patent 8,457,228 B2
`
`1. Modulation Methods
`
`Illustrative claim 22 recites that 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.
`
`Petitioner submits that the ordinary meaning of"modulation" is
`
`"'[t]he process by which some characteristic of a carrier is varied in
`accordance with a modulating wave."' Pet. 14 (referring to Ex. 1423 ,r 91
`(Declaration of Dr. David Goodman); Ex. 1420, 3 (technical dictionary)).
`
`Patent Owner submits that "modulation method" is ·generally recognized in
`
`the pertinent art to mean "a technique for varying one or more characteristics
`
`of a carrier wave in a predetermined manner to convey information." PO
`
`Resp. 10. Patent Owner submits further, and we agree, that there appears to
`
`be no significant difference between these two proffered constructions of
`
`"modulation." Id. at 11-12.
`
`Later in its Patent Owner Response, however, Patent Owner advocates
`
`a narrower definition for "modulation method" for the purpose of addressing
`
`the prior art. In particular, Patent Owner submits that the only three
`
`characteristics of a carrier wave are frequency, phase, and amplitude and,
`
`thus, "modulation" is limited to varying one or more of the frequency, phase,
`
`and.amplitude of the carrier wave. Id. at 12-13. Patent Owner relies on the
`Declaration of Dr. Christopher R. Jones (Ex. 2814 ,r 40). Dr. Jones, in tum,
`relies on a definition in one of several technical dictionaries that have been
`provided by Patent Owner. Ex. 2814 ,r 39. In the particular technical
`
`6
`
`318
`
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`

`

`IPR2014-00893
`Patent 8,457,228 B2
`
`dictionary upon which Dr. Jones relies, 2 two of the six definitions of
`
`"modulation" use the terms amplitude, frequency, and phase. Ex. 2815, 3.
`
`The entry contains qroader definitions for "modulation," as, for example, the
`
`first definition, which states that modulation is the process of varying some
`
`characteristic of a carrier wave, whereby the carrier wave can be a direct
`
`current, an alternating current, or "a series of regularly repeating, uniform
`
`pulses called a pulse chain." Id
`
`Patent Owner does not point to anything in the '228 patent's
`
`disclosure that would limit the definition of "modulation" to varying the
`
`amplitude, frequency, or phase of the carrier wave. Our reviewing court has
`
`"cautioned against relying on dictionary definitions at the expense of a fair
`
`reading of the claims, which must be understood in light of the
`
`specification." Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1377
`
`(Fed. Cir. 2014). We, therefore, interpret "modulation" in accordance with
`
`its customary and ordinary meaning as the process by which some
`
`characteristic of a carrier is varied in accordance with a modulating wave.
`
`2. Types of Modulation Methods
`
`As we have noted, the claims recite ''types" of modulation methods.
`
`Petitioner and Patent Owner disagree with respect to the meaning of a "type"
`
`of modulation method. Patent Owner submits that the broadest reasonable
`
`interpretation of different "types" of modulation methods does not extend to
`
`modulation m~thods that are known merely to be incompatible with each
`
`other, but is limited to different "families" of modulation techniques, e.g.,
`
`the FSK (frequency shift keying) "family" of modulation methods and the
`
`2 RudolfF. Graf, MODERN DICTIONARY OF ELECTRONICS, 6th ed. (1997).
`7
`
`319
`
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`Ex. 2012
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`

`

`IPR2014-00893
`Patent 8,457,228 B2
`
`QAM ( quadrature amplitude modulation) "family" of modulation methods.
`
`PO Resp. 12-13. Petitioner, on the other hand, contends that the broadest
`
`reasonable interpretation of a different "type" of modulation method means
`
`an "incompatible" modulation method. Pet. 9.
`
`Patent Owner contends that a "special definition" was provided during
`
`prosecution of the '228 patent, which defined the term different "types" of
`
`modulation to mean different "families" of modulation. PO Resp. 12-13.
`
`At the outset, we agree with Petitioner (Pet. Reply 16) to the extent that
`
`prosecution history is entitled to little weight under the broadest reasonable
`.
`interpretation standard. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d
`
`'
`
`973, 978 (Fed. Cir. 2014) ("This court also observes that the PTO is under
`
`no obligation to accept a claim construction proffered as a prosecution
`
`history disclaimer, which generally only binds the patent owner."). In any
`
`event, Patent Owner relies on the following statements during prosecution
`
`for the asserted "special definition":
`
`Applicant thanks [the Examiner] 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 I 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.
`
`Ex. 1418, 20 (Reply Pursuant to 3 7 CFR § 1.111 in parent application
`
`12/543,910).
`
`As made plain iJ?- the above remarks, the claim amendments with
`
`respect to two "types" of modulation methods were not made in response to
`
`8
`
`320
`
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`

`

`IPR2014-00893
`Patent 8,457,228 B2
`
`a rejection, as the relevant claims had been allowed. Cf Tempo Lighting,
`
`742 F.3d at 978 ("[I]n this instance, the PTO itself requested Tivoli rewrite
`
`the 'non-photoluminescent' limitation in positive terms. Tivoli complied,
`
`and then supplied clarification about the meaning of the 'inert to light."').
`
`Nor do the above remarks explain what a "family" might be, or why FSK is
`
`considered to be member of one "fall).ily" and QAM a member of another
`
`"family." "Although an inventor is indeed free to define the specific terms
`
`used to describe his or her invention, this must be done with reasonable
`
`clarity, deliberateness, and precision." In re Paulsen, 30 F.3d 1475, 1480
`
`(Fed. Cir. 1994). Patent Owner's purported "definition" is anything but
`
`clear or precise. Further, the only modulation methods named in the text of
`
`the '228 patent are QAM, carrierless amplitude and phase (CAP)
`modulation, 3 and discrete multi tone (DMT) modulation, each of which the
`
`· patent calls "high performance modulation." See, e.g., Ex. 1401, col. 2, 11.
`
`3-7.
`
`Patent Owner provides, as an exhibit, Provisional Application No.
`
`60/067,562 (Ex. 2801), which the '228 patent purports to incorporate by
`
`reference (Ex. 1401, col. 1, 11. 8-17). That provisional distinguishes
`
`between "high performance modulation, such as QAM, CAP, or DMT,"
`
`which are optimized for high performance, and "low performance
`
`modulation, such as FSK, PAM or DSB," which may be implemented in
`
`3 According to Patent Owner, the patent contains a typographical error in
`that "[ c ]arrier" should be "[ c ]arrierless." PO Resp. 10 n.3.
`
`9
`
`321
`
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`

`IPR2014-00893
`Patent 8,457,228 B2
`
`much less expensive devices. Ex. 2801, 4. 4 An objective reading of the
`
`above-noted remarks during prosecution suggests that, contrary to Patent
`
`Owner's arguments, the "different families of modulation techniques" refer
`
`to high performance modulation (such as QAM) and low performance
`
`modulation (such as FSK). The prosecution history is, at best, ambiguous.
`"It is inappropriate to limit a broad definition of a claim term based on
`prosecution history that is itself ambiguous." Inverness Med. Switz. GmbH
`
`v. Warner Lambert Co., 309 F.3d 1373, 1382 (Fed. Cir. 2002).
`
`Moreover, Patent Owner's proffered construction (e.g., PO Resp. 13)
`
`of"types" of modulation methods being based on "one or more" of the
`
`carrier wave's frequency, phase, and amplitude "families" is, itself,
`
`ambiguous. We· reproduce the following exchange during oral argument in
`
`related case IPR2014-00518, which concerns U.S. Patent No. 8,023,580 B2
`
`(which issu~d from the parent application (12/543,910) of the '228 pat~nt):
`
`JUDGE LEE: How do you summarize your position?
`What is the definition of different family?
`
`MR. MOLLAAGHABABA: Okay. I believe these three
`characteristics, phase, amplitude and frequency of the carrier
`wave, define these three families.
`Now, if two methods are using the same characteristic to
`modulate the wave, then they are not different types. I mean,
`DBPSK and DQPSK, they both use the phase, that
`characteristic of the carrier wave to modulate and convey
`information.
`
`JUDGE LEE: Okay. So phase is one family, amplitude is
`one, and frequency is another. So those are broad categories.
`
`4 The first page of Exhibit 2801 is unnumbered, and page 4 is numbered as
`page 3. Cf 37 C.F.R. § 42.63(d)(2)(i) ("Each page must be uniquely
`numbered in sequence.").
`
`10
`
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`
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`

`

`IPR2014-00893
`Patent 8,457,228 B2
`
`MR. MOLLAAGHABABA: Yes.
`
`JUDGE LEE: So you can only have three types then.
`
`MR. MOLLAAGHABABA: But you can have situations
`where the modulation can belong to two categories.
`I mean, there are some intersections. QAM modulates
`both amplitude and phase.
`
`JUDGE LEE: So to which family would they belong?
`
`MR. MOLLAAGHABABA: Well, they are part of both
`families. I mean, they belong to two -- both families. There is
`some intersections where some modulation techniques use more
`than one characteristic. They use two characteristics.
`
`JUDGE LEE: Then are they of different types? If there
`is just only partial overlap, are they still different types, or is it
`the same type because they also share something in common?
`
`MR. MOLLAAGHABABA: Yes, our contention is that
`they are not of different types. They are different in the sense
`that they are different methods, like QAM and PSK, but they
`share a family so, therefore, they are·not different types. They
`share the family for both .
`
`. IPR2014-00518, Paper 46 at 88:8-89:17. Thus, according to counsel for
`
`Patent Owner, two modulation methods that are different in one
`
`characteristic but the same in another, e.g., one varying phase and amplitude
`
`and the other varying frequency and amplitude, would be regarded as
`
`belonging in the same family. Such an understanding of the classification or
`
`categorization of "family" in case of partial overlap was not a part of any
`
`representation during prosecution history. It reflects ambiguity in the
`
`construction proposed by Patent Owner.
`
`11
`
`323
`
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`

`IPR2014-00893
`Patent 8,457,228 B2
`
`The '228 patent describes Type A and Type B modulation methods
`
`( and tributary modems, or "tribs"), but does not associate directly any
`
`particular modulation method with a Type A or a Type B method ( or "trib").
`
`See, e.g., Ex. 1401, col. 5, I. 47 - col. 7, I. 33. The provisional application,
`
`however, associates lower-cost FSK modems with Type B "tribs." Ex.
`
`2801, 6; see also '228 patent-
`
`While it is possible to use high performance tribs running state
`of the art modulation methods such as QAM, CAP, or DMT to
`implement both the high and low data rate applications,
`significant cost savings can be achieved if lower cost tribs using
`low performance modulation methods are used to implement
`the lower data rate applications.
`
`Ex. 1401, col. 5, II. 41--46.
`
`Further, the '228 patent does not draw distinctions between "families"
`
`of modulation techniques directed to differences in modulation with respect
`
`to amplitude, phase, or frequency. Rather, the '228 patent draws distinctions
`
`between relatively expensive high performance techniques and relatively
`
`inexpensive low performance techniques. The '228 patent attempts to
`
`remedy the asserted deficiency in the prior art that all modems in a system
`
`must use a single modulation method, and thus must all be high-performance
`
`modems, with the high-performance, relatively expensive modems merely
`
`lowering the data rate for lower data-rate applications. As the '228 patent
`
`explains:
`
`All users in the system will generally have to be equipped with
`a high performance modem to ensure modulation compatibility.
`These state of the art modems are then run at their lowest data
`rates for those applications that require relatively low data
`throughput performance. The replacement of inexpensive
`modems with much more expensive state of the art devices due
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`to modulation compatibility imposes a substantial cost that is
`unnecessary in terms of the service and performance to be
`delivered to the end user.
`
`Ex. 1401, col. 2, 11. 10-18.
`
`Further, the '228 patent refers to an objective of using multiple
`
`modulation methods to facilitate communication among a plurality of
`
`modems in a network, which have heretofore been "incompatible." Id. at
`
`col. 2, 11. 19-23.
`
`In view of the foregoing, we do not interpret a "type" of modulation
`
`method as referring to some vague or undefined "family" of modulation
`
`methods. We interpret different ''types" of modulation methods as
`
`modulation methods that are incompatible with one another. Thus, contrary
`
`to Patent Owner's construction, two modulation methods that are based on
`
`varying the same one of the frequency, amplitude, or phase of the carrier
`
`wave may be different ''types" of modulation methods.
`
`B. Prior Art
`
`1. Admitted Prior Art
`
`Petitioner contends that the '228 patent's disclosure of polled
`
`multipoint communications using masters and slaves, depicted in Figures 1
`
`and 2 and described in column 3, line 64 through column 5, line 7,
`
`constitutes material that may be used as prior art against the patent under 35
`
`U.S.C. § 103(a). We agree. Figure 1 of the patent is labeled as "Prior Art."
`
`Pet. 6; Ex. 1401, Fig. 1. Further, the '228 patent's specification refers to
`
`"prior art" multipoint communication system 22 comprising master modem
`
`or transceiver 24, which communicates with a plurality of tributary modems
`
`13
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`· (''1;ribs") or transceivers 26. Pet. 5; Ex. 1401, col. 3, 1. 64 - col. 4, I. 1.
`
`Further, the '228 patent describes Figure 2 as illustrating the operation of the
`
`multipoint communication system of (prior art) Figure 1. Pet. 6; Ex. 1401,
`
`col. 3, 11. 33-34.
`
`2. Boer
`
`Boer describes a wireless LAN that includes first stations .that operate
`
`at 1 or 2 Mbps (Megabits per second) data rate and second stations that
`
`operate at 1, 2, 5, or 8 Mbps data rate. Ex. 1404, Abstract.
`
`Figure 1 of Boer is reproduced below.
`
`14
`
`I
`
`ACCESS
`POINT
`
`12-"7 -------
`
`MOBILE
`STATION
`
`18-1
`
`24-1
`,-------,~ y.
`11---
`i --,
`MOBILE
`'
`25·
`ST A TION - - -~
`22~1
`I
`' - - -~
`
`1
`
`24-2
`
`MOBILE
`STATION
`
`25-2
`
`187
`
`MOBILE
`STATION
`
`21-2
`
`FIG.1
`
`14
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`326
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`- Figure 1 is said to be a block diagram of a wireless LAN embodying
`
`Boer's invention. Ex. 1404, col. 1, 11. 53-54. LAN 10 includes access point
`
`12, serving as a base station. The network includes mobile stations 18-1 and
`
`18-2 that are capable of transmitting and receiving messages at a data rate of
`
`1 or 2 Mbps using DSSS ( direct sequence spread spectrum) coding. When
`
`operating at 1 Mbps, a station uses DBPSK ( differential binary phase shift
`
`keying) modulation. When operating at 2 Mbps, a station uses DQPSK .
`
`( differential quadrature phase shift keying) modulation. Id. at col. 2, 11. 6-
`
`27. Mobile stations 22-1 and 22-2 are capable of operating at the 1 and 2
`
`Mbps data rates using the same modulation and coding as stations 18-1 and
`
`18-2. In addition, stations 22-1 and 22-2 can operate at 5 and 8 Mbps data
`
`rates using PPM/DQPSK (pulse position modulation-differential quadrature
`
`phase shift keying) in combination with the DSSS coding. Id. at col. 2, 11.
`
`34-44.
`
`C. Claims 22, 23, and 25 -APA and Boer
`
`1. Asserted Ground
`
`Petitioner applies the teachings of AP A and Boer to demonstrate
`
`obviousness of the subject matter of illustrative claim 22, relying on APA
`
`for teaching of master/slave communication systems. Pet. 20- 30, 33-43
`
`( claim chart). Petitioner submits that a person having ordinary skill in the
`
`art would have been motivated to combine Boer with AP A, referring to the ·
`Declaration of Dr. David Goodman (Ex. 1423 ,r,r 124-127). Id. at 18-20.
`Dr. Goodman testifies that polled multiport master/slave
`
`communications systems were well known to those of ordinary skill in the
`
`art for simplicity and determinacy, referring to Exhibit 1422. Ex. 1423
`
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`il 127. Petitioner submits Exhibit 1422 ("Upender") as a November 1994
`publication that compares various strengths and weaknesses for
`
`communication protocols for embedded systems. Ex. 1422, 7. The
`
`document states that polling is one of the more popular protocols for
`
`embedded systems "because o_f its simplicity and determinacy." Id. In that
`
`protocol, a centrally assigned master periodically sends a polling message to
`
`the slave nodes, giving them explicit permission to transmit on the network.
`
`Id. The protocol "is ideal for a centralized data-acquisition system where
`
`peer-to-peer communication and global prioritization are not required." Id.
`
`- 2. Motivation to Combine
`
`Patent Owner in its Response argues that Upender does not reflect a
`
`proper motivation from the prior art for the proffered combination of Boer
`
`and APA. Patent Owner submits a Declaration from a co-author ofUpender
`
`to show that the article did not suggest the use of a master/slave
`
`communication system. Ex. 2808 (Declaration of Dr. Philip Koopman).
`
`We have considered Patent Owner's arguments and evidence but find
`
`that the clear teachings in Upender are not diminished or rebutted. Upender
`
`investigates tradeoffs in different communication protocols. The article
`
`concludes that CSMNCA ( carrier sense multiple access with collision
`
`avoidance), or RCSMA (reservation CSMA), is a good choice for some
`
`embedded systems. Ex. 1422, 10-11. The article also indicates that polling
`
`may not provide sufficient flexibility for "advanced systems," classifying
`
`polling as "simple," but noting that the discussion of the different protocol
`
`strengths and weaknesses "should allow you to select the best protocol to
`
`match your needs." Id. In fact, Dr. Koopman admits that there are some
`
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`systems for which master/slave is a better match for the design requirements.
`
`Pet. Reply 10; Ex. 1424, 40:2-20.
`
`That Upender may identify some advantages of CSMA/CA over a
`
`master/slave protocol is not a "teaching away" from the master/slave
`
`protocol. Upender teaches that master/slave protocols were widely used and
`
`a good choice for simple systems. See In re Gurley, 27 F.3d 551,553 (Fed.
`
`Cir. 1994) ("[A] person seeking to improve the· art of flexible circuit boards,
`
`on learning from [a reference] that epoxy was inferior to polyester-imide
`
`resins, might well be led to search beyond epoxy for improved products.
`
`However, [the reference] also teaches that epoxy is usable and has been used
`
`for Gurley's purpose.").
`
`Patent Owner's position appears to be that the prior art teaches that
`
`one and only one communication protocol should ever be used, which is
`
`directly contrary to the clear teachings ofUpender. In view ofUpender, one
`
`of ordinary skill in the art would have found it obvious to use a different
`
`prior art communication protocol ( e.g., a simpler protocol) when using
`
`multiple data rates as described by Boer.
`
`Further, we agree with Petitioner that Boer does not describe CSMA
`
`as central to an alleged goal of seeking a "reduction of overhead-in-time per
`
`transmission," but- relates that red~ction to the use of short ac