IPR2020-00034
`U.S. Patent No. 8,023,580
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00034
`
`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 1103
`Apple Inc. v. Rembrandt Wireless
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
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`BACKGROUND AND QUALIFICATIONS ................................................. 2
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`III.
`
`PRIORITY DATE AND ONE OF ORDINARY SKILL ............................... 7
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`IV. MATERIALS RELIED UPON ....................................................................... 8
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`V.
`
`BACKGROUND ON THE STATE OF THE ART ........................................ 8
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`VI. ANALYSIS OF THE ’580 PATENT ............................................................11
`
`A.
`
`B.
`
`C.
`
`Overview of the ’580 Patent ................................................................11
`
`Overview of the ’580 Patent Prosecution History ..............................17
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`Claim Construction of the ’580 Patent Claims ...................................21
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`VII. THE CHALLENGED CLAIMS ARE INVALID .........................................23
`
`A.
`
`B.
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`Legal Standards ...................................................................................23
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`Claims 2 and 59 Are Obvious Under § 103 over Yamano in
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`view of Davis (Ground 1) and Yamano in view of Davis and
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`Christian (Ground 2) ...........................................................................28
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`1.
`
`2.
`
`3.
`
`4.
`
`5.
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`6.
`
`Overview of U.S. Patent No. 6,075,814 (“Yamano”)
`(Ex. 1104) ..................................................................................29
`
`Overview of U.S. Patent No. 5,583,922 (“Davis”)
`(Ex. 1105) ..................................................................................39
`
`Overview of U.S. Patent No. 4,549,293 (“Christian”)
`(Ex. 1106) ..................................................................................45
`
`Motivation to Combine Yamano and Davis .............................49
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`Motivation to Combine Yamano and Davis and Christian .......59
`
`Invalidity of Claim 2 Over Yamano in view of Davis
`(Ground 1) and Yamano in view of Davis and Christian
`(Ground 2) .................................................................................63
`
`a.
`
`b.
`
`Element [1.pre] ...............................................................63
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`Element [1.A] .................................................................74
`
`i
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`IPR2020-00034
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`c.
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`d.
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`e.
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`f.
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`g.
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`h.
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`i.
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`Element [1.B] ..................................................................74
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`Element [1.C] ..................................................................80
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`Element [1.D] .................................................................81
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`Element [1.E] ..................................................................84
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`Element [1.F] ..................................................................86
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`Element [1.G] .................................................................95
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`Claim 2 ............................................................................96
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`7.
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`Invalidity of Claim 59 Over Yamano in view of Davis
`(Ground 1) and Yamano in view of Davis and Christian
`(Ground 2) ...............................................................................109
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
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`Element [58.pre] ...........................................................109
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`Element [58.A] .............................................................110
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`Element [58.B] ..............................................................110
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`Element [58.C] ..............................................................110
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`Element [58.D] .............................................................111
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`Element [58.E] ..............................................................111
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`Claim 59 ........................................................................112
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`C.
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`No Secondary Considerations of Nonobviousness ...........................112
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`VIII. CONCLUSION ............................................................................................114
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`APPENDIX A (CURRICULUM VITAE) ................................................................ i
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`APPENDIX B (LIST OF MATERIALS CONSIDERED) ...................................... ii
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`ii
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`
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`I, Mark R. Lanning, hereby declare under penalty of perjury:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained on behalf of Apple to provide assistance regarding
`
`U.S. Patent No. 8,023,580 (“the ’580 patent,” Ex. 1101) in connection with Apple’s
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`Petition for Inter Partes Review.1 Specifically, I have been asked to consider the
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`validity of Claims 2 and 59 of the ’580 patent (the “Challenged Claims”). I have
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`personal knowledge of the facts and opinions set forth in this declaration, and, if
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`called upon to do so, I would testify competently thereto.
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`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
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`the amount of time that I devote to activity related to this case and is in no way
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`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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`IPR2020-00034
`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.
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`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
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`on my continuing analysis of the materials already provided.
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`5.
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`A table of contents is included above and a list of exhibits referenced
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`herein is attached at Appendix B.
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`II. BACKGROUND AND QUALIFICATIONS
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`6.
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`All of my opinions stated in this declaration are based on my own
`
`personal knowledge and professional judgment. In forming my opinions, I have
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`relied on my knowledge and experience in designing, developing, researching, and
`
`teaching the technology referenced in this declaration.
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`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
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`development for one or more particular technical areas. Telecom Architects, Inc.
`
`
`
`2
`
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`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
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`Networking Solutions) was established in 1991 with an emphasis on applications
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`design and network architecture engineering for telephone-based switching and
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`Advanced Intelligent Networking systems. Reticle Consulting was created in 2009
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`to provide specialized consulting services for forensic software analysis and
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`software source code comparison for misappropriation cases.
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`8.
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`I have over 40 years’ experience in a wide variety of communication
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`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,
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`Advanced services that use Intelligent Networking (“AIN”) network elements, and
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`various signaling protocols (e.g., Signaling System 7 (“SS7”) and Integrated Digital
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`Services Network (“ISDN”)).
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`9.
`
`For at least 30 years, I have worked directly with hundreds of modems
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`of different types, including designing, developing, configuring and/or installing
`
`modems for communication systems supporting airline reservations, email, Internet
`
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`2 I.N. Solutions, Inc. is no longer active.
`
`
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`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
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`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
`
`systems include at least FSK, BPSK, QPSK, and QAM.
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`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
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`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,
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`develop and manufacture specialized modem chips for use in our system.
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`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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`
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`4
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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”
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`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.
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`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
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`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
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`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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`
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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.
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`15. Since 1991, I have been responsible for the design and implementation
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`of multiple packet-switched networks and their required interfaces to different
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`circuit-switched networks. Examples of these networks are British Telecom, Nextel,
`
`and Sprint.
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`16.
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`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.
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`17.
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`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
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`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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`6
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`III. PRIORITY DATE AND ONE OF ORDINARY SKILL
`
`18.
`
`In rendering the opinions set forth in this declaration, I was asked to
`
`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
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`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
`
`presumed to have knowledge of all relevant prior art, and would thus have been
`
`familiar with each of the references cited herein, as well as the background
`
`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
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`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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`could substitute for professional experience, or significant experience in the field
`
`
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`could substitute for formal education.
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`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
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`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,
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`and my analysis and conclusions herein are from the perspective of a person of
`
`ordinary skill in the art as of December 5th, 1997.
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`IV. MATERIALS RELIED UPON
`
`21.
`
`In reaching the conclusions described in this declaration, I have relied
`
`on the documents and materials cited herein as well as those identified in Appendix
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`B attached to this declaration. Each of these materials is a type of document that
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`experts in my field would have reasonably relied upon when forming their opinions.
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`22. My opinions are also based upon my education, training, research,
`
`knowledge, and personal and professional experience.
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`V. BACKGROUND ON THE STATE OF THE ART
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`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
`
`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
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`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
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`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.
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`25.
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`In particular, it was well-known in the art to send transmissions
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`modulated using two different types of modulation methods. See, e.g., Ex. 1105
`
`(Davis), 21:49-54, 20:19-21, 17:10-15 (describing sending transmissions using
`
`“V.21 300 bps FSK” and “V.29 9600 bps QAM”). It was also well-known in the art
`
`for information in a packet preamble to indicate which of the first or second
`
`modulation methods is used for the main body of the packet. See, e.g., Ex. 1104
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`(Yamano), 5:53-55, 19:57-20:7 (disclosing that a preamble includes information
`
`(e.g., “line code”) identifying the modem protocol being used); Ex. 1105 (Davis),
`
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`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 modu-
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`lates amplitude.
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`20:38-55, Fig. 11, (teaching that an “address” and “control” byte indicate “V.21 300
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`bps FSK” and that two “mode bytes” indicate “V.29 9600 bps QAM”).
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`26.
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`In addition, it was well known in the art that information in the
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`preamble of a second packet indicates that the transmission has reverted to the first
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`modulation method from the second modulation method. See, e.g., Ex. 1104
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`(Yamano), 5:32-58, 19:57-20:7 (disclosing sending “packets” where the “main
`
`bodies can be transmitted in accordance with different modem protocols” and “[t]his
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`variation enables devices having different operating capabilities (e.g., personal
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`computers and smart appliances) to be operably coupled to the same telephone line
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`in a multi-drop configuration.”); Ex. 1105 (Davis), 26:10-24, 26:50-64 (teaching that
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`transmissions fall back from e.g., “V.29 9600 bps QAM” to e.g., “V.21 300 bps
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`FSK”).
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`27. Finally, systems having a master/slave
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`relationship between
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`communication devices were well-known in the art. See, e.g., Ex. 1106 (Christian),
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`1:20-27 (describing that Time Division Multiple Access (“TDMA”) systems in a
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`master/slave configuration were “generally known”), 1:61-2:3, 3:14-25; Ex. 1121
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`(“Upender”), pp. 50-52 (describing a TDMA master communicating with a TDMA
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`slave). I understand that Patent Owner already acknowledged and the PTAB already
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`concluded that master/slave communications systems were well-known in the art.
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`Ex. 1101 (’580 patent), 3:40-4:50, Figs. 1-2; Ex. 1115 (2014-00518 Final Written
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`Decision), 13-18; Ex. 1121 (Upender); Ex. 1124 (Goodman Declaration) ¶¶102-104.
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`VI. ANALYSIS OF THE ’580 PATENT
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`A. Overview of the ’580 Patent
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`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
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`data using different modulation methods. Ex. 1101 (’580 patent), 5:23-33. The
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`patent identifies the modulation methods as “type A” modulation and “type B”
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`modulation. Ex. 1101 (’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. 1101 (’580 pa-
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`tent), 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. 1101 (’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
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`transmitting messages in “either a type A or a type B modulation method.” Ex. 1101
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`(’580 patent), 5:42-43, 2:28-31, Figs. 3-8. To switch from type A modulation to
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`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. 1101
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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. 1101 (’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
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`transmission is complete.” Ex. 1101 (’580 patent), 6:16-19.
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`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
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`the claimed priority date.
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`32.
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`I have considered the Challenged Claims (claims 2 and 59) of the ’580
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`patent, which depend from claims 1 and 58, respectively. The Challenged Claims
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`(and the independent claims from which they depend) read as follows:
`
`[1.pre] A communication device capable of communicating according
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`to a master/slave relationship in which a slave communication from a
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`slave to a master occurs in response to a master communication from
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`
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`the master to the slave, the device comprising:
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`[1.A] a transceiver, in the role of the master according to the
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`master/slave relationship,
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`[1.B] for sending at least transmissions modulated using at least two
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`types of modulation methods, wherein the at least two types of
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`modulation methods comprise a first modulation method and a second
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`modulation method, wherein the second modulation method is of a
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`different type than the first modulation method,
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`[1.C] wherein each transmission comprises a group of transmission
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`sequences, wherein each group of transmission sequences is structured
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`with at least a first portion and a payload portion
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`[1.D] wherein first information in the first portion indicates at least
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`which of the first modulation method and the second modulation
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`method is used for modulating second information in the payload
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`portion,
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`[1.E] wherein at least one group of transmission sequences is addressed
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`for an intended destination of the payload portion, and
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`[1.F] wherein for the at least one group of transmission sequences: the
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`first information for said at least one group of transmission sequences
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`comprises a first sequence, in the first portion and modulated according
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`to the first modulation method, wherein the first sequence indicates an
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`impending change from the first modulation method to the second
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`modulation method, and
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`[1.G] the second information for said at least one group of transmission
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`sequences comprises a second sequence that is modulated according to
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`the second modulation method, wherein the second sequence is
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`transmitted after the first sequence.
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`[2] The device of claim 1, wherein the transceiver is configured to
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`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
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`that communication from the master to the slave has reverted to the first
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`modulation method.
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`[58.pre] A communication device capable of communicating according
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`to a master/slave relationship in which a slave message from a slave to
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`a master occurs in response to a master message from the master to the
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`slave, the device comprising:
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`[58.A] a transceiver, in the role of the master according to the
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`master/slave relationship,
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`[58.B] capable of transmitting using at least two types of modulation
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`methods, wherein the at least two types of modulation methods
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`comprise a first modulation method and a second modulation method,
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`wherein the second modulation method is of a different type than the
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`first modulation method, and
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`[58.C] wherein the transceiver is configured to transmit messages with:
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`a first sequence, in the first modulation method, that indicates at least
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`which of the first modulation method and the second modulation
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`method is used for modulating a second sequence, wherein, in at least
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`one message, the first sequence indicates an impending change from
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`the first modulation method to the second modulation method,
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`[58.D] and wherein the at least one message is addressed for an
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`intended destination of the second sequence, and
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`[58.E] the second sequence, modulated in accordance with the
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`modulation method indicated by the first sequence and, in the at least
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`one message, modulated using the second modulation method, wherein
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`the second sequence is transmitted after the first sequence.
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`[59] The device of claim 58, wherein the transceiver is configured to
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`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
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`that communication from the master to the slave has reverted to the first
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`modulation method.
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`B. Overview of the ’580 Patent Prosecution History
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`33. The ’580 patent issued from U.S. Application No. 12/543,910.
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`The ’910 Application was a continuation of U.S. Application No. 11/774,803, which
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`was a continuation of U.S. Application No. 10/412,878, which was a continuation-
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`in-part of U.S. Application No. 09/205,205, and claims the benefit of the filing date
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`of U.S. Provisional App. No. 60/067,562, filed Dec. 5, 1997.
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`34. U.S. Application 12/543,910, which matured into the ’580 patent, was
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`filed on August 19, 2009. Ex. 1102 (’580 File History), 1-46, 306. The Examiner
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`issued an Office Action on September 1, 2010, objecting to a number of claims for
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`antecedent basis that were otherwise deemed allowable, and rejecting other claims
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`under §§102(b) and 103(a). Ex. 1102 (’580 File History), 70-78. Application claim
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`1 (which would issue as claim 1) was one such claim deemed allowable but for the
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`antecedent basis issue. Ex. 1102 (’580 File History), 70-78. In a March 1, 2011,
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`Response, Patent Owner amended the pending claims, including application claims
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`1 and 2 (which would issue as claims 1 and 2), cancelled other claims, and added
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`forty-eight new claims. Ex. 1102 (’580 File History), 127-38. These new claims
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`included claims 123 and 124, which would issue as claims 58 and 59, respectively.
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`Ex. 1102 (’580 File History), 135-36. Patent Owner offered the following
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`explanation for amending claim 1 to introduce the term “type,” stating:
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`Applicant thanks Examiner Ha for the indication that claims 1-18, and
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`37-57 are allowed (office action, p.7). Applicant has further amended
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`claims 1-2, 9-15, 18, 37-38, and 45-46 with additional recitations to
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`more precisely claim the subject-matter. For example, the language of
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`independent claim 1 has been clarified to refer to two types of
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`modulation methods, i.e., different families of modulation techniques,
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`such as the FSK family of modulation methods and the QAM family
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`of modulation methods. [emphasis added]
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`Ex. 1102 (’580 File History), 140. I understand that Patent Owner relied on this
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`statement during the Samsung litigation 4 to assert that “different types” of
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`4 Rembrandt Wireless Technologies, LP v. Samsung Electronics Co. Ltd. et al., 2:13-
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`cv-00213 (E.D. Tex.); Appeal No. 2016-1729 (Fed. Cir.).
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`modulation methods meant “different families of modulation techniques.” The
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`district court construed “modulation method [] of a different type”/“different types
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`of modulation methods” to mean “different families of modulation techniques, such
`
`as the FSK family of modulation methods and the QAM family of modulation
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`methods,” based on this prosecution history (Ex. 1111 (Claim Construction Order),
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`22-29), and the Federal Circuit affirmed the district court’s construction (Ex. 1112
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`(Fed. Circuit Decision), 1375-77).
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`35. During the Samsung litigation, Samsung filed an IPR petition on
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`the ’580 patent based on U.S. Patent 5,706,428 (“Boer”) in view of Applicant’s
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`admitted prior art of a master/slave communication system, as reflected in the
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`specification of the ’580 patent. Ex. 1122 (IPR2014-00518 IPR Petition). The
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`PTAB instituted this IPR but declined to institute review of claims 2 and 59. Ex.
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`1123 (IPR2014-00518 Institution Decision), 14-15. In the Final Written Decision,
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`the PTAB determined the reviewed claims (including independent claims 1 and 58
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`from which the Challenged Claims depend) were unpatentable over Boer in view of
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`the admitted prior art. Ex. 1115 (IPR2014-00518 Final Written Decision), 13-21.
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`The PTAB further determined that “the ’580’s patent’s [disclosure of] multipoint
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`communication systems (or master/slave systems), depicted in Figures 1 and 2 and
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`described in column 3, line 40 through column 4, line 50, contains material that may
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`be used as prior art against the patent under 35 U.S.C. §103(a).” Ex. 1115 (IPR2014-
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`00518 Final Written Decision), 13-21. I understand that Patent Owner did not appeal
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`the PTAB’s decision.
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`36. Samsung later petitioned for ex parte reexamination of claims 2 and 59
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`of the ’580 patent and the Patent Office ordered reexamination, finding substantial
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`new questions of patentability as to both claims in view of the asserted combinations.
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`The Examiner repeatedly rejected the claims in view of Snell’s disclosure of two
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`different types of modulation methods under the PTAB’s prior claim construction
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`for “different types” of modulation methods as referring to “modulation methods
`
`that are incompatible with one another.” Ex. 1110 (’580 Reexam), 436-440, 829-
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`838, 1067-69. The Examiner also found that “[a] polled protocol is a master/slave
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`protocol, as confirmed by the ’580 patent ((’580 patent [Ex. 1001])], at col. 4, lines
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`6-9),” and that “it is determined by PTAB that master-slave relationship is
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`unpatentable subject matter.” Ex. 1110 (’580 Reexam), 1067.
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`37.
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`In the reexamination, Samsung identified Yamano only in connection
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`with the limitation regarding the destination address in a data packet. E.g., Ex. 1110,
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`139-140 (9/12/2016 Request for Ex Parte Reexamination in ’580 Reexam).
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`Samsung did not raise, and the Examiner did not rely upon, Yamano’s disclosure of
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`different modulation formats during reexamination. In addition, Yamano was “not
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`applied to the ‘third sequence’ limitation”