UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT 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 IPR2014-00518
`Patent 8,023,580
`___________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,023,580
`
`Apple Exhibit 1122
`Apple Inc. v. Rembrandt Wireless
`IPR2020-00034
`Page 00001
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`TABLE OF CONTENTS
`
`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW .......................................................................... 1
`
`A.
`
`B.
`
`Certification The `580 Patent May Be Contested By Petitioner ........... 1
`
`Fee For Inter Partes Review (37 C.F.R. §§ 42.15(a) and 42.103) ........ 1
`
`C. Mandatory Notices (37 C.F.R. §42.8) ................................................... 1
`
`1.
`
`2.
`
`3.
`
`4.
`
`Real Parties-In-Interest (§ 42.8(b)(1)) ........................................ 1
`
`Related Matters (§ 42.8(b)(2)) .................................................... 2
`
`Lead And Backup Counsel (§ 42.8(b)(3)) .................................. 2
`
`Service Information (§ 42.8(b)(4)) ............................................. 2
`
`D.
`
`Proof Of Service (§§ 42.6(e) and 42.105(a)) ........................................ 2
`
`II.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (§
`42.104(B)) ........................................................................................................ 2
`
`III. RELEVANT INFORMATION CONCERNING THE `580 PATENT .... 3
`
`A.
`
`Subject Matter Of The `580 Patent ....................................................... 3
`
`1.
`
`2.
`
`Technology Described In The `580 Patent ................................. 3
`
`Admissions Made In `580 Patent Regarding Prior Art ............... 5
`
`B.
`
`C.
`
`D.
`
`Effective Filing Date And Prosecution History Of The `580 Patent .... 7
`
`Person Of Ordinary Skill In The Art ..................................................... 9
`
`How The Challenged Claims Are To Be Construed ............................. 9
`
`1.
`
`2.
`
`“At Least Two Types Of Modulation Methods” (Claims 1 &
`58) ............................................................................................. 10
`
`“First Modulation Method” (Claims 1, 2, 13, 19, 21, 22, 49, 54,
`58, 59, 70, 76, 78, 79) And “Second Modulation Method”
`(Claims 1, 13, 20, 22, 49, 54, 58, 70, 77, 79) ........................... 13
`
`i
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`IPR2020-00034 Page 00002
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`3.
`
`4.
`
`“Master” (Claims 1, 2, 10, 11, 12, 49, 54, 58, 59, 66, 68, 69) .. 13
`
`“Slave” (Claims 1,2, 10, 11, 58, 59, 66, 68) ............................. 14
`
`IV. PRECISE REASONS FOR RELIEF REQUESTED ............................... 14
`
`A.
`
`Claims 1, 2, 4-5, 10, 13, 19-22, 49, 52-54, 57-59, 61, 62, 66, 70, and
`76-79 Are Rendered Obvious Under 35 U.S.C. § 103 By Admitted
`Prior Art (“APA”) In View Of Boer ................................................... 14
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Overview Of The Master/Slave Communications Prior Art .... 14
`
`Overview Of Boer ..................................................................... 15
`
`Motivation To Combine ............................................................ 16
`
`Claims 1, 2, 4-5, 10, 13, 19-22.................................................. 19
`
`APA In View Of Boer Renders Claims 49, 52-54 and 57
`Obvious ..................................................................................... 37
`
`APA In View Of Boer Renders Claims 58-59, 61, 62, 66, 70,
`and 76-79 Obvious .................................................................... 45
`
`V.
`
`CONCLUSION ............................................................................................ 60
`
`ii
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`IPR2020-00034 Page 00003
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Constant v. Advanced Micro–Devices, Inc., 848 F.2d 1560 (Fed.Cir.1988) ............. 7
`
`In re Youman, 679 F.3d 1335 (Fed. Cir. 2012) ........................................................ 10
`
`In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989) ........................................................ 10
`
`Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342 (Fed. Cir. 2007) .... 7,
`15
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .................................. 13, 14
`
`Statutes
`
`35 U.S.C. § 102(b) ..................................................................................................... 8
`
`35 U.S.C. § 102(e) ................................................................................................... 15
`
`35 U.S.C. § 103 ........................................................................................... ii, 3, 8, 14
`
`35 U.S.C. § 112 ........................................................................................................ 10
`
`35 U.S.C. § 315(b) ..................................................................................................... 1
`
`77 Fed. Reg. 48764 .................................................................................................. 10
`
`Other Authorities
`Rules
`
`37 C.F.R. § 42.103 ..................................................................................................... 1
`
`37 C.F.R. § 42.104(b) ................................................................................................ 2
`
`37 C.F.R. § 42.6(e) ..................................................................................................... 2
`
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 1
`
`37 C.F.R. § 42.8(b)(2) ................................................................................................ 2
`
`37 C.F.R. § 42.8(b)(3) ................................................................................................ 2
`
`
`
`
`
`
`iii
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`IPR2020-00034 Page 00004
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`37 C.F.R. § 42.8(b)(4) ................................................................................................ 2
`
`37 C.F.R. §42.105(a) .................................................................................................. 2
`
`37 C.F.R. §42.8 .......................................................................................................... 1
`
`37 CFR § 42.100(b) ................................................................................................... 9
`
`
`
`
`
`
`
`
`iv
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`IPR2020-00034 Page 00005
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`Attachment A: Proof of Service of the Petition
`
`Attachment B: List of Evidence and Exhibits Relied Upon in Petition
`
`
`
`
`
`
`
`
`
`
`v
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`IPR2020-00034 Page 00006
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A.
`Certification The `580 Patent May Be Contested By Petitioner
`Petitioner certifies that U.S. Patent No. 8,023,580 (“the `580 patent”) (Ex.
`
`1201) is available for inter partes review. Petitioner certifies that it is not barred or
`
`estopped from requesting inter partes review of the claims of the `580 patent on
`
`the grounds identified in this Petition. Neither Petitioner nor any party in privity
`
`with Petitioner has filed a civil action challenging the validity of any claim of the
`
``580 patent. The `580 patent has not been the subject of a prior inter partes review
`
`by Petitioner or a privy of Petitioner.
`
`Petitioner also certifies this petition for inter partes review is filed within
`
`one year of the date of service of a complaint alleging infringement of a patent.
`
`Such a complaint was filed against all petitioners on March 15, 2013, Civil Action
`
`No. 2:13-cv-00213 (E.D. Tex. 2013), in the Eastern District of Texas. Ex. 1202.
`
`The first petitioner to be served was served with the complaint on March 20, 2013,
`
`Ex. 1203. This petition thus complies with 35 U.S.C. § 315(b).
`B.
`Fee For Inter Partes Review (37 C.F.R. §§ 42.15(a) and 42.103)
`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
`
`to Deposit Account No. 04-1073. Should any further fees be required by the
`
`present Petition, the Patent Trial and Appeal Board (“PTAB”) is hereby authorized
`
`to charge the above referenced Deposit Account.
`C. Mandatory Notices (37 C.F.R. §42.8)
`1. Real Parties-In-Interest (§ 42.8(b)(1))
`The real parties-in-interest are Samsung Electronics Co. Ltd.; Samsung
`
`
`
`1
`
`IPR2020-00034 Page 00007
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`Electronics America, Inc.; Samsung Telecommunications America, LLC; and
`
`Samsung Austin Semiconductor, LLC. (Collectively, “Petitioner”).
`
`2. Related Matters (§ 42.8(b)(2))
`The `580 patent is a subject of an action styled as Rembrandt Wireless Tech.,
`
`LP v. Samsung Elect. Co. LTD., No. 2:13-cv-00213 (E.D. Tex. 2013) (“the
`
`Litigation”), served on Petitioner March 20, 2013, Ex. 1203. Petitioner has also
`
`filed Petitions IPR-2014-5014, 5015 & 5019 for the `580 patent.
`
`3. Lead And Backup Counsel (§ 42.8(b)(3))
`
`
`Lead Counsel
`Jeffrey A. Miller, Reg. No. 35, 287
`millerj@dicksteinshapiro.com
`(650) 690-9554
`
`Backup Counsel
`Daniel G. Cardy, Reg. No. 66,537
`cardyd@dicksteinshapiro.com
`(202) 420-3033
`
`4. Service Information (§ 42.8(b)(4))
`Service on Petitioner may be made by mail or hand delivery to Jeffrey A.
`
`Miller, Dickstein Shapiro LLP, 1841 Page Mill Road, Palo Alto, CA 94304, Tel:
`
`(650) 690-9500, Fax: (650) 690-9501. Please also direct all correspondence to
`
`lead counsel at millerj@dicksteinshapiro.com, with a courtesy copy sent to
`
`Samsung.Rembrandt@dicksteinshapiro.com.
`D.
`Proof Of Service (§§ 42.6(e) and 42.105(a))
`Proof of service of this petition is provided in Attachment A.
`
`II.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (§
`42.104(B))
`Petitioner requests inter partes review of claims 1-2, 4-5, 10, 13, 19-22, 49,
`
`52-54, 57-59, 61-62, 66, 70, and 76-79 because they are obvious under 35 U.S.C. §
`
`
`
`2
`
`IPR2020-00034 Page 00008
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`103 by Admitted Prior Art (“APA”) in view of U.S. Patent No. 5,706,428 (“Boer”)
`
`(Ex. 1204). Petitioner’s proposed construction of the claims, the evidence relied
`
`upon, and the precise reasons why the claims are unpatentable are provided in § IV.
`
`The evidence relied upon in support of this petition is listed in Attachment B.
`III. RELEVANT INFORMATION CONCERNING THE `580 PATENT
`A.
`Subject Matter Of The `580 Patent
`1. Technology Described In The `580 Patent
`The `580 patent is directed to the “fields of data communications and
`
`modulator/demodulators (modems), and, more particularly, to a data
`
`communications system in which a plurality of modulation methods are used to
`
`facilitate communication among a plurality of modem types.” Ex. 1201, `580
`
`patent, 1:19-23. The `580 patent identifies a problem with communications
`
`systems where “communication between modems is generally unsuccessful unless
`
`a common modulation method is used.” Id. at 1:45-47. The patent describes a
`
`“multipoint network architecture,” which the `580 patent asserts utilizes a “master”
`
`modem and at least two “tributary” (or “trib”) modems. The `580 patent notes that
`
`where “…one or more of the trib modems are not compatible with the modulation
`
`method used by the master, those tribs will be unable to receive communications
`
`from the master.” Id. at 1:54-61. Ex. 1220, ¶46 (Goodman Declaration.)
`
`Because of these issues, the `580 patent asserts that “…communication
`
`systems comprised of both high performance and low or moderate performance
`
`applications can be very cost inefficient to construct.” Id. at 1:66-2:1. The `580
`
`patent asserts that the solution used at the time to overcome incompatible
`
`
`
`3
`
`IPR2020-00034 Page 00009
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`modulation schemes was the use of high performance modems for all users, which
`
`resulted in higher costs. Id. at 2:8-16. Thus, the `580 patent asserts that “…what is
`
`sought, and what is not believed to be provided by the prior art, is a system and
`
`method of communication in which multiple modulation methods are used to
`
`facilitate communication among a plurality of modems in a network, which have
`
`heretofore been incompatible.” Id. at 2:17-20 (emphasis added). Ex. 1220, ¶47.
`
`The purported invention of the `580 patent is a system like that shown in
`
`Figure 3, in which a master transceiver 64 is capable of transmitting and receiving
`
`data having what the patent identifies as “type A” modulation and “type B”
`
`modulation. Id. at 5:23-33. Master transceiver 64 can communicate with tribs, e.g.,
`
`trib 66, each of which communicates with either type A or type B modulation
`
`(shown as “type X” in Figure 3), but not both. Id. at 5:34-46. Figure 4 shows an
`
`exemplary network in which master transceiver 64 can communicate with either
`
`type A or type B modulation. Trib 66a communicates with type A modulation,
`
`while trib 66b communicates with type B modulation. Ex. 1220, ¶48.
`
`In the example given in the specification, type A modulation is the primary
`
`modulation method, which, as seen in Figure 5, means that the master transceiver
`
`64 initially transmits a sequence 104 using type A modulation. Id. at 5:57-67. If
`
`master transceiver 64 wishes to communicate with trib 66b, it can only do so with
`
`type B modulation. To switch from type A modulation to type B modulation,
`
`master transceiver 64 transmits a training sequence 106 to type A trib 66a to notify
`
`it of an impending modulation scheme change. Id. at 6:3-6. Then, master
`
`transceiver 64 sends a new transmission in sequence 108, this time using type B
`
`
`
`4
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`modulation, containing a trib address as well as data intended for that addressed
`
`trib. Id. at 6:8-15. Thereafter, master transceiver 64 transmits a trailing sequence
`
`using type A modulation, which informs the trib 66a that the type B modulation
`
`transmission is complete. Ex. 1220, ¶49.
`
`Similar to the above, master transceiver 64 can communicate with a type A
`
`trib, e.g., trib 66a, by transmitting a training sequence with type A modulation that
`
`contains an address for a particular trib. The training sequence is followed by data,
`
`which is then received by the addressed trib. Master transceiver 64 then transmits
`
`a trailing sequence using type A modulation, which indicates the end of a
`
`communication session. Id. at 6:49-58. Ex. 1220, ¶50.
`
`2. Admissions Made In `580 Patent Regarding Prior Art
`As discussed above, the `580 patent describes a multipoint network
`
`architecture using a master modem and at least two tribs, with the specification
`
`making clear that “tribs” are the same thing as “slaves.” For example, in the
`
`“Description of the Illustrative Embodiments,” the `580 patent discusses an
`
`“exemplary” multipoint communication protocol, asserting that in such a protocol
`
`the “master … permits transmission from a trib only when that trib has been
`
`selected.” Ex. 1201, 4:4:9. In its “Summary,” the `580 patent describes a
`
`“master/slave” relationship as being one where “communication from a slave to a
`
`master occurs in response to a communication from the master to the slave.” Ex.
`
`1201, 2:24-29. Thus, the `580 patent teaches that “tribs” and “slaves” are both
`
`controlled by a master, which demonstrates that in the `580 patent, tribs and slaves
`
`are the same thing, and the terms are used interchangeably. Ex. 1220, ¶51.
`
`
`
`5
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`IPR2020-00034 Page 00011
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`Both the figures and the specification of the `580 patent admit that
`
`communications systems using master/slave relationships are prior art. In
`
`particular, Figure 1, which shows a master transceiver 24 in communication with
`
`three tributary transceivers, i.e., slaves, is labeled as “Prior Art.” In addition, the
`
`specification of `580 patent admits that multipoint communication systems
`
`utilizing a master and multiple slaves is prior art. Ex. 1201, 3:40-44 (“With
`
`reference to FIG. 1, a prior art multipoint communication system 22 is shown
`
`to comprise a master modem or transceiver 24, which communicates with a
`
`plurality of tributary modems (tribs) or transceivers 26-26 over communication
`
`medium 28.”) (emphasis added). Ex. 1220, ¶52.
`
`Patentee made further admissions during prosecution of one of the parent
`
`applications to the `580 patent. As will be discussed in more detail below, one of
`
`the parent applications to the `580 patent is Serial No. 09/205,205, which issued as
`
`U.S. Patent No. 6,614,838 (Ex. 1214). During prosecution of the `838 patent, an
`
`Office Action was mailed one June 28, 2001 where Patentee was required to
`
`designate Figure 2 as prior art. Ex. 1215, p. 2 (6/28/2001 Office Action) (“Figure
`
`2 should be designated by a legend such as - prior art - because only that which is
`
`old is illustrated.”). In a “First Amendment And Response” filed October 1, 2001,
`
`Patentee made the amendment, thus admitting that the subject matter shown in
`
`Figure 2 is prior art. Ex. 1216. The specification of the `580 patent describes the
`
`prior art shown in Figure 2 as follows:
`
`Referring now to FIG. 2, an exemplary multipoint communication
`session is illustrated through use of a ladder diagram. This system
`
`
`
`6
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`IPR2020-00034 Page 00012
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`uses polled multipoint communication protocol. That is, a master
`controls the initiation of its own transmission to the tribs and permits
`transmission from a trib only when that trib has been selected.
`
`Ex. 1201, 4:4-9 (emphasis added). Lest there be any doubt that that polled
`
`multiport communications using masters and slaves are admitted prior art, the
`
`specification says that the operation of the prior art system of Fig. 1 is illustrated in
`
`Fig. 2. Id. At 3:9-10 (“FIG. 2 is a ladder diagram illustrating the operation of the
`
`multipoint communication system of FIG. 1.”). Ex. 1220, ¶53.
`
`Patentee’s admissions in the `580 patent and the prosecution history of the
`
``205 application regarding the fact that master/slave communication systems are
`
`prior art are binding, and can be used when determining whether a claim is obvious.
`
`Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1362 (Fed. Cir.
`
`2007) (“Admissions in the specification regarding the prior art are binding on the
`
`patentee for purposes of a later inquiry into obviousness.”); Constant v. Advanced
`
`Micro–Devices, Inc., 848 F.2d 1560, 1570 (Fed.Cir.1988) (‘‘A statement in the
`
`patent that something is in the prior art is binding on the applicant and patentee for
`
`determinations of anticipation and obviousness.’’).
`B.
`Effective Filing Date And Prosecution History Of The `580 Patent
`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 issued
`
`as U.S. Patent No. 7,675,965. The `803 application was a continuation of U.S.
`
`Application No. 10/412,878, which issued as U.S. Patent No. 7,248,626. The `878
`
`application was a continuation-in-part of U.S. Application No. 09/205,205, which
`
`
`
`7
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`became U.S. Patent 6,614,838. The `580, `965, `626, and `838 patents claim the
`
`benefit of the filing date of U.S. Provisional App. No. 60/067,562, filed Dec. 5,
`
`1997. The effective filing date of the challenged claims is December 5, 1997.
`
`The `580 patent was filed on August 19, 2008 with 100 claims. Ex. 1207.
`
`On September 1, 2010, an Office Action was mailed in which a number of claims
`
`were objected to due to an antecedent basis issue but were otherwise deemed
`
`allowable, while other claims were rejected under 35 U.S.C. §§ 102(b) & 103(a).
`
`Ex. 1208. Application claim 1, which would issue as claim 1, was one such claim
`
`that was deemed allowable but for the antecedent basis issue. Id. at p. 2. On
`
`March 10, 2011, Patent Owner filed a response to the Office Action (“3/1/2011
`
`Reply”). Ex. 1209. In that response, Patent Owner amended many pending
`
`claims, including application claim 1 (issued claim 1), cancelled other claims and
`
`added forty-eight claims. Included within the added claims was independent claim
`
`123, which would issue as claim 58. Id. at p. 15. On March 10, 2011, Patent
`
`Owner refiled the claims in response to a Notice Of Non-Compliant Amendment.
`
`Ex. 1210. In its 3/1/2011 Reply, Patent Owner amended claim 1, even though it
`
`had been allowed, the stated reason being:
`
`“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
`
`
`
`8
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`QAM family of modulation methods. Support for the clarifying
`amendments can be found throughout the specification, for example
`[0024], [0025] and [0031] - [0036].”
`
`Ex. 1209, p. 20 (emphasis added). In the 3/1/2011 Reply, the only independent
`
`claims including the “types of modulation methods” limitation were claim 1 and
`
`newly added claim 123. All other independent claims recited a “first modulation
`
`method” and a “second modulation method” but did not include any limitation to
`
`“types of modulation methods.” No claims were amended to include any
`
`limitations relating to “families of modulation techniques.”
`
`On May 11, 2011, Patent Owner filed a paper making further amendments to
`
`pending claims 1 and 95. Ex. 1211. The application was allowed on July 22,
`
`2011, although no Statement of Reasons for Allowance was provided. Ex. 1212.
`
`On July 26, 2011, Patent Owner filed an Amendment After Allowance further
`
`amending claims that, after entry, issued as claims 40, 49, and 54. Ex. 1213.
`C.
`Person Of Ordinary Skill In The Art
`A person of ordinary skill in the art in the field of the `580 patent would
`
`have had a Master’s Degree in Electrical Engineering that included coursework in
`
`communications systems and networking, and at least five years of experience
`
`designing network communication systems. Ex. 1220, ¶56.
`D. How The Challenged Claims Are To Be Construed
`In this proceeding, claims must be given their broadest reasonable
`
`construction in light of the specification. 37 CFR § 42.100(b). In determining the
`
`broadest reasonable construction of a claim term, the Panel should consider subject
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`matter that Patent Owner contends infringes the claims or meanings for claim
`terms that Patent Owner has proposed in past or in current litigation.1 See e.g., Ex.
`1205. Also, if Patent Owner contends terms in the claims should be read to have a
`
`special meaning, those contentions should be disregarded unless Patent Owner also
`
`amends the claims in a manner compliant with 35 U.S.C. § 112 to make the claims
`
`expressly correspond to the contended meaning. See 77 Fed. Reg. 48764 at II.B.6
`
`(August 14, 2012); cf. In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012).
`
`The standard of claim construction used in this proceeding differs from the
`
`standard used to interpret claims in a judicial proceeding. Consequently,
`
`constructions the Panel adopts in this proceeding and positions Petitioner takes in
`
`respect of those constructions are not relevant to or binding upon Petitioner in
`
`current or subsequent litigation. See In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir.
`
`1989). In particular, Petitioner reserves the right to submit constructions in this
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`proceeding that differ from those it proposes or adopts in the Litigation.
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`Petitioner addresses the meaning of certain claim terms in the course of
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`comparing the claims to the prior art. In addition to those, Petitioner submits the
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`following terms for construction.
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`1. “At Least Two Types Of Modulation Methods” (Claims 1 & 58)
`The broadest reasonable interpretation of “at least two types of modulation
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`methods” in light of the specification and the grammar of the claims themselves is
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`“at least two incompatible processes of varying characteristic(s) of a carrier
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`1 In the Litigation, Patent Owner has served infringement contentions. Ex. 1205.
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`wave.” The specification of the `580 patent uses the word “compatible” or a root
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`thereof on ten different occurrences and identifies the problem of incompatible
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`modems as the problem the inventors were seeking to solve. Ex. 1201, 2:17-20.
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`Moreover, the `580 patent states that an advantage of the alleged “present
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`invention” is “that a master transceiver can communicate seamlessly with tributary
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`transceivers or modems using incompatible modulation methods.” Ex. 1201, 2:55-
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`57 (emphasis added). Thus, the `580 patent describes its alleged invention in the
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`context of “incompatible modulation methods.” This means the broadest
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`reasonable interpretation requires only that each of the “at least two types of
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`modulation methods” be incompatible with one another. As for the “modulation
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`methods” portion of the claim phrase, the ordinary meaning of “modulation” is
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`“[t]he process by which some characteristic of a carrier is varied in accordance
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`with a modulating wave.” See Ex. 1206, “The IEEE Standard Dictionary of
`Electrical and Electronics Terms,” 6th Ed., 1996, p. 662. Petitioner submits that
`this definition of “modulation” is correct. Ex. 1220, ¶57-62.
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`Petitioner expects Patent Owner to seek a construction explicitly including
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`the “families of modulation techniques” concept discussed in the 3/1/2011 Reply
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`(Ex. 1209). In the Litigation, this is what Patent Owner is doing. See Ex. 1217, p.
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`11. Such a construction, however, would be far narrower than the broadest
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`reasonable construction, and is not appropriate because Patent Owner’s statement
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`regarding “families of modulation techniques” (i) did not result in the claim being
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`amended to include a “families of modulation techniques” limitation, (ii) did not
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`lead to allowance since claim 1 had previously been allowed, and (iii) is not
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`supported by the specification.
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`Petitioner expects Patent Owner will rely its 3/1/2011 Reply, and argue that
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`different PSK modulation methods are somehow the same “type” of modulation.
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`This is the construction Patent Owner is seeking in the litigation. See Ex. 1217, p.
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`11. The broadest reasonable construction of “…types of modulation methods”
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`precludes such a construction, since it would read in limitations having no basis in
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`the ordinary meaning of the claim term. For example, different PSK modulation
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`methods are considered to be different “types” of modulation and certainly are
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`known to be incompatible with each other. Ex. 1220, ¶106, 111, 119, 122.
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`Moreover, while the arguments made in the 3/1/2011 Reply refer to
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`“different families of modulation techniques,” the claim was not amended to
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`include such language. Ex. 1209. Nor was such an argument the reason why
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`claim 1 was allowed, since claim 1 had been allowed before the amendment was
`made. Ex. 1208.2 Finally, Patent Owner’s citations to the specification made in
`the 3/1/2011 Reply to support this argument regarding “different families of
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`modulation techniques” say nothing about different “families” of modulation – the
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`term is never used. Likewise, none of these citations mention FSK modulation, the
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`example given in the 3/1/2011 Reply, further undermining any “families of
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`modulation techniques” argument Patent Owner might make.
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`In contrast, the specification repeatedly references to compatibility of
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`modulation methods (and the lack thereof), demonstrating that construing “types”
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`2 Claim 58 (application claim 123) was added in the 3/1/2011 Reply.
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`in the context of compatibility is the correct, and broadest reasonable construction.
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`2. “First Modulation Method” (Claims 1, 2, 13, 19, 21, 22, 49, 54,
`58, 59, 70, 76, 78, 79) And “Second Modulation Method” (Claims
`1, 13, 20, 22, 49, 54, 58, 70, 77, 79)
`The broadest reasonable interpretation for the claim term “first modulation
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`method” in light of the specification and the claim language is “a process of
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`varying characteristic(s) of a carrier wave that is different from a second
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`modulation method.” Similarly, the broadest reasonable interpretation for the term
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`“second modulation method” is “a process of varying characteristic(s) of a carrier
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`wave that is different from a first modulation method.” The broadest reasonable
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`interpretation is easy to determine, since the words “first” and “second” indicate
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`the modulation methods are different. The remaining portion of the proper
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`construction simply recites the plain and ordinary meaning of “modulation” from
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`the IEEE dictionary, discussed above. Ex. 1220, ¶65-71.
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`3. “Master” (Claims 1, 2, 10, 11, 12, 49, 54, 58, 59, 66, 68, 69)
`The specification of the `580 patent does not supply a special definition for
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`“master,” using the term with the meaning commonly understood by persons
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`having ordinary skill in the art. Indeed, as discussed, the `580 patent admits that
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`master transceivers are prior art, confirming that the term was well known.
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`Because of this, “master” should be given its “ordinary and customary meaning.”
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). According to the
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`“Dictionary of Communications Technology,” Ex. 1219, a “master station” in a
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`multipoint system “controls/polls the nodes,” while in a point to point system, the
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`master station “controls the slave station.” Id. at 259. Thus, Petitioner submits
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`that the broadest reasonable construction for “master” “master” is “a device which
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`controls or polls other transceivers.” Ex. 1220, ¶72-75.
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`4.
` “Slave” (Claims 1,2, 10, 11, 58, 59, 66, 68)
`Just as with “master,” the `580 patent does not supply a special definition for
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`“slave.” Moreover, the `580 patent uses the term “tributary or “trib”
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`interchangeably with “slave,” and admits that slaves are in the prior art. See
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`Section III.A.2. Thus, just like “master,” “slave” should also be given its ordinary
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`meaning. Phillips, 415 F.3d at 1312. According to the Dictionary of
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`Communications Technology, Ex. 1219, a “slave” is a “called unit under the
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`control of commands and signals from a master (calling) unit,” while a “slave
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`station” is, “[i]n point-to-point circuits, the unit controlled by the master station.”
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`Id. at 404. Thus, the broadest reasonable construction is “a device controlled by
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`commands from a master.” Ex. 1220, ¶76-79.
`IV. PRECISE REASONS FOR RELIEF REQUESTED
`A.
`Claims 1, 2, 4-5, 10, 13, 19-22, 49, 52-54, 57-59, 61, 62, 66, 70, and
`76-79 Are Rendered Obvious Under 35 U.S.C. § 103 By Admitted
`Prior Art (“APA”) In View Of Boer
`1. Overview Of The Master/Slave Communications Prior Art
`As discussed in Section III.A.2, the ‘580 patent describes multipoint
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`communication system 22 having a master transceiver 24 and a plurality of slave
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`transceivers 26, which it illustrates in Figure 1 and admits is prior art. In particular,
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`the `580 patent states “FIG. 1 is a block diagram of a prior art multipoint
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`communication system including a master transceiver and a plur