IPR2020-00034
`U.S. Patent No. 8,023,580
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00034
`
`U.S. Patent No. 8,023,580
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`REDACTED VERSION
`
`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`TABLE OF CONTENTS
`LIST OF EXHIBITS .............................................................................................. iii 
`I. 
`INTRODUCTION ......................................................................................... 1 
`II.  MANDATORY NOTICES (§ 42.8) .............................................................. 3 
`A. 
`Real Party-In-Interest ............................................................................ 3 
`B. 
`Related Matters ...................................................................................... 3 
`C. 
`Lead and Back-Up Counsel and Service Information .......................... 5 
`III.  PAYMENT OF FEES ................................................................................... 5 
`IV.  REQUIREMENTS FOR INTER PARTES REVIEW ................................ 5 
`A.  Grounds for Standing ............................................................................ 5 
`B. 
`Identification of Challenge .................................................................... 6 
`1. 
`The Specific Art on Which the Challenge is Based ................... 6 
`2. 
`Statutory Grounds on Which the Challenge is Based ................. 8 
`3. 
`How the Construed Claims are Unpatentable under the
`Statutory Grounds Identified in §42.104(b)(2) and
`Supporting Evidence Relied upon to Support the
`Challenge .................................................................................... 9 
`FACTUAL BACKGROUND ........................................................................ 9 
`A. 
`The ’580 Patent ..................................................................................... 9 
`B. 
`Prosecution History ............................................................................. 12 
`VI.  LEVEL OF ORDINARY SKILL ............................................................... 14 
`VII.  CLAIM CONSTRUCTION ........................................................................ 15 
`VIII.  GROUNDS OF UNPATENTABILITY ..................................................... 16 
`A. 
`Claims 2 and 59 are rendered obvious under § 103(a) over
`Yamano in view of Davis (Ground 1) and Yamano in view of
`Davis and Christian (Ground 2) .......................................................... 17 
`1. 
`Overview of Yamano ................................................................ 17 
`
`V. 
`
`i
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`

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`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`2. 
`Overview of Davis .................................................................... 25 
`Overview of Christian ............................................................... 28 
`3. 
`4.  Motivation to Combine Yamano and Davis ............................. 31 
`5.  Motivation to Combine Yamano and Davis and Christian ....... 37 
`6. 
`Claim Charts for Grounds 1-2................................................... 40 
`No Secondary Considerations of Nonobviousness ............................. 70 
`B. 
`IX.  CONCLUSION ............................................................................................ 72 
`
`
`
`
`
`
`ii
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`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`
`
`LIST OF EXHIBITS
`Ex. 1101 U.S. Patent No. 8,023,580 (“’580”)
`
`Ex. 1102
`
`File History of U.S. Patent No. 8,023,580
`
`Ex. 1103 Declaration of Mark R. Lanning (“Lanning”)
`
`Ex. 1104 U.S. Patent No. 6,075,814 (“Yamano”)
`
`Ex. 1105 U.S. Patent No. 5,583,922 (“Davis”)
`
`Ex. 1106 U.S. Patent No. 4,549,293 (“Christian”)
`
`Ex. 1107
`
`Reserved
`
`Ex. 1108
`
`Reserved
`
`Ex. 1109
`
`Reserved
`
`Ex. 1110
`
`Ex. 1111
`
`File History of Ex Parte Reexamination No. 90/013,808 for the ’580
`patent
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Ltd., No.
`2:13-cv-00213-JRG-RSP, Dkt. 114, Claim Construction Order (E.D.
`Tex. July 10, 2014)
`Rembrandt v. Samsung, Appeal No. 16-1729, Fed. Circuit Decision,
`April 17, 2017
`Rembrandt Wireless Techs., LP v. Apple Inc., No. 2:19-cv-00025-
`JRG, Dkt. 70, Joint Claim Construction Statement (E.D. Tex. Sept.
`9, 2019)
`Ex. 1114 U.S. Provisional Application No. 60/067,562, filed Dec. 5, 1997
`
`Ex. 1112
`
`Ex. 1113
`
`Ex. 1115
`
`Samsung Elecs. Co. Ltd., et al. v. Rembrandt Wireless Techs. LP,
`IPR2014-00518, Pap. 47 (Final Written Decision) (P.T.A.B. Sept.
`17, 2015)
`
`iii
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`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`Ex. 1116
`
`Ex. 1117
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`Ex. 1118
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`Ex. 1119
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`Ex. 1120
`
`Ex. 1121
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`Ex. 1122
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`Ex. 1123
`
`Ex. 1124
`
`Ex. 1125
`Ex. 1126
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Ltd., No.
`2:13-cv-00213-JRG-RSP, Dkt. 335, Rembrandt’s Response in
`Opposition to Samsung Defendants’ Rule 50(b) Renewed Motion for
`Judgment as a Matter of Law and/or Rule 59(a) Motion for a New
`Trial on Liability Issues (E.D. Tex. Sept. 7, 2015)
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Ltd., No.
`2:13-cv-00213-JRG-RSP, Dkt. 338, Samsung Defendants’ Reply to
`Rule 50(b) Renewed Motion for Judgment as a Matter of Law and/or
`Rule 59(a) Motion for New Trial on Liability Issues (E.D. Tex. Sept.
`22, 2015)
`Rembrandt Wireless Techs., LP v. Apple Inc., No. 2:19-cv-00025-
`JRG, Rembrandt’s Disclosures Pursuant to Patent Rules 3-1 and 3-2
`(E.D. Tex. April 26, 2019)
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Ltd., No.
`2:13-cv-00213-JRG, Dkt. 352, Memorandum Opinion and Order
`(E.D. Tex. Feb. 17, 2016)
`Reserved
`
`Samsung Elecs. Co. Ltd., et al. v. Rembrandt Wireless Techs. LP,
`IPR2014-00518, Ex. 1218, Declaration of Jon Mears authenticating
`article “Communication Protocols for Embedded Systems,”
`B. Upender and P. Koopman, Jr.; copy of article “Communication
`Protocols for Embedded Systems,” B. Upender and P. Koopman, Jr.
`Samsung Elecs. Co. Ltd., et al. v. Rembrandt Wireless Techs. LP,
`IPR2014-00518, Pap. 1 (Petition for Inter Partes Review of U.S.
`Patent No. 8,023,580) (P.T.A.B. Mar. 20, 2014)
`Samsung Elecs. Co. Ltd., et al. v. Rembrandt Wireless Techs. LP,
`IPR2014-00518, Pap. 16 (Decision Institution of Inter Partes
`Review 37 C.F.R. §42.108) (P.T.A.B. Sept. 23, 2014)
`Samsung Elecs. Co. Ltd., et al. v. Rembrandt Wireless Techs. LP,
`IPR2014-00518, Ex. 1220, Declaration of David Goodman
`Reserved
`Reserved
`
`
`iv
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`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`Ex. 1127
`
`European Patent Application No. 95107807.0 (“Schuermann”)
`
`Ex. 1128
`
`Reserved
`
`Ex. 1129
`
`Ex. 1130
`
`Reserved
`
`Petitioner’s Ranking and Explanation of Parallel Petitions, filed
`concurrently herewith
`
`Ex. 1131 Declaration of D. Gregov
`
`Ex. 1132 Ashraf K. Takla, et al., IEEE Journal of Solid-State Circuits, “A
`Single-Chip 300 Baud FSK Modem,” Vol. SC-19, NO. 6, December
`1984 (“Takla”)
`
`[FILED UNDER SEAL] April 29, 2019 and May 6, 2019 letters
`between Apple and a third party
`
`Ex. 1133
`
`
`
`
`
`v
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`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`Pursuant to §§311-319 and §42,1 Apple Inc. (“Petitioner”) petitions for IPR
`
`of claims 2 and 59 (“Challenged Claims”) of U.S. Patent No. 8,023,580 (“’580”),
`
`assigned to Rembrandt Wireless Technologies, LP (“PO”). There is a reasonable
`
`likelihood at least one challenged claim is unpatentable as explained herein.
`
`Petitioner requests review of the Challenged Claims, and judgment finding them
`
`unpatentable under §103.
`
`I.
`
`INTRODUCTION
`The ’580 patent claims the simple concept of a communication system using
`
`different types of modulation methods. But nothing about communicating using
`
`different types of modulations was new at the time of the ’580. Indeed, the PTAB
`
`already found unpatentable the underlying independent claims from which the
`
`Challenged Claims depend. And the USPTO had finally rejected the Challenged
`
`Claims in ex parte reexamination, with the Examiner finding such claims already
`
`disclosed in the prior art.2
`
`
`1 Section cites are to 35 U.S.C. or 37 C.F.R. as context indicates, and all
`
`emphasis/annotations added unless noted.
`
`2 Apple was not a party to any prior proceeding regarding the Challenged Claims.
`
`
`
`
`1
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`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
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`To secure issuance of the ’580 from reexamination after the ’580 expired, PO
`
`argued and the PTO applied the Phillips construction to the claims, requiring that
`
`“different types” of modulation methods must be “different families of modulation
`
`techniques, such as the FSK family of modulation methods and the QAM family of
`
`modulation methods.”
`
`But, as set forth in this Petition, sending transmissions using at least two
`
`“different types” of modulation methods was well-known and is disclosed by at least
`
`the Davis reference. Davis expressly discloses using “different types” of modulation
`
`methods identified in the Phillips construction: FSK and QAM. See §§VIII.A; Ex.
`
`1103, ¶¶25, 125-135.
`
`As demonstrated herein, each element of the Challenged Claims was well-
`
`known, disclosed in the prior art, and obvious prior to the claimed priority date of
`
`December 5, 1997.3 The Challenged Claims are nothing more than a routine and
`
`predictable combination of well-known elements. Ex. 1003, ¶¶23-27, 82-204.
`
`Petitioner therefore requests the Board institute trial and find the Challenged Claims
`
`unpatentable pursuant to the Grounds proposed herein.
`
`
`3 In District Court, PO identified 12/5/1997 as its priority date. Ex. 1118, 3.
`
`Petitioner reserves the right to challenge claims to priority and raise invalidity based
`
`on §112 in the appropriate forum.
`
`2
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`

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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`II. MANDATORY NOTICES (§ 42.8)
`A. Real Party-In-Interest
`Apple Inc. is the real party-in-interest. No other party had access to or control
`
`over the present Petition, and no other party funded or participated in the preparation
`
`of the present Petition.
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Apple has an independent basis and separate interest in filing the present Petition in
`
`view of PO’s allegations against accused products in the underlying Apple litigation
`
`. Id.
`
`B. Related Matters
`Related matters under §42.8(b)(2) include:
`
`Rembrandt Wireless Technologies, LP v. Apple Inc., 2:19-cv-00025 (E.D.
`
`Tex., filed Jan. 24, 2019) (’580 claims 2 and 59 asserted) (pending).
`
`Rembrandt Wireless Technologies, LP v. Broadcom Inc., 8:19-cv-00708
`
`(C.D. Cal., filed Apr. 15, 2019) (’580 claims 2 and 59 asserted) (pending).
`
`3
`
`REDACTED
`
`REDACTED
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`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`Rembrandt Wireless Technologies, LP v. Qualcomm Inc., 8:19-cv-00705
`
`(C.D. Cal., filed Apr. 15, 2019) (’580 claims 2 and 59 asserted) (pending).
`
`Rembrandt Wireless Technologies, LP v. Samsung Electronics Co. Ltd. et al.,
`
`2:13-cv-00213 (E.D. Tex.); Appeal No. 2016-1729 (Fed. Cir.) (“Samsung
`
`litigation”).4
`
`Samsung Electronics Co. Ltd. et al. v. Rembrandt Wireless Technologies, LP,
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`IPR2014-00518 (PTAB found unpatentable ’580 claims 1, 4, 5, 10, 13, 20-22, 54,
`
`57, 58, 61, 62, 66, 70, and 76-79).
`
`Samsung Electronics Co. Ltd. et al. v. Rembrandt Wireless Technologies, LP,
`
`IPR2014-00519 (PTAB found unpatentable ’580 claims 38 and 47).
`
`Samsung Electronics Co. Ltd. et al. v. Rembrandt Wireless Technologies, LP,
`
`IPR2014-00514, IPR2014-00515, IPR2015-00114, and IPR2015-00118. (PTAB
`
`declined to institute).
`
`Ex Parte Reexamination of U.S. Patent No. 8,023,580, Control No.
`
`90/013,808 (“Samsung Reexamination”).
`
`Petitioner has concurrently filed a parallel petition for inter partes review of
`
`the ’580. See Petitioner’s Ranking and Explanation of Parallel Petitions filed
`
`
`4 Petitioner Apple was not a party to the Samsung litigation, IPRs, or Reexamination:
`
`and PO did not sue Apple until after those proceedings concluded.
`
`4
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`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
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`concurrently herewith (Ex. 1130). Petitioner has also concurrently filed petitions for
`
`inter partes review of related U.S. Patent No. 8,457,228, and suggests the Office
`
`consider assignment to a common panel in the interest of efficiency.
`
`C. Lead and Back-Up Counsel and Service Information
`Mark D. Rowland (Reg. No. 32,077) (Lead)
`Gabrielle E. Higgins (Reg. No. 38,916) (Back-up)
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`Phone: 650-617-4000
`Fax: 617-235-9492
`mark.rowland@ropesgray.com
`gabrielle.higgins@ropesgray.com
`
`Customer No. 28120
`
`Mailing address for all PTAB correspondence:
`ROPES & GRAY LLP, IPRM—Floor 43
`Prudential Tower, 800 Boylston Street,
`Boston, MA 02199
`
`III. PAYMENT OF FEES
`The undersigned authorizes the Office to charge the fee required by §42.15(a)
`
`for this Petition for review to Deposit Account No. 18-1945, under Order No.
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`104677-5027-651. Any additional fees that might be due are also authorized.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for Standing
`Petitioner certifies the ’580 is eligible for, and Petitioner is not barred or
`
`estopped from requesting, IPR. Petitioner was served with a Complaint asserting
`
`5
`
`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
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`infringement of the ’580 on January 24, 2019. Neither Petitioner nor any other real
`
`party-in-interest or privy was served with a complaint asserting infringement of the
`
`’580 before that date, or initiated a civil action challenging the ’580’s validity.
`
`B.
`Identification of Challenge
`Pursuant to §§ 42.104(b) and (b)(1), Petitioner requests IPR of claims 2 and
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`59 of the ’580 patent, and that the Board cancel the same as unpatentable. The ’580
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`patent matured from U.S. Patent Application 12/543,910, filed 8/19/2009, and
`
`claims priority to U.S. Provisional Application 60/067,562, filed 12/05/1997 (Ex.
`
`1114).
`
`1.
`The Specific Art on Which the Challenge is Based
`Petitioner relies upon the following prior art:
`
`
`
` Ex. 1104 – U.S. Patent No. 6,075,814 (“Yamano”) was filed 5/9/1997, and
`
`issued 6/13/2000.
`
` Ex. 1105 – U.S. Patent No. 5,583,922 (“Davis”) was filed 4/5/1995 and issued
`
`12/10/1996.
`
` Ex. 1106 – U.S. Patent No. 4,549,293 (“Christian”) was filed 12/29/1983 and
`
`issued 10/22/1985.
`
`Yamano is prior art to the ’580 under 35 U.S.C. §102(e). Davis is prior art to
`
`the ’580 under 35 U.S.C. §102(a). Christian is prior art to the ’580 under 35 U.S.C.
`
`§102(b).
`
`6
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`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
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`These references are analogous art to the ’580—they are in the same field
`
`relating to communication systems. E.g., Ex. 1101, 1:19-23; Ex. 1104, 1:9-13; Ex.
`
`1105, 5:21-26, 5:14-15, 6:65-66; Ex. 1106, 1:11-17. Like the ’580, Yamano and
`
`Davis are also directed to communications between modulators/demodulators
`
`(modems). Ex. 1101, 1:19-23; Ex. 1104, 1:9-13; Ex. 1105, 5:21-26, 6:65-66. Ex.
`
`1103, ¶¶48-49.
`
`Yamano, Davis, and Christian were never cited or considered by the Examiner
`
`during prosecution of the ’580. Davis and Christian have also not been considered
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`by the USPTO in any post-grant challenges. Yamano was identified in the Samsung
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`’580 Reexamination to which Apple was not a party for the limited purpose of
`
`demonstrating that it was well-known to include a destination address in a data
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`packet. E.g., Ex. 1110, 139-140 (9/12/2016 Request for Ex Parte Reexamination in
`
`’580 Reexam). Yamano’s disclosure of different modulation formats was not raised
`
`by Samsung or considered by the USPTO during reexamination.5 In addition, as PO
`
`
`5 As demonstrated herein, the Davis reference discloses transmission of “different
`
`types” of modulation methods—the only feature deemed missing from the prior art
`
`by the USPTO during reexamination of the Challenged Claims once the USPTO
`
`applied the Federal Circuit’s construction under Phillips. See §§ VII, VIII.A.2,
`
`VIII.A.6.
`
`7
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`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
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`recognized, Yamano was “not applied to the ‘third sequence’ limitation [of claims 2
`
`and 59].” Ex. 1110, 1275 (3/19/18 Rembrandt Appeal Brief in ’580 Reexam), 672
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`(6/30/2017 Declaration of Rembrandt’s Expert Dr. Akl in ’580 Reexam). This
`
`petition presents Yamano in a new light and in combination with references that
`
`were never before considered, and are not cumulative of prior art previously
`
`considered.
`
`The USPTO never considered the combination of documents presented herein
`
`or the testimony of Petitioner’s expert Mark Lanning regarding the scope and content
`
`of these documents. The presented grounds are not cumulative of any prior art
`
`previously considered, and are not the same or substantially the same as prior art or
`
`arguments previously considered. Prior USPTO proceedings filed by Samsung do
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`not warrant the exercise of discretion under §314(a) because PO delayed filing suit
`
`against Apple until after those proceedings and the Federal Circuit’s claim
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`construction of “different types” under Phillips. Co-pending district court
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`proceedings also do not warrant exercise of discretion under §314(a). See, e.g.,
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`IPR2018-01501, Paper 10, *14-15. The Board should not exercise its discretion to
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`deny institution. 35 U.S.C. §§314(a), 325(d).
`
`2.
`Statutory Grounds on Which the Challenge is Based
`References
`Basis Claims
`
`Yamano in view of Davis
`
`
`
`
`
`Ground
`
`1
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`
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`8
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`

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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`
`
`Ground
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`2
`
`
`
`References
`
`Basis Claims
`
`Yamano in view of Davis and
`Christian
`
`§103
`
`
`
`
`
`2 and 59
`
`3. How the Construed Claims are Unpatentable under the
`Statutory Grounds
`Identified
`in §42.104(b)(2) and
`Supporting Evidence Relied upon to Support the Challenge
`Pursuant to §42.104(b)(4), an explanation of how the Challenged Claims of
`
`the ’580 are unpatentable under the grounds above, and how the Petitioner has at
`
`least a reasonable likelihood of prevailing on these grounds, including the
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`identification of where each element of the claim is found in the prior art, is provided
`
`in Section VIII, below. Pursuant to §42.104(b)(5), the exhibit numbers of the
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`supporting evidence relied upon to support the challenges and the relevance of the
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`evidence to the challenges raised, including identifying specific portions of the
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`evidence that support the challenges, are provided in Section VIII, below.
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`V.
`
`FACTUAL BACKGROUND
`A. The ’580 Patent
`The purported invention of the ’580 is a system like that shown in FIG3, in
`
`which a master transceiver 64 is capable of transmitting and receiving data using
`
`different modulation methods (e.g., what the patent identifies as “type A”
`
`modulation and “type B” modulation) (Ex. 1101, 5:23-33):
`
`9
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`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
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`72
`
`rl I\Aodl.itaior -----
`f1 OemO<lulalor -
`
`l.i
`
`Master T ransceiver
`TypeA+ B
`64
`
`Memory
`76
`
`Control
`Prog«im
`Type A+ 8
`78
`
`TribModem
`TypeX
`66
`
`Memory
`88
`
`Control
`Program
`TypeX
`9?
`
`1-----
`
`Central Procesi no
`Unit(CPV)
`68
`
`94
`\..
`
`)
`
`84
`
`----1 Modulator -
`,r Demodulator -
`
`86
`
`i . -
`
`Central Procesing
`Unit(CPU)
`~
`
`FIG. 3
`
`
`
`Transceiver 64 can communicate with tributary transceivers (“tribs”), e.g., trib 66,
`
`each of which communicates using either a type A or type B modulation method
`
`(shown as “type X” in FIG3). Id., 5:34-46.
`
`FIG4 shows an exemplary network in which master transceiver 64 can
`
`communicate using a type A or type B modulation method. Id., 5:47-51. Trib 66a
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`communicates using type A, while trib 66b communicates using type B:
`
`10
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`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
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`100
`
`11111
`
`Trtbll'_.acy
`T r.msoeiver
`TypeA
`6&,
`
`piiimJ
`
`Trtootary
`Transceiver
`Type A
`669
`
`~-.....L--------'--·--·- ••
`'---.----...------•.
`
`FIG. 4
`
`
`
`According to the ’580, the “master transceiver” is capable of transmitting
`
`messages in “either a type A or a type B modulation method.” Id., 5:42-43, 2:28-
`
`31, Figs. 3-8. To switch from type A modulation, the master transmits a training
`
`sequence in which type A tribs are “notified of an impending change to type B
`
`modulation.” Id., 6:3-6. Further, the transceiver, “using type B modulation,
`
`transmits data along with an address in sequence 108, which is destined for a
`
`particular type B trib 66b.” Id., 6:10-12. Finally, “[a]fter completing transmission
`
`sequence 108, master transceiver 64 transmits a trailing sequence 114 using type A
`
`modulation thus notifying all type A tribs 66a that type B modulation transmission
`
`is complete.” Id., 6:16-19.
`
`11
`
`

`

`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`As discussed herein, the alleged invention is no more than a collection of well-
`
`known network communication features already disclosed in the art before the
`
`claimed priority date. Ex. 1103, ¶¶23-32, 82-204.
`
`B.
`Prosecution History
`U.S. Application 12/543,910, which matured into the ’580, was filed on
`
`8/19/2009. Ex. 1102, 1-46, 306. The Examiner issued an Office Action on 9/1/2010
`
`objecting to a number of claims for antecedent basis that were otherwise deemed
`
`allowable, and rejecting other claims under §§102(b) and 103(a). Id., 70-78.
`
`Application claim 1 was one such claim deemed allowable but for the antecedent
`
`basis issue. Id. In a 3/01/2011 Response, PO amended pending claims, including
`
`application claims 1 and 2 (which would issue as claims 1 and 2), cancelled other
`
`claims, and added forty-eight new claims. Id., 127-38. Included within the added
`
`claims were claims 123 and 124, which would issue as claims 58 and 59,
`
`respectively. Id., 135-36. PO offered the following explanation for amending
`
`claim 1:
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`[T]he language of independent claim 1 has been clarified to refer to two
`types of modulation methods, i.e., different families of modulation
`techniques, such as the FSK family of modulation methods and the
`QAM family of modulation methods.
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`Id., 140. PO relied on this statement to assert during the Samsung litigation that
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`“different types” meant “different families.” The district court based its construction
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`on this prosecution history (Ex. 1111, 22-29), and the Federal Circuit affirmed the
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`district court’s construction (Ex. 1112, 1375-77). See §VII.
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`During the Samsung litigation, Samsung filed an IPR petition on the ’580
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`based on U.S. Patent 5,706,428 (“Boer”) in view of Applicant’s admitted prior art
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`of a master/slave system. Ex. 1122. The PTAB instituted IPR, but declined to
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`institute review of claims 2 and 59. Ex. 1123, 15. In the Final Written Decision, the
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`PTAB determined: “the ’580’s [disclosure of] multipoint communication systems
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`(or master/slave systems)…may be used as prior art against the patent under 35
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`U.S.C. §103(a),” and the reviewed claims (including the independent claims from
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`which the Challenged Claims depend) were unpatentable over Boer in view of the
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`admitted prior art. Ex. 1115, 13-21. PO did not appeal the PTAB’s decision.
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`Samsung later petitioned for ex parte reexamination of claims 2 and 59 of the
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`’580 and the USPTO ordered reexamination, finding substantial new questions of
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`patentability as to both claims in view of the asserted combinations. The Examiner
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`repeatedly rejected the claims based on the PTAB’s prior claim construction under
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`BRI for “different types” of modulation methods as referring to “modulation
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`methods that are incompatible with one another.” Ex. 1110, 436-440, 829-838,
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`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” (Ex. 1101, 4:6-9), and that “it is
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`determined by PTAB that master-slave relationship is unpatentable subject matter.”
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`Ex. 1110, 1067.
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`On 12/5/2018, the ’580 expired. PO requested that the Examiner apply a
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`Phillips construction to the “different types” term and withdraw its rejections. Id.,
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`2181-82. The USPTO issued a Notice of Intent to Issue Ex Parte Reexamination
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`Certificate, withdrawing its rejection of claims 2 and 59 in view of the Federal
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`Circuit’s determination that “modulation method [] of a different type” refers to
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`“different families of modulation techniques, such as the FSK family of modulation
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`methods and the QAM family of modulation methods.” Id., 2190. Thus, the only
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`basis for allowing the challenged claims was the determination that the “prior art on
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`the record does not teach different types of modulation methods as different families
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`of modulation techniques.” Id.
`
`VI. LEVEL OF ORDINARY SKILL
`A person of ordinary skill in the art (“POSITA”) on or before 12/5/97, would
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`have a minimum of a Bachelor’s degree in Electrical Engineering, Computer
`
`Science, or a related field, and approximately two years of professional experience
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`in the field of communication systems. Additional graduate education could
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`substitute for professional experience, or significant experience in the field could
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`substitute for formal education. Ex. 1103, ¶¶18-20. A POSITA is presumed to have
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`knowledge of all relevant prior art, and would thus have been familiar with each of
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`the references cited herein, as well as the background knowledge in the art discussed
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`herein, and the full range of teachings they contain. Id.; In re GPAC Inc., 57 F.3d
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`1573, 1579 (Fed. Cir. 1995).
`
`VII. CLAIM CONSTRUCTION
`Terms of claims subject to IPR are to be “construed using the same claim
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`construction standard that would be used to construe the claim in a civil action under
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`35 U.S.C. §282(b), including construing the claim in accordance with the ordinary
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`and customary meaning of such claim as understood by one of ordinary skill in the
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`art and the prosecution history pertaining to the patent.” §42.100(b). Only terms
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`necessary to resolve the controversy need to be construed. Nidec Motor v.
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`Zhongshan Broad Ocean Motor, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Although
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`the Samsung court construed terms (Ex. 1111) and the parties have proposed
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`constructions in the Apple litigation (Ex. 1113), construction is unnecessary here
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`because the Challenged Claims are invalid under both the court’s and the parties’
`
`proposed constructions. Nidec, 868 F.3d at 1117; Ex. 1103, ¶¶39-42.
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`For example, in the Samsung litigation, the court construed “modulation
`
`method [] of a different type”/“different types of modulation methods” to mean
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`“different families of modulation techniques, such as the FSK family of modulation
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`methods and the QAM family of modulation methods” without clarifying the
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`meaning of “different families” (Ex. 1111, 22-29), and the Federal Circuit affirmed
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`(Ex. 1112, 1375-77). In the Apple litigation, PO proposes that this phrase be
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`construed using the prior construction, and Petitioner proposes “different families of
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`modulation techniques, such as the FSK family of modulation methods and the
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`QAM family of modulation methods, wherein different families may have
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`overlapping characteristics.” Ex. 1113, 5.6
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`While Petitioner believes its litigation construction is correct (e.g., Ex. 1113),
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`construction is unnecessary here because the cited references/combinations
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`expressly disclose using FSK and QAM—which are “modulation method [] of a
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`different type”/“different types of modulation methods” under both parties’
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`constructions. Nidec, 868 F.3d at 1117; Ex. 1103, ¶¶39-42. For review purposes,
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`Petitioner interprets any remaining terms according to their plain and ordinary
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`meaning consistent with the specification.
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`VIII. GROUNDS OF UNPATENTABILITY
`There is at least a reasonable likelihood Petitioner will prevail with respect to
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`at least one of the Challenged Claims (§ 314(a)), as they are unpatentable under
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`§ 103.
`
`
`6 In the Apple litigation, no Markman Hearing has been held.
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`A. Claims 2 and 59 are rendered obvious under § 103(a) over Yamano
`in view of Davis (Ground 1) and Yamano in view of Davis and
`Christian (Ground 2)
`1. Overview of Yamano
`Yamano discloses a system for reducing signal processing “in a
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`modulator/demodulator (modem) which is transferring packet-based data or other
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`information that is intermittent in nature on a communication channel.” Ex. 1104,
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`1:9-13. Yamano further discloses transmitting messages to a receiver using different
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`modulation methods—namely, “different modem protocols” which “may implement
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`different data rates, modulation formats and/or protocol versions.” Ex. 1104, 5:45-
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`58. Ex. 1103, ¶¶50-51.
`
`As shown in Figure 7, Yamano discloses a “multi-drop configuration which
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`includes modems in a subscriber’s residence and a modem in the telephone company
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`central office.” Ex. 1104, 6:46-48.
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`1010
`
`SUBSCRIBER
`RESIOENCI:
`
`100\
`
`1002
`
`IOC3
`
`MODEM
`
`MODEM
`
`1012
`
`1011
`
`camw.
`OFACE
`
`1004
`
`MODEM
`
`
`
`Ex. 1104, Fig. 7, 1:29-2:21. In one embodiment, the multiple modems “are
`
`connected to the same communication channel using time-division multiplexing
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`[(‘TDMA’)]” and “[e]ach of modems 1001-1004 include[s] a transmitter circuit and
`
`a receiver circuit” (i.e., a transceiver). Id., 19:1-13, 19:43-49, 23:28-33. Yamano
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`teaches, “[t]he advantage of this [TDMA] scheme is ease of implementation.” Id.,
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`19:47-48. A modem transmitting a packet can request an acknowledgement. Id.,
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`20:1-7, 20:63-21:11. It can also specify timing of a “reception slot” for a subsequent
`
`packet. Id., 20:1-7, 20:63-21:11. Yamano discloses that “any of the transmitter
`
`circuits of modems 1001-1004 can establish a session on a telephone line 1012.” Id.,
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`19:18-20, 15:18-22. Ex. 1103, ¶¶52-54.
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`Yamano discloses using different modulation methods—“different modem
`
`protocols” that “may implement different data rates, modulation formats and/or
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`protocol versions.” Ex. 1104, 5:45-58. Yamano teaches that use of “different
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`modem protocols” “enables devices having different operating capabilities (e.g.,
`
`personal computers and smart appliances) to be operably coupled to the same
`
`telephone line in a multi-drop configuration.” Id., 5:55-58. Yamano further explains
`
`that “both simple devices (which communicate at a relatively low speed) and
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`complex devices (which communicate at a relatively high speed) [may] be operably
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`coupled to a single telephone line at the same time[,] [f]or example, modem 1001
`
`can be located in a personal computer, while modem 1002 can be located in a ‘smart
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`toaster’ or similar appliance.” Id., 20:40-46, 20:27-33. Ex. 1103, ¶55.
`
`Yamano discloses that each data packet transmission comprises a “group of
`
`transmission sequences” (e.g., “packet”) structured with a “first portion” (e.g., “a
`
`preamble”) and a “payload portion” (e.g., “a corresponding main body”). Ex. 1104,
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`5:32-38, 5:45-48. Figure 8 is a representation of this packet structure:
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`PREAMBLE
`
`DATA
`
`PREAMBLE
`
`DATA
`
`"first portion"
`
`"payload portion"
`700
`
`"group of tmnsmission sequences"
`
`711
`
`712
`
`710
`
`
`
`Id., Fig. 8. Packet 700 “includes a preamble 701 and a main body 702.” Id., 19:63-
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`64. Yamano teaches that “[e]ach preamble is transmitted in accordance with a
`
`predetermined first modem protocol.” Id., 5:45-48. This predetermined first modem
`
`protocol is associated with a “first modulation method,” as required by the ’580. Id.
`
`The “main bod[y] can be transmitted in accordance with different modem protocols
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`which are different than the first modem protocol” and “the different modem
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`protocols may implement different data rates, modulation formats and/or protocol
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`versions.” Id., 5:48-53. The first portion (e.g., “preamble”) contains “first
`
`information” that indicates which modulation method is used for modulating
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`“second information” (“e.g. “data”) in the “payload portion” (e.g., “main body”).
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`Id., 5:53-55, 19:57-20:7, 20:13-15. Specifically, “[t]he modem protocol associated
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`with each of the main bodies is identified by information included in the
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`corresponding preamble.” Id., 5:53-55, 19:57-20:7. Ex. 1103, ¶¶56-58.
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`IPR2020-00034
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