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 IPR2014-00514
`Patent 8,023,580
`___________
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,023,580
`
`
`
`
`
`
`
`
`
`
`Qualcomm Incorporated
`Exhibit 1020
`Page 1 of 150
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`
`I.
`
`TABLE OF CONTENTS
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (§
`
`INTER PARTES REVIEW .......................................................................... 1
`A. Certification The `580 Patent May Be Contested By Petitioner ..... 1
`B.
`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.
`Real Parties-In-Interest (§ 42.8(b)(1)) ........................................ 1
`2.
`Related Matters (§ 42.8 (b)(2)) ................................................... 2
`3.
`Lead And Backup Counsel (§ 42.8(b)(3)) .................................. 2
`4.
`Service Information (§ 42.8(b)(4)) ............................................. 2
`D.
`Proof Of Service (§ 42.6(e) and § 42.105(a)) ..................................... 2
`II.
`42.104(B)) ........................................................................................................ 2
`III. RELEVANT INFORMATION CONCERNING THE `580 PATENT .... 3
`A.
`Subject Matter Of The `580 Patent ................................................... 3
`B.
` ............................................................................................................... 5
`C.
`Person Of Ordinary Skill In The Art ................................................ 7
`D. How The Challenged Claims Are To Be Construed ........................ 7
`1.
`58) ............................................................................................... 8
`2.
` ................................................................................................... 10
`3.
`“Master” (Claims 1, 2, 10, 11, 12, 49, 54, 58, 59, 66, 68, 69) .. 11
`4.
`“Slave” (Claims 1,2, 10, 11, 58, 59, 66, 68) ............................. 11
`
`Effective Filing Date And Prosecution History Of The `580 Patent
`
`“At Least Two Types Of Modulation Methods” (Claims 1 &
`
`“First Modulation Method” And “Second Modulation Method”
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`B.
`
`Claims 1-2, 4-5, 10, 13, 19-22, 44, 49, 54, 58-59, 61-62, 66, 70 & 76-
`79 Are Rendered Obvious Under 35 U.S.C. § 103 By The Draft
`
`IV. PRECISE REASONS FOR RELIEF REQUESTED ............................... 12
`A. Claims 1, 2, 4-5, 10, 13, 19-22, 49, 52-54, 57-59, 61, 62, 66, 70, &
`76-79 Are Anticipated Or Rendered Obvious By The Standard .. 12
`1.
`The Draft 802.11 Standard Is Prior Art .................................... 12
`2.
`Overview Of The Draft 802.11 Standard .................................. 13
`3.
`Claims 1, 2, 4-5, 10, 13, 19-22.................................................. 15
`4.
`Claims 49, 52-54 & 57 .............................................................. 34
`5.
`Claims 58-59, 61, 62, 66, 70 & 76-79 ...................................... 44
`802.11 Standard In View Of Boer .................................................... 54
`1.
`Overview Of Boer ..................................................................... 54
`2.
`Detailed Description of Boer .................................................... 55
`3.
`DBPSK ...................................................................................... 58
`4. Motivation To Combine ............................................................ 59
`V. CONCLUSION ............................................................................................ 60
`
`PPM/DQPSK Is A Different “Type” Of Modulation Than
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989) ......................................................... 12
`
`In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) ................................................ 12
`
`In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012) ................................................ 8
`
`In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989) .......................................................... 8
`
`Kyocera Wireless Corp. v. ITC, 545 F.3d 1340 (Fed. Cir. 2008) ............................ 12
`
`Mass. Inst. of Tech. v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985) ......................... 13
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 11
`
`Statutes
`
`35 U.S.C. § 102(b) .......................................................................................... 3, 6, 13
`
`35 U.S.C. § 102(e) ................................................................................................... 54
`
`35 U.S.C. § 103 ............................................................................................... 3, 6, 54
`
`35 U.S.C. § 112 .......................................................................................................... 8
`
`35 U.S.C. § 315(b) ..................................................................................................... 1
`
`77 Fed. Reg. 48764 .................................................................................................... 8
`
`Other Authorities
`Regulations
`
`37 C.F.R. § 42.104(b) ................................................................................................ 2
`
`37 C.F.R. § 42.105(a) ................................................................................................. 2
`
`37 C.F.R. § 42.6(e) ..................................................................................................... 2
`
`37 C.F.R. § 42.8 (b)(2) ............................................................................................... 2
`
`37 C.F.R. § 42.8 (b)(3) ............................................................................................... 2
`iii
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`37 C.F.R. § 42.8(b)(1) ................................................................................................ 1
`
`37 C.F.R. § 42.8(b)(4) ................................................................................................ 2
`
`37 CFR § 42.100(b) ................................................................................................... 7
`
`
`
`Attachment A: Proof of Service of the Petition
`
`Attachment B: List of Evidence and Exhibits Relied Upon in Petition
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`
`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.
`
`1001) 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. 1002.
`
`The first petitioner to be served was served with the complaint on March 20, 2013,
`
`Ex. 1003. 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
`
`
`
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`1
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`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. 1003. Petitioner has also
`
`filed Petitions IPR-2014-5015, 5018 & 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:
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`
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`2
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
`
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`(1) Claims 1, 2, 4-5, 10, 13, 19-22, 49, 52-54, 57-59, 61, 62, 66, 70, and
`
`76-79 are anticipated under 35 U.S.C. § 102(b) or rendered obvious under 35
`
`U.S.C. § 103 by P802.11 Draft Wireless LAN Medium Access Control (MAC) and
`
`Physical Layer (PHY) Specification, 23 May 1996, (“Draft 802.11 Standard” or
`
`“Standard”) (Ex. 1005) (which eventually published in 1997. See Ex. 1006.)
`
`(2) Alternatively, 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 the Draft 802.11
`
`Standard in view of U.S. Patent No. 5,706,428 (“Boer”) (Ex. 1016).
`III. RELEVANT INFORMATION CONCERNING THE `580 PATENT
`A.
`Subject Matter Of 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. 1001, `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 `580 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. 1019, ¶51.
`
`Because of these issues, the `580 patent asserts that “…communication
`
`
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`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
`
`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. 1019, ¶52.
`
`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. 1019, ¶53.
`
`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,
`
`
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`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
`
`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. 1019, ¶54.
`
`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. 1019, ¶55.
`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
`
`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. 1009.
`
`
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`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. 1010. 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 1, 2011, Patent Owner filed a response to the Office Action (“3/1/2011
`
`Reply”). Ex. 1011. 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. 1012. 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
`QAM family of modulation methods. Support for the clarifying
`amendments can be found throughout the specification, for example
`[0024], [0025] and [0031] - [0036].”
`Ex. 1011, 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
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`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. 1013. The application was allowed on July 22,
`
`2011, although no Statement of Reasons for Allowance was provided. Ex. 1014.
`
`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. 1015.
`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. 1019, ¶58.
`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
`
`matter that Patent Owner contends infringes the claims or meanings for claim
`
`terms that Patent Owner has proposed in past or in current litigation. See Ex. 1007
`
`(infringement contentions). 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.
`
`
`
`
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`7
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`§ 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
`
`proceeding that differ from those it proposes or adopts in the Litigation.
`
`Petitioner addresses the meaning of claim terms while comparing the claims
`
`to the prior art. Petitioner also submits the following terms for construction.
`
`1. “At Least Two Types Of Modulation Methods” (Claims 1 & 58)
`The broadest reasonable interpretation of “at least two types of modulation
`
`methods” in light of the specification and the grammar of the claims themselves is
`
`“at least two incompatible processes of varying characteristic(s) of a carrier
`
`wave.” The specification of the `580 patent uses the word “compatible” or a root
`
`thereof on ten different occurrences and identifies the problem of incompatible
`
`modems as the problem the inventors were seeking to solve. Ex. 1001, 2:17-20.
`
`Moreover, the `580 patent states that an advantage of the alleged “present
`
`invention” is “that a master transceiver can communicate seamlessly with tributary
`
`transceivers or modems using incompatible modulation methods.” Ex. 1001, 2:55-
`
`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
`
`reasonable interpretation requires only that each of the “at least two types of
`
`modulation methods” be incompatible with one another. As for the “modulation
`
`methods” portion of the claim phrase, the ordinary meaning of “modulation” is
`
`“[t]he process by which some characteristic of a carrier is varied in accordance
`
`with a modulating wave.” See Ex. 1008, “The IEEE Standard Dictionary of
`Electrical and Electronics Terms,” 6th Ed., 1996, p. 662. Petitioner submits that
`this definition of “modulation” is correct. Ex. 1019, ¶59-63
`
`Petitioner expects Patent Owner to seek a construction explicitly including
`
`the “families of modulation techniques” concept discussed in the 3/1/2011 Reply
`
`(Ex. 1011). In the Litigation, this is what Patent Owner is doing. See Ex. 1017, p.
`
`11. Such a construction, however, would be far narrower than the broadest
`
`reasonable construction, and is not appropriate because Patent Owner’s statement
`
`regarding “families of modulation techniques” (i) did not result in the claim being
`
`amended to include a “families of modulation techniques” limitation, (ii) did not
`
`lead to allowance since claim 1 had previously been allowed, and (iii) is not
`
`supported by the specification.
`
`Petitioner expects Patent Owner will rely its 3/1/2011 Reply, and argue that
`
`different PSK modulation methods are somehow the same “type” of modulation.
`
`The broadest reasonable construction of “…types of modulation methods”
`
`precludes such a construction, since it would read in limitations having no basis in
`
`the ordinary meaning of the claim term. For example, different PSK modulation
`
`are known to be incompatible with each other. Indeed, a receiver designed to
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`receive one type of PSK modulation would not receive correctly a signal
`
`modulated with a different type of PSK modulation. Ex. 1019, ¶64.
`
`Moreover, while the arguments made in the 3/1/2011 Reply refer to
`
`“different families of modulation techniques,” the claim was not amended to
`
`include such language. Ex. 1011. Nor was such an argument the reason why
`
`claim 1 was allowed, since claim 1 had been allowed before the amendment was
`made. Ex. 1010.1 Finally, Patent Owner’s citations to the specification made in
`the 3/1/2011 Reply to support this argument regarding “different families of
`
`modulation techniques” say nothing about different “families” of modulation – the
`
`term is never used. Likewise, none of these citations mention FSK modulation, the
`
`example given in the 3/1/2011 Reply, further undermining any “families of
`
`modulation techniques” argument Patent Owner might make.
`
`In contrast, the specification repeatedly references to compatibility of
`
`modulation methods (and the lack thereof), demonstrating that construing “types”
`
`in the context of compatibility is the correct, and broadest reasonable construction.
`
`2. “First Modulation Method” And “Second Modulation Method”
`The broadest reasonable interpretation for the claim term “first modulation
`
`method” in light of the specification and the claim language is “a process of
`
`varying characteristic(s) of a carrier wave that is different from a second
`
`modulation method.” Similarly, the broadest reasonable interpretation for the term
`
`“second modulation method” is “a process of varying characteristic(s) of a carrier
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`1 Claim 58 (application claim 123) was added in the 3/1/2011 Reply.
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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 “modulate” from the
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`IEEE dictionary, discussed above. Ex. 1019, ¶66-72.
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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, the `580 patent admits that master
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`transceivers are prior art, confirming that the term was well known. Because of
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`this, “master” should be given its “ordinary and customary meaning.” Phillips v.
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`AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). According to the “Dictionary
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`of Communications Technology,” Ex. 1018, a “master station” in a multipoint
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`system “controls/polls the nodes,” while in a point to point system, the master
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`station “controls the slave station.” Id. at 259. Thus, Petitioner submits that the
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`broadest reasonable construction for “master” “master” is “a device which controls
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`or polls other transceivers.” Ex. 1019, ¶73-76.
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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 Error! Reference source not found..Error! Reference source not
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`found.. Thus, “slave” should also be given its ordinary meaning. Phillips, 415
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`F.3d at 1312. According to the Dict. of Comm. Technology, Ex. 1018, a “slave” is
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`a “called unit under the control of commands and signals from a master (calling)
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`unit,” while a “slave station” is, “[i]n point-to-point circuits, the unit controlled by
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`the master station.” Id. at 404. Thus, the broadest reasonable construction is “a
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`device controlled by commands from a master.” Ex. 1019, ¶77-80.
`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, &
`76-79 Are Anticipated Or Rendered Obvious By The Standard
`1. The Draft 802.11 Standard Is Prior Art
`As discussed in the Declaration of Robert O’Hara, Ex. 1004, the Draft
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`802.11 Standard was completed on May 20, 1996, and was available to anyone
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`who wanted to view it on May 23, 1996. See Ex. 1004. ¶¶4-5, 10, 12. Given the
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`facts presented in the O’Hara declaration, there can be no doubt that the Draft
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`802.11 Standard is a “printed publication.” A reference is a “printed publication”
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`if the reference has been made “sufficiently accessible to the public interested in
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`the art.” In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004) (quoting In re
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`Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). “A reference is publicly accessible
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`upon a satisfactory showing that such document has been disseminated or
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`otherwise made available to the extent that persons interested and ordinarily skilled
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`in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera
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`Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (internal quotations
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`and citations omitted). Dissemination of a printed reference “without restriction to
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`at least six persons” has been held to be sufficient for purposes of establishing
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`“publication,” when “between 50 and 500 persons interested and of ordinary skill
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`in the subject matter were actually told of the existence of the paper and informed
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`of its contents by [an accompanying] oral presentation.” Mass. Inst. of Tech. v. AB
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`Fortia, 774 F.2d 1104, 1109 (Fed. Cir. 1985).
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`Mr. O’Hara was one of the main editors of the Draft 802.11 Standard, and
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`was one of its creators. Ex. 1005, p. iii. Ex. 1004, ¶1. As Mr. O’Hara declares,
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`the Draft 802.11 Standard was available to all members of the 802.11 Working
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`Group’s email list, a list that contained “all or nearly all of the 90 individuals listed
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`in the Forward” of the Draft 802.11 Standard. See Ex. 1004, ¶9. Moreover, IEEE
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`records show that 49 individuals attended a July 8-12, 1996 meeting of the 802.11
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`Working Group, where the Draft 802.11 Standard was discussed and distributed on
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`diskettes and available on a wireless LAN in operation. Id. at ¶12. Thus, the Draft
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`802.11 Standard had been distributed to interested parties no later than July 8, 1996.
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`Because the Draft 802.11 Standard was available to any interested parties, it is a
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`printed publication. Mass. Inst. of Tech, 774 F.2d at 1109. Because the Draft
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`802.11 Standard was published more than a year prior to the Provisional
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`application from which the `580 patent claims priority, it qualifies as prior art
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`under 35 U.S.C. § 102(b).
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`2. Overview Of The Draft 802.11 Standard
`The Draft 802.11 Standard is directed to a wireless local area network
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`having transceivers in an access point and various mobile stations. Ex. 1005,
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`Abstract, p. 1 (“The purpose of this standard is to provide wireless connectivity to
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`automatic machinery, equipment, or stations that require rapid deployment, which
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`may be portable or hand-held, or which may be mounted on moving vehicles
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`within a local area.”). The Standard discloses transceivers (access points and
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`stations) that can communicate at two different data rates. Each data rate is
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`transmitted using a different type of modulation method: differential binary phase
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`shift keying (“DBPSK”) when operating at one Megabit per second (“Mbps”) and
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`differential quadrature phase shift keying (“DQPSK”) when operating at two Mbps.
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`Ex. 1005 at p. 227. See also Ex. 1019, ¶82-83.
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`The format of messages transmitted
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`using equipment compliant with the Standard,
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`will now be discussed with reference to the
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`annotated drawings to the right. The
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`Standard refers to data to be transmitted as an
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`“MSDU.” An “MSDU” is “Information that
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`is delivered as a unit between MAC service
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`access points (SAPs).” Ex. 1005, p. 5. The
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`Standard teaches that an MSDU is fragmented into smaller “MAC level frames,”
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`known as “MAC Protocol Data Units,” or “MPDUs.” Ex. 1005, p. 71-72 & Fig. 37
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`(“The process of partitioning a MAC service data unit (MSDU) into smaller MAC
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`level frames, MAC protocol data units (MPDUs), is called fragmentation.”). Ex.
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`1019, ¶84-86.
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`The manner in which an MSDU is fragmented into a succession of MPDUs
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`is shown in Figure 37, and is at the top of the annotated drawing. The data fields
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`within each MAC frame/MPDU, which are used to transmit a larger MSDU, are
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`shown in Fig. 12 of the Standard. As can be seen, each MPDU comprises several
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`address fields and a frame body. The frame body conta