Paper No. 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`SAMSUNG ELECTRONICS CO. LTD.; SAMSUNG ELECTRONICS
`AMERICA, INC.; SAMSUNG TELECOMMUNICATIONS AMERICA, LLC;
`AND SAMSUNG AUSTIN SEMICONDUCTOR, LLC;
`Petitioner
`
`v.
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`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner
`___________
`
`Case IPR2015-00118
`Patent 8,023,580
`___________
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,023,580
`
`
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`Qualcomm Incorporated
`Exhibit 1025
`Page 1 of 107
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`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 IPR2015-00118
`Patent 8,023,580
`___________
`
`
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`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,023,580
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`
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`Qualcomm Incorporated
`Exhibit 1025
`Page 1 of 107
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`TABLE OF CONTENTS
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`V.
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`I. MANDATORY NOTICES ........................................................................... 1
`A.
`Real Parties-in-Interest .......................................................................... 1
`B.
`Related Matters and Joinder Motion ..................................................... 1
`C.
`Counsel .................................................................................................. 2
`D.
`Service Information ............................................................................... 2
`E.
`Certification of Grounds for Standing ................................................... 2
`F.
`Fee For Inter Partes Review .................................................................. 2
`G.
`Proof Of Service .................................................................................... 2
`II. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .............. 2
`III. HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED ...... 3
`IV. RELEVANT INFORMATION CONCERNING THE `580 PATENT .... 3
`A.
`Subject Matter Of The `580 Patent ....................................................... 3
`1.
`Technology Described In The `580 Patent ................................. 3
`2.
`Admissions Made In `580 Patent Regarding Prior Art ............... 6
`B.
`Effective Filing Date And Prosecution History Of The `580 Patent .... 8
`Person Of Ordinary Skill In The Art ..................................................... 9
`C.
`PRECISE REASONS FOR RELIEF REQUESTED ............................... 10
`A.
`Claims 23, 25, 30 And 41 Are Rendered Obvious By Boer ............... 10
`1.
`Overview Of Boer ..................................................................... 10
`2.
`and 41 ........................................................................................ 11
`3.
`Claims 23, 25, 29 And 30 Are Obvious .................................... 19
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`The Prior Institution Decisions Regarding Claims 23, 25, 29-30
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`B.
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`a. Claim 23 .............................................................................. 19
`b. Claims 25 and 30 ................................................................ 20
`4.
`Claim 41 Obvious ..................................................................... 27
`Prior Art (“APA”)In View Of Boer .................................................... 34
`1.
`Systems Were Prior Art ............................................................ 34
`2. Motivation To Combine ............................................................ 35
`3.
`Claim 29 Is Obvious ................................................................. 37
`VI. CONCLUSION ............................................................................................ 38
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`Claim 29 is Rendered Obvious Under 35 U.S.C. § 103 By Admitted
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`The APA Demonstrates That Multipoint Communication
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`TABLE OF AUTHORITIES
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`Cases
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`Constant v. Advanced Micro–Devices, Inc., 848 F.2d 1560 (Fed.Cir.1988) ............. 8
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`Graham v. John Deere Co., 383 U.S. 1 (1966) ....................................................... 18
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`Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342 (Fed. Cir. 2007) .... 8,
`34
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`Statutes
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`35 U.S.C. § 102(b) ..................................................................................................... 9
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`35 U.S.C. § 102(e) ............................................................................................ 10, 25
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`35 U.S.C. § 103 ....................................................................................... ii, 2, 3, 9, 32
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`Rules
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`37 C.F.R. § 42.100(b) ................................................................................................ 3
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`37 C.F.R. § 42.101(b) ................................................................................................ 2
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`37 C.F.R. § 42.104(a) ................................................................................................. 2
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`iii
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`Page 4 of 107
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`Attachment A: Proof of Service of the Petition
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`Attachment B: List of Evidence and Exhibits Relied Upon in Petition
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`iv
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`Page 5 of 107
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`I. MANDATORY NOTICES
`A.
`Real Parties-in-Interest
`The real parties-in-interest are Samsung Electronics Co. Ltd.; Samsung
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`Electronics America, Inc.; Samsung Telecommunications America, LLC; and
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`Samsung Austin Semiconductor, LLC. (Collectively, “Petitioner”).
`B.
`Related Matters and Joinder Motion
`U.S. Patent No. 8,023,580 (“the `580 patent”) (Ex. 1301)1 is owned by
`Rembrandt Wireless Tech, LP (“Patent Owner”), and is currently being asserted by
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`Patent Owner in Rembrandt Wireless Tech., LP v. Samsung Elect. Co. LTD., No.
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`2:13-cv-00213 (E.D. Tex. 2013) (“the Litigation”). The original Complaint in the
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`litigation was served on Petitioner March 20, 2013. Petitioner has also filed
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`Petitions IPR-2014-00514, 00515 & 00518 for the `580 patent.
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`On September 23, 2014, a decision instituting inter partes review of claims
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`32, 34, 38, 40, 43, 44, and 47 of the `580 patent was entered in Case No. IPR2014-
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`00519 (the “`519 Inst. Dec.”). By separate motion filed herewith, Petitioner
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`1 To simplify management of this proceeding should it be joined with IPR2014-
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`00519, Petitioner has used the same exhibit numbering as in the prior proceeding.
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`In addition, Petitioner has only submitted a supplemental declaration from Dr.
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`Goodman that addresses his opinions that were not presented in his March 19,
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`2014 declaration (marked as Exhibit 1318 in both the `519 proceeding and the
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`present proceeding).
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`Petition for Inter Partes Review of U.S. Patent No. 8,023,580
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`requests that this proceeding be joined with Case No. IPR2014-00519.
`C.
`Counsel
`Lead Counsel: Jeffrey A. Miller, Reg. No. 35, 287
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`Backup Counsel: Daniel G. Cardy, Reg. No. 66,537
`D.
`Service Information
`Email: millerj@dicksteinshapiro.com and cardyd@dicksteinshapiro.com
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`Mail Delivery: Jeffrey Miller, Esq., Dickstein Shapiro LLP, 1841 Page Mill
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`Rd., Palo Alto, CA 94304
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`Telephone: 650.690.9500, Fax: 650.690.9501.
`E.
`Certification of Grounds for Standing
`Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the `580 patent is
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`available for inter partes review and that Petitioner is not barred or estopped from
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`requesting inter partes review of the claims of the `580 patent on the grounds
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`identified herein. This petition is accompanied by a motion for joinder with Case
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`No. IRP2014-00519, and, as such, the time period set forth in 37 C.F.R. §
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`42.101(b) does not apply to this petition.
`F.
`Fee For Inter Partes Review
`Petitioner paid the required fees upon filing. Should any further fees be
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`required, the PTAB is hereby authorized to charge Deposit Account No. 04-1073.
`G.
`Proof Of Service
`Proof of service of this petition is provided in Attachment A.
`II. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`(1) Claims 23, 25, 30, 41 are rendered obvious under 35 U.S.C. § 103 by
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`2
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`Boer (Ex. 1304).
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`(2) Claim 29 is rendered obvious under 35 U.S.C. § 103 by Admitted
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`Prior Art (“APA”) in view of Boer.
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`These claims were previously challenged in IPR2014-00519, but the Board
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`chose not to institute trial on them.
`III. HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED
`For purposes of this Inter Partes Review, and without prejudice to any
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`positions taken by Petitioner in other proceedings, all claim terms should be given
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`their broadest reasonable interpretation, as understood by one of ordinary skill in
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`the art and consistent with the disclosure. See, e.g., 37 C.F.R. § 42.100(b).
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`In Case No. IPR2014-00519, in which the Board instituted inter partes
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`review of claims 32, 34, 38, 40, 43, 44, and 47, the Board declined to construe any
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`claim terms proposed by Petitioner, asserting in the`519 Inst. Dec. that “…we do
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`not construe any term at this time because no term needs to be construed for
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`purposes of this decision.” (`519 Inst. Dec., p. 4).
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`Petitioner respectfully submits that the constructions Petitioner proposed in
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`the `519 petition were correct. However, no further comment is deemed necessary
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`given the Board’s earlier decisions.
`IV. 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
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`modulator/demodulators (modems), and, more particularly, to a data
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`3
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`communications system in which a plurality of modulation methods are used to
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`facilitate communication among a plurality of modem types.” Ex. 1301, `580
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`patent, 1:19-23. The `580 patent identifies a problem with communications
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`systems where “communication between modems is generally unsuccessful unless
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`a common modulation method is used.” Id. at 1:45-47. The `580 patent describes
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`a “multipoint network architecture,” which the `580 patent asserts utilizes a
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`“master” modem and at least two “tributary” (or “trib”) modems. The `580 patent
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`notes that where “…one or more of the trib modems are not compatible with the
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`modulation method used by the master, those tribs will be unable to receive
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`communications from the master.” Id. at 1:54-61. Ex. 1318, ¶50 (Goodman
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`March 19, 2014 Declaration).
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`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
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`applications can be very cost inefficient to construct.” Id. at 1:66-2:1. The `580
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`patent asserts that the solution used at the time to overcome incompatible
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`modulation schemes was the use of high performance modems for all users,
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`regardless of need, which resulted in higher costs. Id. at 2:8-16. Thus, the `580
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`patent asserts that “…what is sought, and what is not believed to be provided by
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`the prior art, is a system and method of communication in which multiple
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`modulation methods are used to facilitate communication among a plurality of
`modems in a network, which have heretofore been incompatible.”2 Id. at 2:17-20.
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`2 Unless indicated, any bolding, underlining, etc. of text is added by Petitioner.
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`Ex. 1318, ¶51.
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`The purported invention of the `580 patent is a system like that shown in
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`Figure 3, in which a master transceiver 64 is capable of transmitting and receiving
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`data having what the patent identifies as “type A” modulation and “type B”
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`modulation. Id. at 5:23-33. Master transceiver 64 can communicate with tribs, e.g.,
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`trib 66, each of which communicates with either type A or type B modulation
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`(shown as “type X” in Figure 3), but not both. Id. at 5:34-46. Figure 4 shows an
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`exemplary network in which master transceiver 64 can communicate with either
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`type A or type B modulation. Trib 66a communicates with type A modulation,
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`while trib 66b communicates with type B modulation. Ex. 1318, ¶52.
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`In the example given in the specification, type A modulation is the primary
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`modulation method, which, as seen in Figure 5, means that the master transceiver
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`64 initially transmits a sequence 104 using type A modulation. Ex. 1301, 5:57-67.
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`If master transceiver 64 wishes to communicate with trib 66b, it can only do so
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`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
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`it of an impending modulation scheme change. Id. at 6:3-6. Then, master
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`transceiver 64 sends a new transmission in sequence 108, this time using type B
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`modulation, containing a trib address as well as data intended for that addressed
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`trib. Id. at 6:8-15. Thereafter, master transceiver 64 transmits a trailing sequence
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`using type A modulation, which informs the trib 66a that the type B modulation
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`transmission is complete. The type B trib 66b simply goes back to ignoring type A
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`transmissions after not receiving a poll request in the particular time interval
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`defined for type B transmissions, or after transmission of the particular quantity of
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`data. Id. at 6:19-25. Ex. 1318, ¶53.
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`Similar to the above, master transceiver 64 can communicate with a type A
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`trib, e.g., trib 66a, by transmitting a training sequence with type A modulation that
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`contains an address for a particular trib. The training sequence is followed by data,
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`which is then received by the addressed trib. Master transceiver 64 then transmits
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`a trailing sequence using type A modulation, which indicates the end of a
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`communication session. Ex. 1301, 6:49-58. Ex. 1318, ¶54.
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`2. Admissions Made In `580 Patent Regarding Prior Art
`As discussed above, the `580 patent describes a multipoint network
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`architecture using a master modem and at least two tribs, with the specification
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`making clear that “tribs” are the same thing as “slaves.” For example, in the
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`“Description of the Illustrative Embodiments,” the `580 patent discusses an
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`“exemplary” multipoint communication protocol, asserting that in such a protocol
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`the “master … permits transmission from a trib only when that trib has been
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`selected.” Ex. 1301, 4:4:9. In its “Summary,” the `580 patent describes a
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`“master/slave” relationship as being one where “communication from a slave to a
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`master occurs in response to a communication from the master to the slave.” Ex.
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`1301, 2:24-29. Thus, the `580 patent teaches that “tribs” and “slaves” are both
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`controlled by a master, which demonstrates that in the `580 patent, tribs and slaves
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`are the same thing, and the terms are used interchangeably. Ex. 1318, ¶55.
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`Both the figures and the specification of the `580 patent admit that
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`communications systems using master/slave relationships are prior art. In
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`particular, Figure 1, which shows a master transceiver 24 in communication with
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`three tributary transceivers, i.e., slaves, is labeled as “Prior Art.” In addition, the
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`specification of `580 patent admits that multipoint communication systems
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`utilizing a master and multiple slaves is prior art. Ex. 1301, 3:40-44 (“With
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`reference to FIG. 1, a prior art multipoint communication system 22 is shown to
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`comprise a master modem or transceiver 24, which communicates with a plurality
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`of tributary modems (tribs) or transceivers 26-26 over communication medium
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`28.”). Ex. 1318, ¶56.
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`Patentee made further admissions during prosecution of one of the parent
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`applications to the `580 patent. As will be discussed in more detail below, one of
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`the parent applications to the `580 patent is Serial No. 09/205,205, which issued as
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`U.S. Patent No. 6,614,838 (Ex. 1314). During prosecution of the `838 patent, an
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`Office Action was mailed on June 28, 2001 where Patentee was required to
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`designate Figure 2 as prior art. Ex. 1315, p. 2 (6/28/2001 Office Action) (“Figure
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`2 should be designated by a legend such as - prior art - because only that
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`which is old is illustrated.”). In a “First Amendment And Response” filed
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`October 1, 2001, Patentee made the amendment, thus admitting that the subject
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`matter shown in Figure 2 is prior art. Ex. 1316. The specification of the `580
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`patent describes the prior art shown in Figure 2 as follows:
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`Referring now to FIG. 2, an exemplary multipoint communication
`session is illustrated through use of a ladder diagram. This system
`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.
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`Ex. 1301, 4:4-9. Lest there be any doubt that the `580 patent and its prosecution
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`history admit that polled multiport communications using masters and slaves are
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`prior art, the specification of the `580 patent says that the operation of the prior art
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`system of Figure 1 is illustrated in Figure 2. Id. At 3:9-10 (“FIG. 2 is a ladder
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`diagram illustrating the operation of the multipoint communication system of FIG.
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`1.”). Ex. 1318, ¶57.
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`Patentee’s admissions in the `580 patent and the prosecution history of the
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``205 application that master/slave communication systems are prior art are binding,
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`and can be used when determining whether a claim is obvious. In the `519 Inst.
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`Dec., the Board correctly agreed with Petitioner that the above constitutes admitted
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`prior art that can be used to invalidate claims of the `580 patent. `519 Inst. Dec., p.
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`14-15. See also Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342,
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`1362 (Fed. Cir. 2007) (“Admissions in the specification regarding the prior art are
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`binding on the patentee for purposes of a later inquiry into obviousness.”);
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`Constant v. Advanced Micro–Devices, Inc., 848 F.2d 1560, 1570 (Fed.Cir.1988)
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`(‘‘A statement in the patent that something is in the prior art is binding on the
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`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
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`application claimed priority through a series of continuation/continuation-in-part
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`applications (Serial Nos. 11/774,803 (Pat No. 7,675,965); 10/412,878 (Pat. No.
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`7,248,626); 09/205,205 (Pat. No. 6,614,838)). The `228, `580, `965, `626, and
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``838 patents claim the benefit of the filing date of U.S. Provisional App. No.
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`60/067,562, filed Dec. 5, 1997. For purposes of this Petition, Petitioners accept
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`that the effective filing date of the challenged claims is December 5, 1997.
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`The `580 patent was filed on August 19, 2008 with 100 claims. Ex. 1307.
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`On September 1, 2010, an Office Action was mailed in which a number of claims
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`were objected to due to an antecedent basis issue but were otherwise deemed
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`allowable, while other claims were rejected under 35 U.S.C. §§ 102(b) & 103(a).
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`Ex. 1308. Application claim 1, which would issue as claim 1, was one such claim
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`that was deemed allowable but for the antecedent basis issue. Id. at p. 2. On
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`March 1, 2011, Patent Owner filed a response to the Office Action (“3/1/2011
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`Reply”). Ex. 1309. In that response, Patent Owner amended many pending
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`claims, including application claim 1 (issued claim 1), cancelled other claims and
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`added forty-eight claims. Included within the added claims was independent claim
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`123, which would issue as claim 58. Id. at p. 15. On March 10, 2011, Patent
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`Owner refiled the claims in response to a Notice Of Non-Compliant Amendment.
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`Ex. 1310.
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`On May 11, 2011, Patent Owner filed a paper making further amendments to
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`pending claims 1 and 95. Ex. 1311. The application was allowed on July 22,
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`2011, although no Statement of Reasons for Allowance was provided. Ex. 1312.
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`On July 26, 2011, Patent Owner filed an Amendment After Allowance further
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`amending claims that, after entry, issued as claims 40, 49, and 54. Ex. 1313.
`C.
`Person Of Ordinary Skill In The Art
`A person of ordinary skill in the art in the field of the `580 patent would
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`have had a Master’s Degree in Electrical Engineering that included coursework in
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`communications systems and networking, and at least five years of experience
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`designing network communication systems. Ex. 1318, ¶62.
`V.
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`PRECISE REASONS FOR RELIEF REQUESTED
`A.
`Claims 23, 25, 30 And 41 Are Rendered Obvious By Boer
`1. Overview Of Boer
`Boer was filed on March 14, 1996 and issued on January 6, 1998, making it
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`prior art under at least 35 U.S.C. § 102(e). Boer discloses a communications
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`system that is very similar to the one described in the `580 patent. Boer discloses
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`transceivers in stations 12, 18 & 22 that can communicate with each other using
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`different modulation methods, just as in the `580 patent. Boer teaches that the then
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`draft IEEE 802.11 wireless LAN standard specified two different data rates. Ex.
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`1304, Boer, 1:17-22. Boer then states that “[i]t is an object of the present invention
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`to provide a method of operating a wireless local area network station which
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`enables communication between stations operating at different data rates.” Id. at
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`1:27-30. Boer teaches that the manner in which different data rates are achieved is
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`through use of different modulation methods. Boer discloses the use of differential
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`binary phase shift keying (“DBPSK”) modulation when operating at one Megabit
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`per second (“Mbps”), and differential quadrature phase shift keying (“DQPSK”)
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`modulation for two Mbps data rate transmission. Id. at 2:23-27. Boer also
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`discloses an additional type of modulation, pulse position modulation-differential
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`quadrature phase shift keying (“PPM/DQPSK”), which operates at 5 and 8 Mbps.
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`Id. at 2:41-44. Thus, just as described and claimed in the `580 patent, Boer
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`discloses a system for sending transmissions using a first modulation method and a
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`second modulation. Ex. 1318, ¶71-82.
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`2. The Prior Institution Decisions Regarding Claims 23, 25, 29-30
`and 41
`In the prior `519 Institution Decision, the Board found that Petitioner had not
`met its burden regarding claims 23 and 413 because Petitioner did not show that
`Boer teaches that the (i) “third data” of claim 23, or (ii) “third sequence” of claim
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`41 indicates that communication “has reverted to the first modulation method.”
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`The “third data” and “third sequence” recited in these claims refer to the same
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`subject matter, and are both met by the SIGNAL field 206 and SERVICE field 208
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`of Boer.
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`Regarding claim 23, the Board stated “Boer’s system may be capable of
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`transmitting a first message’s data field using either DQPSK or PPM/DQPSK
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`followed, a subsequent message’s header field using DBPSK, where the
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`subsequent message’s header field indicates that the subsequent message’s data
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`field will be transmitted using DBPSK. However, the Petition has not established
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`that the specific series of transmissions as recited in independent claim 23 is
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`explicitly disclosed by or necessarily present in Boer.” `519 Inst. Dec., p. 8. The
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`Board asserted that the same was true regarding claim 41. Id., at 12-13.
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`Based on the claim construction the Board used in the `519 Inst. Dec., this
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`concept is explicitly taught by Boer. Petitioner respectfully submits that a person
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`3 In the `519 Inst. Dec., trial was not instituted on claims 25, 29 and 30 because
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`they are dependent on claim 23.
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`having ordinary skill in the art would have understood that Boer teaches that the
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`SIGNAL 206 and SERVICE 208 fields in Boer can indicate that communication
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`has reverted to the first modulation method. Ex. 1319, ¶13. First, Boer
`indisputably teaches transmission of multiple messages 200.4 Ex. 1304, 1:33-40
`(“Therefore, according to the present invention, there is provided a method of
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`operating a wireless local area network station adapted to transmit and receive
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`messages at a plurality of data rates, wherein said messages include an initial
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`portion and a data portion, including the steps of: transmitting the initial portion of
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`a message to be transmitted by a station at a first predetermined one of a first
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`plurality of data rates…”). Indeed, a person having ordinary skill in the art would
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`have known that a communication system utilizing data packets such as message
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`200 transmits multiple sequential packets. Ex. 1319, ¶14-15. Thus, a person
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`having ordinary skill in the art would understand that the SIGNAL 206 and
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`SERVICE 208 fields of a second message 200 is the (i) “third data” of claim 23,
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`4 The APA also teaches transmission of multiple sequences. See Ex. 1301 (APA),
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`Figure 2. See also Ex. 1301 (APA), 4:4-50.
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`and (ii) “third sequence” of claim 41.5 Ex. 1319, ¶15.
`Boer also teaches each claim’s requirement that the recited “third data” and
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`“third sequence” indicate that communication “has reverted to the first modulation
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`method.” First, Petitioner respectfully submits that a person having ordinary skill
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`in the art would have known that in Boer, a first message 200 where the DATA
`field 2146 is transmitted using PPM/DQPSK (“second modulation method”) could
`be followed by a second message 200. Ex. 1319, ¶17. This second message 200,
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`by virtue of being transmitted after a first message 200, meets the requirement that
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`the “third data” and “third sequence” be transmitted “after” the previous sequences
`recited by each claim.7 Ex. 1319, ¶18.
`Second, this ordinarily skilled person would have known that the DATA 214
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`5 Each of these claims further require that the (i) “third data” of claim 23, and (ii)
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`“third sequence” of claim 41 be transmitted in the first modulation method.
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`Header 218, which includes SIGNAL 206 and SERVICE 208 fields, is always
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`transmitted using DBPSK (the “first modulation method”). Ex. 1304, 3:56-58. Ex.
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`1319, ¶16. The Board has recognized this. See `519 Inst. Dec., p. 5.
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`6 In claim 23, DATA field 214 meets the “second data” limitation. In claim 41,
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`DATA field 214 meets the “second sequence” limitation.
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`7 Claim 23 recites “transmission of a third data… after the second data.” Claim
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`41 recites “the transceiver is configured to transmit a third sequence after the
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`second sequence.”
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`field in second message 200 could be transmitted using DBPSK (“first modulation
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`method”). Ex. 1319, ¶19. Indeed, Boer explicitly teaches that DATA field 214
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`can be modulated using any of the modulation methods described therein. See e.g.,
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`Ex. 1304, 3:56-62 (“With regard to the message 200, FIG. 4, it should be
`
`understood that the preamble 216 and header 218 are always transmitted at the 1
`
`Mbps rate using DBPSK modulation. The subsequent DATA field 214, however,
`
`may be transmitted at a selected one of the four possible rates 1, 2, 5 or 8
`
`Mbps, using the modulation and coding discussed hereinabove.”). Ex. 1319,
`
`¶19.
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`Boer teaches that values contained in the SIGNAL field 206 and SERVICE
`
`field 208 indicate which modulation method will be used to transmit DATA field
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`214. Ex. 1304, 4:4-11 (“The SIGNAL field 206 has a first predetermined value if
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`the DATA field 214 is transmitted at the 1 Mbps rate and a second predetermined
`
`value if the DATA field 214 is transmitted at the 2, 5 or 8 Mbps rates. The
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`SERVICE field 208 has a first predetermined value (typically all zero bits) for the
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`1 and 2 Mbps rates, a second predetermined value for the 5 Mbps rate and a third
`
`predetermined value for the 8 Mbps rate.”). Ex. 1319, ¶20.
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`Thus, when transmitting the first message 200 in the sequence, DATA field
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`214 will be modulated in PPM/DQPSK (“second modulation method”) as
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`indicated by SIGNAL field 206 containing a second predetermined value while
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`SERVICE field 208 contains a second (or third) predetermined value. See Ex.
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`1304, 4:4-11. Ex. 1319, ¶21. When transmitting the second message, the DATA
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`field 214 reverts to DBPSK (“first modulation method”) as indicated by SIGNAL
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`field 206 containing a first predetermined value while the SERVICE field 208
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`contains a first predetermined value, which Boer states is “typically all zero bits.”
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`See Ex. 1304, 4:4-11. Ex. 1319, ¶22. By placing the first predetermined value in
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`SIGNAL field 206 and the first predetermined value in SERVICE field 208, these
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`two fields indicate that transmission of the DATA field 214 “has reverted to the
`
`first modulation method,” as required by claims 23, 25, 29-30 and 41. See Ex.
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`1319, ¶23.
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`The following figure shows the location in two messages 200 in Boer of
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`terms in claims 23 and 41. It also shows how Boer uses the claimed modulation
`
`methods:
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`Ex. 1319, ¶24.
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`Because Boer teaches that DATA field 214 can be transmitted with either
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`DBPSK, DQPSK, or PPM/DQPSK, a person having ordinary skill in the art would
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`have known, and found it obvious, that a transmitted message 200 in which DATA
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`field 214 was transmitted using PPM/DQPSK could be followed by a message 200
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`where the DATA field 214 is transmitted using DBPSK. Ex. 1319, ¶25. Indeed,
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`Boer specifies that such a reversion would occur if ACK messages are not received
`
`correctly. Ex. 1304, Fig 7 (block 522) and 7:41-51 (“Returning to block 508, if an
`
`ACK message is not received correctly and within the predetermined time interval,
`
`then the flowchart proceeds to block 522 where the SC count value is reset to zero
`
`and the data rate is decremented (if the minimum data rate is not already being
`
`used)….”). See the annotated Fig. 7 (Ex. 1304):
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`See also Id. at 8:6-9 and Ex. 1319, ¶25. A person of ordinary skill in the art would
`
`have understood that ACK messages may not be received correctly when channel
`
`conditions change for the worse, such as when the transceivers are moved apart
`
`from one another or when interference increases. Ex. 1319, ¶26. Boer discloses
`
`that under such conditions, “the data rate is decremented.” Based on the flow chart
`
`in Fig. 7 of Boer, reprinted above, it is seen that if enough ACK messages are not
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`received correctly, the data rate may be decremented until the data rate reaches 1
`
`Mbps, which is transmitted using DBPSK. Ex. 1319, ¶26. Whenever this happens,
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`the SIGNAL and SERVICE fields indicate that communication “has reverted to the
`
`first modulation method,” thereby meeting the “reverted” limitation required by
`
`claims 23, 25, 29-30 and 41. Ex. 1319, ¶27.
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`Moreover, a person having ordinary skill in the art would have known, and
`
`found it obvious, that following routine events such as an introduction of noise in
`
`the communications channel, the SIGNAL field 206 and SERVICE field 208
`
`would have contained values indicating that communication “has reverted to the
`
`first modulation method,” as required by claims 23, 25, 29-30 and 41. Ex. 1319,
`
`¶28.
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`According to Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966), the
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`scope and content of the prior art, the differences between the claimed invention
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`and the prior art, and the level of ordinary skill in the prior art must be evaluated
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`when det
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