Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Inventor: Gordon F. Bremer
`
`US. Patent No. 8,023,580
`
`Formerly Application No. 12/543,910
`
`Issue Date: September 20, 2011
`
`Filing Date: August 19, 2009
`
`Former Group Art Unit: 2611
`Former Examiner: Dac Ha
`
`OOOOOOOOOOOOOOOOOOOOO
`
`Attorney Docket No.: 110797-0019-501
`Customer No.: 28120
`
`Requesters: Samsung Electronics Co., Ltd.,
`
`Samsung Electronics America, Inc.
`
`For:
`
`SYSTEM AND METHOD OF COlVIMUNICATION USING AT LEAST TWO
`
`MODULATION METHODS
`
`MAIL STOP EXPARTE REEXAM
`
`Central Reexamination Unit
`
`Office of Patent Legal Administration
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`REQUEST FOR EX PARTE REEXAMINATION OF US. PATENT NO. 8,023,580
`
`PURSUANT TO 35 U.S.C. § 302, 37 C.F.R. § 1.510
`
`Pursuant to 35 U.S.C. § 302 and 37 C.F.R. § 1.510, Samsung Electronics Co., Ltd.
`
`and Samsung Electronics America, Inc. (the “Requesters”) hereby request ex parle reexamination
`
`of claims 2 and 59 (the “Challenged Claims”) of US. Patent No. 8,023,580 (“the ‘580 patent”),
`
`which issued from US. Patent Application Serial No. 12/543,910, filed August 19, 2009 (“the
`
`‘910 Application”).
`
`(A complete copy of the ‘580 patent is attached as Exhibit A, a copy of the
`
`‘910 application as filed is attached as Exhibit B, and a copy of the prosecution history for the
`
`‘580 patent (other than the prior art of record) is attached as Exhibit C (“the ‘580 Prosecution
`
`History”)). Pursuant to 37 C.F.R. § 1.510(b)(6), Requesters certify that the statutory estoppel
`
`Qualcomm Incorporated
`Exhibit 1027
`
`Page 1 of 1314
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`Qualcomm Incorporated
`Exhibit 1027
`Page 1 of 1314
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`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`provisions of 35 U.S.C. §§ 315(e)(1) or 325(e)(1) do not prohibit Requesters from filing this
`
`Request.1
`
`Requesters assert herein that substantial new questions of patentability exist as to claims
`
`2 and 59 of the ‘580 patent based on a prior art reference, Snell, filed on March 17, 1997 and
`
`issued on November 9, 1999, that was not considered during original prosecution, along with
`
`various additional references: four references that were and two references that were not before
`
`the United States Patent and Trademark Office (“Patent Office” or “USPTO”) during the original
`
`prosecution or inter partes review of the ‘580 patent. As detailed below, claims 2 and 59 of the
`
`‘580 patent are rendered obvious by the references cited herein by the Requesters.2
`
`Because the challenged patent is involved in pending litigation, Requesters respectfully
`
`request that, consistent with 35 U.S.C. § 305 and MPEP § 2261, all proceedings associated with
`
`this
`
`reexamination be
`
`conducted not only with the
`
`“special dispatch”
`
`accorded all
`
`Pursuant to 37 C.F.R. § 1.565, the Requesters provide notice that the Patent Owner
`1
`Rembrandt Wireless Technologies, LP (“Rembrandt” or “Patent Owner”) has asserted the ‘580
`patent in Rembrandt Wireless Techs, LP v. Samsung Elecs C0., CA. No. 2:13-cv-00213-IRG
`(ED. Tex.) (the “Rembrandt Litigation”). On February 13, 2015, a jury found that claims 2 and
`59 of the ‘580 patent were infringed and, on the record then before it, not invalid. Rembrandt
`Wireless Techs, LP v. Samsung Elecs C0., CA. No. 2:13-cv-00213-JRG, Dkt. 288 (ED. Tex.).
`The issue of post-trial relief was severed and assigned a separate case number, styled as
`Rembrandt Wireless Techs, LP v. Samsung Elecs C0., CA. No. 2:16-cv-00170-JRG, Dkt. 2
`(ED. Tex.). The defendants in the above litigation have appealed the decision to the US. Court
`of Appeals for the Federal Circuit in Rembrandt Wireless Techs, LP v. Samsung Elecs C0., No.
`2016-1729 (Fed. Cir.).
`In addition, the ‘580 patent has been involved in multiple inter partes
`reviews (lPRs) (“the Rembrandt IPRs”). Two petitions for IPR were instituted and have resulted
`in final written decisions (Samsung Elecs Co. v. Rembrandt Wireless Techs, LP, IPR2014-
`00518, Pap. 47 (Final Written Decision) (Sept. 17, 2015), Samsung Elecs Co. v. Rembrandt
`Wireless Techs, LP, IPR2014-00519, Pap. 49 (Final Written Decision) (Sept. 17, 2015)). Four
`petitions for IPR were denied (Samsung Elecs Co. v. Rembrandt Wireless Techs, LP, IPR2014-
`00514, Pap. 18 (Decision on Institution) (Sept. 9, 2014), Samsung Elecs Co. v. Rembrandt
`Wireless Techs, LP, IPR2014-00515, Pap. 18 (Decision on Institution) (Sept. 9, 2014), Samsung
`Elecs Co. v. Rembrandt Wireless Techs, LP, IPR2015-00114, Pap. 14 (Decision on Institution)
`(Jan. 28, 2015), Samsung Elecs Co. v. Rembrandt Wireless Techs, LP, IPR2015-00118, Pap. 14
`(Decision on Institution) (Jan. 28, 2015)).
`
`the standard for claim interpretation during patent
`2 In the context of the present Request,
`examination as provided in MPEP § 2111 (Claim Interpretation, Broadest Reasonable
`Interpretation) is applied.
`
`ii
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`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`reexaminations, but also with the “priority over all other cases” accorded reexaminations of
`
`patents involved in litigation. MPEP § 2261.
`
`In the Rembrandt Litigation, a jury imposed a
`
`verdict of $15.7 million based in part on the jury’s verdict concerning infringement of challenged
`
`claims 2 and 59 of the ‘580 patent. As shown in this Request — based on combinations of prior
`
`art that were never previously considered by the Office — claims 2 and 59 should have never
`
`issued.
`
`In light of the Patent Owner’s demonstrated intent to assert these invalid claims, timely
`
`conduct of the requested reexamination is of particular importance to the public. 3
`
`Requesters are also seeking reexamination of US. Patent No. 8,457,228 (“the ‘228
`3
`patent”), which is a continuation of the ‘580 patent.
`
`iii
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`Page 3 of 1314
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`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`TABLE OF CONTENTS
`
`BACKGROUND OF THE REQUEST ............................................................................... 1
`
`II.
`
`SUB STANTIAL NEW QUESTIONS OF PATENTABILITY .......................................... 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`Listing of Prior Art Patents and Printed Publications ............................................. 4
`
`Statement Setting Forth Each Substantial New Question of Patentability ............. 5
`
`Background and Prosecution of the ‘580 Patent ..................................................... 7
`
`Secondary Considerations ..................................................................................... 16
`
`III.
`
`DETAILED EXPLANATION OF THE PERTINENCE AND MANNER OF
`
`APPLYING THE PRIOR ART REFERENCES TO EVERY CLAIM FOR
`
`WHICH REEXAMINATION IS REQUESTED ............................................................... 18
`
`A.
`
`The PTAB’s Constructions of the Terms “Modulation” and Different
`
`B.
`
`C.
`
`D.
`
`E.
`
`“Type[s]” of Modulation Methods ........................................................................ 18
`
`Overview of Prior Art ........................................................................................... 23
`
`SNQ-l: Unpatentability of Claims 2 and 59 Under 35 U.S.C. § 103 Over
`Snell, Yamano, and Kamerman ............................................................................ 39
`
`SNQ-2: Unpatentability of Claims 2 and 59 Under 35 U.S.C. § 103 Over
`Snell, Harris 4064.4, Harris AN9614, Yamano and Kamerman .......................... 62
`
`SNQ-3: Unpatentability of Claims 2 and 59 Under 35 U.S.C. § 103 Over
`Snell in View of Harris 4064.4, the Admitted Prior Art, Upender, Yamano,
`and Kamerman ...................................................................................................... 88
`
`IV.
`
`CONCLUSION ................................................................................................................ 120
`
`iv
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`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`TABLE OF EXHIBITS
`
`mm
`
`US. Patent No. 8,023,580 (“the ‘580 patent”)
`
`US. Application No. 12/543,910 (“the ‘910 Application”) (consecutive
`page numbers added for ease of citation)
`
`File History of US. Patent No. 8,023,580 (“the ‘580 Prosecution History”)
`(other than the prior art of record) (consecutive page numbers added for
`ease of citation)
`
`US. Patent No. 5,982,807 (“Snell”)
`
`Andren, C. et al. , Using the PRISMTM Chip Setfor Low Data Rate
`Applications, Harris Semiconductor Application Note No. AN96l4,
`March 1996 (“Harris AN9614”)
`
`HSP3824 Direct Sequence Spread Spectrum Baseband Processor, Harris
`Semiconductor File No. 4064.4, Oct. 1996 (“Harris 4064.4”) (consecutive
`page numbers added for ease of citation)
`
`Declaration of Jon Mears, Exhibit A thereto (Upender et al.,
`“Communication Protocols for Embedded Systems,” Embedded Systems
`Programming, Vol. 7, Issue 11, November 1994. — (“Upender”))
`
`US. Patent No. 6,075,814 (“Yamano”)
`
`Kamerman, A., Throughput Density Constraintsfor Wireless LANs Based
`on DSSS, IEEE 4th International Symposium on Spread Spectrum
`Techniques and Applications Proceedings, Mainz, Germany, Sept. 22-25,
`1996, pp. 1344-1350 vol.3 (“Kamerman”) (consecutive page numbers
`added for ease of citation)
`
`Office Action in File History of US. Application No. 09/205,205 (issued
`as US. Patent No. 6,614,838), mailed June 28, 2001 (consecutive page
`numbers added for ease of citation)
`
`Applicant Response in File History of US. Application No. 09/205,205
`(issued as US. Patent No. 6,614,83 8), dated Oct. 1, 2001 (consecutive
`page numbers added for ease of citation)
`
`File History of US. Patent No. 5,982,807 (other than the prior art of
`record) (consecutive page numbers added for ease of citation)
`
`Terminal Disclaimer in File History of US. Patent No. 8,023,580, dated
`Dec. 4, 2014
`
`Terminal Disclaimer in File History of US. Patent No. 8,023,580, dated
`Dec. 15, 2014
`
`
`
`
`Exhibit
`
`Exhibit A
`
`Exhibit B
`
`Exhibit C
`
`Exhibit D
`
`Exhibit E
`
`Exhibit F
`
`Exhibit G
`
`Exhibit H
`
`Exhibit I
`
`Exhibit J
`
`Exhibit K
`
`Exhibit L
`
`Exhibit M
`
`Exhibit N
`
`
`
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`

`

`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`Exhibit 0
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Ca, Ltd. el al., No.
`2: 13-cV-00213, Excerpted pages from Plaintiff Rembrandt Wireless
`Technologies, LP’s Disclosure of Asserted Claims and Infringement
`Contentions dated July 25, 2013, Exhibit C at 14, 48 (ED. Tex.)
`
`Vi
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`Page 6 of 1314
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`

`

`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`I.
`
`BACKGROUND OF THE REQUEST
`
`The ‘580 patent relates generally to “a data communications system in which a plurality
`
`of modulation methods are used to facilitate communication among a plurality of modem types.”
`
`‘580 patent at 1:19-23. According to the ‘580 patent, messages — such as those shown in the
`
`‘580 patent’s Figure 8 — can be sent on the same network using different modulation methods
`
`(e.g., type A and type B) by providing an indication in the first sequence of the message of the
`
`modulation method used for the second sequence of the message.
`
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`
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`The; 4% Mopsusémm i
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`
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`
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`
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`
`\
`
`~
`
`t..1..WWWMWWMmwwumnwnwnm
`E’hm 5°» “mum,k
`,E
`'<
`2
`w“ d’ifir‘wwb\vbv.v".\v~v.‘vs‘x‘v-vvWAWvv~\-c\V-~\v~v¢\vw4-\:
`
`.(\<\‘-\\.\vh»A\-u-(u..<(«\'\-‘.»n-
`
`.
`
`<
`
`«
`
`FIG. 8
`
`The supposed “invention” in each of the Challenged Claims was already well known and
`
`obvious to those of ordinary skill in the art at the time of the earliest claimed priority date for the
`
`‘580 patent—December 5, 1997.
`
`Indeed, in IPR2014-000518, the Board correctly found that
`
`independent claims 1 and 58 (from which claims 2 and 59 depend) are invalid as obvious in view
`
`of the prior art. Specifically, the Board correctly found that US. Patent No. 5,706,428 (“Boer”)
`
`disclosed all of the limitations of claims 1 and 58, other than the use of a master/slave
`
`relationship. The Board also correctly found that the Applicant’s admitted prior art, as reflected
`
`in the ‘580 patent specification (“APA”), demonstrated that the use of a master/slave protocol
`
`was well-known in the art, and that an article by Upender el al. (“Upender,” a copy of which is
`
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`

`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`attached as Exhibit G) provided a motivation to use a master/slave protocol when implementing
`
`Boer’s system.
`
`As discussed herein, claims 2 and 59 are rendered obvious by the combinations of cited
`
`references presented in this Request, which demonstrate that all of the elements of claims 2 and
`
`59 were well known in the art before the earliest claimed priority date of the ‘580 patent. The
`
`Snell reference cited here by Requesters discloses a transceiver capable of transmitting data
`
`packets with preamble, header, and data portions, where the preamble and header are transmitted
`
`using BPSK modulation, and the data portion is transmitted using either BPSK or QPSK
`
`modulation. Snell alternatively discloses that the preamble and header are transmitted using
`
`DBPSK modulation, and the data portion is transmitted using either DBPSK or DQPSK
`
`modulation.
`
`See, e.g., Snell at Fig. 3, 6:35-36, 6:52-63. As the PTAB correctly found in
`
`IPR2014-00518, DBPSK and DQPSK are “different types of modulation methods” in the context
`
`of ‘580 independent claims 1 and 58, and thus also of dependent claims 2 and 59.
`
`IPR2014-
`
`00518, Pap. 47 at 19, ‘580 Prosecution History at 408. Snell discloses the use of sequences in
`
`the header portion that indicate which type of modulation is being used for transmitting the data
`
`portion. See, e.g., Snell at 6:52-63. Snell also discloses (through its incorporation of Harris
`
`AN9614) the ability to use its teachings with a polled (master/slave) protocol. Harris AN9614 at
`
`3. Alternatively, it would have been obvious to a person of ordinary skill in the art (“POSITA”)
`
`to use a master/slave protocol when implementing Snell’s system based on the same Admitted
`
`Prior Art and Upender disclosures that were relied on by the PTAB in IPR2014-00518.
`
`In IPR2014-000518, the PTAB declined to institute review of dependent ‘580 claims 2
`
`and 59 based on the Board’s view that the cited prior art failed to disclose the additional
`
`limitation of those claims requiring transmission of a “third sequence .
`
`.
`
`. transmitted in the first
`
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`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`modulation method [that] indicates that communication from the master to the slave has reverted
`
`to the first modulation method.” Requesters cite herein the Kamerman reference, which
`
`demonstrates reversion to the first modulation method, required by dependent claims 2 and 59,
`
`was obvious and well-known in the art. Specifically, Kamerman discloses an automatic rate
`
`adaptation scheme for transmitting a first data packet where the data is modulated using a second
`
`modulation method, such as QPSK (corresponding to a higher data transfer rate), and next
`
`transmitting a second data packet where the data is modulated using a first modulation method,
`
`such as BPSK (corresponding to a lower data transfer rate) (i.e., to revert to the first modulation
`
`method). Kamerman at 6, 11-12.
`
`It would have been obvious to a POSITA to use Kamerman’s
`
`teaching of transmitting a first data packet where the data is modulated using a second
`
`modulation method and next transmitting a second data packet where the data is modulated using
`
`a first modulation method in implementing Snell’s system for communicating data packets
`
`modulated according to different modulation methods to advantageously maximize the data
`
`transfer rate and adapt to changing channel conditions (as also taught by Kamerman).
`
`Finally, it was well-known in the art, as demonstrated by Yamano, that packets can be
`
`advantageously addressed for an intended destination.
`
`It would have been obvious to a POSITA
`
`to use Yamano’s teaching of including a destination address in the data packet in implementing
`
`Snell’s teachings of a communication system for transmitting data packets to advantageously
`
`specify which receiver the data is intended for and to reduce processing requirements of
`
`receiving devices by allowing the receiving device to filter out packets which it does not need to
`
`demodulate.
`
`Under any proper understanding of the scope of the Challenged Claims, and certainly
`
`under the broadest reasonable construction required here, claims 2 and 59 are obvious over Snell
`
`Page 9 of 1314
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`

`

`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`in view of Yamano and Kamerman, Snell in view of Harris 4064.4, Harris AN9614, Yamano,
`
`and Kamerman, and Snell in view of Harris 4064.4, the Admitted Prior Art, Upender, Yamano,
`
`and Kamerman. Moreover, as detailed herein, if Patent Owner were to argue for a construction
`
`of the term “type” that is wholly unsupported by the intrinsic record, as it did in the cited
`
`Rembrandt Litigation and Rembrandt lPRs, these arguments should be rejected as the PTAB did
`
`in the Rembrandt IPRs. E.g., IPR2014-00518, Pap. 47 at 7-12, ‘580 Prosecution History at 396-
`
`401. Requesters respectfully submit that reexamination of both Challenged Claims should be
`
`granted, and that the Challenged Claims should be found unpatentable and cancelled for the
`
`reasons set forth herein.
`
`II.
`
`SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`Reexamination is respectfully requested for dependent claims 2 and 59 of the ‘580 patent
`
`under 35 U.S.C. § 302 and 37 CPR. § 1.510.
`
`A.
`
`Listing of Prior Art Patents and Printed Publications
`
`Pursuant to 37 CPR. § l.510(b)(3), reexamination of the Challenged Claims is requested
`
`in view of the references below and Applicant’s admitted prior art of a master/slave
`
`communication system depicted in Figures 1 and 2 and described in column 3, line 40 through
`
`column 4, line 50 of the ‘580 patent (“Admitted Prior Art”). The Snell, Harris 4064.4, Harris
`
`AN9614, Yamano, and Kamerman references were not previously cited or considered in any
`
`rejection by the Examiner during prosecution or by the Board during inter partes review of the
`
`‘580 patent and present new technological teachings that were not previously considered in
`
`connection with the ‘580 patent. Accordingly, the combinations presented in this request were
`
`never previously considered by the Office with respect to the ‘580 patent.
`
`Exhibit D:
`
`US. Patent No. 5,982,807, filed on Mar. 17, 1997 and issued on Nov. 9,
`1999, to Snell, J. (“Snell”).
`
`Page 10 of 1314
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`

`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`Exhibit E:
`
`Andren, C. et al., Using the PRISMTM Chip Set for Low Data Rate
`Applications, Harris Semiconductor Application Note No. AN9614,
`March 1996 (“Harris AN9614”).
`
`Exhibit F:
`
`HSP3824 Direct Sequence Spread Spectrum Baseband Processor, Harris
`Semiconductor File No. 4064.4, Oct. 1996 (“Harris 4064.4”).
`
`Exhibit G:
`
`et al.,
`Jon Mears, Exhibit A thereto (Upender
`Declaration of
`“Communication Protocols for Embedded Systems,” Embedded Systems
`Programming, Vol. 7, Issue 11, November 1994. — (“Upender”)).
`
`Exhibit H:
`
`US. Patent No. 6,075,814, filed on May 9, 1997 and issued on Jun. 13,
`2000, to Yamano, L., et al. (“Yamano”).
`
`Exhibit 1:
`
`Kamerman, A., Throughput Density Constraints for Wireless LANs Based
`on DSSS,
`IEEE 4th International Symposium on Spread Spectrum
`Techniques and Applications Proceedings, Mainz, Germany, Sept. 22-25,
`1996, pp. 1344-1350 vol.3 (“Kamerman”).
`
`A Form SB-08 and copies of the cited references are submitted herewith.
`
`B.
`
`Statement Setting Forth Each Substantial New Question of Patentability
`
`This Request presents new issues of patentability that were not considered during
`
`prosecution or prior inter partes review of the ‘580 patent. As described in more detail in this
`
`section, the Snell, Harris 4064.4, Harris AN9614, Yamano, and Kamerman references provide
`
`new technological teachings and were not cited by the Applicant or the Examiner or otherwise
`
`considered during prosecution of the ‘580 patent or during inter partes review of the ‘580 patent.
`
`Notably, Snell, which is included in every combination of references proposed herein by the
`
`Requesters, clearly discloses transmitting data packets where the preamble and header are always
`
`modulated using a first modulation method and indicate whether the data portion of the data
`
`packet is modulated using a first modulation method or a second modulation method, a limitation
`
`that is fundamental to each of the Challenged Claims.
`
`In addition, Harris 4064.4 (incorporated
`
`by Snell) discloses transmitting data packets where the preamble and header are always
`
`modulated using a first modulation method and indicate whether the data portion of the data
`
`packet is modulated using a first modulation method or a second modulation method. Harris
`
`Page 11 of1314
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`

`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`AN96l4 (incorporated by Snell) discloses that the system described in Snell may operate
`
`according to a polled (master/slave) protocol. Yamano, also included in each proposed
`
`combination of references, clearly discloses including a destination address in the preamble
`
`portion of a data packet. And Kamerman, also included in each proposed combination of
`
`references, clearly discloses transmitting a first data packet where the data is modulated using a
`
`second modulation method, such as QPSK (corresponding to a higher data transfer rate), and
`
`next transmitting a second data packet where the data is modulated using a first modulation
`
`method, such as BPSK (corresponding to a lower data transfer rate) (i.e., to revert to the first
`
`modulation method), which is required by dependent claims 2 and 59 and is the only limitation
`
`of the Challenged Claims that the Board previously found was not disclosed by the prior art that
`
`was then before the Board.
`
`Although the Board previously considered Applicant’s admission that master/slave
`
`communication systems were known in the prior art to the ‘580 patent and Upender’s disclosure
`
`of motivation to use a master/slave communication system, these teachings were never before
`
`considered in connection with the Snell, Harris 4064.4, Harris AN96l4, Yamano, or Kamerman
`
`references. Thus, the questions of patentability raised in this Request were not raised during the
`
`prosecution of the application that led to the ‘580 patent or during inter partes review of the ‘580
`
`patent. As described below, in combination these new references disclose that all the limitations
`
`of the Challenged Claims were well-known and obvious at the time the application for the ‘580
`
`patent was filed.
`
`Accordingly, the references raise the following substantial new questions of patentability
`
`that were not considered during the original prosecution or prior inter partes review of the ‘580
`
`patent:
`
`Page 12 ofl3l4
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`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
`
`1. SNQ-l: A substantial new question of patentability as to claims 2 and 59 is raised by
`
`Snell in view of Yamano and Kamerman.
`
`2. SNQ-2: A substantial new question of patentability as to claims 2 and 59 is raised by
`
`Snell in view of Harris 4064.4, Harris AN96l4, Yamano, and Kamerman.
`
`3. SNQ-3: A substantial new question of patentability as to claims 2 and 59 is raised by
`
`Snell
`
`in view of Harris 4064.4,
`
`the Admitted Prior Art, Upender, Yamano, and
`
`Kamerman.
`
`In light of the new grounds raised, the combinations of the above references render the
`
`Challenged Claims invalid.
`
`C.
`
`Background and Prosecution of the ‘580 Patent
`
`1.
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`The ‘580 Patent
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`The
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`‘580
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`patent
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`is
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`directed
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`to
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`the
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`“fields
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`of data
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`communications
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`and
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`modulator/demodulators (modems), and, more particularly, to a data communications system in
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`which a plurality of modulation methods are used to facilitate communication among a plurality
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`of modem types.”
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`‘580 patent at 1:19-23.
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`The ‘580 patent describes a problem with
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`communications systems where “communication between modems is generally unsuccessful
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`unless a common modulation method is used.” Id. at 1:45-47.
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`In the context of a “multipoint
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`architecture” for a network, which utilizes a “master” modem and at least two “tributary” (or
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`“trib”) modems, id. at 1:56-58, the ‘580 patent notes that where “one or more of the trib modems
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`are not compatible with the modulation method used by the master, those tribs will be unable to
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`receive communications from the master,” id. at 1:58-61.
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`Because of these issues, the ‘580 patent asserts that “communication systems comprised
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`of both high performance and low or moderate performance applications can be very cost
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`inefficient to construct.” Id. at 1:66-21. The ‘580 patent asserts that the solution used at the
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`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
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`time to overcome incompatible modulation methods was the use of high performance modems
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`for all users, which resulted in higher costs.
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`Id. at 2:8-16. Thus, the ‘580 patent asserts that
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`“what is sought, and what is not believed to be provided by the prior art, is a system and method
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`of communication in which multiple moa'ulation methods are used to facilitate communication
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`among a plurality of modems in a network, which have heretofore been incompatible.” Id. at
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`2: 17-20 (emphasis added).
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`The purported invention of the ‘580 patent is a system like that shown in Figure 3, in
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`which a master transceiver 64 is capable of transmitting and receiving data using different
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`modulation methods (e.g., what the patent identifies as “type A” modulation and “type B”
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`modulation).
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`Id. at 5:23-33. Master transceiver 64 can communicate with tribs, e.g., trib 66,
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`each of which communicates using either a type A or type B modulation method (shown as “type
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`X” in Figure 3), but not both.
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`Id. at 5:34-46. Figure 4 shows an exemplary network in which
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`master transceiver 64 can communicate using either a type A or type B modulation method.
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`161'.
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`at 5:47-51.
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`Trib 66a communicates using a type A modulation method, while trib 66b
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`communicates using a type B modulation method.
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`161'.
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`Qw
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`sat
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`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
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`‘580 patent, Figure 4.
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`According to the ‘580 patent, the master transceiver can communicate with both type A
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`and type B tribs by providing in the first sequence (i.e., header) of a message an indication of the
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`modulation method that is used for the second sequence (i.e., data portion) of the message. Id. at
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`551-6: 12. For example, a master can communicate with a type A trib by transmitting a training
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`sequence using type A modulation followed by a second sequence also in type A modulation. Id.
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`at 6:49-54. To send a message to a type B trib (that uses type B modulation), the master
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`transmits a training sequence, again using type A modulation, that provides notification of an
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`impending change to type B modulation.
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`Id. at 63-6. The second sequence is then transmitted
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`using type B modulation. Id. at 68-15.
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`2.
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`Prosecution History of the ‘580 Patent
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`The ‘580 patent issued from US. Application No. 12/543,910. The ‘910 Application was
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`a continuation of US. Application No. 11/774,803, which issued as US. Patent No. 7,675,965.
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`The ‘803 Application was a continuation of US. Application No. 10/412,878, which issued as
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`US. Patent No. 7,248,626. The ‘878 Application was a continuation-in-part of US. Application
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`No. 09/205,205, which became US. Patent 6,614,838. The ‘580, ‘965, ‘626, and ‘838 patents all
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`claim the benefit of the filing date of US. Provisional App. No. 60/067,562, filed Dec. 5, 1997.
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`The ‘910 Application that eventually matured into the ‘580 patent was filed on August 19,
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`2008 with 100 claims.
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`‘910 Application at 32-41.
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`In an September 1, 2010 Office Action, a
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`number of claims 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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`‘580
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`Prosecution History at 72-77. Application claim 1, which would issue as claim 1, was one such
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`claim that was deemed allowable but for the antecedent basis issue.
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`Id. at 72, 77.
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`In a March 1,
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`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
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`2011 response (“3/1/2011 Reply”), Patent Owner amended many pending claims,
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`including
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`application claims 1 and 2 (which would issue as claims 1 and 2, respectively), cancelled other
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`claims, and added forty-eight new claims. Id at 127-3 8.
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`Included within the added claims were
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`claims 123 and 124, which would issue as claims 58 and 59, respectively.
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`Id. at 135-36. On
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`March 10, 2011, Patent Owner ref11ed the claims in response to a Notice Of Non-Compliant
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`Amendment. Id at 167-81.
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`In its 3/1/2011 Reply, Patent Owner amended claim 1, even though
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`it had been allowed. Patent Owner offered the following explanation:
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`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,
`37-3 8, 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].
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`Id at 140. Patent Owner later relied on this post-allowance statement—made 14 years after the
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`provisional application to which the ‘228 patent claims priority was f11ed—to assert during
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`litigation that the meaning of “different types” of modulation methods referred to “different
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`families” of modulation methods that did not have any overlapping characteristics. The court in
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`the Rembrandt Litigation construed this claim term. Rembrandt Wireless Techs, LP v. Samsung
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`Elecs. Co., Ltd, No. 2:13-cv-00213-JRG—RSP, Dkt. 114, Claim Construction Order (ED. Tex.
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`July 10, 2014). After the court issued its claim construction order, the PTAB also construed this
`((4
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`term, correctly rejecting Rembrandt’s argument, explaining that
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`[i]t is inappropriate to limit a
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`broad definition of a claim term based on prosecution history that
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`is itself ambiguous.’”
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`IPR2014-00518, Pap. 47 at 9 (quoting Inverness Med Switz. GmbH v. Warner Lambert C0., 309
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`F.3d 1373, 1382 (Fed. Cir. 2002)), ‘580 Prosecution History at 398.
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`Request for Ex Parte Reexamination, US. Patent No. 8,023,580
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`On May 11, 2011, Patent Owner filed a paper making further amendments to pending
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`claims 1 and 95. Id at 187-200. The application was allowed on July 22, 2011, although no
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`Statement of Reasons for Allowance was provided.
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`Id at 249-74. On July 26, 2011, Patent
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`Owner filed an Amendment After Allowance further amending claims that, after entry, issued as
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`claims 40, 49, and 54. Id at 275-90. The ‘580 patent issued on September 20, 2011. Id at 306.
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`In December 2014, Rembrandt Wireless, LP, the assignee of record, disclaimed claims 24,
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`26-28, 31-37, 39-40, 42-46, and 48. Exs. M and N, ‘580 Prosecution History at 363, 366.
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`3.
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`Inter Partes Review of the ‘580 Patent (IPR2014-00518)
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`On March 20, 2014, Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
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`Samsung Telecommunications America, LLC, and Samsung Austin Semiconductor, LLC filed a
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`petition for interparles review of claims 1-2, 4-5, 10, 13, 19-22, 49, 52-54, 57-59, 61-62, 66, 70,
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`and 76-79 based on US. Patent No. 5,706,428 (“Boer”) in view of Applicant’s admitted prior art
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`of a master/slave communication system, as reflected in the ‘580 patent specification.
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`IPR2014-
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`00518, Pap. 1 (Mar. 20, 2014). On September 23, 2014, the PTAB instituted inter partes review
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`of claims 1, 4, 5, 10, 13, 20—22, 54, 57, 58, 61, 62, 66, 70, and 76-79 but declined to institute
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`review of claims 2, 19, 49, 52, 53, and 59.
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`IPR2014-00518, Pap. 16 at 2 (Sept. 23, 2014), ‘580
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`Prosecution History at 319.4 The PTAB did not institute review of claims 2 and 59 (Boer in
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`view of Applicant’s admitted prior art as reflected in the ‘580 patent specification), finding that
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`the petitioner did not show that the prior art taught the dependent limitation of these claims,
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`which requires “‘indicat[ing]’ that communication from the master to the slave has reverte