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`Paper No. 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`QUALCOMM INCORPORATED
`
`Petitioner
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`
`Patent Owner
`
`
`
`CASE NO. IPR2020-00510
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`U.S. PATENT 8,023,580
`
`
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. §312
`
`
`98867846.7
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`Patent No. 8,023,580
`IPR2020-00510
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`PETITIONER’S EXHIBIT LIST
`
`Description
`No.
`1001 U.S. Patent No. 8,023,580 (“’580 Patent”)
`1002 Declaration of Dr. John Villasenor (“Villasenor Decl.”)
`1003 U.S. Patent No. 6,132,306 (“Trompower”)
`1004 U.S. Patent No. 5,029,183 (“Tymes”)
`1005 U.S. Patent No. 5,491,832 (“Malkamaki”)
`1006 U.S. Patent No. 8,457,228 (“’228 Patent”)
`1007 U.S. Patent No. 5,950,124
`1008
`Theodore S. Rappaport, Wireless Communications: Principles &
`Practice (“Rappaport”)
`Fuqin Xiong, Digital Modulation Techniques (“Xiong”)
`1009
`1010 U.S. Patent No. 5,381,449
`1011 U.S. Patent No. 5,909,469 (“Frodigh”)
`1012 U.S. Patent No. 5,533,004 (“Jasper”)
`1013
`Sanjay Udani et al., Power Management in Mobile Computing (a Survey)
`(“Udani”)
`1014 Huajing Fu et al., Experimental Test and Evaluation of a GMSK Chipset
`Compatible With the GSM and PCS Standards (“Fu”)
`1015 Amit Bodas et al., Low Complexity GSM Modulator for Integrated
`Circuit Implementations (“Bodas”)
`1016 Robert K. Morrow, Bluetooth: Operation and Use (“Morrow”)
`1017
`Jennifer Bray et al., Bluetooth: Connect Without Cables (“Bray”)
`1018 Kursat Tekbiyik, Robust and Fast Automatic Modulation Classification
`With CNN Under Multipath Fading Channels (“Tekbiyik”) and
`Declaration of Jason Guerrero Regarding Tekbiyik
`File Wrapper, U.S. Patent No. 8,023,580 (“’580 Patent”)
`IPR2014-00514, Briefing and Decisions
`IPR2014-00515, Briefing and Decisions
`
`1019
`1020
`1021
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`Patent No. 8,023,580
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`1029
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`1030
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`1031
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`1032
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`Description
`No.
`IPR2014-00518, Briefing and Decisions
`1022
`IPR2015-00519, Briefing and Decisions
`1023
`IPR2015-00114, Briefing and Decisions
`1024
`IPR2015-00118, Briefing and Decisions
`1025
`1026 OMITTED
`1027 Reexamination No. 90/013,808 File History
`1028
`Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., Claim
`Construction Order
`Rembrandt Wireless Technologies, LP v. Apple Inc., Claim Construction
`Order
`Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., Trial
`Transcript
`Rembrandt Wireless Technologies, LP v. Samsung Electronics Co.,
`Rembrandt’s Appeal Brief
`Rembrandt Wireless Technologies, LP v. Broadcom Inc., Order Denying
`Motion to Dismiss
`1033 Affidavit of Christopher Butler regarding Exhibit 1013
`1034 Declaration of Gerard P. Grenier regarding Exhibit 1015
`1035 Declaration of William Johnson regarding Exhibits 1008, 1009, and 1017
`1036 Declaration of Mike Strawn regarding Exhibit 1015
`1037 Declaration of Stacy Troubh regarding Exhibits 1014 and 1016
`1038 OMITTED
`1039
`Specification of the Bluetooth System v2.1 (“Bluetooth Specification”)
`and Declaration of Jason Guerrero Regarding Bluetooth Specification
`1040 Reexamination No. 90/007,617 File History
`1041 OMITTED
`1042 OMITTED
`1043 OMITTED
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`Description
`No.
`1044 OMITTED
`1045 OMITTED
`1046 OMITTED
`1047 OMITTED
`1048 OMITTED
`1049 OMITTED
`1050 OMITTED
`1051
`IPR2020-00033, Petition
`1052
`IPR2020-00034, Petition
`1053 OMITTED
`1054 OMITTED
`1055 Curriculum vitae of Dr. John Villasenor
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION ...................................................................................... 1
`I.
`II. MANDATORY NOTICES ........................................................................ 2
`A.
`Real Party in Interest (37 C.F.R. §42.8(b)(1)) ................................. 2
`B.
`Related Matters (37 C.F.R. §42.8(b)(2)) ......................................... 2
`C.
`Lead and Back-Up Counsel (37 C.F.R. §42.8(b)(3)) ...................... 3
`D.
`Service Information (37 C.F.R. §42.8(b)(4)) .................................. 3
`III. GROUNDS FOR STANDING (37 C.F.R. §104(A)) ............................... 3
`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ........................................................................... 4
`A.
`Claims for Which Review is Requested (37 C.F.R.
`§42.104(b)(1)) .................................................................................. 4
`Statutory Grounds of Challenge (37 C.F.R. §42.104(b)(2)) ........... 4
`B.
`The Relied-Upon Prior Art Is Not Cumulative ............................... 5
`C.
`V. ADMITTED PRIOR ART ......................................................................... 6
`VI. FIELD OF TECHNOLOGY ...................................................................... 8
`A.
`POSITA Was Familiar With Multiple Types of Modulation ......... 9
`B.
`POSITA Knew Certain Modulation Types Were Suited to
`Certain Applications and Circumstances ....................................... 11
`POSITA Knew Different Modulation Types Could Be
`Combined in One System .............................................................. 12
`
`
`
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`
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`C.
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`C.
`D.
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`E.
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`VII. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R.
`§§42.22(A)(2) AND 42.104(B)(4) .......................................................... 13
`A. Overview of the ’580 Patent .......................................................... 13
`B. Overview of Prior IPR Proceedings and Reexaminations of
`the ’580 Patent ................................................................................ 16
`Level Ordinary Skill in the Art ...................................................... 18
`Claim Construction (37 C.F.R. §42.104(b)(3)) ............................. 18
`1.
`“modulation method is of a different type” (claims 1,
`58) ......................................................................................... 18
`“master” and “slave” / “trib” (claims 1, 2, 58, and 59) ....... 23
`2.
`It Is Reasonably Likely That the Challenged Claims Are
`Invalid ............................................................................................. 25
`1.
`Ground 1: Claims 2 and 59 Are Obvious Over
`Trompower ........................................................................... 26
`Ground 2: Claims 2 and 59 Are Obvious Over
`Trompower in view of Tymes .............................................. 55
`Ground 3: Claims 2 and 59 Are Obvious Over
`Trompower in view of Malkamaki ...................................... 67
`Ground 4: Claims 2 and 59 Are Obvious Over
`Trompower in view of Tymes and Malkamaki ................... 74
`VIII. SECONDARY CONSIDERATIONS ..................................................... 77
`IX. CONCLUSION ........................................................................................ 78
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`
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`2.
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`3.
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`4.
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`TABLE OF AUTHORITIES
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`Patent No. 8,023,580
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` Page(s)
`
`Cases
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 57
`In re Katz Interactive Call Processing Patent Litig.,
`639 F.3d 1303 (Fed. Cir. 2011) .......................................................................... 21
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ....................................................................42, 61, 62, 68, 71
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 18
`Wright Med. Tech., Inc. v. Osteonics Corp.,
`122 F.3d 1440 (Fed. Cir. 1997) .......................................................................... 22
`
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`I.
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`INTRODUCTION
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`Patent No. 8,023,580
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`U.S. Patent No. 8,023,580 (“the ’580 Patent,” EX1001) claims the simple
`
`concept of a master-trib communication system1 where the master may use different
`
`modulation types. But nothing about this concept was new at the priority date.
`
`Indeed, the ’580 Patent admits that master-trib communication systems and the use
`
`of different modulation techniques were known, and the Board already found
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`unpatentable the independent claims from which the Challenged Claims depend.
`
`Furthermore, the USPTO finally rejected the Challenged Claims in ex parte
`
`reexamination. Patent Owner (“PO”) overcame that rejection after the ’580 Patent
`
`expired by urging under Phillips “different types of modulation methods” means
`
`“different families of modulation techniques, such as the FSK family of modulation
`
`methods and the QAM family of modulation methods.”
`
`As demonstrated below, however, using different families of modulation in a
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`master-trib system was well-known. For example, Trompower discloses a master-
`
`trib system and explains that, in addition to BPSK and QPSK modulation techniques,
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`other modulation techniques can be substituted or added as conditions dictate; e.g.,
`
`
`1 In Rembrandt Wireless Techs., LP v. Broadcom Inc., the Court found the term
`
`“slave” to be unnecessary and inaccurate, and instead used the term “tributary,”
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`except when quoting the ’580 Patent. EX1032, 2/11 n.2. Petitioner will do the same.
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`QAM modulation may be used with BPSK and QPSK. Malkamaki also discusses
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`well-known considerations for a system using both GMSK, in large cells for power
`
`efficiency, and QAM in microcells to increase spectral efficiency and bit rates.
`
`The Challenged Claims are no more than a routine and predictable
`
`combination of well-known elements. EX1002, ¶17(b). Trial should therefore be
`
`instituted and the Challenged Claims held unpatentable on the Grounds below.
`
`II. MANDATORY NOTICES
`
`A. Real Party in Interest (37 C.F.R. §42.8(b)(1))
`
`Qualcomm Incorporated is the real party-in-interest.
`
`B. Related Matters (37 C.F.R. §42.8(b)(2))
`
`The ’580 Patent is involved in the following proceedings that may affect or
`
`be affected by a decision in this proceeding:
`
`• Rembrandt Wireless Technologies, LP v. Qualcomm Incorporated,
`
`Case No. 8:19-cv-705 (C.D. Cal.);
`
`• Rembrandt Wireless Technologies, LP v. Broadcom Incorporated et al.,
`
`Case No. 8:19-cv-708 (C.D. Cal.);
`
`• Rembrandt Wireless Technologies, LP v. Apple Inc., Case No. 2:19-cv-
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`025 (E.D. Tex.);
`
`• Apple Inc. v. Rembrandt Wireless Technologies, LP., Case Nos.
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`IPR2020-00033 (P.T.A.B.) and IPR2020-00034 (P.T.A.B.).
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`U.S. Patent No. 8,457,228 (“’228 Patent”), which is a continuation of the ’580
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`Patent, is involved in the same district court proceedings and in:
`
`• Apple Inc. v. Rembrandt Wireless Technologies, LP., Case Nos.
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`IPR2020-00036 (P.T.A.B.) and IPR2020-00037 (P.T.A.B.).
`
`C. Lead and Back-Up Counsel (37 C.F.R. §42.8(b)(3))
`
`Lead counsel: Eagle Robinson (Reg. No. 61,361). Back-up counsel: Richard
`
`Zembek (Reg. No. 43,306), James Warriner (Reg. No. 72,833), and Eric Green (Reg.
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`No. 59,817).
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`D.
`
`Service Information (37 C.F.R. §42.8(b)(4))
`
`Email: rembrandt-qc-ipr@nortonrosefulbright.com
`
`Post: 98 San Jacinto Blvd., Suite 1100, Austin, Texas 78701-4255
`
`ATTN: Eagle Robinson
`
`Phone: (512) 474-5201 Fax: (512) 536-4598
`
`Petitioner consents to electronic service via:
`
`• eagle.robinson@nortonrosefulbright.com;
`
`• richard.zembek@nortonrosefulbright.com; and
`
`• rembrandt-qc-ipr@nortonrosefulbright.com.
`
`III. GROUNDS FOR STANDING (37 C.F.R. §104(a))
`
`This petition is entitled to a filing date of February 3, 2020, which is within
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`one year of April 18, 2019, the date Qualcomm was served with the complaint in
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`Case No. 8:19-cv-705. Petitioner certifies the ’580 Patent is available for inter
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`partes review (IPR), and Petitioner is not barred or estopped from requesting IPR.
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`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`
`A. Claims for Which Review is Requested (37 C.F.R. §42.104(b)(1))
`
`Claims 2 and 59 of the ’580 Patent (“Challenged Claims”).
`
`B.
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`Statutory Grounds of Challenge (37 C.F.R. §42.104(b)(2))
`
`Ground Claims Basis for Invalidity
`
`1
`2
`3
`4
`
`2, 59
`2, 59
`2, 59
`2, 59
`
`§103(a) over Trompower (EX1003)
`§103(a) over Trompower and Tymes (EX1004)
`§103(a) over Trompower and Malkamaki (EX1005)
`§103(a) over Trompower, Tymes, and Malkamaki
`
`The ’580 Patent issued September 20, 2011, from Application 12/543,910
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`(“’910 App.”), filed August 19, 2009. The ’910 App. is a continuation of
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`Application 11/774,803, which is a continuation of Application 10/412,878, which
`
`is a continuation-in-part of Application 09/205,205, which claims priority to
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`Provisional Application 60/067,562, filed December 5, 1997.
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`Thus, the earliest effective filing date (“EEFD”) the ’580 Patent could claim
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`priority to is December 5, 1997. Petitioner does not concede that the ’580 Patent is
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`entitled to this priority date, but it is pre-dated by all prior art in the Grounds.
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`Trompower issued October 17, 2000, but was filed on and is §102(e) art as of
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`March 29, 1996. EX1003.
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`Tymes is §102(b) art as of its July 2, 1991 issue date. EX1004.
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`Malkamaki is §102(b) art as of its February 13, 1996 issue date. EX1005.
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`C. The Relied-Upon Prior Art Is Not Cumulative
`
`As detailed below, the ’580 Patent has been the subject of prior reexamination
`
`and IPR petitions, some of which are pending.
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`The presently relied-upon art is distinct from and not cumulative of the art
`
`previously considered due at least to: Trompower’s disclosure of dynamically
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`changing modulation schemes based on a data rate vs. cell size tradeoff; Tymes’
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`disclosure of configuring a mobile terminal as a master and a base station as a trib
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`for power efficiency; and Malkamaki’s disclosure of a power efficiency vs.
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`bandwidth efficiency tradeoff between constant envelope and linear modulation
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`based on cell size. EX1002, ¶¶96-101.
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`Additionally, Ground 2 is not cumulative of Ground 1 for the reasons
`
`explained in Section VII.E.2 below; Ground 3 is not cumulative of Grounds 1-2 for
`
`the reasons explained in Section VII.E.3 below; and Ground 4 is not cumulative of
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`Grounds 1-3 for the reasons explained in Section VII.E.4 below.
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`V. ADMITTED PRIOR ART
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`In IPR2014-00518 (Paper No. 47), the Board’s Final Written Decision held
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`that Figures 1 and 2 and column 3, line 40 through column 4, line 50 of the ’580
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`Patent describe admitted prior art (“APA”). EX1022, 251/261.
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`
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`EX1001, Fig. 1. The APA teaches “a master modem or transceiver 24, which
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`communicates with a plurality of tributary modems (tribs) or transceivers 26-26”
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`(id., 3:40-44) and transmits training signals that “confirm that the common
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`modulation method is available,” and contain the “address of the trib with which the
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`master is establishing communication.” Id., 3:53-55, 3:62-65; see also id., 4:14-17.
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`“After completion of the training sequence 34, master transceiver 24 transmits data
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`36 to trib 26a followed by trailing sequence 38, which signifies the end of the
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`communication session.” Id., 4:18-21.
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`Thus, APA includes a master/trib configuration, first sequences indicating
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`modulation method to two different tribs, and first sequences containing destination
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`address to two different tribs. The purported difference between APA and the
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`Challenged Claims is the use of a second modulation method with a second trib.
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`VI. FIELD OF TECHNOLOGY
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`The ’580 Patent describes communication among transceivers in a master/trib
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`communication system via multiple modulation methods. EX1001, 1:19-23. After
`
`summarizing the APA, the ’580 Patent discloses in Figure 3 “[a] block diagram of a
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`master transceiver 64 in communication with a [single] trib 66 in accordance with
`
`the principles of the present invention ….” EX1001, 5:23-24.2 Master transceiver
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`64 can implement “both a type A and a type B modulation.” Id., 5:31-33.
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`As of the EEFD, modulation was known for mapping information onto an
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`electromagnetic signal for transmission. EX1002, ¶25; EX1008,3 1/102. Properties
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`of electromagnetic waves—amplitude, phase, frequency—were varied to “map”
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`2 Similarly, Rembrandt asserts infringement by devices that implement Bluetooth
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`Enhanced Data Rate (EDR), where master/trib systems may have one or many tribs
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`communicating with a master. EX1002, ¶34.
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`3 EX1008 is authentic and was publicly available no later than August 14, 1998.
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`EX1035, ¶¶6-7.
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`information to be transmitted. EX1002, ¶25; EX1008, 1/102. The underlying
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`information could be analog or digital (e.g., AM radio used an analog waveform
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`representing an audio signal to modify a carrier wave amplitude). EX1002, ¶25.
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`When transmitting digital information, ones and zeros (i.e., bits) are
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`represented by shifts to carrier wave amplitude, phase, and/or frequency. Id., ¶26.
`
`A.
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`POSITA Was Familiar With Multiple Types of Modulation
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`Several different digital modulation schemes were known as of the EEFD,
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`including, e.g.:
`
`• binary phase shift keying (BPSK);
`
`• quadrature phase shift keying (QPSK);
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`• frequency shift keying (FSK);
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`• minimum shift keying (MSK);
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`• Gaussian minimum shift keying (GMSK);
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`• quadrature amplitude modulation (QAM).
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`Id., ¶¶26-28.
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`Binary phase shift keying (BPSK) mapped one binary value to a first carrier
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`phase and the other to a second phase offset by 180 degrees. Id., ¶26; EX1008, 42-
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`43/102; EX1009,4 12/58. Quadrature phase shift keying (QPSK) mapped two bits at
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`a time, with each pair of bits mapped to one of four phases at 90-degree intervals.
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`EX1002, ¶26; EX1008, 47-48/102; EX1009, 23-25/58.
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`Frequency shift keying (FSK) conveyed binary information by varying the
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`frequency of the carrier signal. EX1002, ¶28; EX1008, 60/102, 76/102; EX1009, 3-
`
`4/58. One form of FSK, minimum shift keying (MSK), transitioned between
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`frequencies without phase discontinuities. EX1002, ¶28; EX1008, 64/102; EX1009,
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`30-31/58. A particular form of MSK, Gaussian Minimum Shift Keying (GMSK),
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`applied a “Gaussian” filter that shaped the input signal for continuous phase over
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`time (an attribute of MSK) and avoided abrupt slope transitions characterizing MSK,
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`which reduced out-of-band transmissions and interference. EX1002, ¶28; EX1008,
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`66/102, 68-69/102; EX1009, 33/58.
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`Quadrature amplitude modulation (QAM) modified both the amplitude and
`
`phase of a carrier. EX1002, ¶27; EX1008, 74/102; EX1009, 39/58. For example,
`
`16-QAM modulated groups of four bits mapped to one of 16 different
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`amplitude/phase combinations. EX1002, ¶27; EX1009, 52/58.
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`4 EX1009 is authentic and was publicly available no later than August 18, 2000.
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`EX1035, ¶¶3-4.
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`POSITA Knew Certain Modulation Types Were Suited to Certain
`Applications and Circumstances
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`B.
`
`As known by the EEFD, one important tradeoff in modulation schemes related
`
`to spectral efficiency, i.e., data rate transmitted in a given bandwidth. EX1002, ¶29;
`
`EX1008, 26/102; EX1009, 5/58. In digital modulation, a modulating signal may be
`
`represented as a time sequence of symbols, where each symbol represents x bits of
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`information. EX1002, ¶29; EX1008, 25/102. For the same symbol rate (symbols
`
`per second), a higher order modulation scheme transmitted more bits per second than
`
`a lower order modulation scheme. EX1002, ¶29. For example, 64-QAM conveyed
`
`six bits whereas BPSK conveyed one bit per symbol. Id.
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`A tradeoff of higher data rates was lower noise tolerance. Id., ¶30. Assuming
`
`the same symbol rate, BPSK was more resistant to noise than 64-QAM. Id.;
`
`EX1008, 41/102, 71/102.
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`Another tradeoff concerned power amplifiers. EX1002, ¶31. Peak-to-average
`
`power ratio (PAPR) indicated how widely the power level of a signal fluctuates. Id.;
`
`EX1010, 1:58-61. For example, QAM had a high PAPR requiring power amplifiers
`
`to operate at lower efficiencies (EX1002, ¶31; EX1010, 1:58-2:10), whereas lower-
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`PAPR modulation schemes allowed higher efficiency. EX1002, ¶31; EX1008, 59-
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`60/102.
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`Thus, modulation scheme selection and variations therebetween at the EEFD
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`depended on known factors like available bandwidth, data rate requirements, noise
`
`environment, implementation complexity, protocol, and power efficiency. EX1002,
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`¶32; see EX1008, 25-27/102. Where receiver-to-transmitter distances were small
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`and noise relatively low, high-order QAM modulation enabled greater data rates.
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`EX1002, ¶32; see EX1003, 11:19-33. Where receiver-to-transmitter distances were
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`greater and noise relatively higher, low-order modulation schemes like BPSK
`
`reduced transmission errors. EX1002, ¶32; see EX1003, 11:19-33.
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`C.
`
`POSITA Knew Different Modulation Types Could Be Combined in
`One System
`
`As known before the EEFD, a communication system could benefit from
`
`employing different modulation methods. EX1002, ¶33; EX1011, 3:22-26, 10:4-13
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`(disclosing adaptive cellular communication system using GMSK, QPSK, and
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`16QAM based upon link quality and base station capabilities); EX1012, Abstract,
`
`Fig. 4, 6:14-53 (disclosing use of QPSK, 16QAM, 64QAM, and 256QAM based on
`
`channel quality, data size, or destination). Malkamaki disclosed using different
`
`modulation schemes in large cells vs. small cells. EX1005, Abstract. GMSK was
`
`used in large cells because it had a low PAPR and allowed use of more power
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`efficient amplifiers. EX1002, ¶33; EX1005, 2:22-35, 2:41-46. And QAM was used
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`in small cells because it was more bandwidth efficient and provided higher system
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`capacity. EX1002, ¶33; EX1005, 1:38-43, 2:27-35, 2:46-48.
`
`VII. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R.
`§§42.22(a)(2) AND 42.104(b)(4)
`
`A. Overview of the ’580 Patent
`
`The purported invention is a system as shown in Figure 3, where a master
`
`transceiver 64 can transmit and receive data using different modulation methods—
`
`“type A” and “type B” modulation (EX1001, 5:23-33):
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`Id., Fig. 3. Master 64 can communicate with Tribs, e.g., trib 66, which uses either
`
`type A modulation (i.e., type A trib) or type B modulation (i.e., type B trib) (both
`
`“type X” in Figure 3). Id., 5:34-46.
`
`The master uses “incompatible modulation methods” by alternating between
`
`type A modulation to type A tribs, and type B modulation to type B tribs. See id.,
`
`2:55-57, 5:57-6:62.
`
`To switch from type A to type B modulation, master 64 transmits a training
`
`sequence in which type A tribs are “notified of an impending change to type B
`
`modulation.” Id., 6:3-6. Using type B modulation, the master then transmits data
`
`with an address in sequence 108 destined for a particular type B trib 66b. Id., 6:8-
`
`12. “After completing transmission sequence 108, master transceiver 64 transmits
`
`a trailing sequence 114 using type A modulation thus notifying all type A tribs 66a
`
`that type B modulation transmission is complete.” Id., 6:16-19.
`
`Figure 5 conceptually illustrates a master modem communicating with Type
`
`A trib 66a and Type B trib 66b:
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`
`“fret: 2
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`Id., Fig. 5, 5:59-61, 6:3-6.
`Id., Fig. 5, 5:59—61, 623-6.
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`
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`B. Overview of Prior IPR Proceedings and Reexaminations of the
`’580 Patent
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`Patent No. 8,023,580
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`The ’580 Patent has been the subject of six terminated IPR petitions (two
`
`instituted) and one ex parte reexamination.5
`
`IPR2014-00514 and IPR2014-00515: The Board denied institution because
`
`that petitioner failed to establish a Draft 802.11 Standard as a printed publication.
`
`EX1020, 149/150; EX1021, 110-111/112.
`
`IPR2014-00518 and IPR2014-00519: The Board instituted on claims 1, 4-
`
`5, 10, 13, 20–22, 32, 34, 38, 40, 43-44, 47, 54, 57-58, 61-62, 66, 70, and 76–79 based
`
`on U.S. Patent No. 5,706,728 (“Boer”) and the APA in view of Boer. EX1022,
`
`129/261; EX1023, 97/190. The Board denied institution on claims 2, 19, 23, 25, 29-
`
`30, 41, 49, 52-53, and 59 because that petitioner failed to show Boer taught
`
`indicating that communication has reverted to the first modulation method and
`
`“wherein the transceiver is configured to receive data from the intended destination
`
`in the first modulation method when the intended destination is the first type of
`
`receiver.” EX1022, 140-44/261. PO disclaimed claims 32, 34, 40, and 43-44.
`
`
`5 Three of the IPR petitions (IPR2014-00514, IPR2014-00518, and IPR2015-00114)
`
`and the ex parte reexamination sought review of the Challenged Claims.
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`EX1023, 180/190. Final Written Decisions held all remaining instituted claims
`
`unpatentable. EX1022, 240/261; id.
`
`IPR2015-00114 and IPR2015-00118: These petitions challenged claims 2,
`
`19, 23, 25, 29-30, 41, 49, 52-53, and 59—also based on Boer and the APA in view
`
`of Boer—and sought joinder with IPR2014-00518 and IPR2014-00519. EX1024,
`
`6/127 n.1, 8/127; EX1025, 6/107 n.1, 8/107. The Board denied institution because
`
`these petitions presented “the same or substantially the same prior art or arguments”
`
`as IPR2014-00518 and -00519. EX1024, 125-26/127; EX1025, 106/107.
`
`Reexamination No. 90/013,808: The examiner issued a final rejection of
`
`claims 2 and 59 as unpatentable over several prior art combinations. EX1027 at 749-
`
`760/1314. The ’580 Patent expired after PO appealed, triggering Phillips
`
`construction instead of BRI. Id., 1296/1314. Claims 2 and 59 were then confirmed
`
`because the USPTO determined the prior art at issue did not teach “at least two types
`
`of modulation methods” under a Phillips construction. Id., 1306/1314.
`
`The ’580 Patent is the subject of two pending inter partes review petitions
`
`filed by a different petitioner: IPR2020-00033 and IPR2020-00034. Preliminary
`
`Responses have not been filed as of this petition’s filing date, and institution
`
`decisions are due no later than May 2020.
`
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`
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`C. Level Ordinary Skill in the Art
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`Patent No. 8,023,580
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`POSITA would have a B.S. degree in Electrical Engineering or closely-related
`
`field, as well as two years of academic or industry experience in the communications
`
`field. EX1002, ¶¶53-58. More work experience could compensate for less
`
`education, and vice versa. Id., ¶56. POSITA would have been familiar with the
`
`prior art—including various modulation types and the ability to mix modulation
`
`types in a single system—summarized in Section VI above. Id.
`
`D. Claim Construction (37 C.F.R. §42.104(b)(3))
`
`Claims are given their ordinary and customary meaning (37 C.F.R
`
`§42.100(b)), which “is the meaning that the term would have to a [POSITA] at the
`
`time of the invention,” unless the specification provides a special meaning. Phillips
`
`v. AWH Corp., 415 F.3d 1303, 1313-1316 (Fed. Cir. 2005) (en banc). Petitioner
`
`does not assert that any of the following terms should be construed as means-plus-
`
`function terms, or concede the following constructions would satisfy §112.
`
`1.
`
`“modulation method is of a different type” (claims 1, 58)
`
`“Modulation method is of a different type” should be construed as “different
`
`families of modulation techniques, such as the FSK family of modulation methods
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`and the QAM family of modulation methods, wherein different families may have
`
`overlapping characteristics.”6 EX1002, ¶¶64-70.
`
`In previous litigation against Samsung (“Samsung Litigation”) and pending
`
`litigation against Apple (“Apple Litigation”),
`
`the district court construed
`
`“modulation method [] of a different type” as “different families of modulation
`
`techniques, such as the FSK family of modulation methods and the QAM family of
`
`modulation methods.” EX1028, 29/57; EX1029, 18/19. The district court relied on
`
`patentee’s following statement during prosecution of the ’910 App.:
`
`[T]he language of independent claim 1 has been clarified to refer to two
`types of modulation methods, i.e., different families of modulation
`techniques, such as the FSK family of modulation methods and the
`QAM family of modulation methods.
`
`EX1019, 140/432 (emphasis in original).
`
`Rembrandt subsequently argued to the jury in Samsung that the district court’s
`
`construction means “different families of modulation techniques” may not have any
`
`overlapping characteristics—i.e., no commonality in phase, frequency, and/or
`
`amplitude variation, even if other aspects differ. EX1030, 18:13-24. This is relevant
`
`
`6 In IPR2014-00518, the Board applied the BRI standard and construed the term to
`
`mean “modulation methods that are incompatible with one another.” EX1022,
`
`250/261. Petitioner would not object to this construction.
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`to Grounds 1 and 2, which assert that BPSK and QAM are the two modulation
`
`methods, because BPSK and QAM both vary the phase of the signal.7
`
`During IPR2014-00518, Rembrandt argued that “two modulation methods
`
`that are different in one characteristic but the same in another, e.g., one varying phase
`
`and amplitude and the other varying frequency and amplitude, would be regarded as
`
`belonging in the same family.” EX1022, 249/261. The Board rejected that
`
`argument, holding “[s]uch an understanding of the classification or categorization of
`
`‘family’ in case of partial overlap was not a part of any representation during
`
`prosecution history, but presented for the first time by counsel for PO during oral
`
`argument.” Id. While under the BRI standard, the Board’s analysis is also
`
`dispositive under Phillips: The Board found that the ’580 Patent describes “Type A
`
`and Type B modulation methods” without associating “directly any particular
`
`modulation method with a Type A or a Type B method” and does “not draw
`
`distinctions between ‘families’ of modulation techniques directed to differences in
`
`modulation with respect to amplitude, phase, or frequency.” Id. Rather, the ’580
`
`Patent draws “distinctions between relatively expensive high performance
`
`techniques and relatively inexpensive low performance techniques.” Id.
`
`
`7 While not necessary to resolve Grounds 1 and 2 in Petitioner’s favor, Petitioner’s
`
`construction will greatly simplify the proceedings and aid the Board.
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`The Board ultimately held that “contrary to Patent Owner’s construction, two
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`modulation methods that are based on varying the same one of the frequency,
`
`amplitude, or phase of the carrier wave may be different ‘types’ of modulation
`
`methods.” Id. Rembrandt did not appeal this Final Written Decision.
`
`The specification never distinguishes between types of modulation methods
`
`based on the absence of “overlapping characteristics.” Rather, the only modulation
`
`types expressly disclosed in the specification do have overlapping characteristics;
`
`each of “quadrature amplitude modulation (QAM), carrier amplitude and phase
`
`(CAP) modulation, [and] discrete multitone (DMT) modulation” (EX1001, 2:1–5)
`
`vary amp
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