Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`Filed on behalf of Rembrandt Wireless Technologies, LP
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`By:
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`
`
`
`
`
`
`Jill M. Browning (jbrowning@gbpatent.com)
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, VA 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`QUALCOMM INCORPORATED
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner.
`____________
`
`Case IPR2020-00510
`U.S. Patent No. 8,023,580
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`
`
`
`

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`
`
`I.
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`II.
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`TABLE OF CONTENTS
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`INTRODUCTION ....................................................................................... 1
`
`BACKGROUND ......................................................................................... 1
`
`A. Master/Slave Art Prior To The ’580 Patent ........................................ 1
`
`B.
`
`1.
`
`2.
`
`The Claimed Inventions ..................................................................... 6
`
`Problems Identified By The ’580 Patent ............................................ 6
`
`The ’580 Patent’s Solution To The Identified Problems ..................... 8
`
`III. A PERSON HAVING ORDINARY SKILL IN THE ART .........................15
`
`IV. CLAIM CONSTRUCTION ........................................................................15
`
`A.
`
`B.
`
`C.
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`“Modulation Method Is Of A Different Type” ..................................15
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`“Master” And “Slave”/“Trib” ...........................................................21
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`“Addressed For An Intended Destination” ........................................26
`
`V.
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`SUMMARY OF THE ARGUMENT ..........................................................29
`
`VI. ARGUMENT..............................................................................................31
`
`A.
`
`B.
`
`C.
`
`D.
`
`Petitioner Has Erroneously Analogized Trompower’s Multiple Mobile
`Terminals To “Masters” And Trompower’s Base Stations To
`“Slaves/Tribs” ...................................................................................31
`
`Petitioner Has Erroneously Asserted That Trompower’s Registration
`Process Involves A Master/Slave Relationship .................................37
`
`Trompower Would Not Have Suggested Including An Address Of A
`Base Station (Alleged Slave/Trib) Transceiver In An Information
`Packet ...............................................................................................41
`
`Trompower And The ’580 Patent Use Addressing In A Fundamentally
`Different Way ...................................................................................50
`
`E.
`
`Ground 1 Based On Trompower .......................................................53
`
`1.
`
`2.
`
`Trompower Would Not Have Suggested The Claimed “Master”
`Or “Slave/Trib” Limitations ....................................................53
`
`Trompower Would Not Have Suggested The Claimed
`“Addressed For An Intended Destination” Limitation .............56
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`U.S. Patent No. 8,023,580
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`3.
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`Trompower Would Not Have Suggested The “Third Sequence
`Reversion Limitation” .............................................................61
`
`F.
`
`Ground 2 Based On Trompower and Tymes .....................................64
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`G. Ground 3 Based On Trompower And Malkamaki .............................67
`
`H. Ground 4 Based on Trompower, Tymes and Malkamaki ..................72
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`VII. OBJECTIVE INDICIA OF NONOBVIOUSNESS .....................................72
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`VIII. CONCLUSION ..........................................................................................73
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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` LIST OF CITED EXHIBITS
`
`
`Description
`
`Exhibit
`No.
`
`1001 U.S. Patent No. 8,023,580
`
`1002 Declaration of Dr. John Villasenor
`
`1003 U.S. Patent No. 6,132,306
`
`1004 U.S. Patent No. 5,029,183
`
`1005 U.S. Patent No. 5,491,832
`
`1006 U.S. Patent No. 8,457,228
`
`1008
`
`Theodore S. Rappaport, Wireless Communications:
`Principles & Practice
`
`1009
`
`Fuqin Xiong, Digital Modulation Techniques
`
`1016
`
`1017
`
`Robert K. Morrow, Bluetooth: Operation and Use
`(“Morrow”)
`
`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
`
`1020
`
`IPR2014-00514, Briefing and Decisions
`
`1021
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`IPR2014-00515, Briefing and Decisions
`
`1022
`
`IPR2014-00518, Briefing and Decisions
`
`1023
`
`IPR2014-00519, Briefing and Decisions
`
`1024
`
`IPR2015-00114, Briefing and Decisions
`
`1025
`
`IPR2015-00118, Briefing and Decisions
`
`1027
`
`Reexamination No. 90/013,808 File History
`
`1028
`
`Rembrandt Wireless Technologies, LP v. Samsung
`Electronics Co., Claim Construction Order
`
`Filed By
`
`Petitioner
`
`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Petitioner
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`Exhibit
`No.
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`1029
`
`Description
`
`Rembrandt Wireless Technologies, LP v. Apple Inc.,
`Claim Construction Order
`
`1035 Declaration of William Johnson regarding Exhibits
`1008, 1009, and 1017
`
`1037 Declaration of Stacy Troubh regarding Exhibits 1014
`and 1016
`
`2001
`
`2002
`
`Claims 2 and 59 of of U.S. Patent No. 8,023,580 to
`Gordon F. Bremer, issued September 11, 2011.
`
`Expert Declaration of Dr. Jose Luis Melendez dated
`June 30, 2020.
`
`2003 U.S. Provisional Application No. 60/067,562, filed
`December 5, 1997.
`
`2004
`
`Reinaldo Perez, Wireless Communication Design
`Handbook: Aspects of Noise, Interference, and
`Environmental Concerns, Vol. 1, Chapter 6, pp. 202-
`221 (1998).
`
`Filed By
`
`Petitioner
`
`Petitioner
`
`Petitioner
`
`Patent Owner
`
`Patent Owner
`
`Patent Owner
`
`Patent Owner
`
`2005
`
`Curriculum Vitae of Dr. Jose Luis Melendez.
`
`2006 Declaration of Phoebe Nguyen regarding Exhibits
`2001, 203 and 2004.
`
`Patent Owner
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`Patent Owner
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`TABLE OF AUTHORITIES
`
`
`
`CASES
`
`Key Pharms. v. Hercon Labs,
`
` 161 F.3d 709 (Fed. Cir. 1998) ............................................................................18
`
`Ottah v. Fiat Chrysler,
`
` 884 F.3d 1135 (Fed. Cir. 2018) .................................................................... 17, 18
`
`Phillips v. AWH Corp.,
`
` 415 F.3d 1303 (Fed. Cir. 2005) ..........................................................................15
`
`Rembrandt Wireless Techs. v. Samsung Elecs. Co.,
`
` 2014 U.S. Dist. LEXIS 93645 (E.D. Tex. July 10, 2014) ...................................16
`
`Rembrandt Wireless Techs., LP v. Apple Inc.,
`
` 2020 U.S. Dist. LEXIS 8172 (E.D. TEX. Jan. 15, 2020) .............................. 16, 17
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,
`
` 853 F.3d 1370 (Fed. Cir. 2017) ................................................................... passim
`
`United Microelectronics Corp. v. Lone Star Silicon Innovations LLC,
`
` Case IPR2017-01513, Paper 10 (PTAB May 22, 2018) .....................................19
`
`
`
`STATUTES
`
`37 C.F.R. § 42.24(a)(1) .........................................................................................73
`
`37 C.F.R. § 42.6(a) ...............................................................................................73
`
`37 C.F.R. § 42.100(b) ...........................................................................................18
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`Case IPR2020-00510
`U.S. Patent No. 8,023,580
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`I.
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`INTRODUCTION
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`Claims 2 and 59 of U.S. Patent No. 8,023,580 (“the ’580 Patent,” EX1001)
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`are the only claims challenged in the Petition (Paper No. 1). The ’580 Patent has
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`already been challenged in six (6) previous IPR proceedings and one (1) ex parte
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`reexamination (Petition 16-17). Claims 2 and 59 (“challenged claims”) have
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`survived each challenge. Furthermore, a jury in the U.S. District Court for the
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`Eastern District of Texas found Claim 2 infringed and not invalid, and the decision
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`was affirmed by the Federal Circuit. Rembrandt Wireless Techs., LP v. Samsung
`
`Elecs. Co., 853 F.3d 1370 (Fed. Cir. 2017).
`
`The Board should deny institution because all four Grounds of alleged
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`unpatentability (Petition 4) fail to present a reasonable likelihood of prevailing.
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`II. BACKGROUND
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`A. Master/Slave Art Prior To The ’580 Patent
`
`In networking, master/slave is a communication protocol in which one device
`
`(the “master”) controls network communications by providing one or more other
`
`devices (the “slaves” or “tributaries”/“tribs”) with permission to transmit on the
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`network.1 EX1001, 4:7-9. In the master/slave protocol, the direction of control is
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`from the master to the slave(s)/trib(s) within the network, and a single master
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`
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`1 The terms “tribs” and “slaves” are used interchangeably.
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`communicates with each slave/trib on the same communication medium. See
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`EX1001, 1:56-58, 2:52-54, 3:40-44, 4:7-9, 5:44-46, FIG. 3. While a single master
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`can control one or more slaves/tribs, a slave/trib can be controlled by only a single
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`master in a network. Id.; EX2002, ¶¶42-44.
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`According to the ’580 Patent, prior master/slave systems could communicate
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`only when all network devices used a single common type of modulation method
`
`within the same session. See EX1001, 1:27-65, 3:40-48; EX2002, ¶45. Thus, a
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`slave/trib using a different type of modulation method could not communicate with
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`the master using the different modulation type within the same session, because it
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`would not be compatible with the common type of modulation method. Id.; EX2002,
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`¶46. Thus, to use a different modulation type, it was necessary to tear down the
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`session and start a new one. EX2002, ¶47 (citing EX1001, 1:39-44). Annotated FIG.
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`1 of the ’580 Patent (below) shows a prior master/slave system, where all devices in
`
`the network communicate on the same communication medium using only one type
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`of modulation method (such as the amplitude modulation used by AM radio), even
`
`though some of the devices may be capable of communicating via other types of
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`modulation methods:
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`EX2002, ¶48.
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`The state of master/slave art at the time of the ’580 Patent invention is
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`described in the ’580 Patent at 3:40-4:50, including reference to FIG. 2 (reproduced
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`below)(EX2002, ¶49):
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`FIG. 2 discloses a multipoint master/slave system. At the beginning of a
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`session, the master established a common modulation type for communication with
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`all its slaves/tribs (FIG. 2, sequence 32). EX2002, ¶¶50-51.
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`The master then communicated with each slave/trib, one at a time, by sending
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`a training sequence with the address of the slave/trib with which it wanted to
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`communicate, followed by data and a trailing sequence to end the communication
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`(FIG. 2, sequences 34-38). A slave/trib could not initiate a communication without
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`permission to do so, thus, when the slave/trib was polled by the master providing
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`such permission, it could then initiate a responsive communication to the master
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`(FIG. 2, sequences 42-46). When the master had completed its communications with
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`the first slave/trib, it could then communicate with a second slave/trib using the same
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`negotiated common modulation (FIG. 2, sequences 48-54). Again, as disclosed and
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`claimed in the ’580 Patent, the slave/trib had to be polled before it could
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`communicate with the master. EX2002, ¶¶52-55.
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`Petitioner relies on the ’580 Patent’s “Detailed Description of Illustrative
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`Embodiments” to support its statement that: “The purported difference between
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`APA and the Challenged Claim is the use of a second modulation method with a
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`second trib.” Petition 8 (relying on the Board’s Final Written Decision in IPR2014-
`
`00518)(EX1022, 251). The section of that decision cited by Petitioner indicates that
`
`the Board “agreed” that material “depicted in Figures 1 and 2 and described in
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`column 3, line 40 through column 4, line 50 ... may be used as prior art…” Petition
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`6 (citing EX1022, 251). However, the Board did not identify specifically what
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`material described those Figures 1 and 2 and what material described the claimed
`
`invention. In fact, it is very clear that the descriptive material includes much more
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`than a description of the prior art depicted in Figures 1 and 2. See EX1001, 3:40-
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`4:50.
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`In any case, Patent Owner disagrees with Petitioner’s characterization of the
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`differences between the prior art and the inventions claimed in Claims 2 and 59, and
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`any suggestion that one can ignore each claim as a whole. Claims 2 and 59 and all
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`their limitations, which include those recited in Claims 1 and 58, from which each
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`depends respectively, must be considered together. Notably, in its Initial Decision in
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`the same IPR relied upon by Petitioner, the Board concluded that the Petitioner was
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`unlikely to establish unpatentability of Claims 2 and 59. IPR2014-00518, Paper 16,
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`at 13-15 (September 23, 2014)(EX1022, 140-142).
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`As discussed below, the claimed inventions reflected in Claims 2 and 59
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`addresses, in a novel way, problems in the prior art identified by inventor Gordon
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`Bremer, when the master wanted to communicate with one or more slaves using a
`
`different type of modulation. EX2002, ¶56.
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`B.
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`The Claimed Inventions
`
`1.
`
`Problems Identified By The ’580 Patent
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`The claimed inventions were designed to address problems Mr. Bremer
`
`recognized in a multipoint master/slave system when the master wanted – as
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`illustrated in the preferred embodiment described in the specification – to
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`communicate using different types of modulation (e.g., Type A and Type B). See,
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`e.g., EX1001, FIG. 5. With reference to FIG. 2, Mr. Bremer identified the resulting
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`problems as follows:
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`Consider the circumstance in which master transceiver 24 and
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`trib 26b share a common modulation type A while trib 26a uses a
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`second modulation type B. When master transceiver attempts to
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`establish A as a common modulation during sequence 32, trib 26a will
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`not be able to understand that communication. Moreover, trib 26a will
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`not recognize its own address during training interval 34 and will
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`therefore ignore data 36 and trailing sequence 38. Master transceiver
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`24 may time out waiting for a response from trib 26a because trib 26a
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`will never transmit training sequence 42, data 44, and trailing sequence
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`46 due to the failure of trib 26a to recognize the communication request
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`(training sequence 34) from master transceiver 24. Thus, if the tribs in
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`a multipoint communication system use a plurality of modulation
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`methods, the overall communication efficiency will be disrupted as
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`specific tribs will be unable to decipher certain transmissions from the
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`master transceiver and any unilateral transmission by a trib that has not
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`been addressed by the master transceiver will violate the multipoint
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`protocol.
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`EX1001, 4:55-5:6; EX2002, ¶¶57-58.
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`Problems identified in the ’580 Patent can be summarized:
`
`(1)
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`If a prior art master wanted to communicate with a slave/trib using a
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`second modulation method that was of a different type than that used to
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`previously communicate with the same or a different slave/trib (“wherein the
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`second modulation method is of a different type than the first modulation
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`method”), it was necessary to tear down the session and begin a new session.
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`U.S. Patent No. 8,023,580
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`Doing so was disruptive.
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`(2)
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`If a prior art master attempted to communicate using a different
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`modulation type without beginning a new session, the slave(s)/trib(s) would
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`not understand the attempted communications because all slave(s)/trib(s)
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`would have been on the same communication medium and would not have
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`responded to any communications directed at them, resulting in repeated
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`attempts by the master to communicate. In addition, the slave(s)/trib(s) could
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`become confused by the transmissions and make improper communication
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`attempts.
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`A person having ordinary skill in the art (“POSA”) would have understood
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`that FIG. 2 does not identify or recognize the problems Mr. Bremer describes or the
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`goal of using different types of modulations or his solution to those problems
`
`captured in Claims 2 and 59. Those problems and Mr. Bremer’s solution are
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`described in, e.g., columns 4-7 of the ’580 Patent, and his solution is captured in the
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`language of Claims 2 and 59, which incorporate all the limitations of Claims 1 and
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`58, respectively. EX2002, ¶¶59-60.
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`2.
`
`The ’580 Patent’s Solution To The Identified Problems
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`In the context of a multipoint master/slave system, the ’580 Patent discloses
`
`“a system and method of communication in which multiple modulation methods”
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`are used to facilitate communication among one or more modems in a network,
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`which were previously incompatible. EX1001, 2:17-20. The claimed master/slave
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`communication system enables the master to seamlessly communicate with one or
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`more slaves/tribs using multiple types of modulation methods, thereby permitting
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`selection of the modulation type best suited for a particular application. EX2002,
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`¶62 (citing EX1001, 1:66-2:49). The claimed inventions are further described with
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`reference to a preferred embodiment illustrated in FIGS. 3-8 and its written
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`description. EX2002, ¶¶61-63.
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`Annotated FIG. 8 (below) shows two communications intended for different
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`slaves/tribs. The first communication 170 uses a first type of modulation method for
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`both the initial training signal and the subsequent data signal, while communication
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`172 uses the first type of modulation method for the training signal and a second
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`different type of modulation method for the data signal:
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`EX2002, ¶¶64-65 (citing EX1001, 4:21-24, 4:42-44, FIG. 8 (annotated)).
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`Information in the training signal indicates whether there will be “an impending
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`change” from the first type of modulation method to the second different type of
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`modulation method. Id. (training signal includes “notification of change to Type B”
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`modulation method). The trailing signal is sent using the Type A modulation
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`method. Id.
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`The solution to the problems described above is captured in the language of
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`the Claims 2 and 59 and described with reference to FIG. 5:
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`With claim terms in italics, if the Master is communicating with a Type A slave/trib
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`(“Trib 1 Type A”) using an established first modulation type A and then wants to
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`communicate with a Type B slave/trib (“Trib 2 Type B”), the Master transmits “first
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`information” comprising a “first sequence” modulated according to the “first
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`modulation method” (one that the Type A trib understands) that “indicates an
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`impending change” to a second modulation method (illustrated as training sequence
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`106). The Master then transmits to the Type B slave/trib “second information for at
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`least one group of transmission sequences compris[ing] a second sequence that is
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`modulated according to the second modulation method,” which is “a different type
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`than the first modulation method.” In the FIG. 5 embodiment, the “second sequence”
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`is illustrated as transmission sequence 108 and uses the second type modulation
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`method, i.e., one that the Type B slave/trib can understand. EX2002, ¶66.
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`It is at this point that the “third sequence” limitations of Claims 2 and 59 come
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`into play. To satisfy the limitations of Claims 2 and 59, the transceiver must be
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`“configured to transmit a third sequence after the second sequence, wherein the
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`third sequence is transmitted in the first modulation method and indicates that
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`communication from the master to the slave has reverted to the first modulation
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`method.” EX2002, ¶67.
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`Again, referring to FIG. 5, after the Master completes its communication with
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`a Type B trib using Type B modulation (transmission sequence 108), Claims 2 and
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`59 then require that the Master send a “third sequence” to inform the Type A trib
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`that “communication from the master has reverted to the first modulation method”
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`(illustrated as sequences 114, 126-132). See also the “trailing signal,” i.e., the third
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`sequence, for communication 172 in FIG. 8. EX2002, ¶68.
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`The ’580 Patent describes the “switches” between different modulation types:
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`To switch from type A modulation to type B modulation, master
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`transceiver 64 transmits a training sequence 106 to type A tribs 66a in
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`which these tribs are notified of an impending change to type B
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`modulation. … After notifying the type A tribs 66a of the change to
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`type B modulation, master transceiver 64, using type B modulation,
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`transmits data along with an address in sequence 108, which is destined
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`for a particular type B trib 66b. …. [EX1001, 6:3-12].
`
`…If, however, master transceiver transmits a training sequence
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`in which the type A tribs 66a-66a are notified of a change to type B
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`modulation as indicated by sequence 106, then a transition is made to
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`state 124 where all type B transmissions are ignored until a type A
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`modulation trailing sequence (e.g., sequence 114) is detected. Upon
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`detecting the type A trailing sequence, a type A trib 66a returns to state
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`122 where it awaits a training sequence. [EX1001, 6:41-48].
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`To initiate a communication session with a type A trib 66a,
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`master transceiver 64 transmits a training sequence 126 in which an
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`address of a particular Type A trib 66a is identified. The identified Type
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`A trib 66a recognizes its own address and transitions to state 128 to
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`receive data from master transceiver 64 as part of sequence 132.
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`[EX1001, 6:49-54].
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`EX2002, ¶69.
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`Thus, again (and using the language of Claims 2 and 59), the switches include:
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`a)
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`“a first sequence” (e.g., training sequence 106) sent by the master
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`Case IPR2020-00510
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`transceiver using the “first modulation method,” Type A modulation, to
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`inform the Type A tribs of “an impending change from the first
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`modulation method to the second modulation method” – telling Type A
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`tribs to ignore the second message’s “second sequence” which is not
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`intended for them;
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`b)
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`c)
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`“a second sequence” (e.g., transmission sequence 108) sent by the
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`master transceiver using the second (incompatible) modulation method
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`to the Type B trib; and
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`“a third sequence” (e.g., trailing sequence 114, and sequences 126-132)
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`sent by the master transceiver using the “first modulation method” to
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`inform Type A tribs that “communication from the master has reverted
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`to the first modulation method.”
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`EX2002, ¶70 (citing EX1001, FIG. 5). The claimed sequences solved the identified
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`problems in prior art master/slave systems, including switching from one modulation
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`type to a different type of modulation in a master/slave setting without tearing down
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`an existing data session. EX2002, ¶71.
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`III. A PERSON HAVING ORDINARY SKILL IN THE ART
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`A POSA would have had a B.S. degree in Electrical Engineering, Computer
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`Science, or a related field, and two years of experience in the field of communication
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`systems. EX2002, ¶¶75-79.
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`IV. CLAIM CONSTRUCTION
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`The claim limitations at issue must be construed under Phillips v. AWH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005). Petitioner requests that two claim limitations be
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`construed: (1) “modulation method being of a different type’ (claims 1 and 58)” and
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`(2) “‘master’ and ‘slave’/‘trib’ (Claims 1, 2, 58, and 59).” Petition 18-25. Claims 2
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`and 59, incorporating all the limitations of Claims 1 and 58, respectively, are
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`reproduced in EX2001; EX2002, ¶73, 80.
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`For purposes of this proceeding, Patent Owner requests that all claim
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`limitations, unless otherwise indicated, be given their ordinary and customary
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`meanings.
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`A.
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`“Modulation Method Is Of A Different Type”
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`Claims 2 and 59 require: “the second modulation method is of a different type
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`than the first modulation method.” EX1001, 7:63-65, 11:61-62. The Parties’
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`constructions are as follows:
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`Patent Owner’s Construction
`“different families of
`modulation techniques, such as
`the FSK family of modulation
`methods and the QAM family
`of modulation methods.”
`
`
`
`Claim Term
`“modulation
`method is of a
`different type”
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`Petitioner’s Construction
`“different families of
`modulation techniques, such
`as the FSK family of
`modulation methods and the
`QAM family of modulation
`methods, wherein different
`families may have overlapping
`characteristics.” Petition 18-
`19.
`
`
`Patent Owner’s construction is the same construction adopted by (i) the
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`district court in the Samsung litigation (EX1028, Samsung CC Order, p. 29) and
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`affirmed in Rembrandt Wireless Techs. v. Samsung Elecs. Co., 853 F.3d 1370 (Fed.
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`Cir. 2017) (“Samsung”); (ii) the district court in the related Rembrandt Wireless
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`Techs., LP v. Apple Inc., No. 2:19-CV-25-JRG, 2020 U.S. Dist. LEXIS 8172 (E.D.
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`TEX. Jan. 15, 2020)(“Apple”)(EX1029, p. 18); and (iii) the PTO during a recent ex
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`parte reexamination (EX1027, p. 1306).
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`Petitioner’s construction of the term, on the other hand, differs from and
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`expands the district court construction which was adopted by the Federal Circuit:
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`We … agree with the construction entered by the district court
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`that the term “modulation method [] of a different type” means
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`“different families of modulation techniques, such as the FSK family
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`of modulation methods and the QAM family of modulation methods.”
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`Claim Construction Order, 2014 U.S. Dist. LEXIS 93645, 2014 WL
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`3385125, at *15.
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`Samsung, 853 F.3d at 1377.
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`Petitioner supports its position with the same argument that was rejected by
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`the Federal Circuit. Petitioner argues that the claim language of Claims 43 and 44 of
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`U.S. Patent No. 8,457,228 (“the ’228 Patent”, EX1006),2 which depend from Claim
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`26, supports its proposed claim construction because these claims recite “at least
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`one of said first and second modulation methods” implements either phase
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`modulation (Claim 43) or amplitude modulation (Claim 44). Petition 21. The Federal
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`Circuit rejected this very argument, agreeing with Patent Owner that “claim 26 -
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`from which claim 43 depends - also uses the ‘at least’ language to describe ‘at least
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`two different types of modulation methods’ which cuts against” Petitioner’s
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`argument here. Samsung, 853 F.3d at 1377.
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`Later, Apple requested the same claim construction Petitioner now requests,
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`i.e., to include the phrase “wherein different families may have overlapping
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`characteristics.” Apple at *10-11. The district court denied Apple’s request to expand
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`the prior construction in Samsung. Apple at *21-29. In doing so, the court relied
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`heavily on, and quoted Samsung, noting that “the Federal Circuit has ‘recognize[d]
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`the national stare decisis effect that [its] decisions on claim construction have.’” Id.
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`at *21 (quoting Ottah v. Fiat Chrysler, 884 F.3d 1135, 1140 (Fed. Cir. 2018) (in turn
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`
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`2 The ’228 Patent is a continuation of the ’580 Patent, and is the subject of
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`Petitioner’s companion IPR request IPR2020-00509.
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`quoting Key Pharms. v. Hercon Labs, 161 F.3d 709, 716 (Fed. Cir. 1998)). The
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`“national stare decisis effect” was adopted to provide “national uniformity to the
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`construction of a patent claim,” Key, 161 F.3d at 716, and applies even when “the
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`parties in the later action are different,” Ottah, 884 F.3d at 1140.
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`In recognition of stare decisis, 37 C.F.R. §42.100(b) provides: “Any prior
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`claim construction determination concerning a term of the claim in a civil action …
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`that is timely made of record in the inter partes review proceeding will be
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`considered.” Petitioner failed to mention the prior district courts’ construction in
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`Apple and Samsung, in spite of their recognition (and application) of stare decisis.
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`However, because the Board now applies the same construction as federal courts,
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`stare decisis should be applied here because the same claim phrases in Claims 2 and
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`59 were previously and consistently construed in both Samsung and Apple.
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`Petitioner’s construction also differs from and improperly expands the PTO’s
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`construction in a recent ex parte reexamination (EX1027). Following expiration of
`
`the ’580 Patent, the PTO acknowledged the Federal Circuit’s Phillips construction
`
`in Samsung, applied the same construction in the reexam (recognizing that the
`
`difference between the two constructions made a difference in the outcome), and
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`confirmed the patentability of Claims 2 and 59. EX1027 at 1306 (p. 2 of the Notice)
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`(citing Samsung, 853 F.3d at 1375-77).
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`In addition to recycling previously rejected positions, Petitioner relies on an
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`article published in 2019, over 20 years after the filing date of the ’580 Patent,3 to
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`support its position that different modulation families can share overlapping
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`characteristics. Petition 22-23 (citing EX1018). There is no basis in law or fact to
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`conclude that this article would have any relevance to what a POSA would have
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`understood as of the filing date of the ’580 Patent and as such it should be given no
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`weight.
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`Because Petitioner has based its unpatentability attacks on an improper claim
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`construction, the Board should refuse to institute for this reason alone. See, e.g.,
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`United Microelectronics Corp. v. Lone Star Silicon Innovations LLC, Case
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`IPR2017-01513, Paper 10, p. 6 (PTAB May 22, 2018)(“the Board may, and
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`routinely does, decline to institute trial where the patentability challenge asserted in
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`a petition is keyed to an incorrect claim construction.”).
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`Moreover, the teachings of Trompower (U.S. Patent No. 6,132,306, EX1003),
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`the primary reference relied upon by Petitioner, would not have suggested “different
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`
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`3 Petitioner relies on multiple references that post-date the ’580 Patent and as such
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`should be given no weight. See e.g., EX1008, EX1009, EX1016, EX1017 &
`
`EX1018. See also EX1035 (authenticating dates for EX1008, EX1009, and
`
`EX1017); EX1037 (authenticating date for EX1017).
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`families of modulation techniques” as claimed in the ’580 Patent. Trompower
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`discloses that “a QAM modulation scheme may be utilized in addition to BPSK and
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`QPSK.” EX1003, 21:57-58.
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`As the Petition acknowledges, BPSK and QAM both alter phase (“BPSK
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`modulates only phase, while QAM modulates both phase and amplitude”). Petition
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`37. With respect to the ’228 Patent, both the Federal Circuit and PTO (applying
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`Phillips) have concluded that another reference (U.S. Patent No. 5,706,428 “Boer”)
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`failed to teach modulation methods in different families because the modulation
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`methods disclosed in Boer (PPM/DQPSK and DBPSK) both alter phase.4 See
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`Samsung, 853 F.3d at 1379 (“the fact that Boer’s DBPSK and PPM/DQPSK
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`modulation methods both alter phase is substantial evidence to support the jury’s
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`presumed fact finding that Boer did not teach the ‘different types’ limitation”);
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`Notice of Intent to Issue Reexam Certificate in Reexam No. 90/013,918 (confirming
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`patentability of Claim 21 of the ’228 Patent applying Phil