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`Trials@uspto.gov Paper 16
`571-272-7822
` Entered: September 14, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`QUALCOMM INCORPORATED,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`Before JEFFREY S. SMITH, DAVID C. McKONE, and KAMRAN JIVANI,
`Administrative Patent Judges.
`
`
`
`SMITH, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`
`I. INTRODUCTION
`
`Qualcomm Incorporated (“Petitioner”) filed a Petition requesting inter
`
`partes review of claims 2 and 59 of U.S. Patent No. 8,023,580 B2 (“the ’580
`
`patent,” Ex. 1001). Paper 1 (“Pet.”), 4. Rembrandt Wireless Technologies, LP
`
`(“Patent Owner”) filed a Preliminary Response. Paper 10 (“Prelim. Resp.”).
`
`Pursuant to our authorization for supplemental briefing (Paper 12), Petitioner
`
`filed a Reply to Patent Owner’s Preliminary Response, and Patent Owner filed
`
`a Sur-reply. Paper 13 (“Pet. Reply”); Paper 14 (“PO Sur-reply”). Under 35
`
`U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to determine whether
`
`to institute review.
`
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`
`instituted unless the information presented in the Petition shows “there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least 1
`
`of the claims challenged in the petition.”
`
`After considering the Petition, the Preliminary Response, and associated
`
`evidence, we do not institute the requested inter partes review.
`
`A. Related Matters
`
`The parties note that the ’580 patent is the subject of several district
`
`court proceedings. Pet. 2; Paper 3, 4. The ’580 patent was also the subject
`
`of several previous inter partes reviews and a reexamination proceeding.
`
`Pet. 2, 16–17; Paper 3, 3.
`
`B. Real Parties in Interest
`
`Petitioner identifies itself as the real party in interest. Pet. 2. Patent
`
`Owner identifies itself as the real party in interest. Paper 3, 2.
`
`
`
`2
`
`
`
`
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`
`C. The ’580 Patent
`
`The ’580 Patent issued from an application filed August 19, 2009,
`
`which claimed priority under 35 U.S.C. § 120 through a chain of intervening
`
`applications to an application filed December 4, 1998, and which further
`
`claimed priority under 35 U.S.C. § 119 to a provisional application filed
`
`December 5, 1997.
`
`The technical field of the patent relates to data communications and
`
`modulators/demodulators (modems), and in particular, to a data
`
`communications system in which a plurality of modems use different types
`
`of modulation in a network. Ex. 1001, 1:19–23, 1:56–2:20. The ’580 patent
`
`discloses a master transceiver that communicates with one or more slave
`
`transceivers according to a master/slave relationship. Ex. 1001, Abstract.
`
`The master sends transmissions modulated using at least two types of
`
`modulation methods. Id., 2:29–31. A group of transmission sequences may
`
`be structured with a first portion and a payload portion. Id., 2:33–35. The
`
`first portion includes first information indicating which modulation method
`
`is used for modulating second information in the payload portion. Id., 2:35–
`
`38. The first information includes an address for an intended destination.
`
`Id., 2:38–41.
`
`D. Illustrative Claims
`
`Independent claim 1 and dependent claim 2 are reproduced below.
`
`1. A communication device capable of communicating according
`to a master/slave
`relationship
`in which a slave
`communication from a slave to a master occurs in response
`to a master communication from the master to the slave,
`the device comprising:
`
`a transceiver, in the role of the master according to the
`master/slave
`relationship,
`for
`sending
`at
`least
`
`
`
`3
`
`
`
`
`
`
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`
`transmissions modulated using at least two types of
`modulation methods, wherein the at least two types of
`modulation methods comprise a first modulation method
`and a second modulation method, wherein the second
`modulation method is of a different type than the first
`modulation method, wherein each transmission comprises
`a group of transmission sequences, wherein each group of
`transmission sequences is structured with at least a first
`portion and a payload portion wherein first information in
`the first portion indicates at least which of the first
`modulation method and the second modulation method is
`used for modulating second information in the payload
`portion, wherein at least one group of transmission
`sequences is addressed for an intended destination of the
`payload portion, and wherein for the at least one group of
`transmission sequences:
`
`the first information for said at least one group of transmission
`sequences comprises a first sequence, in the first portion
`and modulated according to the first modulation method,
`wherein the first sequence indicates an impending change
`from
`the first modulation method
`to
`the second
`modulation method, and
`
`the second information for said at least one group of transmission
`sequences comprises a second sequence that is modulated
`according to the second modulation method, wherein the
`second sequence is transmitted after the first sequence.
`
`2. The device of claim 1, wherein the transceiver is configured to
`transmit a third sequence after the second sequence,
`wherein the third sequence is transmitted in the first
`modulation method and indicates that communication
`from the master to the slave has reverted to the first
`modulation method.
`
`4
`
`
`
`
`
`
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 4):
`
`References
`
`Trompower1 (Ex. 1003)
`Trompower, Tymes2 (Ex. 1004)
`Trompower, Malkamski3 (Ex. 1005)
`Trompower, Tymes, Malkamski
`
`Basis
`
`Claims
`
`§ 103
`§ 103
`§ 103
`§ 103
`
`2, 59
`2, 59
`2, 59
`2, 59
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, a claim “shall be construed using the same
`
`claim construction standard that would be used to construe the claim in a
`
`civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019).
`
`Claim 1 recites “wherein at least one group of transmission sequences
`
`is addressed for an intended destination of the payload portion.” Claim 58
`
`recites a similar limitation. Patent Owner contends that the “address” in the
`
`claim language “addressed for an intended destination” should be construed
`
`as “the address of the slave/trib4 transceiver that the master seeks to
`
`communicate with.” Prelim. Resp. 26. Petitioner contends that the address
`
`of the phrase “addressed for an intended destination” should not be limited
`
`to the address of a trib destination. Pet. Reply 1–2.
`
`According to Petitioner, the plain language of claim 1 does not limit
`
`the claim to the examples disclosed in the specification, but rather,
`
`encompasses devices that communicate via non-master/slave relationships.
`
`
`1 U.S. Patent No. 6,132,306, issued Oct. 17, 2000.
`2 U.S. Patent No. 5,029,183, issued July 2, 1991.
`3 U.S. Patent No. 5,491,832, issued Feb. 13, 1996.
`4 The ’580 patent and the parties use the terms “slave” and “trib”
`interchangeably.
`
`
`5
`
`
`
`
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`Pet. Reply 2–4. Petitioner relies on extrinsic evidence to support its
`
`contention that the intended destination of a transceiver transmission need
`
`not be limited to a trib. Id. 4–5.
`
`Patent Owner contends that claim 1 expressly recites “communication
`
`from the master to the slave” in the preamble. PO Sur-Reply 2. Patent
`
`Owner also contends that the “intended destination” of a communication
`
`from the “transceiver, in the role of the master” recited in the body of the
`
`claim is the slave device. Id. 3. Patent Owner contends that “addressed for
`
`an intended destination,” when read in the context of the entire claim,
`
`including the preamble recitation of a “communication from the master to
`
`the slave,” and the body’s recitation of the “transceiver in the role of the
`
`master,” means “the address of the slave/trib transceiver that the master
`
`seeks to communicate with.” PO Sur-Reply 2–3.
`
`Patent Owner further contends that, during an ex parte reexamination
`
`proceeding, Patent Owner stated that the “specification of the ’580 Patent
`
`makes clear that the claimed ‘intended destination’ is a particular trib in the
`
`network.” Id. 3–4 (citing Ex. 1027, 1211). Patent Owner contends that this
`
`statement made by Patent Owner during the reexamination proceeding
`
`disclaimed the scope of the intended destination, such that the claimed
`
`“intended destination” could not be construed to include a non-slave/trib. Id.
`
`4 n.2 (citing VirnetX, Inc. v. Mangrove Partners Master Fund Ltd., 778 F.
`
`App’x. 897, 910 (Fed. Cir. 2019)).
`
`In its claim construction argument, Petitioner does not contend that
`
`the preamble recitation of a “communication from the master to the slave”
`
`should not be given patentable weight. Rather, in its patentability analysis
`
`of claim 1, Petitioner gives patentable weight to the preamble. See Pet. 32–
`
`33. Petitioner also does not explain how “a transceiver, in the role of master
`6
`
`
`
`
`
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`according to the master/slave relationship, for sending at least
`
`transmissions” as recited in the body of the claim, is consistent with
`
`Petitioner’s construction of the transceiver sending a communication to a
`
`non-slave device. Petitioner also does not explain why the statement made
`
`by Patent Owner during the reexamination proceeding, that “the claimed
`
`intended destination is a particular trib in the network,” does not constitute
`
`disclaimer. See Ex. 1027, 1211. This statement clearly and unmistakably
`
`states that “the claimed intended destination is a particular trib in the
`
`network.” Given the record before us, we construe the claim term
`
`“addressed for an intended destination” in light of the intrinsic evidence,
`
`including the context of the entire claim and the reexamination proceeding,
`
`as “addressed for a particular trib in the network.”
`
`Petitioner and Patent Owner propose construction of various other
`
`claim terms. Pet. 18–25; Prelim. Resp. 15–26. Because our determination
`
`below is not impacted by the parties’ proposed claim constructions, we do
`
`not expressly construe any other claim term for purposes of this Decision.
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`
`1017 (Fed. Cir. 2017) (only terms that are in controversy need to be
`
`construed, and only to the extent necessary to resolve the controversy).
`
`B. Obviousness over Trompower
`
`Petitioner, relying on the testimony of Dr. John Villasenor (Ex. 1002),
`
`contends that claims 2 and 59 are unpatentable over Trompower (Ex. 1003).
`
`Patent Owner, relying on the testimony of Dr. Jose Luis Melendez (Ex.
`
`2002), contends that claims 2 and 59 are patentable over Trompower.
`
`1. Trompower
`
`Trompower relates to a cellular communication system utilizing
`
`dedicated repeater channels and modifiable transmission parameters to
`7
`
`
`
`
`
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`enhance system performance. Ex. 1003, 1:14–16. The communication
`
`system includes base stations having generally fixed data transmission
`
`parameters. Id., 8:40–42. The communication system includes mobile
`
`terminals, each capable of dynamically modifying its data transmission
`
`parameters. Id., 9:43–48. The communication system provides the base
`
`stations and the mobile terminals with the ability to dynamically modify the
`
`modulation complexity. Id., 11:39–44. A binary phase shift keying (BPSK)
`
`modulation scheme may be used to transmit one bit at a time, while a
`
`quadrature phase shift keying (QPSK) modulation scheme may be used to
`
`transmit data at a faster rate, two bits at a time. Id., 11:19–25.
`
`2. Analysis of claims 2 and 59
`
`Claim 1 recites a “communication device capable of communicating
`
`according to a master/slave relationship in which a slave communication
`
`from a slave to a master occurs in response to a master communication from
`
`the master to the slave.” Claim 58 recites a similar limitation. Petitioner
`
`contends Trompower describes this limitation in disclosing a cellular
`
`communication system including a base station and a mobile terminal. Pet.
`
`32–33 (citing Ex. 1003, Fig. 2, 6:12–14). According to Petitioner,
`
`Trompower’s mobile terminal operates in a master/slave relationship
`
`because the mobile terminal chooses the data rate used for a packet, and the
`
`base station is programmed to respond to the mobile terminal at the same
`
`rate. Id. (citing Ex. 1003, 13:24–28, 29:28–38, 29:41–44).
`
`Claim 1 recites “a transceiver, in the role of the master according to
`
`the master/slave relationship.” Claim 58 recites a similar limitation.
`
`Petitioner contends Trompower describes this limitation in disclosing a
`
`mobile terminal that includes a transmitter and receiver. Pet. 34 (citing Ex.
`
`1003, Fig. 3B; Ex. 1002 ¶¶ 134–138). Petitioner contends that the mobile
`8
`
`
`
`
`
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`terminal transceiver operates as the master according to the master/slave
`
`relationship for the reasons given in Petitioner’s analysis of the preamble.
`
`Id.
`
`Claim 1 recites “for sending at least transmissions modulated using at
`
`least two types of modulation methods, wherein the at least two types of
`
`modulation methods comprise a first modulation method and a second
`
`modulation method, wherein the second modulation method is of a different
`
`type than the first modulation method.” Claim 58 recites a similar
`
`limitation. Petitioner contends Trompower discloses that the mobile
`
`terminal can transmit using BPSK modulation for slow and mid data rates,
`
`and using QPSK modulation for a fast data rate. Pet. 35–36 (citing Ex.
`
`1003, 5:52–57, 11:29–33, 12:42–61, 16:38–47, Fig. 3B). Petitioner contends
`
`that Trompower discloses utilizing QAM modulation in addition to BPSK
`
`and QPSK modulation techniques. Pet. 36 (citing Ex. 1003, 21:54–60).
`
`Petitioner contends that QPSK encodes two bits per symbol, and QAM
`
`encodes three bits per symbol. Pet. 37 (citing Ex. 1002 ¶ 149). Petitioner
`
`contends that a person of ordinary skill in the art would have replaced QPSK
`
`with QAM for the benefit of increasing the data rate over QPSK, in order to
`
`reduce total air time usage and reduce cost by reducing the number of
`
`needed base stations. Id.
`
`Claim 1 recites “wherein each transmission comprises a group of
`
`transmission sequences, wherein each group of transmission sequences is
`
`structured with at least a first portion and a payload portion.” Claim 58
`
`recites a similar limitation. Petitioner contends Trompower describes this
`
`limitation in disclosing a packet including a header, or “first portion,” and
`
`data bits, or “payload portion.” Pet. 38–39 (citing Ex. 1003, 10:40–42,
`
`13:42–44, Fig. 3A).
`
`
`9
`
`
`
`
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`
`Claim 1 recites “wherein first information in the first portion indicates
`
`at least which of the first modulation method and the second modulation
`
`method is used for modulating second information in the payload portion.”
`
`Claim 58 recites a similar limitation. Petitioner contends that Trompower
`
`discloses that the header, or “first portion,” signifies the data rate at which
`
`the data bits, or “payload portion,” will be transmitted. Pet. 40 (citing Ex.
`
`1003, 13:50–52). Petitioner contends that Trompower discloses that the first
`
`modulation method is used for slow and mid data rates, and the second
`
`modulation method is used for the fast data rate. Id. (citing Ex. 1003, 12:42–
`
`61, 20:2–5).
`
`Claim 1 recites “wherein at least one group of transmission sequences
`
`is addressed for an intended destination of the payload portion.” Claim 58
`
`recites a similar limitation. Petitioner contends that this limitation is either
`
`disclosed or taught by Trompower. Pet. 40–42.
`
`Petitioner contends that Trompower describes this limitation in
`
`disclosing that the packet sent from the mobile terminal includes a
`
`destination address in the packet header. Pet. 41 (citing Ex. 1003, 34:58–63,
`
`37:46–49, 39:10–15). Patent Owner contends that the packet sent from the
`
`mobile terminal includes the address of another mobile device, not the
`
`address of the base station. Prelim. Resp. 46–47 (citing Ex. 1003, 37:46–52,
`
`39:10–18). We agree with Patent Owner. Petitioner has not shown that the
`
`packet sent from the mobile terminal includes the address of the base station,
`
`or “at least one group of transmission sequences is addressed for an intended
`
`destination of the payload portion.” Rather, the header of the packet
`
`Petitioner identifies includes the address of another mobile device, not the
`
`address of the base station. Ex. 1003, 37:46–52, 39:10–18.
`
`
`
`10
`
`
`
`
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`
`Petitioner, relying on the testimony of Dr. Villasenor, contends that
`
`even if Trompower does not disclose “wherein at least one group of
`
`transmission sequences is addressed for an intended destination of the
`
`payload portion,” it would have been obvious to include the destination
`
`address of the base station in the header of a registration packet. Pet. 41–42
`
`(citing Ex. 1002 ¶ 162). Petitioner contends that adding a destination
`
`address to the packet header is the use of a known technique to improve a
`
`similar device in the same way. Id. Petitioner also contends that including a
`
`destination address in the packet header would have been obvious to try,
`
`because there were a finite number of identified, predictable solutions,
`
`namely, including the address in the header, in the payload, or in a footer.
`
`Id.
`
`Patent Owner, relying on the testimony of Dr. Melendez, contends
`
`that Trompower would not have suggested that a mobile terminal include an
`
`address of a base station. Prelim. Resp. 38 (citing Ex. 2002 ¶ 140). Patent
`
`Owner contends that during the registration process, the mobile terminal of
`
`Trompower broadcasts a “find router” packet to all base stations within
`
`range, where the broadcast packet does not include an address of any base
`
`station. Prelim. Resp. 42 (citing Ex. 1003, Fig. 4A, 22:15–22). Patent
`
`Owner contends that after registering with a base station, the mobile terminal
`
`sends a packet directly to the base station over a direct communication
`
`channel established using Spread Spectrum technology. Prelim. Resp. 42–
`
`45 (citing Ex. 1003, 2:66–3:26, 3:61–67, 4:3–33). Patent Owner contends
`
`that, because the packet is sent to the base station over the direct
`
`communication channel, adding the address of the base station would be
`
`useless, would add unnecessary overhead signaling, and would inefficiently
`
`
`
`11
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`
`
`
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`use air time. Prelim. Resp. 45 (citing Ex. 2002 ¶ 157), 60–61 (citing Ex.
`
`2002 ¶¶ 208–212).
`
`We agree with Patent Owner. During the registration process, the
`
`mobile device of Trompower broadcasts a “find router” packet to all base
`
`stations within range, and does not include an address of a base station. Ex.
`
`1003, 22:15–22; Ex. 2002 ¶ 146. After registration, the mobile terminal uses
`
`Spread Spectrum technology to send a packet to the base station over a
`
`direct communication channel. Ex. 1003, 10:40–43, 3:9–23. Petitioner has
`
`not shown that Trompower communicates with the base station other than by
`
`these two methods, neither of which includes the address of the base station
`
`in the packet. Ex. 2002 ¶¶ 146, 169–171. Petitioner also has not shown that
`
`adding the address of the base station to the packet would have yielded an
`
`improvement. Rather, we agree with Patent Owner’s declarant, Dr.
`
`Melendez, that a person of ordinary skill in the art would not have included
`
`the address of the base station in the packet, because the address of the base
`
`station would have been useless, would have added unnecessary overhead
`
`signaling, and would have inefficiently used air time. See Ex. 2002 ¶¶ 157,
`
`169–173, 208–212.
`
`Petitioner has not shown that Trompower teaches “wherein at least
`
`one group of transmission sequences is addressed for an intended destination
`
`of the payload portion,” as recited in independent claim 1, nor that
`
`Trompower teaches “wherein the at least one message is addressed for an
`
`intended destination of the second sequence” as recited in independent claim
`
`58. Therefore, Petitioner has not shown a reasonable likelihood that it would
`
`prevail in showing that Trompower would have rendered corresponding
`
`dependent claims 2 and 59 obvious.
`
`
`
`12
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`
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`IPR2020-00510
`Patent 8,023,580 B2
`
`
`C. Remaining Grounds
`
`For the remaining grounds, Petitioner relies on Trompower alone to
`
`teach the claimed “wherein at least one group of transmission sequences is
`
`addressed for an intended destination of the payload portion.” Pet. 40, 63,
`
`73, 76. We disagree with Petitioner for the reasons given in our analysis
`
`above.
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition does not establish that there is a reasonable
`
`likelihood that Petitioner would prevail with respect to obviousness of
`
`claims 2 and 59 of the ’510 patent.
`
`
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that the Petition is denied.
`
`13
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`
`
`IPR2020-00510
`Patent 8,023,580 B2
`
`PETITIONER:
`
`Eagle Robinson
`Richard Zembek
`James Warriner
`Eric Green
`NORTON ROSE FULBRIGHT US LLP
`eagle.robinson@nortonrosefulbright.com
`richard.zembek@nortonrosefulbright.com
`jim.warriner@nortonrosefulbright.com
`eric.green@nortonrosefulbright.com
`rembrandt-qc-ipr@nortonrosefulbright.com
`
`
`PATENT OWNER:
`
`Jill M. Browning
`Michael J. Fink
`GREENBLUM & BERNSTEIN, P.L.C.
`jbrowning@gbpatent.com
`mfink@gbpatent.com
`
`
`Ryan W. O’Donnell
`VOLPE & KOENIG, P.C.
`rodonnell@vklaw.com
`
`
`
`14
`
`
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