Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Date: December 5, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`v.
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2022-01004
`Patent 9,614,943 B1
`
`
`
`Before HYUN J. JUNG, NATHAN A. ENGELS, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 13
`Date: December 5, 2022
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`v.
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2022-01004
`Patent 9,614,943 B1
`
`
`
`Before HYUN J. JUNG, NATHAN A. ENGELS, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-01004
`Patent 9,614,943 B1
`
`I.
`INTRODUCTION
`A. Background and Summary
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`and Apple Inc. (collectively, “Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting institution of an inter partes review of claims 1–9 and 12–20 of
`U.S. Patent No. 9,614,943 B1 (Ex. 1001, “the ’291 patent”). Smart Mobile
`Technologies LLC (“Patent Owner”) filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”). After receiving authorization, Petitioner filed a Reply to
`the Preliminary Response (Paper 7, “Prelim. Reply”), and Patent Owner
`filed a Sur-reply (Paper 8, “Prelim. Sur-reply”).
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” Upon
`consideration of the Petition in view of the present record and for the reasons
`explained below, we determine that Petitioner has shown a reasonable
`likelihood of prevailing with respect to at least one of the challenged claims.
`Thus, we institute an inter partes review of claims 1–9 and 12–20 of
`the ’943 patent on all presented challenges. SAS Inst. Inc. v. Iancu, 138 S.
`Ct. 1348, 1359–60 (2018).
`B. Real Parties in Interest
`Petitioner identifies Samsung Electronics Co., Ltd., Samsung
`Electronics America, Inc., and Apple Inc. as real parties in interest. Pet. 88.
`Patent Owner only identifies itself as a real party in interest. Paper 4, 1.
`C. Related Matters
`The parties identify Smart Mobile Techs. LLC v. Samsung Electronics
`Co., Ltd., 6:21-cv-00701 (W.D. Tex.) as a related matter. Pet. 89; Paper 4,
`1.
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`2
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`IPR2022-01004
`Patent 9,614,943 B1
`We instituted an inter partes review of a related patent. Samsung
`Electronics Co., Ltd. v. Smart Mobile Techs. LLC, IPR2022-00766, Paper 14
`(PTAB Oct. 26, 2022) (Decision Granting Institution). Another related
`patent is challenged in IPR2022-01005.
`D. The ’943 Patent (Ex. 1001)
`The ’943 patent issued on April 4, 2017 from an application filed on
`September 17, 2012, which is a continuation application of several
`previously filed continuation and continuation-in-part applications, the
`earliest of which was filed on December 16, 1996. Ex. 1001, codes (22),
`(45), (63), 1:8–18.
`The ’943 patent states that an unfulfilled need exists for multiple
`transmitters and receivers (“T/R”) in a cellular telephone or mobile wireless
`device (“CT/MD”). Ex. 1001, 1:48–49. Figure 5A of the ’943 patent is
`reproduced below.
`
`
`
`Figure 5A shows a “a dual antenna, dual T/R unit in a CT/MD
`interfacing with a dual processor.” Ex. 1001, 2:15–16. Dual antenna 508
`and dual T/R unit 504 interface with dual processor 506 in dual band
`system 500. Id. at 4:39–41. System 500 can communicate through
`outputs 510, which can be “fibre optic channel, ethernet, cable, telephone, or
`other.” Id. at 4:44–47.
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`3
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`Patent 9,614,943 B1
`“The multiple processors 506 allow for parallel and custom
`processing of each signal or data stream to achieve higher speed and better
`quality of output.” Ex. 1001, 4:54–56. Alternatively, there can be “a single
`processor that has the parallelism and pipeline capability built in for
`handling one or more data streams simultaneously.” Id. at 4:56–59.
`Processors 506 include “DSP, CPU, memory controller, and other elements
`essential to process various types of signals.” Id. at 4:59–61.
`“The processor contained within the CT/MD 502 is further capable of
`delivering the required outputs to a number of different ports such as optical,
`USB, cable and others” and “capable of taking different inputs, as well as
`wireless.” Ex. 1001, 4:63–67. “Thus the CT/MD 502 has universal
`connectivity in addition to having a wide range of functionality made
`possible through the features of multiple antennas, multiple T/R units 504
`and processors 506.” Id. at 5:3–6.
`“[T]he CT/MD may use one or more transmission protocols as
`deemed optimal and appropriate,” and “the CT/MD determines the required
`frequency spectrum, other wireless parameters such as power and signal to
`noise ratio to optimally transmit the data.” Ex. 1001, 11:8–10, 11:12–15.
`The CT/MD has “the ability to multiplex between one or more transmission
`protocols such as CDMA, TDMA to ensure that the fast data rates of the
`optical network or matched closely in a wireless network to minimize the
`potential data transmission speed degradation of a wireless network.” Id. at
`11:15–20.
`Also, the ’943 patent states “by having each of the data streams
`sampled at differing clock frequencies the performance can be better
`optimized.” Ex. 1001, 4:36–38. “Each channel may be sampled and
`
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`IPR2022-01004
`Patent 9,614,943 B1
`clocked individually as necessary to optimally process each data stream and
`combine the individual data packets.” Id. at 7:50–52.
`E. Illustrative Claim
`The ’943 patent includes 20 claims, of which Petitioner challenges
`claims 1–9 and 12–20. Of the challenged claims, claims 1, 5, 8, and 12 are
`independent, and claim 1 is reproduced below.
`1.
`A wireless communication device comprising:
`a plurality of antennas; and
`a communication component coupled to the plurality of
`antennas, the communication component including a processor,
`a transmitter, and a receiver,
`wherein the communication component is configured to
`communicate via a first frequency band using a wireless
`communication protocol; and
`wherein one or more subtasks are assigned to one or more
`channels, and the one or more channels are sampled and clocked
`individually; and
`
`wherein the processor comprises multiple ones of the one
`or more channels and is further configured to process a first data
`stream and a second data stream in parallel.
`Ex. 1001, 11:63–12:9.
`Independent claims 5, 8, and 12 also recite a “wireless communication
`device” and the limitations “a plurality of antennas,” “a communication
`component coupled to the plurality of antennas, the communication
`component including a processor, a transmitter, and a receiver,” “wherein
`one or more subtasks are assigned to one or more channels, and the one or
`more channels are sampled and clocked individually,” and “wherein the
`processor comprises multiple ones of the one or more channels and is further
`configured to process a first data stream and a second data stream in
`parallel.” Ex. 1001, 12:26–30, 12:42–47, 12:55–59, 13:1–6, 13:17–21,
`
`5
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`Patent 9,614,943 B1
`14:1–6; see also Prelim. Resp. 4 n.1, 9 n.2 (noting that the final wherein
`clauses of the independent claims are “identical in relevant part”).
`The remaining limitations of independent claims 5, 8, and 12 differ
`from claim 1 and require, for example, “at least one additional transmitter”
`(claim 5), “at least one additional receiver” (claim 8), and “a first set of
`antennas . . . and a second set of antennas” (claim 12). Ex. 1001, 12:31–32,
`12:60–61, 13:23–28.
`F. Asserted Prior Art and Proffered Testimonial Evidence
`Petitioner identifies the following references as prior art in the
`asserted ground of unpatentability:
`Name
`Billström
`Pillekamp
`Johnston
`Raleigh
`
`Exhibit
`1010
`1009
`1006
`1005
`
`Reference
`US 5,590,133, issued Dec. 31, 1996
`US 5,594,737, issued Jan. 14, 1997
`US 5,784,032, issued July 21, 1998
`US 6,144,711, filed Aug. 27, 1997, issued Nov. 7,
`2000
`EP 0 660 626 A2, published June 28, 1995
`WO 98/27748, published June 25, 1998
`
`Byrne
`WO748
`
`1008
`1007
`
`Pet. 2. Petitioner states that “[t]he references qualify as prior art to the ’943
`patent’s earliest claimed priority date (06/04/1999; ‘Critical Date’),” but
`“Petitioner does not concede that the ’943 patent is entitled to priority.” Id.
`According to Petitioner, Byrne, Pillekamp, and Billström are prior art under
`§ 102(b); Raleigh and WO748 are prior art under § 102(e); and Johnston is
`prior art under §§ 102(a) and (e).1 Id. Petitioner also provides a Declaration
`of Dr. Michael Allen Jensen. Ex. 1003.
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
`2013. Because the ’943 patent claims priority to an application filed before
`
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`Patent 9,614,943 B1
`G. Asserted Grounds
`Petitioner asserts that claims 1–9 and 12–16 are unpatentable on the
`following grounds:
`Claim(s) Challenged 35 U.S.C.
`§
`1, 5–9
`103(a)
`3, 4
`103(a)
`12
`103(a)
`13, 14
`103(a)
`1, 2, 5–9
`103(a)
`3, 4
`103(a)
`12, 15, 18–20
`103(a)
`13, 14
`103(a)
`16, 17
`103(a)
`
`Byrne
`Byrne, WO748
`Byrne, Johnston, Pillekamp
`Byrne, Johnston, Pillekamp, Billstrom
`Raleigh, Byrne
`Raleigh, Byrne, WO748
`Raleigh, Byrne, Pillekamp
`Raleigh, Byrne, Pillekamp, Billstrom
`Raleigh, Byrne, Pillekamp, WO748
`
`Reference(s)/Basis
`
`Pet. 1.
`
`II. ANALYSIS
`
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent [claim] it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016). This burden of persuasion never shifts to Patent Owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015). The Board may authorize an inter partes review if we
`determine that the information presented in the Petition shows that there is a
`reasonable likelihood that Petitioner will prevail with respect to at least one
`of the claims challenged in the petition. 35 U.S.C. § 314(a).
`
`
`that date, our citations to 35 U.S.C. §§ 102 and 103 in this Decision are to
`their pre-AIA versions. See also Pet. 2 (stating but not conceding that “the
`’943 patent’s earliest claimed priority date” is “06/04/1999”).
`
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`Patent 9,614,943 B1
`Petitioner contends that the challenged claims of the ’943 patent are
`unpatentable under § 103(a). Pet. 1. A claim is unpatentable under § 103(a)
`if the differences between the claimed subject matter and the prior art are
`such that the subject matter, as a whole, would have been obvious at the time
`the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) where in evidence, so-called
`secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). When evaluating a combination of teachings, we must also
`“determine whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at
`418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a
`combination of elements produces a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`B. Level of Ordinary Skill in the Art
`Petitioner asserts that one of ordinary skill in the art “would have had
`a Bachelor’s degree in electrical engineering, computer engineering,
`computer science, or a related field, and at least two years of experience
`related to the design or development of wireless communication systems, or
`the equivalent.” Pet. 3 (citing Ex. 1003 ¶¶ 27–28). Petitioner also states that
`“[a]dditional graduate education could substitute for professional
`experience, or significant experience in the field could substitute for formal
`education.” Id. (citing Ex. 1003 ¶¶ 27–28).
`
`8
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`IPR2022-01004
`Patent 9,614,943 B1
`At this stage, Patent Owner does not propose a level of ordinary skill
`and does not dispute Petitioner’s proposal. See generally Prelim. Resp.
`Based on the preliminary record, we adopt Petitioner’s asserted level
`of ordinary skill only to determine whether there is a reasonable likelihood
`that Petitioner would prevail with respect to at least one of the claims
`challenged in the Petition.2
`C. Claim Construction
`In an inter partes review based on a petition filed on or after
`November 13, 2018, the claims are 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),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`37 C.F.R. § 42.100(b) (2021); see Phillips v. AWH Corp., 415 F.3d 1303,
`1312–13 (Fed. Cir. 2005) (en banc).
`Petitioner states that “no formal claim constructions are necessary in
`this proceeding.” Pet. 2. Patent Owner does not propose an interpretation
`for any term. See generally Prelim. Resp.
`At this preliminary stage, we determine that no claim term requires
`express interpretation.3 Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375
`(Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . .
`
`
`2 Petitioner proposed the same level of ordinary skill in IPR2022-00766 and
`IPR2022-01005, which we also adopted in those proceedings to determine
`whether there was a reasonable likelihood that Petitioner would prevail with
`respect to at least one of the challenged claims.
`3 We also determined that no claim term in IPR2022-00766 and IPR2022-
`01005 required express interpretation.
`
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`Patent 9,614,943 B1
`that are in controversy, and only to the extent necessary to resolve the
`controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999)).
`D. Asserted Obviousness Based on Byrne
`Petitioner contends that Byrne teaches or suggests the limitations of
`claim 1 and 5–9 with citations to the record. Pet. 4–23. Petitioner asserts
`with citations to the record that one of ordinary skill in the art would have
`found it obvious that Byrne’s cordless and cellular channels are sampled and
`clocked individually and that Byrne’s microprocessor processes data on
`those channels separately. Id. at 10–17.
`Patent Owner responds that Petitioner fails to show Byrne discloses
`“wherein the processor comprises multiple ones of the one or more channels
`and is further configured to process a first data stream and a second data
`stream in parallel” and the “one or more channels are sampled and clocked
`individually.” Prelim. Resp. 4–14.
`For the reasons that follow, Petitioner shows a reasonable likelihood
`of prevailing with respect to at least one claim.
`1. Byrne (Ex. 1008)
`Byrne particularly relates “to a radio telephone operable for more than
`one system.” Ex. 1008, 1:2–3. Figure 1 of Byrne is reproduced below.
`
`10
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`IPR2022-01004
`Patent 9,614,943 B1
`
`
`Figure 1 is a block diagram of a cellular cordless telephone system.
`Ex. 1008, 6:19–20, 6:36–37. Cellular cordless telephone system 100
`includes cordless base stations 114, 116, 118 that communicate with cellular
`cordless telephone (“CCT”) 200 via antennas 112, 119, 122. Id. at 6:38–47.
`System 100 also includes cellular base station 130 with receive antenna 132
`and transmit antenna 134 for communicating with CCT 200. Id. at 7:4–10.
`Byrne describes that its CCT 200 uses cordless telephone systems “CT-2 or
`DECT4 which are digital systems” and GSM or DCS (Digital Cellular
`System) cellular telephone systems. Id. at 1:41–44, 7:19–24, 10:53.
`CCT 200 includes antenna 228 for cordless communication and
`antenna 238 for cellular communication. Ex. 1008, 7:13–15. Figure 2 of
`Byrne is reproduced below.
`
`
`4 Pillekamp indicates that DECT stands for “Digital European Cordless
`Telecommunication.” Ex. 1009, 2:59–60.
`
`11
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`Patent 9,614,943 B1
`
`
`Figure 2 is a block diagram of a cellular cordless telephone. Ex. 1008,
`6:22–23, 7:25–26. CCT 200 also includes microprocessor 210, cordless
`telephone transceiver 220, and cellular telephone transceiver 230. Id. at
`7:27–30. Microprocess 210 “is adapted to operate in accordance with the
`flow charts illustrated in Figures 3–4.” Id. at 7:56–58; see also id. at 8:44–
`9:30 (describing steps used by microprocessor 210 for receiving and placing
`cellular or cordless telephone calls), 9:31–10:8 (describing the monitoring of
`availability of cellular and cordless systems).
`When operating as a cordless telephone, “microprocessor 210
`enable[s] cordless receiver 221 and cordless transmitter 222.” Ex. 1008,
`8:16–18. “[M]icroprocessor 210 controls the CCT 200 in a similar way
`when operating as a cellular telephone, but appropriately modified for the
`signal[]ing protocols and data encryption used in the cellular system.” Id. at
`8:29–33. Byrne states that “signal[]ing protocols, data encryption
`
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`IPR2022-01004
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`techniques and the like used in respective telephone systems are well known
`in the art.” Id. at 8:33–35.
`“CCT 200 may operate, as far as a user is concerned, simultaneously
`as a cellular telephone and a cordless telephone.” Ex. 1008, 8:3–6. Byrne
`clarifies that “CCT 200 can be arranged such that both cellular and cordless
`operations are in progress at the same time.” Id. at 8:6–9.
`2. Claim 1
`Petitioner argues that Byrne teaches the preamble of claim 1, “[a]
`wireless communication device,” if it is limiting, because Byrne teaches a
`cellular cordless telephone. Pet. 6 (citing Ex. 1003 ¶ 69; Ex. 1008, 7:11–
`13); Ex. 1001, 11:63; see also Pet. vii (labeling the preamble “1[pre]”).
`Petitioner also argues that, because Byrne teaches antenna 228 for cordless
`communication and antenna 238 for cellular communication, Byrne teaches
`“a plurality of antennas.” Id. (citing Ex. 1003 ¶ 70; Ex. 1008, 7:13–15);
`Ex. 1001, 11:64; see also Pet. vii (labeling the limitation “1[a]”).
`For “a communication component coupled to the plurality of
`antennas, the communication component including a processor, a
`transmitter, and a receiver,” Petitioner contends that Byrne teaches its CCT
`has (1) cordless transceiver 220 with cordless receiver 221 and cordless
`transmitter 222, (2) cellular transceiver 230 with cellular receiver 231 and
`cellular transmitter 232, and (3) microprocessor 210. Pet. 6–7 (citing
`Ex. 1003 ¶ 71; Ex. 1008, 7:26–32, 7:56–8:2, Fig. 2); Ex. 1001, 11:65–67;
`see also Pet. vii (labeling the limitation “1[b]”). Petitioner also contends
`that one of ordinary skill in the art would have understood that transceivers
`220, 230 and microprocessor 210 would be a communication component
`coupled to antennas 228, 238. Id. at 7 (citing Ex. 1003 ¶ 72).
`
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`For “wherein the communication component is configured to
`communicate via a first frequency band using a wireless communication
`protocol,” Petitioner argues that Byrne teaches its CCT operating on cordless
`protocols and frequency bands and cellular protocols and frequency bands.
`Pet. 7–8 (citing Ex. 1003 ¶ 73; Ex. 1008, 7:19–24); Ex. 1001, 12:1–3; see
`also Pet. vii (labeling the limitation “1[c]”).
`For “wherein one or more subtasks are assigned to one or more
`channels, and the one or more channels are sampled and clocked
`individually,” Petitioner argues that Byrne teaches subtasks and channels in
`a manner consistent with the ’943 patent’s disclosure. Pet. 8 (citing
`Ex. 1001, 7:1–8:41, Figs. 9–12; Ex. 1003 ¶ 77); Ex. 1001, 12:4–6; see also
`Pet. vii (labeling the limitation “1[d]”). According to Petitioner, the ’943
`patent describes multiple transceivers processing multiple data streams, and
`“[e]ach subtask being processed can be assigned to a separate channel.” Id.
`(citing Ex. 1001, 7:1–8:16, Figs. 10, 11).
`Petitioner contends that, because Byrne describes cordless and cellular
`channels, Byrne teaches two channels as separate communication pathways
`for two data streams that are processed separately. Pet. 8 (citing Ex. 1003
`¶ 77). Petitioner specifically contends that Byrne teaches cordless audio
`channel 240 and cellular audio channel 250, and that cordless and cellular
`subtask are assigned to cordless and cellular channels, respectively. Id. at 8–
`10 (citing Ex. 1003 ¶¶ 74–76; Ex. 1008, 6:36–8:43, Fig. 2; Ex. 1042, 1:55–
`2:8, Ex. 1043, 4:23–5:59; Ex. 1044, 4:23–5:59).
`Petitioner also contends that one of ordinary skill in the art “would
`have found it obvious that Byrne’s cordless and cellular radio channels are
`sampled and clocked individually according to different specifications
`required in the respective protocols.” Pet. 10 (citing Ex. 1003 ¶ 78)
`
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`(emphasis in original). Petitioner further contends that one of ordinary skill
`in the art “would have recognized and/or found obvious that Byrne’s
`cordless and cellular channels require or at least benefit from separate and
`individual sampling and clocking.” Id. (citing Ex. 1003 ¶ 78).
`Petitioner additionally contends that it was well known to sample
`continuous signals and reconstruct signals from a set of samples and that
`many receivers sample a signal at higher than twice the bandwidth of the
`signal, also called the Nyquist rate. Pet. 11 (citing Ex. 1003 ¶ 79; Ex. 1020,
`4–5, 10; Ex. 1024, 10; Ex. 1026, 6; Ex. 1030). Petitioner provides examples
`of such sampling in the DECT and GSM protocols and argues that one of
`ordinary skill in the art “would have recognized and/or found obvious that
`the DECT and GSM systems, which are examples of standards used for
`Byrne’s cordless and cellular channels, are sampled individually at different
`rates that accommodate different bandwidths.” Id. at 11–12 (citing Ex. 1003
`¶ 80; Ex. 1024; Ex. 1025; Ex. 1026; Ex. 1035, 4:14–18; Ex. 1036, 3:4–7;
`Ex. 1039, 3).
`According to Petitioner, a clock would provide timing to a processor
`and an analog-to-digital converter (“ADC”) that would be used to sample a
`received signal. Pet. 12 (citing Ex. 1003 ¶ 81; Ex. 1038, 1, 3, 4, 6; Ex. 1039,
`4–5, 10, 11–15). Petitioner, thus, argues that one of ordinary skill in the art
`would have understood that the clock driving the ADC at a
`receiver is the same as, or at least derived from, a clock driving
`the computational processor, as the samples created by the ADC
`stream into and are processed by the processor, and therefore the
`samples from the ADC should be synchronized with the
`computations at the processor.
`Id. (citing Ex. 1003 ¶ 81; Ex. 1039, 4–5, 11–15).
`
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`Petitioner also argues that the clock rate would control processor
`speed and be associated with the data rate. Pet. 12–13 (citing Ex. 1003 ¶ 81;
`Ex. 1038, 2–4; Ex. 1039, 1–4). Petitioner contends that one of ordinary skill
`in the art “would have recognized and/or found obvious that the dependence
`among various parameters including the sampling rate, the processor clock
`rate, the information data rate, and the computational requirements results in
`a clocking rate that is determined for each communication protocol.” Id. at
`13 (citing Ex. 1003 ¶ 82).
`Petitioner provides examples of the data rate, channels, and other
`parameters for DECT and GSM. Pet. 13 (citing Ex. 1014, 13; Ex. 1018, 1;
`Ex. 1038, 3; Ex. 1039, 3). Petitioner argues that one of ordinary skill in the
`art would have known “that a processor (such as in, or associated with, a
`transceiver) and its clock rate in each of these systems depends on the
`computational demands determined based on these parameters.” Id. at 13–
`14 (citing Ex. 1003 ¶ 83; Ex. 1020, 10; Ex. 1029, 4–5). Petitioner also
`argues that, because DECT and GSM parameters differ, one of ordinary skill
`in the art “would have found it obvious that Byrne’s cordless (e.g., DECT)
`channel is clocked separately and differently from Byrne’s cellular (e.g.,
`GSM) channel.” Id. at 14 (citing Ex. 1003 ¶ 83; Ex. 1008, 7:39–49).
`In Petitioner’s view, Byrne’s processors and associated components
`supporting cordless and cellular channels would need to be clocked
`differently for different data rates and communication parameters, and, thus,
`one of ordinary skill in the art would have found it obvious that Byrne’s
`cordless and cellular channels are sampled and clocked individually at their
`separate receivers. Pet. 14 (citing Ex. 1003 ¶ 84). Petitioner also argues that
`“the ’943 patent’s limited disclosure of individual sampling and clocking
`
`16
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`IPR2022-01004
`Patent 9,614,943 B1
`aligns with Byrne’s description” and knowledge in the art. Id. at 14–15
`(citing Ex. 1001, 4:32–38, 7:50–52; Ex. 1003 ¶ 85).
`For “wherein the processor comprises multiple ones of the one or
`more channels and is further configured to process a first data stream and a
`second data stream in parallel,” Petitioner argues that the ’943 patent
`provides a limited disclosure of channels in processors, and that Byrne
`teaches or would have rendered obvious a processor with parallel cordless
`and cellular channels. Pet. 15–16 (citing Ex. 1001, 4:24–29; Ex. 1003 ¶ 86;
`Ex. 1008, 7:25–43, Fig. 2); Ex. 1001, 12:7–9; see also Pet. vii (labeling the
`limitation “1[e]”). Petitioner also argues that Byrne can operate
`simultaneously as a cordless and cellular telephone, and thus, one of
`ordinary skill in the art would have understood, or found obvious, cordless
`and cellular data streams are being processed in parallel. Id. at 16–17 (citing
`Ex. 1003 ¶ 87; Ex. 1008, 8:2–15).
`Petitioner further argues that, if the limitation requires a single
`processor, Byrne teaches single microprocessor 210 and that it would have
`been known or obvious to use a single processor with multiple channels for
`processing cordless and cellular communications. Pet. 17 (citing Ex. 1001,
`4:15–31; Ex. 1003 ¶ 87; Ex. 1008, 7:26–9:30, Figs. 2, 3; Ex. 1045;
`Ex. 1046). Petitioner additionally contends that Byrne teaches processing
`data streams because it uses digital protocols for cordless and cellular voice
`and control data. Id. (citing Ex. 1003 ¶ 88; Ex. 1008, Abstr., 7:15–24, 8:16–
`23, 8:29–38).
`
`17
`
`
`
`IPR2022-01004
`Patent 9,614,943 B1
`a) Preliminary Response
`(1) “processor . . . configured to process a first data stream
`and a second data stream in parallel”
`Patent Owner responds that Byrne fails to disclose a “processor” that
`“is configured to process a first data stream and a second data stream in
`parallel.” Prelim. Resp. 1. According to Patent Owner, Byrne’s “processor
`does not process data streams at all, let alone in parallel” and, instead,
`“handles control logic for switching between the two modes.” Id.; see also
`id. at 4 (citing Pet. 8–9; Ex. 1001, 12:7–9), 9 (arguing similarly).
`In particular, Patent Owner argues that Byrne’s processor “controls
`call switching logic” and does not process any “data stream.” Prelim.
`Resp. 5 (citing Ex. 1008, 7:56–8:2, Figs. 3, 4). Patent Owner contends that
`Byrne’s Figures 3 and 4 do not show “any functionality for processing the
`incoming data stream.” Id. at 5–6 (citing Ex. 1008, Figs. 3, 4). Patent
`Owner also contends that Byrne describes its microprocessor as enabling
`receivers and transmitters and monitoring signals from those components but
`does not describe processing cellular or cordless signals. Id. at 6–7 (citing
`Ex. 1008, 8:16–32, 9:27–30).
`Patent Owner also argues that Petitioner fails to connect the alleged
`data streams to the microprocessor because Petitioner fails to explain “how
`the signal from the antenna is processed into an audio signal . . . without
`ever interacting with the microprocessor.” Prelim. Resp. 7–8 (citing Pet. 16;
`Ex. 1008, Fig. 2). In Patent Owner’s view, cordless signals from antenna
`228 go to band pass filter 270, cordless receiver 221, and then to cordless
`audio 240, and cellular signals follow a similar pathway. Id. Patent Owner
`contends that “the cordless and cellular communication components of
`Byrne do not rely on the microprocessor for processing the incoming
`
`18
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`IPR2022-01004
`Patent 9,614,943 B1
`cordless or cellular signal” and “the only thing the microprocessor does
`regarding the audio is control the audio switch.” Id. at 8 (citing Ex. 1008,
`8:39–43, Fig. 2). Patent Owner, thus, contends that Byrne does not disclose,
`and Petitioner fails to show, that Byrne’s “microprocessor processes the data
`streams into audio” and processes data streams on a single microprocessor.
`Id.
`
`Patent Owner further argues that Byrne’s processor is not configured
`to process cellular and cordless data streams in parallel. Prelim. Resp. 8.
`Patent Owner contends that Byrne switches between cordless and cellular
`communications in accordance with preferences and that Byrne’s audio
`switch further indicates that Byrne handles calls separately, not at the same
`time. Id. at 8–9 (citing Ex. 1008, 1:1–3, 1:30–32). Patent Owner also
`contends that Byrne teaches away from parallel processing because it states
`that “if components are shared between cellular and cordless parts, cellular
`and cordless operations can be performed at different times.” Id. at 9 (citing
`Ex. 1008, 8:9–15).
`(2) “one or more channels are sampled and clocked
`individually”
`Patent Owner also responds that Byrne fails to disclose “one or more
`channels are sampled and clocked individually.” Prelim. Resp. 1. In Patent
`Owner’s view, Petitioner recognizes that Byrne does not disclose the
`limitation and attempts to add it with obviousness arguments and declarant
`testimony. Id. at 1, 9 (citing Pet. 10). Patent Owner argues that Petitioner’s
`attempt to rely on purported knowledge in the art for a missing limitation
`should be rejected. Id. at 10.
`Patent Owner views Petitioner as “making an argument for
`obviousness based on the ‘common knowledge’ of a [person of ordinary
`
`19
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`IPR2022-01004
`Patent 9,614,943 B1
`skill in the art]” but the argument fails based on the analytical framework of
`Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361–1362 (Fed. Cir. 2016).
`Prelim. Resp. 10–11. Using Arendi, Patent Owner argues that there is no
`dispute that (1) Byrne does not disclose the “sampled and clocked
`individually” limitation, and that (2) the limitation “plays a major role in the
`subject matter claimed in the ’943 patent” because “the ’943 patent claims
`were specifically allowed because this limitation was added to the claims”
`and the Specification describes the importance. Id. at 11–12 (citing Pet. 4;
`Ex. 1001, 4:32–38, 7:50–52). Patent Owner contends that “it would be
`inappropriate” to use purported knowledge in the art to supply a missing
`limitation. Id. at 12.
`Patent Owner also argues that the Petition lacks analysis as to why
`one of ordinary skill in the art would have been motivated to modify Byrne
`in the manner proposed and, at best, shows that the ordinary skilled artisan
`would have had the capacity to add the limitation after having been informed
`of it. Prelim. Resp. 12. Patent Owner contends that showing capacity to
`make the modification is insufficient as a motivation to make the
`modification. Id. Patent Owner likens Petitioner’s argument to a Board
`proceeding where institution was denied because the asserted reference
`disclosed general information about a functionality and did not disclose the
`specific function to be modified. Id. at 12–13 (citing Lenovo Holding Co. v.
`InterDigital Tech. Corp., IPR2020-01514, Paper 11, 37 (PTAB Apr. 15,
`2021); Pet. 11–12). Patent Owner also contends that Petitioner relies on
`declarant testimony that is similarly deficient and lacks evidentiary support.
`Id. at 13 (citing Pet. 14; Ex. 1003 ¶¶ 81–82, 84; Ex. 1038; Ex. 1039).
`Patent Owner, thus, contends that Petitioner cannot rely on ordinary
`knowledge for the missing “sa
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