IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Sanjay K. Rao, et al.
`In re Patent of:
`9,084,291 Attorney Docket No.: 39843-0129IP1
`U.S. Patent No.:
`July 14, 2015
`
`Issue Date:
`Appl. Serial No.: 14/273,323
`
`Filing Date:
`May 8, 2014
`
`Title:
`INTERFACING INTERNET PROTOCOL-BASED WIRELESS
`DEVICES WITH NETWORKS
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 9,084,291 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`REQUIREMENTS FOR IPR .......................................................................... 1 
`A.  Grounds for Standing ................................................................................ 1 
`B.  Challenge and Relief Requested ............................................................... 1 
`C.  Claim Construction ................................................................................... 2 
`D.  Level of Ordinary Skill in the Art ............................................................. 2 
`
`SUMMARY OF THE ’291 PATENT ............................................................. 3 
`A.  Brief Description ....................................................................................... 3 
`B.  Prosecution History ................................................................................... 3 
`
`III.  THE CHALLENGED CLAIMS ARE UNPATENTABLE ............................ 4 
`A.  Raleigh, Sainton, and Gernert (Ground 1 – Claims 1-16) ........................ 4 
`1.  Overview of Raleigh ....................................................................... 4 
`2.  Overview of Sainton ........................................................................ 6 
`3. 
`Combination of Raleigh and Sainton .............................................. 8 
`4.  Overview of Gernert ...................................................................... 18 
`5. 
`Combination of Raleigh, Sainton, and Gernert ............................. 19 
`6.  Analysis ......................................................................................... 25 
`
`IV.  DISCRETIONARY CONSIDERATIONS ................................................... 82 
`A.  §314(a) .................................................................................................... 82 
`
`V. 
`
`FEES .............................................................................................................. 84 
`
`VI.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 85 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 85 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 85 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 85 
`D.  Service Information ................................................................................ 85
`
`i
`
`

`

`EX-1001
`
`EX-1002
`
`EX-1003
`
`EX-1004
`
`EX-1005
`
`EX-1006
`
`EX-1007
`
`EX-1008
`
`EX-1009
`
`EX-1010
`
`EX-1011
`
`EX-1012
`
`EX-1013
`
`EX-1014
`
`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`
`EXHIBITS
`
`U.S. Patent No. 9,084,291 to Sanjay K Rao, et al. (“the ’291 pa-
`tent”)
`
`Excerpts from the Prosecution History of the ’291 Patent (“the
`Prosecution History”)
`
`Declaration of Dr. Michael Allen Jensen
`
`U.S. Patent No. 6,144,711 to Gregory G. Raleigh, et al. (“Ra-
`leigh”)
`
`U.S. Patent No. 5,854,985 to Joseph B. Sainton, et al.
`(“Sainton”)
`
`[RESERVED]
`
`[RESERVED]
`
`U.S. Patent No. 6,600,734 to Alex Gernert, et al. (“Gernert”)
`
`U.S. Patent No. 5,768,691 to Jorma Matero, et al.
`
`U.S. Patent No. 5,479,479 to Michael F. Braitberg, et al.
`
`P.W. Wolniansky, et al., V-BLAST: An Architecture for Real-
`izing Very High Data Rates Over the Rich-Scattering Wireless
`Channel, published in 1998 URSI International Symposium on
`Signals, Systems, and Electronics. Conference Proceedings
`(Cat. No.98EX167) (October 1998) (“Wolniansky”)
`
`U.S. Patent No. 5,852,721 to Douglas M. Dillon, et al.
`
`U.S. Patent No. 5,425,050 to William F. Schreiber, et al.
`
`U.S. Patent No. 5,726,978 to Carl Magnus Frodigh, et al.
`
`ii
`
`

`

`EX-1015
`
`EX-1016
`
`EX-1017
`
`EX-1018
`
`EX-1019
`
`EX-1020
`
`EX-1021
`
`EX-1022
`
`EX-1023
`
`EX-1024
`
`EX-1025
`
`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`U.S. Patent No. 6,005,876 to Leonard Joseph Cimini, Jr., et al.
`(“Cimini”)
`
`T. Yamawaki et al., A 2.7-V GSM RF transceiver IC, in IEEE
`Journal of Solid-State Circuits, vol. 32, no. 12, pp. 2089-2096,
`Dec. 1997 (“Yamawaki”)
`
`C. Marshall et al., A 2.7 V GSM transceiver ICs with on-chip
`filtering, Proceedings ISSCC '95 - International Solid-State Cir-
`cuits Conference, 1995, pp. 148-149
`
`T. D. Stetzler, I. G. Post, J. H. Havens and M. Koyama, A 2.7-
`4.5 V single chip GSM transceiver RF integrated circuit, in
`IEEE Journal of Solid-State Circuits, vol. 30, no. 12, pp. 1421-
`1429, Dec. 1995
`
`TCM8030 Analog Baseband Processor User’s Guide, Texas In-
`struments, July 1997
`
`U.S. Patent No. 6,249,889 to Rochit Rajsuman, et al.
`
`U.S. Patent No. 6,449,741 to Donald V. Organ et al.
`
`U.S. Patent No. 6,463,298 to John R. Sorenson, et al.
`
`Jonathan Singer, A Shared Bus Architecture for a Digital Signal
`Processor and a Microcontroller, Department of Electrical Engi-
`neering and Computer Science, MASSACHUSETTS INSTI-
`TUTE OF TECHNOLOGY, submitted on May 20, 1996, in-
`dexed on June 11, 1996
`
`A. A. Abidi, Low-power radio-frequency ICs for portable com-
`munications, in Proceedings of the IEEE, vol. 83, no. 4, pp.
`544-569, April 1995
`
`800 MHz Cellular Service, Federal Communications Commis-
`sion (fcc.gov), available at https://www.fcc.gov/wireless/bu-
`reau-divisions/mobility-division/800-mhz-cellular-service
`
`iii
`
`

`

`EX-1026
`
`EX-1027
`
`EX-1028
`
`EX-1029
`
`EX-1030
`
`EX-1031
`
`EX-1032
`
`EX-1033
`
`EX-1034
`
`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`Paging, Federal Communications Commission (fcc.gov), avail-
`able at https://www.fcc.gov/wireless/bureau-divisions/mobility-
`division/paging#:~:text=Commercial%20paging%20oper-
`ates%20in%20the,(refer%20to%20band%20plan)
`
`Broadband Personal Communications Service (PCS), Federal
`Communications Commission (fcc.gov), available at
`https://www.fcc.gov/wireless/bureau-divisions/mobility-divi-
`sion/broadband-personal-communications-service-pcs
`
`Time and Frequency from A to Z, G, National Institute of
`Standards and Technology (NIST), available at
`https://www.nist.gov/pml/time-and-frequency-division/popular-
`links/time-frequency-z/time-and-frequency-z-
`g#:~:text=All%20GPS%20satellites%20broad-
`cast%20on,on%20L5%20at%201176%20MHz
`
`Part 11: Wireless LAN Medium Access Control (MAC) and
`Physical Layer (PHY) specifications, IEEE Std 802.11a-1999,
`September 16, 1999
`
`GSM Technical Specification, Digital cellular telecommunica-
`tion system (Phase 2+); Physical layer on the radio path; Gen-
`eral description (GSM 05.01 version 5.4.0), April 1998
`
`Complaint, Smart Mobile Technologies LLC v. Samsung Elec-
`tronics Co. Ltd. et al., Case No. 6:21-cv-00701 (WDTX)
`
`Joint Agreed Scheduling Order, Smart Mobile Technologies
`LLC v. Samsung Electronics Co. Ltd. et al., Case No. 6:21-cv-
`00701 (WDTX)
`
`
`Dictionary Definitions of “communication port,” “I/O port,”
`and “port” (IBM Dictionary of Computing, McGraw-Hill, Inc.,
`August 1993)
`
`U.S. Patent Application Publication No. 2002/0057682 to Jo-
`seph Michael Hansen, et al.
`
`iv
`
`

`

`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`
`Samsung Electronics Co., Ltd. (“Petitioner”) petitions for IPR of claims 1-16
`
`(“Challenged Claims”) of U.S. Patent No. 9,084,291 (“the ’291 patent”).
`
`I.
`
`REQUIREMENTS FOR IPR
`A. Grounds for Standing
`Petitioner certifies that the ’291 Patent is available for IPR. This petition is
`
`being filed within one year of service of a complaint against Petitioner. Petitioner
`
`is not barred or estopped from requesting this review.
`
`B. Challenge and Relief Requested
`Petitioner requests IPR on the grounds in the below table.
`
`Ground
`1
`
`Claims
`1-16
`
`Basis
`§103 – Raleigh, Sainton, and Gernert
`
`These references qualify as prior art to the ’291 patent’s earliest claimed pri-
`
`ority date (06/04/1999; “Critical Date”). Petitioner does not concede that the ’291
`
`patent is entitled to the claimed priority.
`
`Reference
`Raleigh
`Sainton
`
`Gernert
`
`Date
`08/27/1997 (filing)
`12/29/1998 (published)
`09/04/1996 (filing)
`12/17/1998 (filing)
`
`Statute
`§102(e)
`§102(a), (e)
`
`§102(e)
`
`
`
`
`
`1
`
`

`

`C. Claim Construction
`
`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`
`Based on the prior art’s description of the claimed elements being similar to
`
`that of the ’291 patent specification, no formal claim constructions are necessary in
`
`this proceeding because “claim terms need only be construed to the extent neces-
`
`sary to resolve the controversy.” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
`
`1355, 1361 (Fed. Cir. 2011).1
`
`D. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art at the Critical Date (“POSITA”) 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.
`
`EX-1003, ¶¶27-28. Additional graduate education could substitute for professional
`
`experience, or significant experience in the field could substitute for formal educa-
`
`tion. Id.
`
`
`1 Petitioner is not conceding that each claim satisfies all statutory requirements,
`
`such as §§101 and 112, nor is Petitioner waiving any arguments concerning claim
`
`scope or grounds that can only be raised in district court. For this petition, Peti-
`
`tioner applies prior art in a manner consistent with Patent Owner’s allegations of
`
`infringement before the district court.
`
`2
`
`

`

`II.
`
`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`SUMMARY OF THE ’291 PATENT
`A. Brief Description
`The ’291 patent describes a “cellular telephone/mobile wireless device
`
`(CT/MD)” equipped with multiple transmitters/receivers and multiple anten-
`
`nas. EX-1001, 1:45-55; EX-1003, ¶45-49. Distinguishing from “the typical
`
`CT/MD” having “one transmitter and one receiver (T/R), with one antenna,” the
`
`’291 patent’s CT/MD provides “enhanced capabilities” that “allow[] the single
`
`CT/MD to perform tasks in different environments.” Id.
`
`EX-1001, Figures 4 and 5A
`
`
`
`B.
`Prosecution History
`The Examiner allowed the claims after two rejections, finding the claims al-
`
`lowable based on features related to a second communication component. EX-
`
`1002, 5-126; EX-1003, ¶¶50-52.
`
`3
`
`

`

`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Raleigh, Sainton, and Gernert (Ground 1 – Claims 1-16)
`1. Overview of Raleigh2
`Raleigh provides “a system for more effectively taking advantage of multi-
`
`ple transmitter antennas and/or multiple receiver antennas to ameliorate the delete-
`
`rious effects of the inherent characteristics of wireless media.” EX-1004, 1:18-64,
`
`Abstract. Particularly, Raleigh describes “an efficient combination of a substan-
`
`tially orthogonalizing procedure (SOP) in conjunction with … a plurality of both
`
`transmitter and receiver antenna elements.” Id., 2:9-30. Raleigh’s techniques are
`
`adaptable to a multiple-input, multiple-output (MIMO) channel. EX-1004, 11:42-
`
`13:22, Figures 6-7, 13:23-37, 13:52-16:7, Figures 9-10; EX-1003, ¶¶53-54.
`
`
`
`Raleigh describes a transmitter system (e.g., base unit 152 in Figure 4) and a
`
`receiver system (e.g., remote unit 170a-b in Figure 4). EX-1004, 5:34-12:16; EX-
`
`1003, ¶55. The transmitter system performs “the transmitter portion of a substan-
`
`tially orthogonalizing procedure (SOP)” and generates “a parallel set of digital
`
`time domain signal sequences,” which are transmitted using Transmit Antenna Ar-
`
`ray 50 in parallel over multiple paths. Id., 6:21-7:52, 10:16-12:16, Figures 1, 4.
`
`
`2 General descriptions of the references and combinations thereof are incorporated
`
`into each subsection and mapping of the claims that includes citations to these ref-
`
`erences.
`
`4
`
`

`

`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`
`EX-1004, Figure 1
`
`
`
`
`
`EX-1004, Figure 43
`
`Raleigh’s receiver system receives “RF signals from each element of an An-
`
`tenna Array 110, and the received RF signals are fed into the “Receiver Space-Fre-
`
`quency Processor (RSFP) block 140.” EX-1004, 7:54-8:33, Figure 3. The RSFP
`
`performs “the receiver half of the SOP” and “spatial processing” and generates
`
`output data, which “is the estimated bit stream at the receive end of the radio link.”
`
`
`3 Color annotations added throughout.
`
`5
`
`

`

`Id., 8:34-10:2; EX-1003, ¶56.
`
`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`
`EX-1004, Figure 3
`
`
`
`Raleigh’s transmitter and receiver systems are implemented in each of the
`
`base and remote units for bidirectional communications. EX-1004, 10:23-24; EX-
`
`1003, ¶57.
`
`2. Overview of Sainton
`Sainton describes “frequency and protocol agile, wireless communication
`
`devices…using a variety of different radio frequencies, transmission protocols and
`
`radio infrastructures.” EX-1005, 1:8-12. Sainton uses an “omni-modal circuit”
`
`that is “implemented on a single VLSI chip or on a set of VLSI chips making up a
`
`chipset,” and included in “a variety of devices” such as “communication device
`
`402…having an integrated display device.” Id., 4:55-5:4, 5:30-31, 12:65-13:1,
`
`Figures 1A-B, 4A-B. Sainton’s circuit is “a truly self adaptive, omni-modal wire-
`
`6
`
`

`

`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`less product which enables an end user to access conveniently various wireless ser-
`
`vices in accordance with a selection process which is sufficiently under the control
`
`of the end user.” Id., 2:26-33. Sainton’s circuit “can be adjusted by the user, or
`
`automatically under stored program control, to transfer information over at least
`
`two different radio communications networks, and preferably all networks availa-
`
`ble in a particular area within the frequency range of the transceiver.” Id., 5:5-12.
`
`For example, the circuit switches between voice and data modes, leveraging vari-
`
`ous radio networks including the “European standard,” TDMA, CDMA, personal
`
`cellular systems, and “wireless LAN systems.” Id., 13:21-33, 5:13-29; EX-1003,
`
`¶58.
`
`EX-1005, Figures 1A-B
`
`
`
`7
`
`

`

`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`
`
`
`EX-1005, Figures 4A-B
`
`3.
`Combination of Raleigh and Sainton
`A POSITA would have found it obvious to modify Raleigh’s remote unit
`
`based on Sainton’s teachings for several reasons. EX-1003, ¶62. Although it
`
`would have been obvious that Raleigh’s system operates on a certain carrier fre-
`
`quency, Raleigh is silent as to specific wireless frequencies on which its system
`
`should work and does not limit its techniques to any frequency. EX-1003, ¶62;
`
`EX-1004, 2:1-9, 7:11-23 (“FDD systems”), 21:55-61, 29:64-30:18, 35:24-31, 2:44-
`
`50 (“frequency bin”), 14:39-51, 16:9-17:24. In fact, Raleigh notes that it “may be
`
`advantageous when the transceiver has the capability of choosing alternate fre-
`
`quency bands for communicating,” but does not provide details on specific fre-
`
`quencies or how frequency bands would be selected. EX-1004, 36:25-27; EX-
`
`1003, ¶66. From Raleigh’s disclosure, a POSITA would have understood or found
`
`8
`
`

`

`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`obvious that Raleigh’s remote unit is operable, or modifiable to operate, using vari-
`
`ous frequencies, and would have been motivated to investigate other references
`
`that provide details related to implementation and selection of wireless communi-
`
`cation frequencies. EX-1003, ¶62. As part of this investigation, a POSITA would
`
`have reviewed the well-known techniques of multiband or multi-modal mobile
`
`phones and would have naturally considered the disclosure of Sainton, which of-
`
`fers details of using “a variety of different radio frequencies, transmission proto-
`
`cols and radio infra-structures.” EX-1003, ¶62; EX-1009, 1:5-12 (“dual band radio
`
`telephones”), 2:46-3:20, 6:2-3, 6:60-66, 5:14-18, 8:19-22; EX-1022, 2:28-50.
`
`Therefore, a POSITA would have found it predictable and obvious to mod-
`
`ify Raleigh’s remote unit as a multiband hand-held telephone based on Sainton’s
`
`concept of an “omni-modal circuit” for “access[ing] conveniently various wireless
`
`services in accordance with a selection process which is sufficiently under the con-
`
`trol of the end user.” EX-1003, ¶63; EX-1005, 2:26-33, 1:8-12, 4:55-5:31, 12:65-
`
`13:1. Specifically, based on Sainton’s description of the benefits of multiband and
`
`multi-modal operation (EX-1005, 1:40-49, 3:4-15, 16:28-31, 18:31-41), a POSITA
`
`would have been motivated to modify Raleigh’s system to operate using different
`
`frequency bands and with different protocols. EX-1003, ¶63. In doing so, a
`
`POSITA would have found it obvious to adapt Raleigh’s system to operate using
`
`different frequency bands (as suggested in Raleigh itself, EX-1004, 36:25-27) and
`
`9
`
`

`

`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`adapt Raleigh’s remote unit to be able to switch between different protocols (e.g.,
`
`switch between Raleigh’s protocol and the additional protocols described by
`
`Sainton). EX-1003, ¶63.
`
`As one non-limiting example of the combination, a POSITA would have
`
`found it obvious to modify Raleigh’s remote unit to incorporate Sainton’s omni-
`
`modal circuit as an additional component that allows Raleigh’s remote unit to com-
`
`municate over not only the multipath wireless network implemented by Raleigh’s
`
`teachings (e.g., using “an efficient combination of a substantially orthogonalizing
`
`procedure (SOP) in conjunction with ... a plurality of both transmitter and receiver
`
`antenna elements”), but also a variety of other available networks described in
`
`Sainton (e.g., “U.S. cellular telephone network or Advanced Mobile Phone System
`
`(AMPS); alternative cellular telephone network standards such as the European
`
`standard; digitally modulated radiotelephone systems operating under various en-
`
`coding techniques”). EX-1003, ¶64; EX-1004, 2:9-63, 5:34-13:22, Figures 4-6;
`
`EX-1005, 4:55-10:42. In this combination, the remote unit would switch between
`
`use of Raleigh’s SOP-based multipath network and the other network services con-
`
`templated by Sainton, according to various switching techniques described in
`
`Sainton. EX-1003, ¶64; EX-1005, 2:40-52, 2:60-63, 3:10-15, 5:52-6:14, 16:28-
`
`19:25. For example, in the combined system, Raleigh’s SOP-based multipath
`
`communication techniques would be included in the “library of command, control
`
`10
`
`

`

`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`and data transmission protocols,” which is available for the remote unit, so that the
`
`remote unit operates to select an appropriate network among Raleigh’s network
`
`and other available networks described in Sainton and “implement the correct pro-
`
`tocols by consulting a lookup table during transmissions to obtain the data channel
`
`protocols appropriate to the system selected.” EX-1003, ¶64; EX-1005, 5:52-6:14,
`
`2:40-52.
`
`Further, in the combination, the selection among multiple network systems
`
`(e.g., between Raleigh’s network and Sainton’s networks) would be based on vari-
`
`ous criteria including those taught in Sainton, such as “(1) the cost of sending a
`
`data message, (2) the quality of transmission link (signal strength, interference ac-
`
`tual or potential), (3) the potential for being dropped from the system (is service
`
`provider at near full capacity), (4) the security of transmission, (5) any special cri-
`
`teria which the user could variably program into his omni-modal wireless product
`
`based on the user's desires or (6) any one or more combinations of the above fea-
`
`tures that are preprogramned, changed or overridden by the user.” EX-1003, ¶65;
`
`EX-1005, 2:40-52, 5:52-6:14. As an example, when Raleigh’s multipath network
`
`becomes unavailable or inappropriate (e.g., when the wireless device moves out of
`
`an area equipped with base stations or other network elements supporting the SOP-
`
`based multipath communication), the remote unit in the Raleigh-Sainton combina-
`
`tion would switch to one of its other available networks, as described in Sainton.
`
`11
`
`

`

`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`
`EX-1003, ¶65; EX-1005, 2:40-52, 5:52-6:14.
`
`A POSITA would have been motivated to apply Sainton’s teachings to Ra-
`
`leigh’s remote unit to incorporate Sainton’s additional benefits of being able to ac-
`
`commodate and switch between different frequencies/protocols into Raleigh’s re-
`
`mote unit while retaining Raleigh’s own advantages of multi-antenna communica-
`
`tion. EX-1003, ¶66. For example, the Raleigh-Sainton combination would have
`
`additionally offered Sainton’s benefits of providing “the best possible quality wire-
`
`less service at the lowest possible cost” by selectively “utilizing any one of the
`
`wireless data services within a given geographic area.” EX-1005, 2:40-52, 3:10-
`
`15, 1:7-13, 18:31-41, cl.1; EX-1003, ¶66. As Sainton explains, “[a]ny portable
`
`unit which is capable of interacting with more than one service provider or radio
`
`infrastructure would obviously have advantages over a portable unit which is capa-
`
`ble of accessing only a single service provider.” EX-1005, 1:40-49. Additionally,
`
`the Raleigh-Sainton combination would have provided improved geographical
`
`coverage. EX-1003, ¶67. For instance, Raleigh-Sainton’s wireless device would
`
`be capable of connecting to different wireless networks offered in different places
`
`or countries because Sainton’s circuit is designed for a variety of different wireless
`
`protocols available at different places. EX-1003, ¶67; EX-1005, 5:13-29, 16:28-
`
`31. Therefore, a POSITA would have recognized that the Raleigh-Sainton combi-
`
`nation would improve flexibility of the wireless device and its ease of use when
`
`12
`
`

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`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`roaming and traveling between different places or countries. EX-1003, ¶67.
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`Further, a POSITA would have recognized that the Raleigh-Sainton combi-
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`nation still provides the benefits of Raleigh’s wireless signal processing and trans-
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`mission/reception techniques—namely, increasing communication quality, achiev-
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`ing computational efficiency, reducing various types of interference, and increas-
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`ing spectral data efficiency. EX-1004, 1:31-33, 1:60-2:63, 11:29-41, 17:14-17,
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`17:47-53; EX-1003, ¶68. Indeed, as explained above, Raleigh’s network remains
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`in the combination as one of the selectable protocols/networks and can be used as
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`described in Raleigh when available and selected. EX-1003, ¶68.
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`A POSITA would have recognized that these benefits proffered by Raleigh
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`and Sainton were compatible, and the combination would have accomplished those
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`benefits in the same or similar way that each reference achieves. EX-1003, ¶69. A
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`POSITA would have appreciated that the Raleigh-Sainton combination does not
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`change the hallmark aspects of either reference, and the respective teachings would
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`work in combination similar to how they did apart, with Sainton’s suggestions
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`merely adding flexibility to Raleigh’s system and providing implementation details
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`related to frequency ranges. Id. Therefore, a POSITA would have been motivated
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`to achieve the benefits provided by Sainton’s multi-modal techniques while main-
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`taining the advantages of Raleigh’s communication technology as one of the se-
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`lectable options. Id. Specifically, Raleigh’s system, as modified to include
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`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`Sainton’s circuit, would remain unaffected and still achieve its intended objec-
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`tives—“a space-time signal processing system with advantageously reduced com-
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`plexity” and “effectively taking advantage of multiple transmitter antennas and/or
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`multiple receiver antennas to ameliorate the deleterious effects of the inherent
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`characteristics of wireless media”—when Raleigh’s network is available and se-
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`lected for communication. EX-1004, 1:60-63, 1:66-67; EX-1003, ¶69. Similarly,
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`Sainton’s overall structures and operations, which are designed to provide “a truly
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`omni-modal wireless product and method which is adaptive to the selectively vari-
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`able desires of the end user,” would operate similarly in the combination. EX-
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`1005, 2:35-39; EX-1003, ¶69. Thus, a POSITA would have been motivated and
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`found it obvious to combine Raleigh with Sainton to incorporate the additional
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`benefits proffered by Sainton into Raleigh’s remote unit with its own advantages.
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`EX-1003, ¶69.
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`Further, a POSITA would have been motivated to modify Raleigh’s remote
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`unit as a portable handheld mobile device as taught in Sainton for apparent benefits
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`afforded by wireless and cellular devices, such as portability and freedom to use
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`without wired connection. EX-1003, ¶70; EX-1005, 1:13-40. Indeed, Raleigh’s
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`remote unit 170a is depicted as a vehicle unit, and therefore a POSITA would have
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`understood or found it obvious that remote unit 170a includes or is easily modified
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`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`as a mobile wireless device, such as those shown in Sainton or other similar refer-
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`ences. EX-1003, ¶70; EX-1004, Figure 4; EX-1005, Figures 4A-B; EX-1008,
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`6:38-53, 1:34-37; EX-1010, 1:16-27.
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`Also, the Raleigh-Sainton combination would have modified Raleigh’s re-
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`mote unit to communicate and process signals for both voice and data separately,
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`as taught in Sainton. EX-1003, ¶71. Referring to Figure 1B, Sainton’s “omni-
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`modal circuit” includes a voice processing circuit and a data processing circuit,
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`each of which processes both analog and digital signals on a variety of protocols
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`and frequency bands. Id.; EX-1005, 5:13-29, 6:15-10:42. A POSITA would have
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`found it obvious that the remote unit in the Raleigh-Sainton combination separately
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`processes both voice and data signals (as described in Sainton) that are communi-
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`cated on one or more networks selected from among available networks including
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`Raleigh’s network and other networks described by Sainton. EX-1003, ¶71. As an
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`example, Raleigh-Sainton’s remote unit would be capable of processing both voice
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`and data signals being transmitted/received using Raleigh’s SOP-based network
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`that is selected based on various criteria as taught in Sainton. Id.
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`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
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`EX-1005, Figure 1B
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`A POSITA would have been motivated to implement Sainton’s separate
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`voice/data processing in Raleigh to achieve the benefits described by Sainton. EX-
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`1003, ¶72. For instance, Sainton’s separate voice/data processing “allows the user
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`to conduct a voice conversation and then to receive data for display on the inte-
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`grated display device.” EX-1005, 13:20-27. In fact, Sainton’s “omni-modal cir-
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`cuit could access another communication service to receive data for display, or it
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`might receive data over a subchannel during the conversation,” which is “particu-
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`larly advantageous if the user desired to continue a voice call while continuing to
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`receive data information.” Id., 13:27-32. From this disclosure, a POSITA would
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`Attorney Docket No. 39843-0129IP1
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`have been motivated to achieve Sainton’s benefits of separate voice and data pro-
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`cessing to enable a user to carry out a voice conversation while also receiving data.
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`EX-1003, ¶72.
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`Finally, a POSITA would have had a reasonable expectation of success in
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`combining Raleigh and Sainton as discussed above. EX-1003, ¶73. As Dr. Jensen
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`explains, a POSITA would have recognized that relatively simple switching tech-
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`nology would have been needed to switch between Raleigh’s network and the net-
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`works described by Sainton. Id. In fact, Sainton describes its techniques as useful
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`with many types of available networks and with various antenna and transceiver
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`configurations. EX-1005, 5:8-29, 6:45-55. Sainton also describes its circuit “as a
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`standard building block for radio voice and/or data communications devices,”
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`which allows “manufacturers to customize the operation of the circuit with little or
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`no additional components” and “quickly and easily integrate the complex features
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`of the device into a use friendly consumer product.” Id., 10:29-42. For these rea-
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`sons, the modifications to Raleigh needed to implement the combination with
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`Sainton would have been well within the grasp of a POSITA, and a POSITA would
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`have had a reasonable expectation of success in making the combination. EX-1003,
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`¶73.
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`Attorney Docket No. 39843-0129IP1
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`4. Overview of Gernert
` Gernert describes “[a]n apparatus for interfacing a wireless local area net-
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`work with a wide area, cellular or public switched telephone network including the
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`function of a wireless LAN base station or access point, and a gateway.” EX-1008,
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`Abstract. Gernert’s apparatus “combines the functions of a wireless communica-
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`tion system access point and a telephony gateway in a single unit,” through which
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`“remote mobile units 15” communicate on various communication protocols, such
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`as “IEEE 802.11 data link protocol, other wireless LANs or WANs and other types
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`of media access control, including FDMA, TDMA, CDMA.” Id., 7:59-8:24, 6:47-
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`49; EX-1003, ¶59. Further, Gernert’s apparatus “functions as a data downloading
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`station … and also transmits the downloaded data to an IP network, a WAN or the
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`PSTN.” EX-1008, 4:44-48, 5:5-34. Moreover, Gernert’s apparatus includes “a
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`docking station or well designed to receive the handset or other portable computer
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`device to recharge the battery of the handset or optionally transfer data or control
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`information when the phone or device is secured in the well.” Id., 5:29-34, 9:63-
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`10:8, Figure 3; EX-1003, ¶60.
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`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
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`EX-1008, Figure 3
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`5.
`Combination of Raleigh, Sainton, and Gernert
`A POSITA would have recognized various advantages and would have been
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`motivated to modify Raleigh-Sainton’s wireless device based on Gernert’s teach-
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`ings such that the wireless device connects to an access point/gateway apparatus as
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`taught in Gernert. EX-1003, ¶74. Specifically, a POSITA would have found it ob-
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`vious to implement Raleigh-Sainton’s wireless device to be used with Gernert’s
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`apparatus in the same or similar way to Gernert’s mobile unit being used with the
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`apparatus. Id.
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`Multiple reasons would have prompted a POSITA to make the modification
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`Attorney Docket No. 39843-0129IP1
`IPR of U.S. Patent No. 9,084,291
`to Raleigh-Sainton. First, a POSITA would have been motivated to modify Ra-
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`leigh-Sainton’s remote unit based on Gernert’s teaching (e.g., connecting a mobile
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`unit to an access point/gateway apparatus) to enable the remote unit to be used as a
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`voice over IP phone, which provides a reliable connection at a low cost, compared
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`to traditional circuit-switched telephone networks. EX-1003, ¶75. Particularly,
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`Gernert’s apparatus includes “Voice Gateway 62” that interfaces a wired telephone
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`network (e.g., PSTN) and allows Raleigh-Sainton’s telephone to communicate on a
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`wired IP connection by “utiliz[ing] signal processor and codecs to translate the
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`voice packets into analog audio signals suitable for transmission over a public
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`switched telephone network.” Id.; EX-1008, 8:25-48, Figure 3; EX-1005, 5:28-29.
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`Indeed, Gernert describes benefits of “faster speeds and higher bandwidth” pro-
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`vided by cable transmission lines and a POSITA would have been motivated to en-
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`a