`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.,
`Petitioner,
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`v.
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`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
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`Case IPR2022-01249
`Patent 9,019,946 B1
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`PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
`PURSUANT TO 37 C.F.R. § 42.123(a)
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`
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`
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`EX-1001
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`EX-1002
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`EX-1003
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`EX-1004
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`EX-1005
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`EX-1006
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`EX-1007
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`EX-1008
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`EX-1009
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`EX-1010
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`EX-1011
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`UPDATED EXHIBIT LIST
`U.S. Patent No. 8,842,946 to Sanjay K Rao, et al. (“the ’946
`patent”)
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`Excerpts from the Prosecution History of the ’946 Patent (“the
`Prosecution History”)
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`Declaration of Dr. Michael Allen Jensen
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`U.S. Patent No. 6,711,146 to Leonid A. Yegoshin
`(“Yegoshin”)
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`U.S. Patent No. 5,784,032 to Ronald H. Johnston, et al.
`(“Johnston”)
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`U.S. Patent No. 5,590,133 to Lars Billström, et al.
`(“Billström”)
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`U.S. Patent No. 5,497,339 to Marc A. Bernard (“Bernard”)
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`International Patent Publication No. WO 98/27748
`(“WO748”)
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`U.S. Patent No. 5,854,985 to Joseph B. Sainton, et al.
`(“Sainton”)
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`U.S. Patent No. 6,031,503 to Joseph A. Preiss, II, et al.
`(“Preiss”)
`
`Larry L. Peterson and Bruce S. Davie, Computer Networks: A
`Systems Approach, Morgan Kaufmann Publishers, Inc., San
`Francisco, CA, 1996
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`EX-1012
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`Andrew S. Tanenbaum, Computer Networks, Third Edition,
`Prentice Hall PTR, Upper Saddle River, NJ, 1996
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`i
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`EX-1013
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`EX-1014
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`EX-1015
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`EX-1016
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`EX-1017
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`EX-1018
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`EX-1019
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`EX-1020
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`EX-1021
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`EX-1022
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`EX-1023
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`EX-1024
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`EX-1025
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`EX-1026
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Merilee Ford, H. Kim Lew, Steve Spanier, and Tim Stevenson,
`Internetworking Technologies Handbook, New Riders
`Publishing, Indianapolis, IN, 1997
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`William Stallings, Data and Computer Communications, 5th
`Edition, Prentice Hall, Upper Saddle River, NJ, 1996
`
`Dictionary Definition of “time division multiplex” (Newton’s
`Telecom Dictionary, 1998)
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`U.S. Patent No. 6,115,615 to Takeshi Ota, et al.
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`U.S. Patent No. 6,366,622 to Stephen Joseph Brown, et al.
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`U.S. Patent No. 6,560,443 to Ari Vaisanen, et al.
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`U.S. Patent No. 5,680,633 to Steven E. Koenck, et al.
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`U.S. Patent No. 6,047,322 to Aseem Vaid, et al.
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`Excerpts from Theodore S. Rappaport, Wireless
`Communications Principles & Practice, Prentice Hall, 1996
`
`R. G. Vaughan, et al., Antenna diversity in mobile
`communications, in IEEE Transactions on Vehicular
`Technology, vol. 36, no. 4, pp. 149-172, Nov. 1987
`
`S. M. Alamouti, A simple transmit diversity technique for
`wireless communications, in IEEE Journal on Selected Areas
`in Communications, vol. 16, no. 8, pp. 1451-1458, Oct. 1998
`
`Excerpts from Douglas E. Comer, Internetworking with
`TCP/IP Volume One, Third Edition, 1995
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`U.S. Patent No. 5,768,691 to Jorma Matero, et al.
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`U.S. Patent No. 5,960,344 to Ronald L. Mahany
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`ii
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`European Patent Application 0 660 626 A2 to John Daniel
`Byrne
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`Excerpts from William C. Jakes, Microwave Mobile
`Communications, IEEE Press, 1974
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`[RESERVED]
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`Yi-Bing Lin, Cellular digital packet data, in IEEE Potentials,
`vol. 16, no. 3, pp. 11-13, Aug.-Sept. 1997
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`A. K. Salkintzis, Packet data over cellular networks: the
`CDPD approach, in IEEE Communications Magazine, vol. 37,
`no. 6, pp. 152-159, June 1999
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`C. E. Perkins et al., A mobile networking system based on
`Internet protocol, in IEEE Personal Communications, vol. 1,
`no. 1, pp. 32-41, 1st Qtr. 1994
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`K. C. Budka, H. Jiang and S. E. Sommars, Cellular digital
`packet data networks, in Bell Labs Technical Journal, vol. 2,
`no. 3, pp. 164-181, Summer 1997
`
`[RESERVED]
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`U.S. Patent No. 6,353,443 to Zhinong Ying
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`U.S. Patent No. 5,790,176 to Bernard Jeff Craig
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`U.S. Patent No. 6,230,194 to Jean-Marc Frailong et al.
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`EX-1027
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`EX-1028
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`EX-1029
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`EX-1030
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`EX-1031
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`EX-1032
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`EX-1033
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`EX-1034
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`EX-1035
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`EX-1036
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`EX-1037
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`EX-1038
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`U.S. Patent No. 6,600,734 to Alex Gernert, et al.
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`EX-1039
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`Jon D. Brady, Virtual Private Networking – The Flexible
`Approach, Institution of Electrical Engineers, 1997
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`EX-1040
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`U.S. Patent No. 6,055,575 to Gaige B. Paulsen, et al.
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`iii
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`EX-1041
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`EX-1042
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`EX-1043
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`EX-1044
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`EX-1045
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`EX-1046
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`EX-1047
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`EX-1048
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`EX-1049
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Complaint, Smart Mobile Technologies LLC v. Samsung
`Electronics Co. Ltd. et al., Case No. 6:21-cv-00701 (WDTX)
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`Joint Agreed Scheduling Order, Smart Mobile Technologies
`LLC v. Samsung Electronics Co. Ltd. et al., Case No. 6:21-cv-
`00701 (WDTX)
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`Complaint, Smart Mobile Technologies LLC v. Apple Inc.,
`Case No. 6:21-cv-00603 (WDTX)
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`Joint Agreed Scheduling Order, Smart Mobile Technologies
`LLC v. Apple Inc., Case No. 6:21-cv-00603 (WDTX)
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`U.S. Patent No. 4,989,230 to Steven F. Gillig, et al.
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`Amended Joint Agreed Scheduling Order, Smart Mobile
`Technologies LLC v. Samsung Electronics Co. Ltd. et al., Case
`No. 6:21-cv-00701 (WDTX)
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`Amended Joint Agreed Scheduling Order, Smart Mobile
`Technologies LLC v. Apple Inc., Case No. 6:21-cv-00603
`(WDTX)
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`Excerpts from Constantine A. Balanis, Antenna Theory
`Analysis and Design, Harper & Row, 1982
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`Declaration of Aamir A. Kazi in Support of Pro Hac Vice
`Admission
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`EX-1050
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`Supplemental Declaration of Dr. Michael Allen Jensen
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`iv
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`I.
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
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`INTRODUCTION
`Pursuant to 37 C.F.R § 42.123(a), and as authorized by the Board (Paper 22
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`at 3), Petitioner hereby moves to submit Exhibit EX-1050 (“Supplemental
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`Declaration of Dr. Michael A. Jensen”) as supplemental information.
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`Petitioner’s motion to submit supplemental information in the form of Dr.
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`Jensen’s supplemental declaration (EX-1050) should be granted because this motion
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`meets both requirements laid out in 37 C.F.R. § 42.123(a). Consistent with the first
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`requirement, Petitioner timely requested authorization to file this motion within one
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`month of the Institution Decision. See Paper 13. Dr. Jensen’s supplemental
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`declaration (EX-1050) is also relevant to a claim for which trial has been instituted,
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`as per §42.123(a)’s second requirement. As explained below, EX-1050 includes
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`supplemental testimony regarding how certain features recited in claims 1, 9, 10, 14,
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`15, 28, and 29 of the ’946 patent would have been understood by a POSITA in view
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`of the ’946 patent and in the context of the prior art combinations relied upon in the
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`Petition and in Dr. Jensen’s original declaration (EX-1003). See EX-1050; see also
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`Paper 13 (Institution Decision), 24 (“The issues raised by Patent Owner, however,
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`would benefit from further development of the record at trial.”), 38. EX-1050
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`confirms that the Petition and Dr. Jensen’s original declaration (EX-1003)
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`adequately demonstrated how the applied references relied upon in the petition
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`render obvious claims 1, 9, 10, 14, 15, 28, and 29 (and their respective dependent
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`1
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`claims). For these reasons, this motion should be granted and EX-1050 should be
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`entered into evidence. The Board routinely allows supplemental information under
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`similar circumstances, and Petitioner respectfully requests that it do so here.
`II. BACKGROUND
`On July 6, 2022, Petitioner filed a Petition for inter partes review of claims 1-
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`21 and 26-30 of the ’946 patent. On January 24, 2023, the Board instituted a trial
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`on these claims, having determined that Petitioner had demonstrated a reasonable
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`likelihood of prevailing with respect to at least one claim. Paper 13, 53. However,
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`the Board indicated that, with respect to claim 1, “Petitioner’s arguments do not
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`show adequately that Yegoshin would have been understood to have multiplexed
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`signals, or that Bernard ‘includes or operates as a multiplexer for combining the data
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`packets.’” Id., 38. Further, the Board invited the parties to further develop the record
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`to address the issues in claim 14 raised by Patent Owner. Id., 24. Moreover, in a
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`related matter (IPR2022-01248 for Patent No. 8,842,653 (“’653 patent”)), the same
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`panel encouraged the parties to expand on additional aspects of the cited prior art
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`with respect to the ’653 patent’s claims 9, 10, 15, and 28, which correspond to the
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`’946 patent’s 9, 10, 15, 28, and 29.
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`Petitioner timely requested authorization to file this motion on February 24,
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`2023, within one month of institution (January 24, 2023). The Board subsequently
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`authorized Petitioner to file a motion to submit supplemental information. Paper 22.
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`2
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Per the Board’s authorization, Petitioner hereby moves to submit EX-1050.
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`III. ARGUMENT
`Under 37 C.F.R. § 42.123(a), a motion to submit supplemental information
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`has the following two requirements: (1) “[a] request for the authorization to file a
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`motion to submit supplemental information is made within one month of the date
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`the trial is instituted”; and (2) the “information must be relevant to a claim for which
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`the trial has been instituted.” This Motion meets both prongs.
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`A. The Request is Timely
`As discussed above, Petitioner requested authorization to file this motion on
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`February 24, 2023, within one month of the institution decision.
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`B.
`EX-1050 is Relevant to Instituted Claims
`Petitioner seeks to correct an apparent misunderstanding in the Institution
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`Decision relating to its unpatentability arguments presented in the Petition. In
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`particular, Dr. Jensen’s supplemental declaration (EX-1050) provides testimony
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`relating to how a POSITA would have understood the term “multiplex” as used in
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`independent claim 1 and how this term is rendered obvious by the cited prior art,
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`particularly in the context of the features of the prior art combination discussed in
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`the Petition. Petition, 33-42. Further, EX-1050 provides testimony addressing the
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`Board’s observations in claims 9, 10, 14, 15, 28, and 29 and how the cited prior art
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`including Johnston (EX-1005) and Bernard (EX-1007) are mapped to these claims.
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`3
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Petition, 52-53, 23-28, 82-82. This testimony informs analysis of the grounds set
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`forth in the Petition and, therefore, EX-1050 is relevant to at least claims 1, 9, 10,
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`14, 15, 28, and 29 for which trial has been instituted.
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`C. Numerous Cases Support Granting Petitioner’s Motion
`The Board has routinely granted motions for supplemental information under
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`similar circumstances. See, e.g., Apple Inc. v. Telefonaktiebolaget LM Ericsson,
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`IPR2022-00343, Paper 14 (PTAB Nov. 10, 2022); MED-EL Elektromedizinische
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`Geraete GmbH v. Advanced Bionics AG, IPR2020-00190, Paper 24 (PTAB Aug. 10,
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`2022); Frameless Hardware Company, LLC v. CR Laurence Co., Inc., IPR2022-
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`00356, Paper 29 (PTAB Oct. 25, 2022); Valeo v. Magna Elecs., IPR2014-01204,
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`Paper 26 (PTAB Apr. 10, 2015); Motorola Solutions, Inc. v. Mobile Scanning Tech.,
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`IPR 2013-00093, Paper 37 (PTAB Jun. 28, 2013).
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`In Ericsson, for example, the Board granted institution on the basis of a first
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`set of claims, but raised concerns over the challenge to a second set of claims.
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`Specifically, in the portion of the Ericsson Institution Decision addressing the
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`second set of claims, the Board questioned whether a particular claim term was met
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`in the prior art and invited the parties to address the particular claim term during the
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`IPR trial. Ericsson, Paper 14 at 2 (citing Paper 6 (Institution Decision), 14, 17-18).
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`In that case, the Board granted Petitioner’s motion to submit supplemental
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`information, which included a supplemental declaration that addressed the claim
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`4
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`term over which the Board raised a concern in its Institution Decision. Id. at 3-6.
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`The facts in Ericsson are nearly identical to those present here. Indeed,
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`Petitioner’s supplemental information is analogous to the supplemental information
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`in Ericsson because it addresses concerns raised in the Institution Decision over
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`certain claims terms, such as “multiplex.” Paper 13 at 24, 38; see also IPR2022-
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`01248, Paper 13 (Institution Decision) at 25, 38. And, similar to Ericsson, the
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`findings in the Institution Decision encouraged the parties to further develop the
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`record as it relates to the claim features including the relevant terms (e.g., “network
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`paths” and “communication paths”). Paper 13 at 24; see also IPR2022-01248, Paper
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`13 at 33-34, 47, 56 The present motion and supplemental declaration seek to do just
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`that—develop the record to ensure the Board has a complete record on which to base
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`its final determination of patentability.
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`Other panels also have reached the same result on similar facts. In MED-EL,
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`the Board granted entry of supplemental information in the form of a second expert
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`declaration that explained and clarified an argument made in the Petition regarding
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`a prior art reference that Petitioner perceived was misunderstood by the Board in the
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`Institution Decision. IPR2020-00190, Paper 24 at 4-5 (PTAB Aug. 10, 2022).
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`Similarly, in Frameless Hardware, the Board granted entry of a second expert
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`declaration that offered additional testimony about prior art models discussed in an
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`original declaration. IPR2022-0035, Paper 29 at 5-7 (PTAB Oct. 25, 2022).
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`5
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Like the supplemental information admitted in Ericsson and the other cases
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`listed above, Dr. Jensen’s supplemental declaration (EX-1050) does not change the
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`grounds of unpatentability authorized in the proceeding, and instead merely clarifies
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`(1) how a POSITA would have understood certain claim terms, such as “multiplex”
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`and “communication paths,” (2) how limitations including these terms are rendered
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`obvious by the disclosure of the cited prior art, including Yegoshin (EX-1004) and
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`Bernard (EX-1007), based on the obviousness analysis provided in the Petition and
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`in EX-1003, and (3) how the limitations in certain dependent claims were addressed
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`in the Petition and in EX-1003. See Ericsson, Paper 14 at 4-5; MED-EL, Paper 24
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`at 4-5; Frameless Hardware, Paper 29 at 5-7.
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`In fact, Petitioner requests entry of EX-1050 at this time to facilitate full and
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`early consideration by the Patent Owner and the Board of the issues addressed.
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`Indeed, Patent Owner will be in possession of the supplemental information
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`contemporaneous with this motion’s filing, which is more than two months before
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`the May 16, 2023 due date of the Patent Owner’s Response. The Patent Owner has
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`yet to notice or take any deposition. Thus, allowing the information into the record
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`would not disrupt the Board’s schedule. In fact, far from being prejudiced or
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`otherwise burdened by entry of this supplemental declaration into the record as
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`supplemental information, Patent Owner stands to benefit in being able to address
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`the testimony provided at an early stage of the proceeding (including in its Patent
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`6
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Owner Response where it has the opportunity to submit evidence). Such a thorough
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`vetting is warranted given the issues raised by the Board, as well as the complexity
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`of disclosure in both the ’946 patent and the prior art applied in the instituted
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`grounds. The entry of EX-1050 at this time would not limit the Board’s ability to
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`complete this proceeding within its statutory deadline. In fact, early entry of this
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`supplemental testimony would promote timely resolution of this proceeding and
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`contribute to developing a full and complete record. The public would benefit from
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`the development of a full and complete record on these issues because it allows the
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`Board to have at its disposal all relevant information and fully developed arguments
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`from both parties when rendering a Final Written Decision.
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`Further, Petitioner does not seek to rely upon new prior art in the grounds
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`of unpatentability or refer to new or different embodiments of relied-on prior
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`art. Indeed, the issues on which Dr. Jensen now offers testimony address positions
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`already taken in the Petition and his prior declaration. See, e.g., EX-1003, ¶¶126
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`(explaining that Yegoshin teaches both simultaneous and selective connections of
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`cellular and WLAN calls), 127-135, 140-141 (explaining the term “multiplex” and
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`Bernard’s teaching in that regard; explaining Bernard’s teaching of simultaneous use
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`of different communication circuits), 155-159, 167 (explaining the unpatentability
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`of claim 9 by the cited prior art), 168-169 (explaining the unpatentability of claim
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`10 by the cited prior art), 94-98 (explaining the unpatentability of 14[j]), 102-108
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`7
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`(explaining that the prior art including Johnston teaches “multiple simultaneous
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`communication paths” in claim 15), 255-257 (explaining the unpatentability of
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`claims 28 and 29); Petition, 23-25, 33-42, 52-53, 23-28, 82-82. Thus, the grounds
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`remain the same. As noted in Ericsson, if Petitioner’s supplemental information is
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`used to improperly raise a new issue in Reply, Patent Owner will have an opportunity
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`to address it at that time. Ericsson, Paper 14 at 5 (citing Patent Trial and Appeal
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`Board Consolidated Trial Practice Guide, 80–81 (Nov. 2019)).
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`D.
`Patent Owner’s Arguments are Without Merit
`In the telephone conference of March 1, 2023, Patent Owner asserted that the
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`opinion of Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435 (Fed. Cir.
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`2015) required Petitioner to demonstrate why the supplemental information could
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`not have been filed with the Petition. In Redline, however, the Petitioner did not rely
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`on an expert declaration in its Petition, and then it sought to submit a sixty-plus page
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`de novo declaration for the first time with accompanying exhibits raising new issues.
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`Id. at 448-449 (“Redline fails to appreciate the stark difference between the short,
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`supplemental expert report, which the PTAB reasonably permitted in Pacific Market
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`International, and its de novo expert report submitted for the first time.”). The
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`present facts are readily distinguishable from Redline (and similar to Pacific
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`Market), as Petitioner seeks to file a supplemental declaration by its expert that refers
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`to and supplements similar testimony provided in the expert’s original declaration,
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`8
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`which was filed with the Petition. In fact, Dr. Jensen’s supplemental declaration
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`clarifies Petitioner’s reliance on certain prior art references (Yegoshin, Bernard, and
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`Johnston) and corrects misunderstandings reflected in the Institution Decision (as it
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`relates to the term “multiplex”), which Petitioner should not have been expected to
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`anticipate when the Petition was filed. Further, as discussed above, the bases for the
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`grounds remain the same.
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`Notably, section 42.123(a) does not require Petitioner to explain why the
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`supplemental information reasonably could not have been obtained earlier. Redline
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`Detection, 811 F.3d at 443-45; Ericsson, IPR2022-00343, Paper 14 at 5 (“In Redline
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`Detection, however, the Federal Circuit ruled that whether supplemental information
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`reasonably could not have been submitted with the petition is a factor that may be
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`considered in evaluating a motion to submit the supplemental information; this does
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`not stand for the proposition that a petitioner filing a motion under § 42.123(a) must
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`demonstrate the supplemental information could not have been submitted with the
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`petition as it would be required to do under § 42.123(b).”); MED-EL, IPR2020-
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`00190, Paper 24 at 4-5; Apple, Inc. v. Uniloc 2017 LLC, IPR2019-00251, Paper 23,
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`6 (PTAB July 20, 2020) (Petitioner’s decision not to explain why the information
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`could not have been obtained earlier or why the granting the motion would be in the
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`interests of justice did “not warrant denying Petitioner’s motion,” which was timely
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`requested and relevant to a claim for which trial had been instituted); see also Valeo,
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`9
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`IPR2014-01204, Paper 26, 4 (“Petitioner need not demonstrate that the supplemental
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`information proffered could not have been obtained earlier”). Such a requirement
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`would eliminate almost all submissions of supplemental information and frustrate
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`the statutory mandate to “establish[] procedures for the submission of supplemental
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`information after the petition is filed.” 35 U.S.C. § 316(a)(3). That said, even if
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`the Board should decide to impose such a requirement, it should be clear from the
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`foregoing discussion that the statements made by the Board in the Institution
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`Decision could not have been anticipated when filing the Petition and could not have
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`been addressed in advance.
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`Further, this supplemental information does not circumvent page limits for the
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`Petition and Reply. See Ericsson, Paper 14 at 5. Rule 37 C.F.R. § 42.6(a)(3)
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`prohibits incorporation by reference, so if the evidence submitted is not explained in
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`the Reply, it may not be considered. Id. (citing Cisco Sys., Inc. v. C-Cation Techs.,
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`LLC, IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014) (informative)).
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner requests grant of this motion to submit
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`EX-1050 as supplemental information and entry of the same into evidence.
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`Dated March 9, 2023
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`Respectfully submitted,
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`
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`/Jeremy J. Monaldo/
`Jeremy J. Monaldo, Reg. No. 58,680
`Attorney for Petitioner
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`10
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on March 9,
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`2023, a complete and entire copy of this Petitioner’s Motion to Submit
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`Supplemental Information was provided by email, to the Patent Owner, by
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`serving the correspondence addresses of record as follows:
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`Rex Hwang
`Todd Martin
`SKIERMONT DERBY LLP
`633 West 5th Street, Suite 5800
`Los Angeles, CA 90071
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`Philip J. Graves
`Greer N. Shaw
`GRAVES & SHAW LLP
`355 S. Grand Ave., Suite 2450
`Los Angeles, CA 90071
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`Email: rhwang@skiermontderby.com
`tmartin@skiermontderby.com
`pgraves@gravesshaw.com
`gshaw@gravesshaw.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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`EXHIBIT 1050
`EXHIBIT 1050
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.,
`Petitioner,
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`v.
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`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
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`Case IPR2022-01249
`Patent 9,019,946 B1
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`SUPPLEMENTAL DECLARATION OF DR. MICHAEL ALLEN JENSEN
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`I.
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`TABLE OF CONTENTS
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`Introduction ....................................................................................................... 1
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`II. Overview of The Term “multiplex” .................................................................. 2
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`A. Multiplexing Signals Does Not Require The Signals To Only
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`Be Communicated Simultaneously ....................................................... 3
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`1.
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`2.
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`3.
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`Discussion of Term “Multiplex” in Original Declaration .......... 3
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`The ’946 Patent’s Description of the Term “Multiplex” ............ 6
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`Priority Application Description of the Term “Multiplex” ........ 8
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`B.
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`Bernard’s Teaching of Multiplexing Is Consistent With Well-
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`Known Meaning of the Term “Multiplex” ..........................................10
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`1.
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`Bernard’s Notable Features .......................................................12
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`2. More Details of Bernard’s Communication Server (750) ........15
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`3.
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`Bernard is Consistent With a Meaning of “Multiplexing”
`that Does Not Distinguish Signals By Time Scale ...................17
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`III. Ground I Renders Claim elements (1[i], 2, 3, 4, 16) Reciting
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`“Multiplexed Signals” Obvious .....................................................................19
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`A. Yegoshin Teaches Both Simultaneous and Selective
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`Connections of Cellular and WLAN Calls..........................................19
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`B.
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`Yegoshin-Bernard Based Combination Teaches “Multiplexed
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`Signals” Limitation in 1[i] ...................................................................21
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`C.
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`Bernard’s “quad UART 667” (FIG. 13) ..............................................23
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`D.
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`Bernard’s “Multiplexer/Decoder” (FIG. 14) .......................................26
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`IV. Ground I Renders Claims 9, 10, 14, 15, 28, and 29 Obvious .........................30
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`A.
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`Claim 9 ................................................................................................30
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`1.
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`2.
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`Yegoshin Teaches Claim 9 .......................................................30
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`Johnston’s Antenna Diversity With Respect To Claim 9 .........32
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`Claim 10 ..............................................................................................36
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`Claim 14 ..............................................................................................38
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`B.
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`C.
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`D.
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`Claims 15, 28, and 29 ..........................................................................39
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`V. Additional Remarks ........................................................................................41
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`ii
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`I.
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`INTRODUCTION
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`1. My name is Michael A. Jensen, and I have been retained by counsel for
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`Petitioner Samsung Electronics Co., Ltd. (“Samsung” or “Petitioner”) as an expert
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`witness to provide assistance regarding U.S. Patent No. 9,019,946 (“the ’946
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`patent”). Specifically, I have been asked to consider the validity of claims 1-21 and
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`26-30 of the ’946 Patent (the “Challenged Claims”) in view of prior art, obviousness
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`considerations, and understanding of a person of ordinary skill in the art as of the
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`Critical Date of June 4, 1999 (“POSITA”). See EX-1003, ¶¶23-139. I have personal
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`knowledge of the facts and opinions set forth in this declaration and believe them to
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`be true. If called upon to do so, I would testify competently thereto.
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`2.
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`I am being compensated for my time at my standard consulting rate. I
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`am also being reimbursed for expenses that I incur during the course of this work.
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`My compensation is not contingent upon the results of my study, the substance of
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`my opinions, or the outcome of any proceeding involving the challenged claims. I
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`have no financial interest in the outcome of this matter or on the pending litigation
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`between Petitioner and Patent Owner.
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`3.
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`In my original declaration, I provided an analysis documenting how
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`various combinations of prior art rendered obvious the claims of the ’946 patent. In
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`view of the Institution Decision rendered by the Board in this IPR proceeding, I have
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`since been asked to provide a supplemental analysis to further explain how the
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`combinations of prior art identified in my original declaration practice certain claim
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`features of the Challenged Claims.
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`4.
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`For information surrounding my background and qualifications, as well
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`as information surrounding the legal standards at issue, please refer to Sections II
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`and V of my original declaration (EX-1003). For a subject matter overview of
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`the ’946 patent, please refer to Section VI of my original declaration. Indeed, as this
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`analysis is supplemental, I builds on the analysis of my previous declaration.
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`II. OVERVIEW OF THE TERM “MULTIPLEX”
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`5. My original declaration explained how the term “multiplex” would
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`have been understood by a POSITA in the context of the ’946 patent and in the art.
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`EX-1003 (Original Declaration), ¶¶98, 108, 128 (citing EX-1011, EX-1012, and EX-
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`1013), 140 (citing EX-1015), 141, 159 (citing EX-1012, EX-1036). In view of the
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`statements made in the Institution Decision regarding the term as used in
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`“multiplexed signals” (1[i]) (Paper 13, at 38), I offer additional explanation below.
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`In view of my original and below-offered explanation, it is my opinion that the
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`analysis and prior art mappings provided in my original declaration with respect to
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`the term “multiplex” are consistent and adequately demonstrate how the proposed
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`grounds render independent claim 1 and dependent claims 2-4 and 16 obvious.
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`2
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`A. Multiplexing Signals Does Not Require The Signals To Only Be
`Communicated Simultaneously
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`6.
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`As I noted in the original declaration, the term “multiplex” has been
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`widely recognized in the area of data transmission, such as in packet switched
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`networks. EX-1003, ¶128. As further discussed below, multiplexing does not
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`require multiple signals to be presented to a multiplexer simultaneously. In fact, the
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`term “multiplexing” does not distinguish input signals that are presented
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`simultaneously from those presented non-simultaneously (e.g., sequentially, serially,
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`or otherwise arriving at different times). This analysis is supported by my original
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`declaration as well as the ’946 patent’s disclosure. EX-1003 (Original Declaration),
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`98, 108, 128, 140-141, 159; see infra Section II.A.2.
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`1.
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`Discussion of Term “Multiplex” in Original Declaration
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`7. My original declaration discussed several documents (e.g., EX-1011,
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`EX-1012, EX-1013) that demonstrate an understanding of the term “multiplex.”
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`These documents show how multiplexing can apply to different signals that arrive
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`at the multiplexer both simultaneously or non-simultaneously. EX-1003 (Original
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`Declaration), ¶¶98, 108, 128, 140-141, 159.
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`8.
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`For example, Larry L. Peterson, et al., Computer Networks, A Systems
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`Approach, Morgan Kaufmann Publishers, Inc., San Francisco, CA, 1996 (EX-1011)
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`describes synchronous time division multiplexing (STDM) as a method “commonly
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`used in the telephone network” among “several different methods for multiplexing
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`3
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`multiple flows onto one physical link.” EX-1011, 15, Figure 1.7 (reproduced below).
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`“The idea of STDM is to divide time into equal-sized quanta, and in a round-robin
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`fashion, give each flow a chance to send its data over the physical link,” such that
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`“if one of the flows (host pairs) does not have any data to send, its share of the
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`physical link—i.e., its time quantum ...—remain idle, even if one of the other flows
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`has data to transmit.” Id., 15 (emphasis added). As such, STDM, a well-known
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`multiplexing technique, acknowledges that multiple data flows do not have to be
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`simultaneously, or continuously, communicated together for them to be multiplexed
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`into a single output link. Id. Rather, multiplexing can occur for multiple data flows
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`that are received at different times (non-simultaneously). Id. As explained above,
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`the flows are considered to be multiplexed, even though one or more of the flows
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`remains idle and does not transmit data simultaneously with one or more other flows.
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`In this context, although the flows do not always transmit signals at the same time,
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`the signals provided by the flows would have been understood as multiplexed.
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`Annotated Figure 1.7 of EX-1011
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`4
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`9.
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`The other evidentiary documents I relied on in my original declaration
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`are similarly supportive. See EX-1013, 33 (“In [time-division multiplexing],
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`information from each data channel is allocated bandwidth based on preassigned
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`time slots, regardless of whether there is data to transmit.” (emphasis added)).
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`10. Again, this understanding of “multiplexing” was apparent in the art as
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`also evidenced by numerous documents submitted by both parties in the parallel
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`district court litigations. EX-2003 (Samsung’s Opening Claim Construction Brief),
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`40
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`(citing several dictionary definitions of “multiplex,” “multiplexing,”
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`“multiplexer,” etc.). In particular, the extrinsic evidence cited in Petitioner’s claim
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`construction brief (EX-2003) commonly define “multiplex” as “interleav[
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