Samsung Electronics Co. Ltd.v.Rembrandt Wireless Technologies, LP

Patent Trial and Appeal Board

Sep 24, 2015

13198568 (P.T.A.B. Sep. 24, 2015)

Trials@uspto.gov Paper 46
571-272-7822 Date Entered: September 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA,
LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
Petitioner,

v.

REMBRANDT WIRELESS TECHNOLOGIES, LP,
Patent Owner.
____________

Case IPR2014-00892
Patent 8,457,228 B2
____________

Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
JUSTIN BUSCH, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. BACKGROUND
Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
Samsung Telecommunications America, LLC, and Samsung Austin
Semiconductor, LLC (collectively, “Petitioner”) filed a request for inter

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partes review of claims 1–3, 5, and 10–21 of U.S. Patent No. 8,457,228 B2
(“the ’228 patent,” Ex. 1301) under 35 U.S.C. §§ 311–319. Paper 2 (Petition
or “Pet.”). The Board instituted an inter partes review of claims 1–3, 5, and
10–20 on an asserted ground of unpatentability for obviousness. Paper 8
(“Dec. on Inst.”).
Subsequent to institution, Patent Owner Rembrandt Wireless
Technologies, LP, filed a patent owner response (Paper 19, “PO Resp.”).
Petitioner filed a reply to the Patent Owner Response (Paper 29, “Pet.
Reply”).
Oral hearing was held on July 21, 2015.1
The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–3, 5, and 10–20 of the ’228
patent are unpatentable.

A. Related Proceedings
According to Petitioner, the ’228 patent is involved in the following
lawsuit: Rembrandt Wireless Technologies, LP v. Samsung Electronics Co.,
No. 2:13-cv-00213 (E.D. Tex. 2013). Pet. 1. The ’228 patent also has been
challenged in the following cases: Samsung Electronics Co. v. Rembrandt
Wireless Technologies, LP, IPR2014-00889 (not instituted); Samsung
Electronics Co. v. Rembrandt Wireless Technologies, LP, IPR2014-00890
(not instituted); Samsung Electronics Co. v. Rembrandt Wireless
Technologies, LP, IPR2014-00891 (not instituted); Samsung Electronics Co.
1 The record includes a transcript of the oral hearing. Paper 45.
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v. Rembrandt Wireless Technologies, LP, IPR2014-00893 (final decision
being issued concurrently); and Samsung Electronics Co. v. Rembrandt
Wireless Technologies, LP, IPR2014-00895 (final decision being issued
concurrently).

B. The ’228 Patent
The ’228 Patent issued from an application filed August 4, 2011,
which claimed priority under 35 U.S.C. § 120 through a chain of intervening
applications to an application filed December 4, 1998, and which further
claimed priority under 35 U.S.C. § 119 to a provisional application filed
December 5, 1997.
The technical field of the patent relates to data communications and
modulators/demodulators (modems), and in particular to a data
communications system in which a plurality of modems use different types
of modulation in a network. Ex. 1301, col. 1, ll. 21–25; col. 1, l. 58 – col. 2,
l. 23.

C. Illustrative Claim
Of the challenged claims, only claim 1 is independent.
1. A master communication device configured to
communicate with one or more slave transceivers according to
a master/slave relationship in which a slave communication
from a slave device to the master communication device occurs
in response to a master communication from the master
communication device to the slave device, the master
communication device comprising:

a master transceiver configured to transmit a first
message over a communication medium from the master
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transceiver to the one or more slave transceivers, wherein the
first message comprises:

first information modulated according to a first
modulation method,

second information, including a payload portion,
modulated according to the first modulation method, wherein
the second information comprises data intended for one of the
one or more slave transceivers and

first message address information that is indicative
of the one of the one or more slave transceivers being an
intended destination of the second information; and

said master transceiver configured to transmit a second
message over the communication medium from the master
transceiver to the one or more slave transceivers wherein the
second message comprises:

third information modulated according to the first
modulation method, wherein the third information comprises
information that is indicative of an impending change in
modulation to a second modulation method, and

fourth information, including a payload portion,
transmitted after transmission of the third information, the
fourth information being modulated according to the second
modulation method, the second modulation method being of a
different type than the first modulation method, wherein the
fourth information comprises data intended for a single slave
transceiver of the one or more slave transceivers, and

second message address information that is
indicative of the single slave transceiver being an intended
destination of the fourth information; and

wherein the second modulation method results in a
higher data rate than the first modulation method.
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D. Prior Art
Boer US 5,706,428 Jan. 6, 1998 (Ex. 1304)

E. Asserted Ground of Unpatentability
The Board instituted inter partes review on the following asserted
ground of unpatentability under 35 U.S.C. § 103(a) (Dec. on Inst. 15):
claims 1–3, 5, and 10–20 of the ’228 patent on the ground of obviousness
over Admitted Prior Art (“APA”) and Boer.

II. ANALYSIS
A. Claim Interpretation
In an inter partes review, the Board construes claim terms in an
unexpired patent using their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015).
The claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must apply the
broadest reasonable meaning to the claim language, taking into account any
definitions presented in the specification. Id. (citing In re Bass, 314 F.3d
575, 577 (Fed. Cir. 2002)). The “ordinary and customary meaning” is that
which the term would have to a person of ordinary skill in the art in
question. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).

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1. Modulation Methods
Illustrative claim 1 recites a master transceiver configured to transmit
messages modulated according to a first and a second modulation method,
“the second modulation method being of a different type than the first
modulation method . . . .”
Petitioner submits that the ordinary meaning of “modulation” is “[t]he
process by which some characteristic of a carrier is varied in accordance
with a modulating wave.” Pet. 13 (referring to Ex. 1323 ¶ 88 (Declaration
of Dr. David Goodman); Ex. 1320, 3 (technical dictionary)). Patent Owner
submits that “modulation method” is generally recognized in the pertinent
art to mean “a technique for varying one or more characteristics of a carrier
wave in a predetermined manner to convey information.” PO Resp. 9.
Patent Owner submits further, and we agree, that there appears to be no
significant difference between these two proffered constructions of
“modulation.” Id. at 11.
Later in its Patent Owner Response, however, Patent Owner advocates
a narrower definition for “modulation method” for the purpose of addressing
the prior art. In particular, Patent Owner submits that the only three
characteristics of a carrier wave are frequency, phase, and amplitude and,
thus, “modulation” is limited to varying one or more of the frequency, phase,
and amplitude of the carrier wave. Id. at 12–13. Patent Owner relies on the
Declaration of Dr. Christopher R. Jones (Ex. 2714 ¶ 40). Dr. Jones, in turn,
relies on a definition in one of several technical dictionaries that have been
provided by Patent Owner. Ex. 2714 ¶ 39. In the particular technical
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dictionary upon which Dr. Jones relies,2 two of the six definitions of
“modulation” use the terms amplitude, frequency, and phase. Ex. 2715, 3.
The entry contains broader definitions for “modulation,” as, for example, the
first definition, which states that modulation is the process of varying some
characteristic of a carrier wave, whereby the carrier wave can be a direct
current, an alternating current, or “a series of regularly repeating, uniform
pulses called a pulse chain.” Id.
Patent Owner does not point to anything in the ’228 patent’s
disclosure that would limit the definition of “modulation” to varying the
amplitude, frequency, or phase of the carrier wave. Our reviewing court has
“cautioned against relying on dictionary definitions at the expense of a fair
reading of the claims, which must be understood in light of the
specification.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1377
(Fed. Cir. 2014). We, therefore, interpret “modulation” in accordance with
its customary and ordinary meaning as the process by which some
characteristic of a carrier is varied in accordance with a modulating wave.

2. Types of Modulation Methods
As we have noted, the claims recite “types” of modulation methods.
Petitioner and Patent Owner disagree with respect to the meaning of a “type”
of modulation method. Patent Owner submits that the broadest reasonable
interpretation of different “types” of modulation methods does not extend to
modulation methods that are known merely to be incompatible with each
other, but is limited to different “families” of modulation techniques, e.g.,
the FSK (frequency shift keying) “family” of modulation methods and the
2 Rudolf F. Graf, MODERN DICTIONARY OF ELECTRONICS, 6th ed. (1997).
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QAM (quadrature amplitude modulation) “family” of modulation methods.
PO Resp. 11–12. Petitioner, on the other hand, contends that the broadest
reasonable interpretation of a different “type” of modulation method means
an “incompatible” modulation method. Pet. 12.
Patent Owner contends that a “special definition” was provided during
prosecution of the ’228 patent, which defined the term different “types” of
modulation to mean different “families” of modulation. PO Resp. 11–12.
At the outset, we agree with Petitioner (Pet. Reply 16) to the extent that
prosecution history is entitled to little weight under the broadest reasonable
interpretation standard. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d
973, 978 (Fed. Cir. 2014) (“This court also observes that the PTO is under
no obligation to accept a claim construction proffered as a prosecution
history disclaimer, which generally only binds the patent owner.”). In any
event, Patent Owner relies on the following statements during prosecution
for the asserted “special definition”:
Applicant thanks [the Examiner] for the indication that
claims 1-18, and 37-57 are allowed (office action, p. 7).
Applicant has further amended claims 1-2, 9-15, 18, 37-38, and
45-46 with additional recitations to more precisely claim the
subject-matter. For example, the language of independent
claim 1 has been clarified to refer to two types of modulation
methods, i.e., different families of modulation techniques, such
as the FSK family of modulation methods and the QAM family
of modulation methods.

Ex. 1318, 20 (Reply Pursuant to 37 CFR § 1.111 in parent application
12/543,910).
As made plain in the above remarks, the claim amendments with
respect to two “types” of modulation methods were not made in response to
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a rejection, as the relevant claims had been allowed. Cf. Tempo Lighting,
742 F.3d at 978 (“[I]n this instance, the PTO itself requested Tivoli rewrite
the ‘non-photoluminescent’ limitation in positive terms. Tivoli complied,
and then supplied clarification about the meaning of the ‘inert to light.’”).
Nor do the above remarks explain what a “family” might be, or why FSK is
considered to be member of one “family” and QAM a member of another
“family.” “Although an inventor is indeed free to define the specific terms
used to describe his or her invention, this must be done with reasonable
clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994). Patent Owner’s purported “definition” is anything but
clear or precise. Further, the only modulation methods named in the text of
the ’228 patent are QAM, carrierless amplitude and phase (CAP)
modulation,3 and discrete multitone (DMT) modulation, each of which the
patent calls “high performance modulation.” See, e.g., Ex. 1301, col. 2, ll.
3–7.
Patent Owner provides, as an exhibit, Provisional Application No.
60/067,562 (Ex. 2701), which the ’228 patent purports to incorporate by
reference (Ex. 1301, col. 1, ll. 8–17). That provisional distinguishes
between “high performance modulation, such as QAM, CAP, or DMT,”
which are optimized for high performance, and “low performance
modulation, such as FSK, PAM or DSB,” which may be implemented in
3 According to Patent Owner, the patent contains a typographical error in
that “[c]arrier” should be “[c]arrierless.” PO Resp. 10 n.3.

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much less expensive devices. Ex. 2701, 4.4 An objective reading of the
above-noted remarks during prosecution suggests that, contrary to Patent
Owner’s arguments, the “different families of modulation techniques” refer
to high performance modulation (such as QAM) and low performance
modulation (such as FSK). The prosecution history is, at best, ambiguous.
“It is inappropriate to limit a broad definition of a claim term based on
prosecution history that is itself ambiguous.” Inverness Med. Switz. GmbH
v. Warner Lambert Co., 309 F.3d 1373, 1382 (Fed. Cir. 2002).
Moreover, Patent Owner’s proffered construction (e.g., PO Resp. 13)
of “types” of modulation methods being based on “one or more” of the
carrier wave’s frequency, phase, and amplitude “families” is, itself,
ambiguous. We reproduce the following exchange during oral argument in
related case IPR2014-00518, which concerns U.S. Patent No. 8,023,580 B2
(which issued from the parent application (12/543,910) of the ’228 patent):
JUDGE LEE: How do you summarize your position?
What is the definition of different family?

MR. MOLLAAGHABABA: Okay. I believe these three
characteristics, phase, amplitude and frequency of the carrier
wave, define these three families.

Now, if two methods are using the same characteristic to
modulate the wave, then they are not different types. I mean,
DBPSK and DQPSK, they both use the phase, that
characteristic of the carrier wave to modulate and convey
information.

4 The first page of Exhibit 2701 is unnumbered, and page 4 is numbered as
page 3. Cf. 37 C.F.R. § 42.63(d)(2)(i) (“Each page must be uniquely
numbered in sequence.”).
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JUDGE LEE: Okay. So phase is one family, amplitude is
one, and frequency is another. So those are broad categories.

MR. MOLLAAGHABABA: Yes.

JUDGE LEE: So you can only have three types then.

MR. MOLLAAGHABABA: But you can have situations
where the modulation can belong to two categories.
I mean, there are some intersections. QAM modulates
both amplitude and phase.

JUDGE LEE: So to which family would they belong?

MR. MOLLAAGHABABA: Well, they are part of both
families. I mean, they belong to two -- both families. There is
some intersections where some modulation techniques use more
than one characteristic. They use two characteristics.

JUDGE LEE: Then are they of different types? If there
is just only partial overlap, are they still different types, or is it
the same type because they also share something in common?

MR. MOLLAAGHABABA: Yes, our contention is that
they are not of different types. They are different in the sense
that they are different methods, like QAM and PSK, but they
share a family so, therefore, they are not different types. They
share the family for both.

IPR2014-00518, Paper 46 at 88:8–89:17. Thus, according to counsel for
Patent Owner, two modulation methods that are different in one
characteristic but the same in another, e.g., one varying phase and amplitude
and the other varying frequency and amplitude, would be regarded as
belonging in the same family. Such an understanding of the classification or
categorization of “family” in case of partial overlap was not a part of any
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representation during prosecution history. It reflects ambiguity in the
construction proposed by Patent Owner.
The ’228 patent describes Type A and Type B modulation methods
(and tributary modems, or “tribs”), but does not associate directly any
particular modulation method with a Type A or a Type B method (or “trib”).
See, e.g., Ex. 1301, col. 5, l. 47 – col. 7, l. 33. The provisional application,
however, associates lower-cost FSK modems with Type B “tribs.” Ex.
2701, 6; see also ’228 patent —
While it is possible to use high performance tribs running state
of the art modulation methods such as QAM, CAP, or DMT to
implement both the high and low data rate applications,
significant cost savings can be achieved if lower cost tribs using
low performance modulation methods are used to implement
the lower data rate applications.

Ex. 1301, col. 5, ll. 41–46.
Further, the ’228 patent does not draw distinctions between “families”
of modulation techniques directed to differences in modulation with respect
to amplitude, phase, or frequency. Rather, the ’228 patent draws distinctions
between relatively expensive high performance techniques and relatively
inexpensive low performance techniques. The ’228 patent attempts to
remedy the asserted deficiency in the prior art that all modems in a system
must use a single modulation method, and thus must all be high-performance
modems, with the high-performance, relatively expensive modems merely
lowering the data rate for lower data-rate applications. As the ’228 patent
explains:
All users in the system will generally have to be equipped with
a high performance modem to ensure modulation compatibility.
These state of the art modems are then run at their lowest data
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rates for those applications that require relatively low data
throughput performance. The replacement of inexpensive
modems with much more expensive state of the art devices due
to modulation compatibility imposes a substantial cost that is
unnecessary in terms of the service and performance to be
delivered to the end user.

Ex. 1301, col. 2, ll. 10–18.
Further, the ’228 patent refers to an objective of using multiple
modulation methods to facilitate communication among a plurality of
modems in a network, which have heretofore been “incompatible.” Id. at
col. 2, ll. 19–23.
In view of the foregoing, we do not interpret a “type” of modulation
method as referring to some vague or undefined “family” of modulation
methods. We interpret different “types” of modulation methods as
modulation methods that are incompatible with one another. Thus, contrary
to Patent Owner’s construction, two modulation methods that are based on
varying the same one of the frequency, amplitude, or phase of the carrier
wave may be different “types” of modulation methods.

B. Prior Art
1. Admitted Prior Art
Petitioner contends that the ’228 patent’s disclosure of polled
multipoint communications using masters and slaves, depicted in Figures 1
and 2 and described in column 3, line 64 through column 5, line 7,
constitutes material that may be used as prior art against the patent under 35
U.S.C. § 103(a). We agree. Figure 1 of the patent is labeled as “Prior Art.”
Pet. 6; Ex. 1301, Fig. 1. Further, the ’228 patent’s specification refers to
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“prior art” multipoint communication system 22 comprising master modem
or transceiver 24, which communicates with a plurality of tributary modems
(“tribs”) or transceivers 26. Pet. 5; Ex. 1301, col. 3, l. 64 – col. 4, l. 1.
Further, the ’228 patent describes Figure 2 as illustrating the operation of the
multipoint communication system of (prior art) Figure 1. Pet. 6; Ex. 1301,
col. 3, ll. 33–34.

2. Boer
Boer describes a wireless LAN that includes first stations that operate
at 1 or 2 Mbps (Megabits per second) data rate and second stations that
operate at 1, 2, 5, or 8 Mbps data rate. Ex. 1304, Abstract.

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Figure 1 of Boer is reproduced below.

Figure 1 is said to be a block diagram of a wireless LAN embodying
Boer’s invention. Ex. 1304, col. 1, ll. 53–54. LAN 10 includes access point
12, serving as a base station. The network includes mobile stations 18-1 and
18-2 that are capable of transmitting and receiving messages at a data rate of
1 or 2 Mbps using DSSS (direct sequence spread spectrum) coding. When
operating at 1 Mbps, a station uses DBPSK (differential binary phase shift
keying) modulation. When operating at 2 Mbps, a station uses DQPSK
(differential quadrature phase shift keying) modulation. Id. at col. 2, ll. 6–
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27. Mobile stations 22-1 and 22-2 are capable of operating at the 1 and 2
Mbps data rates using the same modulation and coding as stations 181 and
182. In addition, stations 22-1 and 22-2 can operate at 5 and 8 Mbps data
rates using PPM/DQPSK (pulse position modulation–differential quadrature
phase shift keying) in combination with the DSSS coding. Id. at ll. 34–44.

C. Claims 1–3, 5, and 10–20 – APA and Boer

1. Asserted Ground
Petitioner applies the teachings of APA and Boer to demonstrate
obviousness of the subject matter of illustrative claim 1, relying on APA for
teaching of master/slave communication systems. Pet. 20– 29, 40–48 (claim
chart). Petitioner submits that a person having ordinary skill in the art have
would been motivated to combine Boer with APA, referring to the
Declaration of Dr. David Goodman (Ex. 1323 ¶¶ 121–124). Id. at 19–20.
Dr. Goodman testifies that polled multiport master/slave
communications systems were well known to those of ordinary skill in the
art for simplicity and determinacy, referring to Exhibit 1322. Ex. 1323
¶ 124. Petitioner submits Exhibit 1322 as a November 1994 publication that
compares various strengths and weaknesses for communication protocols for
embedded systems. Ex. 1322, 7. The document states that polling is one of
the more popular protocols for embedded systems “because of its simplicity
and determinacy.” Id. In that protocol, a centrally assigned master
periodically sends a polling message to the slave nodes, giving them explicit
permission to transmit on the network. Id. The protocol “is ideal for a
centralized data-acquisition system where peer-to-peer communication and
global prioritization are not required.” Id.
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2. Motivation to Combine
Patent Owner in its Response argues that Upender does not reflect a
proper motivation from the prior art for the proffered combination of Boer
and APA. Patent Owner submits a Declaration from a co-author of Upender
to show that the article did not suggest the use of a master/slave
communication system. Ex. 2708 (Declaration of Dr. Philip Koopman).
We have considered Patent Owner’s arguments and evidence but find
that the clear teachings in Upender are not diminished or rebutted. Upender
investigates tradeoffs in different communication protocols. The article
concludes that CSMA/CA (carrier sense multiple access with collision
avoidance), or RCSMA (reservation CSMA), is a good choice for some
embedded systems. Ex. 1322, 10–11. The article also indicates that polling
may not provide sufficient flexibility for “advanced systems,” classifying
polling as “simple,” but noting that the discussion of the different protocol
strengths and weaknesses “should allow you to select the best protocol to
match your needs.” Id. In fact, Dr. Koopman admits that there are some
systems for which master/slave is a better match for the design requirements.
Pet. Reply 10; Ex. 1324, 40:2–20.
That Upender may identify some advantages of CSMA/CA over a
master/slave protocol is not a “teaching away” from the master/slave
protocol. Upender teaches that master/slave protocols were widely used and
a good choice for simple systems. See In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994) (“[A] person seeking to improve the art of flexible circuit boards,
on learning from [a reference] that epoxy was inferior to polyester-imide
resins, might well be led to search beyond epoxy for improved products.
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However, [the reference] also teaches that epoxy is usable and has been used
for Gurley’s purpose.”).
Patent Owner’s position appears to be that the prior art teaches that
one and only one communication protocol should ever be used, which is
directly contrary to the clear teachings of Upender. In view of Upender, one
of ordinary skill in the art would have found it obvious to use a different
prior art communication protocol (e.g., a simpler protocol) when using
multiple data rates as described by Boer.
Further, we agree with Petitioner that Boer does not describe CSMA
as central to an alleged goal of seeking a “reduction of overhead-in-time per
transmission,” but relates that reduction to the use of short acknowledgment
(ACK) messages. PO Resp. 41–42; Pet. Reply 12; Ex. 1304, col. 8, ll. 16–
29.
Patent Owner submits that Dr. Goodman’s Declaration (Ex. 1323) is
unreliable because it is unclear what level of skill it attributes to the ordinary
artisan. PO Resp. 32–33. The alleged lack of clarity, however, does not
affect the outcome. We note that specifying the level of ordinary skill in
terms of an academic degree in a field of study and the number of years of
practical working experience is generally unhelpful, as a practical matter,
because it does not convey whether one with ordinary skill in the art would
have been aware of anything specific or particular. Patent Owner has not
directed us to evidence establishing what someone who has earned a certain
degree or who has a certain number of years of experience necessarily
knows. It is not always necessary, however, to have an express proposition
on the level of ordinary skill in the art. The level of ordinary skill in the art
may be reflected by the prior art of record. See Okajima v. Bourdeau, 261
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F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
We agree with Patent Owner to the extent that one of skill in the art
would not consider using a CSMA/CA protocol in a master/slave
configuration. PO Resp. 38–40. That combination, however, is not
contemplated by the asserted ground of unpatentability. As Patent Owner
and Dr. Koopman recognize, the transmitted data used in Boer to effect the
CSMCA/CA protocol would be “totally unnecessary” in a master/slave
configuration. Id. at 45; Ex. 2708 ¶ 96.

3. Different Types of Modulation Methods
Illustrative claim 1 recites two types of modulation methods, “the
second modulation method being of a different type than the first modulation
method.” Petitioner contends that Boer’s DBPSK modulation corresponds
to the claimed “first” modulation method. E.g., Pet. 26. Petitioner submits
that either of Boer’s DQPSK modulation and PPM/DQPSK modulation
corresponds to the claimed “second” modulation method because each of
DQPSK modulation and PPM/DQPSK modulation is of a different type —
i.e., not compatible with — DBPSK modulation. Pet. 26–27; Ex. 1323
¶¶ 126–134. On the record before us, we agree that DQPSK and
PPM/DQPSK modulation methods are incompatible with DBPSK
modulation. See, e.g., Ex. 1323 ¶¶ 157–163.
Patent Owner responds, however, that neither of DQPSK and
PPM/DQPSK can be considered a modulation method of a type different
from DBPSK. PO Resp. 46–54. Patent Owner argues that DBPSK and
DQPSK are not different “types” of modulation methods because the
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methods are within the same “family,” because both vary the same
fundamental characteristic of a carrier wave — its phase. Id. at 48–49. We
do not find Patent Owner’s argument to be persuasive because we are not
convinced that the broadest reasonable interpretation of “types” of
modulation is so limited. See Claim Interpretation, § II.A.2, supra.
Patent Owner alleges also that Boer does not describe DBPSK and
DQPSK as “incompatible” modulation methods because mobile stations are
disclosed as capable of transmitting and receiving using DBPSK and also
using DQPSK. PO Resp. 47–48. However, whether one “type” of
modulation is incompatible with another “type” concerns the method of
modulation, not necessarily the modem for carrying out that method. That
is, a modem might be designed (as in Boer) to transmit and receive using,
separately, two incompatible modulation methods, but that does not mean
the two modulation methods are compatible with each other.
Moreover, Boer describes PPM/DQPSK modulation, which falls
within the meaning of a “different type” of modulation method, with respect
to DBPSK, under our construction of the term. Cf. Ex. 1323 ¶ 159 (“Five
Mbps PPM/DQPSK and eight Mbps PPM/DQPSK are different ‘types’ of
modulation than DBPSK under any possible claim construction.”).
According to Dr. Goodman, phase is not used in PPM, unlike in DBPSK and
DQPSK modulation. Id. ¶ 160. In PPM, the start and stop time of a
transmission is varied in response to the information to be transmitted, with
the time shift being indicative of data bits. Id.
Patent Owner argues that PPM as used in Boer is not a modulation
method. PO Resp. 49–54. Patent Owner’s position, however, is based on
the argument that a “modulation method” is limited to varying one or more
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of the “fundamental characteristics” of amplitude, frequency, and phase. We
do not find the argument persuasive, in view of the requirement of
construing the term in accordance with its broadest reasonable interpretation.
See § II.A.1, supra. We acknowledge that Boer refers to PPM as “PPM type
coding.” PO Resp. 52; Ex. 1304, col. 4, ll. 45–48. However, as pointed out
by Petitioner, Boer appears to use the terms “coding” and “modulation”
interchangeably. Pet. Reply 22–23.
Moreover, Dr. Jones’ Declaration is unclear in what is meant by PPM
being not a carrier wave modulation technique “as utilized in Boer” or
“within the context of Boer.” Ex. 2714 ¶ 58. Dr. Jones submits that he
holds numerous patents in types of modulation that include pulse-amplitude
modulation (PAM). Id. ¶ 7. Patent Owner provides, as an exhibit, a
technical treatise on communication systems engineering5 that addresses
PAM and PPM as two types of “Pulse Modulation Signals.” Ex. 2705, 438–
44 (original page numbering). In PAM, “the information is conveyed by the
amplitude of the pulse.” Id. at 438. In PPM (consistent with Dr. Goodman’s
testimony (Ex. 1323 ¶ 160)), “the information is conveyed by the time
interval in which the pulse is transmitted.” Ex. 2705, 439.
With respect to whether PPM can be considered a modulation method,
we credit the testimony of Petitioner’s witness, Dr. Goodman, over that of
Patent Owner’s, Dr. Jones, for the additional reason that the term
“modulation” is part of the descriptive name for PPM – pulse position
modulation. Patent Owner has not explained sufficiently why pulse position
5 John G. Proakis and Masoud Salehi, Communication Systems Engineering,
Prentice Hall, Digital Transmission Though and AWGN Channel, Chap. 7,
438–44 (1994).
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modulation cannot be considered a modulation method. Although DBPSK
and PPM/DQPSK may both vary the “phase” characteristic of the carrier
wave, we are persuaded that with PPM the timing (start and stop time) of the
transmission is another characteristic of the carrier wave that is varied. Pet.
27; PO Resp. 51–53 (both parties referencing testimony of Dr. Goodman);
§ II.A.1 supra. We disagree with Patent Owner’s characterization of Dr.
Goodman’s deposition testimony as Dr. Goodman admitting “that selection
of time slots does not alter the underlying carrier wave.” PO Resp. 52. Dr.
Goodman stated that “the selection of the timing wouldn’t alter the
amplitude, the phase or the frequency of that underlying sine wave.” Id.
(quoting Ex. 2711, 31:20–23) (emphasis added). Further, Patent Owner has
not submitted sufficient evidence to show that “Dr. Goodman also agreed
the PPM encoding is independent of the underlying modulated wave
transmitted in the particular time slots.” PO Resp. 52–53.

4. APA and Boer — Conclusion
Upon review of the Petition and supporting evidence, as well as the
Patent Owner Response and supporting evidence, we conclude that
Petitioner has demonstrated, by a preponderance of the evidence, that claims
1–3, 5, and 10–20 are unpatentable for obviousness over APA and Boer.

5. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude, under 37 C.F.R. § 42.64(c), Exhibits
1326, 1339, 1340, and 1341. Paper 36. Patent Owner submits that Exhibits
1326 and 1339 are irrelevant and constitute improper character evidence
against Patent Owner’s expert Dr. Koopman. However, we do not discredit
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Dr. Koopman’s testimony based on anything contained in Exhibits 1326 and
1339. Nor do we rely on Exhibits 1340 and 1341, which were submitted by
Petitioner as further evidence to show that PPM is a modulation method.
Accordingly, Patent Owner’s motion to exclude is dismissed as moot.

III. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that
claims 1–3, 5, and 10–20 are unpatentable for obviousness over APA and
Boer.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–3, 5, and 10–20 of the ’228 patent are
unpatentable; and
FURTHER ORDERED that Patent Owner’s motion to exclude
evidence is dismissed; and
FURTHER ORDERED that, because this is a final written
decision, parties to the proceeding seeking judicial review of the decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For Petitioner:
J. Steven Baughman
Gabrielle E. Higgins
ROPES & GRAY LLP
steven.baughman@ropesgray.com
gabrielle.higgins@ropesgray.com

Daniel G. Cardy
DICKSTEIN SHAPIRO LLP
cardyd@dicksteinshapiro.com

For Patent Owner:

Thomas Engellenner
Reza Mollaaghababa
David Magee
PEPPER HAMILTON LLP
engellennert@pepperlaw.com
mollaagababar@pepperlaw.com
mageed@pepperlaw.com

Nancy Linck
ROTHWELL, FIGG, ERNST, & MANBECK, P.C.
nlinck@rothwellfigg.com

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