`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 18
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` Entered: Sep. 9, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`_______________
`
`IPR2014-00515
`Patent 8,023,580 B2
`_______________
`
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
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`
`
`IPR2014-00515
`Patent 8,023,580 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`Samsung Telecommunications America, LLC, and Samsung Austin
`Semiconductor, LLC (collectively, “Petitioner”) filed a corrected Petition
`requesting an inter partes review of claims 23, 25, 29, 30, 32, 34, 38, 40, 41,
`43, 44, and 47 (the “challenged claims”) of U.S. Patent No. 8,023,580 B2
`(Ex. 1101, “the ’580 patent”) on April 3, 2014. Paper 4 (“Pet.”). Rembrandt
`Wireless Technologies, LP (“Patent Owner”) filed a Patent Owner
`Preliminary Response on July 3, 2014. Paper 14 (“Prelim. Resp.”). We
`have jurisdiction under 35 U.S.C. §§ 6(b) and 314.
`An inter partes review may be instituted only if “the information
`presented in the petition . . . and any[ preliminary] response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`see 37 C.F.R. § 42.108(c). Upon consideration of the Petition and the Patent
`Owner Preliminary Response, we conclude Petitioner has not established a
`reasonable likelihood that it would prevail with respect to the challenged
`claims of the ’580 patent and, accordingly, we do not institute an inter partes
`review.
`
`Related Proceedings
`B.
`Petitioner indicates that the ’580 patent was asserted against
`Petitioner in Rembrandt Wireless Technologies, LP v. Samsung Electronics
`
`
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`2
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`IPR2014-00515
`Patent 8,023,580 B2
`
`
`Co., No. 2:13-cv-00213 (E.D. Tex. 2013). Pet. 1–2. The same parties and
`patent are involved in Samsung Electronics Co. v. Rembrandt Wireless
`Technologies, LP, Case IPR2014-00514 (filed Mar. 20, 2014); Samsung
`Electronics Co. v. Rembrandt Wireless Technologies, LP, Case IPR2014-
`00518 (filed Mar. 20, 2014); and Samsung Electronics Co. v. Rembrandt
`Wireless Technologies, LP, Case IPR2014-00519 (filed Mar. 20, 2014).
`
`The ’580 Patent (Ex. 1101)
`C.
`The specification of the ’580 patent describes “a data communications
`system in which a plurality of modulation methods are used to facilitate
`communication among a plurality of modem types.” Ex. 1101, 1:21–23.
`The ’580 patent explains that the invention addresses a problem that
`conventional modem pairs can communicate successfully only when the
`modems use compatible modulation methods. Id. at 1:27–30, 1:45–47.
`Of the challenged claims, claims 23, 32, and 40 are independent
`claims. Illustrative claim 23 is reproduced below:
`23. A communications device, comprising:
`a processor; and
`a memory having stored therein executable instructions
`for execution by the processor, wherein
`the executable
`instructions direct transmission of a first data with a first
`modulation method followed by a second data with a second
`modulation method, wherein the first modulation method is
`different than the second modulation method, wherein the first
`data comprises an indication of an impending change from the
`first modulation method to the second modulation method,
`wherein the executable instructions direct transmission of a
`third data with the first modulation method after the second
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`IPR2014-00515
`Patent 8,023,580 B2
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`data, and wherein the third data indicates that communication
`has reverted to the first modulation method.
`D.
`Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Reference
`Basis
`Challenged Claims
`Draft Standard1 § 102(b) 23, 25, 29, 30, 32, 34, 38, 40, 41, 43, 44, and 47
`Draft Standard
`§ 103(a) 23, 25, 29, 30, 32, 34, and 38
`
`
`II. ANALYSIS
`A.
`Claim Construction
`Petitioner and Patent Owner each propose a construction of “first
`modulation method” and “second modulation method.” However, we do not
`construe any term because no term needs to be construed for purposes of this
`decision.
`B.
`
`Asserted Anticipation and Obviousness Grounds Based on
`Draft Standard
`The dispositive issue in this proceeding is whether Draft Standard, on
`which both of Petitioner’s asserted grounds of unpatentability rely, is a
`printed publication.
`
`1. Overview of Draft Standard (Ex. 1105)
`Draft Standard is an unapproved draft of a standard proposed by the
`Institute of Electrical and Electronics Engineers (“IEEE”). Ex. 1105, i.2
`
`1 IEEE P802.11, Draft Standard for Wireless LAN, Medium Access Control
`(MAC) and Physical Layer (PHY) Specification, P802.11D4.0, May 20,
`1996 (Ex. 1105) (“Draft Standard”).
`
`4
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`IPR2014-00515
`Patent 8,023,580 B2
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`The purpose of the proposed standard was “[t]o provide wireless
`connectivity to automatic machinery, equipment[,] or[] stations that require
`rapid deployment, which may be portable, or hand-held or which may be
`mounted on moving vehicles within a local area” and “[t]o offer a standard
`for use by regulatory bodies to standardize access to one or more frequency
`bands for the purpose of local area communication.” Id. at 1.
`
`2. Declaration of Robert O’Hara (Ex. 1104)
`Mr. Robert O’Hara was an editor of the IEEE 802.11-1997 standard.
`Ex. 1104 ¶ 1; Ex. 1105, iii. Mr. O’Hara states that drafts of the standard,
`including Draft Standard, were available to members of the 802.11 Working
`Group for download from the 802.11 Working Group’s server. Ex. 1104 ¶
`9. According to Mr. O’Hara, announcements were sent to the Working
`Group’s e-mail list when drafts became available, and a person could be
`added to the Working Group’s e-mail list by providing an e-mail address to
`the chair of the Working Group. Id. ¶¶ 9–10. Mr. O’Hara states that there
`“were no restrictions on who could attend the 802.11 Working Group’s
`meetings [or] on who could provide an e-mail address” and that, according
`to his recollection, anyone who made a request to be added to the e-mail list
`would be added. Id. ¶ 10.
`Mr. O’Hara states the copies of the drafts of the 802.11 standard
`available on the Working Group’s servers were password-protected files,
`
`
`2 In this Decision, we refer to the original pagination of Draft Standard
`rather than the Exhibit page numbers.
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`IPR2014-00515
`Patent 8,023,580 B2
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`and that the members of the e-mail list were provided with passwords to
`access the documents, either as part of an announcement of a new draft or
`via “another way.” Id. ¶ 11. According to Mr. O’Hara, the passwords were
`intended to limit distribution to “interested individuals, as opposed to the
`entire [I]nternet.” Id. Mr. O’Hara also states that attending an 802.11
`Working Group meeting or asking for access prior to a meeting
`demonstrated sufficient interest such that that person would receive the
`password necessary to access the drafts on the Working Group’s server. Id.
`Further, according to Mr. O’Hara, each of the 802.11 standard drafts,
`including Draft Standard, would have been discussed at the Working Group
`meetings and made available to all attendees. Id. ¶ 12. Mr. O’Hara also
`states the meetings were not limited to IEEE members but were open to the
`general public. Id.
`
`3. Analysis of Whether Draft Standard Is a Printed Publication
`We look to the underlying facts and circumstances surrounding the
`disclosure of a document to members of the public in order to make a legal
`determination as to whether the document is a printed publication. Suffolk
`Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014); SRI Int’l,
`Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008); In re
`Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a
`key question in determining whether a document is a printed publication and
`is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To
`qualify as a printed publication, a document “must have been sufficiently
`
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`IPR2014-00515
`Patent 8,023,580 B2
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`accessible to the public interested in the art.” In re Lister, 583 F.3d 1307,
`1311 (Fed. Cir. 2009).
`The O’Hara declaration is the only extrinsic evidence that Petitioner
`submits in support of its position that Draft Standard is a printed publication.
`See Pet. 9–11. Petitioner asserts that Draft Standard “was completed on
`May 20, 1996, and was available to anyone who wanted to view it on May
`23, 1996.” Pet. 9 (citing Ex. 1104 ¶¶ 4, 5, 10, 12) (emphasis added).
`Petitioner argues that this availability resulted in a publication date of May
`23, 1996. Id. Petitioner also argues Draft Standard “was available to any
`interested parties” no later than July 8, 1996, because Draft Standard “was
`available to all members of the 802.11 Working Group’s email list” and
`discussed and distributed at an 802.11 Working Group meeting held July 8–
`12, 1996. Id. at 10. Thus, Petitioner concludes that this alleged distribution
`and availability to any interested parties by July 8, 1996, renders Draft
`Standard a “printed publication” under 35 U.S.C. § 102(b). Id. at 11.
`Notably absent, however, from the Petition and Mr. O’Hara’s
`declaration are any assertions or evidence in support of the availability of
`Draft Standard to individuals other than members of the 802.11 Working
`Group and those who already knew about Draft Standard or the July 8–12
`meeting of the 802.11 Working Group.
`We do not find sufficient argument or evidence to indicate that the
`July 8–12 meeting of the 802.11 Working Group (or any other 802.11
`Working Group meeting) was advertised or otherwise announced to the
`
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`IPR2014-00515
`Patent 8,023,580 B2
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`public. Nor do we find sufficient argument or evidence that any individual
`who was not already a member of, or otherwise aware of, the 802.11
`Working Group would have known about Draft Standard such that he or she
`would have known to request a copy of or ask to be added to an email list for
`access to Draft Standard.
`“A given reference is ‘publicly accessible’ upon a satisfactory
`showing that such document has been disseminated or otherwise made
`available to the extent that persons interested and ordinarily skilled in the
`subject matter or art exercising reasonable diligence, can locate it.” SRI
`Int’l, 511 F.3d at 1194 (quoting Bruckelmyer v. Ground Heaters, Inc., 445
`F.3d 1374, 1378 (Fed. Cir. 2006)). Although Mr. O’Hara declares that
`“[t]here were no restrictions on who could attend the 802.11 Working
`Group’s meetings” (Ex. 1104 ¶ 10) and that the meetings “were open to the
`general public” (id. ¶ 12), Petitioner has not presented persuasive argument
`or evidence regarding how members of the potentially interested public
`would have been made aware of these meetings. Similarly, although
`Mr. O’Hara declares that an individual could provide the chair with an e-
`mail address to be added to the Working Group’s e-mail list (id.), the
`Petition has not established how an individual would have known to attend a
`meeting or contact the chair in order to be added to the e-mail list.
`Based on the evidence before us, we find that the purpose of the
`802.11 Working Group’s storage of drafts of the standard on a server is
`similar to the placement of a file on an “FTP server solely to facilitate peer
`
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`IPR2014-00515
`Patent 8,023,580 B2
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`review in preparation for later publication,” which the U.S. Court of Appeals
`for the Federal Circuit found weighed against public accessibility of the file.
`SRI Int’l, 511 F.3d at 1197. In SRI, even though the “paper was ‘posted’ on
`an open FTP server and might have been available to anyone with FTP
`know-how and knowledge of the” subdirectory in which it resided, the
`Federal Circuit found the fact that the paper was not publicized suggested an
`absence of public availability. Id. In this case, the submitted evidence does
`not show that the 802.11 Working Group’s server was an open server and to
`the extent that it was, the evidence shows that the documents were password
`protected. Ex. 1104 ¶ 11.
`Moreover, notwithstanding Mr. O’Hara’s statement that passwords
`were distributed to the 802.11 Working Group e-mail list (id.), the fact that
`an interested individual needed to contact IEEE in order obtain a password
`or other means of accessing Draft Standard, and needed to know who to
`contact in the first place, weighs against public accessibility. Cf. Kyocera
`Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1351 (finding facts
`weighed towards public accessibility because “[t]he specifications
`themselves were visible to any member of the interested public without
`requesting them from an ETSI member”). Mr. O’Hara states that the drafts
`of the 802.11 standards, including Draft Standard, were (and still are)
`protected by passwords in order to limit distribution to “interested
`individuals, as opposed to the entire [I]nternet.” Ex. 1104 ¶ 11. However,
`as previously discussed, the record does not contain persuasive evidence
`
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`IPR2014-00515
`Patent 8,023,580 B2
`
`showing how an individual not already in, or familiar with, the 802.11
`Working Group would have known of the existence of Draft Standard, the
`802.11 Working Group meetings, or the 802.11 Working Group itself.
`Therefore, we are not persuaded that such an individual, exercising
`reasonable diligence, would be able to change his status from an anonymous
`member of “the entire [I]nternet” to an “interested individual.”
`Therefore, based on the evidence Petitioner provided, we conclude
`Petitioner has not made a sufficient showing that Draft Standard was a
`printed publication as of July 1996 or earlier, as alleged, i.e., that Draft
`Standard was available no later than July 1996 to an ordinarily skilled
`individual, exercising reasonable diligence, who might have been interested
`in the subject matter of Draft Standard.
`4. Analysis of Asserted Anticipation and Obviousness Grounds
`Based on Draft Standard
`We do not determine whether Draft Standard anticipates or renders
`obvious any of the challenged claims in this case because, as discussed
`above, Petitioner has not made a sufficient showing that Draft Standard may
`be relied upon as prior art to demonstrate a reasonable likelihood that
`Petitioner would prevail in demonstrating the unpatentability of the
`challenged claims.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has not shown
`a reasonable likelihood that it would prevail in demonstrating that:
`
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`IPR2014-00515
`Patent 8,023,580 B2
`
`(1) claims 23, 25, 29, 30, 32, 34, 38, 40, 41, 43, 44, and 47 of the ’580 patent
`are unpatentable as anticipated in view of Draft Standard; (2) claims 23, 25,
`29, 30, 32, 34, 38, 40, 41, 43, 44, and 47 are unpatentable as obvious in view
`of Draft Standard.
`
`IV. ORDER
`For the reasons given, it is ORDERED that the petition is denied as to
`all challenged claims and no trial is instituted.
`
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`IPR2014-00515
`Patent 8,023,580 B2
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`PETITIONER:
`
`Jeffrey A. Miller
`Daniel G. Cardy
`millerj@dicksteinshapiro.com
`cardyg@dicksteinshapiro.com
`
`
`
`PATENT OWNER:
`
`Thomas Engellenner
`Reza Mollaaghababa
`Lana Gladstein
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`gladsteinl@pepperlaw.com
`
`
`
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