throbber
Paper 8
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: December 10, 2014
`
`
`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 IPR2014-00890
`Patent 8,457,228 B2
`____________
`
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. BACKGROUND
`
`
`
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`
`Samsung Telecommunications America, LLC, and Samsung Austin
`
`
`
`
`

`

`IPR2014-00890
`Patent 8,457,228 B2
`
`
`Semiconductor, LLC (collectively, “Petitioner”) request inter partes review
`
`
`
`of claims 22, 23, and 25 of U.S. Patent No. 8,457,228 B2 (“the ’228 patent”)
`
`(Ex. 1101) under 35 U.S.C. §§ 311–319. Paper 2 (Petition, or “Pet.”).
`
`Rembrandt Wireless Technologies, LP (Patent Owner) filed a preliminary
`
`response (Paper 6, “Prelim. Resp.”) provided by 37 C.F.R. § 42.107. We
`
`have jurisdiction under 35 U.S.C. § 314.
`
`
`
`For the reasons that follow, we do not institute an inter partes review
`
`as to any of the challenged claims of the ’228 patent.
`
`
`Related Proceeding
`
`According to Petitioner, the ’228 patent is involved in the following
`
`lawsuit: Rembrandt Wireless Technologies, LP v. Samsung Electronics
`
`Company, No. 2:13-cv-00213 (E.D. Tex. 2013). Pet. 1. The ’228 patent has
`
`also been challenged in the following cases: IPR2014–00889; IPR2014–
`
`00891; IPR2014–00892; IPR2014–00893; and IPR2014–00895.
`
`
`
`The ’228 Patent
`
`The ’228 patent issued from an application filed August 4, 2011,
`
`which claimed priority, through a chain of intervening applications, under 35
`
`U.S.C. § 120 to an application filed December 4, 1998, and which 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
`
`2
`
`
`

`

`IPR2014-00890
`Patent 8,457,228 B2
`
`
`
`of modulation in a network. Ex. 1101, col. 1, ll. 21–25; col. 1, l. 58–col. 2, l.
`
`23.
`
`
`
`Illustrative Claim
`
`Claim 22 is illustrative.
`
`22. A communication device configured to communicate
`according to a master/slave relationship in which a slave
`communication from a slave to a master occurs in response to a
`master communication from the master to the slave, the device
`comprising:
`a transceiver in the role of the master according to the
`master/slave relationship that is configured to send at least a
`plurality of communications, wherein each communication
`from among said plurality of communications comprises at
`least a respective first portion and a respective payload portion,
`wherein each communication from among said plurality of
`communications is addressed for an intended destination of the
`respective payload portion of that communication, and wherein
`for each communication from among said plurality of
`communications:
`said respective first portion is modulated according to a
`first modulation method from among at least two types of
`modulation methods, wherein the at least two types of
`modulation methods comprise the first modulation method and
`a second modulation method, wherein the second modulation
`method is of a different type than the first modulation method,
`said respective first portion comprises an indication of
`which of the first modulation method and the second
`modulation method is used for modulating respective payload
`data in the respective payload portion, and
`the payload data is modulated according to at least one of
`the first modulation method or the second modulation method
`in accordance with what is indicated by the respective first
`portion;
`the transceiver further configured to send at least a first
`communication of the plurality of communications such that
`
`3
`
`
`

`

`
`
`IPR2014-00890
`Patent 8,457,228 B2
`
`
`
`payload data included in a payload portion of the first
`communication is modulated according to the second
`modulation method based on a first portion of the first
`communication indicating that the second modulation method
`will be used for modulating the payload data in the payload
`portion of the first communication, wherein the payload data is
`included in the first communication after the first portion of the
`first communication;
`the transceiver further configured to send at least a
`second communication of the plurality of communications such
`that payload data included in a payload portion of the second
`communication is modulated according to the first modulation
`method based on a first portion of the second communication
`indicating that the first modulation method will be used for
`modulating the payload data in the payload portion of the
`second communication.
`
`
`Prior Art and Other Evidence Included with Petition
`
`US 5,706,428
`
`Jan. 6, 1998 (Ex. 1106)
`
`
`
`Boer et al.
`(“Boer”)
`
`IEEE P802.11, Draft Standard for Wireless LAN, Medium Access Control
`(MAC) and Physical Layer (PHY) Specification, P802.11D4.0, May 20,
`1996 (Ex. 1104) (“Draft Standard”)
`
`Declaration of Robert O’Hara, Mar. 11, 2014 (Ex. 1122).
`
`
`
`Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 2–3):
`
`
`
`Evidence
`
`
`
`
`
`
`
`Basis (35 U.S.C.)
`
`Claims
`
`
`Draft Standard
`
`Draft Standard and Boer
`
`
`§ 102(b)/103(a)
`
`§ 103(a)
`
`
`22, 23, and 25
`
`22, 23, and 25
`
`4
`
`
`

`

`IPR2014-00890
`Patent 8,457,228 B2
`
`
`
`
`
`
`
`
`II. ANALYSIS
`
`A. 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.
`
`
`
`B. Overview of Draft Standard (Ex. 1104)
`
`Draft Standard is an unapproved draft of a proposed IEEE (Institute of
`
`Electrical and Electronics Engineers) Standard. Ex. 1104, i.1 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.
`
`
`
`C. Declaration of Robert O’Hara (Ex. 1122)
`
`Mr. Robert O’Hara was an editor of the IEEE 802.11-1997 standard.
`
`Ex. 1122 ¶ 1; Ex. 1104, iii. Mr. O’Hara states that drafts of the 802.11-1997
`
`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.
`
`1122 ¶ 9. According to Mr. O’Hara, announcements were sent to the
`
`Working Group’s e-mail list when drafts became available, and a person
`
`1 In this Decision, we refer to the original pagination of Draft Standard
`rather than the Exhibit page number.
`
`5
`
`
`

`

`IPR2014-00890
`Patent 8,457,228 B2
`
`
`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 that the copies of the drafts of the Standard
`
`available on the Working Group’s servers were password-protected files,
`
`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 that the meetings were not limited to IEEE members but were open to
`
`the general public. Id.
`
`
`
`D. Analysis of Whether Draft Standard Is a Printed Publication
`
`We look to the underlying facts to make a legal determination as to
`
`whether a document is a printed publication. Suffolk Techs., LLC v. AOL
`
`Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
`
`6
`
`
`

`

`IPR2014-00890
`Patent 8,457,228 B2
`
`
`document is a “printed publication” under 35 U.S.C. § 102(b) involves a
`
`
`
`case-by-case inquiry into the facts and circumstances surrounding its
`
`disclosure to members of the public. 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 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. 14–15. 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. 13–14 (citing Ex. 1122 ¶¶ 4, 5, 10, and 12) (emphasis
`
`added). Petitioner indicates, initially, that this availability resulted in a
`
`publication date of May 23, 1996. Pet. 14. Petitioner also argues that Draft
`
`Standard “was available to any interested parties” no later than July 8, 1996,
`
`because it “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 14–15. 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 15.
`
`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 the public interested in the art. We do not find sufficient
`
`7
`
`
`

`

`IPR2014-00890
`Patent 8,457,228 B2
`
`
`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 public. Nor do we find sufficient
`
`argument or evidence that any individual who was interested in the art
`
`would have known about Draft Standard such that he or she would have
`
`known to request a copy or ask to be added to an email list for access to the
`
`document.
`
`“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, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)
`
`(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. 1122 ¶ 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. ¶ 10), 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
`
`8
`
`
`

`

`IPR2014-00890
`Patent 8,457,228 B2
`
`
`
`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. 1122 ¶ 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 to 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 (Fed.
`
`Cir. 2008) (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. 1122 ¶ 11. However,
`
`as previously discussed, the record does not contain persuasive evidence
`
`showing how an individual outside the 802.11 Working Group would have
`
`known of the existence of the Draft Standard, the 802.11 Working Group
`
`meetings, or the 802.11 Working Group itself. Therefore, we are not
`
`9
`
`
`

`

`IPR2014-00890
`Patent 8,457,228 B2
`
`
`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.” Moreover, the Working Group
`
`created Draft Standard. See Ex. 1023 ¶ 2. Provision of a document to co-
`
`authors of the document does not constitute dissemination, or availability, of
`
`the document to the public.
`
`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 as of July 1996 or earlier to an ordinarily skilled
`
`individual, exercising reasonable diligence, who might have been interested
`
`in the subject matter of Draft Standard.
`
`
`
`E. Asserted Grounds of Unpatentability
`
`Because Petitioner has not met its burden in establishing that Draft
`
`Standard is a “printed publication” and, thus, prior art, Petitioner has not
`
`shown a reasonable likelihood of prevailing on the grounds asserted.
`
`
`
`III. CONCLUSION
`
`The Petition fails to demonstrate a reasonable likelihood of prevailing
`
`on the grounds that the challenged claims are anticipated by, or obvious
`
`over, Draft Standard or obvious over Draft Standard and Boer.
`
`
`
`10
`
`
`

`

`IPR2014-00890
`Patent 8,457,228 B2
`
`
`
`IV. ORDER
`
`
`
`In consideration of the foregoing, it is
`
`ORDERED that the petition is denied as to all challenged claims and
`
`no trial is instituted.
`
`11
`
`
`

`

`
`
`
`
`IPR2014-00890
`Patent 8,457,228 B2
`
`For Petitioner:
`
`Jeffrey Miller
`
`millerj@dicksteinshapiro.com
`
`Daniel Cardy
`
`cardyd@dicksteinshapiro.com
`
`
`
`
`For Patent Owner:
`
`Thomas Engellenner
`engellennert@pepperlaw.com
`
`Reza Mollaaghababa
`mollaaghababar@pepperlaw.com
`
`Lana Gladstein
`gladsteinl@pepperlaw.com
`
`
`
`
`12
`
`
`

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