Trials@uspto.gov
`571.272.7822
`
`Paper No. 37
`Filed: December 7, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00919
`Patent 7,848,353 B2
`__________
`
`
`
`
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`571.272.7822
`
`Paper No. 37
`Filed: December 7, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00919
`Patent 7,848,353 B2
`__________
`
`
`
`
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`IPR2014-00919
`Patent 7,848,353 B2
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`
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`Ericsson Inc. and Telefonaktiebolaget LM Ericsson, (collectively
`
`“Ericsson”) filed a Petition (Paper 1, “Pet.”) requesting inter partes review
`
`of claims 9–20 and 29–34 of U.S. Patent No. 7,848,353 B2 (Ex. 1001, the
`
`“’353 patent”). We issued a Decision to Institute an inter partes review of
`
`claims 9–20 and 29–34 of the ’353 patent. Paper 8 (“DI”). After institution
`
`of trial, Patent Owner Intellectual Ventures II LLC (“Intellectual Ventures”)
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`filed a Patent Owner’s Response (Paper 17, “PO Resp.”) and Ericsson filed a
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`Petitioner’s Reply (Paper 21, “Reply”). We have jurisdiction under 35
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`U.S.C. § 318(a).
`
`The instant case came before the Board for a regularly scheduled oral
`
`hearing on the merits on August 25, 2015, the transcript of which is entered
`
`as Paper 36 (“Tr.”). Also before the Board are the following matters:
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`Patent Owner’s Objection to Evidence (Paper 24); and
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`Patent Owner’s Motion to Exclude Evidence (Papers 27 and 31).
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`After considering the evidence and arguments of counsel and for the
`
`reasons set forth below, we determine that Ericsson has met its burden of
`
`showing, by a preponderance of the evidence, that claims 9–20 and 29–34
`
`of the ’353 patent are unpatentable.
`
`Related Proceedings
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`The ’353 patent issued from non-provisional application number
`
`12/033,824 and is the subject of two IPR proceedings. The first such
`
`proceeding is the instant proceeding in which Petitioner Ericsson challenges
`
`claims 9–20 and 29–34 of the ’353 Patent. The second such IPR Proceeding
`
`is Google Inc. v. Intellectual Ventures II LLC, Case IPR2014-01031 (PTAB)
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`in which the Petitioner Google challenges claims 1–8 and 21–27 of the ’353
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`Patent.
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`2
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`IPR2014-00919
`Patent 7,848,353 B2
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`The ’353 patent is the parent of a continuation application, non-
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`provisional application number 12/960,774, which lead to issuance of
`
`US Patent 8,396,079 B2 (the “’079 patent”). The ’079 Patent is the subject
`
`of an IPR proceeding captioned Ericsson, Inc. v. Intellectual Ventures II
`
`LLC, IPR2014-00915 (PTAB).
`
`The ’353 patent and/or the ’079 patent are patents-in-suit in one or
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`more of the following United States District Court patent infringement
`
`actions:
`
`Intellectual Ventures I LLC v. AT&T Mobility LLC, 1-13-cv-01668 (D.
`Del. 2013).
`
`Intellectual Ventures I LLC v. Leap Wireless Int’l, 1-13-cv-01669 (D. Del.
`2013).
`
`Intellectual Ventures I LLC v. Nextel Operations, 1-13-cv-01670 (D. Del.
`2013).
`
`Intellectual Ventures I LLC v. T-Mobile USA Inc., 1-13-cv-01671 (D. Del.
`2013).
`
`Intellectual Ventures I LLC v. United States Cellular, 1-13-cv-01672 (D.
`Del. 2013).
`
`Intellectual Ventures I LLC v. Motorola Mobility LLC, 0-13-cv-61358
`(S.D. Fla. 2013).
`
`I. BACKGROUND
`
`A. The ’353 Patent (Ex. 1001)
`
` The ’353 patent, titled “Communication Units Operating With
`
`Various Bandwidths,” relates to digital communication systems such as
`
`wireless cellular communication systems. Ex. 1001, 1:13–18. The
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`communication system disclosed in the ’353 patent is capable of operating at
`
`a plurality of bandwidths. Id., Abstract. The system transmits a signal
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`comprised of a first signal portion and a further signal portion. Id. The first
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`3
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`signal portion is transmitted over a first bandwidth. Id. The first signal
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`portion contains an indication of an operating bandwidth selected from a
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`plurality of bandwidths for use in transmitting and receiving the further
`
`signal portion. Id.
`
`Figure 1 of the ’353 patent is shown above. Figure 1 is a block
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`diagram of a wireless communication system. Ex. 1001, 3:8–10. A plurality
`
`of subscriber terminals (e.g., cell phones) 112, 114, 116 communicate
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`wirelessly over radio links 118, 119, 120 with a plurality of base transceiver
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`stations 122, 124, 126, 128, 130, 132, also known as “Node-Bs.” Id. at
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`3:34–38. The cell phones and Node-Bs transmit and receive multi-rate
`
`signals. Id. at 4:39–44.
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`A first portion of the multi-rate signal has a predetermined bandwidth
`
`and contains an indication of an operating bandwidth for a further portion of
`
`the signal. Id. at claim 9. Following transmission, both the indication from
`
`the first signal portion and the information in the further signal portion are
`
`recoverable. Id. The information in the further signal portion is recoverable
`
`at the operating bandwidth indicated in the first signal portion. Id.
`
`B. The Challenged Claims
`
`Ericsson challenges claims 9–20 and 29–34. Claims 9, 14, and 29 are
`
`independent claims. Claim 9 is a method claim and claims 14 and 29 are
`
`apparatus claims. Claim 14 is illustrative of the subject matter of the
`
`challenged claims and is reproduced below:
`
`14. A multi-bandwidth communication system comprising:
`
`a transmitter having logic for transmitting a signal having a
`first signal portion at a first, predetermined bandwidth
`and containing an indication of an operating bandwidth
`selected from a plurality of bandwidths used for a further
`signal portion;
`
`a receiver having logic for receiving the transmitted signal;
`
`logic for recovering the indication from the first signal
`portion at the first, predetermined bandwidth; and
`
`logic for recovering information in the further signal portion
`at the operating bandwidth indicated by the indication.
`
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`5
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`C. The Asserted Grounds of Unpatentability
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`We instituted trial on Ericsson’s challenge to claims 9–20 and 29–34
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`of the ’353 patent as obvious under 35 U.S.C. § 103 over various
`
`combinations of references listed below. DI, 22, 23.
`
`References
`McFarland (Ex. 1002)1 and van Nee (Ex. 1003)2
`
`McFarland, van Nee, and Shahar (Ex. 1004)3
`McFarland, van Nee, and Dahlman (Ex. 1006) 4
`McFarland, van Nee, and Richardson (Ex. 1005) 5
`Trompower (Ex. 1007)6 and Yamaura (Ex. 1008)7
`
`Trompower, Yamaura, and Shahar
`
`Trompower, Yamaura, and Dahlman
`
`Trompower, Yamaura, and Richardson
`
`Claims challenged
`
`9, 10, 12, 14–17, 19,
`29, 30, and 32
`
`11, 18, and 31
`
`13, 20, and 33
`
`34
`
`9, 10, 12, 14–17, 19,
`29, 30, and 32
`
`11, 18, and 31
`
`13, 20, and 33
`
`34
`
`II. MOTION TO EXCLUDE EVIDENCE
`
`Intellectual Ventures moves to exclude Exhibits 1011, 1012, 1013,
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`1016, 1021, 1032, and 1033. Intellectual Ventures also moves to exclude
`
`selected paragraphs of testimony from the Supplemental Declaration of
`
`Zygmunt J. Haas, Ph.D., which appears in the record as Exhibit 1031.
`
`1 U.S. Patent No. 7,397,859 B2 to McFarland, issued July 8, 2008.
`2 U.S. Patent No. 6,175,550 B1 to van Nee, issued Jan. 16, 2001.
`3 U.S. Patent No. 6,987,754 B2 to Shahar et al., issued Jan. 17, 2006.
`4 Erik Dahlman et al., UMTS/IMT-2000 Based on Wideband CDMA, IEEE
`COMMUNICATIONS MAGAZINE, 70–80 (Sept. 1998).
`5 K.W. Richardson, UMTS Overview, ELECTRONICS & COMMUNICATION
`ENGINEERING JOURNAL, 93–100 (June 2000).
`6 U.S. Patent No. 5,950,124 to Trompower et al., issued Sept. 7, 1999.
`7 U.S. Patent No. 5,321,721 to Yamaura et al., issued June 14, 1994.
`
`
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`6
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`A. Exhibit 1011 — European Prosecution History
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`Exhibit 1011 is taken from the prosecution history of a European
`
`counterpart application to the ’353 Patent. Intellectual Ventures argues that
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`Exhibit 1011 is irrelevant and should be excluded under Rule 402 of the
`
`Federal Rules of Evidence. Intellectual Ventures cites Volkswagen Group of
`
`America, Inc. v. Emerachem Holdings, LLC, Case IPR2014-01557, slip op.
`
`at 15 (PTAB Mar. 16, 2015) (Paper 13) for the proposition that proceedings
`
`before the European Patent Office (“EPO”) are essentially irrelevant.
`
`Paper 27, 1.
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`Ericsson argues that, notwithstanding any differences in the law, the
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`European Application is relevant because it illustrates the applicability of the
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`Trompower reference (Ex. 1007) to a patent application having the same
`
`specification of the ’353 Patent. Paper 31, 2.
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`We think Exhibit 1011 is probative of whether Trompower is
`
`analogous art to the ’353 patent and will admit it for this limited purpose.
`
`Intellectual Ventures’s motion to exclude Exhibit 1011 is DENIED.
`
`B. Exhibit 1012 and 1013 — District Court Allegations
`
`Exhibit 1012 is a copy of a complaint in one of the related District
`
`Court patent infringement lawsuits identified above. Exhibit 1013 is an
`
`opposition filed by Plaintiffs Intellectual Ventures I LLC and Intellectual
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`Ventures II LLC to a motion to sever filed by the defendants in related
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`District Court litigation. Intellectual Ventures argues that its allegations of
`
`infringement have no relevance to the validity of the ’353 patent.
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`Paper 27, 2. Intellectual Ventures relies on a Board decision in Synopsys,
`
`Inc. v. Mentor Graphics Corp., Case IPR 2012-00042, slip op. at 15 (PTAB
`
`
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`7
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`Feb. 22, 2013) (Paper 16) for the proposition that potentially infringing
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`products are irrelevant to the issues raised in the Petition. Paper 27, 3.
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`Ericsson responds that Exhibits 1012 and 1013 are submitted for the
`
`purpose of evidencing features known to be part of the products alleged to
`
`be infringing by Intellectual Ventures. Paper 31, 3. Ericsson argues that
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`infringement-related evidence that tends to show the potential breadth of the
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`claims is relevant. Id. at 3 (citing Hewlett-Packard Co. v. MPHJ Tech. Invs.,
`
`LLC, Case IPR 2013-00309, slip op. at 20 (PTAB Nov. 19, 2014)
`
`(Paper 35)).
`
`In the opposition to motion to sever (Exhibit 2017), plaintiffs in the
`
`related District Court litigation make the following factual allegation to the
`
`Delaware District Court.
`
`Plaintiffs assert that each Defendants’ LTE wireless network
`infringes Plaintiffs’ patents [inter alia, the ’353 patent] . . . .
`LTE is the latest wireless standard published by the 3GPP
`organization. It is currently marketed as 4G LTE.
`
`Exhibit 1013, 2. To the extent that there is a factual connection between the
`
`OFDM technology disclosed in the McFarland prior art reference in the
`
`instant IPR proceeding (Ex. 1002) and the LTE technology that is accused of
`
`infringing the ’353 patent in the related District Court litigation, Intellectual
`
`Ventures’s infringement allegations in the District Court litigation shed light
`
`on Intellectual Ventures’s allegations regarding the scope of the claims in
`
`the instant IPR proceeding.
`
`We DENY Intellectual Ventures’s motion to exclude Exhibits 1012
`
`and 1013.
`
`
`
`
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`C. Exhibits 1016 and 1021 – LTI Evolution of Mobile Broadband
`
`Intellectual Ventures argues that the publication date of Exhibits 1016
`
`and 1021 (duplicates of each other) is after the priority date of the ’353
`
`patent and, therefore, Exhibits 1016 and 1021 are irrelevant.
`
`Ericsson argues that the purpose for which these articles are offered is
`
`not as prior art, but as evidence of features known to be part of the products
`
`alleged to be infringing by Patent Owner. Paper 31, 2. As such, Ericsson
`
`contends that these Exhibits are evidence of features that Intellectual
`
`Ventures alleges fall within the scope of the claims of the ’353 patent, at
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`least as construed by Intellectual Ventures in another forum. Id. at 2–3.
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`Ericsson further contends that these Exhibits demonstrate that Intellectual
`
`Ventures is taking inconsistent positions on claim construction in this
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`proceeding vis-à-vis related District Court litigation. Id. at 3.
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`It is well settled that, because the claims of a patent measure the
`
`invention at issue, the claims must be interpreted and given the same
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`meaning for purposes of both a validity and infringement analysis.
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`Amazon.com, Inc. v. BarnesAndNoble.com, Inc., 239 F.3d 1343, 1351
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`(Fed. Cir. 2001). Otherwise, an improper claim construction may distort an
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`infringement and invalidity analysis. Id.(citing Bausch & Lomb, Inc. v.
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`Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 450 (Fed. Cir. 1986)). The
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`courts have long decried that patent owners may not, like a “nose of wax,”
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`twist the meaning of patent claims one way to avoid a finding of
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`unpatentability and in another way so as to find infringement.
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`See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
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`1111, 1117 (Fed. Cir. 2004) (quoting White v. Dunbar, 119 U.S. 47, 51–52
`
`(1886)).
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`9
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`All of the challenged claims of the ’353 patent contain limitations
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`directed to a “signal” with a “first signal portion” and a “further signal
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`portion.” Ex. 1001, claims 9, 14, and 29. The claims also contain
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`limitations directed to an “operating bandwidth.” Id. The parties engage in
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`a vigorous dispute over the proper construction of “signal” and “indication
`
`of an operating bandwidth.” Intellectual Ventures takes the position in the
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`instant IPR proceeding that the OFDM system disclosed in McFarland
`
`(Ex. 1002), does not satisfy the signal and bandwidth limitations of the
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`challenged claims. See, e.g., PO Resp. 22–26. We agree with Ericsson that
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`Exhibits 1016 and 1021 are probative of whether Intellectual Ventures may
`
`be taking inconsistent positions on whether OFDM communication systems
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`satisfy the signal and bandwidth limitations of the challenged claims.
`
`We DENY Intellectual Ventures’s motion to exclude Exhibits 1016
`
`and 1021.
`
`D. Exhibit 1032 — Newton’s Telecom Dictionary
`
`Intellectual Ventures argues that Exhibit 1032 is irrelevant, outside the
`
`scope of Patent Owner’s Response and will cause undue prejudice to Patent
`
`Owner. Paper 27, 6–7. Ericsson states that Exhibit 1032 is offered to rebut
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`Intellectual Ventures’s position on the proper construction of “data burst.”
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`Paper 31, 7–8.
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`Exhibit 1032 is a technical dictionary that offers definitions of the
`
`term “packet” as it is used in the telecommunications industry. The term
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`“packet” appears in the ’353 patent (Ex. 1001, 3:59); McFarland (Ex. 1002,
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`e.g., Fig. 10); van Nee (Ex. 1003, e.g., 4:25); Shahar (Ex. 1004, e.g.,
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`Abstract); Richardson (Ex. 1005, e.g., 93); Dahlman (Ex. 1006, e.g., 70);
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`and Trompower (Ex. 1007, e.g., 13:34). Given the issues raised by
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`Intellectual Ventures in the Patent Owner’s Response in connection with
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`above cited prior art references, we think the introduction of a technical
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`dictionary definition of “packet” is within the proper scope of rebuttal
`
`evidence.
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`We DENY Intellectual Ventures’s motion to exclude Exhibit 1032.
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`E. Exhibit 1033 — Digital Communications Fundamentals
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`Intellectual Ventures argues that Exhibit 1033 is neither referred to
`
`nor discussed in Ericsson’s Reply and, therefore, should be excluded as
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`irrelevant under Federal Rule of Evidence 402. Paper 27, 7.
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`Ericsson responds that its Reply specifically cites to paragraph 10 of
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`Dr. Haas’s supplemental declaration (Ex. 1031 ¶ 10). Paper 31, 8–9.
`
`Paragraph 10 of Dr. Haas’s declaration testimony, in turn, quotes directly
`
`from Exhibit 1033. See Ex. 1031 ¶ 10.
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`We DENY Intellectual Ventures’s motion to exclude Exhibit 1033.
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`F. Exhibit 1031 — Supplemental Haas Declaration
`
`Intellectual Ventures moves to exclude paragraphs 5–9, 11–17, 19–23,
`
`and 25 of the Supplemental Haas Declaration submitted in connection with
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`Ericsson’s Reply. Ex. 1031.
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`1. Paragraphs 5–9, 11, 14, 15, 17, and 21–23
`
` Intellectual Ventures argues that these paragraphs should be excluded
`
`from evidence because they are not cited or otherwise relied on in
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`Petitioner’s Reply. Paper 27, 3.
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`Ericsson responds that the paragraphs support the analysis and
`
`conclusions of Dr. Haas contained in the paragraphs that were cited in the
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`Reply and that there is no requirement that every paragraph must be
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`expressly cited in a corresponding brief. We agree and DENY Intellectual
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`11
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`Ventures’s motion to exclude paragraphs 5–9, 11, 14, 15, 17, and 21–23 of
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`the supplemental Haas declaration.
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`2. Paragraphs 12–17, 21–23, and 25
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`Intellectual Ventures moves to exclude these paragraphs as offering
`
`testimony raising new issues. Paper 27, 3–6. In support of its position,
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`Intellectual Ventures cites the Board’s decision in Intri-Plex Tech., Inc. v.
`
`Saint-Gobain Performance Plastics Rencol Ltd., Case IPR2014-00309, slip
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`op. at 13 (PTAB March 23, 2014) (Paper 83). Paper 27, 3–6.
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`Ericsson responds that these paragraphs are proper rebuttal to
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`Intellectual Ventures’s Patent Owner’s Response. Paper 31, 4–6.
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` The Intri-Plex decision relied on by Intellectual Ventures does not
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`apply to the instant situation. In Intri-Plex, the Petitioner did not support its
`
`original Petition with any expert declaration testimony and then later
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`submitted an expert declaration, for the first time contemporaneous with its
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`Reply, that offered claim construction opinion testimony, a claim-by-claim,
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`element-by-element obviousness analysis of each challenged claim, and an
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`opinion that each challenged claim was obvious over the prior art. See Intri-
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`Plex, Case IPR2014-00309, slip op at 12 (Paper 83).
`
`In the instant case, we have reviewed the paragraphs at issue and
`
`agree with Ericsson that they contain rebuttal testimony that is appropriate
`
`for submission in a Reply. Accordingly, we DENY Intellectual Ventures’s
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`motion to exclude paragraphs 12–17, 21–23, and 25 of the supplemental
`
`Haas declaration.
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`3. Paragraphs 19 and 20
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`Intellectual Ventures argues that paragraphs 19 and 20 provide
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`“conclusory and unsupported” testimony that is not based on any facts or
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`12
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`data. Paper 27, 6. Ericsson responds that Dr. Haas testimony is based on
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`facts and data that he is personally familiar with based on his 35 years of
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`experience with wireless communications. Paper 31, 7.
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`We have reviewed paragraphs 19 and 20 where Dr. Haas offers
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`opinion testimony concerning his interpretation and analysis of the Shahar
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`(Ex. 1004) reference. We will admit Dr. Haas’ testimony regarding his
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`understanding and interpretation of Shahar based on his knowledge and
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`experience with wireless communications.
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`We DENY Intellectual Ventures’s motion to exclude paragraphs 19
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`and 20 of the supplemental Haas declaration.
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`III. CLAIM INTERPRETATION
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`In an inter partes review, claims are given their broadest reasonable
`
`interpretation consistent with the specification. See 37 C.F.R. § 42.100(b);
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`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015).
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`Within this framework, terms generally are given their ordinary and
`
`customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
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`(Fed. Cir. 2007).
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`1. “bandwidth”
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`Ericsson’s proposed construction: a frequency range.
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`Pet. 16–17, Reply 9.
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`Intellectual Ventures’s proposed construction: a width of a
`frequency band.
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`PO Resp. 6–8.
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`In its initial Petition, Ericsson proposed to construe “bandwidth” as “a
`
`frequency range that a component, circuit, or system passes or uses.”
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`Pet. 16–17. In the Decision to Institute, we construed bandwidth as “a
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`frequency range.” DI, 5. In its Reply, Ericsson agrees with the Board’s
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`preliminary construction and recognizes that the additional features in its
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`originally proposed construction are unnecessary. Reply 9.
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`Intellectual Ventures argues that a “width of a frequency band” is the
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`correct construction. PO Resp. 8. Intellectual Ventures argues that the
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`Board’s preliminary construction of “frequency range” does not convey the
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`concept of accuracy that “width of a frequency band” conveys. Id.
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`Intellectual Ventures does not explain how its proposed construction
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`conveys a different concept of accuracy than the Board’s preliminary
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`construction. Id.
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`It is well settled that claims should be read in light of the specification
`
`and teachings in the underlying patent. See Microsoft Corp. v. Proxyconn,
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`Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). The PTO should also consult
`
`the patent’s prosecution history in proceedings in which the patent has been
`
`brought back to the agency for a second review. Id.8
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`The specification uses the terms “chip rate” and “bandwidth” each
`
`about eleven times. For example,
`
` This invention, at least in a preferred form, implements a
`scheme where the SCH channel in the UTRA air-interface is
`transmitted at the lowest chip-rate supported by the system
`design. Note that only the SCH channel is always transmitted
`at the lower chip rate.
` As the SCH is transmitted at the lower chip rate, the receiving
`UE will by default, select the receiver bandwidth appropriate to
`this lower chip-rate. In this configuration, the UE will be able
`to recover the SCH, irrespective of the chip rate used at the
`transmitting Node B.
`
`Ex. 1001, 5:63–6:5 (emphases added).
`
`
`8 The Proxyconn case involved an IPR Proceeding.
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`The specification further explains that the inventive concepts of the
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`invention can be applied outside of the context of wireless communication
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`systems.
`
`Although the preferred embodiment of the invention is
`described with reference to a wireless communication system
`employing a UMTS air-interface, it is within the contemplation
`of the invention that the inventive concepts described herein
`can be applied to any multi-bandwidth/multi-data rate
`communication system—fixed or wireless.
`
`Id. at 4:39–44. The ’353 patent issued on a continuation application (non-
`
`provisional application number 12/033,824) that claimed priority to non-
`
`provisional application number 10/293,635 (the ’635 application), which led
`
`to issuance of US Patent 7,356,098 B2 (the ’098 patent). Ex. 1001;
`
`Ex. 2001. During prosecution of the ’635 application, all of the originally
`
`filed claims used the term “chip rate” and none of the originally filed claims
`
`used the term “bandwidth.” Ex. 1010, 468–473. Originally filed claim 1 is
`
`illustrative:
`
`1. A method for synchronisation[9] in a multi-rate
`communication system, the method comprising:
`receiving a signal having a synchronization portion at a
`first, predetermined chip rate and containing an indication of
`chip rate used for a further portion; and
`recovering the indication from the synchronization
`portion at the first, predetermined chip rate; and
`recovering information in the further portion at the chip
`rate indicated by the indication.
`
`
`9 Two alternative spellings for this word (1) synchronisation; and (2)
`synchronization are used at various places in the specification and various
`prior art references. For the sake of simplicity and consistency, we will
`hereinafter render this word with the spelling synchronization, regardless of
`how the term may be spelled elsewhere in the record.
`
`
`
`15
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`IPR2014-00919
`Patent 7,848,353 B2
`
`
`Ex. 1010, 468 (emphases added). All of the original pending claims in
`
`the ’635 application were rejected over Boer.10 Id. at 361. Boer discloses a
`
`multi-rate wireless data communication system. Boer transmits the initial
`
`portion of a message at a predetermined data rate and includes in such initial
`
`portion an identification segment identifying a selected data rate at which the
`
`data portion of the message is to be transmitted. Boer, 1:33–47. Boer
`
`discloses that it achieves a plurality of data rates by using a plurality of
`
`different modulation techniques. Id. at 2:16–53.
`
`the preamble 216 and header 218 are always transmitted at the
`1 Mbps rate using DBPSK modulation. The subsequent DATA
`field 214, however, may be transmitted at a selected one of the
`four possible rates 1, 2, 5, or 8 Mbps, using the modulation and
`coding discussed hereinabove.
`
`Boer, 3:57–62.
`
`In traversing the rejection over Boer, the applicant argued that Boer
`
`discloses transmitting multi-rate signals where the plurality of data rates all
`
`use the same symbol rate. Ex. 1010, 354 (citing Boer, 1:33–47; 2:27–53).
`
`Applicant further argued that a symbol rate is also referred to as the chip rate
`
`for DSSS codes and that the chip rate determines a signal bandwidth.
`
`Ex. 1010, 354. In order to distinguish over Boer, Intellectual Ventures’s
`
`amended its claims to include limitations with the term “bandwidth
`
`determined by . . . chip rate.” Ex. 1010, 267. All of the independent claims
`
`that eventually issued in the ’098 patent contain the term “bandwidth
`
`determined by . . . chip rate.” Pet. 8–9; Ex. 1010, 273, 354.11 Similarly, all
`
`
`10 US 5,706,428, iss. Jan. 6, 1998. We take Official Notice of Boer.
`Ex. 3001.
`11 See also US Patent 7,356,098 B2, claims 1, 9, 13, 20, and 27. Ex. 2001.
`
`
`
`16
`
`
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`IPR2014-00919
`Patent 7,848,353 B2
`
`
`of the claims of the ’353 patent use the term “bandwidth” and none of the
`
`claims use the term “chip rate” or “data rate.”
`
`In the Notice of Allowance for the ’098 patent, the Examiner
`
`explained that Boer teaches the claimed method except that it fails to teach
`
`recovering from a received first signal portion at a predetermined bandwidth
`
`and then recovering information in a further signal portion at a bandwidth
`
`indicated by the first signal portion. Ex. 1010, 44.
`
`As modern telecommunications technology has developed over time,
`
`the term “bandwidth” has acquired more than one meaning. For example,
`
`one on-line dictionary provides the following two definitions:
`
` 1: a range within a band of wavelengths, frequencies, or energies;
`especially: a range of radio frequencies which is occupied by a
`modulated carrier wave, which is assigned to a service, or over which
`a device can operate[.]
`
` 2: the capacity for data transfer of an electronic communications
`system <graphics consume more bandwidth than text does>;
`especially: the maximum data transfer rate of such a system <a
`bandwidth of 56 kilobits per second>[.]
`Merriam-Webster.com.12 The parties’ proposed constructions appear to
`
`agree that the term “bandwidth,” as used in the claims of the ’353 patent,
`
`more closely conforms to definition number 1 above. Such a construction is
`
`supported by the prosecution history of the ’098 patent and the ’353 patent
`
`where the claims were amended essentially to substitute “bandwidth” or
`
`“bandwidth determined by . . . chip rate” for “chip rate” to distinguish over
`
`the Boer reference.
`
`
`12 http://www.merriam-webster.com/dictionary/ bandwidth (last visited
`Oct. 16, 2015).
`
`
`
`17
`
`
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`IPR2014-00919
`Patent 7,848,353 B2
`
`
`
`In view of the foregoing, we retain the same construction for
`
`“bandwidth” that we adopted for purposes of the Decision to Institute. Thus,
`
`we construe “bandwidth” to mean “a frequency range.” For purposes of
`
`clarification, we will provide the following example: a band of frequencies
`
`with a lower cut-off frequency of 10 MHz and an upper cut-off frequency of
`
`40 MHz has a “bandwidth” of 30 MHz.
`
`2. indication of operating bandwidth
`
`Ericsson’s proposed construction: Ericsson contends that the
`plain and ordinary meaning of this term should apply and that
`no construction is necessary.
`
`Reply 7–8.
`
`Intellectual Ventures’s proposed construction: identification of
`a particular operating bandwidth.
`
`PO Resp. 8–10.
`
`This term was not construed in the Decision to Institute as neither
`
`party proposed a construction in their respective Petition or Preliminary
`
`Response. Intellectual Ventures first placed the meaning of this phrase in
`
`controversy in its Patent Owner’s Response after receiving our Decision to
`
`Institute.
`
`In support of its proposed construction, Intellectual Ventures argues
`
`that claim 15, which depends from independent claim 14, recites that “‘the
`
`logic for recovering information in the further signal portion comprises a
`
`filter having a bandpass appropriate for the indicated operating
`
`bandwidth.’” PO Resp. 8–9. Intellectual Ventures argues that a selected
`
`bandpass range could only be “appropriate” if the indicated operating
`
`bandwidth is identified with particularity. Id. at 9. This argument is not
`
`persuasive. If the word “appropriate” is necessary to indicate that the
`
`
`
`18
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`IPR2014-00919
`Patent 7,848,353 B2
`
`
`operating bandwidth is “particular,” Intellectual Ventures does not explain
`
`why the modifier “appropriate” appears only in a dependent claim. We have
`
`considered Intellectual Ventures’s other arguments and find them to be
`
`equally unpersuasive.
`
`The term “operating bandwidth” appears in multiple claims in
`
`the ’353 patent. Ex. 1001, claims 1, 2, 4, 9, 10, 14, 15, 16, 17, 21, 22, 23,
`
`24, 29, and 30. However, the term “operating bandwidth” does not appear,
`
`in so many words, throughout the specification. In addition, we note that
`
`none of the originally filed claims in the ’635 application contained the term
`
`“bandwidth,” much less “operating bandwidth.” Ex. 1010, 468–73.
`
`A claim construction analysis begins with, and is centered on, the
`
`claim language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc.,
`
`256 F.3d 1323, 1331 (Fed. Cir. 2001). In the instant case, claim 14 requires
`
`that the claimed communication system has logic for transmitting a signal.
`
`The signal has a “first” portion and a “further” portion. The first signal
`
`portion is transmitted at a first “predetermined” bandwidth. The first signal
`
`portion contains an “indication of an operating bandwidth.” Such
`
`“indication” is recoverable from the first signal portion. Information
`
`contained in the further signal portion is recoverable at the “operating
`
`bandwidth” that is “indicated by the indication.” The context of the claim
`
`suggests that the “indication” is transmitted so that the transmitter and
`
`receiver can coordinate with each other to send and receive the further signal
`
`portion at compatible frequencies corresponding to the “operating
`
`bandwidth.”
`
`The “ordinary and customary meaning of a claim term” is that
`
`meaning that a person of ordinary skill in the art in question, at the time of
`
`
`
`19
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`IPR2014-00919
`Patent 7,848,353 B2
`
`
`the invention, would have understood the claim to mean. See Translogic
`
`Tech., 504 F.3d at 1257; Phillips v. AWH Corp., 415 F.3d 1303, 1313
`
`(Fed. Cir. 2005) (en banc). The Federal Circuit admonishes us that even
`
`under the broadest reasonable interpretation, the Board’s construction cannot
`
`be divorced from the specification and the record evidence. See Microsoft
`
`Corp. v. Proxyconn, Inc., 789 F.3d at 1298. Rather, “claims should always
`
`be read in light of the specification and teachings in the underlying patent.”
`
`Id. (internal citation and quotations omitted). Thus, a construction that is
`
`unreasonably broad and does not reasonably reflect the plain language and
`
`disclosure will not pass muster. See id.
`
`In the instant case, the specification is directed to solving a need for a
`
`synchronization scheme for multi-rate communication systems that
`
`overcomes the problems in the prior art attributable to initial rate
`
`negotiations schemes and other inefficiencies. Ex. 1001, 2:3–8. The
`
`specification discloses a receiving communication unit that can receive and
`
`process high-speed signals of varying bandwidths. Id. at 5:5–10.
`
`As explained by Intellectual Ventures’s expert, Dr. Zeger, the
`
`specification discloses that synchronization information is transmitted at a
`
`specified narrow bandwidth.
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