Trials@uspto.gov
`571-272-7822
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`Paper 43
`Date: December 9, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00921
`Patent 6,023,783
`____________
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
`DAVID C. MCKONE, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 43
`Date: December 9, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00921
`Patent 6,023,783
`____________
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
`DAVID C. MCKONE, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`IPR2014-00921
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`I. INTRODUCTION
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson ( “Ericsson”),
`
`filed a Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1–
`5, 23, 24, 38–42, 60, and 61 of U.S. Patent No. 6,023,783 (“the ’783
`patent”). We issued a Decision to institute an inter partes review of claims
`23, 24, 60, and 61 of the ’783 patent on the following grounds: (1) claims
`23, 24, 60, and 61 as unpatentable under 35 U.S.C. § 103 as unpatentable
`over Robertson1 and Ungerboeck2; (2) claims 23 and 60 as anticipated under
`35 U.S.C . § 102 by Palicot3; (3) claims 23 and 60 as unpatentable under 35
`U.S.C . § 103 over Palicot; and (4) claims 24 and 61 as unpatentable under
`35 U.S.C . § 103 over Palicot and Ungerboeck. Paper 8 (“Inst. Dec.”).4
`
`After institution of trial, Intellectual Ventures I LLC (“Intellectual
`Ventures”) filed a Patent Owner’s Response (Paper 26, “PO Resp.”), to
`which Ericsson replied (Paper 28, “Pet. Reply”). Ericsson also filed a
`Motion to Exclude portions of Exhibit 2006 (Paper 34), to which Intellectual
`Ventures filed an Opposition (Paper 36).
`
`
`1 Patrick Robertson et al., A Comparison of Optimal and Sub-Optimal MAP
`Decoding Algorithms Operating in the Log Domain, PROCEEDINGS of IEEE
`INTERNATIONAL CONFERENCE ON COMMUNICATIONS 1009–13 (June 1995).
`(“Robertson”) (Ex. 1012).
`2 Gottfried Ungerboeck, Trellis-Coded Modulation with Redundant Signal
`Sets Part 1: Introduction, 25 IEEE COMMUNICATIONS MAGAZINE NO. 2 5–11
`(Feb. 1987). (“Ungerboeck”) (Ex. 1007).
`3 J. Palicot & J. Veillard, Possible Coding and Modulation Approaches to
`Improve Service Availability for Digital HDTV Satellite Broadcasting at 22
`GHz, 39 IEEE TRANSACTIONS ON CONSUMER ELECTRONICS NO. 3 660–67
`(Aug. 1993). (“Palicot”) (Ex. 1008).
`4 We did not institute trial on any grounds directed to claims 1–5 and 38–42.
`2
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`Oral argument was conducted on August 26, 2015. A transcript of
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`that argument has been made of record. Paper 42.
`
`We have jurisdiction under 35 U.S.C. § 318(a). After considering the
`evidence and arguments of both parties, 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 23, 24, 60, and 61 of the ’783
`patent are unpatentable.
`
`
`
`A. Related Matters
`Intellectual Ventures has asserted the ’783 patent against various
`
`companies in the following lawsuits filed in the United States District Court
`for the District of Delaware:
`Intellectual Ventures I LLC et al. v. AT & T Mobility LLC et al.,
`
`No. 1:13-cv-01668-LPS (D. Del.), filed October 7, 2013;
`Intellectual Ventures I LLC et at. v. Leap Wireless International Inc.
`
`et al., No. 1:13-cv-01669-LPS (D. Del.), filed October 7, 2013;
`Intellectual Ventures I LLC etal. v. Nextel Operations Inc. et al.,
`
`No. 1:13-cv-01670-LPS (D. Del.), filed October 7, 2013;
`Intellectual Ventures I LLC et al. v. T-Mobile USA Inc. et al.,
`
`No. 1:13-cv- 01671-LPS (D. Del.), filed October 7, 2013; and
`Intellectual Ventures I LL et al. v. United States Cellular Corp.,
`
`No. 1:13- cv-01672-LPS (D. Del.), filed October 7, 2013.
`Pet. 1; Paper 5, 1.
`
`B. The ’783 Patent (Ex. 1001)
`The ’783 patent is titled “Hybrid Concatenated Codes and Iterative
`
`Decoding,” and is expressed as relating to “error correcting codes.”
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`Ex. 1001, 1:12. In that respect, the “Related Art” is described as being
`concerned with “[t]urbo codes,” which are “binary error-correcting codes
`built from the parallel concatenation of two recursive systematic
`convolutional codes and using a feedback decoder.” Id. at 1:14–17. The
`patent characterizes its disclosed invention as “encompass[ing] several
`improved turbo code apparatuses and methods.” Id. at 1:66–67.
`
`By way of explanation, the ’783 patent presents the following figure,
`which is represented as “Prior Art”:
`
`
`
`Figure 1 is a block diagram of a prior art turbo code encoder. Id. at 2:48.
`
`As shown in the above-noted figure:
`Each source data element d to be coded is coupled to a first
`systematic coding module 11 and,
`through a
`temporal
`interleaving module 12, to a second systematic coding module
`13. The coding modules 11 and 13 may be of any known
`systematic type, such as convolutional coders, that take into
`account at least one of the preceding source data elements in
`order to code the source data element d.
`Id. at 1:27–34.
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`The ’783 patent further explains that “an important aspect of prior art
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`turbo code encoders is that they transmit a data element X equal to input
`source data element d.” Id. at 1:53–55.
`
`Figure 5 of the ’783 patent is reproduced below and depicts an
`embodiment according to the invention of that patent:
`
`
`
`
`
`The figure above illustrates a diagram of a turbo encoder that includes
`
`similar features to those of the prior art. The ’783 patent describes that
`“encoded parity elements Xn,” i.e., encoded data, are transmitted from
`coding modules C, with at least one interleaver πn. Id. at 13:59–66.
`According to the ’783 patent, the invention disclosed therein is distinguished
`from the prior art because the turbo encoder structure of the patent “outputs
`only encoded parity elements Xn from the coding modules C—the original
`data source elements d are not transmitted or stored.” Id. (emphasis added).
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`C. Illustrative Claims
`Claims 23 and 60 are independent claims. Those claims are
`
`illustrative of the subject matter at issue, and are reproduced below:
`
`23. A system for error-correction coding of a source of
`original digital data elements, comprising:
`
` (a) a first systematic convolutional encoder, coupled to the
`source of original digital data elements, for generating a first
`series of coded output elements derived from the original digital
`data elements;
`
` (b) at least one interleaver, each coupled to the source of
`original digital data elements, for modifying the order of the
`original digital data elements to generate respective interleaved
`elements;
`
` (c) at least one next systematic convolutional encoder, each
`coupled to respective interleaved elements, each for generating
`a corresponding next series of coded output elements derived
`from the respective interleaved elements, each next series of
`coded output elements being in parallel with the first series of
`coded output elements; and
`
` (d) a multilevel modulator, directly coupled to the original
`digital data elements and to the coded output elements of each
`systematic convolutional encoder, for generating an output
`modulated signal representative of at least some of such
`original digital data elements and coded output elements.
`***
`60. A method for error-correction coding of a source of
`
`original digital data elements, comprising the steps of:
`
` (a) generating a first series of systematic convolutional
`encoded output elements derived from a source of original
`digital data elements;
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` (b) modifying the order of the original digital data elements to
`generate at least one set of interleaved elements;
`
`least one next series of systematic
` (c) generating at
`convolutional encoded output elements derived from at least
`one set of interleaved elements, each next series of systematic
`convolutional encoded output elements being in parallel with
`the first series of systematic convolutional encoded output
`elements; and
`
` (d) generating an output multilevel modulated signal directly
`from and representative of at least some of such original digital
`data elements and systematic convolutional encoded output
`elements.
`Ex. 1001, 26:3–26; 31:21–38.
`
`II. ANALYSIS
`
`A. Claim Construction
`The Board construes claims of an unexpired patent by applying the
`
`broadest reasonable interpretation in light of the Specification. See 37
`C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d
`1268, 1278 (Fed. Cir. 2015) (“We conclude that Congress implicitly
`approved the broadest reasonable interpretation standard in enacting the
`AIA.”). Claim terms also are given their ordinary and customary meaning
`as would be understood by one of ordinary skill in the art in the context of
`the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). Nevertheless, a “claim term will not receive its ordinary
`meaning if the patentee acted as his own lexicographer and clearly set forth a
`definition of the disputed claim term in either the specification or
`prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1366 (Fed. Cir. 2002).
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`In our Decision instituting trial, we determined that no terms of the
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`claims of the ’783 patent should be given any special meaning, and, thus,
`concluded that all terms should take on their broadest reasonable meaning as
`would be understood by one of ordinary skill in the art in light of the
`Specification. Inst. Dec. 9. We made explicit that meaning for the
`terms/phrases: (1) “systematic convolutional encoder,” (2) “coded output
`elements”; and (3) “directly coupled”/“signal directly from.” Id. at 9–13.
`Neither party contests our preliminary constructions for “systematic
`convolutional encoder” or “coded output elements,” and we do not discern a
`reason to revisit those constructions. For general reference, the
`constructions of those terms set forth in the Decision instituting trial are
`reproduced below:
`Claim Term
`
`
`
`Construction
`
`
`“an encoder that may output both
`encoded data and also original data
`(or its equivalent).” Inst. Dec. 11.
`
`
`“any data that is derived from data
`received and processed by a coder or
`encoder.” Id. at 12.
`
`
`
`
`“systematic convolutional encoder”
`
`
`
`“coded output elements”
`
`
`
`In connection with this Final Written Decision, we discern that there
`is disagreement between the parties as to the proper construction of the term
`“directly coupled”/“signal directly from.” In our preliminary assessment of
`the meaning of the term, we concluded that components that are “directly”
`coupled to one another, or which receive signals “directly” from one
`another, excludes the presence of an interleaver between those components,
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`but does not prohibit any and all intervening structures, such as a switch.
`Id. at 13. In reaching that conclusion, we took into account disclosure in the
`’783 patent including that components were understood directly connected
`to one another despite being separated by a structure recognizable as a
`switch. Id. at 12–13.
`
`Intellectual Ventures proposes a meaning for “directly
`coupled”/“signal directly from” of “coupled in a manner such that the order
`and content of the elements are unmodified.” PO Resp. 10. To that end,
`Intellectual Ventures urges the following:
`
`The well-established ordinary meaning of the term
`“coupled” allows indirect attachment of components.[footnote
`omitted] Adding the modifier “direct” to “coupling” means the
`phrase cannot be construed to allow functionally indirect
`attachments where
`the elements would be modified or
`reordered. To be a direct coupling, the intervening structure,
`which may
`include a switch, must pass
`the elements
`unmodified and in the order they were received. Otherwise, the
`coupling is indirect.
`Id. at 11–12.
`
`Ericsson disagrees with Intellectual Ventures’s construction as being
`too “narrow.” Pet. Reply 2. Instead, Ericsson contends that “the Board’s
`initial construction is correct.” Id.
`
`We observe that Intellectual Ventures points to little content of the
`record supporting its proposed construction of the relevant terms. In that
`regard, Intellectual Ventures’s proposed support for the meaning of “directly
`coupled”/“signal directly from,” as precluding reorganization of data
`elements, appears to arise mainly from statements made by the Examiner
`during prosecution of the underlying patent application that became the ’783
`patent. More specifically, Intellectual Ventures states the following:
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`During prosecution, the Examiner stated that the “order
`rearranging” functionality of Le Goff does not “diminish its
`coupling function.” (Ex. 1021, p. 3) Claims 23 and 60 were
`subsequently amended to include the terms “directly coupled”
`and “directly from,” respectively, to overcome the rejection
`(Ex. 1023, p. 2). This supports Patent Owner’s position that
`“order rearranging” is precluded from a direct coupling. Thus,
`the functionality of the intervening structure, not the complexity
`asserted by Petitioners, is the key issue.
`PO Resp. 15.
`
`Intellectual Ventures does not explain adequately why a generic
`reference by the Examiner to “order rearranging” as not “diminish[ing]” a
`“coupling function” serves to impart a meaning to “directly coupled” or
`“directly from” that excludes any type of reordering of data between
`components so coupled. Moreover, we observe that the unabbreviated
`statement made by the Examiner is: “The process of order rearranging
`performed by Le Goff’s interleaver is not considered to diminish its
`coupling function.” Ex. 1021, 3 (emphasis added). Thus, the Examiner’s
`statement was made with respect to a particular “interleaver” component,
`and was not offered in a general context in connection with all components
`that may be viewed as reordering data in some respect. Simply put, the
`Examiner’s statement does not provide a suitable underlying basis for the
`construction of “directly coupled”/“signal directly from” that is now offered
`by Intellectual Ventures. Neither does the statement support Intellectual
`Ventures’s view that it is a modification of data through any reordering that
`somehow establishes the dichotomy between coupling understood as direct
`versus indirect.
`
`Intellectual Ventures also generally points to paragraph 42 of the
`Declaration testimony of its declarant Dr. Leonard Cimini, urging that the
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`testimony provides support for the following statement: “Since multiplexing
`rearranges elements from a parallel format to a serial format, and puncturing
`actively deletes elements, neither of these functions can be part of a direct
`coupling.” PO Resp. 15. That noted testimony, however, does not provide
`elucidation as to why a skilled artisan would consider only whether data
`content is reordered in assessing whether one component is directly coupled,
`or receives a signal directly from, another component.
`
`It is clear from the record evidence before us that, in the context of the
`’783 patent, a connection between two components is not one that is
`considered properly as “direct” if there is an interleaver between those
`components. We understand that an “interleaver” is a structure that provides
`extensive reordering of data. For instance, record evidence characterizes a
`particular interleaver as a “pseudorandom block scrambler” that reads out
`data “in a specified permuted order.” Ex. 1009, 29. Indeed, the ’783 patent
`itself characterizes an interleaver as a “pseudo-random block scrambler” that
`operates to output data “in a specified (fixed) random order.” Ex. 1001,
`5:57–61. In that respect, it is further understood from the ’783 patent that
`there are extensive considerations that go into the design of interleavers and
`the effect that a given interleaver has on the configuration, order, and
`characteristics of data. See id. at 9:53–13:54. Thus, the operations of an
`interleaver appear to constitute complex data reordering schemes where the
`“pseudorandom” scrambling of data is, at least in some cases, the desired
`goal.
`As noted above, in the context of an inter partes review, the Board
`
`construes claim terms based on their broadest reasonable construction that is
`consistent with the underlying specification. Here, with that guidance in
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`mind, we do not discern that Intellectual Ventures’s position that the claim
`terms in question should be construed narrowly to prohibit any intervening
`structure that performs any type of operation that may be regarded as
`manipulating data or changing the order of data in some aspect, regardless of
`the nature or extent of the data reordering. To that end, while the reordering
`operations provided by an interleaver are not encompassed by “directly”
`connecting elements, we are not satisfied that Intellectual Ventures has
`provided a suitable evidentiary basis for its position that any intervening data
`reordering, of any kind, is the benchmark for evaluating whether structures
`are directly connected to one another. It also is clear from the Specification
`of the ’783 patent, and as we observed in our Decision instituting trial (Inst.
`Dec. 12–13), that a direct connection does not prohibit some intervening
`structures, such as the intervening presence of a switch.
`
`In considering the totality of the record before us, we do not discern
`that there is cause to deviate from the construction we initially adopted for
`“directly coupled”/“signal directly from” as a part of the Decision to institute
`trial. Accordingly, for purposes of this Final Written Decision, we maintain
`the understanding that components that are “directly” coupled to one
`another, or which receive signals “directly” from one another, excludes the
`presence of an interleaver between those components, but does not prohibit
`any and all intervening structures, such as a switch.
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`B. Obviousness over Robertson and Ungerboeck
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`
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`1. Overview of Robertson (Ex. 1012)
`Robertson is an article titled “A Comparison of Optimal and Sub-
`
`Optimal MAP Decoding Algorithms Operating in the Log Domain.”
`Ex. 1012, 1009. Robertson contemplates studying of “the behaviour of the
`(Max-)Log-MAP algorithm applied to the decoding of convolutional codes
`(and in particular recursive systematic convolutional (RSC) codes).” Id.
`Robertson’s Figure 1 is reproduced below:
`
`
`
`
`
`As shown in the Figure above, data sequence may be directed to
`
`recursive systematic convolutional encoders (unnumbered) whose output
`may be punctured by a “Puncturing” component before being modulated and
`then transmitted over a channel. Id. at 1009–10.
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`2. Overview of Ungerboeck (Ex. 1007)
`Ungerboeck is a series of two articles titled “Trellis-Coded
`
`Modulation with Redundant Signal Sets” including “Part I: Introduction”
`(Ex. 1007, 5), and “Part II: State of the Art” (id. at 12). The first
`“Introduction” portion describes its content as follows:
`Simple four-state trellis-coded modulation (TCM) schemes
`improve the robustness of digital transmission against additive
`noise by 3 dB without reducing data rate or requiring more
`bandwidth than conventional uncoded modulation schemes.
`With more complex schemes, coding gains up to 6 dB can be
`achieved. This article describes how TCM works
`Id. at 5.
`
`The second “State of the Art” portion sets forth the following:
`This article is intended to bring the reader up to the state of the
`art in trellis-coded modulation. The general principles that have
`proven useful in code design are explained. The important
`effects of carrier-phase offset and phase invariance are
`discussed. Finally, recent work in trellis-coded modulation
`with multi-dimensional signal sets is described
`Id. at 12.
`
`Ungerboeck characterizes “multilevel (amplitude and/or phase)
`modulation systems” as “conventional” (id. at 6), and describes the use of a
`particular “8-PSK” modulation system (id.).
`
`3. Level of Ordinary Skill in the Art
`Factors that may be considered in determining level of ordinary
`skill in the art include: (1) the educational level of the inventor;
`(2) type of problems encountered in the art; (3) prior art
`solutions to those problems; (4) rapidity with which innovations
`are made; (5) sophistication of the technology; and (6)
`educational level of active workers in the field.
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`Environmental Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693,
`696 (Fed. Cir. 1983). There is evidence in the record before us that reflects
`the knowledge level of a person with ordinary skill in the art. In particular,
`each of Ericsson’s declarants, Mr. Mark Lanning (Ex. 1003) and
`Dr. Zixiqang Xiong (Ex. 1032), as well as Intellectual Ventures’s declarant,
`Dr. Leonard Cimini (Ex. 2006), provides testimony in that respect.
`Mr. Lanning testifies the following:
`
`38. It is my opinion that a person of ordinary skill in the
`field of the ’783 Patent would have at least a Bachelors or
`Masters
`level college degree
`in Electrical Engineering,
`Computer Science, Computer Engineering or equivalent
`training and experience. This person would also have at least
`three to five years of academic or industrial experience in the·
`field of communication systems, such as wireless cellular
`communication systems and networks. Such a person would be
`familiar with turbo codes and the functionality provided by
`turbo encoders, decoders,
`interleavers, multiplexers and
`demultiplexers, and modulators.
`Ex. 1003 ¶ 38.
`
`Similarly, Dr. Xiong testifies the following:
`
`22. Based on the disclosure of the ’783 patent, one of
`ordinary skill in the art would have at least a Bachelors or
`Masters
`level college degree
`in Electrical Engineering,
`Computer Science, Computer Engineering or equivalent
`training and experience. This person would also have at least
`three to five years of academic or industrial experience in the
`field of communication systems, such as wireless cellular
`communication systems and networks. Such a person would be
`familiar with turbo codes and the functionality provided by
`turbo encoders, decoders,
`interleavers, multiplexers and
`demultiplexers, and modulators.
`Ex. 1032 ¶ 22.
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`Dr. Cimini testifies the following:
`
`24. Based on the disclosure of the ’783 patent, one of
`ordinary skill in the art would have a Master’s degree in
`Electrical Engineering, Computer Science, or an equivalent field
`as well as at least 3–5 years of academic or industry experience
`in communications systems, or comparable industry experience.
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`25. My definition of level of ordinary skill in the art is
`higher than Mr. Lanning’s definition in that Mr. Lanning only
`requires a Bachelor’s Degree or equivalent. (Lanning Decl.,
`¶ 38.) However, in my experience working with undergraduate
`and graduate students, someone with only a Bachelor’s Degree
`would not have the mathematical foundation to evaluate design
`choices for error correction algorithms.
` This opinion is
`supported by the fact that Divsalar, Robertson, Ungerboeck,
`Palicot, and Pollara all have Ph.D.’s (See Exs. 2001, 2009, 2010,
`2011, and 2012) and all of the references applied in this inter
`partes review proceeding are research papers. In my option, an
`individual with only a Bachelor’s Degree would generally not be
`able
`to parse
`the mathematics underlying Robertson or
`Ungerboeck, for example.
`Ex. 2006 ¶¶ 24, 25.
`
`Thus, the declarants are largely in agreement as to the level of
`ordinary skill in the art, but for a slight difference of opinion as to the extent
`of education. While Mr. Lanning and Dr. Xiong take the view that a person
`of ordinary skill “would have at least a Bachelors or Masters level college
`degree in Electrical Engineering, Computer Science, Computer Engineering
`or equivalent training and experience,” Dr. Cimini opines that only a
`Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion
`on the theory that one with only a Bachelor’s degree would lack an
`appropriate “mathematical foundation.”
`
`On the record before us, it is not apparent that the possession of a
`Master’s degree as compared with possession of a Bachelor’s degree
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`establishes a dividing line between a person who is of ordinary skill in the
`art, and a person who is not. Dr. Cimini does not explain persuasively why a
`person with a Bachelor’s degree in the noted areas, coupled for instance,
`with the noted “academic or industry experience” would lack the requisite
`“mathematical foundation.” To that end, we are cognizant of the level of
`ordinary skill to which all declarants have testified, but do not understand
`the record as establishing that a Master’s degree, to the exclusion of other
`equivalent experience, is a strict requirement of a skilled artisan in the
`pertinent field.
`
`4. Discussion – Robertson and Ungerboeck
`Ericsson contends that each of claims 23, 24, 60, and 61 are
`
`unpatentable as obvious over Robertson and Ungerboeck. Obviousness is a
`question of law based on underlying factual findings: (1) the scope and
`content of the prior art; (2) the differences between the claims and the prior
`art; (3) the level of ordinary skill in the art; and (4) objective indicia, or
`secondary considerations, of non-obviousness. See Graham v. John Deere
`Co. of Kansas City, 383 U.S. 1, 17–18 (1966). Here, however, neither party
`introduced evidence on secondary considerations of non-obviousness.
`Accordingly, we focus our attention on the first three Graham factors.
`Intellectual Ventures argues the claims in two groupings: (1) claims 23 and
`60; and (2) claims 24 and 61.
`
`a. Claims 23 and 60
`As noted above, claim 23 is directed to a “system for error-correction
`
`coding of a source of original digital data elements,” and claim 60
`constitutes a corresponding method. As set forth in its Petition, Ericsson
`
`17
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`IPR2014-00921
`Patent 6,023,783
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`
`contends that Robertson discloses all the features of claims 23 and 60
`(Pet. 49–54) with the exception of those features directed to “multilevel
`modulation” (id. at 53). In that regard, Ericsson contends that Robertson is
`directed to “binary modulation” rather than “multilevel modulation,” but
`points to Ungerboeck as disclosing multilevel modulation. Id. Referencing
`the declaration testimony of Mr. Mark Lanning (Ex. 1003), Ericsson
`contends the following:
`
`As noted by Mr. Lanning, it would have been obvious to
`one of ordinary skill in the art to combine Robertson and
`Ungerboeck to replace the binary modulation in Roberton’s
`coding
`system with multilevel modulation
`taught by
`Ungerboeck because it would yield the predictable result–that
`more data bits correspond to a modulated symbol, thereby
`enhancing bandwidth efficiency.
`Id. at 53–54.
`
`To that end, we understand that Ericsson proposes, and Mr. Lanning
`testifies (Ex. 1003 ¶ 230), that one of ordinary skill in the art would have
`had reason to substitute Ungerboeck’s multilevel 8-PSK modulator for
`Robertson’s binary modulator so as to enhance bandwidth efficiency.
`
`With regard to the claim requirement that the multilevel modulator is
`“directly coupled . . . to the coded output elements of each systematic
`convolutional encoder” (claim 23) and the modulated signal is generated
`“directly from” the systematic convolutional encoded output elements (claim
`60), Ericsson relies on disclosure in Robertson. In particular, Ericsson notes
`that although Robertson discloses a puncturing component associated with
`its encoders, the broadest reasonable interpretation does not exclude the
`presence of a puncturing component in forming a “directly” connected
`relationship. Pet. 53. Ericsson also reasons that, as attested to by
`
`18
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`IPR2014-00921
`Patent 6,023,783
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`Mr. Lanning, a person of ordinary skill in the art would have understood that
`“puncturing is optional and could be omitted.” Id. at 52–53 (citing Ex. 1003
`¶ 222). Ericsson reasons that the absence of a puncturing component also
`establishes that the coder and modulator are directly connected. Id.
`
`Intellectual Ventures contends that the substitution of a multilevel
`modulator for the binary modulator of Robertson would necessitate the
`inclusion of a multiplexer between Robertson’s turbo coder and the
`multilevel modulator. PO Resp. 20–25. As such, and based on its proposed
`interpretation of the “directly coupled”/“signal directly from” features of
`claims 23 and 60, Intellectual Ventures contends that the presence of a
`multiplexer precludes a conclusion that those claims would have been
`obvious over Robertson and Ungerboeck. Id.
`
`In response, Ericsson disputes that a multiplexer would be necessary
`in the manner offered by Intellectual Ventures. Pet. Reply 1–2.
`Alternatively, Ericsson maintains that even if such a multiplexer was
`present, the “directly coupled”/“signal directly from” requirements of the
`claims would, nevertheless, be satisfied. Id. at 2–3.
`
`Thus, at its core, there are two main bases of disagreement between
`the parties. First, whether a multiplexer would be required as a part of the
`Robertson and Ungerboeck combination. Second, even if a multiplexer is
`present between a coder component and a modulator component, whether
`such circumstance would preclude a determination that those components
`are directly coupled to one another.
`
`With respect to the first point of disagreement noted above,
`Intellectual Ventures relies on its declarant, Dr. Leonard Cimini, (PO Resp.
`23–25) who testifies that in Robertson, a multiplexer is “necessary” (Ex.
`
`19
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`IPR2014-00921
`Patent 6,023,783
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`2006 ¶ 50), and that a multiplexer would also be a part of the Robertson and
`Ungerboeck combination (id. at ¶ 51). On cross-examination, Ericsson’s
`own declarant, Mr. Lanning, when queried by Intellectual Ventures’s
`counsel, testified that a multiplexer would be present. Specifically, the
`following exchange appears in the record in connection with questions as to
`the Robertson and Ungerboeck combination:
`
`Q. So would there be circuitry, then, necessarily
`between the memory and the modulator to alternate between
`memory locations? . . .
`
`A. Again, we’re working on just a hypothetical
`question. It could be as simple as hardware circuitry and a
`memory function that just selects in a cyclic fashion each input
`to the memory. It would -- which I would look at or view as a
`logical multiplexing function.
`Ex. 2008, 123:5–16.
`
`Thus, Mr. Lanning also takes the view that a component performing a
`“multiplexing function” would be present upon combining the noted
`references. Although Ericsson disputes that a multiplexer would be required
`as a part of the Robertson and Ungerboeck combination, Ericsson simply
`offers statements of counsel without recourse to record evidence. Pet. Reply
`2–3. Argument of counsel, however, cannot take the place of evidence
`lacking in the record. See Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588,
`595 (Fed. Cir. 1997).
`
`On the record before, us we do not discern that there is a suitable
`evidentiary basis for concluding that the proposed combination of Robertson
`and Ungerboeck would provide for the omission of a multiplexer disposed
`between a turbo coder and a multilevel modulator. Accordingly, we find
`that such a multiplexer would be present.
`
`20
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`IPR2014-00921
`Patent 6,023,783
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`The inquiry now before us is whether the presence of a multiplexer, in
`
`the manner discussed above, provokes a determination that the turbo coder
`and multilevel modulator are not directly coupled to one another.
`Intellectual Ventures takes the view that the multiplexer reorders or modifies
`data content, and, thus, the presenc
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