`
`
`
`
`
`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 AND
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`
`____________
`
`CASE IPR: Unassigned
`
`____________
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 5,602,831
`
`Claims 1-17
`
`UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.80, 42.100-.123
`
`i
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`TABLE OF CONTENTS
`
`
`Page
`
`II.
`
`
`EXHIBIT LIST ........................................................................................................ iv
`I.
`RULE 42.8 MANDATORY NOTICES ......................................................... 1
`A.
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)): .................................. 1
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)): ............................................ 1
`C. Designation of Lead and Back-Up Counsel (37 C.F.R.
`§ 42.8(b)(3)): ....................................................................................... 1
`D. Grounds For Standing: ......................................................................... 2
`E.
`Service Information (37 C.F.R. § 42.8(b)(4)): ..................................... 2
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR ................................................................................ 2
`III. OVERVIEW OF THE ʼ831 PATENT ........................................................... 3
`A.
`Summary of the Technology and Claimed Subject Matter .................. 3
`B.
`Prosecution History of the ’831 Patent ................................................ 4
`IV. SUMMARY OF THE ASSERTED GROUNDS FOR INVALIDITY
`UNDER 35 U.S.C. §§ 102 and 103 ................................................................ 6
`V. A PERSON OF ORDINARY SKILL IN THE ART ..................................... 9
`VI. CLAIM CONSTRUCTION ........................................................................... 9
`VII.
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(B)) ............... 11
`A. Ground 1: The ʼ829 Patent Anticipates Claims 1, 2, 6, 9-15, and
`17 Under 35 U.S.C. § 102 .................................................................. 11
`B. Ground 2: Claims 1-17 Are Obvious Over The ʼ829 Patent And
`The ʼ549 Patent Under 35 U.S.C. § 103 ............................................ 25
`C. Ground 3: The ʼ319 Patent Renders Claims 1-17 Obvious
`Under 35 U.S.C. § 103(a) ................................................................... 34
`D. Ground 4: Claims 1-17 Are Obvious Over The ʼ319 Patent And
`The ʼ549 Patent Under 35 U.S.C. § 103 ............................................ 47
`Ground 5: Claims 1-17 Are Obvious Over The ʼ319 Patent, the
`ʼ549 Patent, Bergman, And The ʼ667 Patent Under 35 U.S.C. §
`103 ...................................................................................................... 54
`VIII. CONCLUSION ............................................................................................. 58
`
`E.
`
`
`
`ii
`
`
`
`

`

`
`
`EXHIBIT LIST
`
`Exhibit Number
`
`Exhibit Name
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`United States Patent No. 5,602,831 (the “ʼ831 Patent”)
`
`U.S. Patent Application No. 08/414,746 (the “’746
`Application”)
`
`Declaration of Professor Wayne Stark, Ph.D. (“Stark Dec.”)
`
`The ʼ831 Patent– File History
`
`United States Patent No. 4,720,829 (the “ʼ829 Patent”)
`
`United States Patent No. 4,901,319 (the “ʼ319 Patent”)
`
`Bergman, M.L., and Farrell, P.G., “A Comparison of Block
`Code Performance for Radio Mobile Radio Channels:
`Trade-Offs Between Block Length, Interleaving Depth and
`Type,” University Research in Mobile Radio, IEE
`Colloquium on, November 2, 1990, pp. 1/1-8/6, IET (Nov.
`2, 1990) (“Bergman”)
`Castro, J.P., "Channel modeling and data transmission in
`mobile satellite systems," Personal, Indoor and Mobile
`Radio Communications, 1992. Proceedings, PIMRC '92.,
`Third IEEE International Symposium on Personal, Indoor
`and Mobile Radio Communications, vol., no., pp. 387, 392,
`19-21 Oct 1992 (“Castro”)
`
`Ericssonʼs Motion to Intervene filed April 29, 2014, in the
`following litigations: Intellectual Ventures I LLC et al. v.
`AT & T Mobility LLC et al., Civil Action No. 1:13-cv-
`01668-LPS (D. Del.); Intellectual Ventures I LLC et al. v.
`Leap Wireless International Inc. et al., Civil Action No.
`1:13-cv-01669-LPS (D. Del.); Intellectual Ventures I LLC
`et al. v. Nextel Operations Inc. et al., Civil Action No.
`1:13-cv-01670-LPS (D. Del.); Intellectual Ventures I LLC
`et al. v. T-Mobile USA Inc. et al., Civil Action No. 1:13-cv-
`01671-LPS (D. Del.); and Intellectual Ventures I LLC et al.
`v. United States Cellular Corp., Civil Action No. 1:13-cv-
`
`iii
`
`

`

`
`
`
`
`
`
`Exhibit Number
`
`Exhibit Name
`
`01672-LPS (D. Del.)
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`Complaint filed October 7, 2013, in Intellectual Ventures I
`LLC et al. v. Leap Wireless International Inc. et al., Civil
`Action No. 1:13-cv-01669-LPS (D. Del.)
`
`EP Search Report for EP (counterpart) Application No.
`96909621.3 (“EP Search Report”)
`
`United States Patent No. 4,945,549 (the “ʼ549 Patent”)
`
`United States Patent No. 5,239,667 (the “’667 Patent”)
`
`Steele, R., “Mobile Radio Communications,” pp. 348-355,
`Pantech Press Ltd., London (1992) (“Steele”)
`
`“Digital cellular communications system (Phase 2+);
`Channel coding (GSM 05.03 version 3.6.1),” European
`Telecommunications Standards Institute, October 1994
`(“GSM 05.03”)
`
`“EIA/TIA Interim Standard, Cellular System Dual-Mode
`Mobile Station – Base Station Compatibility Standard,” IS-
`54-B, Telecommunication Industry Association, April 1992
`(“IS-54-B”)
`TIA-EIA IS-95A Interim Standard: Mobile Station-Base
`Station Compatibility Standard for Dual-Mode Wideband
`Spread Spectrum Cellular System (“IS-95A”)
`
`iv
`
`
`
`

`

`
`
`I.
`
`RULE 42.8 MANDATORY NOTICES
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)):
`The real parties-in-interest are Ericsson Inc. and Telefonaktiebolaget LM
`
`Ericsson (together “Petitioner”).
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2)):
`The ʼ831 Patent is being asserted in co-pending district court litigations
`
`captioned as:
`
`Title
`
`Docket Number
`
`Intellectual Ventures I LLC et al. v.
`AT & T Mobility LLC et al.
`Intellectual Ventures I LLC et al. v.
`Leap Wireless International Inc. et al.
`Intellectual Ventures I LLC et al. v.
`Nextel Operations Inc. et al.
`Intellectual Ventures I LLC et al. v. T-
`Mobile USA Inc. et al.
`Intellectual Ventures I LLC et al. v.
`United States Cellular Corp.
`
`
`1:13-cv-01668-LPS (D. Del.)
`
`1:13-cv-01669-LPS (D. Del.)
`
`1:13-cv-01670-LPS (D. Del.)
`
`1:13-cv-01671-LPS (D. Del.)
`
`1:13-cv-01672-LPS (D. Del.)
`
`On April 29, 2014, the Petitioner filed a motion to intervene in the above-
`
`noted litigations. See Ex. 1009.
`
`C. Designation of Lead and Back-Up Counsel
`§ 42.8(b)(3)):
`
`(37 C.F.R.
`
`Lead counsel is Steven G. Spears (Reg. No. 43,926), and back-up counsel is
`
`G. Matthew McCloskey (Reg. No. 47,025).
`
`
`
`

`

`
`
`D. Grounds For Standing:
`Petitioner hereby certifies that the patent for which review is sought is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting inter partes review challenging the Patent claims on the grounds
`
`identified in the petition.
`
`Service Information (37 C.F.R. § 42.8(b)(4)):
`
`E.
`Papers concerning this matter should be served on the following:
`
`Mail and hand-delivery address:
`
`
`Steven G. Spears
`MCDERMOTT WILL & EMERY LLP
`1000 Louisiana St., 39th Floor
`Houston, Texas 77002
`
`
`sspears@mwe.com with a cc to
`mmccloskey@mwe.com
`
`(713) 653.1784
`(713) 739.7592
`
`E-mail:
`
`
`Telephone:
`Facsimile:
`
`
`II.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR
`
`Petitioner requests inter partes review and cancellation of Claims 1-17 of
`
`U.S. Patent No. 5,602,831 (Ex. 1001) based on the grounds set forth under 35
`
`U.S.C. §§ 102 and 103 for the reasons stated herein. This Petition establishes a
`
`reasonable likelihood that the Petitioner will prevail in establishing that the
`
`
`
`2
`
`
`
`

`

`
`
`challenged claims are unpatentable. The following chart summarizes the individual
`
`grounds, including the statutory bases and the prior art relied upon:
`
`ʼ831 Patent Claims
`
`Basis for Rejection
`
`Ground 1: Claims 1, 2, 6,
`9-15, and 17
`Ground 2: Claims 1-17
`
`Ground 3: Claims 1-17
`Ground 4: Claims 1-17
`
`Ground 5: Claims 1-17
`
`Anticipation under § 102 by the ʼ829 Patent
`
`Obviousness under § 103 by the ʼ829 Patent and
`the ʼ549 Patent
`Obviousness under § 103 by the ʼ319 Patent
`Obviousness under § 103 by the ʼ319 Patent and
`the ʼ549 Patent
`Obviousness under § 103 by the ʼ319 Patent, the
`ʼ549 Patent, Bergman, and the ʼ667 Patent
`
`III. OVERVIEW OF THE ʼ831 PATENT
`
`Summary of the Technology and Claimed Subject Matter
`
`A.
`The ’831 Patent relates to transmitting data “in different block sizes
`
`according to the speed of motion of [a] receiver.” Ex. 1001 at Abstract. In digital
`
`wireless communications, data is transmitted through the air medium to a mobile
`
`receiver in units called data blocks, which include a number of packets. See Ex.
`
`1003 at ¶ 10; Ex. 1001 at 1:9-16. The transmission of these data blocks can
`
`sometimes experience interference resulting in errors or dropouts of data. Ex.
`
`1003 at ¶ 11. The ’831 Patent observes that the frequency of errors increases as a
`
`receiver moves faster (such as when a cell phone is in a moving car). Ex. 1003 at
`
`¶¶ 13-14. The ʼ831 Patent discloses that techniques were known, well before the
`
`
`
`3
`
`
`
`

`

`
`
`ʼ831 Patent was filed, for minimizing these errors by various error correction
`
`coding (“ECC”) schemes as well as by interleaving multiple packets together. Ex.
`
`1001 at 1:35-47, 2:4-7, 6:66-7:2; see also Ex. 1003 at ¶¶ 18-36.
`
`The claims of the ʼ831 Patent relate to improving error corrections in digital
`
`communications by adjusting the number of data packets in a packet block
`
`according to changes in signal drop-out characteristics, such as those resulting
`
`from a receiver traveling at a high velocity. The ʼ831 Patent has three independent
`
`claims: 1, 9 and 15. Claim 1 recites a method that includes, in part, “identifying
`
`changes in signal drop-out characteristics each associated with the receiver” and
`
`“varying the number of packets encoded in the packet block according to the
`
`changes in the signal drop-out characteristics.” Claim 9 is to a system essentially
`
`mirroring the method of Claim 1). Claim 15 recites a method that includes, in part,
`
`“identifying a given speed that the receiver is moving,” “determining signal drop-
`
`out characteristics according to the given speed of the receiver,” and “varying the
`
`number of packets encoded in each packet block according to the changes in the
`
`given receiver speed.”
`
`Prosecution History of the ’831 Patent
`
`B.
`The ʼ831 Patent issued to Gerald B. Gaskill on February 11, 2007, and was
`
`assigned on its face to Seiko Communications Systems, Inc. (Ex. 1001). The ʼ831
`
`Patent issued from U.S. Patent Application No. 08/414,746 (the “’746
`
`
`
`4
`
`
`
`

`

`
`
`Application”) (Ex. 1002), filed on March 31, 1995. The earliest priority date for
`
`the ʼ831 Patent’s claims is therefore March 31, 1995.
`
`No prior-art based rejections were made during prosecution of the ʼ831
`
`Patent as the Patent Office solely relied on 35 U.S.C. § 112 rejections. See ʼ831
`
`Patent File History (Ex. 1002). The first Office Action indicated allowability of
`
`the subject matter of all of the claims as initially filed. See id. Moreover, except
`
`for the ’667 Patent (which was not specifically addressed by the Examiner during
`
`prosecution), none of the prior art set forth in this Request was ever before the
`
`USPTO during prosecution of the ʼ831 Patent. One prior art reference advanced
`
`herein, however, was raised against Applicant during prosecution of the ʼ831
`
`Patent’s European counterpart, eventually resulting in Applicant abandoning its
`
`European counterpart application. Specifically, the ʼ829 Patent was cited as a “Y”
`
`reference in a December 16, 1999 European Search Report issued by the European
`
`Patent Office for the European counterpart patent application to the ’746
`
`Application. EP Search Report for counterpart EP Application No. 96909621.3
`
`(Ex. 1011). Applicant did not explain to the European Patent Office how the
`
`claims of that counterpart application were patentable over the ʼ829 Patent.
`
`Instead, the Applicant abandoned its European Patent application. As explained
`
`below, the ʼ829 Patent (and other prior art) invalidates the ʼ831 Patent claims
`
`under 35 U.S.C. § 102(b) and/or 35 U.S.C. § 103.
`
`
`
`5
`
`
`
`

`

`
`
`IV. SUMMARY OF THE ASSERTED GROUNDS FOR INVALIDITY
`UNDER 35 U.S.C. §§ 102 AND 103
`
`Improving error corrections in digital communications by adjusting the
`
`number of packets in a packet block according to changes in signal drop-out
`
`characteristics (including those resulting from receiver speed) was not new as of
`
`the 1995 filing date of the ʼ831 Patent. As the European Patent Office recognized,
`
`the ʼ829 Patent disclosed methods that anticipated the ʼ831 Patent’s claims and/or
`
`rendered them obvious. For example, the ʼ829 Patent discloses in part:
`
`[I]t is an object of the present invention to provide an error
`control encoding system whose throughput efficiency is not
`significantly changed in a mobile communication system
`even if the moving body containing the system changes its
`moving speed from zero to one hundred and several tens of
`kilometers per hour or changes its receiving level from a
`lower value to several tens of dBs. The error control encoding
`system according to the present invention is adapted to detect
`any error involved in received data as a frame error rate in a
`data block or a bit error rate in a data block when the receiving
`side receives the data transmitted from the transmitting side,
`and selecting a frame length in response to the extent of the
`error rate for encoding and decoding the transmission data.
`
`Ex. 1005 at 1:59-2:2 (emphasis added). Because frame length directly impacts the
`
`size of the required interleaver (Stark Dec. at ¶ 68), at least this portion of the ʼ829
`
`Patent, together with other disclosures in the ʼ829 Patent, anticipates the noted
`
`
`
`6
`
`
`
`

`

`
`
`claims of the ʼ831 Patent under 35 U.S.C. § 102(b). Additionally, taken with other
`
`cited prior art references, the ʼ829 Patent renders the ʼ831 Patent’s claims obvious.
`
`Additionally, the ʼ319 Patent renders as obvious all of the claims of the ʼ831
`
`Patent. The ʼ319 Patent teaches that it was well-known to improve drop-out (i.e.,
`
`signal fade) error correction by decreasing the number of packets in a packet block
`
`in response to environmental factors giving rise to increased drop-out rates. ʼ319
`
`Patent (Ex. 1006) at 1:6-9, 3:38-45; Ex. 1003 at ¶¶ 108, 110-11, 114, 116. While
`
`the ʼ319 Patent does not expressly mention receiver speed as a cause of increased
`
`error or drop-out rates, the causal effect was already well-known in the art prior to
`
`the ʼ831 Patent filing. See, e.g., Ex. 1012 at 17:29-33; Ex. 1003 at ¶ 85.
`
`Accordingly, by adjusting the number of packets in a packet block to account for
`
`increased signal drop-out rates, the system and method disclosed by the ʼ319
`
`Patent would be understood by a POSA to anticipate or render obvious the claimed
`
`methods of the ʼ831 Patent. Ex. 1003 at ¶¶ 110-12.
`
`At a minimum, the ʼ829 Patent and/or the ʼ319 Patent combined with the
`
`ʼ549 Patent, Bergman, and/or the ’667 Patent render the ʼ831 Patent’s claims
`
`obvious under 35 U.S.C. § 103. Ex. 1003 at ¶¶ 106, 130, 137-38. Where
`
`obviousness is indicated, the teachings of the prior art references are obvious to
`
`combine and/or modify to arrive at the limitations of the ʼ831 Patent’s claims
`
`based on the reference(s) together with the skill set and knowledge of a POSA.
`
`
`
`7
`
`
`
`

`

`
`
`Petitioner, therefore, respectfully submits that there is a reasonable
`
`likelihood that it will prevail on the asserted grounds of invalidity. For each
`
`Ground, a detailed comparison of the claimed subject matter and the prior art
`
`asserted by Petitioner is set forth below.
`
`V. A PERSON OF ORDINARY SKILL IN THE ART
`
`As confirmed by Prof. Stark, a POSA is a person having at least a B.S.
`
`degree in Electrical Engineering, Computer Engineering, or equivalent training
`
`as well as at least three years of additional academic or industry experience in
`
`the field of digital communication systems, or a person having a Master’s degree
`
`with graduate coursework in communications theory including graduate classes
`
`addressing the physical layer of the well-known OSI model, coding and
`
`interleaving, and the reverse processes of deinterlaving and decoding as used for
`
`wireless communications. Ex. 1003 at ¶ 50.
`
`VI. CLAIM CONSTRUCTION
`
`For inter partes review, the challenged claims must be given their broadest
`
`reasonable construction in light of the specification of the ʼ831 Patent. 37 C.F.R. §
`
`42.100(b). The following proposed broadest reasonable interpretations (“BRIʼs”)
`
`should be adopted for the purpose of this Request and related inter partes review
`
`of the ʼ831 Patent. Under the BRI standard, the following claim terms refer to a
`
`
`
`8
`
`
`
`

`

`
`
`signal, or the measurement of some factor, which is directly correlated with the
`
`speed of the receiver.1
`
`
`
`
`
`
`
`
`
`“signal indicating the speed of motion” (Claim 6);
`
`“according to the variable speed of the receiver” (Claims 9-14);
`
`“speed indication signal” (Claim 12); and
`
`“identifying a given speed.” (Claims 13-17).
`
`These constructions are supported by, e.g., col. 2, lines 42-48 of the ʼ831
`
`Patent’s specification, wherein the Applicant states:
`
`The transmitter determines the speed of the receiver, and
`accordingly the packet block size using various techniques.
`For example, an expected receiver speed is determined
`according to either the subject matter of the transmitted
`message, the type of receiver, or via a two-way communication
`
`
`1 As the Federal Circuit has recognized, the “broadest reasonable
`
`construction” standard is fundamentally different from the manner in which the
`
`scope of a claim is determined in litigation. In re Swanson, 540 F.3d 1368, 1377‐
`
`78 (Fed. Cir. 2008). By identifying the BRI for certain terms in the challenged
`
`claims, therefore, the Petitioner is not suggesting or indicating that such an
`
`interpretation would be proper for purposes of district court litigation or any other
`
`purpose.
`
`
`
`9
`
`
`
`

`

`
`
`system where the receiver transmits receiver speed directly
`back to the transmitter.
`
`(emphasis added). The specification, therefore, makes it clear that determinations
`
`of speed are not just limited to direct measurements of the magnitude of the
`
`velocity2 of the receiver. Rather, when determining receiver speed, the transmitter
`
`can use “various techniques.” The ʼ831 Patent’s specification provides, as non-
`
`limiting examples of such factors, (i) the subject matter of the transmitted message,
`
`or (ii) the type of the receiver. Petitioner further proposes that the remaining terms
`
`of the challenged claims require no further construction for the purposes of
`
`determining their BRI and/or this petition.
`
`VII. IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(B))
`
`Inter partes review of Claims 1-17 of the ʼ831 Patents requested based on
`
`the grounds for unpatentability set forth below.
`
`A. Ground 1: The ʼ829 Patent Anticipates Claims 1, 2, 6, 9-15, and 17
`Under 35 U.S.C. § 102.
`
`The ʼ829 Patent issued on January 19, 1988, and is therefore prior art to the
`
`ʼ831 Patent under 35 U.S.C. § 102(b). The ʼ829 Patent discloses what the ʼ831
`
`
`2 Dr. Stark notes that, strictly speaking, “speed” is a scalar quantity and
`
`“velocity” is a vector quantity, composed of a scalar component, i.e., speed, and a
`
`direction component. Ex. 1003 at ¶ 41 n.8.
`
`
`
`10
`
`
`
`

`

`
`
`Patent seeks to claim—adjusting the number of packets in a packet block during
`
`wireless communications to improve error correction based upon factors such as
`
`receiver velocity. See, e.g., Ex. 1005 at 1:56-68, 2:3-9, 7:16-25. The ʼ829 Patent
`
`explains that its “invention relates to an error control encoding system in effecting
`
`data communications via a fading channel dominated by a burst error in the data
`
`communication of a moving body such as an automobile.” Ex. 1005 at 1:5-10.
`
`The ʼ829 Patent recognizes the same problem as the ʼ831 Patent, namely, that
`
`“[i]n a mobile communication system, a severely degraded transmission path, such
`
`as a fading channel, is dominated by a burst error.” Ex. 1005 at 1:19-23; Ex. 1003
`
`at ¶ 65. The ʼ829 Patent explains that the errors can vary “as the moving body
`
`containing the system changes its moving speed from zero to one hundred and
`
`several tens or kilometers per hour.” Ex. 1005 at 1:59-61.
`
`The ʼ829 Patent also proposes the same solution as the ʼ831 Patent: “an
`
`error correcting method . . . in a mobile data communication [that] monitors an
`
`error rate of data received on the receiving side and adaptively changes a frame
`
`length on the transmitting side based on a result of the monitoring.” Id. at 4:4-9;
`
`Ex. 1003 at ¶ 65. Furthermore, the ʼ829 Patent provides a detailed description of
`
`embodiments of systems that perform this method, including the following:
`
`A first embodiment of an error control encoding system
`according to the present invention will be described with
`reference to FIG. 1 and FIG. 2. According to this embodiment, a
`
`
`
`11
`
`
`
`

`

`
`
`received error frame is detected on the receiving side and an
`ACK signal or an error frame number and an NAK signal are
`transmitted back to the transmitting side for each data block. A
`frame error rate for each data block is evaluated in the
`transmitting side and the frame length is altered in conformance
`with the evaluation for error frame retransmission and data
`transmission thereafter. (’819 Patent, 3:29-39) (emphasis added)
`
`The ʼ829 Patent recognizes that the result of this method is a system whose
`
`frame length (i.e., the number of packets in a packet block) varies in proportion to
`
`the speed at which the receiver is moving:
`
`Consequently, when the moving body moves faster with the
`received power being reduced such that frequent burst errors
`are produced with a guard length being reduced, a reduced
`frame length enables a relatively high efficiency transmission
`to be achieved. When the moving body stops and performs data
`transmission, no burst error is produced to permit high efficiency
`transmission to be assured, provided that the frame length is
`increased.
`Therefore, when the transmitting side receives more NAK signals
`than those under prescribed conditions, if the transmitting side
`retransmits the data concerned while leveling down a frame length
`previously prepared one step at a time, it can transmit the data with
`the optimum frame length in response to the conditions of a fading
`channel. (Id. at 7:16-31) (emphasis added).
`
`
`
`12
`
`
`
`

`

`
`
`A POSA reading the ’829 Patent would have already been familiar with the
`
`relationship between receiver velocity and error rate—i.e., that the error rate
`
`increases with the velocity of the receiver. Ex. 1003 at ¶¶ 14, 68. Accordingly, a
`
`POSA reading the ’829 Patent would understand that the disclosed frame length
`
`adjustments are made based on, inter alia, the speed of the receiver. Id. Thus, the
`
`ʼ829 Patent described, more than seven years prior to the filing of the application
`
`for the ʼ831 Patent, what the ʼ831 Patent sought to claim. Id. at ¶¶ 63, 81.
`
`Moreover, a POSA would understand that “frame length” discloses “the
`
`number of packets encoded in [a] packet block,” particularly because the ʼ829
`
`Patent itself equates “data block” to “frame,” e.g., at 2:27. Additionally,
`
`interleaving was required by many if not all major second-generation (2G) wireless
`
`cellular standards extant at the time of the filing date of the application for the ʼ831
`
`Patent. Stark Dec. ¶ 68. Examples of such standards include the GSM 05.03 (at
`
`Sections 3.1.3.b-c and 4.1.4.b), IS-54B (at Section 2.1.3.3.4), and IS-95A (at
`
`Section 6.1.3.1.5 “Block Interleaving”) standards. Accordingly, even though the
`
`ʼ829 Patent mentions that while interleaving is known and effective (1:19-29), and
`
`that delays may be encountered as a result of interleaving (1:30-52), a POSA
`
`would understand that the ʼ829 Patent necessarily teaches varying interleaver size
`
`because of the express teaching of varying frame size. Ex. 1003 at ¶ 68.
`
`
`
`13
`
`
`
`

`

`
`
`The following claim chart shows how the ʼ829 Patent anticipates each
`
`element of Claims 1, 2, 6, 9-15, and 17 of the ʼ831 Patent. When considering the
`
`ʼ829 Patent, it is also appropriate to consider what a POSA would understand from
`
`the ʼ829 Patent in light of the knowledge available to one of ordinary skill in the
`
`art. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding that prior art must
`
`be “considered together with the knowledge of one of ordinary skill in the pertinent
`
`art.”). Where inherency is indicated, the ʼ829 Patent necessarily teaches the
`
`indicated element, as a POSA would understand. In re Robertson, 169 F.3d 743,
`
`745 (Fed. Cir. 1999).
`
`Regarding independent claim 1, the ʼ829 Patent discloses that “[a]n error
`
`correcting method according
`
`to
`
`the present
`
`invention
`
`in a mobile data
`
`communication monitors an error rate of data received on the receiving side and
`
`adaptively changes a frame length on the transmitting side based on a result
`
`of the monitoring” ʼ829 Patent at 2:3-9 (emphasis added). As Professor Stark
`
`explains in his declaration, a POSA understands that encoded frames of data
`
`include interleaved packets, which the ’831 Patent refers to as a “packet block.”
`
`Ex. 1003 at ¶ 68. The error rates identified by the system and method of the ʼ829
`
`Patent are a direct measure of the “drop-outs” described by the ’831 Patent:
`
`therefore, the ʼ829 Patent teaches “identifying changes in signal drop-out
`
`characteristics.” Ex. 1003 at ¶ 68. The ʼ829 Patent discloses “selecting a frame
`
`
`
`14
`
`
`
`

`

`
`
`length in response to the extent of the error rate for encoding and decoding the
`
`transmission data” ʼ829 Patent at 1:68-2:2; see also Fig. 3. The ʼ829 Patent
`
`discloses “monitor[ing] an error rate of data received on the receiving side and
`
`adaptively chang[ing] a frame length on the transmitting side based on a result of
`
`the monitoring.” ʼ829 Patent at 2:4-9. Selecting from multiple frame lengths, and
`
`thus varying a frame length, discloses varying the number of packets encoded in a
`
`packet block, as a POSA would understand. Ex. 1003 at ¶¶ 68, 70. As Claim 9 of
`
`the ʼ831 Patent simply is a system claim that mirrors Claim 1, it is invalid for the
`
`same reasons. Relative to Claims 1 and 9, Claim 15 recites “identifying a given
`
`speed that the receiver is moving” and “determining signal drop-out characteristics
`
`according to the given speed of the receiver.” A POSA would understand that
`
`because of the physical relationship between the “drop out characteristics” (which
`
`the ʼ829 Patent’s system and method directly measures) and speed of the receiver
`
`(along the direct path between the transmitter and receiver), e.g., as indicated by
`
`Figures 3-5 of ʼ831 Patent, the ʼ829 Patent necessarily discloses “identifying a
`
`given speed that the receiver is moving” and “determining signal drop-out
`
`characteristics according to the given speed of the receiver.” Id.
`
`Regarding dependent Claims 2, 6, 10-14, and 17, the ʼ829 Patent discloses
`
`estimating the burst length (duration), which is a drop-out characteristic. Id. at 71-
`
`73 73, and 75-76. The ʼ829 Patent further discloses transmitting an error rate from
`
`
`
`15
`
`
`
`

`

`
`
`the receiver to the transmitter and adaptive the frame length accordingly. Id. at 71.
`
`A POSA would understand that an interleaver would contain memory for storing
`
`the encoded bits. Id. at 74. The ʼ829 Patent discloses that different frame lengths
`
`(i.e., packet block sizes) are stored in a frame length memory (element 16 in Figure
`
`8A). Id. at 78.
`
`ʼ831 Patent
`1[p]. A method for
`transmitting a message
`packet to a receiver,
`comprising:
`
`1[a]. identifying changes
`in signal drop-out
`characteristics each
`associated with the
`receiver;
`
`ʼ829 Patent
`The ʼ829 Patent discloses that “[a]n error correcting
`method according to the present invention in a mobile
`data communication monitors an error rate of data
`received on the receiving side and adaptively changes
`a frame length on the transmitting side based on a
`result of the monitoring” ʼ829 Patent at 2:3-9
`(emphasis added). Frames of data include packets, as
`a POSA understands. Ex. 1003 at ¶ 68.
`The ʼ829 Patent discloses “detect[ing] any error
`involved in received data as a frame error rate in a
`data block or a bit error rate in a data block when the
`receiving side receives the data transmitted from the
`transmitting side.” ʼ829 Patent at 1:65-68.
`
`As used in the ’831 Patent, “identifying changes in
`signal drop-out characteristics” includes identifying
`changes in the error rates that are determined by the
`disclosed invention of the ʼ829 Patent, as a POSA
`would appreciate. Ex. 1003 at ¶ 68.
`
`Further, “[t]he error frame number selecting means 8
`supplies the erroneous frame number and the NAK
`signal to the encoder 9 for a clock decoded by the
`decoder 6. The frame number is yielded by a counter
`(not shown) serving to count the frame number
`involved in one block. Moreover, the error frame
`number selecting means supplies an ACK signal to the
`encoder 9 for the correct frames. … The error frame
`
`
`
`16
`
`
`
`

`

`
`
`1[b]. encoding packets
`into packet blocks;
`
`number and the NAK signal or ACK signal are sent to
`a frame length selecting part of the frame length
`selecting device for each frame via the receiver 12 and
`the decoder 13 in conformity with an arbitrarily set
`time-out needed to permit the ACK/NAK signal to be
`properly transmitted.” ʼ829 Patent at 4:8-25.
`
`“An error produced in the case is burst-natured and
`produced due to fading, etc. Consequently, when the
`moving body moves faster with the received power
`being reduced such that frequent burst errors are
`produced with a guard length being reduced, a
`reduced frame length enables a relatively high
`efficiency transmission to be achieved. When the
`moving body stops and performs data
`transmission, no burst error is produced to permit
`high efficiency transmission to be assured,
`provided that the frame length is increased.
`
`Therefore, when the transmitting side receives more
`NAK signals than those under prescribed conditions,
`if the transmitting side retransmits the data concerned
`while leveling down a frame length previously
`prepared one step at a time, it can transmit the
`data with the optimum frame length in response to
`the conditions of a fading channel. Moreover, since
`the frame length is determined for each block, the
`present system can follow up abrupt changes of the
`conditions of the fading channel.” ’829 Patent at
`7:14-34 (emphasis added).
`The ʼ829 Patent discloses: “[t]he encoder 2 encodes
`the data with an error detecting code … frames it with
`a frame length L1, numbers each frame, and blocks it
`with a prescribed frame number (FIG. 2, box 22).”
`ʼ829 Patent at 3:58-61. “Packet block,” as used in
`the ’831 Patent, is the same as a “frame,” as used in
`the ’829 Patent. Ex. 1003 at ¶ 68 (stating that a frame
`is made up of a number of packets) and ¶ 69.
`
`
`
`17
`
`
`
`

`

`
`
`1[c]. transmitting each
`packet block to the
`receiver; and
`
`1[d]. varying the number
`of packets encoded in the
`packet block according to
`the changes in the signal
`drop-out characteristics.
`
`2. A method according to
`Claim 1 wherein
`identifying the
`signal drop-out
`characteristics comprise
`determining a duration
`and or time period at
`which burst errors occur
`in the signal at the
`receiver.
`
`
`The ʼ829 Patent discloses “framing erroneous data
`with use of the selected frame length for
`retransmission” ʼ829 Patent at 2:21-22. Further, “[t]he
`encoded data is modulated through the transmitte