Trials@uspto.gov
`571-272-7822
`
`
`Paper 41
`Entered: December 7, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01031
`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
`
`
`
`
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`
`Google Inc. (“Google”) filed a corrected Petition (Paper 6, “Pet.”)
`requesting inter partes review of claims 1–8 and 21–27 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 1–8 and 21–27 of the ’353 patent.
`Paper 10 (“DI”). After institution of trial, Intellectual Ventures II LLC
`(“Intellectual Ventures”) filed a Patent Owner’s Response (Paper 17, “PO
`Resp.”) and Google filed a Petitioner’s Reply (Paper 22, “Reply”). We have
`jurisdiction under 35 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 40 (“Tr.”). Also before the Board are the following matters:
`Patent Owner’s Objection to Evidence (Paper 25); and
`Patent Owner’s Motion to Exclude Evidence (Papers 30 and 34).
`After considering the evidence and arguments of counsel and for the
`reasons set forth below, we determine that Google has met its burden of
`showing, by a preponderance of the evidence, that claims 1–8 and 21–27 of
`the ’353 patent are unpatentable.
`
`Related Proceedings
`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 Google challenges
`claims 1–8 and 21–27 of the ’353 Patent. The second such IPR Proceeding
`is Ericsson Inc. et al v. Intellectual Ventures II LLC, IPR 2014-00919
`(PTAB) in which the Petitioner Ericsson challenges claims 9–20 and 29–34
`of the ’353 Patent.
`
`2
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`
`The ’353 patent is the parent of a continuation application, non-
`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, IPR 2014-00915 (PTAB).
`The ’353 patent and/or the ’079 patent are patents-in-suit in one or
`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 “Method, Communication System And
`Communication Unit For Synchronization For Multi-Rate Communication,”
`relates to digital communication systems such as wireless cellular
`communication systems. Ex. 1001, 1:13–18. The communication system
`disclosed in the ’353 patent is capable of operating at a plurality of
`bandwidths. Id., Abstract. The system transmits a signal comprised of a
`first signal portion and a further signal portion. Id. The first signal portion
`
`3
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`is transmitted over a first bandwidth. Id. The first signal portion contains an
`indication of an operating bandwidth selected from a plurality of bandwidths
`for use in transmitting and receiving the further signal portion. Id. Figure 1
`of the ’353 patent is shown below.
`
`
`As shown in Figure 1, a plurality of subscriber terminals (e.g., cell
`phones) 112, 114, 116 communicate wirelessly over radio links 118, 119,
`120 with a plurality of base transceiver stations 122, 124, 126, 128, 130,
`132, also known as “Node-Bs.” Ex. 1001, 3:34–38. The cell phones and
`Node-Bs transmit and receive multi-rate signals. Id. at 4:39–44.
`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
`
`4
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`the signal. Id., 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
`Google challenges claims 1–8 and 21–27. Claims 1 and 21 are
`independent claims. Claim 1 is a method claim and claim 21 is an apparatus
`claim. Claims 1 and 21 are illustrative of the subject matter of the
`challenged claims and are reproduced below:
`1. A method for operating bandwidth determination in a
`multi-bandwidth communication system, the method
`comprising:
`at a remote unit:
`receiving a signal having a first signal portion at a first,
`predetermined bandwidth, containing an indication of
`an operating bandwidth selected from a plurality of
`bandwidths used for a further signal portion;
`recovering the indication from the first signal portion at
`the first, predetermined bandwidth; and
`recovering information in the further signal portion at the
`operating bandwidth indicated by the indication.
`
`21. A communication unit for use in a multi-bandwidth
`communication system, the communication unit comprising:
`logic for receiving a signal having a first signal portion at a
`first, predetermined bandwidth, containing an indication
`of an operating bandwidth selected from a plurality of
`bandwidths used for a further signal portion;
`logic for recovering the indication from the first signal
`portion at the first, predetermined bandwidth; and
`logic for recovering information from the further signal
`portion at the operating bandwidth indicated by the
`indication.
`
`5
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`
`C. The Asserted Grounds of Unpatentability
`We instituted trial on Google’s challenge to claims 1–8 and 21–27 of
`the ’353 patent as obvious under 35 U.S.C. § 103 over various combinations
`of references listed below. DI 23.
`References
`McFarland (Ex. 1005) 1
`McFarland and Shahar (Ex. 1006) 2
`McFarland and HSDPA (Ex. 1003) 3
`Pierzga (Ex. 1002)4
`Pierzga and HSDPA
`Pierzga and Shahar
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 102
`§ 103
`§ 103
`
`Claims challenged
`1–4, 6, 21–24, and 26
`5, 8, and 25
`7 and 27
`1–6, 8, and 21–26
`7 and 27
`8
`
`II. MOTION TO EXCLUDE EVIDENCE
`Intellectual Ventures moves to exclude Google Exhibits 1003, 1004,
`1016, 1017, 1022, 1023, and 1033. Intellectual Ventures also moves to
`exclude certain declaration testimony of Google’s experts, Dr. Negus and
`Dr. Madisetti, namely:
`Exhibit 1012 (Dr. Negus): the entire declaration;
`Exhibit 1019 (Dr. Madisetti): the second sentence of paragraph 4;
`paragraph 5; the first, second, and third sentence of paragraph 6; and the
`first, second, third, fourth, and fifth sentence of paragraph 7; and
`Exhibit 1021 (Dr. Madisetti): ¶¶ 8–11, 12, 14, 15, 25, 26, and 29.
`
`1 U.S. Patent 7,397,859 B2 to McFarland, iss. July 8, 2008.
`2 U.S. Patent 6,987,754 B2 to Shahar et al., iss. Jan. 17, 2006.
`3 High Speed Downlink Packet Access, Overall UTRAN Description
`(Release 5) (2001).
`4 U.S. Patent Publication 2001/0055320 A1 by Pierzga et al., published
`Dec. 27, 2001 (“Pierzga”).
`
`6
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`
`A. Exhibit 1003 – 3GPP TR 25.855 (Release 5); and
`Exhibit 1019 –Declaration of Dr. Madisetti
`Exhibit 1003 is a technical specification developed by the 3rd
`Generation Partnership Project (3GPPTM). Intellectual Ventures moves to
`exclude the exhibit as hearsay and argues that no hearsay exception applies.
`Paper 30 (citing Rules 801–807 of the Federal Rules of Evidence).
`Google argues that Exhibit 1003 is not hearsay because it is not
`offered for the truth of the matter asserted. Paper 34, 1. Google states that
`Exhibit 1003 is offered simply as evidence of what it describes and to show
`the knowledge of a person of ordinary skill in the art at the time of the
`invention. Id. at 1–2.
`Google filed Exhibit 1003 with its Petition. After we instituted trial,
`Intellectual Ventures served an objection to Exhibit 1003, arguing that
`Google failed to lay a proper foundation to establish the authenticity of
`Exhibit 1003 under Federal Rule of Evidence 901. Paper 30, Appendix A.
`Google filed a declaration of its expert, Dr. Madisetti, Exhibit 1019,
`with its Reply.5 Google states that the Exhibit 1019 declaration was served
`in response to Intellectual Ventures’s objections to the authenticity of
`Exhibit 1003. Paper 34, 5. Google presents testimony from Dr. Madisetti to
`lay a foundation for the admissibility of Exhibit 1003. Ex. 1019.
`Dr. Madisetti testifies that Exhibit 1003 is available to the public over the
`internet through the 3GPP website (http://www.3gpp.org). Ex. 1019 ¶¶ 6–7.
`He testifies that he personally downloaded it from the website and that the
`
`5 Exhibit 1019 is dated as being executed on February 18, 2015, but the
`exhibit itself is not accompanied by a certificate of service or other indicia
`indicating when it was actually served on Intellectual Ventures. In the
`absence of any objection or evidence to the contrary from Intellectual
`Ventures, we will treat it as timely served.
`
`7
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`exhibit has not subsequently been altered. Id. He further testifies, based on
`his personal experience dealing with the RAN working group that
`documents are posted to the website a few days after revisions are complete.
`Id. ¶ 7.
`Intellectual Ventures attacks Dr. Madisetti’s testimony in
`Exhibit 1019 that lays the foundation for the admission of Ex. 1003.
`Paper 30, 1–3. Essentially, Intellectual Ventures contends that
`Dr. Madisetti’s familiarity with the origin, content, and publication date of
`Exhibit 1003 is insufficient to lay a foundation for its admission into
`evidence. Id. We have reviewed and considered Intellectual Ventures’s
`arguments and find that they do not warrant exclusion of Exhibit 1003 and
`Exhibit 1019 from evidence in this proceeding.
`Rule 901 of the Federal Rules of Evidence provides that the
`requirement of admissibility is satisfied by evidence sufficient to support a
`finding that the material in question is what its proponent claims. The
`burden of proof for authentication is “slight.” Lexington Ins. Co. v. W. Penn.
`Hosp, 423 F.3d 318, 329 (3d Cir. 2005). Rule 901(b) lists nine examples of
`authentication techniques, the list of examples is not intended to be
`exclusive. United States v. Simpson, 152 F.3d 1241, 1249–50 (10th Cir.
`1998). Rule 901(a) merely prescribes that a proponent produce sufficient
`evidence of authenticity to support a prima facie case that the item is
`genuine. Rickets v. City of Hartford, 74 F.3d 1397, 1409–11 (2d Cir. 1996).
`Courts maintain that a bona fide dispute as to the authenticity of evidence
`generally should be decided by the trier of fact. See id. Conflicting
`evidence of authenticity goes to weight, not admissibility, as long as some
`
`8
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`reasonable person could believe that the item is what it is claimed to be. Id.
`at 1411.
`In light of Dr. Madisetti’s testimony based on his personal experience
`and observation of the author/publisher and the reliability of the dates of
`publication that appear on the face of its publications, we find that Google
`has a laid a sufficient foundation for admission of Exhibit 1003 over
`Intellectual Ventures’s objection. Exhibit 1003 is not hearsay as it is not
`offered for its truth, but merely for what it states. We DENY Intellectual
`Ventures’s motion to exclude Exhibit 1003 and Exhibit 1019.
`
`B. Exhibits 1004 and 1012 – HomeRF Specification
`Intellectual Ventures argues that Exhibit 1004 should be excluded as
`irrelevant because our Decision to Institute did not institute a trial on
`Google’s proposed ground of unpatentability over the HomeRF
`Specification technology. Paper 30, 4. Intellectual Ventures also moves to
`exclude the accompanying and supporting declaration of Dr. Negus (Exhibit
`1012) for essentially the same reason. Id.
`Intellectual Ventures’s argument that this evidence is irrelevant under
`Rule 402 of the Federal Rules of Civil Procedure is without merit. We are
`admonished by our supervising court to avoid a narrow and blinkered focus
`on only applied prior art references. See Randall Mfg. v. Rea, 733 F.3d
`1355, 1362–63 (Fed. Cir. 2013) (“the Board failed to account for critical
`background information that could easily explain why an ordinarily skilled
`artisan would have been motivated to combine or modify the cited
`references to arrive at the claimed inventions”). To the contrary, we are
`affirmatively encouraged to consider all evidence of record that is probative
`of the background knowledge of a person of ordinary skill in the art. Id.
`
`9
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`
`We DENY Intellectual Ventures’s motion to exclude Exhibits 1004
`and 1012.
`
`C. Exhibit 1016 – Dictionary Definition of Bandwidth
`Intellectual Ventures moves to exclude Exhibit 1016, a dictionary
`definition of “bandwidth” taken from an on-line dictionary.6 Paper 30, 4.
`Intellectual Ventures argues that the dictionary definition was published so
`long after the priority date that it has no relevance to claim interpretation in
`this case. Intellectual Ventures argues that the definition is irrelevant under
`Federal Rule of Evidence 402 and constitutes hearsay under Rule 801.
`Intellectual Ventures’s motion is without merit. It is well settled that
`judges are free to consult dictionaries at any time in order to better
`understand the underlying technology. See Vitronics Corp. v. Conceptronic,
`Inc., 90 F.3d 1576, 1585 n.6 (Fed. Cir. 1996). Judges may also consult
`dictionary definitions when construing claim terms so long as the dictionary
`definition does not contradict any definition found in or ascertained by a
`reading of the patent documents. Id.
`With respect to Intellectual Ventures’s temporal concern, we will take
`such matter into account in deciding how much weight to give
`Exhibit 1016.7 We DENY the motion to exclude Exhibit 1016.
`
`D. Exhibit 1017 – District Court Brief
`Intellectual Ventures moves to exclude a claim construction brief filed
`on its behalf in related District Court litigation. Paper 30, 4–5. Intellectual
`
`6 Merriam-Webster, Bandwidth, http://www.merriam-
`webster.com/dictionary/bandwidth (last accessed June 15, 2014).
`7 Intellectual Ventures did not introduce any other dictionary definition
`closer in time to the date of the invention to show that the meaning of
`“bandwidth” has changed over time.
`
`10
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`Ventures argues that Google did not cite to this brief in its Petition. Id.
`Intellectual Ventures also argues that the Board uses a different claim
`construction standard than that used in District Court litigation. Id.
`All of the challenged claims of the ’353 patent contain limitations
`directed to a “signal” with a “first signal portion” and a “further signal
`portion.” Ex. 1001, claims 9, 14, 29. The claims also contain limitations
`directed to an “operating bandwidth.” Id. The parties engage in a vigorous
`dispute over the proper construction of “signal” and “indication of an
`operating bandwidth.” Intellectual Ventures takes the position in the instant
`IPR proceeding that the OFDM systems disclosed in Pierzga (Ex. 1002) and
`McFarland (Ex. 1005), do not satisfy the signal and/or bandwidth limitations
`of the challenged claims. See e.g., PO Resp. 24–28, 39–48.
`We are cognizant that the Board applies a different claim construction
`standard than that typically applied by district courts. Nevertheless, the
`courts have long decried that patent owners may not, like a “nose of wax,”
`twist the meaning of patent claims one way to avoid a finding of
`unpatentability and in another way so as to find infringement. See
`Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d
`1111, 1117 (Fed. Cir. 2004) quoting White v. Dunbar, 119 U.S. 47, 51–52
`(1886). Here, Exhibit 1017 is relevant because it sheds light on whether
`Intellectual Ventures is being consistent on the claim construction positions
`that it is taking in two different forums.
`We DENY Intellectual Ventures’ motion to exclude Exhibit 1017.
`
`E. Exhibit 1022 – Satellite UMTS Air Interfaces
`Intellectual Ventures moves to exclude Exhibit 1022 ostensibly
`because “it has no relevant bearing on any issue properly raised in this
`
`11
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`proceeding . . .” Paper 30, 7. Intellectual Ventures also argues that it is
`outside of the proper scope of rebuttal evidence that may be submitted with a
`Reply. Id. at 8.
`Google argues that it is proper rebuttal evidence. Paper 34, 15. In its
`Patent Owner’s Response, Intellectual Ventures argues that the scope of the
`claims of the ’353 patent should be limited to terrestrial base stations,
`thereby excluding communication satellites disclosed in Pierzga. PO
`Resp. 20. Intellectual Ventures further argues that modifying an OFDM
`satellite broadcast system as taught by Pierzga (Ex. 1002) with a CDMA
`cellular mobile telephone communication system to arrive at the claimed
`UMTS system would require more than routine experimentation. Id. at 32.
`Intellectual Ventures argues that a person of ordinary skill in the art would
`not have combined Pierzga with another reference to arrive at the claimed
`UMTS system. Id.
`We think that Exhibit 1022 is probative of whether prior art UMTS
`technology encompassed satellite communications. We DENY Intellectual
`Ventures motion to exclude Exhibit 1022.
`
`F. Exhibit 1023 – R&D Activities on Satellite UMTS Systems
`As with Exhibit 1022, Intellectual Ventures moves to exclude
`Exhibit 1023 ostensibly because “it has no relevant bearing on any issue
`properly raised in this proceeding . . .” Paper 30, 8. Intellectual Ventures
`also argues that it is outside of the proper scope of rebuttal evidence that
`may be submitted with a Reply. Id. at 9.
`Google argues that it is proper rebuttal evidence. Paper 34, 15.
`Exhibit 1023 appears to be probative of whether prior art UMTS technology
`encompassed satellite communications. Ex. 1023, 1. For the same reasons
`
`12
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`recounted above with respect to Exhibit 1022, we DENY Intellectual
`Ventures’s motion to exclude Exhibit 1023.
`
`G. Exhibit 1033 – Overview of Modulation and
`Coding for Wireless Communications
`Intellectual Ventures moves to exclude Exhibit 1033, arguing that it is
`being used to raise new theories of unpatentability. Paper 30, 10.
`Intellectual Ventures also argues that it is irrelevant. Id.
`Google argues that it rebuts Intellectual Ventures’s argument
`regarding subcarrier spacing in OFDM systems as it relates to the indication
`of operating bandwidth issues in this case. Paper 34, 15. We agree that it is
`proper rebuttal evidence and DENY Intellectual Ventures motion to exclude
`Exhibit 1033.
`
`H. Exhibit 1021 – Dr. Madisetti’s Reply Declaration
`Intellectual Ventures moves to exclude paragraphs 8–11, 12, 14, 15,
`25, 26, and 29 of Dr. Madisetti’s Exhibit 1021 declaration for various
`reasons. Paper 30, 5.
`
`1. Paragraphs 12, 14, and 29
`Intellectual Ventures states that paragraphs 12, 14, and 29 of
`Dr. Madisetti’s testimony are not cited to or relied on the Google’s Reply.
`Paper 30, 5. Intellectual Ventures implies that this alone justifies its
`exclusion from evidence in this proceeding. Id. (citing 37 C.F.R.
`§ 42.104(b)(5)).
`Google responds that the paragraphs provide context and support for
`Dr. Madisetti’s testimony elsewhere in the declaration. Paper 34, 12.
`Google also states that the testimony in these paragraphs relates to the
`disputed claim terms “signal” and “remote unit.” Id.
`
`13
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`
`Contrary to Intellectual Ventures’s position, Rule 104(b)(5) is merely
`permissive (“may”) and does not mandate the exclusion of evidence that is
`not directly cited in a Petition or Reply. We agree with Google that these
`paragraphs provide context and support for Dr. Madisetti’s testimony and,
`accordingly, DENY the motion to exclude paragraphs 12, 14, and 29.
`
`2. Paragraphs 8–11, 25, and 26
`Intellectual Ventures argues that these paragraphs contain testimony
`that raises new issues that should have been presented as part of Google’s
`case-in-chief. Paper 30, 5.
`Intellectual Ventures argues that paragraphs 8–11 address the
`construction of the term “indication of operating bandwidth” and that
`testimony on such subject was not advanced with Google’s Petition.
`Paper 30, 6. Intellectual Ventures implies that this alone justifies exclusion
`of evidence in a Reply. We are not persuaded. Our Office Patent Trial
`Practice Guide does not require a Petitioner to anticipate every claim term
`that a Patent Owner may elect to place in controversy for purposes of claim
`construction in an IPR and then propose a construction for each such term.
`See 77 Fed. Reg. 48764 (Aug. 14, 2012). In keeping with our rules, Google
`proposed constructions for certain terms and then stated that “the remaining
`claim terms should be accorded their ordinary meaning.” Pet. 18. Once
`Intellectual Ventures advanced a contention as to the ordinary meaning of
`“indication of operating bandwidth,” it was within the proper scope of a
`Reply to address Intellectual Ventures’s position with evidence and
`argument.
`We DENY Intellectual Ventures motion to exclude paragraphs 8–11,
`25, and 26 of Exhibit 1021.
`
`14
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`
`III. CLAIM INTERPRETATION
`In an inter partes review, claims are given their broadest reasonable
`interpretation consistent with the specification. See 37 C.F.R. § 42.100(b);
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015).
`Within this framework, terms generally are given their ordinary and
`customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007).
`
`1. “bandwidth” (claims 1, 21)
`Google’s proposed construction:
`(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; or
`(2) the capacity for data transfer of an electronic communications
`system…especially: the maximum data transfer rate of such a system.
`Pet. 13.
`Intellectual Ventures’ proposed construction:
`a width of a frequency band.
`PO Resp. 7.
`Google supports its proposed construction with testimony from
`Dr. Madisetti. Pet. 14. Dr. Madisetti, in turn, relies on definitions from the
`MICROSOFT COMPUTER DICTIONARY and the MERRIAM WEBSTER
`DICTIONARY. Ex. 1011 ¶ 59 (citing Ex. 1015; Ex. 1016).
`Intellectual Ventures argues that a “width of a frequency band” is the
`correct construction. PO Resp. 8. Intellectual Ventures criticizes Google for
`proposing alternative meanings that depend on the context. Id. Intellectual
`Ventures stresses that the only applicable context in the ’353 patent relates
`to a width of frequency band. Id.
`
`15
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`
`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,
`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.
`The Specification uses two terms “chip rate” and “bandwidth,” each
`about 11 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.
`’353 Patent, 5:63–6:5 (emphases added). The Specification further explains
`that the inventive concepts of the invention can be applied outside of the
`context of wireless communication 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 12/969,775) that claims priority to non-
`provisional application number 12/033,824 which eventually issued as
`the ’353 patent that is the subject of this IPR proceeding. The ’353 patent, in
`turn, claims priority to non-provisional application number 10/293,635 (the
`
`16
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`’635 application), which led to issuance of US Patent 7,356,098 (the ’098
`patent). Ex. 1001, 1; Ex. 3002. 8 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.”9 Ex. 3001,
`468–473. Originally filed claim 1 is illustrative:
`1. A method for synchronisation10 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.
`Ex. 3001, 468 (emphasis added). All of the original pending claims in the
`’635 application were rejected over Boer (US 5,706,428, iss. Jan. 6, 1998).
`Ex. 3001, 361; Ex. 1009. 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. Ex. 1009, 1:33–47. Boer discloses that it
`
`8 We take notice of US Patent 7,356,098, which is of record in IPR2014-
`00919 as Exhibit 2001. We have filed a copy in the record in the instant IPR
`proceeding as Exhibit 3002.
`9 We take notice of the prosecution history of ’098 patent, a copy of which is
`of record in IPR2014-00919 as Exhibit 1010. We have filed a copy in the
`record of the instant IPR proceeding as Exhibit 3001.
`10 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 term may be spelled elsewhere in the record.
`
`17
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`achieves a plurality of data rates by using a plurality of different modulation
`techniques. Id. at 2:15–53.
`[T]he 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.
`Ex. 1009, 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
`used the same symbol rate. Ex. 3001, 354 (citing Boer (Ex. 1009), 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. Id. In order to distinguish over Boer, Intellectual Ventures
`amended its claims to include limitations with the term “bandwidth
`determined by . . . chip rate.” Ex. 3001, 267. All of the independent claims
`that eventually issued in the ’098 patent contain the term “bandwidth
`determined by . . . chip rate.” Pet. 10–11; Ex. 3001, 273, 354; Ex. 3002,
`claims 1, 9, 13, 20, 27. Similarly, all 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. 3001, 44.
`
`18
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`
`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>.
`Ex. 1016.
`Google essentially urges us to adopt both definitions, but in the
`alternative depending on the context of its use. Pet. 13–14 (“Skilled persons
`would . . . understand that either of these definitions applies”). Google
`further argues that the ’353 patent uses “bandwidth” as synonymous with
`data rate. Id. Google’s position that the ’353 patent uses bandwidth as
`synonymous with data rate is contradicted by the prosecution history
`evidence discussed above where the claims were amended essentially to
`substitute “bandwidth” for “chip rate” to distinguish over Boer’s disclosure
`of variable data rates. Thus, the intrinsic record supports a meaning of
`“bandwidth” that more closely conforms to definition number 1 above. We
`agree with Intellectual Ventures that, in the context of the ’353 patent,
`“bandwidth” does not mean “data rate” or “data transfer rate.”
`In view of the foregoing, we retain the same construction for
`“bandwidth” that we adopted for purposes of the Decision to Institute. Thus,
`for purposes of this Final Written Decision, we construe “bandwidth” to
`mean “a frequency range.” For purposes of clarification, we will provide the
`
`19
`
`

`
`IPR2014-01031
`Patent 7,848,353 B2
`
`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 (claims 1, 21)
`Google’s proposed construction: Google contends that the
`plain and ordinary meaning of this term should apply and that
`no construction is necessary.
`Reply 1–2.
`Intellectual Ventures’ proposed construction: identification of a
`particular operating bandwidth.
`PO Resp. 11.
`Google did not discuss construction of this term until its Reply and
`only then indicates that it should be construed in accordance with its plain
`and ordinary meaning. Google