throbber
Paper 13
`
`
` Entered: September 21, 2016
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC.,
`Petitioner,
`
`ARUBA NETWORKS, INC.,
`HEWLETT PACKARD ENTERPRISE COMPANY, and HP, INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`___________
`
`Case IPR2016-00766 (Patent 5,659,891)
`Case IPR2016-00768 (Patent 5,659,891)1
`____________
`
`Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Decision Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`1 The issues are the same in each of the proceedings listed above. We,
`therefore, issue one Decision to be filed in each proceeding.
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`I. INTRODUCTION
`
`A. Background
`Petitioner, ARRIS Group, Inc., filed a Petition to institute an inter
`partes review of U.S. Patent No. 5,659,891 (“the ’891 patent”). Paper 12
`(“Pet.”). Petitioners, Aruba Networks, Inc., Hewlett Packard Enterprise
`Company, and HP, Inc., filed a nearly identical Petition to institute an inter
`partes review of the ’891 patent. ARRIS Group, Inc., Aruba Networks, Inc.,
`Hewlett Packard Enterprise Company, and HP, Inc. (collectively,
`“Petitioners”) challenge the patentability of claims 1–5 of the ’891 patent.
`Pet. 1. In response, Mobile Telecommunications Technologies, LLC
`(“Patent Owner”), timely filed a substantially identical Preliminary
`Response in both proceedings. Paper 13 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
`of the analysis and evidence in the Petitions and the Preliminary Responses,
`we determine that Petitioners establish a reasonable likelihood of prevailing
`on the claims challenged in the Petitions. Accordingly, we institute an inter
`partes review of claims 1–5 of the ’891 patent.
`
`B. Additional Proceedings
`Both parties indicate that the ’891 patent is the subject of numerous
`district court proceedings. Pet. 1–2, Paper 8, 2–4.
`In addition, both parties also indicate that the ’891 patent was the
`subject of other inter partes review proceedings. Pet. 2–3, Paper 8, 4. The
`following inter partes review proceedings were all terminated pursuant to
`
`2 Unless otherwise indicated, citations are to IPR2015-00766.
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`settlement agreements between the respective parties: Apple Inc. v. Mobile
`Telecommunications Technologies, LLC, Case IPR2014-01035 (PTAB June
`27, 2014); T-Mobile USA Inc. v. Mobile Telecommunications Technologies,
`LLC, Case IPR2015-00018 (PTAB filed Oct. 3, 2014), and Samsung
`Electronics Co., Ltd. v. Mobile Telecommunications Technologies, LLC,
`Case IPR2015-01726 (PTAB filed Aug. 13, 2015) (“the Samsung IPR”).
`Institution was denied in Samsung Electronics Co., Ltd. v. Mobile
`Telecommunications Technologies, LLC, Case IPR2015-01727 (PTAB filed
`Aug. 13, 2015).
`
`C. The ’891 Patent
`The ’891 patent (Ex. 1001), titled “Multicarrier Techniques in
`Bandlimited Channels,” generally relates to a method for multicarrier
`modulation (“MCM”) using geographically co-located transmitters to
`achieve a higher frequency transmission capacity within FCC emission mask
`limits. The method provides for a plurality of overlapping subchannels
`within a single mask-defined bandlimited channel to provide higher data
`transmission capacity for a mobile paging system. Ex. 1001, 2:15–59. The
`technique involves transmitting a plurality of paging carriers, in
`corresponding overlapping subchannels, from the same location and within
`the mask-defined bandlimited channel, without bandlimiting each of the
`individual subchannels. Id. In this way, with the center frequencies of the
`plurality of modulated carriers within the single bandlimited channel, an
`optimum transmission capacity is provided and the plurality of carriers may
`emanate from the same transmission source, i.e., an antenna. Id.
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`An annotated version of Figure 3B of the ’891 patent, reproduced
`below, depicts two adjacent carriers asymmetrically located within a single,
`mask-defined, bandlimited channel.
`
`
`
`
`As depicted by Figure 3B of the ’891 patent, above, two carriers 32a and
`32b are shown operating over two subchannels (no reference number) within
`a bandlimiting mask (annotated in yellow) defining the channel. The
`subchannels are asymmetrically aligned within the mask resulting in partial
`subchannel overlap. Id. at 4:24–30. The center frequencies of the carriers
`32a and 32b are shown by the vertical dashed lines, and, concomitant with
`the subchannels, carriers 32a and 32b also overlap. According to the ’891
`patent, geographic co-location of the transmitters reduces interference
`problems between adjacent subcarriers, thus allowing the spacing between
`subchannels to be reduced. Id. at 4:12–20. The ’891 patent explains that the
`practical implications of such an asymmetrical arrangement are a greater
`range of operating parameters, essentially because more subchannels can be
`fit within the bandlimited mask without undue interference. Id. at 4:36–46.
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`D. Illustrative Claim
`Claims 1, 3, and 5 are independent. Each of dependent claims 2 and 4
`depend directly from claims 1 and 3 respectively. Claim 1 illustrates the
`claimed subject matter and is reproduced below:
`1. A method of operating a plurality of paging carriers in
`a single mask-defined, bandlimited channel comprising the
`step of transmitting said carriers from the same location with
`said carriers having center frequencies within said channel
`such that the frequency difference between the center frequency
`of the outer most of said carriers and the band edge of the mask
`defining said channel is more than half the frequency difference
`between the center frequencies of each adjacent carrier.
`
`
`
`E. The Alleged Grounds of Unpatentability
`Petitioners contend that the challenged claims are unpatentable on the
`following specific grounds.
`References
`Petrovic3
`Petrovic, Raith,4 and
`Alakija5
`
`Petitioners support its challenge with a Declaration of Dr. Apostolos
`K. Kakaes, Ph.D. (Ex. 1003, “Kakaes Decl.”).
`
`Basis
`§ 102
`§ 103
`
`Claims Challenged
`1–5
`5
`
`
`3 Ex. 1013, Rade Petrovic, Walt Roehr & Dennis Cameron, Permutation
`Modulation for Advanced Radio Paging, IEEE PROC. SOUTHEASTCON, Apr.
`1993.
`4 Ex. 1014, WO 89/08355 (Sept. 8, 1989).
`5 Ex. 1015, C. Alakija & S.P. Stapleton, A Mobile Base Station Phased
`Array Antenna, IEEE INT’L CONF. ON SELECTED TOPICS WIRELESS COMM.,
`June 1992, at 118.
`
`5
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`Patent Owner supports its Preliminary Response with a Declaration of
`Dr. Jay Kesan, Ph.D. (Ex. 2001, “Kesan Decl.”).
`
`
`II. CLAIM CONSTRUCTION
`A. Legal Standard
`The ’891 patent is expired, and “the Board’s review of the claims of
`an expired patent is similar to that of a district court’s review.” In re
`Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms
`generally are given their ordinary and customary meaning, as understood by
`a person of ordinary skill in the art, at the time of the invention, taking into
`consideration the language of the claims, the specification, and the
`prosecution history of record because the expired claims are not subject to
`amendment. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc).
`
`1. Single mask-defined, bandlimited channel
`Independent claims 1, 3, and 5 recite a “single mask-defined,
`bandlimited channel.” Petitioners urge that we adopt the same construction
`set forth in other IPR decisions construing this term and as the District Court
`construed the same term in the T-Mobile lawsuit. Pet. 5–6. According to
`Petitioners, the term means: “a channel confined to a frequency range.”6 Id.
`The ’891 patent indicates that a mask-defined bandlimited channel is
`applied where “[t]he FCC requires signals to be confined within emission
`limit masks in order to prevent interference caused by signals straying or
`spilling into adjacent channels.” Ex. 1001, 1:57–59. In the context of the
`
`6 In the Apple lawsuit, the parties stipulated that a “single mask-defined,
`bandlimited channel” means, “a channel confined to a frequency range.”
`Ex. 1006, 76.
`
`6
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`’891 patent, a “bandlimited channel” is also where “carriers operating at
`different frequencies are fit within a single bandwidth allocation in a manner
`consistent with FCC mask requirements.” Id. at 5:15–19. The Specification
`thus describes this term essentially as a single range of frequencies in the
`frequency band where a spectral power mask limits the frequency range.
`A reasonable reading of the claim language on its face is that a
`“bandlimited channel” is a single limited frequency range, and that a “mask”
`is the constraint applied to define that limited frequency range. Petitioners’
`claim construction states that the channel is “confined,” but that does not
`sufficiently, in our view, account for the term “mask-defined,” as it is recited
`expressly in the claims. This is consistent with the Specification further
`explaining that “carriers operating at different frequencies are fit within a
`single bandwidth allocation in a manner consistent with FCC mask
`requirements.” Ex. 1001, 5:11–19. We, thus, are not persuaded to adopt
`Petitioners’ proposed construction.
`Patent Owner proposes that we interpret the term to be a “bandlimited
`channel is a single limited frequency range, and that the mask is the
`constraint applied to define that limited frequency range” because we
`allegedly adopted this construction in the Samsung IPR. Prelim. Resp. 13–
`14. According to Patent Owner, its proposed construction is consistent with
`the construction it proposed in the Samsung IPR — a “channel confined to a
`frequency range and power spectral density mask.” Id. at 14.
`Contrary to Patent Owner’s argument, we did not construe this term or
`adopt either of the parties proposed constructions in the Samsung IPR
`because “on the record before us we [were] not apprised as to any reason
`why this phrase needs to be construed apart from the plain language of the
`
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`claim.” Samsung IPR, Paper 9, 7–8. We are similarly not persuaded to
`adopt Patent Owner’s proposed construction now.
`Although both parties have proposed claim constructions for this
`phrase, like in the Samsung IPR and on the record before us, we are not
`apprised as to any reason why this phrase needs to be construed apart from
`the plain language of the claim. Accordingly, we interpret this phrase
`according to its plain and ordinary meaning as understood by one of
`ordinary skill in the art in light of the specification.
`2. Band edge of the mask
`Independent claims 1, 3, and 5 recite the limitation “the band edge of
`the mask.” Petitioners contend that “the band edge” should be construed as
`“a band edge of the single mask-defined, bandlimited channel.” Pet. 8.
`Patent Owner proposes that “the band edge” means “the innermost
`frequencies at which the mask requires attenuation of the signal.” Prelim.
`Resp. 14.
`According to Patent Owner and its declarant, Dr. Kesan, the term “the
`band edge” refers to “a frequency band or range.” Prelim. Resp. 15. Dr.
`Kesan testifies that “[a] POSA would, therefore, understand that the term
`‘band edge of a mask’ means an edge of a mask that limits the frequency
`band.” Ex. 2001, Kesan Decl. ¶ 49. Patent Owner asserts that masks may
`have multiple band edges. Prelim. Resp. 15–16. For example, Patent Owner
`refers to the mask depicted in Figure 4 of the ’891 patent as having “vertical
`mask edges at -10kHz and 10 kHz” (Prelim. Resp. 21) and also refers to the
`same mask as having “the diagonal band edges.” (Id. at 25).
`Patent Owner, however, asserts that the “band edge” of the challenged
`claims should be limited to a specific band edge — “the edge of the mask
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`that is closest in frequency to the outer-most carrier.” Prelim. Resp. 15.
`Patent Owner argues that the challenged claims require an asymmetric
`condition (see Prelim. Resp. 12–13) and that because the purpose of the
`band edge with the asymmetric condition is to prevent the outer most
`carriers from exceeding the mask limits when they are modulated, the
`claimed “band edge” should be limited to the innermost frequencies at which
`the mask requires attenuation of the signal. Id. at 15–25. Thus, for example,
`the claimed “band edge of the mask,” as required by the challenged claims,
`should be limited to “the inner most points of the diagonal edges” shown in
`Figure 4 of the ’891 patent.” Id. at 19, 27.
`We are not persuaded at this point in the proceeding to read such a
`limitation into the claims. On its face, in each of claims 1, 3, and 5, the
`limitation reads, in context, “the band edge of the mask defining said
`channel” (emphasis added), clearly referring to the “single mask-defined,
`bandlimited channel.” Claims 1, 3, and 5 simply recite “the band edge,” not
`the “innermost” band edge. Ex. 1001, 6:9, 21, 40–41.
`Further, our review of the Specification reveals no evidence of the
`term “innermost,” or any persuasive description or definition of “band edge”
`that portrays the mask having, for instance, innermost and outermost edges.
`The Specification of the ’891 patent explains that an emission mask
`attenuates the signal at the “band edge”:
`The FCC requires signals to be confined within emission limit
`masks in order to prevent interference caused by signals
`straying or spilling into adjacent channels. FCC masks
`typically require the power spectral density of a signal to be
`attenuated at least 70 dB at the band edge.
`Ex. 1001, 1:57–61 (emphasis added). The Specification depicts an example
`of the described 70dB attenuation at the band edge 10 kHz from the center
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`frequency, in Figure 4, shown below:
`
`
`Figure 4 is a graph of an FCC emissions mask requiring the power spectral
`density to be attenuated to at least 70dB within 10 kHz from center
`frequency. Id. at 3:16–18. From the Specification and the drawings, it is a
`reasonable reading of the written description to understand “the band edge”
`as including the vertical lines at 10 kHz either side of the center frequency.
`The Specification states that “the frequency difference between the
`center frequency of each carrier and the nearest band edge of the mask is
`greater than half the frequency difference between the center frequencies of
`the two carriers.” Ex. 1001, 4:30–34. The Specification, however, does not
`describe or define the term “nearest band edge” with any specificity. We are
`not persuaded from the context of the description that one of ordinary skill in
`the art would have understood that the “nearest band edge” are required to
`be the innermost frequencies along the diagonal lines as shown, for example,
`in Figure 4.
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`Indeed, from a plain reading of the Specification and observing Figure
`3B, it is at least as likely from this description that the “nearest band edge”
`can refer to, for example, the vertical line depicting the band edge of the
`mask on the left side of Figure 3B, reproduced below, and its relationship to
`the center frequency of the left-most carrier 32a, as compared with the
`vertical line depicting the band edge of the mask, farther away, on the right
`side of Figure 3B.
`
`
`
`Figure 3B of the ’891 patent, above, depicts two carriers 32a and 32b
`operating over two subchannels (no reference number) within a bandlimited
`mask (also no reference number) defining the channel.
`
`Patent Owner argues that its asserted construction is consistent with
`the District Court’s construction in the Leap lawsuit. Prelim. Resp. 14. We
`have reviewed the District Court’s Claim Construction Order (Ex. 1007) in
`the Leap lawsuit. At this stage of the proceeding, however, we recognize
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`that we have not been presented with the same evidence and arguments
`presented to the District Court.
`
`At this point in the proceeding, we are not persuaded by the testimony
`of Dr. Kesan that the claim term “band edge” should be limited, not only to
`an edge of a mask that limits the frequency band, but further limited to a
`specific band edge – the edge of the mask that is closest in frequency to the
`outer-most carrier. As Dr. Kesan points out, “[a] POSA would . . .
`understand that the term ‘band edge of a mask’ means an edge of a mask that
`limits the frequency band.” Kesan Decl. ¶ 49. This testimony does not
`persuade us that an additional “innermost” requirement should be read into
`the claims.
`At this point in the proceeding, we are not persuaded that “band edge”
`should be construed as the “innermost” band edge. For purposes of this
`Decision, “the band edge” means: “a band edge of the single mask-defined,
`bandlimited channel.”
`3. Other constructions
`We decline to provide explicit constructions for the remaining claim
`terms provided by Petitioners. See Pet. 6–7, 9––10.
`
`
`III. ANALYSIS
`We turn now to Petitioners’ asserted grounds of unpatentability to
`determine whether Petitioners have met the threshold standard of 35 U.S.C.
`§ 314(a).
`A. Claims 1–5 – Anticipation by Petrovic
`
`Petitioners assert that claims 1–5 would have been anticipated by
`Petrovic. Pet. 12. We determine that Petitioners have established a
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`reasonable likelihood of prevailing on its assertion that claims 1–5 are
`anticipated for the reasons explained below.
`1. Overview of Petrovic
`Petrovic discloses a multicarrier modulation technique for a radio
`paging system, simultaneously broadcasting the same information, in the
`same channel, by different transmitters with overlapping coverage areas, to
`improve the reliability of reception by a receiver, i.e., a pager device, in any
`given coverage area. Ex. 1013, 1 ¶¶ 1–3. Petrovic explains that this
`simulcasting technique also provides an increased bit rate and better
`frequency spectrum efficiency across paging radio channels. Id.
`Figure 1 of Petrovic, reproduced below, depicts a signal spectrum
`having four carriers, all within an emission mask denoted by the dashed line.
`Id. at 2 ¶ 8.
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`Figure 1 illustrates a spectrum of a
`single symbol repeatedly transmitted.
`
`
`Pointing out that radio paging systems generally were known to
`operate within a 25 kHz channel, Petrovic’s modulation technique proposes
`“doubling the channel bandwidth in order to allow higher throughput. This
`should be done by moving the current emission mask boundaries away from
`the center frequency by +/- 12.5 kHz.” Id. at 1 ¶ 6. Petrovic further explains
`that the 50 kHz frequency range provides “a 35 kHz pass band in the middle
`of the channel and 7.5kHz guard bands on each side.” Id.
`Petrovic explains, in accordance with the symbols shown in Figure 1,
`that to best utilize the allocated 50 kHz spectrum, the multicarrier
`modulation technique uses eight (8) symbols, i.e., carriers, each center
`frequency spaced 5 kHz apart, and that in any given carrier interval, 4 of the
`carriers are “ON,” while 4 others are “OFF.” Id. at 1 ¶ 7.
`Petrovic also describes a series of laboratory and field experiments in
`the 930 MHz frequency band where “[e]ach transmitter has four
`subtransmitters capable of 4-FSK over a subset of the 8 frequencies.
`Outputs of the subtransmitters are combined and sent to a common antenna.”
`Id. at 2 ¶ 6. The experiments included two transmitters “installed seven
`miles apart and synchronized to provide a simulcast overlap area with
`approximately 35 dBμV/m signal strength.” Id.
`2. Discussion
`a. Claim 1
`Addressing the limitations of claim 1, Petitioners assert that Petrovic
`discloses a radio paging system utilizing a plurality, i.e., eight, paging
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`carriers within a single mask-defined 50 kHz bandlimited channel. Pet. 13–
`14 (citing Ex. 1013, 1 ¶¶ 1, 7, Fig. 1). Drawing attention to the
`“Experiments” section in Petrovic, Petitioners argue that Petrovic’s
`experiments describe transmitting the plurality of carriers from the same
`location. Id. at 19 (citing Ex. 1013, 2, Experiments). Petitioners contend
`that by doubling the 25 kHz bandwidth to 50 kHz, Petrovic provides an
`emission mask having a pass band of 35 kHz, and guard bands of 7.5 kHz on
`either side of the spectrum. Id. at 18–19. Petrovic’s eight subcarriers,
`Petitioners argue, are each spaced 5 kHz apart, which places the center
`frequency of the end most subcarriers 35 kHz apart, leaving at least 7.5 kHz
`between the end most subcarriers and the channel boundary. Id. at 18–19.
`Relying on the testimony of its expert, Dr. Kakaes, Petitioners explain that,
`“[i]n other words, there is 5 kHz between the center frequencies of each
`adjacent carrier and 7.5 kHz between the center frequency of the outer most
`of said carriers and the band edge of the mask defining the channel. 7.5 is
`more than half of 5.” Id. at 21 (citing Ex. 1003 ¶¶ 21–22). Petitioners argue
`based on this disclosure that Petrovic describes that “the frequency
`difference between the center frequency of the outer most of said carriers
`and the band edge of the mask defining said channel is more than half the
`frequency difference between the center frequencies of each adjacent
`carrier,” as recited by claim 1. Id. at 20.
`Petitioners further support their position with respect to the outer
`carrier and band edge position limitations in claim 1 with Dr. Kakaes’s
`Declaration, which states in part that:
`the frequency difference between the center frequency of the
`outer most of the carriers and the band edge of the mask
`defining said chanl (which is greater than 7.5 kHz) is more than
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`half the frequency difference between the center frequencies of
`each adjacent carrier (which is 5 kHz), as required by claim 1.
`Thus, Petrovic describes the feature that led to the allowance of
`the ‘891 patent.
`
`Ex. 1003 ¶ 22.
`Patent Owner argues that there are two reasons why Petrovic does not
`anticipate the independent claims. Prelim. Resp. 39–40. First, Patent Owner
`contends that the difference between the band edge and the center frequency
`of the outermost carrier “is not more than half the frequency difference
`between the center frequencies of each adjacent carrier.” Id. at 44–50.
`Second, Patent Owner contends that “Petrovic does not disclose operating or
`transmitting all of the carriers from the same location.” Id. at 50–52.
`We are not persuaded by Patent Owner’s first argument because, as
`discussed above, Petrovic has been shown to disclose a 50 kHz spectral
`emission mask defining a bandlimited channel, i.e., a channel confined
`within a 50 kHz slice of the 930 MHz frequency band, as shown in
`Petrovic’s Figure 1. Ex. 1013, 1 ¶ 6; Ex. 1003 ¶¶ 18–19. As discussed in
`our claim construction, supra, we determined that “band edge” is not limited
`to “innermost band edge.” We are not persuaded, therefore, that the recited
`“band edge” is limited to the 35 kHz pass band, which is only a portion of
`the 50 kHz channel described in Petrovic. See Prelim. Resp. 19–20. Patent
`Owner’s assertion fails to account for the 7.5 kHz guard bands on either end
`of the spectrum which, together with the 35 kHz passband, make up the 50
`kHz bandlimited channel according to Petitioners’ declarant, Dr. Kakaes.
`Ex. 1003 ¶ 19.
`At this stage in this proceeding, the evidence of record indicates that
`the “band edge,” construed above as “a band edge of the single mask-
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`defined, bandlimited channel” is inclusive of a 50 kHz frequency range.
`Accordingly, with the guard bands extending 7.5 kHz beyond the center
`frequency of the outermost carriers, and given a 5 kHz spacing between
`subcarriers, we are persuaded by the record before us that Petrovic’s 7.5 kHz
`guard band discloses “that the frequency difference between the center
`frequency of the outer most of said carriers and the band edge of the mask
`defining said channel is more than half the frequency difference between the
`center frequencies of each adjacent carrier,” as called for in claim 1.
`We are not persuaded by Patent Owner’s second argument that the
`claims require that each adjacent carrier must transmit simultaneously. See
`Prelim. Resp. 50. We find no such limitation, either express or implied, in
`the claimed “method of operating” as recited in claim 1. Petitioners have
`shown persuasively that Petrovic discloses eight adjacent carriers spaced 5
`kHz apart within the 50 kHz Channel. Pet. 18 (citing Ex. 1013, 1 ¶ 7; Ex.
`1003 ¶ 21). Claim 1 does not recite any temporal requirement, i.e., that all
`the carriers must be transmitted at the same time, only that the carriers must
`be transmitted from the same location.
`We are also not persuaded that Petrovic fails to disclose “transmitting
`said carriers from the same location,” as claim 1 recites. Petitioners have
`shown persuasively that Petrovic’s “Experiments” section describes that
`“[e]ach transmitter has four subtransmitters capable of 4-FSK over a subset
`of the 8 frequencies.” Ex. 1013, 2 ¶ 6. Based on this, Petitioners’ declarant
`testimony alleges that Petrovic uses “a transmitter with four subtransmitters
`to transmit the eight subcarriers . . . [t]hus, each of the eight subcarriers are
`transmitted from the same location (i.e., the common antenna).” Ex. 1003
`¶ 25. At this point in the record, without persuasive evidence to the
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`contrary, Petitioners’ argument that Petrovic describes transmitting all the
`carriers via subtransmitters from the same antenna, and hence same location,
`is persuasive.
`Further, Patent Owner argues that Petrovic does not meet the
`“transmitting said carriers from the same location” limitation because
`Petrovic has a different purpose and is directed to a different modulation
`method. Prelim. Resp. 52. For support, Patent Owner relies upon the
`testimony of Dr. Petrovic from the related District Court proceedings. Id.
`(citing Ex. 2008, 106:15–107:4, Ex. 2009, 125:5–125:11). At this point in
`the proceeding, we are not persuaded by Dr. Petrovic’s testimony, which
`only generally addresses claim 1, that Petrovic fails to meet the claims.
`
`For the reasons provided above, Petitioners have established a
`reasonable likelihood of prevailing on the ground of unpatentability of claim
`1 as anticipated by Petrovic under 35 U.S.C. § 102(b).
`b. Claims 3 and 5
`Petitioners advance essentially the same arguments for independent
`claims 3 and 5, as asserted with respect to claim 1. See Pet. 23–30.
`For its part, Patent Owner argues that claims 3 and 5 are not
`anticipated by Petrovic for the same reasons as claim 1. See Prelim. Resp.
`39–56.
`As discussed above, we are persuaded that Petitioners have shown
`sufficiently that Petrovic describes a 50 kHz spectra emission mask defining
`a bandlimited channel, i.e., a channel confined by a mask within a 50 kHz
`slice of the 930 MHz frequency band, such that Petrovic discloses “a single
`mask-defined, bandlimited channel,” as recited in claims 3 and 5. Ex. 1013,
`
`18
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`IPR2016-00766 (Patent 5,659,891)
`IPR2016-00768 (Patent 5,659,891)
`
`1 ¶ 6; Ex. 1003 ¶¶ 18–19. For the same reasons stated above in connection
`with claim 1, we are not persuaded by Patent Owner’s arguments that
`Petrovic fails to describe a difference between the band edge and the center
`frequency of the outermost carrier that is not more than half the frequency
`difference between the center frequencies of each adjacent carrier.
`For the reasons provided above, we are persuaded that Petitioners
`have established a reasonable likelihood of prevailing on the ground of
`unpatentability of claims 3 and 5 as anticipated by Petrovic under 35 U.S.C.
`§ 102(b).
`c. Claims 2 and 4
`With respect to claims 2 and 4, Petitioners rely on an annotated
`version of Petrovic’s Figure 1 (Pet. 22) to show that adjacent carriers (claim
`2) and subchannels (claim 4) “overlap with each other,” as recited in these
`claims. Id. at 21–23, 26.
`According to Patent Owner, to meet claims 2 and 4, Petrovic “must
`teach overlap of those portions of a carrier that could be recognized by a
`receiver as the carrier except for near-far interference.” Id. at 54. Patent
`Owner argues that Petrovic does not teach overlapping carriers, because
`Petrovic’s overlap is caused by near-far interference and is at a very low
`power. Prelim. Resp. 53 (citing Kesan Decl. ¶¶ 112, 115–120). Patent
`Owner argues that overlap must be above a power level where noise starts to
`affect the carrier signal. Id. at 54.
`We are not persuaded by Patent Owner’s argument. Claim 2 requires
`that “adjacent carriers overlap with each other,” and claim 4 requires that
`“adjacent subchannels overlap with each other.” The claims do not require
`the overlap at a power level above where noise starts to affect the carrier
`
`19
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`IPR2016-00766 (Patent 5,659,891)
`IPR2016-00768 (Patent 5,659,891)
`
`signal. As Petitioners point out, Petrovic describes adjacent carriers that
`overlap with each other. Pet. 21–23 (citing Ex. 1013, p. 2, Experiments, Fig.
`1.).
`On this record, we are persuaded that Petitioners have established a
`reasonable likelihood of prevailing on the ground of unpatentability of
`claims 2 and 4 as anticipated by Petrovic under 35 U.S.C. § 102(b).
`B. Claim 5 – Obviousness over Petrovic, Raith, and Alakija
`Petitioners have established a reasonable likelihood of prevailing on
`its assertion that claim 5 is obvious for the reasons explained below.
`Patent Owner initially contends that neither Raith nor Alakija cure the
`defects with respect to any of Patent Owner’s arguments discussed above
`with respect to anticipation by Petrovic. Prelim. Resp. 56. As discussed
`above, however, we have found Petitioners’ arguments regarding Petrovic
`persuasive.
`We also are not persuaded by Patent Owner’s argument that Petitioner
`has failed to present an articulated reasoning with rational underpinnings.
`Id. at 57–58. Petitioners provide an articulated reason with a rational
`underpinning to combine Petrovic with Raith, stating that:
`
`one of ordinary skill in the art would have been motivated
`to expand the experimental paging system configuration
`described in Petrovic to include multiple adjacent paging
`cells/regions similar to the structure illustrated in Figure 1 of
`Raith . . . in order to provide messaging services to a larger
`geographic area and a larger number of mobile devices (e.g.,
`pagers).
`Pet. 34–35 (citing Ex. 1003 ¶¶ 31–32). Further, Petitioners refer to an
`annotated version of Raith’s Figure 1 as specific evidence explaining how
`the co-location of transmitters would occur in a larger geographical region,
`
`20
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`IPR2016-00766 (Patent 5,659,891)
`IPR2016-00768 (Patent 5,659,891)
`
`for example, with two spaced apart transmitters, BS6, XS6, for cell 6, with
`transmitter BS6 being co-located with transmitters BS2 and BS4 for cells 2
`and 4 respectively. Id. at 34. We are further persuaded, on the record
`befo

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