UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON, AND
`AT&T MOBILITY, LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`____________
`
`Record of Oral Hearing
`Held: September 11, 2017
`____________
`
`
`
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and DAVID C.
`McKONE, Administrative Patent Judges.
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON, AND
`AT&T MOBILITY, LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`____________
`
`Record of Oral Hearing
`Held: September 11, 2017
`____________
`
`
`
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and DAVID C.
`McKONE, Administrative Patent Judges.
`
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`APPEARANCES:
`
`ON BEHALF OF PETITIONER:
`
`
`J. ANDREW LOWES, ESQUIRE
`ADAM FOWLES, ESQUIRE
`Haynes and Boone, LLP
`2505 N. Plano Road, Suite 4000
`Richardson, Texas 75082-4101
`(972) 680-7557
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`LORI A. GORDON, ESQUIRE
`STEVEN W. PETERS, PH.D., ESQUIRE
`Sterne Kessler Goldstein Fox
`1100 New York Avenue, Northwest
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`The above-entitled matter came on for hearing on Monday, September
`
`11, 2017, commencing at 1:30 p.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`2
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE McNAMARA: Good afternoon, everyone.
`This is the trial hearing in Ericsson and AT&T Mobility
`versus Intellectual Ventures. This is a joint proceeding. It
`was originally Case IPR2016-01169, and, later,
`IPR2017-00681 was joined to it. Beginning with the
`Petitioner, could counsel please introduce yourselves?
`MR. LOWES: Yes, Your Honor. This is Andrew
`Lowes, lead counsel for Petitioner Ericsson. Also with me
`today is Adam Fowles, backup counsel for Ericsson, as well
`as Ericsson's inhouse counsel, Tim Calloway.
`JUDGE McNAMARA: Thank you.
`MS. GORDON: Your Honor, this is Lori Gordon
`from the law firm of Stern Kessler Goldstein and Fox. I'll
`be arguing today on behalf of the Patent Owner Intellectual
`Ventures I. With me is Steve Peters, also from Stern
`Kessler, and Russ Rigby, from the Patent Owner
`Intellectual Ventures I.
`JUDGE McNAMARA: Thank you very much.
`Welcome to the Patent Trial and Appeal Board. Today, the
`Petitioner will proceed first to present the case with regard
`to the challenged claims on which we instituted a trial, then
`the Patent Owner will argue its opposition to the Petitioner's
`case, and the Petitioner can use any time it reserved to rebut
`the Patent Owner's opposition. Those are the only
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`3
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`arguments we'll hear. If you have concerns that something
`is being said that shouldn't be during the other party's
`argument, I would ask you to please hold your comment
`until you have another opportunity to address the Board.
`We don't -- we would like to avoid having objections raised
`during the parties' presentation.
`Each party will have 45 minutes, so, if we're ready to
`begin. Petitioner, is there some amount of time you'd like
`me to alert you to?
`MR. LOWES: Yes, Your Honor. I'd like to use 35
`minutes for my initial presentation and the remaining 10
`minutes for rebuttal.
`JUDGE McNAMARA: Okay, thank you.
`MR. LOWES: If we could take just a moment to get
`our slides going.
`JUDGE McNAMARA: Sure. I'm sorry, are these
`demonstratives?
`MR. LOWES: Yes, Your Honor.
`JUDGE McNAMARA: Did you file demonstratives?
`MR. LOWES: Yes, I believe we did, Your Honor.
`MR. FOWLES: Yes, we did.
`MR. LOWES: On Thursday.
`JUDGE McNAMARA: Okay, I'm sorry. All right,
`thank you very much.
`MR. LOWES: Your Honor, we're ready. We'd like
`to go ahead and begin. Thank you and good afternoon. As
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`4
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`I said earlier, I'm Andrew Lowes on behalf of Petitioner
`Ericsson. With our presentation today, we'd like to address
`the specific arguments raised by the Patent Owner in their
`briefing and those areas of dispute between the parties.
`However, we have addressed all the issues in our -- that
`Patent Owner raised in our petition, as well as our reply and
`our observations, and we stand on those arguments as well,
`even if not specifically discussed here today.
`If we could go to slide 2, and this is of Exhibit 1050
`filed last week. So this is an overview of the patent
`showing claim 1 divided into various aspects for the patent.
`We have done this for the ease of discussion, as well as
`we've broken down the claim elements themselves for
`application to the art. With respect to the aspects, the '032
`is related to the possibility to manipulate an incoming serial
`data stream to achieve a high data rate with only limited
`expansion of the bandwidth over the bandwidth used for the
`incoming data stream. And this is done by first dividing a
`serial to parallel -- the serial incoming data into parallel data
`streams, then expanding the bit duration, then modulating
`those expanded bits with modulating sequences. Those
`sequences have various properties. And, finally, summing
`that for transmission by the system.
`Now, these aspects were also known prior to the
`filing date of the patent in the Sasaki references, which we'll
`discuss. And Sasaki was attempting to achieve the same
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`5
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`thing, that is maintaining a high transmission rate without
`increasing the bandwidth while obtaining the benefits of
`spread spectrum for use with a multipath rejection.
`Additionally, while I have this here, with respect to
`aspects 1, 2 and 4, during prosecution, the Patent Owner
`informed the Patent Office that they recognize that those
`aspects were actually well known before the filing date, and
`we've shown that those aspects are demonstrated in the
`Sasaki references, Sasaki 1994 in combination with Sasaki
`1991, and those aspects are not in dispute between the
`parties, so we'll focus most of our time on aspect number 3,
`the modulating with the modulating sequence.
`If I could go to slide 3, please. This is Figure 1 from
`the patent showing where in their system diagram the
`various aspects are being conducted. Again, this claim is a
`transmission method, and so these steps are carried out on
`an apparatus, but the claim itself is directed to performing
`the various steps of the method. Here, you can see on the
`left-hand side that the serial-to-parallel conversion is in the
`serial-to-parallel converter. That's also where the expansion
`of the data occurs. The modulation occurs by combining
`those parallel data streams with modulating sequences and,
`finally, those are summed for transmission on the right side
`of the diagram.
`All right, if we could go to slide 5, so slide 5 of
`Exhibit 1050. This is just an overview of the areas that are
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`6
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`in dispute between the parties. With respect to claim 1, the
`combination of Sasaki 1994 in view of Sasaki 1991 renders
`the claim obvious. The question that has been raised is
`would it have been obvious to combine the mode of
`operation from Sasaki '91, when selecting r of the M
`sequences is the operation. Second, does Sasaki 1994
`actually disclose a sequence period as set forth in the claim.
`And then Sasaki 1994, does it teach N being greater than k.
`Additionally, with respect to dependent claims 2 and 3,
`there are questions concerning the type of sequences being
`transmitted. And, finally, with respect to claim 8, the
`combination with the Fattouche reference also providing a
`pilot channel for inclusion with the data of Sasaki.
`If we could move now to slide 7. So, now, on slide 7
`of Exhibit 1050, just a brief overview of the references here.
`So, for Sasaki 1991, this -- the authors were researching and
`evaluating a system called a parallel combinatory spread
`spectrum system, and they provide a description of that.
`The block diagram is provided there in Figure 2. Here,
`we're only focusing on the upper portion because we're
`concerned about the transmission, and the upper portion is
`the transmit part of the circuit. And they evaluated this
`system in the environment of additive white Gaussian noise,
`and so they provided their results with respect to
`transmission in that system. And then they described
`various aspects of the system, including what are some of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`7
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`the parameters and what are the relationship of those
`parameters. And, specifically, I've highlighted here that, in
`some situations, the value that r takes can be equal to M.
`That will become important as we continue our discussions.
`Next slide, please. So slide 8 --
`JUDGE McNAMARA: Let me interrupt you for just
`a quick second. What are r and M? What do they
`represent?
`MR. LOWES: Yes, Your Honor. So M is, in a
`combinatory system like Sasaki, they have sequences that
`are available to be combined with the data. The number of
`sequences is set to M, so that's how many sequences are
`available. R is then telling the system, of those M systems,
`how many will be utilized and actually combined with the
`data. And so r is how many of M get chosen. I think
`actually, if we look here on slide 8, you can see that, at the
`bottom left, the highlighted text that begins in the mapping
`circuit, the r transmitting PN sequences -- r transmitting PN
`sequences are chosen from the M orthogonal PN sequences
`which are assigned for a particular user. So, it's, again,
`there are M available, r are chosen for transmission. Were
`there any other questions?
`JUDGE McNAMARA: No, thank you. I appreciate
`that clarification.
`MR. LOWES: Okay.
`JUDGE McNAMARA: Part of the issue here, as you
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`8
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`can tell, is there's a lot of math.
`MR. LOWES: Absolutely, yes.
`JUDGE McNAMARA: And, so, what we're trying to
`do is make sure we understand what each of the variables
`mean. There's also some difference in the nomenclature
`used by Sasaki and in the patents, so we want to make sure
`that we're all talking about the same thing.
`MR. LOWES: Yes, Your Honor. Just another bit
`about Sasaki 1994, this is a continuing research of Sasaki
`and its colleagues, and he recognized in 1994 that his
`previous work in 1991 was done in the context of additive
`white Gaussian noise, and provided a reference to that for
`the reader. In 1994, they were considering that same PCSS
`system in the context of a Rayleigh fading channel
`environment, and they provided more details about the
`system and channel model. That's there on the left. And
`we've already talked about the choosing r, the M available
`sequences. Also on the right is their equation that sets forth
`how the PN sequences are combined with the data stream,
`and we can talk a little bit more about that. And, finally,
`highlighted on the bottom right is that the information is
`multiplied with a carrier for transmission.
`If we go to slide 9. In terms of where are these
`aspects found in the references, we provided this chart in
`the petition, which shows where each of the aspects of the
`claims, and then the claims are broken down into individual
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`9
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`claim elements for further discussion. You can see where
`that is in Sasaki -- where Sasaki '94 is used and then where
`Sasaki 1991 is combined for additional information.
`Next slide, please. In terms of the terminology that
`we're using and the relationship between the '032 patent and
`Sasaki, the Sasaki references, we provided this table in our
`petition and can walk through it briefly. With respect to the
`bit duration, that's the data bit duration. In Sasaki, they
`refer to that as Tb, the b being for bit. I'm sorry, in the '032,
`it's Tb being for the bit, and in Sasaki, it's Td for the data
`bit, but it's the same term, references the bit duration.
`JUDGE McNAMARA: There's a terminology called
`a chip duration. What's a chip?
`MR. LOWES: A chip is the individual components
`that make up a sequence, so each chip will have a certain
`aspect, and then there will be however many chips are
`needed to make that sequence. So N, which is the
`processing gain, is also the number of chips. So a sequence
`has a period that is the number of chips N times the length
`that each of the chips that make it up.
`JUDGE McNAMARA: Are all the chips the same
`length?
`MR. LOWES: Yes.
`JUDGE McNAMARA: Okay, thank you.
`MR. LOWES: With respect to -- and that's
`represented by Tc in both the '032 and Sasaki. For the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`10
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`parallel data streams or channels, those are represented by
`capital K '032 and lowercase k in Sasaki. In terms of the
`modulating sequences, Sasaki doesn't offer the developer
`the option to change the number of modulating sequences,
`so those are all set to K in the '032. In Sasaki, M sequences
`are available, and the selected sequences can be r in Sasaki.
`Again, in the '032, there's no selection available and so
`those would still be K. As we explained in the petition,
`when r equals M, it also equals K, so all those variables on
`the right-hand side for Sasaki would also be K. With
`respect to the symbol duration, you know, how long is the
`symbol going to last, that's the number of parallel channels
`times the duration of the bit, so KTb for the '032 and kTd
`for Sasaki. Finally, for both the patent and Sasaki, the
`processing gain is N.
`If we could go to slide 16, just jumping ahead. We
`skipped over the aspects 1 and 2, as we explained are not
`really in dispute. With respect to aspect 3, this is the claim
`element relating to modulating with modulating sequences.
`We've broken that into five different claim elements for the
`purposes of discussion, and we'll walk through those here.
`If we could go to slide 17 of Exhibit 1050. Here, this
`is with respect to the claim element of simply modulating
`with modulating sequences, and that's shown in Sasaki
`1994. In the -- just above the equation 8 in the upper
`left-hand side, it talks about the state word of transmitting
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`11
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`sequence is multiplied with the PN sequence, which is the
`modulating sequence, set to form a transmitting signal.
`And the functionality is described in that mathematic
`formula, but what you need to know is that it's multiplying
`with the PN sequence, and those PN sequences are for
`modulating. So that's occurring -- Dr. Haas explained how
`that works in his testimony. I don't think that's really in
`dispute.
`Next slide. Now, with respect to how many
`sequences are utilized in that modulating step, that's not
`expressly defined in Sasaki 1994. Sasaki 1994 has the text
`that we just talked about which is, in the mapping circuits, r
`transmitting PN sequence are chosen from the M orthogonal
`PN sequences. But with respect to what the value of r
`should be, Sasaki 1994 doesn't provide that information. So
`a person of skill in the art wanting to implement the system
`or evaluate it in various settings would want to have an
`understanding of what that value r should be with respect to
`M. Well, Sasaki 1991 provides that information. Sasaki
`1991 is about the same PCSS system and provides that, in
`some situations, r can be equal M. That means that the
`system is selecting all of the M available sequences M and
`using those for transmission.
`If we could go to the next slide. So, with respect to
`the reasons to combine, as I just mentioned, the initial
`reason is simply it's the same PCS system being evaluated
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`12
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`by Sasaki in 1991 as it is in 1994, and there is an explicit
`teaching of setting the value for r equal to M, and so that's
`in the reference.
`JUDGE McNAMARA: Is it enough that the 1994
`Sasaki reference refers to the 1991 reference or would you
`need more to have a motivation to combine?
`MR. LOWES: Your Honor, I think what it does is it
`helps understand that a reader would actually go to 1991,
`but I think you need more, and that more is that it's actually
`referring to the same system, so a person of ordinary skill in
`the art is saying, what should I set the value of r -- what
`should it be. And seeing Sasaki 1991 for the same system,
`saying, well, r can equal M, that's a valid setting for those
`parameters. So the explicit suggestion in the same system
`for setting those parameters is really the motivation to make
`that combination, not just the fact that it was referred to as
`one of the references.
`In addition, as Dr. Haas recognized, these are the
`same systems, Sasaki 1991 and '94, and Patent Owner's
`expert doesn't contest that and makes the same assumption,
`saying, when asked, is the system of Sasaki '91 the same
`system as Sasaki '94, he confirmed that I'm just making that
`assumption here. So their expert assumes that as well.
`And, finally, there's been some argumentative
`briefing that it would -- by selecting r equals to M, there
`would be a physical modification or a change of the PCSS
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`13
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`system. Well, that's certainly not the case. There's no
`change needed. It's simply a matter of setting the
`parameters and operating the system as it's set forth. So no
`changes need to be made in the system. There's an explicit
`teaching in the reference to make it.
`If we could go to the next slide. Let's skip to slide
`31. So here, slide 31 of Exhibit 1050, here there was a
`question in terms of parallel combinatory spread spectrum
`system and whether a combinatorial aspect of the system is
`retained when you select all of the M available sequences
`by setting r equal to M. And in the deposition of Dr.
`Cimini, Patent Owner's expert, he confirmed that, if you
`have a group of parameters, say, A, B and C, and if you
`select all three of those, so you select the group A, B, C,
`that's still a mathematical combination selected from the set.
`So that's a proper mathematical combination. It's still
`combinatorial in nature. And it's the same in the patent.
`You know, selecting r out of the M available sequences, if
`you select them all, it's still selecting all of the sequences,
`so it's combinatorial, and Dr. Haas confirmed that in his
`testimony as well, that the range of valid combination
`includes a set of sequences of r equal M as an option.
`That's on the slide here as well.
`If we could go back now. In addition to the explicit
`teaching of setting r equal to M in a PCS system provided in
`Sasaki 1991, there are also advantages to having the system
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`14
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`operate in this mode. Specifically, Dr. Haas explained that,
`when r equals M, each sequence that's transmitted
`represents one bit of data. So, if there's an error and the
`sequence gets lost in transmission, you only lose one bit,
`making the system much less susceptible to error, so it's a
`good use of the system in terms of a noisy environment. If
`it's a less noisy environment, r can be less than M, but then
`the sequences carry more information than M, so, if you
`lose a sequence, you lose more than one bit of data. That's
`explained on the slide here at 20 in a number of quotes from
`Dr. Haas. Are there any questions on that?
`Okay, if we could go to slide 21. The next aspect of
`the modulating sequence is that it have a processing gain,
`each said modulating sequence having a processing gain N.
`As Dr. Haas explained in his declaration, it's in the upper
`left-hand corner, the processing gain refers to the spreading
`factor and is determined by the number of chips, which is
`N, from the spreading sequence per data bit. And he shows
`that, in Sasaki 1991, there's a block of text there from
`Sasaki, that N stands for the length of the assigned sequence
`and that chip duration at the top of that is Tc. Dr. Haas, at
`the bottom, ultimately explains that the processing gain set
`forth in there is N over K, where K are all the parallel data
`streams, but for an individual data stream, it's simply N
`over 1, where the processing gain is N. So it's clearly set
`forth in Sasaki 1994.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`15
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`JUDGE McNAMARA: That's because, for an
`individual data stream, K would be equal to 1?
`MR. LOWES: That's correct. Yes, Your Honor.
`Referring now to -- so I'll go to slide 22, please. Referring
`now to slide 22, this is claim element 1.4 that requires that
`this sequence period is equal to the symbol duration kTd.
`With respect to this claim element, Patent Owner argues
`that the Petitioner has failed to demonstrate that Sasaki
`1994 discloses a sequence period under either the plain and
`ordinary meaning or the construction proposed in the
`petition. However, we definitely dispute that. Petitioner
`has shown that, both in the petition under the plain and
`ordinary meaning, as well as under the proposed
`construction, and provided even further explanation in the
`reply. So we've clearly described that. Further, the term
`sequence period that's used in the claim does not appear in
`the specification of the '032 patent, so that term is not in
`there. However, consistent with the prosecution history, Dr.
`Haas testified that sequence period in the '032 patent is
`understood as being N, the number of chips times the length
`of the chips, so N times Tc. And this, in terms of -- after
`the Patent Owner's reply, we took the deposition of Dr.
`Cimini, and he agreed -- this is in our reply brief on page 4,
`where Dr. Cimini agreed that, quote, sequence period is
`determined by the total number of chips N multiplied by the
`chip duration, which is Tc, and that's the usual definition.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`16
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`So. Dr. Cimini agrees with Dr. Haas that the usual
`definition is N times Tc.
`So, turning now to what Sasaki discloses here on
`slide 22, the block of text from Sasaki 1994, you can see
`that the data is converted to the data of K channels with
`duration T, where kTd, that's the symbol duration, is equal
`to NTc, which is the sequence period as understood by both
`Dr. Haas and Dr. Cimini. And Dr. Haas explains that in his
`original declaration, where he says that N times the chip
`duration Tc corresponds to the total duration of the
`modulating sequence, the sequence period, and it equals the
`equation of T equals kTd, which is equal to NTc in Sasaki
`1994. And Dr. Cimini likewise, in looking at Sasaki 1994,
`also understood that N times Tc is the sequence period, and
`we've got a block quote from his testimony as well. So the
`experts are in agreement, sequence period is understood to
`be N times Tc from the '032 patent and then, looking at
`Sasaki, it has a sequence period of N times Tc, and that is
`equal to the symbol duration of k times Td. So it's
`definitely been shown under the plain and ordinary
`meaning, in addition to demonstrating the Sasaki '94
`discloses sequence period under the plain and ordinary
`meaning. The Petitioner has also demonstrated, both in the
`petition and the reply, that Sasaki 1994 discloses the claim
`sequence under the initially proposed construction.
`However, it's no longer necessary to construe or further
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`17
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`review this issue. We've agreed with Patent Owner that the
`plain and ordinary meaning, in view of Dr. Cimini's
`testimony, is sufficient to resolve this controversy, and that
`no further construction is necessary. So we are in
`agreement with Patent Owner and the Board that use in the
`plain and ordinary meaning is sufficient here. So, unless
`there are questions, I'll move on to another claim element.
`JUDGE McNAMARA: So you're basically agreeing
`with the construction that we had adopted in the decision to
`institute and that Patent Owner proposes?
`MR. LOWES: Yes, Your Honor.
`JUDGE McNAMARA: Okay.
`MR. LOWES: If I could go to slide 24. This is an
`additional feature of aspect 3, element 1.4(b), which
`requires that the modulating sequence have N binary chips
`with each period -- within each period so that each chip has
`a chip duration of Tc that equals to kTb divided by N.
`Here, again, this is the exact same formula that we were
`talking about earlier in the previous slide with respect to
`Sasaki 1994. Both Dr. Haas recognizes that that's clearly
`set forth in Sasaki 1994, and even Dr. Cimini, we put the
`equation of Sasaki in front of him, asked him to solve it for
`chip duration, and that's his handwriting there, that Tc in
`Sasaki is equal to kTd, the time duration of the bit, divided
`by N. So Sasaki 1994 clearly meets this limitation, as
`shown by Dr. Cimini.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`18
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`Let's go to slide 25. With respect to the final aspect
`-- final element of aspect 3, the claim requires that it had N
`binary chips -- I'm sorry, no, the claim requires wherein k
`and N are integers and N is greater than K. Sasaki 1994
`clearly shows this relationship. We've highlighted that here
`in Figure 1 from Sasaki 1994, that K is 8 and N is 84, and
`that's not really disputed by the Patent Owner. The real
`dispute is whether or not Dr. Haas' analysis of this took into
`account that the variable r and M had already been set to
`equal each other. Well, as was explained repeatedly in his
`declaration, that's exactly how he's applying the references.
`It is for the situation where the teachings of Sasaki 1991, in
`terms of the modulating sequence, are applied to Sasaki
`1994, and it's operated in that mode, and that's precisely
`how Dr. Haas understood this. He testified to that during
`his deposition and also confirmed that in his reply
`declaration.
`If we can go to slide 37, please. So, with respect to
`this element, one thing I want to be clear is Dr. Haas said,
`when I was considering the whole modulating with the
`modulating sequence, it was in the terms of setting r equal
`to M, as taught by Sasaki 1991. This is a block quote from
`the patent, showing that the modulating claim element is a
`single claim element, and so it's clearly understandable that
`the entire thing would be with respect to the combination of
`the references and, in fact, the variables themselves are
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`19
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`introduced earlier in the claim, it's clearly with respect to an
`r equals M.
`Next slide, please. Moreover, with respect to the
`combination, we've already talked about the whole claim
`just broken into elements, but as with respect to the entire
`aspect 3, further, the claimed N greater than k property is
`addressed with respect to claim element 1.5. But this,
`again, is in a context of r equals M. And, finally, in the
`observations, we pointed out that Dr. Haas repeatedly
`recognizes that his analysis in the declaration is in the case
`where r equals M and provided those citations as well.
`If we could go to the next slide. In contrast, Patent
`Owner's expert doesn't say that setting r equal to M would
`change anything about the relationship between N and k or
`prevent that combination. In fact, when asked about that
`during his deposition, we asked, could one of ordinary skill
`in the art set r to equal M while at the same keeping --
`which should be N greater than K. His answer, I don't
`know, because I haven't actually plugged in the numbers.
`And then later, he said, I guess I never put r equal to M in
`anything, so I didn't look at that. And then we're asking
`him, so as you sit here today, you have no opinion on
`whether Sasaki 1991 or Sasaki 1994 prohibits N being
`greater than K when r equals M. And his answer is, I don't
`know, yeah, I didn't look at that. So Dr. Cimini, Patent
`Owner's expert, didn't even consider that possibility,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`20
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`whereas Dr. Haas clearly considered it and confirmed that
`that's his testimony, that, when r equals M, N will still be
`greater than k, as taught by Sasaki 1994.
`If we could go to the next slide. Dr. Haas, in addition
`to the Figure 2, in terms of N greater than k, he recognized
`in his original declaration that the spreading factor of N
`over k in Sasaki 1994 would be greater than 1, meaning the
`N is greater than k, so you have a good spreading factor in
`Sasaki 1994. He provided additional details in his
`supplemental dec, indicating that a person of skill in the art
`would understand that Sasaki 1994 provides the general
`teaching of having N greater than k, not for any specific
`case and not only for the case where r is less than M, that
`the choice of N could be made to keep a signal-to-noise
`ratio large and, finally, that the spreading factor should be
`large, i.e., N should be greater than k to achieve good
`system performance in a spread spectrum system.
`JUDGE McNAMARA: So, a couple of times you've
`made the -- you've stated the relationship r is equal to M, N
`is greater than k.
`MR. LOWES: Yes, Your Honor.
`JUDGE McNAMARA: Did I say that right?
`MR. LOWES: Yes, sir.
`JUDGE McNAMARA: Why is that important?
`MR. LOWES: It's important --
`JUDGE McNAMARA: How should it affect our
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`21
`
`
`
`Case IPR2016-01169/ IPR2017-00681
`Patent 5,960,032
`
`
`decision? Why is that important?
`MR. LOWES: It's important because the PCSS
`system is understood in terms of relation to the claim in the
`context when r is equal to M, so that the system is selecting
`all of the M available sequences and applying to the data.
`So that's the context of when it should apply. And, in terms
`of this claim element, it's simply noting that Sasaki 1994,
`there's no change to it based on Sasaki 1991, so Sasaki
`1991, it simply teaches that r can be equal to M, that is
`using all the modulating sequences. The rest of the aspects
`of Sasaki 1994, they don't change, no physical
`modifications required, no change in the relationship
`between N and k, which is taught as desirable in 1994. It's
`simply an operating mode for the PCSS system of Sasaki,
`whether in 1994 or 1991.
`JUDGE McNAMARA: If we're not persuaded about
`r equal to M or that one could make that combination of the
`two references to get there, how does that change the
`analysis?
`MR. LOWES: We have testimony that r equals M
`and that that's a proper combination. We don't really have
`testimony concerning if r was less than M and how that
`system would change. When r equals M, then you have,
`just like in Sasaki, there are k data lines
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
