Atty Docket No. FABO-055/00US
`(309101-2151)
`
`
`
`
`
`Case IPR2017-00550
`Patent 9,037,502
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`FACEBOOK, INC., INSTAGRAM LLC,
`Petitioners,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`
`
`
`Case IPR2017-00550
`Patent No. 9,037,502
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`(309101-2151)
`
`
`
`
`
`Case IPR2017-00550
`Patent 9,037,502
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`FACEBOOK, INC., INSTAGRAM LLC,
`Petitioners,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`
`
`
`Case IPR2017-00550
`Patent No. 9,037,502
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`Atty Docket No. FABO-055/00US
`(309101-2151)
`
`
`
`
`
`Case IPR2017-00550
`Patent 9,037,502
`
`Table of Contents
`
`
`Page
`
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`PATENT OWNER’S CONSTITUTIONAL ARGUMENTS ARE
`WITHOUT MERIT ........................................................................................ 3
`III. CLAIMS 1-3, 5, AND 7 OF THE ’502 PATENT ARE
`UNPATENTABLE ......................................................................................... 4
`A.
`“Digital Signal Processor” ................................................................... 4
`B.
`“OFDM” ............................................................................................... 9
`C.
`“Processing” ....................................................................................... 14
`D.
`Claim 5 ............................................................................................... 18
`E.
`Alternative Grounds Based on IEEE 802.11a .................................... 20
`IV. CONCLUSION ............................................................................................. 24
`
`
`
`
`
`
`-i-
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`(309101-2151)
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`Case IPR2017-00550
`Patent 9,037,502
`
`List of Exhibits
`
`Currently Filed
`
`
`
`
`
`Ex. No.
`1069
`
`Description of Document
`Excerpts from American Heritage Dictionary, p. 1398 (4th ed.
`2000)
`
`1070
`
`1071
`
`1072
`
`1073
`
`“Patent Owner’s Response to Petition for Inter Partes Review of
`U.S. Patent No. 7,548,875,” IPR2014-01236, Paper 21 (Apr. 29,
`2015)
`
`“Appellant Skky, Inc.’s Corrected Opening Brief” filed Aug. 9,
`2016 in Skky, Inc. v. MindGeek, S.A.R.L. et al., Case No. 16-2018
`(Fed. Cir.)
`
`“Appellant Skky, Inc.’s Reply Brief” filed Nov. 21, 2016 in Skky,
`Inc. v. MindGeek, S.A.R.L. et al., Case No. 16-2018 (Fed. Cir.)
`
`Redline from Patent Owner’s Preliminary Response to Patent
`Owner’s Response
`
`Previously Filed
`
`Description of Document
`U.S. Patent No. 9,037,502 to John Mikkelsen et al., entitled “Media
`Delivery Platform”
`
`Declaration of Tal Lavian, Ph.D.
`
`U.S. Patent No. 7,065,342 to Devon A. Rolf, entitled “System and
`Mobile Cellular Telephone Devices for Playing Recorded Music”
`
`Ex. No.
`1001
`
`1002
`1003
`
`ii
`
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`(309101-2151)
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`Case IPR2017-00550
`Patent 9,037,502
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`Ex. No.
`1004
`
`Description of Document
`U.S. Patent No. 6,956,833 to Satoru Yukie et al., entitled “Method,
`System and Devices for Wireless Data Storage and Retrieval on a
`Server and Data Retrieval”
`
`1005
`
`1006
`
`1007
`
`1008
`
`Alan Gatherer et al., DSP-Based Architectures for Mobile
`Communications: Past, Present and Future, IEEE Communications
`Magazine (January 2000)
`
`U.S. Patent No. 5,726,978 to Carl Magnus Frodigh et al., entitled
`“Adaptive Channel Allocation in a Frequency Division Multiplexed
`System”
`
`EP 1039683 A2 to Laroia et al., entitled “Frequency hopping multiple
`access with multicarrier signals”
`
`U.S. Patent 5,815,488 to Williams et al., entitled “Multiple User
`Access Method Using OFDM”
`
`1009
`
`Cheong Yui Won et al., A Real-time Sub-carrier Allocation Scheme
`for Multiple Access Downlink OFDM Transmission, IEEE (1999)
`1010 Wonjong Rhee et al., Increase in Capacity of Multiuser OFDM System
`Using Dynamic Subchannel Allocation, IEEE (2000)
`
`1011
`
`1012
`
`1013
`
`1014
`1015
`
`1016
`
`EP 1033894 A2 to Masatoshi Saito, entitled “Portable telephone
`terminal apparatus for receiving data and data receiving method”
`
`U.S. Patent No. 6,423,892 to Muralidharan Ramaswamy, entitled
`“Method, Wireless MP3 Files from the Internet”
`
`Excerpts from John Hedtke, MP3 and the Digital Music Revolution
`(1999)
`
`Gene Frantz, Digital Signal Processor Trends, IEEE Micro (2000)
`
`E. Lawrey, Multiuser OFDM, Fifth International Symposium on
`Signal Processing and its Applications (Aug. 1999)
`
`U.S. Patent No. 5,732,113 to Timothy Schmidl, entitled “Timing and
`Frequency Synchronization of OFDM Signals”
`
`iii
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`Case IPR2017-00550
`Patent 9,037,502
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`Ex. No.
`1017
`
`Description of Document
`U.S. Patent No. 6,711,221 to Maxim Belotserkovsky, entitled
`“Sampling Offset Correction in an Orthogonal Frequency System
`Multiplexing System”
`
`1018
`
`1019
`
`1020
`
`1021
`1022
`1023
`1024
`
`1025
`1026
`
`1027
`
`1028
`
`1029
`
`Richard Van Nee et al., OFDM
`Communications (2000)
`
`for Wireless Multimedia
`
`U.S. Patent No. 3,488,445 to Robert W. Chang entitled “Orthogonal
`Frequency Multiplex Transmission System”
`
`Chang, R.W., Synthesis of band-limited orthogonal signals for multi-
`channel data transmission, Bell Labs Technical Journal, no. 45, pp.
`175-1796 (Dec. 1966)
`
`5th International OFDM Workshop 2000
`
`6th International OFDM Workshop 2001
`
`17th International OFDM Workshop 2012
`
`Rainer Grünheid et al., Adaptive Modulation and Multiple Access for
`the OFDM Transmission Technique, Wireless Personal
`Communications (May 2000)
`
`Excerpts from Comprehensive Dictionary of Electrical Engineering
`
`IEEE Std 802-11a-1999, Part 11: Wireless LAN Medium Access
`Control (MAC) and Physical Layer (PHY) specifications: High-
`speed Physical Layer in the 5 GHz Band
`
`U.S. Patent No. 6,125,124 to Jari Junell, entitled “Synchronization
`and Sampling Frequency in an Apparatus Receiving OFDM
`Modulated Transmissions”
`
`U.S. Patent No. 7,133,352 to Zion Hadad, entitled “Bi-Directional
`Communication Channel”
`
`U.S. Patent No. 6,108,810 to Brian Kroeger, entitled “Digital Audio
`Broadcasting Method Using Puncturable Convolutional Code”
`
`iv
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`
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`Atty Docket No. FABO-055/00US
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`Ex. No.
`1030
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`Description of Document
`Ahmad R.S. Bahai, Multi-Carrier Digital Communications (1999)
`
`Leonard J. Cimini, Jr., Analysis and Simulation of a Digital Mobile
`Channel Using Orthogonal Frequency Division Multiplexing, IEEE
`Trans. Commun., Vol. 33, No. 7, pp. 665-675 (July, 1985)
`
`Giovanni Santella, Performance Evaluation of Broadband
`Microcellular Mobile Radio in M-QAM OFDM Systems, IEEE
`(1996)
`
`H. Rohling et al., Performance of an OFDM-TDMA Mobile
`Communication System, IEEE (1996)
`
`Antti Toskala et al., Cellular OFDM/CDMA Downlink Performance
`in the Link and System Levels, IEEE (1997)
`
`Fredrik Tufvesson et al., Pilot Assisted Channel Estimation for
`OFDM in Mobile Cellular Systems, IEEE (1997)
`
`Branimir Stantchev et al., An Integrated FSK-signaling Scheme for
`OFDM-based Advanced Cellular Radio, IEEE (1997)
`
`J. C-I Chuang, An OFDM-based System with Dynamic Packet
`Assignment and Interference Suppression for Advanced Cellular
`Internet Service, IEEE (1998)
`
`Branimir Stantchev et al., Burst Synchronization for OFDM-based
`Cellular Systems with Separate Signaling Channel, IEEE (1998)
`
`Kevin L. Baum, A Synchronous Coherent OFDM Air Interface
`Concept for High Data Rate Cellular Systems, IEEE (1998)
`
`Li Ping, A Combined OFDM-CsDMA Approach to Cellular Mobile
`Communications, IEEE Transactions on Communications, Vol. 47,
`No. 7, pp. 979-982 (July 1999)
`
`Justin Chuang et al., High-Speed Wireless Data Access Based on
`Combining EDGE with Wideband OFDM, IEEE Communications,
`Vol. 37, No. 11, pp. 92-98 (Nov. 1999)
`
`v
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`Atty Docket No. FABO-055/00US
`(309101-2151)
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`Case IPR2017-00550
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`Ex. No.
`1042
`
`Description of Document
`Justin Chuang et al., Beyond 3G: Wideband Wireless Data Access
`Based on OFDM and Dynamic Packet Assignment, IEEE
`Communications Magazine (July 2000)
`
`1043
`
`1044
`
`1045
`
`1046
`
`Chi-Hsiao Yih et al., Adaptive Modulation, Power Allocation and
`Control for OFDM Wireless Networks, IEEE (2000)
`
`Fumilhide Kojima et al., Adaptive Sub-carriers Control Scheme for
`OFDM Cellular Systems, IEEE (2000)
`
`Chi-Hsiao Yih et al., Power Allocation and Control for Coded OFDM
`Wireless Networks, IEEE (2000)
`
`U.S. Patent No. 5,828,650 to Esa Malikamaki, entitled “Combined
`Modulation—and Multiple Access Method for Radio Signals”
`
`1047
`
`EP 0786890 A2 to Mitsuhiro Suzuki, entitled “Resource Allocation
`in a Multi-User, Multicarrier Mobile Radio System”
`1048 WO 1997030531 A1 to Roger Larsson, entitled “Improvements in or
`Relating to OFDM Systems”
`
`1049
`
`1050
`
`1051
`
`1052
`
`U.S. Patent No. 6,188,717 to Stefan Kaiser, entitled “Method of
`Simultaneous Radio Transmission of Digital Data Between a
`Plurality of Subscriber Stations and a Base Station”
`
`U.S. Patent No. 6,711,120 to Rajiv Laroia, entitled “Orthogonal
`Frequency Division Multiplexing Based Spread Spectrum Multiple
`Access”
`
`U.S. Patent No. 6,553,019 to Rajiv Laroia, entitled “Communications
`System Employing Orthogonal Frequency Division Multiplexing
`Based Spread Spectrum Multiple Access”
`
`U.S. Patent No 6,922,388 to Rajiv Laroia, entitled “Signal
`Construction, Detection and Estimation For Uplink Timing
`Synchronization and Access Control in a Multi-Access Wireless
`Communication System”
`
`vi
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`Ex. No.
`1053
`
`Description of Document
`U.S. Patent Appl. Pub. No. 2001/0021182 to Takashi Wakutsu,
`entitled “Transmitter Apparatus and Receiver Apparatus and Base
`Station Making Use of Orthogonal Frequency Division Multiplexing
`and Spectrum Spreading”
`
`1054
`
`1055
`
`1056
`
`1057
`1058
`1059
`
`1060
`
`1061
`
`1062
`
`1063
`1064
`
`1065
`1066
`
`Laurie Ann Toupin, Flash-OFDM
`Communications into the Main Stream
`
`‘Hops’ Wireless Data
`
`U.S. Provisional Patent Application No. 60/167,179 to Devon Rolf,
`filed November 23, 1999, entitled “System, Method, and Device for
`Playing Recorded Music on a Wireless Communications Device”
`
`Redline Comparison of U.S. Patent No. 7,065,342 and U.S.
`Provisional Patent Application No. 60/167,179
`
`Excerpts from Andy Rathbone, MP3 for Dummies (1999)
`
`Excerpts from Random House Webster’s College Dictionary (1999)
`
`U.S. Patent No. 341,214 to Chichester A. Bell et al., entitled
`“Recording and Reproducing Speech and Other Sounds”
`
`U.S. Patent No. 8,996,698 to James P. Tagg, entitled “Cooperative
`Network for Mobile Internet Access”
`
`Bob O’Hara et al., 802.11 Handbook: A Designer’s Companion,
`IEEE Press (1999)
`
`U.S. Patent No. 6,233,682 to Bernard Fritsch, entitled “Distribution
`of Musical Products by a Web Site Vendor Over the Internet”
`
`Declaration of Al Petrick
`
`Bryan E. Braswell, Modeling Data Rate Agility in the IEEE 802.11a
`Wireless Local Area Networking Protocol (Mar. 2001)
`
`Biography of Mark R. Weinstein
`
`Declaration of Mark R. Weinstein ISO Unopposed Motion for
`Admission Pro Hac Vice
`
`vii
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`Ex. No.
`1067
`1068
`
`
`
`Description of Document
`Biography of Yuan Liang
`
`Declaration of Yuan Liang ISO Unopposed Motion for Admission
`Pro Hac Vice
`
`viii
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`I.
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`Case IPR2017-00550
`Patent 9,037,502
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`INTRODUCTION
`The Petition established that claims 1-3 and 7 are obvious over Rolf in view
`
`of Gatherer, Fritsch, and Frodigh; that claim 5 is obvious over Rolf in view of
`
`Gatherer, Fritsch and Frodigh, in further view of Yukie; that claims 1-3 and 7 are
`
`obvious over Rolf in view of Gatherer and Fritsch, in further view of O’Hara and
`
`Tagg; and that claim 5 is obvious over Rolf in view of Gatherer, Fritsch, O’Hara,
`
`and Tagg, in further view of Yukie. The Petition was supported by extensive
`
`evidence, including dozens of contemporaneous documents and a comprehensive
`
`expert declaration from Dr. Lavian. The Patent Owner did not depose or cross-
`
`examine Dr. Lavian, nor did the Patent Owner submit any expert declaration of its
`
`own. The evidence set forth in the Petition is thus uncontested.
`
`The Patent Owner’s Response instead recycles the same failed arguments the
`
`Board and/or the Federal Circuit have rejected. With respect to the OFDM
`
`limitations, for example, the Patent Owner asserts that a person of ordinary skill in
`
`the art would not have been motivated to utilize OFDM with the cell phone of Rolf.
`
`But the Board rejected this same argument in its Final Written Decision in
`
`MindGeek, S.A.R.L. et al. v. Skky, Inc., IPR2014-01236, which was affirmed by the
`
`Federal Circuit in Skky, Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014 (Fed. Cir. 2017).
`
`As the Board recently observed in a related proceeding, “in MindGeek, the Board
`
`and the Federal Circuit similarly concluded that it would have been obvious to utilize
`
`1
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`OFDM for Rolf’s system of delivering music files to a cellular telephone.”
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`Case IPR2017-00550
`Patent 9,037,502
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`(IPR2017-00550, Paper 11, at 10.)
`
`The Patent Owner also recycles arguments—almost verbatim—from its
`
`Preliminary Response, adding little to no analysis responsive to the Board’s stated
`
`rationales for rejecting those arguments in the Institution Decision.1 For example,
`
`the Patent Owner repeats apparent claim construction arguments from its
`
`Preliminary Response with respect to the phrase “processing,” which the Board
`
`correctly rejected in its Institution Decision. The Patent Owner also raises the same
`
`conclusory assertions attacking each reference individually, ignoring the well-
`
`supported reasons for combining the references’ teachings that the Petition presented
`
`and the Institution Decision appreciated. The Patent Owner does not acknowledge,
`
`let alone address, the Board’s treatment of its arguments in its Institution Decision.
`
`The Patent Owner has thus offered nothing of substance to justify a departure from
`
`the Institution Decision.
`
`With respect to the “digital signal processor” (DSP) limitation, the Patent
`
`Owner repeats the assertion that Rolf and Gatherer cannot be combined because Rolf
`
`
`1 For the Board’s reference, a redline showing the near-complete overlap of the
`
`substantive arguments from the Preliminary Response to the Response is submitted
`
`herewith as Exhibit 1073.
`
`2
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`is directed to a 3G wireless communication system and Gatherer to a GSM/2G
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`Case IPR2017-00550
`Patent 9,037,502
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`system. Similarly for the “OFDM” limitation, the Patent Owner again asserts that
`
`Rolf cannot be combined with either Frodigh or O’Hara and Tagg, based on
`
`unauthenticated documents stating
`
`that
`
`the European Telecommunications
`
`Standards Institute’s (ETSI’s) Special Mobile Group (SMG) decided to use CDMA
`
`as the basis for the 3G standard. But as the Board correctly and repeatedly found,
`
`these arguments are based on gross mischaracterizations of the references and a
`
`misunderstanding of the significance of the SMG’s decision. Patent Owner adds no
`
`new evidence or argument to the record on these points.
`
`For the reasons set forth below and in the Petition, the Petitioners respectfully
`
`requests that the Board find claims 1-3, 5, and 7 unpatentable based on all instituted
`
`grounds.
`
`II.
`
`PATENT OWNER’S CONSTITUTIONAL ARGUMENTS ARE WITHOUT MERIT
`The Patent Owner devotes the first seven pages of its Response to asserting
`
`that inter partes review (IPR) is unconstitutional. The Federal Circuit thoroughly
`
`considered and rejected those arguments in MCM Portfolio LLC v. Hewlett-Packard
`
`Co., 812 F.3d 1284 (Fed. Cir. 2015), cert. denied, 137 S. Ct. 292 (2016). The
`
`Petitioners are obviously aware that the Supreme Court in Oil States has taken up
`
`the issue of the constitutionality of the IPR procedure. But until a decision in Oil
`
`States issues, MCM Portfolio remains controlling law and the IPR procedure is
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`3
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`constitutional.
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`Case IPR2017-00550
`Patent 9,037,502
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`III. CLAIMS 1-3, 5, AND 7 OF THE ’502 PATENT ARE UNPATENTABLE
`A.
`“Digital Signal Processor”
`Claim 1 recites a “wherein the cellphone comprises a receiver and one or more
`
`processors including a digital signal processor.” The Petition explained that “[i]t
`
`would have been obvious to a person of ordinary skill in the art to combine Rolf with
`
`Gatherer, predictably resulting in the cell phone 12 of Rolf having a digital signal
`
`processor.” (Petition, at 27.) In an attempt to find fault with this straightforward
`
`combination, the Patent Owner mischaracterizes Rolf as being directed to 3G
`
`wireless, and Gatherer as being directed to GSM/2G wireless. From these false
`
`premises, the Patent Owner argues that a person of ordinary skill “would not be
`
`motivated to apply GSM or 2G principles to 3G knowing that the technologies could
`
`evolve in very different ways.” (Response, at 30.) This argument should be rejected.
`
`The Board correctly recognized that there is “no basis to suggest that the
`
`skilled artisan would understand that Rolf’s system could only be implemented on a
`
`3G/CDMA cellular network.” (Institution Decision, at 9 (emphasis in original).)
`
`Indeed, Rolf makes clear that data can be transmitted over a “packet switched
`
`network,” which need not be 3G. (Rolf, 3:21-25, 13:13-15.) Likewise, nothing in
`
`Gatherer limits the applicability of DSPs to 2G systems. Although Gatherer
`
`discusses the use of DSPs in 2G/GSM systems in existence at the time of its
`
`4
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`publication, Gatherer also provides extensive discussion on the use of DSPs in 3G
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`Case IPR2017-00550
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`systems. (E.g., Gatherer, p.85 (“With the advent of wireless data applications and
`
`the increased bandwidth of 3G, we expect this trend to accelerate.”), p.86 (“As the
`
`industry shifts from second-generation to 3G wireless we see the percentage of the
`
`physical layer MIPS that reside in the DSP going from essentially 100 percent in
`
`today’s technology for GSM to about 10 percent for wideband code-division
`
`multiple access (WCDMA).” (emphasis added)), p.87 (“In this section we discuss
`
`how coprocessors can complement the function of programmable DSPs in the
`
`implementation of a flexible 3G platform.”) (emphasis added), p.89, (“We estimate
`
`that to support 240 3G voice channels… would require a 45K gate coprocessor and
`
`only 6 MHz of DSP processing on a C6x.”).) As such, far from dissuading a person
`
`of ordinary skill from using a DSP with the cell phone of Rolf, Gatherer’s extensive
`
`discussion on the use of DSPs for future 3G technology provides a further motivation
`
`to combine with a 3G-compatible system. Thus, in attempting to draw a false
`
`distinction between the technologies in Rolf and Gatherer, the Patent Owner has
`
`highlighted yet another express motivation to combine.2
`
`
`2 Indeed, even the very sentence from Gatherer the Patent Owner cites to argue that
`
`“the application of GSM principles to 3G technology is ‘debatable’” (Response, at
`
`30), Gatherer goes on to suggest the existence of a close kinship between GSM and
`
`5
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`Case IPR2017-00550
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`The Patent Owner further asserts that because “Gatherer does not explain the
`
`relationship between a digital signal processor and the remaining parts of the cell
`
`phone, or how a digital signal processor would be integrated into the device
`
`disclosed by Rolf,” Petitioners have not “argued why Rolf and Gatherer combined
`
`fully disclose this claim element” and “have failed to prove the claim is obvious.”
`
`(Response, at 29-30.) But the Petition provided an extensive explanation of how the
`
`DSP limitation is rendered obvious by Rolf and Gatherer. (Petition, at 27-30.) And
`
`as the panel in a related proceeding emphasized in response to a similar argument
`
`by the Patent Owner, “the challenged claims do not recite an explicit integration of
`
`the claimed DSP with any other user device elements.” (IPR2017-00687, Paper 9,
`
`at 14.) The law thus does not require a detailed explanation of how the DSP in
`
`Gatherer would be bodily or physically incorporated into the cell phone circuitry in
`
`Rolf. Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d
`
`1373, 1381 (Fed. Cir. 2016) (“The test for obviousness is not whether the features
`
`
`3G technology with respect to the use of DSPs in cellular telephony. (Gatherer, p.84,
`
`(“The assumption is, of course, that third-generation cellular (3G) products will
`
`evolve in a similar manner to GSM, which is in itself debatable, but we believe that
`
`history does have some good points to make with respect to 3G.”) (emphasis
`
`added).)
`
`6
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`of a secondary reference may be bodily incorporated into the structure of the primary
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`Case IPR2017-00550
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`reference but rather whether a skilled artisan would have been motivated to combine
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`the teachings of the prior art references to achieve the claimed invention.”) (internal
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`quotations and citations omitted)).
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`Further, the Patent Owner’s assertion that “Gatherer does not explain the
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`relationship between a digital signal processor and the remaining parts of the cell
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`phone, or how a digital signal processor would be integrated into the device
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`disclosed by Rolf” (Response, at 29-30) is simply false. For example, Gatherer
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`provides “[a] functional block diagram of a GSM phone” in Figure 1, reproduced
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`below.
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`(Gatherer, p.85 (Fig. 1).) This block diagram depicts the relationship between the
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`DSP and other parts of a cell phone, and identifies the cell phone functions
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`performed by the DSP. Indeed, a primary focus of the Gatherer reference is to
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`explore the relationship between the DSP and wireless handsets and all the different
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`ways that DSPs had been, and could be, integrated into cell phones. (E.g., id., p.84.)
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`The Patent Owner further argues that “Petitioners have not provided sufficient
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`evidence that one of skill would have a reasonable expectation of success that the
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`proposed combination would work.” (Response, at 31.) This argument ignores the
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`extensive explanation that the Petition provided on this subject. The Petition
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`explained, for example, that DSPs were widely-available, off-the-shelf components
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`that had already been incorporated into cellular phones. (Petition, at 28-29 (citing
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`Lavian, ¶93).) Dr. Lavian explained in his unrebutted declaration that off-the-shelf
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`DSPs had existed since at least the early 1980s, and that “[b]y the time of the alleged
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`invention, DSPs were standard components in cell phones.” (Lavian, ¶¶27, 29.) Dr.
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`Lavian also cited several contemporaneous publications (in addition to Gatherer)
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`demonstrated that DSPs had already been deployed for precisely the purposes
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`contemplated by the claims. (Id., ¶¶28, 29.) Dr. Lavian explained that the prior art
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`references cited in the combination provided sufficient detail to allow the
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`combination to be practiced without undue experimentation, and that one of ordinary
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`skill certainly “could have done so, due to the maturity of those technologies” and
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`the fact that the technologies were “well-known” and “subject of extensive public
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`documentation.” (Id., ¶¶140, 143, 145.) Indeed, Gatherer explains in detail how
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`DSPs could be—and historically had been—successfully (in fact, “pervasive[ly]”)
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`included in cell phones. (E.g., Gatherer, Abstract (“Programmable DSPs are
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`pervasive in the wireless handset market for digital cellular telephony.”).) In sum,
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`the record contains overwhelming evidence that the combination of Rolf and
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`Gatherer would have been successful. The Patent Owner tellingly submitted no
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`evidence to the contrary.
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`B.
`“OFDM”
`The Patent Owner’s arguments with respect to the OFDM limitation do little
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`more than rehash the same arguments rejected by the Board’s decision in IPR2014-
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`01236, which the Federal Circuit affirmed in Skky, Inc. v. MindGeek, S.A.R.L., 859
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`F.3d 1014 (Fed. Cir. 2017). As the Board observed, “in MindGeek, the Board and
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`the Federal Circuit similarly concluded that it would have been obvious to utilize
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`OFDM for Rolf’s system of delivering music files to a cellular telephone.”
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`(Institution Decision, at 10.)
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`Undeterred by its previous failures, the Patent Owner again argues that there
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`would have been no motivation to apply an OFDM transmission scheme to Rolf.
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`But this time, the Patent Owner offers no expert testimony or other evidence to
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`support its arguments. The gist of the Patent Owner’s argument is:
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`Rolf and Frodigh are premised on two entirely different systems of
`network communication. The invention in Rolf relies on a 3G mobile
`network which uses Code Division Multiple Access (CDMA), not
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`OFDM. Frodigh teaches an allocation method specifically directed to
`OFDM and is not applicable to 3G. Thus, a person of ordinary skill
`would not be motivated to combine the two references.
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`This is especially true because, in the late 1990s, persons of
`extraordinary skill in the art chose CDMA, and rejected OFDM, for use
`in the 3G standard.
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`(Response, at 32 (citation omitted); see also id. at 35.)3
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`There are a number of flaws with the Patent Owner’s argument. As this Board
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`has found (and discussed further above), there is “no basis to suggest that the skilled
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`3 These arguments are substantially identical to the arguments previously presented
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`and rejected by the Board and Federal Circuit in MindGeek. (See IPR2014-01236,
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`Paper 21, Ex. 1070, at 53 (“Rolf explicitly teaches the use of 3G modulation
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`protocols instead of OFDM. Indeed, the standards setting organization that created
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`the 3G standard considered, and ultimately rejected, using OFDM in 3G. Because
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`3G does not use an OFDM modulation scheme, Rolf teaches away from the process
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`in OFDM/FM.... Given that the modulation schemes of OFDM and 3G were not
`
`compatible and that OFDM was rejected during the creation of 3G, these references
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`teach away from the proposed combination by Petitioners.”) (citations omitted);
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`Appellant Skky, Inc.’s Correct Opening Brief, Ex. 1071, at 67 (similar arguments);
`
`Appellant Skky, Inc.’s Reply Brief, Ex. 1072, at 33-34 (similar arguments).)
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`artisan would understand that Rolf’s system could only be implemented on a
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`3G/CDMA cellular network.” (Institution Decision, at 14 (emphasis in original).)
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`Moreover, as the panel in a related proceeding has articulated in response to this
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`same argument by the Patent Owner, “persons of extraordinary skill in the art do not
`
`provide the proper frame of reference from which to view obviousness.” (IPR2017-
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`00687, Paper 9, at 15 (quotation marks omitted; emphasis added).) And as this
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`Board observed, “the evidence cited by Patent Owner regarding the SMG’s decision
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`to use CDMA in the 3G standard indicates that there were advantages and drawbacks
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`to both OFDM and CDMA.” (Institution Decision, at 9 (citing Ex. 2004, 1-4).)
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`In fact, the documents submitted by the Patent Owner relating to the SMG’s
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`decision (which are unauthenticated and inadmissible) further support Petitioners’
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`rationale that OFDM, as a “multiple access” scheme, would have been obvious to
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`try. (Petition, at 32.) For example, one document cited by the Patent Owner states
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`that OFDM modulation is “robust[]” and “performs well in all kind [sic] of
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`environments, and could be quite efficient in presence of large delay spread.”
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`(Ex. 2004, at 1.) Although the document states that CDMA was eventually chosen,
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`the evaluation and comparison of different multiple access schemes, including
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`OFDM, WB-TDMA, TD/CDMA, and W-CDMA (Ex. 2004, at 1-4), confirms that
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`OFDM would have been obvious to try because it was one of a finite number of
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`identified, predictable solutions, and that its application to a cellular system would
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`have had a reasonable expectation of success. (Petition, at 32; Lavian, ¶99.)
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`The Patent Owner has also baselessly asserted that “Petitioners have not
`
`provided sufficient evidence that one of skill would have a reasonable expectation
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`of success that the proposed combination would work.” (See Response, at 31.)
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`Indeed, the Petition explained that “a person of ordinary skill in the art would have
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`had every expectation of success in combining Frodigh with Rolf in the manner
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`described above,” referring to the extensive analysis provided earlier in the Petition.
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`(Petition, at 32; Lavian, ¶99.) The Petition explained that the use of OFDM as a
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`transmission scheme dates back to the 1960s, and by 2001, was well-known.
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`(Petition, at 15 (citing Lavian, ¶35).) The accompanying declaration of Dr. Lavian
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`identified nearly two dozen references dated prior to June 2001 describing the use
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`of OFDM in cellular or wireless communication systems. (Lavian, ¶¶36-39; see also
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`Petition, at 15-16.) One of those references, entitled “Multi-Carrier Digital
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`Communications: Theory and Applications of OFDM,” stated in no ambiguous
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`terms that “OFDM has been particularly successful in numerous wireless
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`applications.” (Ex. 1030, p.14 (emphasis added); see also Petition, at 16 (quoting
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`Ex. 1030); Lavian, ¶37 (same).) Dr. Lavian also explained that Rolf and Frodigh
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`provide sufficient detail to allow the combination to be practiced without undue
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`experimentation, and that one of ordinary skill in the art certainly “could have done
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`so, due to the maturity of those technologies” and the fact that the technologies were
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`“well-known” and “subject of extensive public documentation.” (Lavian, ¶¶140,
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`143, 145.)
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`The record is thus replete with evidence that a person of ordinary skill in the
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`art would have had every expectation that Rolf and Frodigh could have been
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`successfully combined, and the Patent Owner has submitted no evidence showing
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`otherwise.
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`The Patent Owner’s remaining arguments attempt to impermissibly attack
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`Frodigh individually, ignoring its combination with other references. See In re
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`Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot
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`be established by attacking references individually where the rejection is based upon
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`the teachings of a combination of references.”); Soft Gel Techs., Inc. v. Jarrow
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`Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017). For example, the Patent
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`Owner characterizes “[t]he goal in the Frodigh system” as “to provide fewer dropped
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`calls and calls with better quality,” and thus argues that “Frodigh is not relevant to
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`the claimed method.” (Response, at 31-32.) But, as the Board has stated in a related
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`case in response to this same argument by the Patent Owner, “[e]ven if correct, the
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`fact that Frodigh is directed to solving a different problem does not discount
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`Petitioner’s asserted motivation for making the combination or prevent its usage in
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`an obviousness combination with Rolf. Prior art references must be considered as a
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`whole for all that they teach, regardless of the specific problems to which they are
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`directed.” (IPR2017-00089, Paper 7, at 14.) Frodigh describes in detail the use of
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`OFDM modulation for cellular systems and its advantages, and further recognized
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`that “data,” in addition to “voice,” can be received by a mobile device over the
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`cellular connection. (Petition, at 29-32 (citing Frodigh, 1:59-2:18, 7
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