Trials@uspto.gov
`571-272-7822
`
`
`Paper 14
`Entered: July 28, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SPRINT SPECTRUM, L.P.,
`Petitioner,
`
`v.
`
`TC TECHNOLOGY LLC
`Patent Owner.
`____________
`
`Case IPR2017-00771
`Patent 5,815,488
`____________
`
`
`Before JEFFREY S. SMITH, THOMAS L. GIANNETTI, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 14
`Entered: July 28, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SPRINT SPECTRUM, L.P.,
`Petitioner,
`
`v.
`
`TC TECHNOLOGY LLC
`Patent Owner.
`____________
`
`Case IPR2017-00771
`Patent 5,815,488
`____________
`
`
`Before JEFFREY S. SMITH, THOMAS L. GIANNETTI, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-00771
`Patent 5,815,488
`
`
`
`I. INTRODUCTION
`Petitioner, Sprint Spectrum, L.P., filed a Petition for inter partes
`review of claims 1 and 2 of U.S. Patent No. 5,815,488 (Ex. 1001, “the ’488
`patent”). Paper 1 (“Pet.”). Patent Owner, TC Technology LLC, filed a
`Preliminary Response. Paper 9 (“Prelim. Resp.”). Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
`Upon consideration of the Petition and the Preliminary Response, we
`are not persuaded Petitioner has demonstrated a reasonable likelihood that it
`would prevail in establishing the unpatentability of claims 1 and 2 of the
`’488 patent. Accordingly, we do not institute an inter partes review.
`
`A. Related Matters
`Both parties identify that the ’488 patent was asserted against Sprint
`Spectrum, L.P., in TC Technology LLC v. Sprint Corp. & Sprint Spectrum,
`L.P., Case No. 1:16-cv-153 (D. Del.), filed March 10, 2016. Pet. 2; Paper 6.
`
`B. The ’488 Patent
`The ’488 patent is titled “Multiple User Access Method Using OFDM”
`
`(Orthogonal Frequency Division Multiplexing), and relates generally to a
`communications method permitting multiple users to simultaneously access
`an RF channel with a high degree of immunity to channel impairments.
`Ex. 1001, 1:6–9. At each remote location, data to be transmitted is coded
`by translating each group of one or more bits of data into a transform
`coefficient associated with a frequency in a particular subset of orthonormal
`
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`IPR2017-00771
`Patent 5,815,488
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`baseband frequencies allocated to each remote location. Id. at Abstract. The
`particular subset of orthonormal baseband frequencies allocated to each
`location is chosen from a set of orthonormal baseband frequencies. Id. At
`each remote location, an electronic processor performs an inverse orthogonal
`transform on the transform coefficients to obtain a block of time domain
`data. Id. The time domain data is then modulated on a carrier for
`transmission to the central location. Id. The data is received from the
`plurality of remote locations, and demodulated to obtain time domain data.
`Id. The central location keeps track of which baseband frequencies are
`allocated to which remote location. Id.
`
`C. Illustrative Claim
`Claim 1 is illustrative of the claimed subject matter:
`1. A method for enabling a plurality of remote
`locations to transmit data to a central location comprising the
`steps of:
`at each remote location, coding data to be transmitted
`by translating each group of one or more bits of said data into
`a transform coefficient associated with a particular baseband
`frequency in a particular subset of orthogonal baseband
`frequencies allocated to the remote location, the particular
`subset of orthogonal baseband frequencies allocated to each
`remote location being chosen from a set of orthogonal
`baseband frequencies, the subsets of baseband frequencies
`allocated to each remote location being mutually exclusive;
`at each remote location, using an electronic processor,
`performing an inverse orthogonal transformation on said
`transform coefficients to obtain a block of time domain data;
`at each remote location, utilizing a modulator to
`modulate said block of time domain data onto a carrier signal
`for transmission to said central location, said carrier signal
`having the same carrier frequency for each remote location;
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`IPR2017-00771
`Patent 5,815,488
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`
`receiving at said central location from one or more of
`said remote locations, one or more blocks of time domain data
`modulated on one or more of said carrier signals;
`using a demodulator, demodulating said one or more
`blocks of time domain data from the carrier frequency signal.
`performing said orthogonal transformation on said
`demodulated time domain data to reconstruct said transform
`coefficients, and
`translating said transform coefficients into said data to
`be translated from each remote location.
`
`Ex. 1001, 10:47–11:10.
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1 and 2 of the ’488 patent are
`unpatentable based on the following specific grounds:
`
`Reference(s)
`Fattouche1
`Reiners2 and Cost3
`Cioffi4 and Pommier5
`
`Basis
` § 103
` § 103
` § 103
`
` Pet. 16.
`
`
`
`
`
`1 European Patent Application 0562868 A2, filed March 25, 1993, published
`September 29, 1993 (Ex. 1004).
`2 C. Reiners et al., “Multicarrier Transmission Technique in Cellular Mobile
`Communications Systems,” IEEE 1994 (Ex. 1005).
`3 COST 207: Digital Land Mobile Radio Communications, Final Report,
`Commission of the European Communities, 1989 (Ex. 1006).
`4 US Patent No. 5,625,651 filed June 2, 1994, issued April 29, 1997
`(Ex. 1007).
`5 European Patent Application 0616445 B1 filed March 17, 1994, published
`September 21, 1994 (Ex. 1008).
`
`4
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`IPR2017-00771
`Patent 5,815,488
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`II. DISCUSSION
`
`A. Claim Construction
`The Board interprets claims of an expired patent using the principles
`set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`banc). See 37 C.F.R. § 42.5(b); see also In re Rambus Inc., 694 F.3d 42, 46
`(Fed. Cir. 2012) (“While claims are generally given their broadest possible
`scope during prosecution, the Board’s review of the claims of an expired
`patent is similar to that of a district court’s review.”) (internal citation
`omitted) (“Phillips” standard). Under this approach, claim terms are given
`their ordinary and customary meaning, as would be understood by a person
`of ordinary skill in the art, at the time of the invention, in light of the
`language of the claims, the specification, and the prosecution history of
`record. Phillips, 415 F.3d at 1313.
`Petitioner and Patent Owner do not dispute any claim constructions.
`Prelim. Resp. 14. For purposes of this decision, we determine no terms need
`an explicit construction to resolve a controversy at this preliminary stage.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (only those terms which are in controversy need to be construed and
`only to the extent necessary to resolve the controversy).
`
`B. Asserted Obviousness over Fattouche
`Petitioner contends that claims 1 and 2 are unpatentable under
`35 U.S.C. § 103 over Fattouche. Pet. 16–31.
`
`1. Fattouche (Ex. 1004)
`Fattouche provides for multiple access between transceivers in
`
`wireless communication using ODFM spread spectrum. Ex. 1004, Title. A
`first frame of information is multiplexed over a number of wideband
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`IPR2017-00771
`Patent 5,815,488
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`frequency bands at a first transceiver, and the information is transmitted to a
`second transceiver. Id. at Abstract. Figure 2 of Fattouche is reproduced
`below.
`
`
`
`Figure 2 of Fattouche above shows the use of available frequencies
`for use with cellular applications. Id. at 3:40–41. A 100 MHz band is
`divided into 4096 points, plus two tail slots, to implement wideband
`modulation in a cellular system with a plurality of portables and one or more
`base stations. Id. at 6:5–7. The 4096 points represent N voice channels (vc).
`Id. at 6:7. Each point represents a Differential eight Phase Shift Keying
`Symbol. Id. at 6:7–8. Figure 4 of Fattouche is reproduced below.
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`Patent 5,815,488
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`Figure 4 above shows a Time Division Duplex protocol used for
`exchange of information between the portable and the base station. Id. at
`6:36–37. A portable transmits frame 410 over one vc slot. Id. at 6:38. The
`frames 440 labeled “frame 2 . . . frame 21” are frames that may be
`transmitted to other portables. Id. at 6:53–54. For example, while one base
`station is processing its data, six other base stations can communicate to
`their corresponding portables in a Time Division Multiple Access (TDMA)
`fashion using the same frequency bands. Id. at 6:54–56.
`
`2. Analysis
`Claim 1 recites the following “translating” step:
`at each remote location, coding data to be transmitted by
`translating each group of one or more bits of said data into a
`transform coefficient associated with a particular baseband
`frequency in a particular subset of orthogonal baseband
`frequencies allocated to the remote location . . . the subsets of
`baseband frequencies allocated to each remote location being
`mutually exclusive.
`Ex. 1001, 10:49–53 (emphasis added). Claim 2 recites a similar limitation.
`Id. at 11:13–17. Petitioner contends that Fattouche teaches this limitation in
`disclosing that each portable transmits information over one vc slot. Pet. 18
`(citing Ex. 1004, 6:38). Petitioner also asserts that Fattouche “teaches the
`portables use the set of N vc slots depicted in Figure 2, each vc representing
`a particular subset of the baseband frequencies, in accordance with
`frequency division multiple access (“FDMA”). Id. Petitioner relies on
`testimony of Dr. Singer to support its argument that FDMA denotes
`assigning multiple users exclusive frequencies within a frequency band. Id.
`(citing Ex. 1002 ¶ 86).
`
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`
`Patent Owner responds that Petitioner has failed to demonstrate that
`Fattouche meets this limitation. Patent Owner argues “Petitioner . . . did not
`demonstrate that Fattouche expressly or inherently discloses its portable
`units transmitting data at the same time to the central location on the same
`carrier frequency.” Pet. 16 (footnote omitted). Patent Owner contends
`further that Petitioner has “mixed and matched incompatible embodiments
`from Fattouche” without proper explanation. Id.
`Thus, Patent Owner argues that one of Fattouche’s embodiments
`“defines a frame as encompassing all of the baseband frequencies and
`encodes and transmits the whole frame (all of the baseband frequencies,
`rather than a subset) at one time.” Id. at 17. According to Patent Owner,
`Petitioner relies on this “first, full-frame embodiment” when addressing the
`translating step. Id. However, Patent Owner contends, the claims require
`“allocating mutually exclusive subsets of baseband frequencies to the
`remotes.” Id. at 19. When addressing this limitation, “Petitioner abandoned
`the above-discussed full-sized frame embodiment, relying instead on a
`different and incompatible embodiment” in which the portable transmits
`frame 410 over one slot. Id. at 20 (citing Ex. 1004, 6:37–38).
`Patent Owner relies on testimony of Dr. Haas to support its argument
`that Fattouche’s teaching of transmitting a frame 410 over one vc slot is not
`compatible with Fattouche’s teaching of transmitting a frame that
`encompasses all of the vc slots shown in Figure 2. Prelim. Resp. 20 (citing
`Ex. 1004, 6:37–38, Fig. 2; Ex. 2001 ¶¶ 36–47, 53–57). Dr. Haas testifies
`that:
`
`Fattouche states, “the portable transmits a frame 410 over one vc
`slot. See the discussion in relation to Figure 5a below.”
`Fattouche 6:38. This is either a different embodiment than
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`8
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`IPR2017-00771
`Patent 5,815,488
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`
`Figure 2 above or a mistake because in Figure 2 a “frame” equals
`all the N vc slots, so transmitting a “frame 410 over one vc slot”
`does not make sense. Further, certain portions of Fattouche,
`which I explain further below, describe Figure 2’s frame in more
`detail and disclose that a frame is all 4096 points (i.e., all N vc
`slots) and that the full frame is transmitted by a single transmitter.
`In
`fact, Fattouche’s detailed description
`(including
`its
`explanation of Figure 5) also describes transmitting a frame over
`one time slot, and not one vc slot . . . .
`Ex. 2001 ¶ 37. Dr. Haas further testifies that Fattouche teaches each
`portable transmitting one frame at a time using the Time Division Duplex
`operation illustrated in Figure 4. Ex. 2001 ¶¶ 44–45.
`We are persuaded by the testimony of Dr. Haas that, taken literally,
`the meaning of Fattouche’s description of transmitting a frame 410 having
`multiple vc slots over one vc slot “does not make sense.” We are also
`persuaded by the testimony of Dr. Haas that the description of transmitting a
`frame 410 over one vc slot in Fattouche likely means transmitting one frame
`over one time slot, using a Time Division operation, as shown in Figure 4 of
`Fattouche. In light of this expert testimony, we are not persuaded by
`Petitioner’s explanation of how Fattouche teaches that a person of ordinary
`skill in the art would transmit a frame of N voice channel slots as shown in
`Figure 2 of Fattouche over one voice channel slot as discussed on Page 6,
`line 38 of Fattouche. Petitioner, therefore, does not sufficiently show that
`Fattouche teaches “the subsets of baseband frequencies allocated to each
`remote location being mutually exclusive” as claimed in the “translating”
`step.
` On the record before us, we determine the Petition and supporting
`evidence do not adequately establish a reasonable likelihood that Petitioner
`would prevail on its assertion that Fattouche renders claims 1 and 2 obvious.
`
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`
`C. Asserted Obviousness over Reiners and Cost
`Petitioner contends that claims 1 and 2 are obvious over Reiners and
`Cost. Petitioner contends that Reiners (Ex. 1005), an article, was published
`at a vehicular technology conference in Stockholm on June 8, 1994. Pet. iii,
`6. This is more than a year before the September 28, 1995, filing date of the
`’488 patent, and would, therefore, qualify Reiners as a prior art reference
`under 35 U.S.C. § 102(b). Patent Owner contends that Petitioner’s assertion
`that Reiners was published on June 8, 1994, lacks any supporting evidence
`or reasoning, and Petitioner therefore has not established that Reiners is a
`printed publication under 35 U.S.C. § 102(b). Prelim. Resp. 35.
`To qualify as a printed publication within the meaning of § 102, a
`reference “must have been sufficiently accessible to the public interested in
`the art.” In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (quoting
`Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir.
`1988)). “Because there are many ways in which a reference may be
`disseminated to the interested public, ‘public accessibility’ has been called
`the touchstone in determining whether a reference constitutes a ‘printed
`publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–
`99 (Fed. Cir. 1986). “The determination of whether a reference is a ‘printed
`publication’ under 35 U.S.C. § 102 involves a case-by-case inquiry into the
`facts and circumstances surrounding the reference’s disclosure to members
`of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
`We are persuaded that Petitioner has failed to meet its burden of
`establishing Reiners as prior art. We observe that the footer on the first page
`of Reiners contains the following copyright notice: 0-7803-1927-3/94/$4.00
`© 1994 IEEE. Ex. 1004, 1645. However, the copyright notice, by itself,
`
`10
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`IPR2017-00771
`Patent 5,815,488
`
`does not indicate that Reiners was publicly accessible more than one year
`prior to September 28, 1995. See In re Lister, 583 F.3d 1307, 1316 (Fed.
`Cir. 2009) (vacating and remanding the Board of Patent Appeals and
`Interferences’ decision that a prior art reference registered with the U.S.
`Copyright Office and included in the Westlaw and Dialog databases was
`publicly accessible for the purposes of 35 U.S.C. § 102(b)). We conclude
`that Petitioner has provided no persuasive evidence showing that Reiners
`was publicly accessible at the vehicular technology conference held in
`Stockholm on June 8, 1994,
`Because Petitioner has not sufficiently demonstrated that Reiners is
`prior art to the ’488 patent, on the record before us, we determine the
`Petition and supporting evidence do not adequately establish a reasonable
`likelihood that the combination of Reiners and Cost renders claims 1 and 2
`obvious.
`
`D. Asserted Obviousness over Cioffi and Pommier
`Petitioner contends that claims 1 and 2 are obvious over the
`combination of Cioffi and Pommier (Ex. 1008). Pommier is a European
`patent based on European Patent Application No. 0616445 A1. According
`to Petitioner, Pommier was published on September 21, 1994 (the
`publication date of the application), and therefore qualifies as prior art under
`35 U.S.C. § 102(b). Pet. 6. Patent Owner asserts that the issued Pommier
`patent, which is Exhibit 1008, was published on May 31, 2000, and therefore
`does not qualify as prior art. Prelim. Resp. 55.
`
`We agree with Patent Owner that Petitioner has failed to establish the
`Pommier patent as prior art. Although Petitioner cites the publication date
`of the Pommier application (EP 0616445 A1) to establish that Pommier is
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`IPR2017-00771
`Patent 5,815,488
`
`prior art, Petitioner does not provide a copy of this application. Petitioner
`relies, instead, on the issued Pommier patent in its analysis and has
`submitted the patent (EP 0616445 B1) as Exhibit 1008. The record before
`us, therefore, does not contain the published application EP 0616445 A1, nor
`does the record contain an English language translation of EP 0616445 A1.
`The only Pommier reference on the record before us is EP 0616445 B1,
`published May 31, 2000, which is not prior art. 6
`Because Petitioner has not sufficiently demonstrated that Pommier is
`prior art to the ’488 patent, on the record before us, we determine the
`Petition and supporting evidence do not adequately establish a reasonable
`likelihood that the combination of Cioffi and Pommier renders claims 1 and
`2 obvious.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has failed to
`
`demonstrate a reasonable likelihood of prevailing on its challenge to the
`patentability of claims 1 and 2 of the ’488 patent.
`
`IV. ORDER
`
`
`
`Accordingly, it is
`ORDERED that the Petition is denied as to all challenged claims of
`the ’488 patent.
`
`
`
`
`6 Our rules require all evidence to be provided in the form of an exhibit.
`37 C.F.R. § 42.63(a). Further, a translation is required for foreign language
`documents. 37 C.F.R § 42.63(b).
`
`12
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`IPR2017-00771
`Patent 5,815,488
`
`
`
`
`
`PETITIONER:
`James Murphy
`Margaux Savee
`POLSINELLI PC
`jpmurphy@polsinelli.com
`msavee@polsinelli.com
`
`Robert H. Reckers
`Christine Guastello
`Elena McFarland
`SHOOK, HARDY & BACON L.L.P.
`rreckers@shb.com
`cguastello@shb.com
`emcfarland@shb.com
`
`
`PATENT OWNER:
`Lawrence Gotts
`Jon Strang
`Saswat Misra
`LATHAM & WATKINS LLP
`lawrence.gotts@lw.com
`jonathan.strang@lw.com
`saswat.misra@lw.com
`
`
`
`
`
`
`13
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`
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