Samsung Electronics Co. Ltd.v.Rembrandt Wireless Technologies, LP

Patent Trial and Appeal Board

Dec 10, 2014

13198568 (P.T.A.B. Dec. 10, 2014)

Trials@uspto.gov Paper 8
571-272-7822 Date Entered: December 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA,
LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
Petitioner,

v.

REMBRANDT WIRELESS TECHNOLOGIES, LP,
Patent Owner.
____________

Case IPR2014-00889
Patent 8,457,228 B2
____________

Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
JUSTIN BUSCH, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

I. BACKGROUND
Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
Samsung Telecommunications America, LLC, and Samsung Austin
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Semiconductor, LLC (collectively, “Petitioner”) request inter partes review
of claims 1–3, 5, 10 and 11–21 of U.S. Patent No. 8,457,228 B2 (“the ’228
patent”) (Ex. 1001) under 35 U.S.C. §§ 311–319. Paper 2 (Petition, or
“Pet.”). Rembrandt Wireless Technologies, LP (Patent Owner) filed a
preliminary response (Paper 6, “Prelim. Resp.”) provided by 37 C.F.R.
§ 42.107. We have jurisdiction under 35 U.S.C. § 314.
For the reasons that follow, we do not institute an inter partes review
as to any of the challenged claims of the ’228 patent.

Related Proceeding
According to Petitioner, the ’228 patent is involved in the following
lawsuit: Rembrandt Wireless Technologies, LP v. Samsung Electronics
Company, No. 2:13-cv-00213 (E.D. Tex. 2013). Pet. 1. The ’228 patent has
also been challenged in the following cases: IPR2014–00890; IPR2014–
00891; IPR2014–00892; IPR2014–00893; and IPR2014–00895.

The ’228 Patent
The ’228 patent issued from an application filed August 4, 2011,
which claimed priority, through a chain of intervening applications, under 35
U.S.C. § 120 to an application filed December 4, 1998, and which claimed
priority under 35 U.S.C. § 119 to a provisional application filed December 5,
1997.
The technical field of the patent relates to data communications and
modulators/demodulators (modems), and in particular to a data
communications system in which a plurality of modems use different types
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of modulation in a network. Ex. 1001, col. 1, ll. 21–25; col. 1, l. 58–col. 2, l.
23.

Illustrative Claim
Claim 1 is illustrative.
1. A master communication device configured to
communicate with one or more slave transceivers according to
a master/slave relationship in which a slave communication
from a slave device to the master communication device occurs
in response to a master communication from the master
communication device to the slave device, the master
communication device comprising:
a master transceiver configured to transmit a first
message over a communication medium from the master
transceiver to the one or more slave transceivers, wherein the
first message comprises:
first information modulated according to a first
modulation method,
second information, including a payload portion,
modulated according to the first modulation method, wherein
the second information comprises data intended for one of the
one or more slave transceivers and
first message address information that is indicative
of the one of the one or more slave transceivers being an
intended destination of the second information; and
said master transceiver configured to transmit a second
message over the communication medium from the master
transceiver to the one or more slave transceivers wherein the
second message comprises:
third information modulated according to the first
modulation method, wherein the third information comprises
information that is indicative of an impending change in
modulation to a second modulation method, and
fourth information, including a payload portion,
transmitted after transmission of the third information, the
fourth information being modulated according to the second
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modulation method, the second modulation method being of a
different type than the first modulation method, wherein the
fourth information comprises data intended for a single slave
transceiver of the one or more slave transceivers, and
second message address information that is
indicative of the single slave transceiver being an intended
destination of the fourth information; and
wherein the second modulation method results in a
higher data rate than the first modulation method.

Prior Art and Other Evidence Included with Petition
Boer et al. US 5,706,428 Jan. 6, 1998 (Ex. 1006)
(“Boer”)

Siwiak US 5,537,398 July 16, 1996 (Ex. 1007)

IEEE P802.11, Draft Standard for Wireless LAN, Medium Access Control
(MAC) and Physical Layer (PHY) Specification, P802.11D4.0, May 20,
1996 (Ex. 1004) (“Draft Standard”)

Declaration of Robert O’Hara, Mar. 11, 2014 (Ex. 1023).

Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability (Pet. 2–3):

Evidence

Basis (35 U.S.C.)

Claims

Draft Standard

§ 102(b)/103(a)

1–3, 5, 10, and
11–20

Draft Standard and Boer

§ 103(a)

1–3, 5, 10, and
11–20
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Evidence

Basis (35 U.S.C.)

Claims
Draft Standard and
APA1 or Siwiak

§ 103(a)

21
Draft Standard and
APA, Siwiak, or Boer

§ 103(a)

21

II. ANALYSIS
A. Asserted Anticipation and Obviousness Grounds Based on Draft
Standard
The dispositive issue in this proceeding is whether Draft Standard, on
which both of Petitioner’s asserted grounds of unpatentability rely, is a
printed publication.

B. Overview of Draft Standard (Ex. 1004)
Draft Standard is an unapproved draft of a proposed IEEE (Institute of
Electrical and Electronics Engineers) Standard. Ex. 1004, i.2 The purpose
of the proposed standard was “[t]o provide wireless connectivity to
automatic machinery, equipment [, or] stations that require rapid
deployment, which may be portable, or hand-held or which may be mounted
on moving vehicles within a local area” and “[t]o offer a standard for use by
regulatory bodies to standardize access to one or more frequency bands for
the purpose of local area communication.” Id. at 1.

1 Admitted prior art.

2 In this Decision, we refer to the original pagination of Draft Standard
rather than the Exhibit page number.
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C. Declaration of Robert O’Hara (Ex. 1023)
Mr. Robert O’Hara was an editor of the IEEE 802.11-1997 standard.
Ex. 1023 ¶ 1; Ex. 1004, iii. Mr. O’Hara states that drafts of the 802.11-1997
standard, including Draft Standard, were available to members of the 802.11
Working Group for download from the 802.11 Working Group’s server. Ex.
1023 ¶ 9. According to Mr. O’Hara, announcements were sent to the
Working Group’s e-mail list when drafts became available, and a person
could be added to the Working Group’s e-mail list by providing an e-mail
address to the chair of the Working Group. Id. ¶¶ 9–10. Mr. O’Hara states
that there “were no restrictions on who could attend the 802.11 Working
Group’s meetings [or] on who could provide an e-mail address” and that,
according to his “recollection,” anyone who made a request to be added to
the e-mail list would be added. Id. ¶ 10.
Mr. O’Hara states that the copies of the drafts of the Standard
available on the Working Group’s servers were password-protected files,
and that the members of the e-mail list were provided with passwords to
access the documents, either as part of an announcement of a new draft or
via “another way.” Id. ¶ 11. According to Mr. O’Hara, the passwords were
intended to limit distribution to “interested individuals, as opposed to the
entire [I]nternet.” Id. Mr. O’Hara also states that attending an 802.11
Working Group meeting or asking for access prior to a meeting
demonstrated sufficient interest such that that person would receive the
password necessary to access the drafts on the Working Group’s server. Id.
Further, according to Mr. O’Hara, each of the 802.11 standard drafts,
including Draft Standard, would have been discussed at the Working Group
meetings and made available to all attendees. Id. ¶ 12. Mr. O’Hara also
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states that the meetings were not limited to IEEE members but were open to
the general public. Id.

D. Analysis of Whether Draft Standard Is a Printed Publication
We look to the underlying facts to make a legal determination as to
whether a document is a printed publication. Suffolk Techs., LLC v. AOL
Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
document is a “printed publication” under 35 U.S.C. § 102(b) involves a
case-by-case inquiry into the facts and circumstances surrounding its
disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345,
1350 (Fed. Cir. 2004). Public accessibility is a key question in determining
whether a document is a printed publication and is determined on a case-by-
case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed
publication, a document “must have been sufficiently accessible to the
public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
2009).
The O’Hara Declaration is the only extrinsic evidence that Petitioner
submits in support of its position that Draft Standard is a printed publication.
See Pet. 14–15. Petitioner asserts that Draft Standard “was completed on
May 20, 1996, and was available to anyone who wanted to view it on May
23, 1996.” Pet. 14–15 (citing Ex. 1023 ¶¶ 4, 5, 10, and 12) (emphasis
added). Petitioner indicates, initially, that this availability resulted in a
publication date of May 23, 1996. Pet. 14. Petitioner also argues that Draft
Standard “was available to any interested parties” no later than July 8, 1996,
because it “was available to all members of the 802.11 Working Group’s
email list” and discussed and distributed at an 802.11 Working Group
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meeting held July 8–12, 1996. Id. at 15. Thus, Petitioner concludes that this
alleged distribution and availability to any interested parties by July 8, 1996
renders Draft Standard a “printed publication” under 35 U.S.C. § 102(b).
Id. at 15–16.
Notably absent, however, from the Petition and Mr. O’Hara’s
declaration are any assertions or evidence in support of the availability of
Draft Standard to the public interested in the art. We do not find sufficient
argument or evidence to indicate that the July 8–12 meeting of the 802.11
Working Group (or any other 802.11 Working Group meeting) was
advertised or otherwise announced to the public. Nor do we find sufficient
argument or evidence that any individual who was interested in the art
would have known about Draft Standard such that he or she would have
known to request a copy or ask to be added to an email list for access to the
document.
“A given reference is ‘publicly accessible’ upon a satisfactory
showing that such document has been disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence, can locate it.” SRI
Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)
(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
Cir. 2006)). Although Mr. O’Hara declares that “[t]here were no restrictions
on who could attend the 802.11 Working Group’s meetings” (Ex. 1023 ¶ 10)
and that the meetings “were open to the general public” (id. ¶ 12), Petitioner
has not presented persuasive argument or evidence regarding how members
of the potentially interested public would have been made aware of these
meetings. Similarly, although Mr. O’Hara declares that an individual could
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provide the chair with an e-mail address to be added to the Working Group’s
e-mail list (id. ¶ 10), the Petition has not established how an individual
would have known to attend a meeting or contact the chair in order to be
added to the e-mail list.
Based on the evidence before us, we find that the purpose of the
802.11 Working Group’s storage of drafts of the standard on a server is
similar to the placement of a file on an “FTP server solely to facilitate peer
review in preparation for later publication,” which the U.S. Court of Appeals
for the Federal Circuit found weighed against public accessibility of the file.
SRI Int’l, 511 F.3d at 1197. In SRI, even though the “paper was ‘posted’ on
an open FTP server and might have been available to anyone with FTP
know-how and knowledge of the” subdirectory in which it resided, the
Federal Circuit found the fact that the paper was not publicized suggested an
absence of public availability. Id. In this case, the submitted evidence does
not show that the 802.11 Working Group’s server was an open server and, to
the extent that it was, the evidence shows that the documents were password
protected. Ex. 1023 ¶ 11.
Moreover, notwithstanding Mr. O’Hara’s statement that passwords
were distributed to the 802.11 Working Group e-mail list (id.), the fact that
an interested individual needed to contact IEEE in order to obtain a
password or other means of accessing Draft Standard (and needed to know
who to contact in the first place) weighs against public accessibility. Cf.
Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1351 (Fed.
Cir. 2008) (finding facts weighed towards public accessibility because “[t]he
specifications themselves were visible to any member of the interested
public without requesting them from an ETSI member”). Mr. O’Hara states
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that the drafts of the 802.11 standards, including Draft Standard, were (and
still are) protected by passwords in order to limit distribution to “interested
individuals, as opposed to the entire [I]nternet.” Ex. 1023 ¶ 11. However,
as previously discussed, the record does not contain persuasive evidence
showing how an individual outside the 802.11 Working Group would have
known of the existence of the Draft Standard, the 802.11 Working Group
meetings, or the 802.11 Working Group itself. Therefore, we are not
persuaded that such an individual, exercising reasonable diligence, would be
able to change his status from an anonymous member of “the entire
[I]nternet” to an “interested individual.” Moreover, the Working Group
created Draft Standard. See Ex. 1023 ¶ 2. Provision of a document to co-
authors of the document does not constitute dissemination, or availability, of
the document to the public.
Therefore, based on the evidence Petitioner provided, we conclude
Petitioner has not made a sufficient showing that Draft Standard was a
printed publication as of July 1996 or earlier, as alleged, i.e., that Draft
Standard was available as of July 1996 or earlier to an ordinarily skilled
individual, exercising reasonable diligence, who might have been interested
in the subject matter of Draft Standard.

E. Asserted Grounds of Unpatentability
Because Petitioner has not met its burden in establishing that Draft
Standard is a “printed publication” and, thus, prior art, Petitioner has not
shown a reasonable likelihood of prevailing on the grounds asserted.

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III. CONCLUSION
The Petition fails to demonstrate a reasonable likelihood of prevailing
on the grounds that the challenged claims are anticipated by, or obvious
over, Draft Standard or obvious over Draft Standard and prior art references.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that the petition is denied as to all challenged claims and
no trial is instituted.
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For Petitioner:
Jeffrey Miller
millerj@dicksteinshapiro.com

Daniel Cardy
cardyd@dicksteinshapiro.com

For Patent Owner:

Thomas Engellenner
engellennert@pepperlaw.com

Reza Mollaaghababa
mollaaghababar@pepperlaw.com

Lana Gladstein
gladsteinl@pepperlaw.com