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

Patent Trials and Appeals Board

Dec 10, 2014

13198568 - (D) (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 IPR2014-00890
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 22, 23, and 25 of U.S. Patent No. 8,457,228 B2 (“the ’228 patent”)
(Ex. 1101) 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: IPR2014–00889; 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. 1101, col. 1, ll. 21–25; col. 1, l. 58–col. 2, l.
23.

Illustrative Claim
Claim 22 is illustrative.
22. A communication device configured to communicate
according to a master/slave relationship in which a slave
communication from a slave to a master occurs in response to a
master communication from the master to the slave, the device
comprising:
a transceiver in the role of the master according to the
master/slave relationship that is configured to send at least a
plurality of communications, wherein each communication
from among said plurality of communications comprises at
least a respective first portion and a respective payload portion,
wherein each communication from among said plurality of
communications is addressed for an intended destination of the
respective payload portion of that communication, and wherein
for each communication from among said plurality of
communications:
said respective first portion is modulated according to a
first modulation method from among at least two types of
modulation methods, wherein the at least two types of
modulation methods comprise the first modulation method and
a second modulation method, wherein the second modulation
method is of a different type than the first modulation method,
said respective first portion comprises an indication of
which of the first modulation method and the second
modulation method is used for modulating respective payload
data in the respective payload portion, and
the payload data is modulated according to at least one of
the first modulation method or the second modulation method
in accordance with what is indicated by the respective first
portion;
the transceiver further configured to send at least a first
communication of the plurality of communications such that
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payload data included in a payload portion of the first
communication is modulated according to the second
modulation method based on a first portion of the first
communication indicating that the second modulation method
will be used for modulating the payload data in the payload
portion of the first communication, wherein the payload data is
included in the first communication after the first portion of the
first communication;
the transceiver further configured to send at least a
second communication of the plurality of communications such
that payload data included in a payload portion of the second
communication is modulated according to the first modulation
method based on a first portion of the second communication
indicating that the first modulation method will be used for
modulating the payload data in the payload portion of the
second communication.

Prior Art and Other Evidence Included with Petition
Boer et al. US 5,706,428 Jan. 6, 1998 (Ex. 1106)
(“Boer”)

IEEE P802.11, Draft Standard for Wireless LAN, Medium Access Control
(MAC) and Physical Layer (PHY) Specification, P802.11D4.0, May 20,
1996 (Ex. 1104) (“Draft Standard”)

Declaration of Robert O’Hara, Mar. 11, 2014 (Ex. 1122).

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)

22, 23, and 25

Draft Standard and Boer

§ 103(a)

22, 23, and 25
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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. 1104)
Draft Standard is an unapproved draft of a proposed IEEE (Institute of
Electrical and Electronics Engineers) Standard. Ex. 1104, i.1 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.

C. Declaration of Robert O’Hara (Ex. 1122)
Mr. Robert O’Hara was an editor of the IEEE 802.11-1997 standard.
Ex. 1122 ¶ 1; Ex. 1104, 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.
1122 ¶ 9. According to Mr. O’Hara, announcements were sent to the
Working Group’s e-mail list when drafts became available, and a person

1 In this Decision, we refer to the original pagination of Draft Standard
rather than the Exhibit page number.
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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
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
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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. 13–14 (citing Ex. 1122 ¶¶ 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
meeting held July 8–12, 1996. Id. at 14–15. 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.
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
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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. 1122 ¶ 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
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
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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. 1122 ¶ 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
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. 1122 ¶ 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
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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.

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 Boer.

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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