Samsung Electronics Co.v.Mobile Telecommunications Technologies, LLC

Patent Trial and Appeal Board

Feb 16, 2016

08899476 (P.T.A.B. Feb. 16, 2016)

Trials@uspto.gov Paper 9
571-272-7822 Entered: February 16, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAMSUNG ELECTRONICS CO., LTD.,
Petitioner,

v.

MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
Patent Owner.
____________

Case IPR2015-01725
Patent 5,915,210
____________

Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
MIRIAM L. QUINN, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION
Decision Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
A. Background
Petitioner, Samsung Electronics Co., Ltd., filed a Petition to institute
an inter partes review of claims 1, 7, 8, 10, 15–17, and 19 of U.S. Patent No.
5,915,210 (“the ’210 patent”). Paper 1 (“Pet.”). Patent Owner, Mobile
Telecommunications Technologies, LLC, timely filed a Preliminary
Response. Paper 8 (“Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
of the evidence in the Petition and the Preliminary Response, we determine
that Petitioner has not established a reasonable likelihood of prevailing on
the claims challenged in the Petition. Accordingly, we do not institute an
inter partes review of any of the challenged claims in the ’210 patent.
B. Additional Proceedings
Currently, the ’210 patent is also challenged in IPR2015-01724.
Petitioner states that the ’210 patent is asserted against Petitioner in the U. S.
District Court for the Eastern District of Texas, Mobile Telecommunications
Technologies, LLC v. Samsung Electronics Co., Case No. 2:15-CV-183.
Pet. 1. Petitioner also notes that the ’210 patent is asserted against other
parties in at least (1) Mobile Telecommunications Technologies, LLC v.
Apple, Inc., Case No. 2:13-CV-258; (2) Mobile Telecommunications
Technologies, LLC v. Leap Wireless International, Inc., Case No. 2:13-CV-
885; (3) Mobile Telecommunications Technologies, LLC v. T-Mobile USA,
Inc., Case No. 2:13-CV-886; and (4) Mobile Telecommunications
Technologies, LLC v. AT&T Mobility LLC, Case No. 2:14-CV-897, all in the
Eastern District of Texas. Id. at 1–2.
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Petitioner states further that the ’210 patent was also challenged in
previous inter partes review proceedings, namely Apple Inc. v. Mobile
Telecommunications Technologies, LLC, Case IPR2014-01036 (PTAB filed
June 27, 2014); and T-Mobile USA, Inc. v. Mobile Telecommunications
Technologies, LLC, Case IPR2015-00015 (PTAB filed Oct. 3, 2014).1 Id.
at 2.
C. The ’210 Patent
The ’210 patent (Ex. 1001), titled “Method and System for Providing
Multicarrier Simulcast Transmission,” describes a system for two-way
communication between a network operations center and a mobile device
located somewhere in a wide geographic region. Ex. 1001, Abstract. The
’210 patent explains that an important aspect of the invention is to “provide
a communication system with wide area coverage and high message
throughput while minimizing frequency bandwidth usage.” Id. at 4:46–48.
Annotated Figure 6 of the ’210 patent, reproduced below, illustrates
the major components of the communication system for sending a data
signal between networks operation center 600, highlighted in yellow, and
mobile unit 624, highlighted in green. Id. at 8:46–48.

1 IPR2014-01036 and IPR2015-00015 were both terminated pursuant to
settlement agreements between the respective parties. See T-Mobile USA,
Inc. v. Mobile Telecomms. Techs., LLC, Case IPR2015-00015 (PTAB filed
Oct. 3, 2014) (Paper 14); Apple Inc. v. Mobile Telecomms. Techs., LLC,
Case IPR2014-01036 (PTAB filed June 27, 2014) (Paper 20).
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Annotated Figure 6 is a schematic diagram of a communication
system.
As depicted by Figure 6 of the ’210 patent, above, the communication
system provides network operations center 600 connected to satellite uplink
602, which in turn, provides data to satellite 606. Id. at 8:48–51. Satellite
606 communicates the received data to several satellite downlink stations
608, 610. Id. at 8:52–53. Satellite downlink stations 608, 610 send the data
signal to geographically spaced apart base transmitters 612, 614 which emit
the signal via antennas 620 and 622, respectively, in different geographic
defined regions, i.e., “zones,” for reception by mobile unit 624. Id. at 8:62–
9:5. Dash line 660 indicates the boundary between zones 1 and 2, and each
zone may include additional base transmitters 613, 615, respectively, as
shown in Figure 6. Id. at 8:62–9:56. Mobile unit 624, shown in zone 1, is a
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portable communication device, for instance, a pager, and can both receive
and transmit a signal. Id. at 9:6–11.
Observing Figure 6 of the ’210 patent, above, in one embodiment of
the invention base transmitters 612, 614 receive a data signal from satellite
606 via down link stations 608, 610, and then transmit the same data signal
at the same time, i.e., in simulcast, in both zones 1 and 2, to be received by
mobile unit 624. Id. at 10:35–41. The ’210 patent explains that this method
is “useful to deliver the message if, for example, the location of mobile unit
624 in zone 1 or zone 2 is unknown and broad coverage is desired.” Id. at
10:41–44 (emphasis added). In another embodiment, if for instance the
location of mobile unit 624 is known to be in zone 1, base transmitter 614
transmits a data signal within zone 1, and at the same time, base transmitter
612 can transmit different data for a different mobile unit within zone 2 to
“increase information throughput and system efficiency.” Id. at 10:45–58.
D. Illustrative Claim
Claims 1, 10 and 19 are independent. Claim 1 illustrates the claimed
subject matter and is reproduced below:
1. A multi-carrier simulcast transmission system for transmitting
in a desired frequency band at least one message contained in an
information signal, the system comprising:
a first transmitter configured to transmit a first plurality of
carrier signals within the desired frequency band, each
of the first plurality of carrier signals representing a
portion of the information signal substantially not represented
by others of the first plurality of carrier signals; and
a second transmitter, spatially separated from the first
transmitter, configured to transmit a second plurality of
carrier signals in simulcast with the first plurality of
carrier signals, each of the second plurality of carrier
signals corresponding to and representing substantially
the same information as a respective carrier signal of
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the first plurality of carrier signals.

E. The Alleged Ground of Unpatentability
Petitioner contends that the challenged claims are unpatentable on the
following specific ground.2

References Basis Claims Challenged
Witsaman3 and Bingham4 § 103 1, 7, 8, 10, 15–17, and 19

II. CLAIM CONSTRUCTION
A. Legal Standard
The ’210 patent is expired, and “the Board’s review of the claims of
an expired patent is similar to that of a district court’s review.” In re
Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms
generally are given their ordinary and customary meaning, as understood by
a person of ordinary skill in the art, at the time of the invention, taking into
consideration the language of the claims, the specification, and the
prosecution history of record because the expired claims are not subject to
amendment. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
2005) (en banc).
The challenged claims also include means-plus-function limitations.
The Office interprets limitations arising under 35 U.S.C. § 112, paragraph

2 Petitioner supports its challenge with a Declaration of Dr. Apostolos K.
Kakaes, Ph.D. (Ex. 1003, “Kakaes Decl.”). See infra.
3 Ex. 1012, U.S. Patent No. 5,365,569 (Nov. 15, 1994).
4 Ex. 1015, John A.C. Bingham, Multicarrier Modulation for Data
Transmission: An Idea Whose Time Has Come, IEEE COMM. MAG., May
1990, at 5.
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six, in light of the corresponding structure, material or acts described in the
specification. In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994)
(“[P]aragraph six applies regardless of the context in which the
interpretation of means-plus-function language arises, i.e., whether as part of
a patentability determination in the PTO or as part of a validity or
infringement determination in a court.”).
1. A . . .transmitter
Petitioner asserts that “a . . . transmitter” as recited in independent
claims 1 and 10 should be given its plain and ordinary meaning “with the
understanding that transmitting multiple signals or outputs from a single
structural unit is not itself sufficient to constitute a plurality of transmitters.”
Pet. 5 (citing Ex. 1004, 6). After reviewing the Specification, and observing
that Figure 13 discloses a schematic diagram of a base transmitter, we
understand that a transmitter can include a plurality of modulators 1306,
1308, 1310, 1314, each producing a respective carrier signal F1, F2, F3, and
Fn. Ex. 1001, 15:49–63. The carrier frequencies from the modulators are
combined by combiner 1316 into a single output signal, amplified, and then
broadcast by antenna 1320. Id. at 15:67–16:13. Claim 1 also specifies that a
transmitter (singular) “transmit[s] a . . . plurality of carrier signals.”
We find Petitioner’s contention that “a . . . transmitter” be given its
plain and ordinary meaning, to be reasonable. To be consistent with the
usage of this term in the Specification and claim language of the ’210 patent,
the plain and ordinary meaning of “transmitter” (singular) includes a device
capable of transmitting a plurality of carrier signals combined as a single
output.
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2. Means for transmitting a [] plurality of carrier signals
Independent claim 19 includes the limitations, “means for transmitting
a first plurality of carrier signals,” and “means for transmitting a second
plurality of carrier signals.” Petitioner proposes that under the Phillips
standard, the function for the “means for transmitting” is “transmitting a first
plurality of carrier signals within the desired frequency band.” Pet. 9. For
the second plurality of carrier signals Petitioner proposes the function is
“transmitting a second plurality of carrier signals in simulcast with the first
plurality of carrier signals.” Id. Patent Owner does not provide a
construction for this phrase. See Prelim. Resp. 7–10.
For the first limitation, Petitioner asserts that the corresponding
structure is either:
“base transmitter 1300 including data input 1302, control logic
1304, modulators 1306-1314, combiner 1316, power amplifier
1318, and an antenna 1320, as depicted in Figure 13; and
equivalents thereof” or “base transmitter 1400 including data
input 1402, control logic 1404, modulators 1406-1414, power
amplifiers 1416-1424, combiner 1426, and an antenna 1428, as
depicted in Figure 14; and equivalents thereof.”
Id. at 10. For the second limitation, Petitioner asserts that the corresponding
structure is either:
“at least a second geographically separated base transmitter
1300 including data input 1302, control logic 1304, modulators
1306-1314, combiner 1316, power amplifier 1318, and an
antenna 1320, as depicted in Figure 13; and equivalents
thereof” or “at least a second geographically separated base
transmitter 1400 including data input 1402, control logic 1404,
modulators 1406-1414, power amplifiers 1416-1424, combiner
1426, and an antenna 1428, as depicted in Figure 14; and
equivalents thereof.”
Id.
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The presence of the term “means for” in these limitations
presumptively invokes 35 U.S.C. § 112, paragraph six. CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002). Absent evidence to
the contrary, we agree that the claim should be construed under 35 U.S.C.
§ 112, paragraph six, and we also agree with Petitioner’s identification of the
functions, as they are essentially the specific functions unambiguously
expressed in claim 19 for each limitation. Our review of the Specification
reveals that the structure disclosed for performing the function of
“transmitting a first plurality of carrier signals” is base transmitter 1300, and
alternatively, base transmitter 1400 as shown in Figures 13 and 14. Ex.
1001, 15:47–16:30; Figs. 13–14. Similarly, the Specification is
unambiguous that embodiments of the base transmitter, for example, base
transmitter 1300 and 1400 are “means for transmitting a second plurality of
carrier signals,” as recited in claim 19. Id. at 8:51–64, 15:47–16:30; Figs. 6,
13–14. As pointed out by Petitioner, the Specification also clearly indicates
that each of the plurality of base transmitters are “spatially separated” across
a geographic area. Id. at 8:63–9:5, Fig. 6. Although the Specification does
not use specifically the term “geographic separation,” in the context of the
disclosure of network transmitters and receivers having the “capability to
uniformly cover a geographic region,” based on the figures and the plain
meaning of the written description in the ’210 patent, it is a reasonable
interpretation that spatial separation is, in fact, geographic separation. See
id. at 1:26–27.
We find Petitioner’s proposed construction to be reasonable. For
purposes of this Decision, the corresponding structure for “means for
transmitting a first plurality of carrier signals” includes base transmitter
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1300 having data input 1302, control logic system 1304, a plurality of
modulators 1306, 1308 . . . n, combiner 1316 for combination of modulated
signals into a single output signal, amplifier 1318 and broadcast antenna
1320 as shown and described in Figure 13 of the ’210 patent and
equivalents. Id. at 15:47–16:13–14, Fig. 13. The corresponding structure
also includes base transmitter 1400 having data input 1402, control logic
system 1404, a plurality of modulators 1406, 1408 . . .n, a plurality of
amplifiers 1416, 1418 . . .n, combiner 1426 for combination of the
modulated and amplified signals into a single output signal, and broadcast
antenna 1428 as shown and described in Figure 14 of the ’210 patent and
equivalents. Id. at 16:14–30, Fig.14. We identify the corresponding
structure for “means for transmitting a second plurality of carrier signals” as
a second geographically separated base transmitter including the same
structure described above with respect to the embodiments of Figures 13 and
14 of the ’210 patent and equivalents. Id. at 15:47–16:30, Figs. 13, 14.
3. Means for modulating
Claim 7 depends directly from claim 1 and includes the phrases
“means for modulating the first plurality of carrier signals,” and “means for
modulating the second plurality of carrier signals.” We determine for
purposes of this Decision that these phrases should also be construed under
35 U.S.C. § 112, paragraph six, apart from the term “transmitter.” The
function of “means for modulating” is explicit in the claim language as to
modulating carrier signals and we identify the corresponding structure as a
modulator as shown and described in Figures 11, 13, and 14 and its
equivalents. Ex. 1001, 15:49–16:30, Figs. 11, 13, 14.

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4. In simulcast
Independent claims 1, 10, and 19 recite the phrases “transmit . . . in
simulcast,” and, “transmitting . . . in simulcast.” According to Petitioner, the
term “in simulcast” means: “at the same time.” Pet. 10. Patent Owner does
not dispute this interpretation. Prelim. Resp. 9..
The Specification describes that “[g]enerally, simulcast technology
provides multiple transmitters, operating on substantially the same
frequencies and transmitting the same information positioned to cover
extended areas.” Ex. 1001, 1:52–55. Although the Specification does not
specifically state that the information is transmitted “at the same time,” an
ordinary meaning of the word “simulcast” as used throughout the written
description is, “at the same time.” See id. at 1:46–65, 6:1–21, Figs. 7, 26. A
common dictionary definition of “simulcast” is “:to broadcast (a program)
by radio and television at the same time.” http://www.merriam-
webster.com/dictionary/simulcast (last visited Feb. 9, 2016).
Accordingly, for purposes of this Decision, the plain meaning of
“transmitting . . . in simulcast,” is: transmitting at the same time.
5. Representing substantially the same information
Patent Owner contends that the phrase “representing substantially the
same information” as recited in claims 1, 10, and 19 means, “the first
plurality of carrier signals and the second plurality of carrier signals
substantially represent the same information.” Prelim. Resp. 7. This
asserted claim construction by Patent Owner is, however, merely a
restatement of the express claim language essentially interchanging the
words “representing” and “substantially.” We are not persuaded, on the
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record before us at this point in the proceeding, that this phrase needs to be
construed.
6. Each of the first plurality of carrier signals representing a
portion of the information signal substantially not represented
by others of the first plurality of carrier signals

Patent Owner asserts that the phrase “each of the first plurality of
carrier signals representing a portion of the information signal substantially
not represented by others of the first plurality of carrier signals” as recited in
claims 1, 10, and 19 means “‘each of the first plurality of carrier signals
represent a different portion of the information signal,’ without excluding
the possibility of some slight overlap between the different portions.”
Prelim. Resp. 9–10. Patent Owner does not explain sufficiently why this
phrase needs interpretation. We are cognizant that the word “different” in
the proposed construction may have the same or similar meaning as the
phrase “not represented by others . . .,” but the plain meaning of the claim is
readily apparent on its face, that is, by and large unlike portions of the
information signal are carried by each carrier signal. Also, we understand
from the claim language that the carrier signals are not excluded from
carrying some of the same information. It is well settled that the term
“substantially” is often used to mean largely but not wholly what is
specified. See, e.g., York Prods., Inc. v. Cent. Tractor Farm & Family Ctr.,
99 F.3d 1568, 1572–73 (Fed. Cir. 1996); see also Amhil Enters. Ltd. v.
Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996). Accordingly, on the
record before us, we are not persuaded this phrase requires construction.
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III. ANALYSIS
We turn now to Petitioner’s asserted grounds of unpatentability to
determine whether Petitioner has met the threshold standard of 35 U.S.C.
§ 314(a).
A. Claims 1, 7, 8, 10, 15– 17, and 19 – Obviousness over
Witsaman and Bingham
Petitioner asserts that claims 1, 7, 8, 10, 15–17, and 19 would have
been obvious over Witsaman and Bingham. Pet. 13–42. Petitioner has not
established a reasonable likelihood of prevailing on its assertion that claims
1, 7, 8, 10, 15–17, and 19 are obvious for the reasons explained below.
1. Overview of Witsaman
Witsaman discloses a paging system whereby subscribers are
provided with a radio receiver, i.e., a pager device, which receives a
message, i.e., a page, broadcast by the system. Ex. 1012, 1:5–32. The
broadcast system as illustrated in Figure 1 of Witsaman, below, initiates at a
“Publicly Switched Telephone Network” (PSTN), where a phone call from
the PSTN to a subscriber is received by paging terminal 22, 24. Id. at 8:20–
24. From the phone call, paging terminal 22, 24 generates the message, or
page, which is then broadcast from hub 28 to a number of stations 30 spread
across a wide geographic area. Id. at 7:9–12.

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Figure 1 of Witsaman, above, illustrates a paging system for
broadcasting a message to a pager 29. Having received the message from
hub 28, station 30 broadcasts, simultaneously with other stations 30, the
same message signal for reception by a pager. Id. at 7:9–39. Witsaman
states that it is important to send signals simultaneously in such a paging
system so that “in overlap areas the signals from multiple transmitter sites
will be in phase and combine to produce a single signal that can readily be
processed by the intended receiver.” Id. at 1:47–50.
Witsaman’s Figure 2, below, next illustrates the paging system having
various local area groups 38 (“LAG”) making up wide area group 37
(“WAG”).
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Figure 2 of Witsaman, above, depicts a plurality of individual
transmitting stations 30 geographically spaced apart within the LAG’s that
constitute the larger WAG. Id. at 7:47–53. Witsaman explains that each
station 30 includes at least one transmitter 34 “capable of broadcasting
signals in any format in which they can be processed by the complementary
pagers 29.” Id. at 7:54–62.
2. Overview of Bingham
Bingham, titled “Multicarrier Modulation for Data Transmission: An
Idea Whose Time Has Come,” teaches using multi-carrier modulation, such
as the “Quadrature Amplitude Modulation” (QAM) on (i) “General
Switched Telephone Network” (GSTN), (ii) 60–80 kHz Frequency Division
Mulitplexedmultiplexed (FDM) group-band, and (iii) Cellular radio. Ex.
1015, 1. Bingham’s Figure 1, reproduced below, illustrates a basic
multicarrier transmitter.
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Figure 1 of Bingham, above, depicts a series of modulators fc,1, 2 . . . n,
for respectively modulating m1, 2 . . . n bit streams and combining the carrier
signals for output. Id. at 1. Bingham discloses general techniques and
algorithms for parallel transmission, i.e., multicarrier modulation, of
information on different carrier signals and potential implementation of
these techniques and algorithms on a General Switched Telephone Network
(“GSTN”). Id. at 7–8.
3. Discussion
The Asserted Combination of Witsaman and Bingham
Petitioner contends that Witsaman discloses a simulcast signal
transmission system including first and second transmitters, i.e., stations 30
that each include transmitter 34, as recited in each of the independent claims.
Pet. 13–14. Petitioner points to Witsaman’s Specification as describing the
simulcast limitation where stations 30 “all broadcast the same paging signal
at the same time.” Id. at 13 (quoting Ex. 1012, 7:33–35). See generally Ex.
1012, Fig. 2. Relying on its expert, Dr. Kakaes, Petitioner further argues
that Witsaman is not limited to any particular transmission format or
modulation scheme, and therefore when considering Witsaman “it would
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have been obvious to one of ordinary skill in the art at the time of the ’210
patent to employ a known multicarrier modulation (MCM) method of
transmission, such as the one described by Bingham.” Pet. 15 (citing Ex.
1015, 5); Ex. 1003 ¶ 23.
Patent Owner argues inter alia, that Petitioner has failed to present an
articulated reason with evidentiary underpinnings to properly support its
assertions of obviousness. Prelim. Resp. 15. Patent Owner contends that
although Bingham teaches multicarrier modulation, Petitioner has not
explained sufficiently how simulcast multicarrier modulation schemes would
be implemented in Witsaman’s system because Witsaman discloses
simulcasting only a specific single carrier signal transmission. Id. at 16.
Patent Owner asserts that on Witsaman’s transmission side of the system,
i.e., at the simulcasting stations 30, broadcasting a multicarrier modulation
scheme is not a straightforward matter because “the precise synchronization
required by Witsaman would be exponentially more difficult to achieve
when every single subcarriers has to be precisely synchronized with the
corresponding other subcarriers. Each additional subcarrier would have to
be synchronized by each transmitter.” Id.
We agree with Patent Owner that Petitioner has not provided a
sufficient reasoning supported by persuasive evidence to support the
combination of these references. Petitioner makes several unpersuasive
arguments to support the combination of Witsaman and Bingham. Initially,
Petitioner argues that Bingham itself provides the motivation for the
combination because Bingham describes potential benefits of using
multicarrier modulation in a GSTN. Pet. 15. We are not persuaded by this
argument because it is Witsaman’s transmission stations 30 that provide the
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requisite simulcasting of signals separate and apart from PSTN 26.5 See Ex.
1012, Fig. 1. PSTN 26 provides for a telephone call or information as an
input to a paging terminal, which then determines a page that is sent to hub
28 for initial broadcast. Id. at 7:5–21. We do not understand the PSTN
application in Witsaman to involve simulcast signal transmission or even
multicarrier modulation as recited in the claims at issue. To the extent
multicarrier modulation (“MCM”) is capable of being implemented in the
GSTN described in Bingham, implementation into Witsaman’s PSTN does
not explain how or why Witsaman’s stations 30 and transmitters 34
operating on the wireless transmission side of that system, apart from the
PSTN, would use such a MCM scheme.
Next, Petitioner asserts that one of ordinary skill in the art would have
understood that Bingham’s MCM scheme and transmitters use multiple
carrier signals, each carrying “a portion of the information signal
substantially not represented by others of the carrier signals,” and could
replace Witsaman’s transmitters. Pet. 17–18; Ex. 1003 ¶¶ 25, 27. In other
words, Petitioner argues that a known MCM scheme such as QAM
described in Bingham could be readily implemented into Witsaman’s
simulcasting system by essentially replacing Witsaman’s transmitters 34
with MCM modems. Id. Using MCM modems in Witsaman’s stations 30
would then, purportedly, simulcast the modulated signals across the network
or at least a LAN. Id. In support of Petitioner’s position Dr. Kakaes alleges
that “one of ordinary skill in the art would have replaced the transmitters 34

5 We understand no substantive technical difference between a General
Switched Telephone Network (GSTN) and a Public Switched Telephone
Network (PSTN).
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and pagers 29 with the MCM modems described by Bingham” so that the
stations “would ‘all broadcast the same paging signal at the same time.’”
Ex. 1003 ¶ 26 (quoting Ex. 101[2] , 7:33–35). Petitioner and its declarant,
however, generally allege the substitution of a multicarrier modem in place
of a single carrier modem, and then a desired result, i.e., that the multiple
carrier signals would be correspondingly simulcast across a network. Pet.
17. This explanation is not supported by the evidence that Petitioner points
to in Bingham, and does not describe sufficiently how the alleged modems
would have been known substitutions that would yield the purportedly
predictable result of simulcasting multiple carrier signals. See 37 C.F.R. §
42.104(b)(4) (“[T]he petition must set forth . . . [h]ow the construed claim is
unpatentable under the statutory grounds identified in paragraph (b)(2) of
this section.”). Although MCM arguably may have been a known technique
for signal transmission, this knowledge does not sufficiently link it as a
substitute known in the field for simultaneous signal transmission between
separate transmitters. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007) (“a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art”)
Dr. Kakaes alleges that a prior art reference by Le Floch further
supports the proposition that one of ordinary skill in the art would have
knowledge and ability to combine an MCM system such as Coded
Orthogonal Frequency Division Multiplex (COFDM) with a simultaneous
signal transmission system.6 Ex. 1003 ¶ 25. Dr. Kakaes states that, “Le

6 Ex. 1016, Bernard Le Floch et al., Digital Sound Broadcasting to Mobile
Receivers, 35 IEEE TRANSACTIONS ON CONSUMER ELECTRONICS 493 (1989).
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Floch describes a broadcasting service in which a plurality of transmitters
‘would be temporally synchronized and would all transmit the same signal.’”
Id. (quoting Ex. 1016, 9 §7). Neither this reference, nor Dr. Kakaes’s
testimony restating the words of the Le Floch reference, is persuasive
because Le Floch merely describes the desired result of synchronized, i.e.,
simultaneous, transmission of an MCM signal. Le Floch also fails to
describe sufficiently how such synchronization would occur, and neither
does Petitioner point us to sufficient evidence in the reference that
purportedly provides such an explanation. Although Dr. Kakaes states with
respect to Le Floch that “the transmission of MCM signals in simulcast from
multiple, geographically dispersed transmitters had already been
accomplished in other contexts well before the filing of the ’210 patent”
(id.), this statement is not consistent with Le Floch. Indeed, Le Floch
indicates that use of COFDM system with a geographically dispersed
synchronized transmitter network is “research” and a subject that the authors
are “looking into.” Ex. 1016, 9 §7. Therefore, we are not persuaded that Dr.
Kakaes’s testimony on this point is entitled to any weight.
We are not persuaded that the above described allegations are
supported by persuasive evidence or adequate explanation that the
substitution of Bingham’s MCM scheme into Witsaman’s PSTN could yield
the predictable result of simultaneous transmission across the network. The
arguments and evidence presented by Petitioner, in light of the information
presented in the Preliminary Response, is insufficient to show the
predictability or obviousness of combining such MCM transmission with
simultaneous transmission of the same information as in Witsaman. See
KSR Int’l Co. v. Teleflex Inc., 550 US 398, 418 (2007) (“[R]ejections on
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Patent 5,915,210

21
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”) Although
multicarrier modulation may have been known, Petitioner has failed to
provide the requisite showing of an articulated reason with sufficient
evidentiary underpinnings for the alleged combination of Witsaman and
Bingham.
IV. SUMMARY
For the foregoing reasons, we do not institute inter partes review of
the ’210 patent on the alleged ground of unpatentability.
V. ORDER
After due consideration of the record before us, it is:
ORDERED that the Petition is denied and no trial is instituted.
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Patent 5,915,210

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For PETITIONER:

Heath J. Briggs
GREENBERG TRAURIG, LLP
BriggsH@gtlaw.com

Patrick J. McCarthy
GREENBERG TRAURIG, LLP
McCarthyP@gtlaw.com

For PATENT OWNER:

John R. Kasha
KASHA LAW LLC
john.kasha@kashalaw.com

Craig Steven Jepson
REED & SCARDINO LLP
cjepson@reedscardino.com

Kirk D. Dorius
REED & SCARDINO LLP
kdorius@reedscardino.com