UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. CISCO SYSTEMS, INC. Petitioner v. CHANBOND LLC Patent Owner

Transcription

1 Paper 13 Filed: May 17, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CISCO SYSTEMS, INC. Petitioner v. CHANBOND LLC Patent Owner Case IPR Patent 7,941,822 PATENT OWNER S RESPONSE TO PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,941,822

2 TABLE OF CONTENTS I. INTRODUCTION... 1 II. OVERVIEW OF U.S. PATENT No. 7,941, III. CLAIM CONSTRUCTION... 6 A. Channel... 7 B. Address, Addressed, and Addressable Device...20 IV. OVERVIEW OF THE CITED REFERENCES...21 A. Tiedemann...21 B. Gilhousen...24 C. Gorsuch...24 V. ARGUMENT...26 A. The References Do Not Disclose Multiple Channels...26 B. Petitioner s Proposed Combination of References Is Inoperable...37 VI. CONCLUSION...52

3 TABLE OF AUTHORITIES Cases Page(s) Aylus Networks, Inc., v. Apple Inc., No , 2017 WL (Fed. Cir. May 11, 2017) Cisco Sys., Inc., v. ChanBond LLC, Case IPR , slip op. (PTAB Mar. 29, 2017)...passim Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct (2016)... 6 DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009) Genentech, Inc. v. Chiron Corp., 112 F.3d 495 (Fed. Cir. 1997) In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007) Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376 (Fed. Cir. 2001) In re Magnum Oil Tools Int l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340 (Fed. Cir. 2004) Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015)... 6, 7 MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159 (Fed. Cir. 2015) In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012) Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016)... 1, 27 ii

4 PersonalWeb Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017)... 47, 48 Regents of Univ. of Minnesota v. AGA Med. Corp., 717 F.3d 929 (Fed. Cir. 2013) Tec Air, Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353 (Fed. Cir. 1999) Vivid Techs., Inc. v. Am. Sci. & Eng g, Inc., 200 F.3d 795 (Fed. Cir. 1999) Statutes 35 U.S.C. 312(a)(3) U.S.C. 316(e) Regulations 37 C.F.R (b) C.F.R (a)... 1 iii

5 EXHIBIT LIST Exhibit No. Description 2001 U.S. Patent No. 8,984,565 to Hennenhoefer et al Declaration of Scott M. Nettles, Ph.D Transcript of Deposition of Anthony Wechselberger (Apr. 28, 2017) 2004 U.S. Patent No. U.S. 8,341,679 to Hennenhoefer et al. (Wechselberger Ex. 1) 2005 Declaration of Anthony Wechselberger in Support of Petition for Inter Partes Review of U.S. Patent No. 8,341,679 B2 (Wechselberger Ex. 2) iv

6 I. INTRODUCTION Pursuant to 37 C.F.R (a), Patent Owner, ChanBond LLC, submits the following response to the Petition, setting forth reasons why Petitioner has failed to show that the challenged claims are unpatentable. [T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review. Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). Petitioner failed to carry this burden for at least two reasons. First, institution of trial was predicated on the Board s preliminary adoption of Petitioner s proposed construction of the term channel. However, consistently with the Board s findings in related proceedings for this patent family, the intrinsic record only supports a more precise construction of channel as a frequency band. Under the proper construction, the cited references fail to disclose using multiple channels, or frequency bands, to transport a data stream, as required by each of the challenged claims. Second, under any construction of the claims, Petitioner s proposed obviousness combination of references fails because it would result in an inoperable device. To the extent that the combination would need to be modified to become functional, the petition does not describe which modifications would be

7 needed or why such particular modifications would be made. And at any rate, any such modifications would exceed the level of ordinary skill. Patent Owner s response is supported by the declaration of Dr. Scott M. Nettles, an expert in the field of wired and wireless telecommunications and computer networking. EX2002, Nettles at 2 9. II. OVERVIEW OF U.S. PATENT NO. 7,941,822 The 822 Patent addresses the problem of transporting digital data at high speed over an analog radio frequency (RF) carrier using existing wiring. See EX1001, 822 Patent at 2:13 41; EX2002, Nettles at 25. The inventors recognized that analog carrier networks have the capability to transport digital video, IP voice/data/video, as well as analog video, efficiently and cost effectively. This capability is not presently used due to the lack of a method to get such signals onto and off of such a carrier network. EX1001, 822 Patent at 2:6 12. The 822 Patent solves this problem by providing an intelligent device system and method for distribution of digital signals onto, and off of, a wideband signal distribution system. EX1001, 822 Patent at 1: The 822 Patent provides high-data-rate networking to addressable devices, such as computers and digital televisions, by combining the capacity of multiple RF channels. EX2002, Nettles at 26. Figure 2 of the 822 Patent (reproduced below with annotations in 2

8 color), an exemplary embodiment, depicts a local RF receiver/baseband out intelligent device system 200 for use in receiving digital and analog information on an RF carrier, which carrier may be, for example, between 5 MHz to in excess of 1 GHz, from a wideband signal distribution system. EX1001, 822 Patent at 6: Wideband Signal Distribution System The receive path in the embodiment of Fig. 2 is highlighted in red. EX2002, Nettles at 27. Following an RF splitter 214 and RF bandpass filters 218 (EX1001, 822 Patent at 8:46 49, 8:63 65), the signal path includes a demodulator 220 [which] strips the RF carrier signal from the digital baseband signal. Following demodulation, the IP digital signals are combined by a digital combiner 212, such as a multiplexer, if necessary, in order to effectuate a parallel to serial conversion. The output of the digital combiner 212 is a high speed serial digital output. The output of the digital combiner 230 is routed to at least one 3

9 addressable device 202. The digital information is thereby provided to the addressable device 202. Id. at 9:1 12. The addressable device 202 may be, for example, an Ethernet card, or a NIC [network interface controller] card, in a computer, or may be a display device that displays digital information, such as a digital television. The addressable device 202 preferably has an address, such as an IP address, assigned thereto, to allow communications directed to that particular address to be delivered thereto. Id. at 8: The receiver architecture shown in Fig. 2 of the 822 Patent enables the delivery of digital data at high speed to computers and other addressable devices using RF channels with limited bandwidth. EX2002, Nettles at 28. The exemplary wideband signal distribution system may allow for distribution of, for example, 29 channels, wherein each channel is 6 MHz in width. However, where digital information can be transmitted over the RF channel, each 6 MHz channel can handle, depending on the modulation technique used, in excess of 40 megabits per second of digital information. This 40 megabits per second transmission allows for the transmission rate in excess of one gigabit/sec of digital information to be carried on the sum of the 29 RF channels in the wideband signal distribution system 10. EX1001, 822 Patent at 6: By receiving, demodulating and combining multiple radio frequency channels into a digital stream, and providing the digital stream to the addressable devices, the 822 Patent 4

10 overcomes the physical limits of a single RF channel, which are a consequence of its finite RF bandwidth. EX2002, Nettles at 28. Two aspects of the invention of the 822 Patent are particularly relevant to the following discussion. First, the invention is directed to using multiple RF channels to transport a data stream a specific type of frequency-division multiple access (FDMA). EX2002, Nettles at 30. Both independent claims 1 and 19 recite an input configured to receive a modulated RF signal containing multiple channels. EX1001, 822 Patent at 12:24 25, 15:3 4. As Petitioner s expert agrees, a person of ordinary skill in the art would understand this usage in the claims to identify RF channels that is channels in an RF signal. EX1002, Wechselberger at 122 (emphasis added). However, none of Petitioner s cited art refers to, relates to, or describes multiple RF channels transporting a data stream. EX2002, Nettles at 30. To the contrary, all of the references involve a completely different technology, namely code-division multiple access (CDMA). Id. Unlike FDMA, CMDA uses a single radio frequency channel. Id. As Petitioner s expert explains, in CDMA the data streams are all broadcasting on the same RF channel. EX1002, Wechselberger at 93 (emphasis added). Second, the invention solves a problem that is specific to computer networking using addressable devices, e.g., network-enabled computers and 5

11 digital televisions. See EX1001, 822 Patent at 8:17 23; EX2002, Nettles at 31. As confirmed by the Board in its decision to institute trial, Petitioner failed to show that the two primary references, Tiedemann (EX1009) and Gilhousen (EX1010), disclose at least one addressable device, as required by the challenged claims. See Decision on Institution (hereinafter, Inst. ) at However, as discussed below, Petitioner s attempt to fill this gap by a purported obviousness combination with a secondary reference, Gorsuch (EX1011), fails as inoperable. EX2002, Nettles at 31. It is axiomatic that one of ordinary skill would not combine references in a manner that would result in an inoperable device. III. CLAIM CONSTRUCTION Each of the challenged claims must be given its broadest reasonable construction in light of the specification of the patent in which it appears C.F.R (b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). However, [e]ven under the broadest reasonable interpretation, the Board s construction cannot be divorced from the specification and the record evidence, and must be consistent with the one that those skilled in the art would reach. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) 1 Patent Owner reserves the right to pursue different claim constructions in other litigation according to the standards applicable to the venue. 6

12 (internal quotation marks omitted). A construction that does not reasonably reflect the plain language and disclosure will not pass muster. Id. Petitioner proposes two groups of terms for construction: channel and address (and related terms). For purposes of instituting trial, the Board provisionally construed channel as a path for transmitting electric signals. Inst. at Patent Owner respectfully requests the Board to revisit that analysis and construe channel as RF channel or frequency band, which is the construction that is most consistent with all the intrinsic evidence and with the Board s own findings in these and related proceedings. With respect to address and related terms, Patent Owner believes that the Board can resolve all the issues in dispute without construing those terms. A. Channel The term channel should be construed as frequency band. As the Board found in related proceedings, the broadest reasonable interpretation of the closely related term RF channel is limited to frequency bands. There is simply no support in the 822 Patent specification to construe the term channel any more broadly than RF channel. Thus, in light of the intrinsic evidence, the Board should also give the term channel its broadest reasonable interpretation of a frequency band. EX2002, Nettles at 32. 7

13 First, the very claims of the 822 Patent clearly indicate that the claimed channel is not any channel, but an RF channel. EX2002, Nettles at 33. Independent claims 1 and 19 of the 822 Patent recite an input configured to receive a modulated RF signal containing multiple channels. EX1001, 822 Patent at 12:24 25, 15:3 4 (emphasis added). The channels contained within a modulated RF signal are necessarily RF channels. EX2002, Nettles at 33. Petitioner s expert, Mr. Wechselberger, agrees with this conclusion: The claims [refer] to a modulated RF signal containing multiple channels. In my opinion a [person of ordinary skill in the art] would understand this usage in the claims to identify RF channels that is channels in an RF signal. EX1002, Wechselberger at 122 (emphasis added). Thus, Mr. Wechselberger himself analyzed the claims under the reasonable assumption that channels were in fact RF channels. Second, the 822 Patent s specification uses the term channel interchangeably with RF channel or frequency channel, i.e., a frequency band. EX2002, Nettles at 34. For example, in reference to Fig. 2, the specification explains: The wideband signal distribution system 10 may allow for distribution of, for example, 29 channels. This 40 megabits per second transmission allows for the transmission rate in excess of one 8

14 gigabit/sec of digital information to be carried on the sum of the 29 RF channels in the wideband signal distribution system 10. EX1001, 822 Patent at 6:50 62 (emphasis added). The 822 Patent specification s shorthand reference to 29 channels and later in the same paragraph to the 29 RF channels indicates that the former provides antecedent basis for the latter. Thus, the specification is referring to the same 29 channels, which are RF channels. EX2002, Nettles at 34. Petitioner s expert, Mr. Wechselberger, agreed with this reading of the 822 Patent specification. EX2003, Wechselberger Dep. at 31: And he agreed that the 822 Patent specifically says each channel is 6 megahertz in width. That is a frequency band. There is no denying that. Id. at 28:7 14. Similarly, in reference to the embodiment of Fig. 4, the 822 Patent states: [W]here QAM modulation is used, QAM modulation is generally 40 megabits per second, per 6 MHz RF channel, thus requiring the use of two 6 MHz RF channels in order to modulate the 80 megabits per second coming from the digital combiner in the exemplary embodiment hereinabove. The RF channel frequency is selected from at least two available frequency channels. However, the channel width can, for example, be increased from 6 MHz per channel to 12 MHz per channel. EX1001, 822 Patent at 10:4 12 (emphasis added). Thus, the specification introduces 6 MHz RF channels, which are 6 MHz wide frequency bands, and 9

15 later refers to those in an abbreviated form as frequency channels, or just channel[s]. EX2002, Nettles at 34. Throughout the entire specification of the 822 Patent, and in each of the embodiments, the terms channel and RF channel are both solely and consistently used to refer to a frequency band. EX2002, Nettles at 35. For example, Fig. 4 of the 822 Patent (reproduced below with annotations) depicts DSP 420 that selects RF channels, and block 422 that provides RF system channel detection : EX2002, Nettles at 35. And in reference to Fig. 5, the 822 Patent states that [a]n RF system channel detector is preferably in communication with the DSP 420 in order to update the DSP 420 as to the RF channels in use and available. EX1001, 822 Patent at 10: In both cases, the specification is referring to 10

16 frequency bands, as evidenced by the reference to the separation of channels by bandpass filters 216 and 218. Id. at 10:60 11:18. As their name suggests, bandpass filters select specific frequency bands and block other frequency bands. EX2002, Nettles at 35. Each of the embodiments of the 822 Patent s invention discloses channels that are RF channels or frequency channels, i.e., frequency bands in a frequency division multiplexing scheme. EX2002, Nettles at 36. As the Board observed, the specification s use of the terms channel and RF channel reflect[s] the 822 patent s consistent use of modifiers to expressly identify the particular type of channel described. Inst. at 9. However, the only modifiers that the 822 Patent uses are RF channel and frequency channel, which as explained above, denote frequency bands. EX2002, Nettles at 36. Modifiers denoting other types of channels, such as code channel, CDMA channel, and the like are nowhere to be found in the 822 Patent specification. Id. Thus, using channel as a shorthand for RF channel would cause no confusion to a person of ordinary skill. Id. As the Board correctly noted, the 822 Patent specification does not haphazardly interchange the generic term channel and more particularized term RF channel. Inst. at 9. Rather, the specification consistently uses the term RF channel to denote a frequency band, but also uses the 11

17 abbreviated forms frequency channel and channel as a shorthand, as a person of ordinary skill would readily understand. EX2002, Nettles at 36. Third, in related proceedings the Board has construed the closely related term RF channel as a frequency band. Petitioner filed parallel petitions for inter partes review of other patents in the same family as the 822 Patent, including U.S. Patent No. 8,984,565 ( the 565 Patent, EX2001), which issued as a continuation of the 822 Patent and shares the same specification. 2 In denying the petitions, the Board held that the broadest reasonable construction of the term RF channel as used in the 565 patent does not extend beyond frequency bands. Cisco Sys., Inc., v. ChanBond LLC, Case IPR , slip op. at 9 (PTAB Mar. 29, 2017) (Paper 10). The Board found that [a]lthough the 565 patent does not explicitly define the term RF channel, it does use the term throughout the specification. These uses of the term are consistent with a meaning related to a frequency band. Id. As stated by the Board: [E]ven when contemplating the use of advanced [modulation] techniques, the 565 patent discusses RF channels in terms of 2 Cisco Systems, Inc., v. ChanBond LLC, Cases IPR , IPR , IPR , IPR , IPR and IPR Because the Board reached substantially similar conclusions in each proceeding, for the sake of brevity citations will be provided to representative findings in IPR only. 12

18 frequency bands. In fact, we see no use of the term RF channel in the 565 patent that is inconsistent with a definition restricted to frequency bands. Further, we see no use of the term that is consistent with a broader definition of the term. Id. at 10. In reaching this conclusion, the Board relied on the very passages of the specification discussed above, in which channel and RF channel are used interchangeably. Id. at 9 10; see also EX1001, 822 Patent at 6:54, 10:3 14; EX2001, 565 Patent at 6:54, 10:3 14. And the Board itself treated those terms interchangeably, by referring, e.g., to a 6 MHz [RF] channel. Cisco Sys., slip op. at 9 (bracketed text in original). By the bracketed addition of [RF] to channel, the Board indicated that the terms channel and RF channel are synonymous in the context of the 822 Patent specification. Fourth, the Board s own findings in the present proceedings are consistent with a construction of both channel and RF channel as frequency bands. As the Board recognized, the 822 Patent specification at 6:50 65 expressly characterizes the channels described as being 6 MHz in width, thus, making plain that the channels referred to are of a particular type, namely, frequency bands. Inst. at The Board further found that the 822 Patent specification at 9:65 10:22 refer[s] to channel width, and increasing channel width from 6 MHz per channel to 12 MHz per channel, again indicating that the relevant channels are frequency bands. Id. at 10. Thus, in this and related proceedings, the Board has 13

19 correctly interpreted both terms channel and RF channel in view of the specification of the 822 Patent as frequency bands. The only issue on which Patent Owner respectfully requests the Board to reconsider its initial decision is the finding that the specification of the 822 Patent discloses channels other than frequency bands. As the Board stated, [a]n ordinarily skilled artisan at the time of invention of the 822 patent would have recognized that the various RF transmission systems identified in the 822 patent (e.g., cellular telephone and cable television systems) employ different multiplexing schemes (e.g., CDMA and FDMA) that use distinct channel types (e.g., code channels and frequency bands) for data transmission. Inst. at 8; see also id. at 10. However, that is not what the 822 Patent teaches. The Board s finding relied on the 822 Patent s statement that both analog and digital signals can be sent using modulation carriers, such as in digital PCS and cellular telephone, DBS (direct broadcast satellite), wireless cable and cellular wireless cable, or hybrid fiber coax. EX1001, 822 Patent at 5:35 39; Inst. at 8, 10; Petition (hereinafter, Pet. ) at However, the quoted passage in the 822 Patent is in the context of a discussion of [t]raditional baseband and multiplexed analog signals (EX1001, 822 Patent at 5:24), not the claimed invention. EX2002, Nettles at 39. As Petitioner s expert put it, this is just all background. EX2003, Wechselberger Dep. at 154:24 155:5. And at any rate, traditional 14

20 baseband and multiplexed analog signals carry information in distinct frequency bands. EX2002, Nettles at 39. Specifically, a baseband signal is an unmodulated signal that occupies a frequency band around zero frequency. Id. Likewise, analog signals occupy frequency bands, and due to their analog nature they can be multiplexed using frequency division multiplexing, but not using code division multiplexing. Id.; EX2003, Wechselberger Dep. at 26:11 27:8, 153:22 154:4. Thus, the portion of the 822 Patent at 5:35 39 relied upon by the Board does not support the notion that a channel can be other than a frequency band. EX2002, Nettles at 40. The 822 Patent provides a general overview of the state of traditional technology prior to the invention, with a specific emphasis on the most relevant prior art namely, frequency multiplexed channels. Id. The term modulation carriers (EX1001, 822 Patent at 5:36) makes no reference to any specific multiplexing technique, and would not be understood by a person of ordinary skill as an invitation to apply techniques other than frequency multiplexing. EX2002, Nettles at 40. And the generic reference to digital PCS and cellular telephone, DBS (direct broadcast satellite), wireless cable and cellular wireless cable, or hybrid fiber coax (EX1001, 822 Patent at 5:36 39) only has to do with potential fields of use of those prior art techniques, and is entirely 15

21 unrelated to the use of the term channel in the 822 Patent specification. EX2002, Nettles at 40. The Board s own findings in related proceedings further confirm that the cited passage at 5:35 39 of the 822 Patent does not disclose channels other than frequency bands. As discussed above, the Board denied institution on a petition challenging the 565 Patent (EX2001), which issued as a continuation of the 822 Patent and shares the same specification. In rejecting an argument substantially identical to that made here by Petitioner regarding the term RF channel, the Board stated: Petitioner explains that the 595 patent teaches that both analog and digital signals can be sent using modulation carrier, such as in digital PCS and cellular telephone and that the cellular CDMA defines two types of channels CDMA and code channels. Pet (quoting Ex. 1001, 5:35 39). Based on this, Petitioner concludes that a person of ordinary skill in the art would understand that these channels are encompassed by the claims. Id. at 14. Petitioner does not explain why this would be the case and does not cite to any evidence for this conclusion. Cisco Sys., slip op. at 11. In an effort to find support for a broader reading of the claims, Petitioner points to the 822 Patent s statement that [u]sing advanced modulation techniques will allow the wideband signal distribution system 10 to be expanded [from 29 16

22 channels] up to 60, or more, channels, thereby further increasing throughput data rate. EX1001, 822 Patent at 6: Without support, Petitioner argues that the quoted passage discloses multiple channels modulated on the same frequency bands. Pet. at 16. Petitioner s own expert however, disagreed, stating that that s completely not what this is talking about. EX2003, Wechselberger Dep. at 144:22 145:18. As Mr. Wechselberger put it, the cited passage of the 822 Patent doesn t say whether [channels] are on the same or different broadcast frequencies, and each of those 60 channels could be on a separate frequency band. Id. at 145:19 146:13. Patent Owner s expert, Dr. Nettles, agrees with Mr. Wechselberger on this point. EX2002, Nettles at 41. In fact, the only reasonable interpretation of the cited passage is that advanced modulation techniques would allow transmitting the same amount of data using narrower frequency bands, and possibly even expanding the available bandwidth by including previously unused frequency bands, thus increasing the overall data rate. Id. In view of the Board s findings in these and related proceedings, there is no clear rationale for construing channel and RF channel differently. Simply put, nothing in the intrinsic record of the 822 Patent supports a construction of the term channel as other than a frequency band. As found by the Board in these proceedings, the 822 Patent specification extensively discusses both channels and RF channels as being frequency bands. In related proceedings, the Board 17

23 construed RF channels also as frequency bands, based inter alia on the interchangeability of the terms channel and RF channel in the specification. And as the Board noted, the specification of the 822 Patent provides no use of the term that is consistent with a broader definition of the term. Cisco Sys., slip op. at 10. Thus, both channel and RF channel should be construed as a frequency band. In addition to being the correct construction, an identical construction of channel and RF channel would harmonize and clarify the intrinsic record of the patent family. The prosecution history of one patent has been deemed to be relevant to the interpretation of claims of other patents in the same family. See, e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004) ( the prosecution history of one patent is relevant to an understanding of the scope of a common term in a second patent stemming from the same parent application. ). This is especially true where the two patents have the same or closely related claim limitation language. Regents of Univ. of Minnesota v. AGA Med. Corp., 717 F.3d 929, 943 (Fed. Cir. 2013). And just like the prosecution history of a patent, the record before the Board is a public record. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 497 n.1 (Fed. Cir. 1997). See also Aylus Networks, Inc., v. Apple Inc., No , 2017 WL , at *4 5 18

24 (Fed. Cir. May 11, 2017) (applying doctrine of prosecution disclaimer to IPR proceedings). Inconsistent findings by the Board would undermine the public notice function of the intrinsic record. For example, as discussed above, in parallel proceedings the Board has drawn different conclusions regarding the interpretation of the passage relating to digital PCS and cellular telephone[s] in the specification of the 822 Patent. EX1001, 822 Patent at 5: In its decision on institution in the present proceeding, the Board found that the cited passage constitutes a disclosure of different multiplexing schemes (e.g., CDMA and FDMA) that use distinct channel types (e.g., code channels and frequency bands) for data transmission. Inst. at 8. However, in denying institution on a parallel petition for the 565 Patent, the Board reached the opposite conclusion. Cisco Sys., slip op. at 11. A court or party faced with the task of interpreting the claims of any of the other patents in this family would have to decide whether to credit the Board s findings in these proceedings that the specification supports a broad reading of the term channel, or its finding in other proceedings that the very same portion of the specification does not support a broad reading of the closely related term RF channel. Accordingly, Patent Owner respectfully requests that the Board rectify the record by construing both terms channel and RF channel in the same way. 19

25 B. Address, Addressed, and Addressable Device The term address does not need construction because the 822 Patent uses the term in its ordinary and customary meaning. EX2002, Nettles at 43. As Petitioner concedes, [t]he specification s example of an IP address indicates the 822 patent is using the industry understanding of the term address. Pet. at 19. And Petitioner s expert agrees that any form of addressing is encompassed by the claims. EX1002, Wechselberger at 127. Thus, the term address requires no construction. 3 EX2002, Nettles at 43. Moreover, Patent Owner believes that the Board can resolve all the issues in dispute without construing address and related terms. [O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). As discussed immediately below, Petitioner has failed to show that any of the challenged claims is unpatentable under any construction of address and related terms. EX2002, Nettles at Petitioner also proposes the related terms addressed and addressable device for construction. Neither term requires construction, for at least the same reasons set forth with respect to the term address. 20

26 IV. OVERVIEW OF THE CITED REFERENCES Petitioner relies on U.S. Patent No. 5,859,840 ( Tiedemann, EX1009), U.S. Patent No. 5,103,459 ( Gilhousen, EX1010) and U.S. Patent No. 6,081,536 ( Gorsuch, EX1011). Relevant aspects of each are discussed below. A. Tiedemann Tiedemann is purportedly concerned with multiple users sharing a communications resource such as in a cellular CDMA system. EX1009, Tiedemann at 1: Tiedemann expressly focuses on CDMA and teaches away from other types of cellular systems: The use of code division multiple access (CDMA) modulation techniques is one of several techniques for facilitating communications in which a large number of system users are present. Other multiple access communication techniques, such as time division multiple access (TDMA) [and] frequency division multiple access (FDMA) are known in the art. However, the spread spectrum modulation technique of CDMA has significant advantages over these other modulation techniques for multiple access communication systems. Id. at 1:25 35; EX2002, Nettles at 46. Tiedemann relates to conventional cellular telephony. EX2002, Nettles at 47. For example, Fig. 1 of Tiedemann depicts a communication system comprising mobile station 10 and cell base station 12. EX1009, Tiedemann at 3:

27 Tiedemann s system is only capable of voice telephony and is not suitable for computer networking. EX2002, Nettles at 48. As stated in Tiedemann, [c]ell base station 12 transmits information to and receives information from mobile telephone switching office (MTSO) 14. MTSO 14, in turn, transmits information to and receives information from a public switching telephone network (not shown). EX1009, Tiedemann at 3: Even when discussing the transmission of data, Tiedemann is always referring to data representing a voice signal. EX2002, Nettles at 48. An example of variable rate data source is a variable rate vocoder. Since speech inherently contains periods of silence, i.e. pauses, the amount of data required to represent these periods can be reduced. EX1009, Tiedemann at 2:3 10; see also id. at 2:11 16; EX2003, Wechselberger Dep. at 60:15 61:9, 64:3 12. Tiedemann does not disclose a mobile station with uses beyond voice communication, e.g., Internet browsing, , or other types of 22

28 data traffic. EX2002, Nettles at 48; see also EX2003, Wechselberger Dep. at 58:2 17, 59:14 16, 61:24 62:10. Both parties experts agree that Tiedemann s only disclosed example of mobile station 10 is a cellular telephone. EX2002, Nettles at 49; EX2003, Wechselberger Dep. at 58:18 59:13. Fig. 3 of Tiedemann shows the telephone s receiver system. EX1009, Tiedemann at 3:28 29, 3:55 59, 7:2 6; EX2002, Nettles at 49. As stated in Tiedemann, [t]he RF signal is received by antenna 110 and provided to receiver 112. EX1009, Tiedemann at 7: After processing by the circuitry shown in Fig. 3, data is provided through multiplexer 127 to data sink 130. Id. at 7: Data sink 130 could be the user of mobile station 10 or further processing elements. Id. at 7: Tiedemann is silent as to the structure or functionality of the data sink 130. EX2002, Nettles at

29 B. Gilhousen Gilhousen also focuses on CDMA cellular telephone systems, e.g., system and method for communicating information, in a mobile cellular telephone system or satellite mobile telephone system, using spread spectrum communication signals. EX1010, Gilhousen at 1:10 13; EX2002, Nettles at 51. Like Tiedemann, Gilhousen states that CDMA has significant advantages over other modulation techniques, such as FDMA. EX1010, Gilhousen at 1:18 4:37; EX2002, Nettles at 51. C. Gorsuch Gorsuch purportedly provides an integration of ISDN protocols and existing cellular signaling such as is available with Code Division Multiple Access (CDMA) type modulated systems. EX1011, Gorsuch at 2: Two aspects of Gorsuch are thus relevant to the following discussion, namely, its focus on CDMA cellular systems, and its combination of CDMA and ISDN communications protocols. EX2002, Nettles at 52. As mentioned above, Gorsuch builds on existing cellular signaling such as is available with Code Division Multiple Access (CDMA) type modulated systems. EX1011, Gorsuch at 2: Gorsuch s entire disclosure focuses on CDMA, and does not discuss application to other multiplexing techniques, such as frequency division multiplexing. EX2002, Nettles at

30 ISDN is a suite of communications protocols originally developed in the 1980 s to standardize the implementation of digital wireline telephone networks. See EX1011, Gorsuch at 1:66 2:18; EX2002, Nettles at 54. Fig. 1 of Gorsuch depicts a block diagram of a system that integrates ISDN and CDMA elements. EX1011, Gorsuch at 3: The system includes CDMA cellular base station 170 in communication with subscriber units 101, 102 which in turn provide data and/or voice services to portable computers 110 and telephones 112 via a wired ISDN interface. EX1011, Gorsuch at 3:36 57; EX2002, Nettles at

31 V. ARGUMENT Petitioner has failed to carry its burden of proving unpatentability of the challenged claims by a preponderance of the evidence. 35 U.S.C. 316(e). First, as properly construed, the claims of the 822 Patent require the use of at least two channels, or frequency bands, whereas all of the references relied upon by Petitioner use a single frequency band. Second, under any construction of the claims, Petitioner s proposed combination of references fails as inoperable. EX2002, Nettles at 56. A. The References Do Not Disclose Multiple Channels The 822 Patent claims an intelligent device that receives a modulated RF signal containing multiple channels, demodulates at least two channels, and combines the at least two channels into a single digital stream. See EX1001, 822 Patent at 12:22 40 (claim 1), 15:1 23 (claim 19); EX2002, Nettles at 57. The Board instituted trial under a broad construction of the term channel that encompasses, for example, CDMA and code channels, in addition to the frequency band channels used in FDMA. Inst. at 21. However, as discussed in Section III.A above, the 822 Patent uses the terms channel, frequency channel, and RF channel in the sense of a frequency band, with each channel being transmitted in a different frequency band. EX2002, Nettles at 57. None of the references relied upon in the Petition discloses receiving, demodulating and 26

32 combining at least two frequency channels. Id. Rather, they each rely on a very different technique, called spread spectrum, which is used in Code Division Multiple Access (CDMA) cellular systems. Id. Instead of transmitting different data streams on separate radio frequency channels, CDMA purposely combines multiple radio transmissions into a single radio frequency channel, on a single frequency. Id. Therefore, under the correct construction of channel, the cited references do not teach receiving, demodulating, and combining at least two channels, nor has Petitioner shown that a person of ordinary skill in the art would find it obvious to modify the teachings of the prior art to meet those claim limitations. Id. Thus, the cited references fail to render obvious any 822 Patent claim. See Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016). As explained in Section II, the 822 Patent s inventions use a combination of multiple radio frequency channels to overcome the physical limitations of any individual RF channel. EX2002, Nettles at 58. The use of the RF spectrum in the 822 Patent is a form of the Frequency Division Multiple Access (FDMA) multiplexing technique discussed in the declaration of Petitioner s expert, Mr. Wechselberger. In Frequency Division Multiple Access (FDMA), the RF spectrum is divided into frequency bands and each band forms a channel to carry a separate data stream. EX1002, Wechselberger at 56. The division of the RF 27

33 spectrum into frequency channels is visually depicted in the following diagram from Mr. Wechselberger s declaration: Id. As shown in the diagram, each data stream is assigned to a channel on a frequency band that does not change over time. EX2002, Nettles at 58. Consistent with the specification s description of the invention, the claims of the 822 Patent recite an intelligent device that receive[s] a modulated RF signal containing multiple channels, demodulate[s] at least two channels contained in the modulated RF signal, and combine[s] the at least two channels demodulated by the demodulator unit into a digital stream. EX1001, 822 Patent at 12:22 40, 15:1 23. Thus, the claims require receiv[ing], demodulat[ing] and combin[ing] at least two channels, each channel being received on a separate frequency band. EX2002, Nettles at

34 Each of the three references relied upon in the Petition fails to disclose these limitations, because they are based on an entirely different approach to managing the RF spectrum. EX2002, Nettles at 59. Tiedemann, Gilhousen and Gorsuch all relate to cellular telephone networks using Code Division Multiple Access (CDMA), which is a type of spread-spectrum communication system. EX1009, Tiedemann at 1:23 35; EX1010, Gilhousen at 1:7 18; EX1011, Gorsuch at 2:21 25; EX2002, Nettles at 59. Instead of assigning each data stream to an individual channel on a separate frequency band, in CDMA data streams are spread over a wideband channel. EX1002, Wechselberger at 58. The spreading of all data streams over a single frequency band is visually depicted in the following diagram from Mr. Wechselberger s declaration: Id. As shown in the diagram, all data streams are simultaneously transmitted over the same frequency band. EX2002, Nettles at

35 The IS-95 cellular standard is an example of CDMA spread spectrum technology. EX2002, Nettles at 61; EX1002, Wechselberger at 92. In the IS- 95 system, a 1.25 MHz radio frequency channel is capable of carrying 64 data streams, or coded channels. Id. at 58, Each of the 64 data streams is assigned a Walsh code or spreading code. Id. at 58, 92. The use of Walsh codes allows one particular coded channel to be isolated and decoded from all other coded channels, even though they are all broadcasting on the same RF channel. Id. at 93 (emphasis added). Fig. 3 of Gorsuch (reproduced below in relevant part) clarifies the distinction between a radio frequency channel, which occupies a 1.25 MHz frequency band, and a coded channel, which Gorsuch calls a subchannel, with 64 subchannels being transmitted at the same time on a single RF channel: EX2002, Nettles at

36 As stated in Gorsuch, a CDMA transceiver is capable of being tuned at any given point in time to a given 1.25 MHZ radio frequency channel. EX1011, Gorsuch at 6:32 33 (emphasis added). Each radio frequency channel is divided into 64 subchannels, each of which is physically implemented by encoding a transmission with one of a number of different assignable pseudorandom codes. Id. at 6: For example, the subchannels may be defined within a single CDMA RF carrier by using a different orthogonal Walsh codes for each defined subchannel. Id. at 6:51 53; EX2002, Nettles at 63. Petitioner s obviousness theory relies on the combination of Tiedemann, Gilhousen and Gorsuch, all of which relate to spread spectrum communication and thus do not teach multiple frequency channels. EX2002, Nettles at 64. For example, Tiedemann discusses a CDMA communication system, wherein each channel is provided by spreading the data by a different spreading sequence. EX1009, Tiedemann at 2: Tiedemann refers to the IS-95 CDMA spread spectrum standard discussed above. EX1009, Tiedemann at 4:62 67; EX1002, Wechselberger at 141. Petitioner contends that Tiedemann s primary channel and additional channel(s) meet the claim limitation of multiple channels in claims 1 and 19 of the 822 Patent. Pet. at However, each of Tiedemann s channels is provided by a unique Walsh spreading sequence, i.e., is a coded channel. 31

37 EX1009, Tiedemann at 3:65; EX2002, Nettles at 65. As explained above, coded channels are all broadcasting on the same RF channel. EX1002, Wechselberger at 93. Thus, Tiedemann does not teach or suggest receiv[ing], demodulat[ing] and combin[ing] at least two channels as required by each of the challenged claims, as properly construed. EX2002, Nettles at 65. Perhaps aware of Tiedemann s obvious shortcomings, Petitioner attempts to rewrite its disclosure. According to Petitioner, Tiedemann teaches that, depending upon the type of multiple access system used, the multiple channels in the RF signal are provided in different ways. For FDMA systems, the channels are distinguished by different frequency bands in the RF signal. Pet. at 25. However, Tiedemann only makes a passing, non-enabling reference to FDMA. EX2002, Nettles at 66. The entirety of Tiedemann s disclosure in this regard is: [I]f the present invention is applied to a frequency division multiple access communication system, then the channel assignment messages would specify additional frequencies which will be used to provide data to mobile station 10. EX1009, Tiedemann at 5: Tiedemann, however, fails to disclose how one would practice the disclosure using multiple frequency channels instead of coded channels. EX2002, Nettles at 66. Except for the single sentence quoted above, Tiedemann s disclosure is focused on spread spectrum CDMA systems. Id. Tiedemann simply does not disclose the requisite receiving, demodulating and 32

38 combining multiple RF channels in any system. Id. And as discussed below, the other references relied upon in the Petition also fail to disclose multiple RF channels, as they focus entirely on CDMA spread spectrum communications that combine all data streams on a single radio frequency channel. Id. Petitioner does not allege that receiving, demodulating and combining multiple frequency channels in an FDMA system is somehow inherently disclosed by Tiedemann. To the extent Petitioner does argue inherency, it has not explained how a person of ordinary skill would be able to apply Tiedemann s disclosure to an FDMA system, let alone how the result would meet the claims of the 822 Patent. EX2002, Nettles at 67. For example, the brief sentence relied upon in the Petition mentions additional frequencies. See EX1009, Tiedemann at 5: But Tiedemann is silent as to what would be used as a primary RF channel. EX2002, Nettles at 67. Tiedemann also mentions a channel assignment message, but does not disclose how this message would be sent in an FDMA system, which functions entirely differently from CDMA. Id. Nor does the Petition fill those gaps by providing an explanation of how Tiedemann s teachings would apply to an FDMA system. Id. Finally, Petitioner does not allege that it would be obvious to apply Tiedemann s teachings to a FDMA system using multiple RF channels. And to the 33

39 extent Petitioner does argue obviousness, Tiedemann expressly teaches away from the claimed subject matter because it disparages FDMA in favor of CDMA: Other multiple access communication techniques, such as frequency division multiple access (FDMA) are known in the art. However, the spread spectrum modulation technique of CDMA has significant advantages over these other modulation techniques for multiple access communication systems. CDMA by its inherent nature of being a wideband signal offers a form of frequency diversity by spreading the signal energy over a wide bandwidth. Therefore, frequency selective fading affects only a small part of the CDMA signal bandwidth. Path diversity is obtained by exploiting the multipath environment through spread spectrum processing by allowing a signal arriving with different propagation delays to be received and processed separately. Furthermore, space or path diversity is obtained by providing multiple signal paths through simultaneous links between a mobile user and two or more base stations. EX1009, Tiedemann at 1:28 58; EX2002, Nettles at 68. Thus, Tiedemann itself counsels against using FDMA and instead teaches that CDMA should be adopted because of its significant advantages. EX1009, Tiedemann at 1:33 34; EX2002, Nettles at 68. Gilhousen and Gorsuch also relate to CDMA, and thus fail to remedy Tiedemann s deficiencies. EX2002, Nettles at 69. Like Tiedemann, Gilhousen relates to a system and method for communicating information using spread 34

40 spectrum communication signals. EX1010, Gilhousen at 1: If anything, Gilhousen reinforces the notion, taught by Tiedemann, that spread spectrum CDMA technology was thought to be particularly advantageous at the relevant time. EX2002, Nettles at 69. Gilhousen also confirms that CDMA multiplexes information over one frequency band. Id. In a CDMA cellular telephone system, the same frequency band can be used for communication in all cells. EX1010, Gilhousen at 2: Likewise, Gorsuch relies on existing cellular signaling such as is available with Code Division Multiple Access (CDMA) type modulated systems. EX1011, Gorsuch at 2: Importantly, Petitioner s own expert concedes that the coded channels of Tiedemann, Gilhousen and Gorsuch are all broadcasting on the same RF channel, or frequency band. EX1002, Wechselberger at 93. Since Tiedemann, Gilhousen and Gorsuch all fail to teach or suggest receiv[ing], demodulat[ing] and combin[ing] at least two channels, as each of the challenged claims requires, Petitioner has failed to show that any of the claims are unpatentable. EX2002, Nettles at 70. In related proceedings, the Board reached the same conclusion in denying institution on parallel inter partes review petitions for other patents in the same family as the 822 Patent, and sharing the same specification. As discussed in Section III.A above, the Board first determined that the broadest reasonable 35

41 construction of the term RF channel does not extend beyond frequency bands. Cisco Sys., slip op. at 9. The Board then determined that, under that construction, Petitioner failed to show that Tiedemann, Gilhousen and Gorsuch rendered obvious the challenged claims, because those references do not disclose multiple RF channels, or frequency bands: We agree with Patent Owner that the channels Tiedemann is referring to in its descriptions are CDMA code channels. And Petitioner s expert explains that these CDMA coded channels all broadcast on the same RF channel. In fact, Tiedemann itself implies that its system uses one frequency channel by stating that the described invention may be applied to a frequency division multiple access communication system and if it is, the channel assignment messages would [specify] additional frequencies which will be used to provide data to mobile station 10. Ex. 1009, 5:39 42 (emphases added). Nothing that Petitioner points us to in Tiedemann leads us to conclude that Petitioner is reasonably likely to show that Tiedemann teaches at least two dynamically allocated RF channels as we have construed the term RF channel. And Petitioner has not asserted that this limitation would have been obvious based on the disclosure of Tiedemann or Tiedemann in view of any of the other asserted references. Id. at Thus, under the correct construction of channel as limited to a frequency band, Tiedemann, Gilhousen and Gorsuch all fail to disclose 36

42 receiv[ing], demodulat[ing] and combin[ing] at least two channels, and therefore fail to render the challenged claims obvious. EX2002, Nettles at 71. B. Petitioner s Proposed Combination of References Is Inoperable Petitioner s alleged ground of invalidity for the challenged claims relies on the combination of Tiedemann (EX1009) and Gorsuch (EX1011). Pet. at 21 46; Inst. at However, Petitioner s proposed combination is inoperable. EX2002, Nettles at 72. As discussed in Section IV.A above, Tiedemann relates to voice-oriented cellular telephony, and not to computer networking. EX2002, Nettles at 73. Fig. 3 of Tiedemann shows the receiver system of Tiedemann s cellular telephone. EX1009, Tiedemann at 3:28 29, 3:55 59, 7:2 6; EX2002, Nettles at 73. Upon reception of voice data by Tiedemann s cellular telephone, the data is provided through multiplexer 127 to data sink 130. EX1009, Tiedemann at 37