Ericsson, Inc.v.Intellectual Ventures II LLC

Patent Trial and Appeal Board

Dec 7, 2015

12960774 (P.T.A.B. Dec. 7, 2015)

Trials@uspto.gov Paper No. 37
571-272-7822 Entered: December 07, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ERICSSON INC., and
TELEFONAKTIEBOLAGET LM ERICSSON
Petitioner,

v.

INTELLECTUAL VENTURES II LLC,
Patent Owner.
____________

Case IPR2014-00915
Patent 8,396,079 B2
__________

Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
DAVID C. McKONE, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Ericsson”) filed
a Petition (Paper 1, “Pet.”) requesting inter partes review of claims 6–10
and 28–32 of U.S. Patent No. 8,396,079 B2 (Ex. 1001, the “’079 patent”).
We issued a Decision to Institute an inter partes review of claims 6–10 and
28–32 of the ’079 patent. Paper 8 (“DI”). After institution of trial,
Intellectual Ventures II LLC (“Intellectual Ventures”) filed a Patent Owner’s
Response (Paper 17, “PO Resp.”) and Ericsson filed a Petitioner’s Reply
(Paper 21, “Reply”). We have jurisdiction under 35 U.S.C. § 318(a).
The instant case came before the Board for a regularly scheduled oral
hearing on the merits on August 25, 2015, the transcript of which is entered
as Paper 36 (“Tr.”). Also before the Board are the following matters:
Patent Owner’s Objection to Evidence (Paper 24); and
Patent Owner’s Motion to Exclude Evidence (Papers 27 and 31).
After considering the evidence and arguments of counsel and for the
reasons set forth below, we determine that Ericsson has met its burden of
showing, by a preponderance of the evidence, that claims 6–10 and 28–32 of
the ’079 patent are unpatentable.
Related Proceedings
The ’079 Patent issued from non-provisional application number
12/960,774, which is a continuation of non-provisional application
12/033,824 that resulted in the issuance of U.S. Patent 7,848,353 B2 (the
’353 Patent) and which shares a common Specification with the ’079 Patent.
Ex. 1001. The ’353 Patent is the subject of two IPR proceedings. The first
such IPR Proceeding is Ericsson Inc. and Telefonaktiebolaget LM Ericsson
v. Intellectual Ventures II LLC, Case IPR 2014-00919 (PTAB) in which the
Petitioner challenges 9–20 and 29–34 of the ’353 Patent. The second such
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IPR Proceeding is Google Inc. v. Intellectual Ventures II LLC, Case IPR
2014-01131 (PTAB) in which the Petitioner Google challenges claims 1–8
and 21–27 of the ’353 Patent.
The ’079 Patent and/or the ’353 Patent are patents-in-suit in one or
more of the following United States District Court patent infringement
actions:
Intellectual Ventures I LLC v. AT&T Mobility LLC, 1-13-cv-01668 (D.
Del. 2013).
Intellectual Ventures I LLC v. Leap Wireless Int’l, 1-13-cv-01669 (D. Del.
2013).
Intellectual Ventures I LLC v. Nextel Operations, 1-13-cv-01670 (D. Del.
2013).
Intellectual Ventures I LLC v. T-Mobile USA Inc., 1-13-cv-01671 (D. Del.
2013).
Intellectual Ventures I LLC v. United States Cellular, 1-13-cv-01672 (D.
Del. 2013).
Intellectual Ventures I LLC v. Motorola Mobility LLC, 0-13-cv-61358
(S.D. Fla. 2013).
I. BACKGROUND
A. The ’079 Patent (Ex. 1001)
The ’079 patent, titled “Communication Units Operating With
Various Bandwidths,” relates to digital communication systems such as
wireless cellular communication systems. Ex. 1001, 1:18–24. The
communication system disclosed in the ’079 patent is capable of operating at
a plurality of bandwidths. Id., Abstract. The system transmits a signal
comprised of a first signal portion and a further signal portion. Id. The first
signal portion is transmitted over a first bandwidth. Id. The first signal
portion contains an indication of an operating bandwidth selected from a
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plurality of bandwidths for use in transmitting and receiving the further
signal portion. Id.

Figure 1 of the ’079 patent is shown above. A plurality of subscriber
terminals (e.g., cell phones) 112, 114, 116 communicate wirelessly over
radio links 118, 119, 120 with a plurality of base transceiver stations 122,
124, 126, 128, 130, 132, also known as “Node-Bs.” Ex. 1001, 4:1–7. The
cell phones and Node-Bs transmit and receive multi-rate signals. Id. at
4:47–52.
A first portion of the multi-rate signal has a predetermined bandwidth
and contains an indication of an operating bandwidth for a further portion of
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the signal. Id. at claims 6, 28. Following transmission, both the indication
from the first signal portion and the information in the further signal portion
are recoverable. Id. The information in the further signal portion is
recoverable at the operating bandwidth indicated in the first signal portion.
Id.
B. The Challenged Claims
Ericsson challenges claims 6–10 and 28–32. Claims 6 and 28 are
independent claims. Claim 6 is a method claim and claim 28 is an apparatus
claim. Claims 6 and 28 are illustrative of the subject matter of the
challenged claims and are reproduced below:
6. A method performed by a wireless network, the method
comprising:
transmitting, by the wireless network, a signal having a first
signal portion at a first predetermined bandwidth and
containing an indication of an operating bandwidth
selected from a plurality of bandwidths used for a further
signal portion; and
wherein the indication is recoverable from the first signal
portion and information in the further signal portion is
recoverable at the operating bandwidth indicated by the
indication.
28. A wireless network, the wireless network comprising:
circuitry configured to transmit a signal having a first signal
portion at a first predetermined bandwidth, the first signal
portion containing an indication of an operating
bandwidth selected from a plurality of bandwidths used
for a further signal portion; and
wherein the indication is recoverable from the first signal
portion and information in the further signal portion is
recoverable at the operating bandwidth indicated by the
indication.
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C. The Asserted Grounds of Unpatentability
We instituted trial on Ericsson’s challenge to claims 6–10 and 28–32
of the ’079 patent as obvious under 35 U.S.C. § 103 over various
combinations of references listed below. DI, 19–20.
References Claims challenged
McFarland (Ex. 1002)1 and van Nee (Ex. 1003)2 6, 7, 10, 28, and 29
McFarland, van Nee, and Shahar (Ex. 1004)3 8 and 30
McFarland, van Nee, and Richardson (Ex. 1005)4 9 and 32
McFarland, van Nee, and Dahlman (Ex. 1006)5 31
Trompower (Ex. 1007)6 and Yamaura (Ex. 1008)7 6, 7, 10, 28, and 29
Trompower, Yamaura, and Shahar 8 and 30
Trompower, Yamaura, and Richardson 9 and 32
Trompower, Yamaura, and Dahlman 31
II. MOTION TO EXCLUDE EVIDENCE
Intellectual Ventures moves to exclude Exhibits 1012, 1013, 1016,
1017, 1022, 1032, and 1033. Intellectual Ventures also moves to exclude
selected paragraphs of testimony from the Supplemental Declaration of
Zygmunt J. Haas, PhD, which appears in the record as Exhibit 1031.

1 U.S. Patent No. 7,397,859 B2 to McFarland, issued July 8, 2008.
2 U.S. Patent No. 6,175,550 B1 to van Nee, issued Jan. 16, 2001.
3 U.S. Patent No. 6,987,754 B2 to Shahar et al., issued Jan. 17, 2006.
4 K.W. Richardson, UMTS Overview, ELECTRONICS & COMMUNICATION
ENGINEERING JOURNAL, June 2000.
5 Erik Dahlman et al., UMTS/IMT-2000 Based on Wideband CDMA, IEEE
COMMUNICATIONS MAGAZINE, Sept. 1998.
6 U.S. Patent No. 5,950,124 to Trompower et al., issued Sept. 7, 1999.
7 U.S. Patent No. 5,321,721 to Yamaura et al., issued June 14, 1994.
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A. Exhibit 1012 – European Prosecution History
Exhibit 1012 is taken from the prosecution history of a European
counterpart application to the ’079 Patent. Intellectual Ventures argues that
Exhibit 1012 is irrelevant and should be excluded under Rule 402 of the
Federal Rules of Evidence. Intellectual Ventures cites Volkswagen Group of
America, Inc. v. Emerachem Holdings, LLC, Case IPR2014-01557, slip op.
at 15 (PTAB Mar. 16, 2015) (Paper 13) for the proposition that whatever
happened in the European Patent Office (“EPO”) is essentially irrelevant.
Paper 27, 1.
Ericsson argues that, notwithstanding any differences in the law, the
European Application is relevant because it illustrates the applicability of the
Trompower reference (Ex. 1007) to a patent application having the same
specification of the ’079 Patent. Paper 31.
We think Exhibit 1012 is probative of whether Trompower is
analogous art to the ’079 patent and will admit it for this limited purpose.
We DENY Intellectual Ventures’ motion to exclude Exhibit 1012.
B. Exhibits 1013 and 1022 – LTE Evolution of Mobile Broadband
Intellectual Ventures argues that the publication date of Exhibits 1013
and 1022 (duplicates of each other) is after the priority date of the ’079
patent the Exhibits and, therefore, are irrelevant.
Ericsson argues that the purpose for which these articles are offered is
not as prior art, but as evidence of features known to be part of the products
alleged to be infringing by Patent Owner. Paper 27, 2. As such, Ericsson
contends that these exhibits are evidence of features that Intellectual
Ventures alleges fall within the scope of the claims of the ’079 patent, at
least as construed by Intellectual Ventures in another forum. Id. Ericsson
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further contends that these Exhibits demonstrate that Intellectual Ventures is
taking inconsistent positions on claim construction in this proceeding vis-à-
vis related District Court litigation.
All of the challenged claims of the ’079 patent contain limitations
directed to a “signal” with a “first signal portion” and a “further signal
portion.” Ex. 1001, claim 6, 28. The claims also contain limitations
directed to an “operating bandwidth.” Id. The parties engage in a vigorous
dispute over the proper construction of “signal” and “indication of an
operating bandwidth.” Intellectual Ventures takes the position in the instant
IPR proceeding that the OFDM system disclosed in McFarland (Ex. 1002),
does not satisfy the signal and bandwidth limitations of the challenged
claims. See e.g., PO Resp. 22–26.
We are cognizant that the Board applies a different claim construction
standard than that typically applied by district courts. Nevertheless, the
courts have long decried that patent owners may not, like a “nose of wax,”
twist the meaning of patent claims one way to avoid a finding of
unpatentability and in another way so as to find infringement. See
Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d
1111, 1117 (Fed. Cir. 2004) quoting White v. Dunbar, 119 U.S. 47, 51–52
(1886). Exhibits 1013 and 1022 are relevant because they shed light on
whether Intellectual Ventures is being consistent on the claim construction
positions that it is taking in two different forums as to whether OFDM
communication systems satisfy the signal and bandwidth limitations of the
challenged claims.
We DENY Intellectual Ventures’s motion to exclude Exhibits 1013
and 1022.
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C. Exhibit 1016 and 1017 – District Court Allegations
Exhibit 1016 is a copy of a complaint in one of the related District
Court patent infringement lawsuits identified above. Exhibit 1017 is an
opposition filed by Plaintiffs Intellectual Ventures I LLC and Intellectual
Ventures II LLC to a motion to sever filed by the defendants in related
District Court litigation. Intellectual Ventures argues that its allegations of
infringement have no relevance to the validity of the ’079 patent. Paper 27,
2–3. Intellectual Ventures relies on a Board decision in Synopsys, Inc. v.
Mentor Graphics Corp., Case IPR 2012-00042, slip op. at 15 (PTAB Feb.
22, 2013) (Paper 16) for the proposition that potentially infringing products
are irrelevant to the issues raised in the Petition. Paper 27, 3.
Ericsson responds that infringement-related evidence that tends to
show the potential breadth of challenged claims is relevant. Paper 31 (citing
Hewlett-Packard Co. v. MPHJ Tech. Invs., LLC, Case IPR 2013-00309, slip
op. at 20 (PTAB Nov. 19, 2014) (Paper 35)).
In the opposition to motion to sever (Exhibit 2017), plaintiffs, in the
related District Court litigation, make the following factual allegation to the
Delaware District Court.
Plaintiffs assert that each Defendants’ LTE wireless network
infringes Plaintiffs’ patents [inter alia the ’079 patent] . . . LTE
is the latest wireless standard published by the 3GPP
organization. It is currently marketed as 4G LTE.
Exhibit 1017, 2–3. To the extent that there is a factual connection between
the OFDM technology disclosed in the McFarland prior art reference in the
instant IPR proceeding (Ex. 1002) and the LTE technology that Intellectual
Ventures has accused of infringing the ’079 patent in the related District
Court litigation, Intellectual Ventures’ infringement allegations in the
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District Court litigation shed light on the scope of Intellectual Ventures’
allegations regarding the scope of the claims in the instant IPR proceeding.
We DENY Intellectual Ventures’ motion to exclude Exhibits 1016
and 1017.
D. Exhibit 1032 – Newton’s Telecom Dictionary
Intellectual Ventures argues that Exhibit 1032 is irrelevant, outside the
scope of Patent Owner’s Response, and will cause undue prejudice to Patent
Owner. Paper 27, 6. Ericsson argues that Exhibit 1032 is offered to rebut
Intellectual Ventures’ position as to the plain and ordinary meaning of “data
burst.” Paper 31, 7–8.
Exhibit 1032 is a technical dictionary that offers definitions of the
term “packet” as it is used in the telecommunications industry. The term
“packet” appears in the ’079 patent (Ex. 1001, 4:26); McFarland (Ex. 1002,
e.g., Fig. 10); van Nee (Ex. 1003, e.g., 4:25); Shahar (Ex. 1004, e.g.,
Abstract); Richardson (Ex. 1005, e.g., 93); Dahlman (Ex. 1006, e.g., 70);
and Trompower (Ex. 1007, e.g., 13:34). Given the issues raised by
Intellectual Ventures in the Patent Owner’s Response in connection with
above cited prior art references, we think the introduction of a technical
dictionary definition of “packet” is within the proper scope of rebuttal
evidence.
Accordingly, we DENY Intellectual Ventures’s motion to exclude
Exhibit 1032.
E. Exhibit 1033 – Digital Communications Fundamentals
Intellectual Ventures argues that Exhibit 1033 is neither referred to
nor discussed in Ericsson’s Reply and, therefore, should be excluded as
irrelevant under Federal Rule of Evidence 402. Paper 27, 7.
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Ericsson responds that its Reply specifically cites to paragraph 10 of
Dr. Haas’s Supplemental Declaration (Exhibit 1031, ¶ 10). Paper 31, 8–9.
Paragraph 10 of Dr. Haas’s declaration testimony, in turn, quotes directly
from Exhibit 1033. See Exhibit 1031, ¶ 10.
We DENY Intellectual Ventures’s motion to exclude Exhibit 1033.
F. Exhibit 1031 – Supplemental Haas Declaration
Intellectual Ventures moves to exclude paragraphs 4–9, 11–17, 19–23,
and 25 of the Supplemental Haas Declaration submitted in connection with
Ericsson’s Reply. Exhibit 1031.
1. Paragraphs 4–9, 11, 14, 15, 17, and 22–24
Intellectual Ventures argues that these paragraphs should be excluded
from evidence because they are not cited or otherwise relied on in
Petitioner’s Reply. Paper 27, 3.
Ericsson responds that the paragraphs support the analysis and
conclusions of Dr. Haas contained in the paragraphs that were cited in the
Reply and that there is no requirement that every paragraph must be
expressly cited in a corresponding brief. We agree and DENY Intellectual
Ventures’ motion to exclude paragraphs 4–9, 11, 14, 15, 17, and 22–24 of
the supplemental Haas declaration.
2. Paragraphs 12–17, 21–23, and 25
Intellectual Ventures moves to exclude these paragraphs as offering
testimony raising new issues. Paper 27, 3–6. In support of its position,
Intellectual Ventures cites the Board’s decision in Intri-Plex Tech., Inc. v.
Saint-Gobain Performance Plastics Rencol Ltd., Case IPR2014-00309, slip
op. at 13 (PTAB Mar. 23, 2014) (Paper 83). Paper 27, 3–6.
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Ericsson responds that these paragraphs are proper rebuttal to
Intellectual Ventures’s Patent Owner’s Response. Paper 31, 4–6.
The Intri-Plex decision relied on by Intellectual Ventures does not
apply to the instant situation. The Intri-Plex Petitioner did not support its
original Petition with any declaration testimony and then later submitted an
expert declaration, for the first time contemporaneous with its Reply, that
offered claim construction opinion testimony, a claim-by-claim, element-by-
element obviousness analysis of each challenged claim, and an opinion that
each challenged claim was obvious over the prior art. See Intri-Plex, Case
IPR2014-00309, Paper 83, 12.
In the instant case, we have reviewed the paragraphs at issue and
agree with Ericsson that they contain rebuttal testimony that is appropriate
for submission in a Reply. Accordingly, we DENY Intellectual Ventures’
motion to exclude paragraphs 12–17, 21–23, and 25 of the Supplemental
Haas Declaration.
3. Paragraphs 19 and 20
Intellectual Ventures argues that paragraphs 19 and 20 provide
“conclusory and unsupported” testimony that is not based on any facts or
data. Paper 27, 6. Ericsson responds that Dr. Haas’s testimony is based on
facts and data that he is personally familiar with based on his 35 years of
experience with wireless communications. Paper 31, 7.
We have reviewed paragraphs 19 and 20 where Dr. Haas offers
opinion testimony concerning his interpretation and analysis of the Shahar
(Ex. 1004) reference. We will admit Dr. Haas’s testimony regarding his
understanding and interpretation of Shahar based on his knowledge and
experience with wireless communications.
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We DENY Intellectual Ventures’ motion to exclude paragraphs 19
and 20 of the supplemental Haas declaration.
III. CLAIM INTERPRETATION
In an inter partes review, claims are given their broadest reasonable
interpretation consistent with the specification. See 37 C.F.R. § 42.100(b);
In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015).
Within this framework, terms generally are given their ordinary and
customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007).
1. “bandwidth”
Ericsson’s proposed construction: a frequency range.
Pet. 27, Reply 8.
Intellectual Ventures’ proposed construction: a width of a
frequency band.
PO Resp. 6–8.
In its initial Petition, Ericsson proposed to construe “bandwidth” as “a
frequency range that a component, circuit, or system passes or uses.”
Pet. 27. In the Decision to Institute, we construed bandwidth as “a
frequency range.” DI, 5. In its Reply, Ericsson agrees with the Board’s
preliminary construction and recognizes that the additional features in its
originally proposed construction are unnecessary. Reply 8.
Intellectual Ventures argues that a “width of a frequency band” is the
correct construction. PO Resp. 8. Intellectual Ventures argues that the
Board’s preliminary construction of “frequency range” does not convey the
concept of accuracy that “width of a frequency band” conveys. Id.
Intellectual Ventures does not explain how its proposed construction
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conveys a different concept of accuracy than the Board’s preliminary
construction. Id.
It is well settled that claims should be read in light of the specification
and teachings in the underlying patent. See Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). The PTO should also consult
the patent’s prosecution history in proceedings in which the patent has been
brought back to the agency for a second review. Id.8
The Specification uses two terms “chip rate” and “bandwidth,” each
about eleven times. For example,
This invention, at least in a preferred form, implements a
scheme where the SCH channel in the UTRA air-interface is
transmitted at the lowest chip rate supported by the system
design. Note that only the SCH channel is always transmitted
at the lower chip rate.
As the SCH is transmitted at the lower chip rate, the receiving
UE will by default, select the receiver bandwidth appropriate to
this lower chip rate. In this configuration, the UE will be able
to recover the SCH, irrespective of the chip rate used at the
transmitting Node B.
’079 Patent, 6:33–42 (emphases added). The Specification further explains
that the inventive concepts of the invention can be applied outside of the
context of wireless communication systems.
Although the preferred embodiment of the invention is
described with reference to a wireless communication system
employing a UMTS air-interface, it is within the contemplation
of the invention that the inventive concepts described herein
can be applied to any multi-bandwidth/multi-data rate
communication system–fixed or wireless.
Id. at 5:7–12. The ’079 patent issued on a continuation application (non-
provisional application number 12/969,775) that claims priority to non-

8 The Proxyconn case involved an IPR Proceeding.
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provisional application number 12/033,824 which eventually issued as
the ’353 patent that is the subject of related IPR proceedings.9 The ’353
patent, in turn, claims priority to non-provisional application number
10/293,635 (the ’635 application), which led to issuance of US Patent
7,356,098 (the ’098 patent).10 Ex. 1001, 1. During prosecution of the ’635
application, all of the originally filed claims used the term “chip rate” and
none of the originally filed claims used the term “bandwidth.” Ex. 1011,
468–473. Originally filed claim 1 is illustrative:
1. A method for synchronisation11 in a multi-rate
communication system, the method comprising:
receiving a signal having a synchronization portion at a first,
predetermined chip rate and containing an indication of chip
rate used for a further portion; and
recovering the indication from the synchronization portion at
the first, predetermined chip rate; and
recovering information in the further portion at the chip rate
indicated by the indication.
Ex. 1011, 468 (emphases added). All of the original pending claims in the
’635 application were rejected over Boer (US 5,706,428 iss. Jan. 6, 1998).12
Id. at 361. Boer discloses a multi-rate wireless data communication system.
Boer transmits the initial portion of a message at a predetermined data rate
and includes in such initial portion an identification segment identifying a
selected data rate at which the data portion of the message is to be

9 We take Official Notice of the ’353 patent. Exhibit 3003.
10 We take Official Notice of US Patent 7,356,098. Exhibit 3002.
11 Two alternative spellings for this word (1) synchronization, and (2)
synchronization, are used at various places in the Specification and various
prior art references. For the sake of simplicity and consistency, we will
hereinafter render this word with the spelling synchronization, regardless of
how term may be spelled elsewhere in the record.
12 We take Official Notice of Boer. Exhibit 3001.
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transmitted. Boer, 1:33–47. Boer discloses that it achieves a plurality of
data rates by using a plurality of different modulation techniques. Id. at
2:15–53.
[T]he preamble 216 and header 218 are always transmitted at
the 1 Mbps rate using DBPSK modulation. The subsequent
DATA field 214, however, may be transmitted at a selected one
of the four possible rates 1, 2, 5, or 8 Mbps, using the
modulation and coding discussed hereinabove.
Boer, 3:57–62.
In traversing the rejection over Boer, the applicant argued that Boer
discloses transmitting multi-rate signals where the plurality of data rates all
used the same symbol rate. Ex. 1011, 354 (citing Boer 1:33–47; 2:27–53).
Applicant further argued that a symbol rate is also referred to as the chip rate
for DSSS codes and that the chip rate determines a signal bandwidth.
Ex. 1011, 354. In order to distinguish over Boer, Intellectual Ventures’
amended its claims to include limitations with the term “bandwidth
determined by. . . chip rate.” Ex. 1011, 267. All of the independent claims
that eventually issued in the ’098 patent contain the term “bandwidth
determined by. . . chip rate.” Pet. 8–9; Ex. 1011 at 273, 354.13 Similarly, all
of the claims of the ’353 patent use the term “bandwidth” and none of the
claims use the term “chip rate” or “data rate.”
In the Notice of Allowance for the ’098 Patent, the Examiner
explained that Boer teaches the claimed method except that it fails to teach
recovering from a received first signal portion at a predetermined bandwidth
and then recovering information in a further signal portion at a bandwidth
indicated by the first signal portion. Ex. 1011, 44.

13 See also US Patent 7,356,098, claims 1, 9, 13, 20, 27.
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As modern telecommunications technology has developed over time,
the term “bandwidth” has acquired more than one meaning. For example,
one on-line dictionary provides the following two definitions:
1: a range within a band of wavelengths, frequencies, or energies;
especially: a range of radio frequencies which is occupied by a
modulated carrier wave, which is assigned to a service, or over which
a device can operate.
2: the capacity for data transfer of an electronic communications
system (graphics consume more bandwidth than text does); especially:
the maximum data transfer rate of such a system (a bandwidth of 56
kilobits per second).
www.merriam-webster.com/dictionary/bandwidth (last visited October 16,
2015). The parties’ proposed constructions appear to agree that the term
“bandwidth,” as used in the claims of the ’079 patent, more closely
conforms to definition number 1 above. Such a construction is supported by
the prosecution history of the ’353 patent where the claims were amended
essentially to substitute “bandwidth” or “bandwidth determined by . . . chip
rate” for “chip rate” to distinguish over the Boer reference.
In view of the foregoing, we retain the same construction for
“bandwidth” that we adopted for purposes of the Decision to Institute. Thus,
for purposes of this Final Written Decision, we construe “bandwidth” to
mean “a frequency range.” For purposes of clarification, we will provide the
following example: a band of frequencies with a lower cut-off frequency of
10 MHz and an upper cut-off frequency of 40 MHz has a “bandwidth” of 30
MHz.
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2. indication of operating bandwidth
Ericsson’s proposed construction: Ericsson contends that the
plain and ordinary meaning of this term should apply and that
no construction is necessary.
Reply 7–8.
Intellectual Ventures’ proposed construction: identification of a
particular operating bandwidth.
PO Resp. 8–10.
This term was not construed in the Decision to Institute as neither
party proposed a construction in their respective Petition or Preliminary
Response. Intellectual Ventures first placed the meaning of this phrase in
controversy in its Patent Owner’s Response after receiving our Decision to
Institute.
In support of its proposed construction, Intellectual Ventures argues
that claim 12, which depends from independent claim 11,14 recites that “the
receiver configured to recover information in the further signal portion
comprises a filter having a bandpass appropriate for the indicated operating
bandwidth.” PO Resp. 8–9 (emphasis in original). Intellectual Ventures
argues that a selected bandpass range could only be “appropriate” if the
indicated operating bandwidth is identified with particularity. Id. at 9. This
argument is not persuasive. If the word “appropriate” is necessary to
indicate that the operating bandwidth is “particular,” Intellectual Ventures
does not explain why the modifier “appropriate” appears only in a dependent
claim. We have considered Intellectual Ventures other arguments and find
them to be equally unpersuasive.

14 Neither claim 11 nor claim 12 is challenged by Ericsson in the instant IPR
proceeding.
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The term “operating bandwidth” appears in multiple claims in the
’079 patent. Ex. 1001, claims 1, 2, 6, 7, 11, 12, 13, 14, 19, 20, 21, 22, & 28.
However, the term “operating bandwidth” does not appear, in so many
words, throughout the Specification.
A claim construction analysis begins with, and is centered on, the
claim language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc.,
256 F.3d 1323, 1331 (Fed. Cir. 2001). In the instant case, claim 6 requires
that the claimed apparatus is configured to transmit a signal. The signal has
a “first” portion and a “further” portion. The first signal portion is
transmitted at a first “predetermined” bandwidth. The first signal portion
contains an “indication of operating bandwidth.” Such “indication” is
recoverable from the first signal portion. Information contained in the
further signal portion is recoverable at the “operating bandwidth” that is
“indicated by the indication.” The context of the claim suggests that the
“indication” is transmitted so that the transmitter and receiver can coordinate
with each other to send and receive the further signal portion at compatible
frequencies corresponding to the “operating bandwidth.”
The “ordinary and customary meaning of a claim term” is that
meaning that a person of ordinary skill in the art in question, at the time of
the invention, would have understood the claim to mean. See Translogic
Tech., 504 F.3d at 1257; Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005) (en banc). The Federal Circuit admonishes us that even under the
broadest reasonable interpretation, the Board’s construction cannot be
divorced from the specification and the record evidence. See Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Rather,
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“claims should always be read in light of the specification and teachings in
the underlying patent.” Id.
In the instant case, the Specification is directed to solving a need for a
synchronization scheme for multi-rate communication systems that
overcomes the problems in the prior art attributable to initial rate negotiation
schemes and other inefficiencies. Ex. 1001, 2:38–45. The Specification
discloses a receiving communication unit that can receive and process high-
speed signals of varying bandwidths. Id. at 5:41–46.
As explained by Intellectual Ventures’s expert, Dr. Zeger, the
Specification discloses that synchronization information is transmitted at a
specified narrow bandwidth. Ex. 2005 ¶ 30. This initial part of a
transmitted signal (referred to as the “synchronization channel” or “SCH”)
can be sent at a particular specified bandwidth corresponding to the lowest
chip rate supported by the system. Id. The receiver receives the SCH at the
specified bandwidth and identifies the bandwidth for the subsequent part of
the signal (referred to as the “transport channel”). Id. This “system”
bandwidth may be different from the initially specified bandwidth of the
SCH. Id. Once the receiver identifies the bandwidth for the subsequent part
of the signal, the receiver adapts its filtering to receive the transport channel
portion of the signal at the system bandwidth. Id. Then, transport
information is received at the wider system bandwidth. Id.
A person of ordinary skill in the art reading the Specification of
the ’079 patent, as a whole, would understand that the “operating
bandwidth” of claims 6 and 28 is the frequency range or bandwidth that is
used for the transport channel. The person of ordinary skill in the art would
also understand that that the operating bandwidth is coordinated between the
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transmitter and the receiver so that the frequency range that the transmitter
uses to transmit the data portion of the signal is compatible with the
frequency range that the receiver uses to receive the data. In other words,
the system operates at a range of frequencies, i.e., the “operating bandwidth”
that enables the receiver to receive what the transmitter has transmitted.
Intellectual Ventures’s proposed construction merely substitutes the
word “identification” in lieu of “indication” and then inserts the word
“particular” as a modifier to “operating bandwidth.” Substituting
“identification” for “indication” does nothing to clarify the meaning of this
phrase. Furthermore, we do not agree with Intellectual Ventures that
interjection of the word “particular” into the construction contributes
anything meaningful to an understanding of the term.
Thus, for purposes of this Decision, it is sufficient to construe
“indication of an operating bandwidth” to mean that the first signal portion
contains sufficient information so that when it is received, the receiver is
able to configure itself to receive the data portion of the signal (or “further
signal portion” or “transport channel”) at approximately the same frequency
range or bandwidth at which it has been transmitted by the transmitter.15

15 In further regard to Intellectual Ventures’s contention that the bandwidth
indication must be “particular,” we express no opinion as to whether the
receiver must be set to the exact same lower cut-off frequency and upper
cut-off frequency as the transmitter as a slightly narrower or broader
transmitter or receiver bandwidth may still be adequate to transmit and
receive the information contained in the signal and thus function as an
“operating bandwidth.” The key consideration is that the receiver is able to
receive the data that the transmitter transmits.
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3. “signal,” “first signal portion,” “further signal portion”
Ericsson’s proposed construction:
“signal”- a modulated waveform used to convey information.
“first signal portion” - the portion of the signal that identifies
the bandwidth for receiving the further signal portion.
“further signal portion” - a different portion of the signal from
the first signal portion and is received on the bandwidth
identified by the first signal portion.
Pet. 27–28.
Intellectual Ventures’ proposed construction:
“signal” - a modulated waveform used to convey information.
“first signal portion” - first portion of the modulated waveform.
“further signal portion” - a portion of the modulated waveform
different from the first portion.
PO Resp. 10.
With respect to “signal,” Ericsson has modified its proposed
construction from “a physical representation of data” to “a modulated
waveform used to convey information.” Petition, 27; Reply, 5. Thus, the
two parties now agree as to the meaning of “signal.”16
We are not persuaded that construction of this term is material to this
Decision, as it appears to us that all of Ericsson’s cited references
contemplate wireless transmissions that use modulated carrier waves.
Consequently, for purposes of this Decision, we construe “signal” as broad

16 With respect to “first signal portion” and “further signal portion,” we do
not discern any disagreement between the parties as to the ordinary and
customary meaning of “portion” as being a part of a whole, or that the “first
portion” is distinct from the “further portion.” Thus, we do not find it
necessary to further construe these terms for purposes of this decision.
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enough to encompass the wireless transmissions disclosed in Ericsson’s
cited references. 17
4. “data burst”
Ericsson’s proposed construction: a method of transmission that
combines a high data signaling rate with short transmission of time.
A “packet” is an example of a “burst of data.”
Pet. 28, Reply 5–7.
Intellectual Ventures’ proposed construction: does not offer a
proposed construction and argues that the Board should construe “data
burst” in accordance with its plain and ordinary meaning, which
Intellectual Ventures denominates as “a burst of data.”
PO Resp. 18.
Ericsson supports its proposed construction with definitions from
NEWTON’S TELECOM DICTIONARY. Pet. 28 (citing Ex. 1019); Reply 5;
Ex. 1032). Ericsson’s construction is corroborated by the testimony of its
declarant, Dr. Haas. Ex. 1015 ¶ 33, Ex. 1031, ¶¶ 13, 23. Intellectual
Ventures criticizes Ericsson’s proposed construction as needlessly
complicated. PO Resp. 17. Intellectual Ventures also faults Ericsson for not
identifying supporting intrinsic evidence; however, Intellectual Ventures

17 We note that claim 6 is limited to the context of “transmitting, by a
wireless network” and that the preamble to claim 26 indicates a “wireless
network.” Thus, our construction of “signal” in this Decision is limited to
the context in which it appears in the claims, namely, wireless signals
transmitted between a transmitter and a receiver. Nevertheless, the
Specification does not limit the scope of the invention to wireless systems.
“[I]t is within the contemplation of the invention that the inventive concepts
described herein can be applied to any multi-bandwidth/multi-data rate
communication system-fixed or wireless.” Ex. 1001, 5:9–12. We note that
in a related proceeding involving the ’353 patent, there are challenged
claims that are not limited to wireless communications systems.
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fails to cite any intrinsic evidence of its own to controvert Ericsson’s
construction. Id.
Intellectual Ventures’s proposed construction merely reorders the
words “data burst” to a “burst of data.” PO Resp. 18. Grammatically
converting “data” from an adjective to the object of a preposition does
nothing to clarify the meaning of this term. Intellectual Ventures
characterizes Ericsson’s construction as unduly narrow. Id. at 17. This
argument is conclusory in nature and fails to articulate how or why it does
not comport with our broadest reasonable construction standard.
The term “data burst” appears in the Specification of the ’079 patent
in twelve different places. The Specification does not define “data burst”
expressly. In column 6, the SCH (synchronization channel) is referred as to
being treated identically to “the rest of the data burst.” Figure 3A depicts a
“data burst construct 330” that is combined with SCH information 320 by
combiner 310. Ex. 1001, 6:61–63. The output of combiner 310 is referred
to as the “resultant data burst containing the SCH information.” Id. at 6:63–
64. This “data burst” is then passed to the antenna for transmission.
Id. at 7:1–2. After being transmitted, the data burst is received at the
antenna. Id. at 7:6–7. Throughout the Specification, the term “data burst” is
used in a very general way to refer to a construct or entity that contains
digital information and that is processed for transmission at the transmitter,
then transmitted via an antenna, then received via an antenna, and finally is
processed at the receiver.
Intellectual Ventures points to nothing in the Specification that tends
to differentiate a “data burst” from any other digital data construct or entity
that is transmitted or received in a digital communications system. Neither
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are we able to discern that “data burst,” as used in the Specification, is
anything other than a generic term used to describe a digital data
communication of some finite duration.18
The broad and generic nature of the term “data burst” was confirmed
by counsel during oral argument. When asked how to define “data burst” in
a way that discriminated between a transmission that is a data burst and a
transmission that is not a data burst, counsel for Intellectual Ventures
responded that a “continuous transmission” is not a data burst. Tr. 73:8–23.
Counsel did not dispute that packetized wireless transmissions constitute
data bursts. Tr. 73:20–74:11. Counsel conceded that data bursts are
“probably” inherent in McFarland (Ex. 1002) and Trompower (Ex. 1007).
Id.
On the present record, we modify our construction of “data burst”
from our Decision to Institute. See Jack Guttman, Inc. v. Kopykake Enters.,
Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002) (courts may engage in a rolling
claim construction, in which the court revisits and alters its interpretation of
the terms as its understanding of the technology evolves). For purposes of
this Decision, we construe “data burst” broadly to encompass any data
transmission of discrete, limited or finite duration.19 Thus, any
communication system that segments a stream of information into packets or
portions for transmission may be considered as employing “data bursts.”

18 We discern the limitation of finite duration from language in the
Specification and claims indicating that the transmission signals are divided
into “portions” and that the first signal portion contains an indication of the
bandwidth for the further signal portion which bandwidth is one of a
plurality of bandwidths used for a further signal portion. See e.g., Ex. 1001,
claim 26.
19 In contrast to a lengthy and continuous transmission.
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5. “synchronization,” “synchronization signal” (claim 8, 30)
Neither party requested construction of these terms. Ericsson
contends, nevertheless, that it is well known that synchronization is essential
to digital communications systems. Reply 15, (citing Ex. 1001, Background
section). Intellectual Ventures, in turn, argues that Shahar’s timing and
synchronization information is used to support multiple downstream
modulation formats that are not supported by the disclosure of McFarland.
PO Resp. 32.
The Specification of the ’079 patent discloses that known UMTS,
Time Division Duplex, and Frequency Division Duplex systems provide a
synchronization channel (SCH) that is used by user equipment to search for
valid signals and perform a synchronization procedure. Ex. 1001, 1:35–40.
Figure 3 of the ’079 patent depicts a synchronization channel (SCH) 320 that
is processed by the same transmit and receive filters as the physical channels
used to transport information having the same chip rate. Id. at 6:54–60.
Figure 4 shows the receiver/transmitter implementation of a multi-rate
scheme. Id. at 7:59–60. In this example, the information in the
synchronization channel (SCH) is transmitted at the low chip rate fb so as to
ensure that that the SCH information can be recovered in the receiver by
filtering at the same chip rate. Id. 7:60–66. The SCH information is then
encoded with the desired higher system chip rate fc, after which the data
portion is transmitted at such higher chip rate fc. Id. 7:66–8:8. The receiver
is then configured in a corresponding manner to recover first the SCH
channel information at the low chip rate fb and the data portion is recovered
at the higher chip rate fc. Id. at 8:9–46.
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The common English language definition of “synchronize” is “to
cause (things) to agree in time or to make (things) happen at the same time
and speed” and for “synchronization” is merely the “act or result of
synchronizing.” 20 The description of synchronization and synchronization
channel in the specification of the ’079 patent comports with the common
English language meaning of the term. The specification does not define
synchronization in any other manner, either expressly or by implication.
See Phillips, 415 F.3d at 1321 (the specification may expressly define terms
or define terms by implication). “In some cases, the ordinary meaning of
claim language as understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in such cases involves
little more than the application of the widely accepted meaning of commonly
understood words.” Phillips, at 1314. We think this is the case with how
synchronization is used in the ’079 patent. Thus, for purposes of this
decision, we will construe the term synchronization in accordance with its
plain and ordinary, common English language dictionary meaning, namely,
“the result of making things happen at the same time and speed.” Similarly,
the “synchronization signal” is that portion of the first signal portion that
provides information to make the transmitter transmit and the receiver
receive at the same rate.

20 http://www.merriam-webster.com/dictionary/synchronize (last visited
October 21, 2015).
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IV. OBVIOUSNESS OVER COMBINATIONS BASED
ON McFARLAND
Ericsson asserts that claims 6–10 and 28–32 would have been obvious
over McFarland in combination with one or more of van Nee, Shahar,
Richardson, and Dahlman. A patent is invalid for obviousness:
if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said
subject matter pertains.
35 U.S.C. § 103. Obviousness is a question of law based on underlying
factual findings: (1) the scope and content of the prior art; (2) the differences
between the claims and the prior art; (3) the level of ordinary skill in the art;
and (4) objective indicia of nonobviousness. See Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966). Courts must consider all four Graham
factors prior to reaching a conclusion regarding obviousness. See Eurand,
Inc. v. Mylan Pharms., Inc. (In re Cyclobenzaprine Hydrochloride
Extended-Release Capsule Patent Litig.), 676 F.3d 1063, 1076–77 (Fed. Cir.
2012). As the party challenging the patentability of the claims at issue,
Ericsson bears the burden of proving obviousness by a preponderance of the
evidence. See 35 U.S.C. § 316(e).
A. Scope and Content of the Prior Art
1. McFarland (Ex. 1002)
McFarland discloses a multi-carrier communication system that
employs Orthogonal Frequency-Division Multiplexing (“OFDM”).
Ex. 1002, Abstract. OFDM uses a relatively wide bandwidth
communication channel and breaks it into many smaller frequency sub-
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channels. Id. at 1:22–24. The narrower sub-channels are then used to
transmit data simultaneously at a high rate. Id. at 1:24–25.

Figures 3 and 4 of McFarland are shown above. The figures depict a
plurality of sub-channels identified as co to cN-1. The figures further identify
the spacing between the carrier frequencies of each channel. See Figs. 3 and
4 (label “Carrier Spacing”). The figures further show an “Occupied
Bandwidth” as a function of frequency. As graphically illustrated in Figures
3 and 4, McFarland’s specification explains that the Occupied Bandwidth of
the system depicted in Figure 4 has twice the Occupied Bandwidth of the
system depicted in Figure 3. Ex. 1002, 3:63–4:1. McFarland’s system is
designed to vary and regulate the operational mode of a multi-carrier system.
Id. at 3:9–19. In McFarland, an operational “mode” refers to the number of
carriers, symbol rate, and occupied bandwidth for a particular transmission.
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Id. McFarland’s system is designed to vary and regulate the operational
mode on a packet-by-packet basis. Id.
McFarland packetizes data transmission with a header that is sent and
received at a base mode that all nodes expect at the beginning of each
packet. Id. at 6:64–67. The header contains a field indicating the mode for
the remainder of the packet. Id. at 6:67–7:1. When transmitting, the mode
is adjusted on a packet-by-packet basis in order to take into account that
different destinations may be through different channels with different
bandwidths. Id. at 7:4–7.
2. van Nee (Ex. 1003)
Van Nee discloses a scalable OFDM system that is used in mobile,
wireless communication devices. Ex. 1003, 1:38–61. Van Nee uses control
circuitry to scale the transmission rate of an OFDM system by scaling signal
duration, number of carriers, and the number of bits per symbol per carrier.
Id. at 1:38–44.
Van Nee’s system allows asymmetric data rates between mobile units
and base stations. Id. at 2:11–18; 7:40–45. For example, the mobile units
can have lower data rates than the base stations by allocating only a fraction
of the total number of carriers to each mobile unit, while the base stations
transmit at all carriers simultaneously. Id.
3. Shahar (Ex. 1004)
Shahar discloses an adaptive modulation scheme that allows switching
the type of modulation used on wireless transmissions on a packet-by-packet
basis. Ex. 1004, 2:14–19. Shahar provides for a carrier signal modulated
with an information signal to be transmitted between two wireless devices.
Id. at 2:30–32. Shahar’s information signal comprises a header portion and
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a data portion. Id. at 2:32–34. The header portion includes information
identifying a modulation type that is used to modulate the data portion of the
signal. Id. at 35–38.
4. Richardson (Ex. 1005)
Richardson is an article published in the Electronics &
Communication Engineering Journal that presents a general overview of
UMTS technology. Ex. 1005. Section 7 describes the system architecture of
UMTS Terrestrial Radio Access Network (UTRAN). Ex. 1005, 96. It
explains that a UTRAN consists of one or more radio network subsystems
that, in turn, consist of radio network controllers and Node-Bs. Id. at 96–97.
5. Dahlman (Ex. 1006)
Dahlman provides an introductory overview to UMTS technology.
Ex. 1006. Among other things, Dahlman discloses improvements to second
generation mobile communications that are achieved by third generation
mobile communications technology. Id. at 70.
B. Differences Between the Prior Art and the Claimed Invention
1. Claims 6 and 28
Ericsson asserts that independent claims 6 and 28 are obvious over the
combination of McFarland and van Nee. Pet. 28. Claims 6 and 28 are
substantially similar in scope, with the principal exception that claim 6 is a
method claim and claim 28 is an apparatus claim. Ericsson relies on van
Nee as disclosing a base station for transmitting signals to a remote station in
a wireless communications system. Pet. 12. Intellectual Ventures focuses
its case on alleged deficiencies in the McFarland reference. PO Resp. 18–
26, 28, 29.
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Intellectual Ventures argues that McFarland’s “packet” is not a
“signal” within the meaning of claims 6 and 28. PO 22–23. This argument
is not persuasive. McFarland discloses transmitting packets of data.
Ex. 1002, 3:16–19. The packets have headers that contain a field indicating
the mode for the remainder of the packet. Id. at 6:64–7:3. The packets are
transmitted in a multi-carrier communication system that uses frequency
division multiplexing. Id., Abstract. McFarland’s specification is replete
with references to its packet transmissions as signals. Id. at 6:31; 7:34–37
(referring to “bandwidth of the transmitted signal”).
Intellectual Ventures relies on a technical argument that a packet is
fundamentally different from a signal, but this argument is unavailing.
PO Resp. 24–25. As we understand OFDM systems in general and
McFarland in particular, at some point packets of information containing a
header and a payload or data portion are multiplexed and then modulated
onto one or more carrier waves that are then transmitted between a
transmitter and a receiver. The physical entity that exists in the wireless
space between the transmitter and the receiver that conveys the packetized
information from the transmitter to the receiver exists in the form of a
modulated carrier wave that constitutes a “signal” as we have construed the
term. At oral argument in a related proceeding, counsel for Intellectual
Ventures conceded as much.21
Intellectual Ventures next argues that McFarland’s indication of an
operating “mode” is distinguishable from an “indication of an operating

21 JUDGE CAPP: But you’ll agree that once the packet is transmitted,
that’s part of the signal?
MR. HAMPTON: That’s the signal, yes.
Case IPR2014-01031, Paper 39 (Oral Hearing Transcript), 58:31–23.
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bandwidth” recited in claim 6. PO Resp. 19. This argument is also
unpersuasive. Intellectual Ventures’s argument relies, in part, on a
construction of “indication of an operating bandwidth” that we have rejected
above.
In McFarland, an operational “mode” refers to the number of carriers,
symbol rate, and occupied bandwidth for a particular transmission within the
context of a frequency division multiplexing communication system.
Ex. 1002, 3:9–19, Abstract. As illustrated by Figures 3–5, given a system
with fixed carrier spacing, a mode that uses, for example, three carriers/sub-
channels uses more occupied bandwidth than a mode that uses only two
carriers/sub-channels. McFarland further provides that:
A preferred approach might be to have a short header on the
packet that would be in a base mode that all nodes could receive
and would always expect at the beginning of the packet.
Within that header would be an indication of which mode the
remainder of the packet will be in. The receiver would then
quickly switch modes to receive the remainder of the packet.
Id. at 6:64 –7:3. An “indication” of how many carriers/sub-channels will be
used for the remainder of the packet is included in McFarland’s packet
header. Id. This follows from McFarland’s disclosure that an “operating
‘mode’” is a combination of symbol rate and numbers of carriers. Id. at
5:53–55.22 A person of ordinary skill in the art would understand, from at
least Figures 3–5 of McFarland, that specifying the number of carriers in a

22 The fact that a McFarland mode includes both symbol rate and occupied
bandwidth (number of carriers) is inconsequential to our analysis. Claims 6
and 28 each use open-ended “comprising” transitions. See CIAS, Inc. v.
Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (“In the
patent claim context the term ‘comprising’ is well understood to mean
‘including but not limited to.’”).
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mode of McFarland determines the occupied bandwidth of the signal, which
is patentably indistinguishable from Intellectual Ventures’s concept of an
“operating bandwidth.” Thus, McFarland’s disclosure that a packet heading
contains an “indication of which mode the remainder of the packet will be
in” satisfies the limitations in claim 1 directed to an “indication of an
operating bandwidth.”
Intellectual Ventures argues that McFarland does not satisfy the
limitations of claims 6 and 28 directed to identification of an operating
bandwidth because McFarland’s mode indication fails to specify the carrier
spacing and does not account for “guard-band.” PO Resp. 20. Neither of
these arguments is persuasive. With respect to the carrier spacing argument,
Intellectual Ventures’s counsel essentially repudiated this position at the oral
hearing.
JUDGE CAPP: Mr. Hampton, in order for McFarland to work, when it
transmits on subchannel 1, doesn’t its receiver need to
be tuned to the carrier frequency for subchannel 1?
MR. HAMPTON: Yes, as I understand it, it certainly needs to receive
that carrier.
JUDGE CAPP: And you’re not questioning whether McFarland
actually works?
MR. HAMPTON: No.
JUDGE CAPP: So, then it has subchannel 2, which has a carrier
frequency, and it receives at that carrier frequency and
the same for subchannel 3 and so on. So, if the
receiver knows what it’s transmitting at for each of the
carrier frequencies, how can you say that the receiver
doesn’t understand what the spacing is between the
carriers?
MR. HAMPTON: Oh, I think it does. I don’t know how else it would
receive the signals.
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Tr. 50:22–51:13.
With respect to Intellectual Ventures’s argument regarding
McFarland’s lack of disclosure of a guard-band, we are not persuaded that
claims 6 and 28 contemplate either the inclusion or exclusion of a guard
band. As admitted by Intellectual Ventures’s expert, Dr. Zeger, a guard
band is merely a band of frequency spectrum that serves as a buffer zone so
that modulation will not leak into neighboring bands. Ex. 1030, 46:4–6.
Thus, a guard band serves as a buffer to prevent interference between two
neighboring communication channels. Inasmuch as a guard band exists as a
buffer “between” two channels, there is no reason to include it “within” the
frequency spectrum or “operating bandwidth” of either of the neighboring
channels.
The term “guard band” per se does not appear in either the
specification or claims of the ’079 patent. Intellectual Ventures has not
identified any language in the specification that indicates or suggests that the
concept of allocating a portion of the frequency spectrum for a “guard band”
or analogous buffer zone is contemplated by the ’079 patent’s disclosure of
“operating bandwidth.” Neither does Intellectual Ventures identify any
language in the specification or claims that is concerned with neighboring
communication channels and/or providing a buffer between communication
channels. Consequently, we reject Intellectual Ventures’s “guard band”
argument.
2. Claims 7, 10, and 29
Claims 7 and 10 depend from claim 6. Claim 29 depends from
claim 28. Claim 7 adds a limitation that the first predetermined bandwidth is
lower than the indicated operating bandwidth. Claims 10 and 29 each add
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limitations that the first predetermined bandwidth is the lowest system
bandwidth. Ericsson asserts that independent claims 7, 10, and 29 are
obvious over the combination of McFarland and van Nee. Pet. 28.
Intellectual Ventures focuses its case on alleged deficiencies in the
McFarland reference. PO Resp. 26–29.
Ericsson relies on McFarland as transmitting a packet with a short
header in a base mode that all nodes would expect at the beginning of a
packet. Pet. 36, Ex. 1002, 6:67–7:1. McFarland discloses that all nodes
transmit at a base mode that all nodes can understand. Pet. 36, Ex. 1002,
6:37–38. Finally, McFarland discloses that, after initial communication is
successful, the nodes can move to higher data rate modes. Pet. 36, Ex. 1002,
6:38–40.
Intellectual Ventures argues that Ericsson’s Petition conflates the
concepts of “data rate” and “bandwidth.” PO Resp. 26. Intellectual
Ventures argues that McFarland does not disclose that the higher data rate
must correspond to a higher operating bandwidth and that it is possible for
McFarland to achieve higher data rates at the same or lower operating
bandwidths. Id. at 27 (citing Ex 2005 ¶ 59 (Zeger)).
Intellectual Ventures’s argument is not persuasive as it fails to
contemplate the teachings of McFarland as a whole. McFarland discloses
that nodes can transmit at a base mode, which all nodes can understand.
Ex. 1002, 6:35–38. If communication at the base mode is successful, the
nodes can move to more and more complex, and higher data rate, modes.
Id. at 6:38–40. McFarland discloses that data rate can be increased by:
(1) increasing the symbol rate, (2) increasing the number of carriers used, or
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(3) a combination of increasing both the symbol rate and the number of
carriers. Id. at 3:63–4:16.
For a given channel, there is an optimal occupied bandwidth,
symbol rate, and thereby number of separate carriers. It is
therefore beneficial to be able to vary both the symbol rate and
the size of the iFFT processor according to the quality of the
current channel.
Id. at 4:13–16; see also 5:30–31 (it is possible to change the symbol rate and
number of carriers simultaneously); see also 4:18–5:55 (discussing varying
the symbol rate, varying the number of carriers, and controlling symbol rate
and number of carriers); see also 7:1–7 (mode may be adjusted on a packet-
by-packet basis to accommodate different destinations through different
channels with different bandwidths).
Intellectual Ventures may be correct that, in certain instances,
McFarland may increase its data rate solely by increasing its symbol rate.
Nevertheless, McFarland also teaches that it may increase its data rate by
using a greater number of channels and thus using a greater occupied
bandwidth. Id. at 5:30–38 (doubling the symbol rate and doubling the
number of carriers quadruples the data rate of the channel). Thus,
McFarland discloses the limitation of claim 7 that the first predetermined
bandwidth is lower than the indicated operating bandwidth.
With respect to claims 10 and 29, Intellectual Ventures bootstraps its
argument from claim 7 and argues that, since Ericsson has not shown that
McFarland discloses a “lower” system bandwidth in connection with
claim 7, it also cannot show that the first predetermined bandwidth is a
lowest system bandwidth. PO Resp. 27–29.
First, as discussed above, we reject Intellectual Ventures’s claim 7
contentions with respect to “lower” system bandwidth. Furthermore, we
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think the concept of transmitting McFarland’s packet header at the lowest
system bandwidth is encompassed in McFarland’s disclosure of a “base
mode” which all nodes can understand. Ex. 1002, 6: 23–38; see also 6:64–
67 (a short header on the packet that would be in a base mode that all nodes
could receive). Logic dictates that, for all nodes to be able to receive it, the
base mode necessarily has to be at the lowest system bandwidth that is
common to all nodes in the system.
3. Differences between Claims 8 and 30 and the combination of McFarland,
van Nee, and Shahar
Claims 8 and 30 depend from claims 6 and 28 respectively and add
limitations directed to a signal comprising a data burst and the first signal
portion comprising a synchronization signal. Ex. 1001. Ericsson relies on
Shahar as disclosing these limitations. Pet. 40 (citing Ex. 1004, 13:21–51,
Fig. 4A). McFarland’s operating mode is disclosed as a combination of
symbol rate and number of carriers. Ex. 1002, 5:54–55. McFarland
communicates operating mode information, which includes symbol rate
information, in the header portion of a packet. Id. at 6:54–7:3.
Intellectual Ventures argues that Shahar fails to disclose a “data
burst.” PO Resp. 30. We disagree.
Shahar discloses transmitting a data packet 220 comprised of a
header 240 and a data field 250. Ex. 1004, Fig. 3. The header 240 contains
information relating to modulation type 300, length 310, fixed pattern 330,
and forward error correction (FEC) 340. Id. at Fig. 4, 13:21–35. The fixed
pattern field 330 provides timing and synchronization information for the
wireless modem. Id. at 13:29–31. Shahar varies all parameters involved in
the modulation and transmission of a communication including the symbol
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rate. Id. at 13:42–51. This disclosure is sufficient to establish that Shahar
transmits “data bursts” as we have construed the term above. Other than
pointing out that Shahar fails to use the term “data burst,” in so many words,
Intellectual Ventures provides no persuasive technical reasoning as to why a
person of ordinary skill in the art would not understand Shahar’s
transmissions of packets as data bursts. See In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009) (a reference need not satisfy an ipsissimis verbis
test).23
4. Differences between Claims 9 and 32 and the combination of McFarland,
van Nee, and Richardson (Ex. 1005).
Claims 9 and 32 depend directly from claims 6 and 28 respectively
and contain a limitation directed to transmitting by a Node-B. Ex. 1001,
claims 9, 32. Ericsson relies on Richardson as disclosing this limitation.
Pet. 41. Intellectual Ventures does not dispute Ericsson’s contention that
Richardson discloses transmitting by Node-B within the meaning of claims 9
and 32.
5. Differences between Claim 31 and the combination of McFarland, van
Nee, and Dahlman (Ex.1006)
Claim 31depends directly from claim 28 and contains a limitation
directed to a UMTS wireless network. Ex. 1001, claim 31. Ericsson relies
on Dahlman as disclosing the dependent limitation. Pet. 42. Intellectual
Ventures does not dispute Ericsson’s contention that Dahlman discloses a
UMTS wireless network within the meaning of claim 31.

23 We are also persuaded that McFarland’s disclosure of wireless
transmission using data packets with a header and data portion satisfies our
construction of a “data burst.” Ex. 1002, Abstract; see also Tr. 73:20–74:11,
where Counsel for Intellectual Ventures concedes that data bursts are
“probably” inherent in McFarland.
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C. Person of Ordinary Skill in the Art
Ericsson’s Petition does not provide an evidentiary based description
of a person of ordinary skill in the art. Nevertheless, Ericsson asserts that
the combination of elements recited in the claims of the ’079 patent would
have been obvious to a person of ordinary skill. Pet. 13, 24. Ericsson’s
expert, Dr. Haas, testifies that he defines the disputed claim terms based on
the understanding of a person of ordinary skill in the art. Ex 1015 ¶ 29. He
further testifies that a person of ordinary skill would have had a B.S. degree
in Electrical Engineering, Computer Engineering, Computer Science, or
equivalent training, as well as three to five years of experience in the field of
digital communications systems, such as wireless cellular communication
systems and networks. Id. at ¶ 34. According to Dr. Haas, such a person
would have been familiar with well-known communication techniques such
as OFDM. Id. Such a person would also know how to apply such different
techniques to communication systems and networks, including UMTS
networks. Id.
Intellectual Ventures does not provide an evidentiary based
description of a person of ordinary skill in the art. Intellectual Ventures
nevertheless contends that a person of ordinary skill in the art would
understand and construe all of the disputed claims in accordance with
Intellectual Ventures’s proposed constructions. See, e.g., PO Resp. 15.
Intellectual Ventures’s expert, Dr. Zeger, testifies he was asked to consider
the patent claims through the eyes of a person of ordinary skill in the art and
that he was told by counsel to consider factors such as the educational level
and years of experience of those working in the pertinent art; the types of
problems encountered in the art; the teachings of the prior art; patents and
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publications of other persons or companies; and the sophistication of the
technology. Ex. 2005 ¶ 24. Dr. Zeger testifies that counsel told him that
Intellectual Ventures has taken the position in related district court litigation
that a person of ordinary skill in the art would have earned a Bachelor’s
Degree in Electrical Engineering or a related field and would also have 2–3
years of experience in the wireless communications field. Id. at ¶ 25.
Dr. Zeger testifies that he has an understanding of the capability of a person
of ordinary skill in the art and that he has trained, supervised, directed, and
worked alongside such persons. Id. at 26.
Neither party presents a detailed evidentiary showing under the
factors recited in Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–
97 (Fed. Cir. 1983).24 Notwithstanding the scant evidence on skill level
presented by the parties, the level of skill in the art often can be determined
from a review of the prior art. See Litton Indus. Products, Inc. v. Solid State
Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985).
Based on our review of the prior art, the applicable field of endeavor
is wireless telecommunication. The person of ordinary skill in this field
would have been generally familiar with transmitting information using
packets that included a header portion and a data portion. Ex. 1002, 6:64–

24 Factors pertinent to a determination of the level of ordinary skill in the art
include: (1) educational level of the inventor; (2) type of problems
encountered in the art; (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology; and
(6) educational level of workers active in the field. Not all such factors may
be present in every case, and one or more of these or other factors may
predominate in a particular case. See id. These factors are not exhaustive
but are merely a guide to determining the level of ordinary skill in the art.
See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir.
2007).
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7:3. The person of ordinary skill in the art would have been familiar with
techniques for varying the signal rate and the occupied bandwidth of a signal
on a packet-by-packet basis. Id. at 7:4–15. The ordinarily skilled artisan
also would have been familiar with the fundamentals of OFDM
communications technology. Id. 1:18–2:61. Such fundamentals of OFDM
communications would have included synchronizing the timing and
frequency of OFDM signals. Ex. 1003, 7:1–8, 9:1–23. The skilled artisan
also would have been familiar with the basic principles underlying spread
spectrum communication technology. Ex. 1007, Abstract. Such an artisan
would have been familiar with modulating carrier waves, varying the
modulation scheme used in different packet/signals, and synchronizing the
modulation scheme between a transmitter and a receiver. Ex. 1004, 2:14–
19; 10:48–11:3. The person of ordinary skill in the art would also have
familiarity with using Node-Bs in a UMTS environment. Ex. 1005;
Ex. 1006.
D. Secondary Considerations of Non-Obviousness
Evidence of secondary considerations of non-obviousness, when
present, must always be considered en route to a determination of
obviousness. See Cyclobenzaprine, 676 F.3d at 1075–76. However, the
absence of secondary considerations is a neutral factor. See Custom
Accessories, Inc., Jeffrey-Allan Industries, Inc., 807 F.2d 955, 960 (Fed. Cir.
1986). Neither party introduced evidence on secondary considerations of
non-obviousness. Consequently, we will focus our attention on the first
three Graham factors.
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E. Whether the Prior Art Could Have Been Combined and/or
Modified to Achieve the Claimed Invention
The Supreme Court instructs courts to take an expansive and flexible
approach in determining whether a patented invention was obvious at the
time it was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415
(2007). The existence of a reason for a person of ordinary skill in the art to
modify a prior art reference is a question of fact. See In re Constr. Equip.
Co., 665 F.3d 1254, 1255 (Fed. Cir. 2011). In an obviousness analysis,
some kind of reason must be shown as to why a person of ordinary skill
would have thought of combining or modifying the prior art to achieve the
patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363
(Fed. Cir. 2008). A reason to combine or modify the prior art may be found
explicitly or implicitly in market forces; design incentives; the “interrelated
teachings of multiple patents;” “any need or problem known in the field of
endeavor at the time of invention and addressed by the patent;” and the
background knowledge, creativity, and common sense of the person of
ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1328–29 (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418–21).
1. Claims 6, 7, 10, 28, and 29 over the Combination of McFarland
and van Nee
Ericsson asserts that a person of ordinary skill in the art would have
recognized that van Nee’s base station may be used as the transmitter in
McFarland’s communication systems and networks for the similar function
of wirelessly transmitting signals. Pet. 32. Ericsson further contends that it
would have been obvious to one of ordinary skill in the art to apply the
known technique of using a base station, as taught by van Nee, to the
communication system of McFarland as such would have yielded a
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predictable result. Id. Ericsson supports its position with testimony from
Dr. Haas. Id. (citing Ex. 1015 ¶ 45).
Intellectual Ventures does not present evidence or argument in an
attempt to controvert Ericsson’s position on the combinability of McFarland
and van Nee. Intellectual Ventures’s appears to limit its opposition to
Ericsson’s case by focusing on alleged deficiencies in the McFarland
reference as previously discussed hereinabove.
2. Claims 8 and 30 over the Combination of McFarland, van Nee,
and Shahar
Ericsson asserts that a person of ordinary skill in the art would have
recognized that Shahar’s header field may be used in McFarland to provide
time and synchronization information in McFarland’s OFDM system.
Pet. 40. Ericsson further contends that it would have been obvious to one of
ordinary skill in the art to apply the known technique of using
synchronization information in a header of an OFDM data burst, as taught
by Shahar, to the header of McFarland to yield a predictable result. Id.
Ericsson supports its position with testimony from Dr. Haas. Id. (citing
Ex. 1015 ¶ 44).
Intellectual Ventures contends that Ericsson’s evidence of
combinability is insufficient. PO Resp. 30. Intellectual Ventures contends
that Ericsson fails to explain how or why one of ordinary skill in the art
would have combined McFarland and Shahar. Id. at 31. Intellectual
Ventures further contends that a person of ordinary skill in the art would not
have combined Shahar and McFarland, because Shahar teaches that the
purpose of its timing and synchronization information is to facilitate
multiple downstream modulation types. Id. Intellectual Ventures argues
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that McFarland does not have multiple downstream modulation types. Id.
at 31–32.
Intellectual Ventures presents neither evidence nor persuasive
technical reasoning to controvert Ericsson’s position that incorporating
Shahar’s modulation and synchronization techniques into McFarland would
have yielded a predictable result. Intellectual Ventures presents testimony
from Dr. Zeger to the effect that there would have been no need to use
Shahar’s synchronization in McFarland because McFarland does not use
multiple downstream modulation formats. Ex. 2005 ¶ 61. This testimony is
not persuasive because it ignores Ericsson’s evidence that Shahar and
McFarland, when combined, would use multiple modulation formats and,
therefore, would also use synchronization techniques associated therewith.
Moreover, Intellectual Ventures presents no evidence that incorporating the
multiple modulation formats and associated synchronization techniques of
Shahar into McFarland would require anything more than the exercise of
ordinary skill.
Moreover, in addition to teaching synchronization among modulation
schemes, Shahar can also be read as teaching synchronization in a more
general sense. “A reference may be read for all that it teaches, including
uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331
(Fed. Cir. 2012) (citing KSR, 550 U.S. at 418–21). Here, the prior art
already recognized the need for synchronization in wireless
communications. See Ex. 1001, 1:27–28 (“essential”); Ex. 1003, 7:1–8;
Ex. 1002, 4:18–26. We are persuaded that a person of ordinary skill in the
art would have been able to adapt Shahar’s teaching of synchronization to
the wireless system of McFarland and would have had good reason to do so.
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See KSR, 550 U.S. at 420 (any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed).
Furthermore, there is nothing in claim 8 or claim 30 that requires that
the claimed synchronization is necessarily used to synchronize between or
among various modulation schemes. The ’079 patent acknowledges that it is
known that synchronization is an essential procedure in a modern digital
communication system. Ex. 1001, 1:27–28. It further acknowledges that
synchronization is the procedure used by a remote unit to align the remote
frequency reference and timing to that used by the system infrastructure.
Id. at 1:28–35.
In McFarland, an operating mode contemplates a combination of
symbol rate and number of carriers. Ex. 1002, 5:53–55. McFarland
discloses that a packet has a short header that is transmitted in the base mode
that all nodes can receive and would always expect at the beginning of the
packet. Id. at 6:64–67. Within the header is an indication of which mode
the remainder of the packet will be in. Id. at 6:67–7:1. The receiver then
switches modes to receive the remainder of the packet. Id. at 7:1–3. Thus,
according to McFarland, the indication of operating mode not only includes
information as to the number of carriers that will be used, which corresponds
to the occupied bandwidth, but it also includes information as to the “symbol
rate” that will be used for the data portion of the packet.
Column 4 of McFarland contains a sub-section entitled “Variable
Symbol Rate” which explains that many methods are known in the art to
change the symbol rate of a multi-carrier system. Id. at 4:18–20. It further
explains that almost any approach for changing the symbol rate at the
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transmitter can be used in a similar fashion at the receiver. Id. at 4:24–26.
Among other things, it teaches that the symbol rates can be changed between
packets or even within packets. Id. at 4:48–50. Thus, it appears that one of
the functions of the header in McFarland is to coordinate the symbol rate for
the data portion of the packet between the transmitter and the receiver. This
meets the definition of synchronization as we have construed the term.
In view of the fact that the prior art recognized a need for
synchronization and further in view of McFarland’s disclosure that its
operating mode includes symbol rate information, we agree with Ericsson
that Shahar can be combined with McFarland so that McFarland’s OFDM
system can support multiple modulation formats that are synchronized in
accordance with the teaching of Shahar.
3. Claims 9 and 32 over the Combination of McFarland, van Nee, and
Richardson
Ericsson asserts that it would have been obvious to use Richardson’s
UMTS Node B base station in McFarland’s wireless network. Pet 41.
According to Ericsson, using a Richardson Node B base station in
McFarland amounts to merely applying a known technique to yield a
predictable result. Id. at 41–42. Ericsson relies on opinion testimony from
Dr. Haas to support its assertion. Id. (citing Ex. 1015 ¶ 45).
Intellectual Ventures argues that Ericsson fails to provide a rational
underpinning for combining Richardson with McFarland. PO Resp. 32.
Intellectual Ventures contends that Ericsson fails to explain how or why
someone with ordinary skill would have combined McFarland and
Richardson. Id. at 33.
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Intellectual Ventures argues that Richardson’s UMTS Node B does
not operate to vary a number of carriers and symbol rates. PO Resp. 33.
Thus, Intellectual Ventures argues that Richardson cannot multiplex data
streams over multiple carriers as in McFarland. Id.
Intellectual Ventures’s arguments are not persuasive. They amount to
an attack on the applied references individually. However, it is well settled
that non-obviousness cannot be established by attacking references
individually where the basis for obviousness is the combined teachings of
the references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Furthermore, we think that adoption of UMTS technology in the
marketplace provides a sufficient design incentive to adapt the teachings of
McFarland to the particular product application (UMTS) disclosed by
Richardson.25 “When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one. If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” KSR, 550 U.S. at
417. Here, Ericsson presents testimony from Dr. Haas that combining
Richardson with McFarland and van Nee entails nothing more than applying
a known technique to yield a predictable result. Ex. 1015 ¶ 45. In other
words, the combination of McFarland and Richardson is nothing more than a
predictable variation of McFarland. In the case of the ’079 patent,
Intellectual Ventures merely adopted existing UMTS technology in its

25 The Background section of the ’079 patent acknowledges that UMTS
systems were known in the prior art and that they were known to provide a
synchronization channel that is used by User Equipment to perform a
synchronization procedure. Ex 1001, 1:24-39.
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invention. Ex. 1001, 1:21–23. It presents neither evidence nor persuasive
technical reasoning that its use of UMTS and Node B technology provides
any new or unexpected results. Neither does Intellectual Ventures present
evidence or technical reasoning that tends to show that using UMTS Node B
technology with McFarland requires anything more than ordinary skill. We
think that Ericsson has demonstrated sufficiently that a person of ordinary
skill in the art would have been able to combine Richardson with McFarland
and would have had ample reason to do so.
4. Claim 31 over the Combination of McFarland, van Nee, and Dahlman
Ericsson asserts that a person of ordinary skill in the art would have
found it obvious to combine the UMTS system of Dahlman with McFarland
and van Nee. Pet. 42–43. According to Ericsson’s expert, Dr. Haas, such
would have merely entailed applying the known technique of including
UMTS technology, as taught by Dahlman, in the wireless system of
McFarland thereby yielding a predictable result. Id.
In opposing Ericsson’s challenge, Intellectual Ventures makes
substantially the same arguments with respect to Dahlman and UMTS
technology that we previously have considered above with respect to
Richardson and UMTS technology. PO Resp. 34–35. We find them equally
unpersuasive here for essentially the same reasons.
F. Ultimate Conclusion of Obviousness
After considering all of the underlying factual considerations, the
ultimate conclusion of obviousness is a question of law. See Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1359 (Fed. Cir. 2007). “[T]he great challenge
of the obviousness judgment is proceeding without any hint of hindsight.”
Star Scientific, Inc., v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375
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(Fed. Cir. 2011). After considering Ericsson’s obviousness presentation
under the Graham factors and Ericsson’s evidence on how or why a person
of ordinary skill in the art would have modified or combined the prior art to
achieve the claimed invention, we conclude that Ericsson has established, by
a preponderance of the evidence, that claims 6–10 and 28–32 of the ’079
Patent are unpatentable as obvious over the proposed combinations of
references based on McFarland.
V. OBVIOUSNESS OVER COMBINATIONS BASED
ON TROMPOWER
A. Scope and Content of the Prior Art
1. Trompower (Ex. 1007)
Trompower discloses a wireless, cellular communication system.
Ex. 1007, 5:33–52. Trompower’s system contemplates a plurality of mobile
terminals and a plurality of base stations. Id. The base stations may be
connected to a hardwired network backbone. Id. Each base station can
transmit and receive data. Id. The mobile terminal and the base station can
adjust the PN code length and the chipping rate used between them
depending on the surrounding conditions to increase the transmission rate.
Id. Trompower’s system can also adjust to other cellular communication
system parameters such as different modulation schemes. Id.
Trompower explains that when a mobile terminal and a base station
are in need of a fast data transmission rate and conditions otherwise permit,
the mobile unit and base station may select a PN code having a relatively
rapid chipping rate value (e.g., 22 MHz). Id. at 6:27–31. If the spectral
bandwidth needs to be decreased due to, among other reasons, excessive
noise on closely situated frequency bands, the mobile units and base stations
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may decrease the chipping rate (e.g., to 11 MHz) to decrease the required
transmission bandwidth. Id. at 6:32–36.
Trompower discloses that transmitted packets begin with a header that
is transmitted at a mid or slow data rate. Id. at 16:30–32, Fig. 3A.
Trompower’s packets include overhead bits in the form of a header 302 and
a plurality of data bits 304. Id. at 16:36–38. The header may be transmitted
at a mid or slow rate, while the data portion is transferred at a fast, mid or
slow rate. Id. at 16:38–42. The header 302 includes receiver system setup
data signifying the data rate at which the data bits 304 will be transmitted.
Id. at 16:44–46. The packet also contains synchronization bits between the
header and data portion to provide the receiver time to reconfigure itself to
the data transmission rate of the data bits. Id. at 16:46–49. Trompower’s
system is designed to operate using PN codes of two different lengths. One
PN code has an 11 chip PN code length and the other PN code has a 22 chip
PN code length. Id. at 16:65–17:11.
Trompower discloses that its transmitter system 610 and receiver
system 620 of base station 210, wireless base station 215, and mobile
terminal 230 will adjust their parameters in order to optimize the system.
Id. at 30:22–25. Trompower discloses a variety of embodiments that the
transmitter and receiver system may use in adjusting the system’s data rates.
Id. at 30:25–28.
In one such embodiment, Trompower discloses a controllable
receiver 810b that includes demodulator 814, filter 816, adjustable PN code
sequencer 818 and correlator 819. Id. at 33:28–37. In operation, the
demodulator 814 receives the modulated PN coded signal from the
transmitter system 610. Id. at 33:37–39. The demodulator demodulates the
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PN coded signal from the carrier frequency and forwards the PN coded
signal to the filter 816. Id. at 33:39–41. Prior to receiving the PN coded
signal, the filter 816 receives the PN code chipping rate value signal from
the microprocessor 730 and adjusts its spectral bandwidth based on the PN
code chipping rate value received. Id. at 33:42–45. Upon receipt of the PN
coded signal, the filter 816 then filters the PN coded signal and forwards the
filtered PN coded signal to the correlator 819. Id. at 33:45–48.
2. Yamaura (Ex. 1008)
Yamaura discloses a spread spectrum communication system and
transmitter-receiver. Ex. 1008, Abstract. Yamaura’s base station monitors
the amount of its traffic to and from each terminal and its base station and
instructs its terminals when to change bandwidth, according to what timing,
and by how much. Id. at 8:49–51; 9:20–23.
B. Differences Between the Prior Art and the Claimed Invention
1. Claims 6 and 28.
Ericsson relies on Yamaura as disclosing a base station that transmits
instructions to a mobile terminal. Pet. 41. Intellectual Ventures focuses its
case on alleged deficiencies in the Trompower reference.
Intellectual Ventures argues that Trompower’s “packet” is not a
“signal” within the meaning of claims 6 and 28. PO Resp. 41–44. We find
this argument unpersuasive for the same reasons we discussed above with
respect to the McFarland reference. Trompower wirelessly transmits data
packets using modulation techniques. Ex. 1007, Abstract. Intellectual
Ventures admits that Trompower’s chips are transmitted by modulating a
carrier signal. PO Resp. 39. This is sufficient to establish that Trompower
discloses a “signal.”
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Intellectual Ventures next argues that Trompower fails to satisfy the
limitation in claims 6 and 28 directed to “an indication of operating
bandwidth.” PO Resp. 37–44. Intellectual Ventures argues that Trompower
merely discloses that its header 302 includes data rate information. Id. at 37.
Intellectual Ventures argues that data rate and bandwidth are distinct
concepts and that indication of a data rate does not also indicate a
bandwidth. Id. at 38. Intellectual Ventures cites, by way of example, to
Table 1 of Trompower where the fast, mid, and slow rates are all indicated
as being transmitted at a chip rate of 11 MHz. PO Resp. 39 (citing
Ex.15:47–55). Based on this isolated disclosure in Trompower, Intellectual
Ventures argues that “because bandwidth will not change if there is no
change in chip rate,” that Trompower’s Fast, Mid, and Slow data rates all
have the same bandwidth. PO Resp. 39–40.
Intellectual Ventures argues that Trompower fails to disclose an
embodiment that adjusts the chipping rate based on setup data in the header
of a packet. Id. at 40. Intellectual Ventures supports this argument with
declaration testimony from Dr. Zeger. Id. (citing Ex. 2005 ¶ 67). Dr.
Zeger’s testimony, in light of the teachings of Trompower as a whole, lacks
credibility.
Ericsson’s expert, Dr. Haas, testifies that the ’079 patent
acknowledges that transmitting at different “chip rates” corresponds to
transmitting at different bandwidths. Ex. 1015, ¶ 25 (citing Ex. 1001
at 8:4–8). Dr. Haas observes that Trompower discloses a mobile terminal
and base station that can adjust the chipping rate to increase the transmission
rate. Ex. 1015, ¶ 39 (citing Ex. 1007, 5:41–46). Dr. Haas interprets
Trompower as disclosing a header that is transmitted at a predetermined data
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rate and a data portion that is selected from the plurality of available fast,
mid, or slow data rates. Id. ¶ 50. Dr. Haas further testifies that, in
Trompower, transmitting at a given chipping rate corresponds to
transmitting at a given bandwidth, because Trompower’s bandwidth directly
corresponds to Trompower’s chipping rate. Id. ¶ 51. Dr. Haas further
testifies that Trompower discloses that a receiver, in response to signifying
data contained in a header, reconfigures the receiver circuitry to receive data
at an indicated data rate. Id. ¶ 54.
Thus, the parties do not dispute that Trompower transmits a header (or
first signal portion) at a predetermined data rate that contains an indication
of the data rate that will be used to transmit the data portion of a packet. The
parties also appear to agree that Trompower’s receiver is able to receive the
indication of data rate in the header and then reconfigure the receiver to
receive the data portion (further signal portion) at the data rate indicated in
the header. The point of disagreement between the parties is whether the
data rate indication in Trompower’s header also contemplates an indication
of the spectral bandwidth at which the data portion will be received.
Ericsson presents testimony from Dr. Haas that, because data rate indication
in the header also contemplates an indication of chipping rate, it necessarily
also encompasses an indication of spectral bandwidth. Pet. 7, Ex. 1015 ¶¶
50–54. Intellectual Ventures contends that, while Trompower’s header
contains an indication of data rate, such variation in data rate all occurs at
the same spectral bandwidth. PO Resp. 39–40.
We think that Ericsson’s position is correct. Trompower discloses
that: “for a given communication . . . the mobile terminal and the base
station can adjust the PN code length and the chipping rate.” Ex. 1007,
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5:42–44 (emphasis added); Ex. 1015 ¶ 49. Dr. Haas’s testimony at
paragraphs 49–54 of his declaration is corroborated by statements in
Trompower that the system can increase or decrease its spectral bandwidth
depending on conditions. Ex. 1007, 6:27–39. 26 This change in spectral
bandwidth is accomplished in connection with information that is gleaned
from the header of a packet:
The demodulator 814 demodulates the PN coded signal from
the carrier frequency and forwards the PN coded signal to the
filter 816. Prior to receiving the PN coded signal, the filter 816
receives the PN code chipping rate value signal from the
microprocessor 730 and adjusts its spectral bandwidth based on
the PN code chipping rate value received.
Ex. 1007, 33:39–45. Thus, we agree with Ericsson that there is no material
difference between the prior art and claimed invention with the respect to the
“indication of an operating bandwidth” limitation in claims 6 and 28.
2. Claims 7, 10, and 29
Intellectual Ventures contends that Trompower fails to disclose either
the “lower bandwidth” limitation of claim 7 or the “lowest bandwidth”
limitation of claim 29, arguing that the data rate of Trompower’s header
does not relate to a bandwidth as claimed. PO Resp. 43–45.
As discussed in more detail with respect to claims 6 and 28 above, we
are persuaded that the evidence presented by Ericsson establishes that
Trompower can transmit and receive a header at 11 MHz and a data portion
at 22 MHz. Accordingly, we do not find a material difference between the

26 Dr. Haas’s testimony is further corroborated by admissions during
prosecution of the parent of the ’079 patent that chip rate determines signal
bandwidth. Ex. 1011, 267.
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prior art and the claimed invention regarding the “lower” and “lowest”
bandwidth limitations of claims 7, 10, and 29.
3. Claims 8 and 30
Ericsson relies on Shahar as disclosing the dependent limitations of
claims 8 and 30. Pet. 52–54. Intellectual Ventures argues that Shahar fails
to disclose a “data burst.” PO Resp. 45. We reject this argument for the
same reasons discussed above under the McFarland grounds.
4. Claims 9 and 32
Ericsson relies on Richardson as disclosing the dependent limitations
of claims 9 and 32. Pet. 54. Intellectual Ventures does not dispute that
Richardson teaches such limitations. PO Resp. 46–47.
5. Claim 31
Ericsson relies on Dahlman as disclosing the dependent limitation of
claim 31. Pet. 55. Intellectual Ventures does not dispute that Dahlman
teaches such limitations. PO Resp. 47–48.
C. Whether the Prior Art Could Have Been Combined and/or
Modified to Achieve the Claimed Invention
1. Claims 6, 7, 10, 28, and 29 over Trompower and Yamaura
Ericsson contends that it would have been obvious to use Yamaura’s
base station in Trompower’s communication system. Pet. 45. Ericsson
contends that such would have entailed merely applying a known technique
to yield a predicable result. Id. Ericsson supports its position with
testimony from Dr. Haas. Id. (citing Ex. 1015 ¶¶ 56–59).
Apart from a single conclusory sentence on page 36 of its Patent
Owner’s Response, Intellectual Ventures does not present evidence or
argument in an attempt to controvert Ericsson’s position on the
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combinability of Trompower and Yamaura. PO Resp. 36–42. Intellectual
Ventures’s appears to limit its opposition to Ericsson’s case by focusing on
alleged deficiencies in the Trompower reference as previously discussed
hereinabove.
2. Claims 8 and 30 over the Combination of Trompower, Yamaura,
and Shahar
Ericsson contends that a person of ordinary skill in the art would have
recognized that Shahar’s header field may be used in Trompower and
Yamaura’s wireless packet transmission headers to provide timing and
synchronization information. Pet 53. Ericsson concludes that it would have
been obvious to one of ordinary skill in the art to apply the known technique
of using synchronization information in a header, as taught by Shahar, to the
header of Trompower. Id. According to Ericsson, such would have entailed
no more than applying a known technique to yield a predictable result. Id.
Ericsson supports its position with testimony from Dr. Haas. Id. (citing
Ex. 1015 ¶ 61).
Intellectual Ventures contends that Ericsson’s evidence of
combinability is insufficient. PO Resp. 46. Intellectual Ventures argues that
Shahar’s synchronization is directed to modulation schemes in a particular
OFDM system while Trompower discloses a CDMA systems using spread
spectrum technology. Id. Therefore, Intellectual Ventures concludes that a
person of ordinary skill in the art would not have combined Shahar and
Trompower. Id.
As discussed above with respect to the McFarland grounds, Shahar
can also be read as teaching synchronization in a general sense. “A
reference may be read for all that it teaches, including uses beyond its
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primary purpose.” Mouttet, 686 F.3d at 1331. Here, the prior art already
recognized the need for synchronization in wireless communications.
The header 302 may include receiver system setup data
signifying the data rate at which the data bits 304 will be
transmitted. The packet 300 may contain synchronization bits
(not shown) between the header and data portion to provide the
receiver time to reconfigure itself to the data transmission rate
for the data bits 304.
Ex. 1007, 16:44–49; see also Ex. 1001, 1:27–28 (“essential”). We are
persuaded that person of ordinary skill in the art would have been able to
adopt Shahar’s teaching of synchronization to the wireless system of
Trompower and would have had good reason to do so. See KSR, 550 U.S. at
420 (any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed).
3. Claims 9 and 32 over the Combination of Trompower, Yamaura,
and Richardson
Ericsson asserts that it would have been obvious to use Richardson’s
UMTS Node B base station in Trompower’s base station. Pet 54.
According to Ericsson, using a Richardson Node B base station in
Trompower amounts to merely applying a known technique to yield a
predicable result. Id. at 54–55. Ericsson relies on opinion testimony from
Dr. Haas to supports its assertion. Id. (citing Ex. 1015 ¶ 62).
Intellectual Ventures argues that Ericsson fails to provide a rational
underpinning for combining Richardson with Trompower. PO Resp. 47.
Intellectual Ventures contends that Ericsson fails to explain how or why
someone with ordinary skill would have combined Trompower and
Richardson. Id. Intellectual Ventures’s argument is unpersuasive, among
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other things, because it is unsupported by evidence and is entirely
conclusory in nature.
As with the grounds over McFarland discussed above, we think that
adoption of the UMTS system in the marketplace is sufficient to provide a
design incentive to adapt the teachings of Trompower to the product
application (UMTS) disclosed by Richardson. Here, Ericsson presents
testimony from Dr. Haas that combining Richardson with Trompower
entails nothing more than applying a known technique to yield a predictable
result. Ex. 1015 ¶ 62. Intellectual Ventures fails to explain persuasively
how its own adoption of known UMTS technology (Ex. 1001, 1:21–23)
differs in any patentably distinct manner from the adoption of Richardson’s
UMTS technology in Ericsson’s ground of unpatentability. Neither does
Intellectual Ventures present persuasive evidence or technical reasoning that
adoption of known UMTS technology in a spread spectrum communication
system such as Trompower requires more than mere ordinary skill. We
think that Ericsson has demonstrated sufficiently that a person of ordinary
skill in the art would have been able to combine Richardson with
Trompower and would have had ample reason to do so.
4. Claim 31 over the Combination of McFarland, van Nee,
and Dahlman
Ericsson asserts that a person of ordinary skill in the art would have
found it obvious to combine the UMTS system of Dahlman with
Trompower. Pet. 55. According to Ericsson, such would have merely
entailed applying the known technique of including UMTS technology, as
taught by Dahlman, in the wireless system of Trompower thereby yielding
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predictable results. Id. Ericsson relies on testimony from Dr. Haas to
support its assertion. Id. (citing Ex. 1015 ¶ 63).
In opposing Ericsson’s challenge, Intellectual Ventures makes
substantially the same arguments with respect to Dahlman’s disclosure of
UMTS technology that we considered above with respect to Richardson’s
disclosure of UMTS technology. PO Resp. 47–48. We find them equally
unpersuasive here for essentially the same reasons.
D. Ultimate Conclusion of Obviousness
After considering Ericsson’s obviousness presentation under the
Graham factors and Ericsson’s evidence on how or why a person of ordinary
skill in the art would have modified or combined the prior art to achieve the
claimed invention and Intellectual Ventures’ counterarguments, we conclude
that Ericsson has established, by a preponderance of the evidence, that
claims 6–10 and 28–32 of the ’079 Patent are unpatentable as obvious over
the proposed combinations of references based on Trompower.
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IV. ORDER
In view of the foregoing, it is ORDERED as follows:
1. Claims 6, 7, 10, 28, and 29 have been shown to be unpatentable as
obvious over:
a. McFarland and van Nee; and also over
b. Trompower and Yamaura;
2. Claims 8 and 30 have been shown to be unpatentable as obvious over:
a. McFarland, van Nee, and Shahar; and also over
b. Trompower, Yamaura, and Shahar;
3. Claims 9 and 32 have been shown to be unpatentable as obvious over:
a. McFarland, van Nee, and Richardson; and also over
b. Trompower, Yamaura, and Richardson;
4. Claim 31 has been shown to be unpatentable as obvious over:
a. McFarland, van Nee, and Dahlman; and also over
b. Trompower, Yamaura, and Dahlman.
This is a final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.

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For PETITIONER:

Andrew Lowes
David M. O’Dell
John Russell Emerson
Clint Wilkins
HAYNES AND BOONE, LLP
andrew.lowes.ipr@haynesboone.com
david.odell.ipr@haynesboone.com
russell.emerson.ipr@haynesboone.com
clint.wilkins.ipr@haynesboone.com

For PATENT OWNER:

Herbert D. Hart III
Andrew B. Karp
Steven J. Hampton
Philip H. Sheridan
MCANDREWS, HELD & MALLOY, LTD.
hhart@mcandrews-ip.com
akarp@mcandrews-ip.com
shampton@mcandrews-ip.com
psheridan@mcandrews-ip.com

James R. Hietala
Tim R. Seeley
INTELLECTUAL VENTURES MANAGEMENT
jhietala@intven.com
tim@intven.com