Google Inc.v.Intellectual Ventures II LLC

Patent Trial and Appeal Board

Dec 7, 2015

12033824 (P.T.A.B. Dec. 7, 2015)

Trials@uspto.gov Paper 41
571-272-7822 Entered: December 7, 2015

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

GOOGLE INC.,
Petitioner,

v.

INTELLECTUAL VENTURES II LLC,
Patent Owner.
____________

Case IPR2014-01031
Patent 7,848,353 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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Google Inc. (“Google”) filed a corrected Petition (Paper 6, “Pet.”)
requesting inter partes review of claims 1–8 and 21–27 of U.S. Patent
No. 7,848,353 B2 (Ex. 1001, the “’353 patent”). We issued a Decision to
Institute an inter partes review of claims 1–8 and 21–27 of the ’353 patent.
Paper 10 (“DI”). After institution of trial, Intellectual Ventures II LLC
(“Intellectual Ventures”) filed a Patent Owner’s Response (Paper 17, “PO
Resp.”) and Google filed a Petitioner’s Reply (Paper 22, “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 40 (“Tr.”). Also before the Board are the following matters:
Patent Owner’s Objection to Evidence (Paper 25); and
Patent Owner’s Motion to Exclude Evidence (Papers 30 and 34).
After considering the evidence and arguments of counsel and for the
reasons set forth below, we determine that Google has met its burden of
showing, by a preponderance of the evidence, that claims 1–8 and 21–27 of
the ’353 patent are unpatentable.
Related Proceedings
The ’353 patent issued from non-provisional application number
12/033,824 and is the subject of two IPR proceedings. The first such
proceeding is the instant proceeding in which Petitioner Google challenges
claims 1–8 and 21–27 of the ’353 Patent. The second such IPR Proceeding
is Ericsson Inc. et al v. Intellectual Ventures II LLC, IPR 2014-00919
(PTAB) in which the Petitioner Ericsson challenges claims 9–20 and 29–34
of the ’353 Patent.
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The ’353 patent is the parent of a continuation application, non-
provisional application number 12/960,774, which lead to issuance of
US Patent 8,396,079 B2 (the “’079 patent”). The ’079 Patent is the subject
of an IPR proceeding captioned Ericsson, Inc. v. Intellectual Ventures II
LLC, IPR 2014-00915 (PTAB).
The ’353 patent and/or the ’079 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 ’353 Patent (Ex. 1001)
The ’353 patent, titled “Method, Communication System And
Communication Unit For Synchronization For Multi-Rate Communication,”
relates to digital communication systems such as wireless cellular
communication systems. Ex. 1001, 1:13–18. The communication system
disclosed in the ’353 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
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is transmitted over a first bandwidth. Id. The first signal portion contains an
indication of an operating bandwidth selected from a plurality of bandwidths
for use in transmitting and receiving the further signal portion. Id. Figure 1
of the ’353 patent is shown below.

As shown in Figure 1, 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, 3:34–38. The cell phones and
Node-Bs transmit and receive multi-rate signals. Id. at 4:39–44.
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., claim 9. 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
Google challenges claims 1–8 and 21–27. Claims 1 and 21 are
independent claims. Claim 1 is a method claim and claim 21 is an apparatus
claim. Claims 1 and 21 are illustrative of the subject matter of the
challenged claims and are reproduced below:
1. A method for operating bandwidth determination in a
multi-bandwidth communication system, the method
comprising:
at a remote unit:
receiving a signal having a first signal portion at a first,
predetermined bandwidth, containing an indication of
an operating bandwidth selected from a plurality of
bandwidths used for a further signal portion;
recovering the indication from the first signal portion at
the first, predetermined bandwidth; and
recovering information in the further signal portion at the
operating bandwidth indicated by the indication.
21. A communication unit for use in a multi-bandwidth
communication system, the communication unit comprising:
logic for receiving a signal having a first signal portion at a
first, predetermined bandwidth, containing an indication
of an operating bandwidth selected from a plurality of
bandwidths used for a further signal portion;
logic for recovering the indication from the first signal
portion at the first, predetermined bandwidth; and
logic for recovering information from the further signal
portion at the operating bandwidth indicated by the
indication.
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C. The Asserted Grounds of Unpatentability
We instituted trial on Google’s challenge to claims 1–8 and 21–27 of
the ’353 patent as obvious under 35 U.S.C. § 103 over various combinations
of references listed below. DI 23.
References Basis Claims challenged
McFarland (Ex. 1005) 1 § 103 1–4, 6, 21–24, and 26
McFarland and Shahar (Ex. 1006) 2 § 103 5, 8, and 25
McFarland and HSDPA (Ex. 1003) 3 § 103 7 and 27
Pierzga (Ex. 1002)4 § 102 1–6, 8, and 21–26
Pierzga and HSDPA § 103 7 and 27
Pierzga and Shahar § 103 8
II. MOTION TO EXCLUDE EVIDENCE
Intellectual Ventures moves to exclude Google Exhibits 1003, 1004,
1016, 1017, 1022, 1023, and 1033. Intellectual Ventures also moves to
exclude certain declaration testimony of Google’s experts, Dr. Negus and
Dr. Madisetti, namely:
Exhibit 1012 (Dr. Negus): the entire declaration;
Exhibit 1019 (Dr. Madisetti): the second sentence of paragraph 4;
paragraph 5; the first, second, and third sentence of paragraph 6; and the
first, second, third, fourth, and fifth sentence of paragraph 7; and
Exhibit 1021 (Dr. Madisetti): ¶¶ 8–11, 12, 14, 15, 25, 26, and 29.

1 U.S. Patent 7,397,859 B2 to McFarland, iss. July 8, 2008.
2 U.S. Patent 6,987,754 B2 to Shahar et al., iss. Jan. 17, 2006.
3 High Speed Downlink Packet Access, Overall UTRAN Description
(Release 5) (2001).
4 U.S. Patent Publication 2001/0055320 A1 by Pierzga et al., published
Dec. 27, 2001 (“Pierzga”).
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A. Exhibit 1003 – 3GPP TR 25.855 (Release 5); and
Exhibit 1019 –Declaration of Dr. Madisetti
Exhibit 1003 is a technical specification developed by the 3rd
Generation Partnership Project (3GPPTM). Intellectual Ventures moves to
exclude the exhibit as hearsay and argues that no hearsay exception applies.
Paper 30 (citing Rules 801–807 of the Federal Rules of Evidence).
Google argues that Exhibit 1003 is not hearsay because it is not
offered for the truth of the matter asserted. Paper 34, 1. Google states that
Exhibit 1003 is offered simply as evidence of what it describes and to show
the knowledge of a person of ordinary skill in the art at the time of the
invention. Id. at 1–2.
Google filed Exhibit 1003 with its Petition. After we instituted trial,
Intellectual Ventures served an objection to Exhibit 1003, arguing that
Google failed to lay a proper foundation to establish the authenticity of
Exhibit 1003 under Federal Rule of Evidence 901. Paper 30, Appendix A.
Google filed a declaration of its expert, Dr. Madisetti, Exhibit 1019,
with its Reply.5 Google states that the Exhibit 1019 declaration was served
in response to Intellectual Ventures’s objections to the authenticity of
Exhibit 1003. Paper 34, 5. Google presents testimony from Dr. Madisetti to
lay a foundation for the admissibility of Exhibit 1003. Ex. 1019.
Dr. Madisetti testifies that Exhibit 1003 is available to the public over the
internet through the 3GPP website (http://www.3gpp.org). Ex. 1019 ¶¶ 6–7.
He testifies that he personally downloaded it from the website and that the

5 Exhibit 1019 is dated as being executed on February 18, 2015, but the
exhibit itself is not accompanied by a certificate of service or other indicia
indicating when it was actually served on Intellectual Ventures. In the
absence of any objection or evidence to the contrary from Intellectual
Ventures, we will treat it as timely served.
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exhibit has not subsequently been altered. Id. He further testifies, based on
his personal experience dealing with the RAN working group that
documents are posted to the website a few days after revisions are complete.
Id. ¶ 7.
Intellectual Ventures attacks Dr. Madisetti’s testimony in
Exhibit 1019 that lays the foundation for the admission of Ex. 1003.
Paper 30, 1–3. Essentially, Intellectual Ventures contends that
Dr. Madisetti’s familiarity with the origin, content, and publication date of
Exhibit 1003 is insufficient to lay a foundation for its admission into
evidence. Id. We have reviewed and considered Intellectual Ventures’s
arguments and find that they do not warrant exclusion of Exhibit 1003 and
Exhibit 1019 from evidence in this proceeding.
Rule 901 of the Federal Rules of Evidence provides that the
requirement of admissibility is satisfied by evidence sufficient to support a
finding that the material in question is what its proponent claims. The
burden of proof for authentication is “slight.” Lexington Ins. Co. v. W. Penn.
Hosp, 423 F.3d 318, 329 (3d Cir. 2005). Rule 901(b) lists nine examples of
authentication techniques, the list of examples is not intended to be
exclusive. United States v. Simpson, 152 F.3d 1241, 1249–50 (10th Cir.
1998). Rule 901(a) merely prescribes that a proponent produce sufficient
evidence of authenticity to support a prima facie case that the item is
genuine. Rickets v. City of Hartford, 74 F.3d 1397, 1409–11 (2d Cir. 1996).
Courts maintain that a bona fide dispute as to the authenticity of evidence
generally should be decided by the trier of fact. See id. Conflicting
evidence of authenticity goes to weight, not admissibility, as long as some
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reasonable person could believe that the item is what it is claimed to be. Id.
at 1411.
In light of Dr. Madisetti’s testimony based on his personal experience
and observation of the author/publisher and the reliability of the dates of
publication that appear on the face of its publications, we find that Google
has a laid a sufficient foundation for admission of Exhibit 1003 over
Intellectual Ventures’s objection. Exhibit 1003 is not hearsay as it is not
offered for its truth, but merely for what it states. We DENY Intellectual
Ventures’s motion to exclude Exhibit 1003 and Exhibit 1019.
B. Exhibits 1004 and 1012 – HomeRF Specification
Intellectual Ventures argues that Exhibit 1004 should be excluded as
irrelevant because our Decision to Institute did not institute a trial on
Google’s proposed ground of unpatentability over the HomeRF
Specification technology. Paper 30, 4. Intellectual Ventures also moves to
exclude the accompanying and supporting declaration of Dr. Negus (Exhibit
1012) for essentially the same reason. Id.
Intellectual Ventures’s argument that this evidence is irrelevant under
Rule 402 of the Federal Rules of Civil Procedure is without merit. We are
admonished by our supervising court to avoid a narrow and blinkered focus
on only applied prior art references. See Randall Mfg. v. Rea, 733 F.3d
1355, 1362–63 (Fed. Cir. 2013) (“the Board failed to account for critical
background information that could easily explain why an ordinarily skilled
artisan would have been motivated to combine or modify the cited
references to arrive at the claimed inventions”). To the contrary, we are
affirmatively encouraged to consider all evidence of record that is probative
of the background knowledge of a person of ordinary skill in the art. Id.
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We DENY Intellectual Ventures’s motion to exclude Exhibits 1004
and 1012.
C. Exhibit 1016 – Dictionary Definition of Bandwidth
Intellectual Ventures moves to exclude Exhibit 1016, a dictionary
definition of “bandwidth” taken from an on-line dictionary.6 Paper 30, 4.
Intellectual Ventures argues that the dictionary definition was published so
long after the priority date that it has no relevance to claim interpretation in
this case. Intellectual Ventures argues that the definition is irrelevant under
Federal Rule of Evidence 402 and constitutes hearsay under Rule 801.
Intellectual Ventures’s motion is without merit. It is well settled that
judges are free to consult dictionaries at any time in order to better
understand the underlying technology. See Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1585 n.6 (Fed. Cir. 1996). Judges may also consult
dictionary definitions when construing claim terms so long as the dictionary
definition does not contradict any definition found in or ascertained by a
reading of the patent documents. Id.
With respect to Intellectual Ventures’s temporal concern, we will take
such matter into account in deciding how much weight to give
Exhibit 1016.7 We DENY the motion to exclude Exhibit 1016.
D. Exhibit 1017 – District Court Brief
Intellectual Ventures moves to exclude a claim construction brief filed
on its behalf in related District Court litigation. Paper 30, 4–5. Intellectual

6 Merriam-Webster, Bandwidth, http://www.merriam-
webster.com/dictionary/bandwidth (last accessed June 15, 2014).
7 Intellectual Ventures did not introduce any other dictionary definition
closer in time to the date of the invention to show that the meaning of
“bandwidth” has changed over time.
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Ventures argues that Google did not cite to this brief in its Petition. Id.
Intellectual Ventures also argues that the Board uses a different claim
construction standard than that used in District Court litigation. Id.
All of the challenged claims of the ’353 patent contain limitations
directed to a “signal” with a “first signal portion” and a “further signal
portion.” Ex. 1001, claims 9, 14, 29. 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 systems disclosed in Pierzga (Ex. 1002) and
McFarland (Ex. 1005), do not satisfy the signal and/or bandwidth limitations
of the challenged claims. See e.g., PO Resp. 24–28, 39–48.
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). Here, Exhibit 1017 is relevant because it sheds light on whether
Intellectual Ventures is being consistent on the claim construction positions
that it is taking in two different forums.
We DENY Intellectual Ventures’ motion to exclude Exhibit 1017.
E. Exhibit 1022 – Satellite UMTS Air Interfaces
Intellectual Ventures moves to exclude Exhibit 1022 ostensibly
because “it has no relevant bearing on any issue properly raised in this
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proceeding . . .” Paper 30, 7. Intellectual Ventures also argues that it is
outside of the proper scope of rebuttal evidence that may be submitted with a
Reply. Id. at 8.
Google argues that it is proper rebuttal evidence. Paper 34, 15. In its
Patent Owner’s Response, Intellectual Ventures argues that the scope of the
claims of the ’353 patent should be limited to terrestrial base stations,
thereby excluding communication satellites disclosed in Pierzga. PO
Resp. 20. Intellectual Ventures further argues that modifying an OFDM
satellite broadcast system as taught by Pierzga (Ex. 1002) with a CDMA
cellular mobile telephone communication system to arrive at the claimed
UMTS system would require more than routine experimentation. Id. at 32.
Intellectual Ventures argues that a person of ordinary skill in the art would
not have combined Pierzga with another reference to arrive at the claimed
UMTS system. Id.
We think that Exhibit 1022 is probative of whether prior art UMTS
technology encompassed satellite communications. We DENY Intellectual
Ventures motion to exclude Exhibit 1022.
F. Exhibit 1023 – R&D Activities on Satellite UMTS Systems
As with Exhibit 1022, Intellectual Ventures moves to exclude
Exhibit 1023 ostensibly because “it has no relevant bearing on any issue
properly raised in this proceeding . . .” Paper 30, 8. Intellectual Ventures
also argues that it is outside of the proper scope of rebuttal evidence that
may be submitted with a Reply. Id. at 9.
Google argues that it is proper rebuttal evidence. Paper 34, 15.
Exhibit 1023 appears to be probative of whether prior art UMTS technology
encompassed satellite communications. Ex. 1023, 1. For the same reasons
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recounted above with respect to Exhibit 1022, we DENY Intellectual
Ventures’s motion to exclude Exhibit 1023.
G. Exhibit 1033 – Overview of Modulation and
Coding for Wireless Communications
Intellectual Ventures moves to exclude Exhibit 1033, arguing that it is
being used to raise new theories of unpatentability. Paper 30, 10.
Intellectual Ventures also argues that it is irrelevant. Id.
Google argues that it rebuts Intellectual Ventures’s argument
regarding subcarrier spacing in OFDM systems as it relates to the indication
of operating bandwidth issues in this case. Paper 34, 15. We agree that it is
proper rebuttal evidence and DENY Intellectual Ventures motion to exclude
Exhibit 1033.
H. Exhibit 1021 – Dr. Madisetti’s Reply Declaration
Intellectual Ventures moves to exclude paragraphs 8–11, 12, 14, 15,
25, 26, and 29 of Dr. Madisetti’s Exhibit 1021 declaration for various
reasons. Paper 30, 5.
1. Paragraphs 12, 14, and 29
Intellectual Ventures states that paragraphs 12, 14, and 29 of
Dr. Madisetti’s testimony are not cited to or relied on the Google’s Reply.
Paper 30, 5. Intellectual Ventures implies that this alone justifies its
exclusion from evidence in this proceeding. Id. (citing 37 C.F.R.
§ 42.104(b)(5)).
Google responds that the paragraphs provide context and support for
Dr. Madisetti’s testimony elsewhere in the declaration. Paper 34, 12.
Google also states that the testimony in these paragraphs relates to the
disputed claim terms “signal” and “remote unit.” Id.
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Contrary to Intellectual Ventures’s position, Rule 104(b)(5) is merely
permissive (“may”) and does not mandate the exclusion of evidence that is
not directly cited in a Petition or Reply. We agree with Google that these
paragraphs provide context and support for Dr. Madisetti’s testimony and,
accordingly, DENY the motion to exclude paragraphs 12, 14, and 29.
2. Paragraphs 8–11, 25, and 26
Intellectual Ventures argues that these paragraphs contain testimony
that raises new issues that should have been presented as part of Google’s
case-in-chief. Paper 30, 5.
Intellectual Ventures argues that paragraphs 8–11 address the
construction of the term “indication of operating bandwidth” and that
testimony on such subject was not advanced with Google’s Petition.
Paper 30, 6. Intellectual Ventures implies that this alone justifies exclusion
of evidence in a Reply. We are not persuaded. Our Office Patent Trial
Practice Guide does not require a Petitioner to anticipate every claim term
that a Patent Owner may elect to place in controversy for purposes of claim
construction in an IPR and then propose a construction for each such term.
See 77 Fed. Reg. 48764 (Aug. 14, 2012). In keeping with our rules, Google
proposed constructions for certain terms and then stated that “the remaining
claim terms should be accorded their ordinary meaning.” Pet. 18. Once
Intellectual Ventures advanced a contention as to the ordinary meaning of
“indication of operating bandwidth,” it was within the proper scope of a
Reply to address Intellectual Ventures’s position with evidence and
argument.
We DENY Intellectual Ventures motion to exclude paragraphs 8–11,
25, and 26 of Exhibit 1021.
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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” (claims 1, 21)
Google’s proposed construction:
(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; or
(2) the capacity for data transfer of an electronic communications
system…especially: the maximum data transfer rate of such a system.
Pet. 13.
Intellectual Ventures’ proposed construction:
a width of a frequency band.
PO Resp. 7.
Google supports its proposed construction with testimony from
Dr. Madisetti. Pet. 14. Dr. Madisetti, in turn, relies on definitions from the
MICROSOFT COMPUTER DICTIONARY and the MERRIAM WEBSTER
DICTIONARY. Ex. 1011 ¶ 59 (citing Ex. 1015; Ex. 1016).
Intellectual Ventures argues that a “width of a frequency band” is the
correct construction. PO Resp. 8. Intellectual Ventures criticizes Google for
proposing alternative meanings that depend on the context. Id. Intellectual
Ventures stresses that the only applicable context in the ’353 patent relates
to a width of frequency band. Id.
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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.
The Specification uses two terms “chip rate” and “bandwidth,” each
about 11 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.
’353 Patent, 5:63–6:5 (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 4:39–44. The ’353 patent issued on a continuation application (non-
provisional application number 12/969,775) that claims priority to non-
provisional application number 12/033,824 which eventually issued as
the ’353 patent that is the subject of this IPR proceeding. The ’353 patent, in
turn, claims priority to non-provisional application number 10/293,635 (the
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’635 application), which led to issuance of US Patent 7,356,098 (the ’098
patent). Ex. 1001, 1; Ex. 3002. 8 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.”9 Ex. 3001,
468–473. Originally filed claim 1 is illustrative:
1. A method for synchronisation10 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. 3001, 468 (emphasis added). All of the original pending claims in the
’635 application were rejected over Boer (US 5,706,428, iss. Jan. 6, 1998).
Ex. 3001, 361; Ex. 1009. 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 transmitted. Ex. 1009, 1:33–47. Boer discloses that it

8 We take notice of US Patent 7,356,098, which is of record in IPR2014-
00919 as Exhibit 2001. We have filed a copy in the record in the instant IPR
proceeding as Exhibit 3002.
9 We take notice of the prosecution history of ’098 patent, a copy of which is
of record in IPR2014-00919 as Exhibit 1010. We have filed a copy in the
record of the instant IPR proceeding as Exhibit 3001.
10 Two alternative spellings for this word (1) synchronisation; 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.
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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.
Ex. 1009, 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. 3001, 354 (citing Boer (Ex. 1009), 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. Id. In order to distinguish over Boer, Intellectual Ventures
amended its claims to include limitations with the term “bandwidth
determined by . . . chip rate.” Ex. 3001, 267. All of the independent claims
that eventually issued in the ’098 patent contain the term “bandwidth
determined by . . . chip rate.” Pet. 10–11; Ex. 3001, 273, 354; Ex. 3002,
claims 1, 9, 13, 20, 27. 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. 3001, 44.
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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 ;
especially: the maximum data transfer rate of such a system .
Ex. 1016.
Google essentially urges us to adopt both definitions, but in the
alternative depending on the context of its use. Pet. 13–14 (“Skilled persons
would . . . understand that either of these definitions applies”). Google
further argues that the ’353 patent uses “bandwidth” as synonymous with
data rate. Id. Google’s position that the ’353 patent uses bandwidth as
synonymous with data rate is contradicted by the prosecution history
evidence discussed above where the claims were amended essentially to
substitute “bandwidth” for “chip rate” to distinguish over Boer’s disclosure
of variable data rates. Thus, the intrinsic record supports a meaning of
“bandwidth” that more closely conforms to definition number 1 above. We
agree with Intellectual Ventures that, in the context of the ’353 patent,
“bandwidth” does not mean “data rate” or “data transfer rate.”
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
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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.
2. indication of operating bandwidth (claims 1, 21)
Google’s proposed construction: Google contends that the
plain and ordinary meaning of this term should apply and that
no construction is necessary.
Reply 1–2.
Intellectual Ventures’ proposed construction: identification of a
particular operating bandwidth.
PO Resp. 11.
Google did not discuss construction of this term until its Reply and
only then indicates that it should be construed in accordance with its plain
and ordinary meaning. Google does not venture what that meaning may be
other than to say that a person of ordinary skill in the art would understand
that it encompasses determining the frequency range used to transmit the
further signal portion based on information provided by the indication.
Reply 2 (citing Ex. 1021 ¶¶ 8–11 (Dr. Madisetti)).
Intellectual Ventures argues that, because Google’s Petition does not
offer a construction of this phrase, the Board should ipso facto adopt
Intellectual Ventures’s proposed construction. PO Resp. 12. This argument
has no basis in our governing procedural rules. We have considered
Intellectual Ventures’s other arguments and find them to be equally
unpersuasive.
The term “operating bandwidth” appears in multiple claims in the
’353 patent. Ex. 1001, claims 1, 2, 6, 7, 11, 12, 13, 14, 19, 20, 21, 22, & 28.
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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 21 requires
that the claimed communication unit has logic for receiving 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 a transmitter and a receiver employ logic
to 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,
“claims should always be read in light of the specification and teachings in
the underlying patent.” Id. Thus, a construction that is unreasonably broad
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and does not reasonably reflect the plain language and disclosure will not
pass muster. 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. 2009 ¶ 31. 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. ¶ 32. Then, transport
information is received at the wider system bandwidth. Id.
A person of ordinary skill in the art reading the Specification of
the ’353 patent, as a whole, would understand that the “operating
bandwidth” of claims 1 and 21 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 the operating bandwidth is coordinated between the
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transmitter and the receiver using logic and filtering 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. See Ex. 1001, claims 21, 22. 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 will be transmitted by the transmitter.11

11 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” (claims 1, 21)
Google’s proposed construction:
“signal” – none proposed.
“first signal portion” – a portion of the same signal as the
further signal portion.
“further signal portion” – a portion of the same signal as the
first signal portion.
Pet. 14–15.
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. 17.
In its Petitioner’s Reply, Google argues that no construction of signal
is needed. Reply 4–5. Intellectual Ventures appears to agree. Tr. 35.12 We
are not persuaded that construction of this term is material to this Decision,
as it appears to us that all of Google’s cited references contemplate wireless
transmissions that use modulated carrier waves. Consequently, for purposes
of this Decision, we construe “signal” as broad enough to encompass the
wireless transmissions disclosed in Google’s cited references.13

12 MR. HAMPTON: As to what the signal is, I don’t see that as being an
issue, so long as we understand that the signal we’re talking about is a signal
that’s transmitted from a transmitter to a receiver. Id.
13 We note that claim 1 is not limited to wireless networks and that the
Specification does not limit 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, 4:41–44. However, in light of the
scope of prior art asserted by Google in this IPR, all of which entail wireless
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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.
4. “logic for . . .” (claim 21)
Google’s proposed construction:
(1) any structure, circuit, or software that performs the claimed
functions; or
(2) construe as means plus function in accordance with 35 U.S.C.
§ 112(f) with corresponding structure found at Ex. 1001, 7:41–8:7
Pet. 15–18.
Intellectual Ventures’ proposed construction:
(1) any structure, circuit, or software that performs the claimed
functions; and
(2) 35 U.S.C. § 112(f) does not apply.
PO Resp. 21.
In our Decision to Institute, we followed existing precedent and noted
that there is a strong, but rebuttable presumption that a claim limitation
lacking the term “means” is not a means-plus-function limitation. DI 9
(citing Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1297 (Fed. Cir. 2014)).
Since we issued the Decision to Institute, the Federal Circuit issued its en
banc decision in the case of Williamson v. Citrix Online, LLC, 792 F.3d

communications, we need not further construe this term for purposes of this
IPR proceeding. See Vivid Techs., Inc., v. American Science & Eng., Inc.,
200 F.3d 795 (Fed. Cir. 1999) (only terms in controversy need be construed
and only to the extent necessary to resolve the controversy). We note that
the construction that we adopt herein may not be appropriate in the context
of wired communications.
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1339 (Fed. Cir. 2015). In Williamson, the Federal Circuit announced that
the rebuttable presumption that the means-plus-function statute does not
apply to a patent claim that does not use the word “means” is no longer a
“strong” presumption, overruling the Apple decision that we relied on in the
Decision to Institute.
In Williamson, the Federal Circuit observed that the word “module” is
a well-known nonce word that can operate as a substitute for “means” in the
context of Section 112(f) (formerly Section 112 ¶ 6). Id. at 1350.
Generic terms such as “mechanism,” “element,” “device,” and
other nonce words that reflect nothing more than verbal
constructs may be used in a claim in a manner that is tantamount
to using the word “means” because they “typically do not
connote sufficiently definite structure” and therefore may invoke
§ 112, para. 6.
Williamson, 792 F.3d at 1350. In claim 21, there is a preamble directed to a
communication unit with a “comprising” transition. Following thereafter are
three limitations recited in the body of the claim. Each of the three
limitations begins with the words “logic for.” What then follows, in each
case, is purely functional language that is devoid of any recited structure. In
the first instance the logic is for “receiving a signal” where the signal has
portions of different bandwidths. In the second instance, the logic is for
“recovering” an indication (i.e., information) that is contained in the signal.
In the third instance the logic, once again, is for “recovering” information
that is contained in the signal.
Notwithstanding, in the particular context of this proceeding, we will
construe “logic” as having sufficient attributes of structure that we will not
invoke Section 112(f) to construe it. However, we will construe “logic”
broadly to encompass all known types of that structure that are supported by
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the patent disclosure. See Renishaw PLC v. Marposs Societa’ Per Azioni,
158 F.3d 1243, 1250 (Fed. Cir. 1998).
5. “filter” “filter having a bandpass” (claims 2, 3, 22, and 23)
In their respective Petition and Patent Owner’s Response, neither
party proposed a construction for the term “filter.” Claims 22 and 23 depend
from claim 21. The filters of claims 22 and 23 are constituent elements of
the “logic for receiving . . .” and “logic for recovering . . .” limitations of
claim 21.
The parties dispute whether McFarland satisfies the filter limitations
of claims 22 and 23. See, e.g., PO Resp. 48–49. Google’s expert,
Dr. Madisetti, testifies that, in his opinion, McFarland’s disclosure of
adjusting the number of carriers with a fixed iFFT processor and also a
variable size iFFT processor satisfies the filter limitations of claims 22.
Ex. 1011 ¶¶ 114–118. Intellectual Ventures’s expert, Dr. Zeger,
distinguishes between a filter that he characterizes as a device and/or
software that receives an input signal and produces an output, on the one
hand, with Fast Fourier Transform devices that convert information from a
frequency domain to a time domain. Ex. 2009 ¶ 75.
The specification does not define “filter” expressly. It is clear,
however, that the context in which “filter” is used in both the specification
and the claims is in connection with the frequency bandwidth of a
communication signal. See IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109,
1117 (Fed. Cir. 2011) (claim language must be construed in the context of
the claim in which it appears).
In the instant case, the term filter is modified by the phrase “having a
bandpass.” See Ex. 1001, claim 15 (“filter having a bandpass”). In turn, the
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term “bandpass” is used in the context of a bandwidth. Id. (“bandpass
appropriate for the . . . bandwidth”). We have previously construed
bandwidth as “a frequency range.” See above. Therefore, except as
modified by the term “bandwidth,” we will construe “filter” to cover all
known types of that structure that are supported by the patent disclosure.
Renishaw PLC, 158 F.3d at 1250.
Taking the foregoing into account, we construe the term “filter having
a bandpass” as a “circuit that limits the frequency range that is transmitted
or received.”
6. “remote unit” (claim 1)
Google’s proposed construction:
units that are remote from infrastructure equipment (where
infrastructure equipment is broad enough to include satellites
that send signals to and from remote units).
Reply 6.
Intellectual Ventures’s proposed construction:
a unit that receives transmissions from a [terrestrial] base station.
PO Resp. 19.
Claim 1 recites a method performed at “a remote unit.” The term
“remote unit” appears once in the Background of the Invention section and
nowhere else in the Specification. Ex. 1001, 1:23–29. The Background
section further explains that remote units are often referred to as “User
Equipment,” “UB,” or “Customer Premises Equipment.” Id. The
Background section further identifies “user equipment” or “UE” as
“subscriber terminals” 112, 114, and 116. Ex. 1001, 1:43–44, Fig. 1.
Intellectual Ventures argues that a “remote unit” is remote from
“infrastructure equipment.” PO Resp. 19. Intellectual Ventures further
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argues that “infrastructure equipment” means a “base transceiver station”
and that a person of ordinary skill in the art at the time of the invention
would not have understood a base station to be anything other than a
terrestrial facility. Id. at 20. Intellectual Ventures argues that there is no
mention of satellite communication equipment in the ’353 patent and,
therefore, something that receives communications from a satellite
reasonably cannot be included within the scope of a “remote unit” as that
term is used in the claims of the ’353 patent.
Google disputes Intellectual Ventures’s contention that the ’353 patent
is limited in scope to remote units that communicate only through terrestrial
base stations to the exclusion of satellites. Reply 6–7. In support of its
position, Google directs our attention to the following statement in the
Specification:
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.
Ex. 1001, 4:39–44. An additional expression of the breadth of the invention
is found in the following passage in the Specification:
Further, in the case of other network infrastructures,
implementation of the processing operations may be performed
at any appropriate node such as any other appropriate type of
base station, base station controller, etc.
Id. at 4:31–34. An additional expression of the breadth of the invention is
found in the following passage in the Specification
Alternatively the aforementioned digital filtering operations
may be carried out by various components distributed at
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different locations or entities within any suitable network or
system.
Id. at 4:35–38. While embodiments of the invention are described as using
base stations, there is no limitation in claim 1, or any other claim, directed to
a base station per se, much less a terrestrial base station.
It is the claims that define the metes and bounds of the patentee’s
invention. See Phillips, 415 F.3d at 1313. Thus, the proper construction of
any claim language must stay true to the claim language and avoid giving
invention-defining effect to specification language included for other
descriptive and enablement purposes. See Straight Path IP Group, Inc.., v.
Sipnet EU S.R.O., No. 2015-1212, 2015 WL 7567492, slip op. at 8–9 (Fed.
Cir. Nov. 25, 2015). The patentee is free to choose a broad term and expect
to obtain the full scope of its plain and ordinary meaning unless the patentee
explicitly redefines the term or disavows its full scope. See Thorner v. Sony
Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Each
claim does not need to cover every feature disclosed in a specification. See
Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1182 (Fed.
Cir. 2006). When a claim addresses only some of the features disclosed in
the specification, it is improper to limit the claim to other, unclaimed
features. See id. We do not read limitations from the specification into
claims and we do not redefine terms. See Thorner, 669 F.3d at 1367.
In the instant case, the scope of Intellectual Ventures’s invention is
described as quite broad, applying to “any multi-bandwidth/multi-data rate
communication system--fixed or wireless.” Ex. 1001, 4:39–44. Under the
circumstances, we are not persuaded to alter the preliminary construction of
“remote unit” set forth in our Decision to Institute. Thus, we construe
“remote unit” as a “unit that is remote from infrastructure equipment.” For
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purposes of clarification, we further regard “infrastructure equipment” as
including satellites that relay signals between earth stations and remote units.
7. data burst (Claims 5 and 25)
Neither party proposes a construction for data burst. Google relies on
Shahar as disclosing the use of data bursts. Pet. 50. Intellectual Ventures
argues that Shahar makes no mention of a data burst and that a person of
ordinary skill in the art would not have understood Shahar as disclosing a
data burst. PO Resp. 51.
The term “data burst” appears in the Specification of the ’353 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, 6:26–27. The output of combiner 310 is referred
to as the “resultant data burst containing the SCH information.” Id. at 6:28.
This “data burst” is then passed to the antenna for transmission. Id. at 6:34.
After being transmitted, the data burst is received at the antenna. Id. at
6:35–39. 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.
Throughout its Patent Owner’s Response, 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 are we able to discern that “data
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burst,” as used in the Specification, is anything other than a generic term
used to describe a digital data communication of some finite duration.14
The broad and generic nature of the term “data burst” was confirmed
by Intellectual Ventures’s counsel during oral argument in a related IPR
proceeding. 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.15 Counsel did not dispute that
packetized wireless transmissions constitute data bursts.16
On the present record, we construe “data burst” broadly to encompass
any data transmission of discrete, limited or finite duration.17 Thus, any
communication system that segments a stream of information into packets or
portions for transmission may be considered as employing “data bursts.”
IV. OBVIOUSNESS OVER COMBINATIONS
BASED ON MCFARLAND
Google asserts that claims 1–8 and 21–27 would have been obvious
over McFarland, either alone, or in combination with Shahar or HSDPA. A
patent is invalid for obviousness:

14 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.
15 Ericsson Inc.et al v. Intellectual Ventures II LLC, Case IPR 2014-00919
(PTAB), Oral Hearing Transcript, Paper 36, 73:8–23.
16 Id. at 73:20–74:11.
17 In contrast to a lengthy and continuous transmission.
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if the differences between the claimed invention and the prior
art are such that the claimed invention as a whole would have
been obvious . . . to a person having ordinary skill in the art to
which the claimed invention 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.
of Kansas City, 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, Google 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. 1005)
McFarland discloses a multi-carrier communication system that
employs Orthogonal Frequency-Division Multiplexing (“OFDM”).
Ex. 1005, Abstract. OFDM uses a relatively wide bandwidth
communication channel and breaks it into many smaller frequency sub-
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.
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. Id. McFarland’s system is
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designed to vary and regulate the operational mode on a packet-by-packet
basis. Id.
McFarland packetizes its 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. Figures 3 and 4 of McFarland are reproduced
below.

Figures 3 and 4 depict a plurality of sub-channels identified as co to
cN-1. The figures identify the spacing between the carrier frequencies of
each channel. See label “Carrier spacing.” They also show an “Occupied
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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. 1005, 3:63–4:1.
2. HSDPA (Ex. 1003)
HSDPA captures the working assumptions and evaluation criteria of
techniques considered for High Speed Downlink Packet Access for UTRAN
(UMTS Terrestrial Radio Access Network). Ex. 1003, 6.
3. Shahar (Ex. 1006)
Shahar discloses an adaptive modulation scheme that allows switching
the type of modulation used on wireless transmissions on a packet-by-packet
basis. Ex. 1006, 2:14–18. 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
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 2:35–38.
B. Differences Between the Prior Art and the Claimed Invention
Google asserts that independent claims 1–4, 6, 21–24, and 26 are
obvious over McFarland as a standalone reference. Pet. 49–59. Google
presents claim charts that map the limitations of these claims onto
McFarland. Id. Google supports its position with declaration testimony
from Dr. Madisetti. Id. Google does not identify or otherwise admit to any
differences between McFarland and the claimed invention. See, e.g., Pet. 51
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(McFarland discloses or suggests all of the elements and limitations of
claim 1).
Google does not identify which elements are merely suggested as
opposed to disclosed. PO Resp. 38. Google does not explain how a person
of ordinary skill in the art would modify McFarland to achieve the claimed
invention and, indeed, Google does not admit that any modification needs to
be made. Thus, Google never reaches the issue of whether a person of
ordinary skill in the art would have had a reasonable expectation of success
in modifying McFarland as Google never acknowledges that any such
modification is necessary.
1. Claim 1 over McFarland (Ex. 1005)
Intellectual Ventures identifies two elements that it alleges are
missing from McFarland. PO Resp. 39. Intellectual Ventures argues that
McFarland lacks disclosure of an “indication of an operating bandwidth.”
Id. Intellectual Ventures also argues that McFarland lacks disclosure of a
“signal.” Id. at 44. Neither of these arguments is persuasive.
Intellectual Ventures first argues that McFarland’s indication of an
operating “mode” is distinguishable from an “indication of an operating
bandwidth” recited in claim 1. Id. at 40. Intellectual Ventures argues that
the mode only specifies the number of carriers and that it is not sufficient to
provide bandwidth information. Id.
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. 1005, 3:9–19, Abstract. As illustrated by Figures 3–5, a mode that uses,
for example, three carriers/sub-channels uses more occupied bandwidth than
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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
5:53–55.18 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
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 claim 1 directed to identification of an operating bandwidth
because McFarland’s mode indication fails to specify the carrier spacing.

18 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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PO Resp. 41. This argument has no bearing on this issue under the claim
construction that we have adopted. When McFarland’s mode is using three
subcarriers, it is occupying more bandwidth than when the mode is using
only two subcarriers. When McFarland sends a signal with a packet header
that specifies the number of sub channels used in the operating mode, it is
sending an indication of an operating bandwidth within the meaning of
claim.
Intellectual Ventures’s argument regarding McFarland’s lack of
disclosure of a guard-band is similarly unsound. We are not persuaded that
claim 1 contemplates either the inclusion or exclusion of a guard band. As
admitted by Intellectual Ventures, a guard band is merely a band of unused
frequencies that prevent interference with a neighboring signal. PO
Resp. 25. 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 ’353 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 ’353 patent’s disclosure of
“bandwidth” and, as we have previously observed, the specification nowhere
uses the term “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
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communication channels. Consequently, we reject Intellectual Ventures’s
“guard band” argument.
Intellectual Ventures next argues that McFarland fails to disclose a
“signal” as claimed. PO Resp. 44. This argument has no merit. McFarland
discloses transmitting packets of data. Ex. 1005, 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. 45–47. As we understand McFarland’s OFDM system, 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, counsel for Intellectual
Ventures conceded as much.19

19 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.
Tr. 58:21–23.
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2. Claim 21 over McFarland
Claim 21 is an independent claim that is substantially similar in scope
to claim 1, with the principal exception that claim 21 is an apparatus claim
directed to a communication unit and claim 1 claims a method for operating
a communication system. Claim 21 also differs in scope from claim 1 in that
it also contains limitations directed to “logic for receiving” signals at the
claimed bandwidths. Ex. 1001, claims 1 and 21. Google’s claim chart for
claim 21 for the “logic for” limitations refers back to its claim chart for
claim 1. Pet. 58.
Intellectual Ventures argues that McFarland lacks the “logic for”
limitations in claim 21 of the ’353 patent. PO Resp. 57. In particular,
Intellectual Ventures argues that Google’s claim chart is deficient as it
merely refers back to a claim chart for another claim (claim 1) that does not
have “logic for” limitations. Id.
We have reviewed Google’s claim chart for claim 1 that is referenced
in the claim chart for claim 21. The recited passages in the claim chart for
claim 1 are replete with references to various circuits that a person of
ordinary skill in the art would understand as “logic” circuitry that comports
with our construction of “logic for” expressed hereinabove. Pet. 52–54.
Given the similarities between claims 1 and 21, we do not find it necessary
for Google to repeat the entire claim chart for claim 1 a second time for
claim 21.
We find that McFarland discloses the “logic for . . .” elements as
claimed in claim 21.
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3. Claims 2, 3, 22, and 23 over McFarland
Intellectual Ventures attacks the Petition as insufficient, alleging that
Google presented its unpatentability arguments in a declaration and then
incorporated such arguments by reference into the Petition. PO Resp. 48.
Intellectual Ventures provides no specific example of a statement in
Dr. Madisetti’s declaration testimony that we should consider as argument as
opposed to a legitimate expression of expert opinion testimony directed to
the facts of the case. We decline to read each sentence of Dr. Madisetti’s
declaration testimony and speculate as to which statements Intellectual
Ventures believes may be an argument as opposed to an opinion on a fact
issue.
Intellectual Ventures next argues that the filter limitations of claims 2
and 3 are not met because claims 2 and 3 require two separate and distinct
filters in a receiver while McFarland allegedly only discloses a single filter
in a transmitter (i.e., not in a receiver). PO Resp. 48–49. Finally,
Intellectual Ventures argues that the Fast Fourier Transform circuits of
McFarland are not filters within the meaning of claim 2. Id. at 49.
Google replies that, under the broadest reasonable interpretation of the
claim language, the filter limitations of claim 2 are satisfied by a single,
reconfigurable filter. Reply 22. Google also replies that admissions in
Intellectual Ventures’s own specification refute the position that Fast Fourier
Transform circuits are not filters. Id.
We reject Intellectual Ventures’s argument that claim 2 requires two
distinct filters. The Specification expressly discloses that the invention may
be practiced with a single, reconfigurable filter. Ex. 1001, 5:26–31.
[I]n the case where a different chip-rate is available for the
physical channel that is used to transport data, it is necessary to
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provide different filters (or to differently configure the filter(s))
for the SCH channel and the physical channels used to transport
the data. Such different filters, or re-configuration of the same
filter(s), may be implemented . . . .
Id. at 6:54–60 (emphasis added).
With respect to Intellectual Ventures’s argument that Fast Fourier
Transform circuits are not filters, we find persuasive Google’s argument that
Intellectual Ventures’s position is contradicted by its own patent disclosure.
Reply 22 (citing Ex. 1001, 6:58–64; Ex. 1026, 4:21–5:12). Exhibit 1029
also generally supports Google’s position that Fast Fourier Transform
circuits may be considered as filters. In McFarland, the Figure 9
embodiment uses an iFFT processor that disables portions of its internal
circuitry depending on how many carriers are active. Ex. 1005, 5:13–18.
Although McFarland focuses more on transmitter circuitry, it recognizes that
almost any approach for changing the number of carriers at the transmitter
can be used in a similar fashion at the receiver. Id. at 4:55–60.
We have construed filter broadly to encompass all known types of
bandpass filters that are supported by the patent disclosure. See Renishaw,
158 F.3d at 1250. Under such construction, we find that McFarland satisfies
the bandpass filter and reconfigurable filter limitations of claims 2 and 3.
Our analysis here applies with equal force to the similar filter limitations
claims 22 and 23.
4. Claims 4 and 24 over McFarland
Claim 4 depends from claim 1 and claim 24 depends from claim 21.
Claims 4 and 24 each add a limitation that the first predetermined bandwidth
is lower than the indicated operating bandwidth. Google’s claim chart
quotes specified passages from McFarland as satisfying this limitation.
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Pet. 55, 59. Intellectual Ventures argues that the bandwidth of McFarland’s
base mode is not lower that its other operating modes. PO Resp. 50. We
disagree.
McFarland discloses a base mode of operation that all nodes support
and that all nodes can understand. Ex. 1005, 7:45–51; 6:35–38. Such mode
of operation is signaled in the header of the packet. Id. at 7:46. 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’s data rate can be increased by: (1) increasing the symbol rate,
(2) increasing the number of carriers used, or (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 4:12–16; 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). In these passages, McFarland 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 claims 4 and 24 that the first
predetermined bandwidth is lower than the indicated operating bandwidth.
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5. Claims 5 and 25 over McFarland and Shahar (Ex. 1006)
Claims 5 and 25 depend from claims 1 and 21 respectively and add
limitations directed to a data burst signal and synchronization channel signal.
Intellectual Ventures argues that Shahar fails to disclose a “data burst.” PO
Resp. 51. We disagree.
Shahar discloses transmitting a data packet 220 comprised of a
header 240 and a data field 250. Ex. 1006, 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
rate. Id. at 13:42–51. This disclosure is sufficient to establish that Shahar
transmits “data bursts” as we have construed the term hereinabove. 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
transmission 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).
We find that Shahar discloses a “data burst” as we have construed the
term.
6. Claims 6 and 26 over McFarland
These two claims depend from claims 1 and 21 respectively and add
limitations directed to a wireless communication system. Intellectual
Ventures does not dispute that McFarland discloses a wireless
communication system. PO Resp. 52.
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7. Claims 7 and 27 over McFarland and HSDPA (Ex. 1003)
These two claims depend from claims 6 and 26 respectively and add
limitations that the wireless communication systems of claims 6 and 26 are
UMTS systems. Google relies on HSDPA as disclosing UMTS based
wireless systems. Pet. 51. Google also points out that the ’353 patent
acknowledges that UMTS systems were well known at the time of the
invention. Id. at 50–51 (citing Ex. 1001, 1:30–2:2). Intellectual Ventures
does not dispute that HSDPA discloses a UMTS system. PO Resp. 53.
8. Claim 8 over McFarland and Shahar
Claim 8 depends from claim 1 and adds a limitation directed to
encoding executable instructions on a computer-readable medium. Google
relies on Shahar as disclosing programmatic control. Pet. 50.
Intellectual Ventures argues that McFarland does not disclose
bandwidth determination. PO Resp. 55. Intellectual Ventures further argues
that Shahar fails to disclose a computer-readable medium encoding
executable instructions for performing the method of bandwidth
determination. Id. Intellectual Ventures concludes that neither McFarland
nor Shahar discloses using computer-readable medium encoding executable
instructions for performing the method of bandwidth determination. Id.
McFarland discloses a controller. Ex. 1005, Fig. 10. “FIG. 10 shows
a shows a controller unit which accepts several inputs. Based on these
inputs, the controller decides the appropriate symbol rate and number of
carriers . . . .” Id. at 5:40–43. Dr. Madisetti testifies that person of ordinary
skill in the art would have recognized that McFarland’s controller would
have been programmed with executable instructions. Ex. 1011 ¶ 128.
Shahar discloses a:
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computer program product which is a storage medium (media)
having instructions stored thereon/in which can be used to
control, or cause, a computer to perform any of the processes of
the present invention.
Ex. 1006, 14:63–67. Google relies on the combined teaching of McFarland
and Shahar to disclose using a computer-readable medium encoding
executable instructions for performing the method of bandwidth
determination. Pet. 51.
Intellectual Ventures’s arguments regarding the lack of disclosure in
McFarland and Shahar individually fail to consider the combined teaching of
the two references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (non-obviousness cannot be established by attacking references
individually where the basis for obviousness is the combined teachings of
the references); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
We find that the combined teachings of McFarland and Shahar satisfy
the limitations of claim 8.
C. Person of Ordinary Skill in the Art
Google’s Petition alleges that a person of ordinary skill in the art
would have been someone with a good working knowledge of wireless
communication systems, bandwidth allocation, and spread spectrum
communications. Pet. 12 (citing Ex. 1011, 11–12 (Dr. Madisetti)).
According to Google, such a person would have had a range of knowledge
roughly equivalent to the knowledge and/or training of a person holding the
degree of Bachelor of Science in Electrical Engineering, Computer Science,
or Computer Engineering, or equivalent, and at least two years of experience
with networking technology and related networking protocols. Id.
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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. 7.
Intellectual Ventures’s expert, Dr. Zeger, testifies that 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 publications of other persons or companies; and the
sophistication of the technology. Ex. 2009 ¶ 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. ¶ 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. ¶ 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).20 Notwithstanding the scant evidence on skill level

20 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
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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 telecommunications. 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. 1006,
Abstract. 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. Ex. 1005, Abstract. 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. 1006, 7:1–8, 9:1–23. 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. Id. at 2:14–18;
10:48–11:3. The person of ordinary skill in the art would also have had
familiarity with UMTS systems. Ex. 1001, 1:22–2:2; Ex. 1003.
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

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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obviousness. See Cyclobenzaprine, 676 F.3d at 1075–76. However, the
absence of secondary considerations is a neutral factor. See Custom Acc.,
Inc., v. Jeffrey-Allan Indus., 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.
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,
1374 (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).
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1. Claims 1–4, 6, 21–24, and 26 over McFarland
Google alleges that McFarland discloses or suggests all of the
elements and limitations of claims 1–4, 6, 21–24, and 26. Pet. 51, Reply 23.
Apart from alleging, in essence, that there are no differences between the
prior art and the claimed invention, Google does not engage in an
obviousness analysis under the Graham factors. In particular, there is no
discussion as to any reason that a person of ordinary skill in the art would
have modified McFarland to achieve the claimed invention, nor does Google
acknowledge that modification is necessary. Indeed, Google’s supporting
declaration from Dr. Madisetti discusses McFarland as an anticipatory,
rather than an obviousness, prior art reference. Ex. 1011 ¶ 99 (“it is my
opinion that these claims are invalid as anticipated under 35 U.S.C. §102”).
Thus, whereas the Petition alleges that McFarland “discloses or suggests” all
of the limitations of these claims, Google’s expert, Dr. Madisetti, testifies
that all of the elements are affirmatively disclosed, and not merely
suggested, by McFarland. Id.
Intellectual Ventures points out that the Petition fails to differentiate
between elements that are disclosed and elements that are merely suggested.
PO Resp. 38. As discussed above, Intellectual Ventures argues that certain
elements are not disclosed, but we have resolved those factual issues
adversely to Intellectual Ventures.
The depth of Google’s obviousness analysis under the Graham factors
is meager, at best. It is well settled that novelty under 35 U.S.C. § 102 and
nonobviousness under 35 U.S.C. § 103 are separate conditions of
patentability. See Cohesive Tech., Inc. v. Waters Corp., 543 F.3d 1351,
1363 (Fed. Cir. 2008). “[I]t does not follow that every technically
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anticipated invention would also have been obvious.” In re Fracalossi, 681
F.2d 792, 796 (CCPA 1982) (Miller, J., concurring).
The tests for anticipation and obviousness are different. Cohesive,
543 F.3d at 1364. Obviousness generally requires an analysis under the
Graham factors. Id. In the instant case, however, we agree with Google that
McFarland, unmodified and as a standalone reference, discloses all of the
limitations of claims 1–4, 6, 21–24, and 26. Inasmuch as McFarland and
the ’353 patent come from the same field of endeavor and essentially seek to
solve the same problem in substantially the same manner, i.e., increasing
transmission speed and efficiency through multi-bandwidth techniques that
coordinate bandwidth variability using indicators in a header or “first signal
portion,” we find this case to be appropriate for application of the maxim
that anticipation is the epitome of obviousness. See Fracalossi, 681 F.2d at
794 (a disclosure that anticipates under 35 U.S.C. § 102 also renders the
claim unpatentable under 35 U.S.C. § 103).
In addition, settled law maintains that a broader independent claim
cannot be nonobvious where a dependent claim stemming from that
independent claim is invalid for obviousness. See Soverain Software LLC v.
Victoria’s Secret Direct Brand Management, LLC, 778 F.3d 1311, 1315
(Fed. Cir. 2015). In view of our determination that each of claims 5, 7, 25,
and 27 are unpatentable, we determine that each of claims 1, 6, 21, and 26
are unpatentable as obvious.
2. Claims 5, 8, and 25 over the Combination of McFarland and Shahar
Google 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.
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Pet. 50. Google 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.
Google supports its position with testimony from Dr. Madisetti. Id. at 56,
(citing Ex. 1011, 81–83).
Intellectual Ventures contends that Google’s evidence of
combinability is insufficient. PO Resp. 51–52. Intellectual Ventures
contends that Google fails to explain how or why one of ordinary skill in the
art would have combined McFarland and Shahar. Id. 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. at 52. Intellectual Ventures argues that
McFarland does not have multiple downstream modulation types. Id.
Intellectual Ventures presents neither evidence nor persuasive
technical reasoning to controvert Google’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. 2009 ¶ 77. This testimony is
not persuasive because it ignores Google’s evidence that Shahar and
McFarland, when combined, would use multiple modulation formats and,
therefore, also would use synchronization techniques associated therewith.
Moreover, Intellectual Ventures presents no evidence that incorporating the
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multiple modulation formats and associated synchronization techniques of
Shahar into McFarland would require anything more than the exercise of
ordinary skill.
Furthermore, 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, 1:22–23 (“It is known that synchronization
is an essential procedure in a modern digital communication system”);
Ex. 1002 ¶ 12 (“It is well known to provide synchronizing information to
enable a receiver to operate a synchronous mode”); Ex. 1005, 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. 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 claims 5 and 25 that requires that the
claimed synchronization is necessarily used to synchronize between or
among various modulation schemes. The ’353 patent acknowledges that it is
known that synchronization is an essential procedure in a modern digital
communication system. Ex. 1001, 1:22–23. It further acknowledges that
synchronization is the procedure used by a remote unit to align the remote
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frequency reference and timing to that used by the system infrastructure.
Id. at 1:23–29.
In McFarland, an operating mode contemplates a combination of
symbol rate and number of carriers. Ex. 1005, 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
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 Google that
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Shahar could have been combined with McFarland so that McFarland’s
OFDM system is synchronized in accordance with the teaching of Shahar.
With respect to claim 8, Intellectual Ventures argues that Google’s
Petition fails to provide a sufficient rationale for combining Shahar with
McFarland. PO Resp. 55. Intellectual Ventures argues that the
computerized processes disclosed in Shahar are unrelated to the processes
taught by McFarland. Id. at 56. Intellectual Ventures supports this
argument with a single, conclusory sentence in Dr. Zeger’s declaration.
Dr. Madisetti testifies that McFarland discloses using programmatic
control and that Shahar discloses storing executable instructions on
computer readable media. Ex. 1011 ¶ 128. Dr. Madisetti opines that a
person of ordinary skill in the art would have found it obvious to use
executable instructions stored on computer readable media with
programmatic control of McFarland and that such would have yielded
predictable results. Id. Given the simplicity and commonplace nature of
storing computer instructions on media for use by a controller, Google’s
evidence is sufficient evidence for us to find that a person of ordinary skill in
the art would have had ample reason to combine McFarland and Shahar to
achieve the invention of claim 8.
3. Claims 7 and 27 over the Combination of McFarland and HSDPA
Google asserts that a person of ordinary skill in the art would have
found it obvious to combine McFarland with the UMTS system of HSDPA.
Pet. 51. According to Google’s expert, Dr. Madisetti, UMTS was a well-
known wireless system before the earliest priority date in the ’353 patent.
Ex. 1011 ¶ 131. Dr. Madisetti testifies that a person of ordinary skill in the
art would have recognized that a UMTS-based wireless system could be
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used with McFarland. Id. He further testifies that such merely would have
entailed applying the known technique of using UMTS technology, as taught
by HSDPA, in the wireless system of McFarland thereby yielding a
predictable result. Id.
Intellectual Ventures argues that Google fails to provide a rational
underpinning for combining HSDPA with McFarland. PO Resp. 53.
Intellectual Ventures contends that Google fails to explain how or why
someone with ordinary skill would have combined McFarland and HSDPA.
Id.
Intellectual Ventures argues that HSDPA’s UMTS system does not
operate to vary a number of carriers and symbol rates. Id. at 53–54.
Intellectual Ventures essentially argues that McFarland discloses the use of
OFDM technology and that the UMTS of HSDPA uses CDMA based spread
spectrum technology that uses a single carrier and suggests that the two
technologies are incompatible. Id.
In Reply, Google argues that using OFDM techniques in CDMA
environments was known prior to the ’353 patent prior art. Reply 17;
Ex. 1025, 613 (“Combining OFDM transmissions with code division
multiple access (CDMA) allows us to exploit the wide-band channel’s
inherent frequency diversity by spreading each symbol across multiple
subcarriers”). Thus, Google argues that the idea of combining OFDM and
CDMA technology was publicly known and would not require more than
routine experimentation. Reply 17.
Intellectual Ventures’s arguments are not persuasive. They amount to
an attack on the applied references individually. See Merck, Inc., 800 F.2d
at 1097; Keller, 642 F.2d at 425.
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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
HSDPA. “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, Google presents testimony from Dr. Madisetti that combining
HSDPA with McFarland entails nothing more than applying a known
technique to yield a predictable result. Ex. 1011 ¶ 131. In other words, the
combination of McFarland and HSDPA is nothing more than a predictable
variation of McFarland. Intellectual Ventures presents no persuasive
evidence or technical reasoning that adapting UMTS technology from a
single carrier, spread spectrum system to a multi-carrier OFDM system
requires anything more than ordinary skill. We think that Google has
demonstrated sufficiently that a person of ordinary skill in the art would
have been able to combine HSDPA with McFarland and would have had
ample reason to do so.
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
(Fed. Cir. 2011). After considering Google’s obviousness presentation
under the Graham factors and Google’s evidence on how or why a person of
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ordinary skill in the art would have modified or combined the prior art to
achieve the claimed invention, we conclude that Google has established, by
a preponderance of the evidence, that claims 1–8 and 21–27 of the ’353
patent are unpatentable as obvious over McFarland and the proposed
combinations of references based on McFarland.
V. ANTICIPATION BY PIERZGA
To anticipate a patent claim under 35 U.S.C. § 102, “a reference must
describe . . . each and every claim limitation and enable one of skill in the art
to practice an embodiment of the claimed invention without undue
experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Corp., Inc., 651
F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009)). Anticipation of a patent claim is a question of fact. See In
re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). As the party
challenging the patentability of claim 1, Google bears the burden of proving
anticipation by a preponderance of the evidence. See 35 U.S.C. § 316(e).
Whether a patent is anticipated is a two-step inquiry. See Power
MOSFET Tech., LLC. v. Siemens AG, 378 F.3d 1396, 1407 (Fed. Cir. 2004).
The first step requires construction of the claims. See id. The second step in
the analysis requires a comparison of the properly construed claim to the
prior art. See id.
A. Pierzga (Ex. 1002)
Pierzga discloses an Orthogonal Frequency Division Multiplexing
(“OFDM”) system comprising earth stations, repeater satellites, and mobile
receivers. Ex. 1002, Abstract. OFDM systems take a relatively wide
bandwidth communication channel and break it into many smaller frequency
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sub-channels. See Ex. 1005, 1:19–28. The narrower sub-channels are then
used simultaneously to transmit data at a high rate. Id.
Pierzga discloses a frequency multiplex communication system in
which the transmitter can vary the number of subcarriers in the multiplexed
signal from time to time. Ex. 1002 ¶ 4. The system periodically transmits a
signal that specifies the number of subcarriers present in the multiplex. Id.
Such a periodic signal is transmitted on a particular subcarrier at a
predetermined frequency. Id.
A main reference subcarrier is located at one edge of the multiplex.
Id. ¶ 5. This allows the receiver to acquire the data specifying the number of
subcarriers in the multiplex. Id. Pierzga discloses that its OFDM signal is
adjustable so as to alter its data rate and bandwidth. Id. ¶ 76. The
transmitters assign capacity such that when more capacity is required for one
service and less for another, the capacity is reallocated dynamically so that
only the bandwidth required for the currently active services is consumed.
Id. ¶ 5.
Each frame of transmitted data is preceded by transmission, on the
reference frequency, of a data signal indicating the allocation of subcarriers
channels. Id. ¶ 83. Pierzga refers to this as the “ensemble” plan. Id.
Pierzga’s transmitter and receiver each include a filtering circuit,
which can apply different filtering characteristics depending on the size of
the ensemble. Id. ¶ 8. Thus, the relatively wide spectrum of the OFDM
signal is constrained to match whichever ensemble size is used. Id. Figure 1
of Pierzga is reproduced below.
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Figure 1 is a block diagram of the elements of a communication
system. Ex. 1002 ¶ 36. As shown in Figure 1, Pierzga discloses earth
stations, 100a, 100b, 100c, in communication with repeater satellites 200a–
200c, broadcasting to receiver stations 300a–300f. Id. ¶ 69. Pierzga
transmits signals to mobile receivers that can be disposed in a car, truck
airplane, or boat. Id. ¶ 79.
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Pierzga’s disclosure shares much in common with the McFarland
reference that we have previously discussed. Both McFarland and Pierzga
disclose OFDM systems that can vary the number of subcarriers used for the
data portion for a transmission based on information contained in a packet
header or a main reference subcarrier. Id. ¶¶ 5, 83.21
B. Anticipation Analysis
1. Claims 1 and 21
Google relies on element-by-element claim charts that map claims 1
and 21 onto Pierzga as part of its anticipation analysis. Pet. 21–23, 27–28.
Google’s allegations are supported by the Madisetti Declaration. Ex. 1011,
29–40.
Intellectual Ventures argues that Pierzga fails to satisfy the limitations
in claims 1 and 21 directed to an “indication of an operating bandwidth.”
PO Resp. 24, 35. Intellectual Ventures’s argument is based, in part, on a
proposed claim construction that we have rejected hereinabove. Id. at 24.
We find that Pierzga does disclose an indication of an operating bandwidth
in accordance with the claim construction that we have adopted.
Furthermore, Intellectual Ventures argues that Pierzga does not satisfy
the limitations of claims 1 and 21 directed to identification of an operating
bandwidth because Pierzga’s ensemble plan indication fails to specify the
carrier spacing and does not account for “guard-band.” Id. at 25. Neither of
these arguments is persuasive for essentially the same reasons that we

21 McFarland discloses its use of a variable number of carriers as an
operating “mode” whereas Pierzga uses the name “ensemble plan” in
connection with a substantially similar concept. Pierzga differs from
McFarland primarily in its use of communication satellites to relay signals
from an earth station to a remote terminal. Ex. 1002, Fig. 1.
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discussed above with the McFarland reference. When Pierzga sends a signal
that specifies the number of subcarriers present in the multiplex, it is sending
an indication of an operating bandwidth within the meaning of claims 1
and 21.
With respect to Intellectual Ventures’s argument regarding Pierzga’s
lack of disclosure of a guard-band, we are not persuaded that claims 1
and 21 contemplate either the inclusion or exclusion of a guard band. As
admitted by Intellectual Ventures, a guard-band is merely a band of unused
frequencies that prevents interference with a neighboring signal. PO
Resp. 25. Thus, a guard-band merely 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. We reject Intellectual Ventures’s
“guard-band” argument for essentially the same reasons discussed above
with respect to the McFarland reference.
Intellectual Ventures next argues that Pierzga does not disclose a
remote unit as claimed. PO Resp. 28. Intellectual Ventures argues that
Pierzga’s receiving stations receive communication only from satellites and
not from a base station. Id. Essentially, Intellectual Ventures argues that a
remote unit is not a remote unit unless it communicates directly with a
terrestrial base station. According to Intellectual Ventures’s reasoning, this
would exclude Pierzga’s receiver station 300, which may be found in a car, a
lorry, an airplane, or a boat. Id.; Ex. 1002 ¶¶ 68–71.
Intellectual Ventures’s argument is predicated on a construction of
“remote terminal” that we rejected previously. Pierzga’s mobile receiver
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terminals that receive wireless signals from a satellite and are located in cars,
boats, and airplanes are remote terminals within the meaning of the term as
we have construed it.22
We find that Google has established, by a preponderance of the
evidence, that Pierzga anticipates claims 1 and 21.
2. Claims 2, 4–6, 22, and 24–26
Intellectual Ventures argues, in conclusory fashion, that Google
provides no explanation as to why claims 2, 4–6, 22, and 24–26 are
unpatentable. PO Resp. 29, 36. Intellectual Ventures makes no evidentiary
showing that Pierzga fails to disclose any of the dependent claims limitations
in claims 2, 4–6, 22, and 24–26. Intellectual Ventures offers no evidence or
persuasive technical reasoning that tends to refute the evidence advanced by
Google in its Petition, the Pierzga reference, and the testimony of
Dr. Madisetti. Instead, Intellectual Ventures essentially makes a form over
substance procedural attack on the manner in which Google has presented its
case through its Petition and accompanying declaration testimony.
We have reviewed Google’s Petition and accompanying declaration of
Dr. Madisetti. Google furnishes claim-by-claim, element-by-element claim
charts mapping the limitations of these claims onto Pierzga. Pet. 23–29.
Google supports its contentions with testimony from Dr. Madisetti. Id. The
claim charts quote passages of Pierzga verbatim and then refer to declaration
testimony from Dr. Madisetti that interprets and explains the Pierzga

22 In Pierzga, the satellites 200 merely serve as repeaters for earth stations
100 that broadcast to receiver stations 300 via satellites 200. Ex. 1002 ¶ 68.
Thus, Pierzga’s mobile receiver terminal does communicate with terrestrial
base stations, albeit via satellite relay.
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reference and offers opinions and conclusions that the claim limitations are
met by Pierzga. Id., Ex. 1011¶¶ 83–91.
Our rules require that a Petition must set forth how the construed
claims are unpatentable under the asserted statutory grounds. See 37 C.F.R.
§ 42.104(b)(4). The Petition also must specify where each element of the
claim is found in the prior art. See id. The Petition also must provide the
exhibit number of the supporting evidence relied on to support the challenge
and the relevance of the evidence to challenge raised, including identifying
specific portions of the evidence that support the challenge. See id. Our
Office Patent Trial Practice Guide provides the following additional
guidance.
5. Claim Charts: While not required, a petitioner may file a
claim chart to explain clearly and succinctly what the petitioner
believes a claim means in comparison to something else, such as
another claim, a reference, or a specification. Where appropriate,
claim charts can streamline the process of identifying key features
of a claim and comparing those features with specific evidence.
77 Fed. Reg. at 48764. In the instant case, Google’s Petition primarily relies
on claim charts that contain quotations from the applied references. The
claim charts, in turn, also cite to Dr. Madisetti’s declaration, but without also
including his actual testimony either verbatim, paraphrase, or summary.
See, e.g., Pet. 23–24. We find Google’s presentation of evidence to be
adequate under the procedural requirements of our rules.
Intellectual Ventures argues that the Petition is not adequate because it
does not provide “explanation.” PO Resp. 29. Intellectual Ventures does
not elaborate on what it means by “explanation,” how much explanation is
necessary, or just how the Petition is deficient in providing explanation. Our
rules merely require a statement of the relief requested and to identify where
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each element is found and the relevance of the evidence to the challenge
raised. See 37 C.F.R. § 42.104(b).
Contrary to Intellectual Ventures’s argument, the rules do not require,
in every case, some type of explanation in the form of narrative commentary
that clarifies and explains the relationship between each claim limitation and
a corresponding disclosure in the prior art. While such explanation may be
helpful and, indeed, necessary in certain cases where the relationship is not
immediately clear from a reading of the identified passage in the prior art,
there are other cases, such as here, where such detailed, explanatory
commentary is not necessary. In the instant case, the ’353 patent is easily
understood as are the relevant portions of Pierzga, McFarland, and Shahar.
The relationship between the prior art and the claims of the ’353 patent are
readily apparent without extensive elaboration in the form of expert opinion
testimony and attorney argument.
We find that Google has established, by a preponderance of the
evidence, that Pierzga anticipates claims 2, 4–6, 22, and 24–26.
3. Claims 3 and 23
Intellectual Ventures argues that Pierzga fails to satisfy the limitations
of claims 3 and 23, which are directed to reconfigurable filters. PO
Resp. 29–30, 37. As with the McFarland challenge, Intellectual Ventures
repeats its previous argument that these claims require two separate and
distinct filters, both of which are reconfigurable. Id. We find this argument
equally unpersuasive here.
Google presents evidence that the dependent limitations of claims 3
and 23 are satisfied by paragraphs 8, 181, 247, and claim 13 of Pierzga.
Pet. 25, 29. Google supports this position with testimony from
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Dr. Madisetti. Id. Apart from its “two filters” argument, Intellectual
Ventures does not dispute Google’s evidence.
We find that Google has established, by a preponderance of the
evidence, that Pierzga anticipates claims 3 and 23.
VI. OBVIOUSNESS OVER COMBINATIONS
BASED ON PIERZGA
A. Pierzga and HSDPA
1. Claim 7
As with the McFarland challenge to claim 7, Google relies on HSDPA
to disclose the UMTS limitation of claim 7 in the Pierzga challenge. Pet. 27.
Google relies on supporting declaration testimony from Dr. Madisetti. Id.
We have previously found, and Intellectual Ventures does not dispute, that
HSDPA discloses the limitation of dependent claim 7. PO Resp. 30–31.
Due to the similarities between McFarland and Pierzga, the evidence
and issues as to whether HSDPA is combinable with Pierzga to achieve the
claimed invention are fundamentally no different from that of the McFarland
challenge that we have previously discussed. A person of ordinary skill in
the art would have found it obvious to combine HSDPA with Pierzga for
essentially the same reasons discussed above with respect to the McFarland
challenge. We conclude that Google has established, by a preponderance of
the evidence, that claim 7 is unpatentable as obvious over the combination of
Pierzga and HSDPA.
2. Claim 27
Claim 27 depends from claim 26 and has the same dependent
limitation as that of claim 7. For essentially the same reasons, we conclude
that Google has established, by a preponderance of the evidence, that
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claim 27 is unpatentable as obvious over the combination of Pierzga and
HSDPA.
B. Pierzga and Shahar – Claim 8
As with the McFarland challenge to claim 8, Google relies on Shahar
to disclose the computer-readable medium limitation of claim 8 in the
Pierzga challenge. Pet. 27. Google relies on supporting declaration
testimony from Dr. Madisetti. Id. Dr. Madisetti testifies that Pierzga
teaches that many of the components of the receiver in the communication
system are programmed. Ex. 1011 ¶ 97. We found previously that Shahar
discloses a computer readable medium that contains executable instructions
as recited in claim 8.
Due to the similarities between McFarland and Pierzga, the evidence
and issues as to whether Shahar is combinable with Pierzga to achieve the
claimed invention are fundamentally no different from that of the McFarland
challenge that we have previously discussed. A person of ordinary skill in
the art would have found it obvious to combine Shahar with Pierzga for
essentially the same reasons discussed above with respect to the McFarland
challenge.
We find and conclude that Google has established, by a
preponderance of the evidence, that claim 8 is unpatentable as obvious over
Pierzga and Shahar.
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VII. ORDER
In view of the foregoing, it is ORDERED as follows:
1. Claims 1–4, 6, 21–24, and 26 have been shown to be unpatentable as
obvious over McFarland;
2. Claims 1–6, 8, and 21–26 have been shown to be unpatentable as
anticipated by Pierzga;
3. Claims 5 and 25 have been shown to be unpatentable as obvious over
McFarland and Shahar;
4. Claims 7 and 27 have been shown to be unpatentable as obvious over:
a. McFarland and HSDPA; and also over
b. Pierzga and HSDPA;
5. Claim 8 has been shown to be unpatentable as obvious over:
a. McFarland and Shahar; and also over
b. Pierzga and Shahar.
This is a final written decision under 35 U.S.C. § 318(a). 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:

John Alemanni
Theodore G. Brown, III
Akarsh P. Belagodu
KILPATRICK TOWNSEND & STOCKTON LLP
jalemmani@kilpatricktownsend.com
tbrown@kilpatricktownsend.com
abelagodu@kilpatricktownsend.com

For PATENT OWNER:

Herbert D. Hart III
Andrew 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