UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`QUALCOMM INC.,
`Petitioner
`
`v.
`BANDSPEED, INC.,
`Patent Owner
`___________________________________
`IPR2015-003141
`U.S. Patent No. 7,477,624
`
`Title: Approach for Managing the Use of Communications Channels Based on
`Performance
`
`___________________________________
`DECLARATION OF DR. JOSE LUIS MELENDEZ IN SUPPORT OF
`PATENT OWNER RESPONSE RELATED TO INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,477,624
`___________________________________
`
`
`
`
`1 IPR2015-01577 has been joined with IPR2015-00314
`
`Bandspeed, Inc.
`EXH. 2001
`Patent Owner – Bandspeed, Inc.
`Petitioner – Qualcomm Inc.
`IPR2015-00314
`
`

`
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`INTRODUCTION .................................................................................................................. 1
`INTRODUCTION ................................................................................................................ .. 1
`
`SUMMARY OF OPINIONS ................................................................................................... 2
`SUMMARY OF OPINIONS ................................................................................................. .. 2
`
`III.
`III.
`
`QUALIFICATIONS AND EXPERIENCE ............................................................................... 5
`QUALIFICATIONS AND EXPERIENCE ............................................................................. .. 5
`
`A.
`A.
`
`B.
`B.
`
`C.
`C.
`
`EDUCATION AND WORK EXPERIENCE ................................................................ 5
`EDUCATION AND WORK EXPERIENCE.............................................................. .. 5
`
`COMPENSATION STATEMENT .............................................................................. 7
`COMPENSATION STATEMENT ............................................................................ ..7
`
`INFORMATION CONSIDERED IN FORMING OPINION ......................................... 8
`INFORMATION CONSIDERED IN FORMING OPINION ....................................... .. 8
`
`IV.
`IV.
`
`STATEMENT OF LEGAL AND CLAIM CONSTRUCTION PRINCIPLES ............................. 9
`STATEIVIENT OF LEGAL AND CLAIM CONSTRUCTION PRINCIPLES ........................... ..9
`
`A.
`A.
`
`B.
`B.
`
`C.
`C.
`
`CLAIM CONSTRUCTION LAW ............................................................................... 9
`CLAIM CONSTRUCTION LAW ............................................................................. .. 9
`
`ANTICIPATION........................................................................................................ 9
`ANTICIPATION...................................................................................................... .. 9
`
`OBVIOUSNESS ...................................................................................................... 10
`OBVIOUSNESS .................................................................................................... .. 10
`
`V.
`
`CLAIM CONSTRUCTIONS................................................................................................. 10
`CLAIM CONSTRUCTIONS............................................................................................... .. 10
`
`A. “HOPPING SEQUENCE” ................................................................................................ 10
`A. “HOPPING SEQUENCE” .............................................................................................. .. 10
`
`B. “VOTE TO USE THE PARTICULAR COMMUNICATIONS CHANNEL” ....................... 11
`B. “VOTE TO USE THE PARTICULAR COMMUNICATIONS CHANNEL” ..................... .. 11
`
`VI.
`VI.
`
`PERSON OF ORDINARY SKILL IN THE ART ................................................................... 13
`PERSON OF ORDINARY SKILL IN THE ART ................................................................. .. 13
`
`VII. OVERVIEW OF THE ‘624 PATENT .................................................................................... 14
`VII.
`OVERVIEW OF THE ‘624 PATENT.................................................................................. .. 14
`
`VIII. PATENTABILITY OF CLAIMS 1-4, 13-16, AND 25-29 OF THE ‘624 PATENT OVER
`VIII.
`PATENTABILITY OF CLAIMS 1-4, 13-16, AND 25-29 OF THE ‘624 PATENT OVER
`GERTEN, CUFFARO, GENDEL, HAARTSEN, AND SAGE ................................................ 14
`GERTEN, CUFFARO, GENDEL, HAARTSEN, AND SAGE .............................................. .. 14
`
`A.
`A.
`
`THE “TRANSCEIVER IS CONFIGURED TO TRANSMIT TO AND RECEIVE FROM A
`THE"IRAN$EIVERIS CONFIGURFDT’OTRANSMITTOANDR]£EIVEFROMA
`THIRD COMMUNICATIONS DEVICE OVER THE DEFAULT SET OF TWO OR MORE
`THIRD COMMUNICATIONS DEVICE OVERTHEDEFAULT SETOFTWOORMORE
`COMMUNICATIONS CHANNELS WHILE TRANSMITTING TO AND RECEIVING
`COMMUNICATIONSCHANNELSWHILETRANSMIITINGTO ANDRIEEIVING
`FROM THE SECOND COMMUNICATIONS DEVICE OVER THE FIRST SET OF TWO OR
`FROMTHE SFLDNDCOMMUNICATIONS DEVICE OVERTHEFJRST SET OFIWOOR
`MORE COMMUNICATIONS CHANNELS AND WHILE TRANSMITTING TO AND
`MORE COMMUNICATIONS CHANNELS ANDWHIIETRANSMITTINGTOAND
`RECEIVING FROM THE SECOND COMMUNICATIONS DEVICE OVER THE SECOND
`RFCEIVINGFROMTHE SKOND COMMUNICATIONSDEVICEOVERTI-IESECOND
`SET OF TWO OR MORE COMMUNICATIONS CHANNELS” LIMITATION IN RESPECT
`SET OFTWO ORMORE COMMUNICATIONS CHANNELS ’ LIMITATION INREPIET
`TO GERTEN .............................................................................................................. 14
`TOGERTFN ............................................................................................................ .. 14
`
`
`
`i
`
`

`
`
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`CUFFARO – NO MOTIVATION TO COMBINE ................................................................. 22
`CUTFARO —NOMOI1VA'IIONTOCOMBINE ............................................................... .. 22
`
`THE “PERFORMANCE DATA OVER ONE OF THE CHANNELS” LIMITATION IN
`'TI-IE “PERFORMANCEDATA OVER ONE OFTI-IECI-IANNEIS’ ’LIMITA'IIONIN
`RESPECT TO GERTEN AND CUFFARO.......................................................................... 24
`RE93FCTTOGER'TE\IANDC1JFFARO........................................................................ .. 24
`
`THE “VOTING” LIMITATION IN RESPECT TO GERTEN AND CUFFARO ............................. 27
`TI-lE‘VOIING’LIlVlI'TA'IIONlNRFS3]ET'IO GERTEN AND CIJFFARO ........................... .. 27
`
`THE “THE TRANSCEIVER IS CONFIGURED TO TRANSMIT TO AND RECEIVE FROM
`'TI-lE"TI-lE'IRAN$]E*IVERIS CONFIGURED TO'IRANSMI'T'TO ANDRKHVEFROM
`A THIRD COMMUNICATIONS DEVICE OVER THE DEFAULT SET OF TWO OR MORE
`A THIRD COMMUNICATIONS DEVICE OVERTHEDEFAULTSET OFTWOORMORE
`COMMUNICATIONS CHANNELS WHILE TRANSMITTING TO AND RECEIVING
`COMMUNICATIONSCHANNEISWI-IILETRANSMITIINGTOAND
`FROM THE SECOND COMMUNICATIONS DEVICE OVER THE FIRST SET OF TWO OR
`FROMTI-IE SFLDNDCOMMUNICATIONS DEVICE OVERTHEFIRST SET OFTWO OR
`MORE COMMUNICATIONS CHANNELS AND WHILE TRANSMITTING TO AND
`MORE COMMUNICATIONS CHANNELS ANDWHIIETRANSMITIINGTOAND
`RECEIVING FROM THE SECOND COMMUNICATIONS DEVICE OVER THE SECOND
`RFCEIVINGPROMTHE SEOND COMMUNICA'IIONSDEVICEOVERTI-IESECOND
`SET OF TWO OR MORE COMMUNICATIONS CHANNELS” LIMITATIONS IN RESPECT
`SET OFTWO ORMORE COMMUNICATIONS CHANNELS ’ LIMITATIONS INRIfl3]£T
`TO GENDEL AND HAARTSEN ..................................................................................... 31
`TOGENDELANDHAARISEN ................................................................................... ..31
`
`THE “SELECTING, BASED UPON PERFORMANCE OF THE PLURALITY OF
`TI-lE‘SELFCIING,BASEDUPONPERFORMANCE OFTI-IEPIIJRALITYOF
`COMMUNICATIONS CHANNELS AT A SECOND TIME THAT IS LATER THAN THE
`COMMUNICATIONSCHANNEISATASIKIONDTIME 'TI-IA'TIS LATERTHANTHE
`FIRST TIME, A SECOND SET OF TWO OR MORE COMMUNICATIONS CHANNELS
`FIRST 'IIME,A SFLDND SET OFTWO ORMORECOMMUNICATIONS CHANNELS
`FROM THE PLURALITY OF COMMUNICATIONS CHANNELS” LIMITATION IN
`FROM'TI-IEPLURALITYOFCOMMUNICATIONS CI-IANNEIS’ ’LIMITA'IION IN
`RESPECT TO GENDEL AND HAARTSEN ....................................................................... 34
`RETFCTTO GENDELANDHAARTSEN ..................................................................... .. 34
`
`G.
`
`SAGE – NO MOTIVATION TO COMBINE ....................................................................... 36
`SAGE—NOMO'I1VA'IION'IO COMBINE ..................................................................... .. 36
`
`
`
`ii
`
`
`
`
`
`

`
`I.
`
`INTRODUCTION
`1. My name is Dr. Jose Luis Melendez. I am an independent expert in
`
`the fields of imaging and wireless technologies, and I reside in Lakeway, Texas, a
`
`community in close proximity to the Texas capital city of Austin. I have been
`
`asked to and have conducted a review of US Patent 6,760,319 (“Gerten”),
`
`US Patent
`
`6,418,317
`
`(“Cuffaro”), US
`
`Patent
`
`6,115,407
`
`(“Gendel”),
`
`US Patent 7,280,580 (“Haartsen”), and US Patent 5,781,582 (“Sage”) to determine
`
`whether or not these documents are invalidating prior art to Patent Owner’s United
`
`States Patent No. 7,477,624 (“’624 Patent”). Additionally, I have reviewed the
`
`IPR2015-01577 petition
`
`submitted by Qualcomm
`
`Inc.
`
`(“Petitioner” or
`
`“Qualcomm”) along with its exhibits, including the report of Dr. Zhi Ding (“Ding
`
`Declaration”).2 In this report, I will address only certain aspects of the petition,
`
`patent claims, and Ding Declaration that I believe will be of particular benefit to
`
`the Patent Trial and Appeal Board (“PTAB” or “Board”) in evaluating the petition,
`
`in light of the record and totality of stakeholder arguments, and in coming to its
`
`final decision regarding the ‘624 Patent in the context of the subject petition.
`
`2.
`
`During the prosecution of the ‘624 Patent and prior to its acceptance
`
`and publication, 49 references were cited during prosecution as prior art relevant to
`
`
`2 I have also reviewed the IPR2015-00314 petition to which IPR2015-01577 has
`been joined and the accompanying exhibits to IPR2015-00314.
`1
`
`

`
`
`
`the allowed invention comprising a combination of patents, patent applications and
`
`other publications. Many of these references related to systems that generally
`
`serve to address interference in communications systems, including frequency
`
`hopping communications systems.
`
`3. My declaration highlights certain aspects of how the ‘624 Patent
`
`invention differs from the references cited in the Petition in view of the arguments
`
`presented in the IPR2015-00314/01577 petition, the Ding Declaration, and in light
`
`of the ‘624 Patent itself. My declaration provides additional support for the
`
`arguments put forward in the Bandspeed Patent Owner Response to which it is
`
`appended.
`
`4.
`
`This declaration and rebuttal is based on the information presently
`
`available to me. Should additional information become available, I reserve the
`
`right to supplement my opinion based upon information that may subsequently
`
`become available which may include a review of information that may be
`
`produced, or from testimony or depositions that are subsequently taken.
`
`
`II.
`
`SUMMARY OF OPINIONS
`5.
`Gerten fails to disclose the Claim 1 (as well as Claims 2-4 which
`
`depend on Claim 1), 16, and 28 limitations of the “transceiver is configured to
`
`transmit to and receive from a third communications device over the default set of
`
`
`
`2
`
`

`
`
`
`two or more communications channels while transmitting to and receiving from the
`
`second communications device over the first set of two or more communications
`
`channels and while transmitting to and receiving from the second communications
`
`device over the second set of two or more communications channels,” and such
`
`would also not have been obvious to a person of ordinary skill in the art
`
`(“POSITA”) at the time of the invention.
`
`6.
`
`Gerten and Cuffaro fail to disclose the Claim 2, 14, and 26 limitations,
`
`“the performance of the plurality of communications channels is based on channel
`
`performance data that is transmitted over one or more of the plurality of
`
`communications channels based on the hopping sequence according to the
`
`frequency hopping protocol,” and such would also not have been obvious to a
`
`POSITA at the time of the invention.
`
`7.
`
`Additionally, Gerten and Cuffaro fail to disclose the Claims 3, 15, and
`
`27 limitations, “the channel selection criteria specifies that for a particular
`
`communications channel to be selected, the particular communications channel
`
`receives a specified number of votes to use the particular communications channel
`
`from among a plurality of votes,” and such would also not have been obvious to a
`
`POSITA at the time of the invention.
`
`8.
`
`Gendel and Haartsen fail to disclose the Claim 1 (as well as Claims 2
`
`and 4 which depend on Claim 1), 16, and 28 limitations of, “the transceiver is
`
`
`
`3
`
`

`
`
`
`configured to transmit to and receive from a third communications device over the
`
`default set of two or more communications channels while transmitting to and
`
`receiving from the second communications device over the first set of two or more
`
`communications channels and while transmitting to and receiving from the second
`
`communications device over the second set of two or more communications
`
`channels,” and such would also not have been obvious to a POSITA at the time of
`
`the invention.
`
`9.
`
`Additionally, Gendel and Haartsen fail to disclose the Claim 1 (as
`
`well as Claims 2 and 4 which depend on Claim 1), 13, 16, 25, 28 and 29 limitations
`
`of, “selecting, based upon performance of the plurality of communications
`
`channels at a second time that is later than the first time, a second set of two or
`
`more communications channels from the plurality of communications channels,”
`
`and such would also not have been obvious to a POSITA at the time of the
`
`invention.
`
`
`
`10. A POSITA would not have been motivated to combine Cuffaro with
`
`Gerten, nor Sage with Gendel and Haartsen, as both Cuffaro and Sage concern
`
`licensed cellular systems utilitizing differing uplink and downlink channels
`
`resulting in completely different interference issues and characteristics.
`
`
`
`4
`
`

`
`
`
`
`
`11. As detailed herein, the references do not disclose fundamental
`
`limitations of the subject ‘624 Patent claims, nor would such limitations have been
`
`obvious to a POSITA in view of the subject prior art and stated combinations.
`
`
`III. QUALIFICATIONS AND EXPERIENCE
`A. EDUCATION AND WORK EXPERIENCE
`12.
`I hold a Doctor of Philosophy in Electrical Engineering from Stanford
`
`University (awarded January 6, 1994) with a Grade Point Average of 4.0/4.0. I
`
`have a Bachelor of Science in Electrical Engineering from the Massachusetts
`
`Institute of Technology (awarded June 4, 1990) and graduated with a Grade Point
`
`Average of 5.0/5.0. I also obtained a Master of Science in Electrical Engineering
`
`and Computer Science from the Massachusetts Institute of Technology (awarded
`
`February 20, 1991) with a Grade Point Average of 4.8/5.0.
`
`13. My doctoral thesis involved the definition, solution and validation of a
`
`stiffly coupled differential equation model for the formation of high performance
`
`imaging devices. In performance of my doctoral thesis I developed novel
`
`algorithms for the solution of the complex equations and implemented those
`
`algorithms in computer code.
`
`14.
`
`I am co-inventor of patented technology related to the formation and
`
`maintenance of high data rate wireless data links. Devices exhibiting 100 Mb/sec
`
`data rates utilizing
`
`the high data rate optical wireless
`
`technology were
`
`
`
`5
`
`

`
`
`
`demonstrated publicly in 2001, and included real time, live transmission of a
`
`feature length film.
`
`15. While at Texas Instruments, I managed the wireless infrastructure
`
`business that designed, tested, and marketed semiconductor components for use
`
`within the radio frequency signal chain of high performance radios used in
`
`infrastructure applications such as cellular base stations. The business group I
`
`managed designed, developed and sold some of the very first radio components
`
`tested in emerging (at the time) generations of cellular systems first capable of
`
`transmitting high speed, high quality
`
`images as data by way of digital
`
`transmissions.
`
`16.
`
`In 2002, I founded Commoca, Inc. (“Commoca”). Commoca
`
`developed hardware, embedded software (or “firmware”), and network services for
`
`the deployment of converged voice and data services over wired and wireless
`
`communications networks. Commoca devices utilized IEEE 802.11 (“WiFi” or
`
`“Wi-Fi”) technology to connect touch screen telephones to access points and were
`
`believed to have been amongst the first of such devices to do so. Converged
`
`communications devices provided by Commoca were field tested by BellSouth
`
`Corporation at consumer locations in Florida and Georgia in 2006.
`
`17.
`
`In 2008, while working as a research consultant for the University of
`
`Texas Southwestern Medical in Dallas (UTSW), I co-invented a novel multi-
`
`
`
`6
`
`

`
`
`
`wavelength imaging system (US 8,838,211) and worked to develop and produce a
`
`product through a university spinoff company which I led. In early 2013,
`
`following successful clinical studies, the resulting system was cleared by the US
`
`Food & Drug Administration for use in the United States. The system captured
`
`and analyzed high resolution, uncompressed images and subsequently created
`
`pulsatility maps representative of the underlying physiology for use in evaluating
`
`deep tissue wounds. Resulting images were compressed and transmitted over a
`
`variety of communications networks.
`
`18. As highlighted above, my professional experience and knowledge
`
`areas include wireless communications devices and systems as are relevant to the
`
`subject matter of this report. Also as detailed in my CV in Exhibit A attached, I
`
`am an inventor of subject matter claimed in 28 U.S. patents. Additional
`
`information concerning my background, qualifications, publications, conferences,
`
`honors, and awards are described in my CV.
`
`B. COMPENSATION STATEMENT
`I am paid for my work concerning the subject inter partes review
`19.
`
`(“IPR”) at a rate of $450 per hour. My compensation is not dependent upon the
`
`outcome of the subject IPR. I may also be reimbursed for travel and other
`
`expenses that I incur in the course of my work on the subject IPR. I have no
`
`personal interest in the outcome of the subject IPR. I have been deposed
`
`
`
`7
`
`

`
`
`
`previously as an expert involving infringement and validity of wireless patents.
`
`Prior to this writing, I have never testified at a hearing or trial.
`
`20. The opinions I express in this report are based on my own personal
`
`knowledge and professional judgment in view of the evidence of record and
`
`documents submitted in this proceeding. If called as a witness during the
`
`proceedings in the subject IPR, I am prepared to testify competently about my
`
`opinions.
`
`INFORMATION CONSIDERED IN FORMING OPINION
`C.
`21. The documents upon which I rely for the opinions expressed in this
`
`declaration are documents identified in this declaration, including the subject
`
`Petition for inter partes review of U.S. Pat. No. 7,477,624 (including exhibits), the
`
`Decision of Institution for the subject IPR, the ‘624 Patent, the ‘624 Patent
`
`prosecution history (or at least parts thereof), Gerten, Cuffaro, Gendel, Haartsen,
`
`Sage, the Ding Declaration and Patent Owner Bandspeed, Inc.’s Patent Owner
`
`Response. I have also relied on my own experiences and expert knowledge in the
`
`relevant technologies and systems that were in use (or were not in use) at the time
`
`of the invention.
`
`
`
`8
`
`

`
`
`
`
`IV. STATEMENT OF LEGAL AND CLAIM CONSTRUCTION
`PRINCIPLES
`A. CLAIM CONSTRUCTION LAW
`I understand that a claim in an inter partes review proceeding is
`22.
`
`
`
`interpreted according to its broadest reasonable construction in light of the
`
`specification. 37 C.F.R. §42.100(b). Claim terms are to be given their ordinary and
`
`customary meaning as would be understood by one of ordinary skill in the art in
`
`the context of the entire patent disclosure.
`
`
`
`23.
`
`I understand that the inventor may rebut that presumption by
`
`providing a definition of the term in the specification with reasonable clarity,
`
`deliberateness, and precision; and that a claim term is to be interpreted using its
`
`ordinary and customary meaning to a person of ordinary skill in the art in the
`
`absence of a specialized definition.
`
`
`
`24. As such, I further understand that the customary meaning applies
`
`unless the specification reveals a special definition given to the claim term by the
`
`patentee, in which case the inventor’s lexicography governs.
`
`B. ANTICIPATION
`25.
`I understand that for a patent claim to be valid, it must be novel under
`
`
`
`35 U.S.C. §102. I also understand that the version of 35 U.S.C. §102 in effect
`
`prior to the American Invents Act is applicable for this IPR. I understand that if
`
`
`
`9
`
`

`
`
`
`each and every limitation of a claim is disclosed in a single prior art reference then
`
`the claimed invention is anticipated. I further understand that it is the Petitioner’s
`
`burden to show that each and every element is described or embodied in the single
`
`prior art reference in order to establish anticipation. I also understand that a prior
`
`art reference must be enabling in order to anticipate a claim.
`
`C. OBVIOUSNESS
`26.
`I understand that for a patent claim to be valid it must be non-obvious
`
`
`
`under 35 U.S.C. §103. I further understand that where any single prior art
`
`reference discloses less than each and every limitation of a patent claim it is being
`
`used against, that patent claim is only invalid under 35 U.S.C. §103 if the
`
`differences between the claimed subject matter and that single prior art reference
`
`are such that the claimed subject matter as a whole would have been obvious at the
`
`time that the invention was made to a person having ordinary skill in the relevant
`
`art. Typically obviousness is shown using a combination of two or more prior art
`
`references that disclose all the limitations of the claimed invention.
`
`
`V. CLAIM CONSTRUCTIONS
`A. “HOPPING SEQUENCE”
`I understand that in its Decision to institute inter partes review
`27.
`
`
`
`concerning Case IPR2015-00314, the PTAB adopted the construction for “hopping
`
`
`
`10
`
`

`
`
`
`sequence” to be, “the order in which the communications network hops among the
`
`set of frequencies.” [Institution Decision at 7]. My opinions as set forth in this
`
`report are consistent with the PTAB’s ascribed meaning of the subject term, and
`
`with the ‘624 Patent which states, “The order in which the communications
`
`network hops among the set of frequencies is known as the hopping sequence.”
`
`[‘624 Patent at 2:11-13].
`
`B. “VOTE TO USE THE PARTICULAR COMMUNICATIONS
`CHANNEL”
`I understand that in its Decision to institute inter partes review
` 28.
`
`concerning Case IPR2015-00314, the PTAB adopted the construction for “vote to
`
`use the particular communications channel” to be, “expressions of preference for
`
`using
`
`the particular communications channel.” [Institution Decision at 8].
`
`However, I believe that such a construction is unreasonably broad in light of the
`
`‘624 specification, where the “votes” are clearly limited to originating from
`
`participant devices involved in the communications and are intended as such to
`
`determine the best channels to use amongst the expressions of preference of the
`
`very participants that are to use the channels. The word “vote” is used in the
`
`specification 16 times [‘624 Patent at Table 2 and 16:65-67 – 17:1-35]. Table 2 of
`
`the ‘624 Patent “provides an illustration of a ‘referendum’ approach that considers
`
`the channel performance determined by a master and seven slaves.” [‘624 Patent at
`
`16:47-49, underlines for emphasis]. Furthermore the ‘624 specification states in
`
`
`11
`
`

`
`
`
`reference to the Table 2 example, “each participant has one “vote” on whether to
`
`use the channel or not.” [‘624 Patent at 16:65-66]. Similarly, the entirety of the
`
`discussion within the ‘624 Patent is regarding votes of participants. “While Table
`
`2 indicates that each participant has an equally weighted vote, other referendum
`
`approaches may be used. For example, the vote of particular participants, such as
`
`the master or a specified slave or slaves, may be given a higher weight. As another
`
`example, particular participants may be able to “veto” the result, meaning that
`
`those particular participants must vote to use the channel in order for it to receive a
`
`passing score.” [‘624 Patent at 17:17-24]. The ‘624 Patent does not disclose or
`
`suggest any scenario where a non-participant casts a vote for consideration, and I
`
`think it would be unreasonable to attribute a voting process involving non-
`
`participants to the ‘624 Patent. As such, I believe that the preliminary construction
`
`of the Institution Decision is unreasonably broad, and respectfully suggest that the
`
`PTAB consider modifying its preliminary construction of “votes to use the
`
`particular communications channel”
`
`to be “expressions of preference of
`
`participants for using
`
`the particular communications channels.” [underline
`
`highlighting change].
`
`
`
`12
`
`

`
`
`
`
`VI. PERSON OF ORDINARY SKILL IN THE ART
`29.
`It is my understanding that the claims and specification of a patent
`
`must be read and construed as a person of ordinary skill in the art, at the time of the
`
`priority date of the claims, would understand them.
`
`30.
`
`I further understand that the following factors may be considered in
`
`determining the level of ordinary skill in the art: (a) the types of problems
`
`encountered by those working in the field and prior art solutions thereto; (b) the
`
`sophistication of the technology in question, and the rapidity with which
`
`innovations occur in the field; (c) the educational level of active workers in the
`
`field; and (d) the educational level of the inventor.
`
`31. The technical art associated with the ‘624 Patent relates to the field of
`
`processing of coded electronic
`
`instructions
`
`to establish radio frequency
`
`communication between one or more electronic devices. It is my belief that a
`
`person of ordinary skill in the relevant art of the ‘624 Patent in the relevant time
`
`period would have had a Bachelor of Science degree in Electrical or Computer
`
`Engineering or Computer Science and/or equivalent industrial work experience. A
`
`person of ordinary skill in the art would also have had access to relevant technical
`
`publications, text books, and online references.
`
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`VII. OVERVIEW OF THE ‘624 PATENT
`32. The ‘624 Patent generally discloses devices for use in a frequency
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`hopping communication system that enable participants in a corresponding system
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`to achieve more effective communication performance in an environment having
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`radio frequency interference from other sources. For example, the ‘624 Patent
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`discloses and claims a device capable of communicating with a particular device
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`using a particular set of channels while communicating with another device using a
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`default set of channels, serving to improve performance of communications with
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`the particular device.
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`VIII. PATENTABILITY OF CLAIMS 1-4, 13-16, AND 25-29 OF THE ‘624
`PATENT OVER GERTEN, CUFFARO, GENDEL, HAARTSEN, AND
`SAGE
`A. THE “TRANSCEIVER IS CONFIGURED TO TRANSMIT TO AND
`RECEIVE FROM A THIRD COMMUNICATIONS DEVICE OVER
`THE DEFAULT SET OF TWO OR MORE COMMUNICATIONS
`CHANNELS WHILE TRANSMITTING TO AND RECEIVING FROM
`THE SECOND COMMUNICATIONS DEVICE OVER THE FIRST SET
`OF TWO OR MORE COMMUNICATIONS CHANNELS AND WHILE
`TRANSMITTING TO AND RECEIVING FROM THE SECOND
`COMMUNICATIONS DEVICE OVER THE SECOND SET OF TWO
`OR MORE COMMUNICATIONS CHANNELS” LIMITATION IN
`RESPECT TO GERTEN
`33. Gerten fails to disclose the Claim 1 (as well as Claims 2-4 which
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`depend on Claim 1), Claim 16, and Claim 28 limitations of the “transceiver is
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`configured to transmit to and receive from a third communications device over the
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`default set of two or more communications channels while transmitting to and
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`receiving from the second communications device over the first set of two or more
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`communications channels and while transmitting to and receiving from the second
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`communications device over the second set of two or more communications
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`channels,” and such would also not have been obvious to a POSITA at the time of
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`the invention. [bold and underlines for emphasis]. Furthermore, the only selection
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`kernels (Gerten Fig. 6 and Fig. 7) disclosed for the transceiver (Gerten Fig. 2) in
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`Gerten are expressly not capable of providing the subject claimed limitations of the
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`‘624 patent as is discussed below, and so would serve only to teach away from the
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`claim.
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`34. Gerten’s invention is specific to eliminating channels in a piconet, and
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`not to eliminating the use of certain channels by certain participants within a
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`piconet as Petitioner states in hindsight, “The present invention provides for
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`elimination of M channels with high interference of N total channels being
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`transmitted in a frequency hopping scheme in a wireless communication system,
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`such as a picone[n]t.” [Gerten at 4:18-21]. Gerten does not disclose any frequency
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`synthesizer selection kernel capable of maintaining a master synchronized with
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`more than one slave in a given piconet where the master and a slave are using a
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`default set of channels while the same master and a different slave are using
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`15
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`different subsets of channels (having eliminated channels), changing subsets of
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`channels over time. As stated by Gerten, “A master unit is a device in a piconet
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`whose clock and hopping sequence are employed to synchronize other devices in
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`the piconet – devices in a piconet that are not the master are typically slaves.”
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`[Gerten at 3:22-26].
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` The only selection kernel disclosed in Gerten is
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`“reconfigured” as indicated in 340 of Figure 5 of Gerten. The reconfiguration as
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`disclosed by Gerten is best seen by comparing Figure 7 to Figure 6 of Gerten
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`reproduced below. Notice that the inputs to the selection kernels and the elements
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`of the selection kernel are all identical, with the exception of the use of “mod 75”
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`in the reconfigured selection kernel of Figure 7, instead of the “mod 79” of the
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`replaced selection kernel of Figure 6. This means that when a particular channel is
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`available for use by all devices, the set of select devices intended to communicate
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`would not be aligned to a common hopping sequence – and hence would not be
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`configured to communicate to each other.
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`Figure 1: Fig. 6 and Fig. 7 from Gerten
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`35.
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`In contrast to Gerten, the ‘624 Patent discloses a novel selection
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`kernel capable of maintaining synchronization between the same master and
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`different slaves within the same piconet that are using differing subsets of channels
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`while a particular slave is using the entire set. Figure 5B of the ‘624 Patent is
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`reproduced following this paragraph below. The ‘624 Patent specification states,
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`“FIG. 5B is a block diagram that depicts the replacement of bad channels with
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`good channels in a default set of channels in a channel register, according to an
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`embodiment of the invention. FIG. 5B depicts many of the same features as
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`described above with respect to FIG. 5A, except for the differences discussed
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`herein. The major difference between the example of FIG. 5A and FIG. 5B is that
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`in FIG. 5B, whenever selection kernel 510 addresses a channel classified as bad in
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`register with default channels 520, the bad channel is replaced with a good channel
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`that is randomly selected from table of good channels 570. Thus, only good
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`channels are selected to form the hopping sequence.” [‘624 Patent at 20:21-32,
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`underlines for emphasis]. Because the frequency hopping protocol disclosed in the
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`‘624 Patent maintains the same order and timing of channels for all good channels
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`by first addressing the default set, the ‘624 Patent piconet is able to provide for a
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`piconet where the same master can maintain synchronization to slave devices
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`18
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`having differing subsets of channels while maintaining synchronization and
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`communication with a slave using the default set. Restated, the ‘624 Patent
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`discloses
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`capable
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`a de