UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`
`QUALCOMM INC.,
`
`Petitioner
`
`v.
`
`BANDSPEED, INC.,
`
`Patent Owner
`
`___________________________________
`Case: IPR2015-003141
`U.S. Patent No. 7,477,624
`Title: APPROACH FOR MANAGING THE USE OF COMMUNICATIONS
`CHANNELS BASED ON PERFORMANCE
`___________________________________
`
`PATENT OWNER BANDSPEED, INC.’S RESPONSE
`UNDER 37 C.F.R. §42.120
`___________________________________
`
`
`
`
`
`
`1 IPR2015-01577 has been joined with IPR2015-00314
`
`

`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`
` I. STATEMENT OF MATERIAL FACTS IN DISPUTE............................... 1
`
`STATE1\/IENT OF MATERIAL FACTS IN DISPUTE ............................ .. 1
`
`I.
`
`II.
`
`II.
`
`INTRODUCTION .................................................................................... 1
`
`INTRODUCTION .................................................................................. .. 1
`
`A.
`A.
`
`B.
`B.
`
`C.
`C.
`
`D.
`D.
`
`E.
`E.
`
`STATEMENT OF RELIEF REQUESTED ..................................... 1
`STATE1\/IENT OF RELIEF REQUESTED ................................... .. 1
`
`OVERVIEW OF THE ‘624 PATENT ............................................. 2
`
`OVERVIEW OF THE ‘624 PATENT ........................................... .. 2
`
`LEVEL OF ORDINARY SKILL IN THE ART ............................ .. 4
`
`LEVEL OF ORDINARY SKILL IN THE ART .............................. 4
`
`CLAIM CONSTRUCTION............................................................ 5
`
`CLAIM CONSTRUCTION.......................................................... .. 5
`
`SUMMARY OF PATENT OWNER’S ARGUMENTS ................... 9
`
`SUMMARY OF PATENT OWNER’S ARGU1\/IENTS ................. .. 9
`
`III.
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S GROUNDS OF
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S GROUNDS OF
`REJECTION................................................................................................................... 13
`
`REJECTION................................................................................................................. .. 13
`
`A.
`A.
`
`GROUND 1-GERTEN DOES NOT ANT ICIPATE CLAIMS
`
`GROUND 1-GERTEN DOES NOT ANTICIPATE CLAIMS
`1, 4, 16 AND 28................................................................................................ 13
`1, 4, 16 AND 28.............................................................................................. .. 13
`
`1.
`1.
`
`2.
`2.
`
`OVERVIEW OF GERTEN................................................ .. 13
`
`OVERVIEW OF GERTEN..................................................13
`GERTEN DOES NOT ANTICIPATE CLAIM 1...................14
`
`GERTEN DOES NOT ANTICIPATE CLAIM 1 ................. .. 14
`
`3.
`3.
`
`4.
`4.
`
`GERTEN DOES NOT ANTICIPATE CLAIM 4 ................. .. 19
`
`GERTEN DOES NOT ANTICIPATE CLAIIVIS 16
`
`AND 28 ............................................................................ .. 19
`
`GERTEN DOES NOT ANTICIPATE CLAIM 4...................19
`GERTEN DOES NOT ANTICIPATE CLAIMS 16
`AND 28 ..............................................................................19
`GROUND 2-GERTEN AND CUFFARO DO NOT RENDER
`i
`i
`
`GROUND 2-GERTEN AND CUFFARO DO NOT RENDER
`
`B.
`B.
`
`
`
`
`
`

`
`
`
`CLAIMS 2-3, 14-15 AND 26-27 OBVIOUS..................................19
`CLAIMS 2-3, 14-15 AND 26-27 OBVIOUS ................................ ..19
`OVERVIEW OF CUFFARO ...............................................19
`
`OVERVIEW OF CUFFARO ............................................. ..19
`
`1.
`1.
`
`2.
`2.
`
`3.
`3.
`
`GERTEN AND CUFFARO DO NOT RENDER CLAIIVIS
`
`GERTEN AND CUFFARO DO NOT RENDER CLAIMS
`2, 14 AND 26 OBVIOUS ....................................................20
`2, 14 AND 26 OBVIOUS .................................................. ..20
`
`GERTEN AND CUFFARO DO NOT RENDER CLAIIVIS
`
`GERTEN AND CUFFARO DO NOT RENDER CLAIMS
`3, 15 AND 27 OBVIOUS ....................................................23
`3, 15 AND 27 OBVIOUS .................................................. ..23
`
`C.
`
`GROUND 3-GENDEL AND HAARTSEN DO NOT RENDER
`
`GROUND 3-GENDEL AND HAARTSEN DO NOT RENDER
`CLAIMS 1, 4, 13, 16, 25, 28 AND 29 OBVIOUS ..........................28
`CLAIMS 1, 4, 13, 16, 25, 28 AND 29 OBVIOUS ........................ ..28
`
`1.
`1.
`
`2.
`2.
`
`3.
`3.
`
`4.
`4.
`
`5.
`5.
`
`OVERVIEW OF GENDEL ............................................... ..28
`
`OVERVIEW OF GENDEL .................................................28
`OVERVIEW OF HAARTSEN ............................................29
`
`OVERVIEW OF HAARTSEN .......................................... ..29
`
`GENDEL AND HAARTSEN DO NOT RENDER CLAIIVI
`
`GENDEL AND HAARTSEN DO NOT RENDER CLAIM
`1 OBVIOUS........................................................................30
`
`1 OBVIOUS ...................................................................... ..30
`
`GENDEL AND HAARTSEN DO NOT RENDER CLAI1\/I
`
`GENDEL AND HAARTSEN DO NOT RENDER CLAIM
`4 OBVIOUS........................................................................34
`
`4 OBVIOUS ...................................................................... ..34
`
`GENDEL AND HAARTSEN DO NOT RENDER CLAIIVIS
`
`GENDEL AND HAARTSEN DO NOT RENDER CLAIMS
`13, 16, 25, 28 AND 29 OBVIOUS .......................................34
`13, 16, 25, 28 AND 29 OBVIOUS ..................................... ..34
`
`D.
`
`GROUND 4-GENDEL, HAARTSEN AND SAGE DO NOT
`GROUND 4-GENDEL, HAARTSEN AND SAGE DO NOT
`RENDER CLAIMS 2, 14 AND 26 OBVIOUS ...............................35
`RENDER CLAIMS 2, 14 AND 26 OBVIOUS ............................. ..35
`
`OVERVIEW OF SAGE .................................................... ..35
`
`1.
`1.
`
`2.
`2.
`
`OVERVIEW OF SAGE ......................................................35
`GENDEL, HAARTSEN AND SAGE DO NOT RENDER
`GENDEL, HAARTSEN AND SAGE DO NOT RENDER
`CLAIMS 2, 14 AND 26 OBVIOUS .....................................36
`CLAIIVIS 2, 14 AND 26 OBVIOUS ................................... ..36
`CONSIDERATIONS WEIGHING AGAINST OBVIOUSNESS
`REJECTIONS ................................................................................................. 37
`
`CONSIDERATIONS WEIGHING AGAINST OBVIOUSNESS
`
`REJECTIONS ............................................................................................... .. 37
`
`1.
`1.
`
`A POSITA WOULD NOT COMBINE GERTEN AND
`
`A POSITA WOULD NOT COMBINE GERTEN AND
`CUFFARO..........................................................................37
`
`CUFFARO ........................................................................ ..37
`
`ii
`
`
`
`E.
`
`
`
`

`
`
`
`2.
`2.
`
`A POSITA WOULD NOT COMBINE GENDEL AND
`
`A POSITA WOULD NOT COMBINE GENDEL AND
`HAARTSEN .......................................................................41
`
`HAARTSEN ..................................................................... ..41
`
`3.
`3.
`
`A POSITA WOULD NOT COMBINE GENDEL,
`A POSITA WOULD NOT COMBINE GENDEL,
`HAARTSEN AND SAGE ...................................................42
`HAARTSEN AND SAGE ................................................. ..42
`IV. CONCLUSION .......................................................................................44
`
`IV. CONCLUSION ..................................................................................... ..44
`
`
`
`iii
`
`
`
`

`
`
`
`
`EXHIBIT LIST
`
`
`
`
`
`Currently Filed – Patent Owner
`
`
`[EXH. 2001] Expert Witness Declaration of Dr. Jose Melendez
`
`(“Patent Owner’s Expert Witness Declaration”)
`
`[EXH. 2002] Memorandum Opinion and Order Regarding Claim
` Construction, Bandspeed v. Sony Electronics, Inc., et
`
`al., Cause No. A-09-CA-593-LY (W.D. Tex.), August
`
`12, 2011 (“Memorandum Opinion and Order
` Regarding Claim Construction”)
`
`Previously Filed – Petitioner
`
`[EXH. 1001] U.S. Patent No. 7,477,624 to Gan et al., issued January
`
`13, 2009 (“’624 Patent”)
`
`[EXH. 1002] Declaration of Dr. Zhi Ding in Support of Petition for
`Inter Partes Review of U.S. Patent No. 7,477,624,
`
` November 24, 2014 (“Ding Decl.”)
`
`[EXH. 1003] U.S. Patent No. 6,760,319 to Gerten et al., issued July
`
`6, 2004 (“Gerten”)
`
`[EXH. 1004] U.S. Patent No. 6,418,317 to Cuffaro et al., issued July
`
`9, 2002 (“Cuffaro”)
`
`[EXH. 1005] U.S. Patent No. 6,115,407 to Gendel et al., issued
` September 5, 2000 (“Gendel”)
`
`iv
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`[EXH. 1006] U.S. Patent No. 7,280,580 to Haartsen, issued October
`
`9, 2007 (“Haartsen”)
`
`[EXH. 1007] U.S. Patent No. 5,781,582 to Sage et al., issued July
`
`14, 1998 (“Sage”)
`
`[EXH. 1008] Non-Final Office Action mailed January 12, 2012,
`Inter Partes Reexamination of U.S. Patent No.
`
`
`7,027,418, Control No. 95/000648 (“Non-Final Office
` Action”)
`
`[EXH. 1009] Patent Owner’s Housekeeping Amendment, filed
` February 11, 2013 in Inter Partes Reexamination of
` U.S. Patent No. 7,027,418, Control No. 95/000648
`
`(“Housekeeping Amendment”)
`
`[EXH. 1010] Patent Owner’s Comments after Action Closing
` Prosecution, filed December 3, 2013 in Inter Partes
` Reexamination of U.S. Patent No. 7,027,418, Control
` No. 95/000648 (“Comments After ACP”)
`
`[EXH. 1011] Definition of “vote,” The American Heritage
` Dictionary, Second College Edition, Boston: Houghton
` Mifflin Company, 1985; p. 1356
`
`[EXH. 1012] Definition of “while,” The American Heritage
` Dictionary, Second College Edition, Boston: Houghton
` Mifflin Company, 1985; p. 1376
`
`[EXH. 1013] Definition of “Register,” Microsoft Press Computer
` Dictionary, 3rd Edition, Redmond, WA: Microsoft,
`
`1997; p. 402
`
`[EXH. 1014] Curriculum Vitae of Zhi Ding, Ph.D.
`
`[EXH. 1015] U.S. Patent No. 7,027,418 to Gan et al., issued April
`
`11, 2006
`
`
`
`v
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`[EXH. 1016] Specification of the Bluetooth System, Version 1.0B,
` December 1, 1999
`
`vi
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`I.
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioner did not submit a statement of material facts in its Petition for Inter
`
`Partes review (“Petition” or “Paper 1”). Accordingly, no response to a statement
`
`of material facts is due pursuant to 37 C.F.R. §42.23(a), and no facts are
`
`admitted.
`
`II.
`
`INTRODUCTION
`
`Patent Owner Bandspeed, Inc. (“Patent Owner”) respectfully submits this
`
`Patent Owner Response under 35 U.S.C. §§311–319 and 37 C.F.R. §42.120. It is
`
`being timely filed on or before January 21, 2016 pursuant to the Scheduling Order
`
`issued for this trial and the Stipulation Regarding Due Dates 1-2. Paper 22 at 8
`
`and Paper 25 at 2.
`
`“In an inter partes review instituted under this chapter, the petitioner shall
`
`have the burden of proving a proposition of unpatentability by a preponderance of
`
`the evidence.” 35 U.S.C. §316(e). Petitioner’s propositions of unpatentability fail
`
`to meet that burden with respect to Claims 1-4, 14-16 and 26-28 of U.S. Patent No.
`
`7,477,624 (“’624 Patent”).
`
`
`
`A.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. §316, Patent Owner respectfully requests that the
`
`
`
`
`
`1
`
`

`
`
`
`Patent Trial And Appeal Board (“Board” or “PTAB”) find that originally issued
`
`claims 1-4, 14-16 and 26-28 of the ‘624 Patent are valid and, specifically, that
`
`these claims are patentable in view of the proposed grounds of unpatentability
`
`under consideration.
`
`
`
`
`
`B. OVERVIEW OF THE ‘624 PATENT
`The United States Patent and Trademark Office (“USPTO”) issued the ‘624
`
`Patent entitled “Approach For Managing the Use of Communications Channels
`
`Based on Performance” on January 13, 2009. The ‘624 Patent generally relates to
`
`“[t]echniques…for selecting sets of communications channels based on channel
`
`performance.” ‘624 Patent at 4:8-9. “According to one aspect of the invention, a
`
`method selects communications channels for a communications system.” Id. at
`
`4:9-11. “A set of communications channels is selected based on the performance
`
`of the communications channels and channel selection criteria.” Id. at 4:11-13.
`
`“Then another set of communications channels is selected based on a later
`
`performance of the communications channels and the channel selection criteria.”
`
`Id. at 4:14-16.
`
`According to another aspect of the invention, a method is
`provided for communicating with a participant. A set of
`communications channels
`is selected based on
`the
`performance of the communications channels and a
`performance criterion. Identification data that identifies
`the set of communications channels is generated and
`2
`
`
`
`
`
`

`
`
`
`provided to the participant. The set of communications
`channels is used for communicating with the participant
`according to a frequency hopping protocol. According to
`other aspects, another set of communications channels is
`selected in a similar manner when a specified criterion is
`satisfied, including but not limited to, after expiration of a
`specified length of time, when the performance of at least
`one of the channels in the set of channels satisfies another
`performance criterion, or when a specified number of the
`set of channels satisfies yet another performance criterion.
`Id. at 4:17-31. “According to one aspect of the invention, a communications
`
`device is used in a network that communicates via a frequency hopping protocol.”
`
`Id. at 4:32-34. “The communications device includes a transceiver that is
`
`communicatively coupled to the memory and that is configured to transmit and
`
`receive, based on the identification data, over the set of channels, according to a
`
`frequency hopping protocol.” Id. at 4:37-41.
`
`According to another embodiment of the invention, some
`participants of the communications system do not use the
`selected set of good channels. For example, although
`typically the selected set of channels is used by all of the
`participants of the communications system, there may be
`some participants who are not configured to accept and
`use a set of communications channels sent by another
`participant. As a result, in a particular communications
`system, some participants may communicate with each
`other using the original or default set of communications
`channels while other participants communicate using a
`selected set of good channels.
`
`Id. at 18:59-19:2. The ‘624 Patent specifically includes a particular
`
`
`
`3
`
`
`
`
`
`

`
`
`
`embodiment labeled the “referendum” approach that considers the channel
`
`performance as determined by a master and a certain number of slaves
`
`(collectively “participants”). Id. at 16:47-49. Using the “referendum” approach, a
`
`participant has a vote on whether to use a given channel or not to use the channel.
`
`Id. at 16:65-66. “A certain number of votes (e.g. the ‘passing mark’) is required
`
`for the channel to be judged ‘good’ and therefore available for use by the FH
`
`communications system.” Id. at 17:5-7.
`
`C. LEVEL OF ORDINARY SKILL IN THE ART
`“The person of ordinary skill in the art is a hypothetical person who is
`
`
`
`
`
`presumed to have known the relevant art at the time of the invention.” Manual of
`
`Patent Examining Procedure (“MPEP”) 2141.II.C. Factors that may be considered
`
`in determining the level of ordinary skill in the art may include: type of problems
`
`encountered in the art; (2) prior art solutions to those problems; (3) rapidity with
`
`which innovations are made; (4) sophistication of the technology; and (5)
`
`educational level of active workers in the field. In re GPAC, 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995).
`
`
`
`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. A person of ordinary skill
`
`
`
`
`
`4
`
`

`
`
`
`in the relevant art (“POSITA”) of the ‘624 Patent would have a Bachelor of Science
`
`degree in Electrical or Computer Engineering or Computer Science or equivalent
`
`work experience. A POSITA would also have had access to relevant technical
`
`publications, text books and online references at the time of the invention just prior
`
`to January 25, 2001 which is the date of U.S. Provisional Application No.
`
`60/264,594 to which the ‘624 Patent claims priority. See also EXH. 2001 at ¶29-
`
`¶31.
`
`
`
`
`D. CLAIM CONSTRUCTION
`In an inter partes review, claim terms in an unexpired patent are given their
`
`broadest reasonable construction in light of the specification of the patent. 37
`
`C.F.R. §42.100(b). Claim terms are presumed 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 disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007).
`
`The Board construed “hopping sequence” and “votes to use the particular
`
`communications channel” in its June 11, 2015 Institution Decision. Paper 12 at 7-8.
`
`The Board determined that “hopping sequence” meant “the order in which the
`
`communications network hops among the set of frequencies.” Id. at 7. The Board
`
`also concluded that “votes to use the particular communications channel” meant
`
`
`
`
`
`5
`
`

`
`
`
`“expressions of preference for using the particular communications channel” only
`
`for purposes of the Institution Decision. Id. at 8.
`
`Patent Owner respectfully requests that the Board revisit its preliminary
`
`interpretation of “votes to use the particular communications channel” in its Final
`
`Written Decision and slightly modify the preliminary claim construction it adopted
`
`for purposes of the Institution Decision. Patent Owner submits that “votes to use
`
`the particular communications channel” should be construed to mean “expressions
`
`of preference of participants for using the particular communications channel”
`
`[underlining indicates words added to the Board’s preliminary construction].
`
`The ‘624 Patent specification supports this construction because all of the
`
`embodiments discussed in the specification indicate that the “votes” are limited to
`
`originating from participant devices involved in the communications and are
`
`intended to be used to determine the best channels for communication among those
`
`same participants that are voting on which channels to use for communication.
`
`The term “vote” is used sixteen times in the ‘624 Patent. ‘624 Patent at Table
`
`2 and 16:65-17:35. In all of the embodiments discussed in the ‘624 Patent, “vote”
`
`refers specifically to a vote of a participant in the communications system. “For
`
`example, Table 2 provides an illustration of a ‘referendum’ approach that considers
`
`the channel performance determined by a master and seven slaves.” Id. at 16:47-49
`
`
`
`
`
`6
`
`

`
`
`
`[emphasis added]. “In the example depicted in Table 2, each participant has one
`
`‘vote’ on whether to use the channel or not.” Id. at 16:65-66 [emphasis added].
`
`“While Table 2 indicates that each participant has an equally weighted vote, other
`
`referendum approaches may be used.” Id. at 17:17-18 [emphasis added]. “For
`
`example, the vote of particular participants, such as the master or a specified slave
`
`or slaves, may be given a higher weight.” Id. at 17:19-21 [emphasis added]. “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.” Id. at 17:21-24 [emphasis added].
`
`The ‘624 Patent does not disclose nor suggest any scenario in which a non-
`
`participant would cast a vote for consideration in determining the channels to use.
`
`It also does not disclose nor suggest any scenario in which there would be only a
`
`single participant voting. Indeed, in introducing the “referendum” approach, the
`
`‘624 Patent recites, “channel testing and classification from multiple participants
`
`may be combined and/or weighted to determine an overall, or final, classification
`
`for the channels of interest.” ‘624 Patent at 16:43-46 [emphasis added]. Because
`
`claim terms in an inter partes review of an unexpired patent are given their broadest
`
`reasonable construction in light of the specification, Patent Owner respectfully
`
`submits that a construction of “votes to use the particular communications channel”
`
`
`
`
`
`7
`
`

`
`
`
`that would include votes from non-participants in a communications system would
`
`be unduly broad and not supported by the specification and would not be how a
`
`POSITA would understand that limitation in view of the specification. See also
`
`EXH. 2001 at ¶28.
`
`Although the Board did not expressly construe “while” in the Institution
`
`Decision, it accepted Petitioner’s contention that “while” means “during the time
`
`that.” Institution Decision, Paper 12, at 11. The Board concluded that claim 1 of
`
`the ‘624 Patent that uses “while” does not require simultaneous communications—
`
`only that the master device can communicate with multiple devices during the same
`
`time period (e.g. interleaved communications). Id. To the extent the Board is
`
`suggesting that a device need not be capable of simultaneous communication with
`
`multiple participants over different sets of channels but is still requiring that the
`
`device, in a single configuration, be capable of communication with multiple
`
`participants over different sets of channels, Patent Owner does not object to this
`
`claim construction.
`
`Patent Owner respectfully submits that the remainder of the terms of the ‘624
`
`Patent are readily understood by those in the art, and therefore the Board need not
`
`construe other terms for the purposes of the instant review. U.S. Surgical Corp. v.
`
`Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (claim construction is
`
`
`
`
`
`8
`
`

`
`
`
`appropriate to “clarify and when necessary to explain what the patentee covered by
`
`the claims,” but is not an “obligatory exercise in redundancy”).
`
`
`
`
`
`E.
`
`SUMMARY OF PATENT OWNER’S ARGUMENTS
`
`The Board instituted inter partes review on claims 1-4, 13-16 and 25-29 of
`
`the ‘624 Patent based on the following alleged grounds of unpatentability:
`
`(a) Ground 1: Claims 1, 4, 13, 16, 25, 28 and 29 alleged under 35
`
`U.S.C. §102(e) as being anticipated by United States Patent
`
`No. 6,760,319 (“Gerten”);
`
`(b) Ground 2: Claims 2-3, 14-15 and 26-27 alleged under 35
`
`U.S.C. §103 as being obvious over Gerten in view of United
`
`States Patent No. 6,418,317 (“Cuffaro”);
`
`(c) Ground 3: Claims 1, 4, 13, 16, 25, 28 and 29 alleged under 35
`
`U.S.C. §103 as being obvious over United States Patent No.
`
`6,115,407 (“Gendel”) in view of United States Patent No.
`
`7,280,580 (“Haartsen”); and
`
`(d) Ground 4: Claims 2, 14 and 26 alleged under 35 U.S.C. §103
`
`as being obvious over Gendel in view of Haartsen and further
`
`in view of United States Patent No. 5,781,582 (“Sage”).
`
`Institution Decision, Paper 12, at 25. However, with the exception of Ground 1,
`
`
`
`
`
`9
`
`

`
`
`
`claims 13, 25 and 29, these proposed grounds of unpatentability fail for several
`
`reasons. One such reason is that the proposed references and combinations of
`
`references fail to disclose or suggest each and every limitation as recited by the
`
`‘624 Patent claims. In particular, as set forth herein, Gerten lacks “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 of claims 1, 16 and 28 of the ‘624 Patent.
`
`Gerten and Cuffaro additionally lack “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” limitation as
`
`required by claims 2, 14 and 26 of the ‘624 Patent and “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” limitation as
`
`recited in claims 3, 15 and 27.
`
`
`
`
`
`10
`
`

`
`
`
`The combination of Gendel and Haartsen further lacks the “selecting, based
`
`upon performance of a 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” limitation of independent claims
`
`1, 13 and 25 of the ‘624 Patent. Gendel and Haartsen also fail to disclose “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 of claims 1, 16 and 28 of the ‘624
`
`Patent.
`
`Finally,
`
`the combination of Gendel, Haartsen and Sage lacks “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” limitation as required by claims 2, 14 and 26 of the
`
`‘624 Patent.
`
`Another such reason that Petitioner’s proposed grounds of unpatentability
`
`
`
`
`
`11
`
`

`
`
`
`fail is that, with respect to combining (1) Gerten and Cuffaro; (2) Gendel and
`
`Haartsen; and (3) Gendel, Haartsen and Sage in formulating a proposed
`
`obviousness rejection for one or more of the claims in the ‘624 Patent, Petitioner
`
`does not articulate a sufficient reason or rational underpinning for the proposed
`
`combination necessary to support a legal conclusion of obviousness under current
`
`legal precedent and USPTO guidelines.
`
`Petitioner’s proposed obviousness grounds are based solely on “mere
`
`conclusory statements,” and Petitioner fails to present any cogent reasoning as to
`
`why a POSITA would have or even could have combined the relied upon
`
`references to arrive at the invention as recited in such one or more claims of the
`
`‘624 Patent. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In
`
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). These types of allegations fail to
`
`provide the specificity required by 37 C.F.R. §42.104(b)(4)-(5). Petitioner does
`
`not address the manner in which Cuffaro and Sage teach away from one of the key
`
`principles of operation of Gerten, Gendel and Haartsen or the manner in which
`
`Haartsen teaches away from one of the key principles of operation of Gendel. In
`
`order to make the proposed combinations, one or more of the references used in
`
`these combinations would need to be modified in a manner that would require
`
`substantial reconstruction and would greatly impact their principles of operation.
`
`
`
`
`
`12
`
`

`
`
`
`Thus, such a combination would not have been obvious to a POSITA.
`
`Consequently, the Petition’s grounds for unpatentability that rely upon the
`
`proposed combinations of (1) Gerten and Cuffaro; (2) Gendel and Haartsen; and
`
`(3) Gendel, Haartsen and Sage are legally deficient.
`
`III. PATENT OWNER’S RESPONSE TO PETITIONER’S GROUNDS
`OF REJECTION
`
` “In an inter partes review instituted under this chapter, the petitioner shall
`
`have the burden of proving a proposition of unpatentability by a preponderance of
`
`the evidence.” 35 U.S.C. §316(e). Petitioner has not met the burden of proving a
`
`proposition of unpatentability by a preponderance of the evidence with respect to
`
`at least the following limitations of the ‘624 Patent claims.
`
`A. GROUND 1-GERTEN DOES NOT ANTICIPATE CLAIMS 1, 4,
`
`16 AND 28
`
`
`
`
`
`1. OVERVIEW OF GERTEN
`
`Gerten relates generally “to a system and method for removing channels in a
`
`frequency hopping scheme having strong interference or interferers in a wireless
`
`communication system.” Gerten at 2:34-37. “The present invention employs
`
`signal strength measurements on N number of channels (N being an integer) of the
`
`frequency hopping scheme to determine M number of channels (M being an
`
`integer less than or equal to N) to avoid.” Id. at 2:37-41. “The system and/or
`13
`
`
`
`
`

`
`
`
`method then modify the frequency hopping scheme to avoid transmission over the
`
`M channels.” Id. at 2:41-42. “The M channels to avoid can be communicated to
`
`wireless units involved in the communication system, so that the members of the
`
`wireless communication system can frequency hop together over the modified
`
`frequency hopping scheme.” Id. at 2:43-47.
`
`“[T]he master device periodically updates the channels to be avoided.” Id.
`
`at 4:58-59. “If the master does not update the channels to be avoided (NO), the
`
`master device and the remote device continue transmitting data at the modified
`
`hopping sequence…” Id. at 4:59-62. “If the master does update the channels to be
`
`avoided (YES), the master device…create[s] another link and communicate[s] the
`
`new channels to the remote device.” Id. at 4:62-65.
`
`
`
`2. GERTEN DOES NOT ANTICIPATE CLAIM 1
`
`Claim 1 of the ‘624 Patent requires that “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.” ‘624 Patent at 27:10-18. Gerten does not disclose any embodiments in
`
`
`
`
`
`14
`
`

`
`
`
`which the transceiver is configured to transmit to and receive from one device over
`
`certain communications channels while also being configured to transmit to and
`
`receive from another device over other communications channels, and, in fact, the
`
`Gerten device is not capable of and expressly teaches away from performing this
`
`functionality. See also EXH. 2001 at ¶33.
`
`Gerten’s disclosure is directed toward eliminating channels for use in an
`
`entire piconet as opposed to eliminating channels for use by certain participants
`
`within a piconet. “The present invention provides for elimination of M channels
`
`with high interference of N total channels being transmitted in a frequency
`
`hopping scheme in a wireless communication system, such as a picone[n]t or the
`
`like.” Gerten at 4:17-20. Gerten does not disclose a selection kernel capable of
`
`maintaining synchronization between a master and more than one slave in a
`
`piconet wherein the master and a slave use a default set of channels while the same
`
`master and a different slave use a different set of channels. This is a direct
`
`consequence of the fact that Gerten eliminates channels for use in the entire
`
`piconet and modifies the selection kernel accordingly, meaning none of the slaves
`
`can use the eliminated channels in communications with the master. See also
`
`EXH. 2001 at ¶34.
`
`In Gerten, “[a] master unit is a device in a piconet whose clock and hopping
`
`
`
`
`
`15
`
`

`
`
`
`sequence are employed to synchronize other devices in the piconet—devices in a
`
`piconet that are not the master are typically slaves.” Gerten at 3:22-26. The
`
`selection kernel of Gerten is “reconfigured” to only select non-eliminated channels
`
`as depicted in FIGS. 6 and 7. The inputs to the selection kernels of FIGS. 6 and 7
`
`are identical, with the exception of the use of “mod 75” in the reconfigured
`
`selection kernel of FIG. 7 as opposed to the “mod 79” of the replaced selection
`
`kernel of FIG. 6. See also EXH. 2001 at ¶34.
`
`In contrast, the ‘624 Patent, as shown in FIGS. 5A and 5B, discloses a
`
`selection kernel capable of maintaining synchronization between the same master
`
`and different slaves within the same piconet wherein some of the slaves are using
`
`different subsets of channels while a particular slave may be using the entire set of
`
`channels. “The major difference between the example of FIG. 5A and FIG. 5B is
`
`