UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 27
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`
`QUALCOMM INC.,
`Petitioner
`
`
`
`v.
`
`
`
`BANDSPEED, INC.,
`Patent Owner
`
`______________
`
`
`
`Case IPR2015-003141
`U.S. Patent 7,477,624 B2
`
`
`
`______________
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`
`
`
`1 Case IPR2015-01577 has been joined with this proceeding.
`
`

`
`TABLE OF CONTENTS
`
`
`Page
`
`I. 
`II. 
`
`
`INTRODUCTION .......................................................................................... 1 
`CLAIM CONSTRUCTION ........................................................................... 1 
`A. 
`Level of Ordinary Skill ........................................................................ 1 
`B. 
`“Votes” ................................................................................................. 2 
`III.  GROUND 1: GERTEN ANTICIPATES CLAIMS 1, 4, 13, 16, 25,
`28, AND 29 ..................................................................................................... 4 
`A.  Gerten Discloses Transmitting and Receiving on an Adapted
`Sequence While Transmitting and Receiving on a Default
`Sequence in Claims 1, 16, and 28 ........................................................ 4 
`Gerten Anticipates Claims 4, 13, 25, and 29 ........................................ 8 
`B. 
`IV.  GROUND 2: GERTEN IN VIEW OF CUFFARO RENDERS
`CLAIMS 2, 3, 14, 15, 26, AND 27 OBVIOUS.............................................. 9 
`A. 
`The Combination of Gerten and Cuffaro Discloses or Suggests
`Transmitting Performance Data Over One or More Channels in
`Claims 2, 14, and 26 ............................................................................. 9 
`The Combination of Gerten and Cuffaro Discloses or Suggests
`Selecting a Channel Based on a Specified Number of Votes in
`Claims 3, 15, and 27 ........................................................................... 10 
`Gerten and Cuffaro Are Analogous Art, and a POSA Would
`Combine Their Conceptual Teachings ............................................... 13 
`V.  GROUND 3: GENDEL IN VIEW OF HAARTSEN RENDERS
`CLAIMS 1, 3, 4, 13, 15, 16, 25, AND 27-29 OBVIOUS ............................ 15 
`A. 
`The Combination of Gendel and Haartsen Discloses
`Communicating Using an Adapted Sequence While
`Communicating Using a Default Sequence in Claims 1, 16, and
`28 ........................................................................................................ 15 
`The Combination of Gendel and Haartsen Discloses Selecting
`Based on Performance in Claims 1, 13, and 25 ................................. 17 
`The Combination of Gendel and Haartsen Render Claims 3, 4,
`13, 15, 25, 27, and 29 Obvious........................................................... 18 
`
`B. 
`
`C. 
`
`B. 
`
`C. 
`
`
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`
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`-i-
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`

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`D.  Gendel and Haartsen are analogous art, and a POSA would
`combine their conceptual teachings ................................................... 19 
`VI.  GROUND 4: GENDEL IN VIEW OF HAARTSEN AND SAGE
`RENDERS CLAIMS 2, 14, AND 26 OBVIOUS ........................................ 21 
`VII.  THE INSTITUTED CLAIMS ARE INVALID ........................................... 21 
`
`
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`-ii-
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`

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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Bandspeed, Inc. v. Qualcomm Inc. et al.,
`No. 1:14-cv-00436 (W.D. Tex. Mar. 14, 2016), ECF No. 103 (Ex.
`1018 at 6) .............................................................................................................. 2
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 20
`
`Medtronic Inc. v. Boston Sci. Corp.,
`695 F.3d 1266 (Fed. Cir. 2012) ............................................................................ 3
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 20
`
`
`
`
`
`
`
`-iii-
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`

`
`Exhibit No.
`
`EXHIBIT LIST
`
`Exhibit Description
`
`Petitioner Exhibits (Previously Filed)
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`
`
`
`
`U.S. Patent No. 7,477,624 to Gan et al., issued January 13,
`2009 (“The ’624 Patent”)
`
`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.”)
`
`
`U.S. Patent No. 6,760,319 to Gerten et al., issued July 6, 2004
`(“Gerten”)
`
`U.S. Patent No. 6,418,317 to Cuffaro et al., issued July 9, 2002
`(“Cuffaro”)
`
`U.S. Patent No. 6,115,407 to Gendel et al., issued September
`5, 2000 (“Gendel”)
`
`U.S. Patent No. 7,280,580 to Haartsen, issued October 9, 2007
`(“Haartsen”)
`
`U.S. Patent No. 5,781,582 to Sage et al., issued July 14, 1998
`(“Sage”)
`
`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”)
`
`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 Amend-
`ment”)
`
`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 Af-
`ter ACP”)
`
`-iv-
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`
`

`
`Definition of “vote,” The American Heritage Dictionary, Sec-
`ond College Edition, Boston: Houghton Mifflin Company,
`1985; p. 1356
`
`Definition of “while,” The American Heritage Dictionary,
`Second College Edition, Boston: Houghton Mifflin Company,
`1985; p. 1376
`
`Definition of “Register,” Microsoft Press Computer Diction-
`ary, 3rd Edition, Redmond, WA: Microsoft, 1997; p. 402
`
`Curriculum Vitae of Zhi Ding, Ph.D.
`
`U.S. Patent No. 7,027,418 to Gan et al., issued April 11, 2006
`
`Specification of the Bluetooth System, Version 1.0B, Decem-
`ber 1, 1999
`
`Petitioner Exhibits (Currently Filed)
`
`Supplemental Declaration of Dr. Zhi Ding in Support of Peti-
`tioner’s Reply to Patent Owner’s Response Under 37 C.F.R. §
`42.120, March 21, 2016
`
`Second Amended Joint Claim Construction Statement, Exhibit
`A, Bandspeed, Inc. v. Qualcomm Inc. et al., No. 1:14-cv-
`00436 (W.D. Tex. Mar. 14, 2016), ECF No. 103
`
`U.S. Patent No. 7,027,418 to Gan et al., issued April 11, 2006
`
`Patent Owner Exhibits (Previously Filed)
`
`Expert Witness Declaration of Dr. Jose Melendez (“Patent
`Owner’s Expert Witness Declaration”)
`
`Memorandum Opinion and Order Regarding Claim Construc-
`tion 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”)
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`2001
`
`2002
`
`
`
`
`
`
`
`-v-
`
`
`
`

`
`Petitioner respectfully submits this reply to Patent Owner’s Response Under
`
`37 C.F.R. § 42.120 entered on January 21, 2016 (Paper 26) (“Response”).
`
`I.
`
`INTRODUCTION
`
`Patent Owner’s Response has failed to distinguish the Instituted Claims over
`
`the proposed grounds of rejections. Instead of amending the claims to cure the
`
`deficiencies in the ’624 patent, Patent Owner: i) offers narrow claim constructions
`
`that attempt to add limitations to the claims, ii) reads the prior art in a narrow and
`
`unsupported manner to argue that certain teachings are non-existent, and iii) claims
`
`that a designer of one wireless communication system would not look to the
`
`teachings of another wireless communication system, ignoring that the systems
`
`share substantially similar functionalities, and that the systems are so closely
`
`related that many of the same persons of ordinary skill in the wireless
`
`communications art would likely be designing the respective systems. As shown
`
`in the Petition, and as set forth below, the Instituted Claims are not patentable for
`
`at least the reasons set forth in Grounds 1-4.
`
`II. CLAIM CONSTRUCTION
`
`A. Level of Ordinary Skill
`
`Patent Owner offers a similar level of a person of ordinary skill in the art
`
`(“POSA”) as proposed in the Petition, differing only in the number of years of ex-
`
`perience in the field. Petitioner believes that a POSA would have some years of
`
`
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`experience in the relevant field. Regardless, even if Patent Owner’s level of skill
`
`were accepted, Patent Owner fails to identify how this would impact patentability,
`
`and Petitioner’s analysis remains unchanged. Ex. 1017 at ¶ 5.
`
`B.
`
`“Votes”
`
`The PTAB’s preliminary construction of the term “votes” as “votes to use a
`
`particular communications channel” is proper under the BRI standard. Patent
`
`Owner attempts to limit this term to require that votes must be cast by individual
`
`“participants” because of a referendum approach disclosed in the specification.2
`
`Response at 6. Specifically, Patent Owner’s construction relies on examples in the
`
`specification, where participants vote, to argue that the specification does not sup-
`
`port the preliminary construction, and a POSA would understand that the specifica-
`
`
`2 In concurrent district court litigation, Patent Owner and Petitioner have agreed
`
`that the term “vote” should be construed as “a binary expression (to use or not
`
`use)” in the ’624 patent. Second Amended Joint Claim Construction Statement,
`
`Exhibit A, Bandspeed, Inc. v. Qualcomm Inc. et al., No. 1:14-cv-00436 (W.D. Tex.
`
`Mar. 14, 2016), ECF No. 103 (Ex. 1018 at 6). Patent Owner’s suggested inclusion
`
`of a narrowing “participant” requirement, under the BRI standard is inconsistent
`
`with this agreed construction, despite the fact that the district court applies a more
`
`limiting standard.
`
`
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`tion requires that participants vote such that this limitation is necessarily in the
`
`claim. Id at 6-7.
`
`First, every citation to the ’624 patent in the Response begins with “for ex-
`
`ample,” “as another example,” or “in the example depicted,” indicating that the ex-
`
`amples are non-limiting and should not be read into the claims. Response at 6-7.
`
`A POSA would understand that the example scenarios of the specification are not
`
`necessarily limiting on the claims. Ex. 1017 at ¶ 6. Accordingly, Patent Owner’s
`
`attempts to read the examples into the claims is unsupported.
`
`Second, claim language in other patents directly related to the ’624 patent
`
`confirms that Patent Owner’s proposed limitation is not supported. For example,
`
`in U.S. Pat. 7,027,4183, Patent Owner explicitly claims that “each participant in a
`
`plurality of participants except for a particular participant casts one vote of the
`
`plurality of votes.” Ex. 1019 at claim 6. Because Patent Owner understood how to
`
`expressly create participant-specific voting requirements in claims, it should not be
`
`permitted to do so now by reading examples into the claims. See Medtronic Inc. v.
`
`Boston Sci. Corp., 695 F.3d 1266, 1276 (Fed. Cir. 2012) (holding that inclusion of
`
`express limitation in claims of continuation patent “suggests that the other claims
`
`that do not recite such a limitation should not be so limited”), rev’d on other
`
`grounds, 134 S. Ct. 843 (2014).
`
`3 The ’624 patent is a continuation of the ’418 patent.
`
`
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`
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`-3-
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`III. GROUND 1: GERTEN ANTICIPATES CLAIMS 1, 4, 13, 16, 25, 28,
`AND 29
`
`A. Gerten Discloses Transmitting and Receiving on an Adapted Se-
`quence While Transmitting and Receiving on a Default Sequence
`in Claims 1, 16, and 28
`
`Gerten discloses each limitation of claims 1, 16, and 28 of the ’624 patent,
`
`including “the transceiver is configured to transmit to and receive from a third
`
`communications device over the default set of two or more communications chan-
`
`nels while transmitting to and receiving from the second communications device
`
`over the first set of two or more communications channels.” Patent Owner argues
`
`that Gerten fails to anticipate claim 1, 16, and 28 because “Gerten does not dis-
`
`close any embodiments in 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 communica-
`
`tion channels, and, in fact, the Gerten device is not capable of and expressly teach-
`
`es away from performing this functionality.” Response at 14-15 (emphasis origi-
`
`nal). Specifically, the Response argues that “there is no actual disclosure of any
`
`method or device (necessarily including a selection kernel) for modifying a Blue-
`
`tooth hop sequence to avoid channels while also communicating with devices that
`
`are not avoiding channels,” and the “only way a master in Gerten can communicate
`
`with a slave in the piconet over the default set of communications channels is to
`
`reconfigure the selection kernel back to use ‘mod 79’ as shown in FIG. 6, causing
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`all of the devices in the entire piconet (i.e. the master and all slaves) to use the de-
`
`fault set of communications channels.” Response at 18-19. Patent Owner’s argu-
`
`ment demonstrates an inaccurate interpretation of Gerten.
`
`Gerten teaches at least two embodiments in which a first participant com-
`
`municates with a second participant via a normal sequence and with another partic-
`
`ipant via an adaptive hopping sequence. First, as detailed in the Petition, Figure 1
`
`illustrates the system disclosed in Gerten.4 Ex. 1002 at ¶ 61. Gerten’s interference
`
`avoidance scheme may be implemented in piconet 10 where the master unit (“first
`
`participant”) can communicate with a slave unit (“second participant”) using inter-
`
`ference avoidance while communicating with another slave unit (“third partici-
`
`pant”) using a normal mode. Id. at ¶ 62. As shown in Figure 3 of Gerten, the mas-
`
`ter unit performs a discovery process (block 110) upon connecting with a new
`
`slave unit. Id. at ¶¶ 60, 64. If the slave unit is capable of using interference avoid-
`
`ance, the master will begin the process to determine a modified set of channels for
`
`4 Patent Owner’s partial quote from Gerten incorrectly suggests that Figure 1 de-
`
`picts the pre-existing Bluetooth Standard that lacked adaptive frequency hopping.
`
`Response at 18. This quote omits key language (emphasized)—“system diagram
`
`of a scatternet employing the Bluetooth standard in accordance with the present
`
`invention”—which demonstrates that Figure 1 is not limited to the pre-existing
`
`Bluetooth Standard. See Ex. 1003 at 1:65-67.
`
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`use (block 120). Id. at ¶ 45. When a second slave unit enters the piconet, if it is
`
`determined that the new slave unit cannot utilize interference avoidance, Gerten
`
`uses standard frequency hopping for that slave (block 115). Ex. 1017 at ¶ 9.
`
`Under Patent Owner’s reading of Gerten, when the second slave enters the
`
`network, the first slave would necessarily revert back to the default hopping se-
`
`quence because the master is not capable of utilizing adaptive frequency hopping
`
`(AFH) interference avoidance while utilizing standard frequency hopping with the
`
`second slave. Ex. 1017 at ¶ 10. Gerten contains no such teaching or suggestion,
`
`nor would a POSA read such a requirement into Gerten because it would eviscerate
`
`the benefits of Gerten’s AFH interference avoidance. Id. Indeed, Gerten expressly
`
`teaches that its “process can be applied to a Bluetooth example and includes identi-
`
`fication of a Bluetooth device’s ability to support interference avoidance, . . . [and]
`
`a method of modifying the Bluetooth hop sequence so that it will avoid channels
`
`containing strong or fixed interferers while still supporting standard Bluetooth
`
`hopping with other non-enabled members of the piconet . . . .” Ex. 1003 at 4:66-
`
`5:9 (emphasis added); Ex. 1017 at ¶ 10.
`
`In addition to being factually wrong, Patent Owner argues for an improperly
`
`narrow construction, presumably to avoid a second anticipating embodiment. Spe-
`
`cifically, Patent Owner argues that “Gerten’s modified frequency hopping
`
`schemes” do not anticipate “because the master cannot maintain synchronization
`
`
`
`
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`-6-
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`with both slaves (i.e. one slave with interference-avoidance capabilities and one
`
`without such capabilities) within the same piconet.”5 Response at 18. Even ignor-
`
`ing the first embodiment, Gerten teaches a second embodiment where a mobile
`
`unit acts as a master in one piconet and acts as a slave in a second piconet, where
`
`two piconets are “independent” and “non-synchronized.” Ex. 1003 3:15-39; Fig. 1.
`
`
`
` This example further confirms that a mobile unit acting as a slave in one piconet
`
`can utilize Gerten’s AFH interference avoidance. Ex. 1017 at ¶ 12. Simultaneous-
`
`ly, as a master in another piconet, the unit can maintain a normal hopping sequence
`
`with a slave that is unable to utilize adaptive methods. Id. Thus, a first participant
`
`(the master/slave device) is able to communicate with a participant via a standard
`
`
`5 It is noted that this argument is directed toward unclaimed limitations. The
`
`claims are directed toward a “participant” which communicates in a normal and
`
`adaptive hopping mode.
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`hopping sequence, while also communicating with a different participant via an
`
`adaptive hopping sequence. Id. Such functionality also meets each limitation of
`
`the present claims. Id. Further, this embodiment would be consistent with Patent
`
`Owner’s characterization of Bluetooth system requiring all devices in a piconet to
`
`be standardized (Response at 18) while still fulfilling the functionality required by
`
`the claims. Ex. 1017 at ¶ 13.
`
`For at least the above reasons, Gerten teaches a device where a participant is
`
`able to communicate with a second participant over an adaptive hopping sequence
`
`while communicating with a third participant over a standard sequence. Therefore,
`
`Patent Owner’s arguments with respect to claims 1, 16, and 28 are without merit,
`
`and the PTAB should find that these claims are anticipated.
`
`B. Gerten Anticipates Claims 4, 13, 25, and 29
`
`Patent Owner did not distinguish claim 4 beyond the analysis of independent
`
`claim 1. Response at 19. Therefore, claim 4 is anticipated by Gerten for at least
`
`the reasons discussed above. Additionally, the Response concedes that claims 13,
`
`25, and 29 are anticipated by Gerten. See Response at 9-10 (“However, with the
`
`exception of Ground 1, claims 13, 25 and 29, these proposed grounds of unpatent-
`
`ability fail for several reasons.”) (emphasis added). For at least the reasons stated
`
`in the Petition and Institution Decision, claims 13, 25, and 29 are also anticipated
`
`by Gerten.
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`IV. GROUND 2: GERTEN IN VIEW OF CUFFARO RENDERS CLAIMS
`2, 3, 14, 15, 26, AND 27 OBVIOUS
`
`A. The Combination of Gerten and Cuffaro Discloses or Suggests
`Transmitting Performance Data Over One or More Channels in
`Claims 2, 14, and 26
`
`The combination of Gerten and Cuffaro discloses or suggests each limitation
`
`of dependent claims 2, 14, and 26, including “channel performance data that is
`
`transmitted over one or more of the plurality of communications channels.” The
`
`Response argues that Cuffaro fails to teach transmitting channel performance data
`
`over one or more of the plurality of channels as required. This argument is predi-
`
`cated on a review of references independently instead of the actual rejection based
`
`upon the combination of Gerten and Cuffaro. See Response at 20-22. Petitioner
`
`did not state that Cuffaro alone teaches transmitting performance data “over one or
`
`more of the plurality of channels,” as asserted by the Response. The grounds for
`
`rejection explain that Cuffaro teaches transmitting performance data from a mobile
`
`station to a master device. See Ex. 1002 at ¶ 109. This performance data can in-
`
`clude data from uplink or downlink channel measurements. Id. It was further ex-
`
`plained that Cuffaro “does not limit the type of communications link or connection
`
`that is used to report the ‘channel performance data’ from the mobile device to the
`
`base station.” Id. at ¶ 111. Therefore, it is obvious to combine the concept from
`
`Cuffaro of communicating the channel performance data between a slave and a
`
`master communicating in the context of Gerten (i.e. over one or more of the plural-
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`ity of communications channels based on the hopping sequence). Id. This is espe-
`
`cially true in light of the fact that the central purpose of Gerten is to obtain infor-
`
`mation regarding channels in order to implement interference avoidance tech-
`
`niques. Id. at ¶¶ 111-112.
`
`B.
`
`The Combination of Gerten and Cuffaro Discloses or Suggests Se-
`lecting a Channel Based on a Specified Number of Votes in
`Claims 3, 15, and 27
`
`The combination of Gerten and Cuffaro discloses or suggests each limitation
`
`of dependent claims 3, 15, and 27, including “for a particular communications
`
`channel to be selected, the particular communications channel receives a specified
`
`number of votes.” Patent Owner argues that Gerten and Cuffaro fail to teach utiliz-
`
`ing a channel selection criterion where a particular communications channel is se-
`
`lected if it receives a specified number of votes. Response at 23-24. This argu-
`
`ment relies on Patent Owner’s improperly narrow reading of “votes to use a partic-
`
`ular communications channel” to argue that the art must teach that a “mobile sta-
`
`tion” expresses a voting preference that is conveyed to a base station in order to
`
`satisfy this limitation. Response at 24 (stating that “the mobile station [of Cuffaro]
`
`does not indicate its expression of preference . . . but rather the base station uses
`
`data sent about the downlink”).
`
`Additionally, the Response ignores that the claims do not recite master or
`
`slave devices (or mobile stations/base stations), nor do they require that votes are
`
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`sent from a slave to a master Ex. 1017 at ¶ 7. Even under Patent Owner’s con-
`
`struction, a master would be a “participant.” Like Cuffaro’s base station, the
`
`“channel selection criteria” of the ’624 patent, which tracks data and voting, is im-
`
`plemented in an analogous master device. Ex. 1017 at ¶ 7.
`
`Further, the claims state that the “channel receives a specified number of
`
`votes,” not that a communication is transmitted to a device which conveys a vote,
`
`as asserted in the Response. Ex. 1017 at ¶ 7. As such, a system that receives
`
`channel information and assigns tallies, e.g., +1, +2, . . . +10, teaches the claimed
`
`voting scheme where a channel receives a plurality of votes. By contrast, the Re-
`
`sponse’s argument is premised on limitations not found in the claims. Thus, the
`
`arguments are without merit.
`
`Specifically, Dr. Ding
`
`provided a concise explanation
`
`of the voting system of Cuffaro
`
`and how the cited art is properly
`
`combined. Ex. 1002 at para-
`
`graphs 116-121. The voting fea-
`
`ture of Cuffaro compiles interference measurements over a plurality of samples to
`
`generate a plurality of votes (see FIG 5B, 7:23-32). These votes are expressions of
`
`preference for use of a particular channel, as noted by the PTAB’s decision. As
`
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`described in the Petition, the voting system of Cuffaro teaches replacing an as-
`
`signed frequency channel with an unassigned frequency channel having the maxi-
`
`mum number of positive votes.
`
`In the Institution Decision, the PTAB states that acting based on a “maxi-
`
`mum” number of votes is not the same as acting based on a “specified” number of
`
`votes, but preliminarily agreed that a POSA reading Cuffaro’s teachings regarding
`
`making decisions based on a maximum number of votes would find it obvious to
`
`select a particular number of positive votes when determining whether to use a par-
`
`ticular channel. Decision at 16; see Ex. 1002 at ¶ 121. Rather than squarely ad-
`
`dress this argument, the Response argues why the votes of Cuffaro are not applica-
`
`ble to Bluetooth communications, while ignoring that the instituted grounds states
`
`that a POSA would readily be able to utilize the voting feature of Cuffaro in the
`
`context of Gerten (i.e. while implementing Bluetooth communications). Ex. 1002
`
`at ¶ 122.
`
`The Response also takes issue with a specific example in the Petition (+6
`
`votes) and urges that two frequencies could have the same amount of votes. Re-
`
`sponse at 28. From this, Patent Owner infers that a POSA could not figure out a
`
`solution, and two or more frequencies would be assigned to a channel. Id. In addi-
`
`tion to being an unsupported argument, Patent Owner fails to acknowledge that the
`
`same circumstance is apparent within embodiments of the ’624 patent, and the pa-
`
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`tent is devoid of any teaching as to how to account for this circumstance. See Ex.
`
`1001 at 16:47 – 17:35; Ex. 1017 at 14.
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`Specifically, a POSA reading Cuffaro and its teaching of tallying positive
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`votes based on interference measurements would find it obvious to set a “specific”
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`tally/vote level indicating that a channel could be used. Ex. 1002 at ¶ 121; Ex.
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`1017 at ¶ 14. In doing so, a POSA would understand that there could be a greater
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`number of frequencies receiving the specific vote total than there are channels. Id.
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`Such a circumstance would not only be easily accounted for, it would be anticipat-
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`ed because many practical environments with minimal interference are encoun-
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`tered under normal use of a Bluetooth device. Id. If such a small step were outside
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`the level of ordinary skill, then the Instituted Claims would not be adequately de-
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`scribed such a that a POSA can make and use the invention.
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`For at least the above reasons, as well as for the reasons set forth in the Peti-
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`tion, the proposed combination teaches and renders obvious: “for a particular
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`communications channel to be selected, the particular communications channel re-
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`ceives a specified number of votes.”
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`C. Gerten and Cuffaro Are Analogous Art, and a POSA Would
`Combine Their Conceptual Teachings
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`Throughout the Response, Patent Owner attempts to paint a large contrast
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`between the fields of Bluetooth communications networks and other wireless
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`communication networks (such as cellular phone networks). See Response at 21-
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`-13-
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`22, 37-41. Ignoring that Bluetooth originated from cellular device manufacturers,
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`Patent Owner describes the different features of cellular and Bluetooth networks
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`and suggests that a POSA would not combine and apply the underlying concepts of
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`cellular’s master (base station)/slaves (mobile station) to the Bluetooth mas-
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`ter/slave devices. Such arguments are without merit.
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`A POSA designing the system of Gerten, which monitors interference on
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`communication channels in order to select particular frequencies to use in a hop-
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`ping sequence, would look to knowledge derived from designing other wireless
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`communication systems that monitor and select channels for the same purposes.
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`Ex. 1017 at ¶ 15. The claimed AFH is not constrained to Bluetooth. Ex. 1003 at
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`2:63 – 3:2 (stating that the present invention may be applied to wireless communi-
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`cations standards other than Bluetooth). And, the close relationship between Blue-
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`tooth and cellular communications technologies, as well as a POSA working on
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`same, is illustrated by the facts such as the assignment of the Gerten patent to
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`Motorola, Inc., (cellular device manufacturer) and Ericsson and Nokia (cellular de-
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`vice manufacturers), who founded the Bluetooth Special Interest Group. Ex. 1017
`
`at ¶ 16. Moreover, a POSA could and would easily translate actions that are taken
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`with respect to separate uplink or downlink channels and would easily apply those
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`actions to systems where the uplink/downlink channels are shared. Id.
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`-14-
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`A POSA has been agreed upon as having, e.g., a degree in electrical engi-
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`neering. Such a person obtaining knowledge in the area of interference avoidance
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`would not presume that the knowledge was limited to specific frequency ranges.
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`Id. at ¶ 17. This is especially true in light of the close frequency ranges of cellular
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`and Bluetooth communications (1.9 GHz vs. 2.4 GHz). Id. Further, whether the
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`particular frequency band is licensed or unlicensed does not change the need to
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`avoid interference. Id. Accordingly, the teachings of Gerten and Cuffaro would be
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`combined and render the challenged claims obvious as asserted in the Petition.
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`V. GROUND 3: GENDEL IN VIEW OF HAARTSEN RENDERS
`CLAIMS 1, 3, 4, 13, 15, 16, 25, AND 27-29 OBVIOUS
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`A. The Combination of Gendel and Haartsen Discloses Communi-
`cating Using an Adapted Sequence While Communicating Using a
`Default Sequence in Claims 1, 16, and 28
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`The Response asserts that the proposed combination of Gendel and Haartsen
`
`fails to disclose the limitations of claims 5 and 20 requiring “means f[or] the first
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`participant to communicate with a third participant over the default set of two or
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`more communications channels while communicating with the second participant
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`over the first set of two or more communications channels.” Response at 31.
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`Patent Owner states that this limitation must be implemented by a “singular”
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`receiver, whereas Petitioner argues that subsystems 122, 124 and 126 which im-
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`plements this functionality are “multiple separate transceivers.” Response at 32.
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`Petitioner made no such argument. Figure 1 of Gendel is reproduced below:
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`-15-
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`

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`
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`As shown, subsystems 122, 124, and 126 are part of the “Main Transceiver
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`in the Frequency Hopping Communication System.” As noted by Dr. Ding, Gen-
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`del teaches that the main transceiver (primary system 102) communicates with the
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`second participant (e.g. secondary system 104) and third participant (secondary
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`system 108) using Gendel’s adaptive hopping methods. Ex. 1002 at 148. While
`
`this communication is implemented, primary system 102 is configured to com-
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`municate with secondary subsystem 108 over a default set of communication
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`channels. Id.
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`Patent Owner further argues that nothing in Gendel teaches communicating
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`over a “default” set of channels. Response at 33. As noted by Dr. Ding, a POSA
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`would understand that block 126 in Gendel is provided to support legacy commu-
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`nication systems, such as systems that do not support segment substitution. Ex.
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`-16-
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`

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`1002 at ¶ 147. It would make little sense to create specific Bluetooth interference
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`avoidance systems that do not function with legacy devices. Ex. 1013 at ¶ 19. Pa-
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`tent Owner states that block 126 could be utilized to implement other interference
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`avoidance methods, and therefore Gendel does not necessarily require that a de-
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`fault hopping sequence is used. Response at 33. Petitioner has not asserted that
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`block 126 can only implement communications over a default sequence, rather it is
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`recognized that the primary purpose of this block is to provide for such legacy
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`functionality. Ex. 1013 at ¶ 20.
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`Therefore, the proposed combination teaches communicating “with a third
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`participant over the default set of two or more communications channels while
`
`communicating with the second participant over the first set of two or more com-
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`munications channels and while communicating with the second participant over
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`the second set of two or more communications channels.”
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`B.
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`The Combination of Gendel and Haartsen Discloses Selecting
`Based on Performance in Claims 1, 13, and 25
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`The combination of Gendel and Haartsen discloses all limitations of claims
`
`1, 13, and 25 including “selecting, based upon performance of the plurality of
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`communications channels at a second time that is later than the first time, a second
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`set of two or more communications channels from the plurality of communications
`
`channels.” Patent Owner also argues that the proposed combination does not teach
`
`this limitation. To make this argument, Patent Owner misconstrues Gendel and al-
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`-17-
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`so continues to read additional limitations into the claim language. Patent Owner
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`argues that, to disclose this limitation, the cited art would have to teach testing all
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`channels of the plurality of channels in order determine the second set of channels.
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`Response at 34. No such requirement exists in the claims. Patent Owner does not
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`dispute that the performance of the current segment (first set of plurality o