UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`
`
`QUALCOMM INC.,
`
`Petitioner
`
`v.
`
`BANDSPEED, INC.,
`
`Patent Owner
`
`___________________________________
`Case: IPR2015-003151
`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 IPR2015-01580 has been joined with IPR2015-00315
`
`

`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`
` I. STATEMENT OF MATERIAL FACTS IN DISPUTE ................................. 1
`
`STATEMENT 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
`STATEMENT 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 ARGUMENTS .................. .. 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 ANTICIPATE CLAHVIS
`
`GROUND 1-GERTEN DOES NOT ANTICIPATE CLAIMS
`5, 8 AND 20 ............................................................................................... 14
`5, 8 AND 20 ............................................................................................. .. 14
`
`1.
`1.
`
`2.
`2.
`
`3.
`3.
`
`4.
`4.
`
`OVERVIEW OF GERTEN .................................................... 14
`
`OVERVIEW OF GERTEN .................................................. .. 14
`
`GERTEN DOES NOT ANTICIPATE CLAIM 5 ................... 15
`
`GERTEN DOES NOT ANTICIPATE CLAI1V[ 5 ................. .. 15
`
`GERTEN DOES NOT ANTICIPATE CLAIM 8 ................... 19
`
`GERTEN DOES NOT ANTICIPATE CLAI1V[ 8 ................. .. 19
`
`GERTEN DOES NOT ANTICIPATE CLAIM 20 ................. 20
`
`GERTEN DOES NOT ANTICIPATE CLAI1V[ 20 ............... .. 20
`
`B.
`
`
`
`GROUND 2—GERTEN AND CUFFARO DO NOT RENDER
`
`CLAI1VIS 6-7 AND 18-19 OBVIOUS ............................................. .. 20
`
`GROUND 2-GERTEN AND CUFFARO DO NOT RENDER
`CLAIMS 6-7 AND 18-19 OBVIOUS ............................................... 20
`i
`i
`
`
`
`

`
`
`
`OVERVIEW OF CUFFARO .................................................. 20
`
`OVERVIEW OF CUFFARO ................................................ .. 20
`
`GERTEN AND CUFFARO DO NOT RENDER
`
`GERTEN AND CUFFARO DO NOT RENDER
`CLAIMS 6 AND 18 OBVIOUS ............................................. 21
`
`CLAHVIS 6 AND 18 OBVIOUS ........................................... .. 21
`
`GERTEN AND CUFFARO DO NOT RENDER
`
`GERTEN AND CUFFARO DO NOT RENDER
`CLAIMS 7 AND 19 OBVIOUS ............................................. 23
`
`CLAHVIS 7 AND 19 OBVIOUS ........................................... .. 23
`
`1.
`1.
`
`2.
`2.
`
`3.
`3.
`
`C.
`
`GROUND 3—GENDEL AND HAARTSEN DO NOT RENDER
`
`GROUND 3-GENDEL AND HAARTSEN DO NOT RENDER
`CLAIMS 5, 8, 17 AND 20 OBVIOUS ............................................. 29
`CLAHVIS 5, 8, 17 AND 20 OBVIOUS ........................................... .. 29
`
`1.
`1.
`
`2.
`2.
`
`3.
`3.
`
`4.
`4.
`
`5.
`5.
`
`OVERVIEW OF GENDEL .................................................... 29
`
`OVERVIEW OF GENDEL .................................................. .. 29
`
`OVERVIEW OF HAARTSEN ............................................... 30
`
`OVERVIEW OF HAARTSEN ............................................. .. 30
`
`GENDEL AND HAARTSEN DO NOT RENDER CLAHVI
`
`GENDEL AND HAARTSEN DO NOT RENDER CLAIM
`5 OBVIOUS ............................................................................ 31
`
`5 OBVIOUS .......................................................................... .. 31
`
`GENDEL AND HAARTSEN DO NOT RENDER CLAl1V[
`
`GENDEL AND HAARTSEN DO NOT RENDER CLAIM
`8 OBVIOUS ............................................................................ 35
`
`8 OBVIOUS .......................................................................... .. 35
`
`GENDEL AND HAARTSEN DO NOT RENDER
`
`GENDEL AND HAARTSEN DO NOT RENDER
`CLAIMS 17 AND 20 OBVIOUS ........................................... 35
`
`CLAHVIS 17 AND 20 OBVIOUS ......................................... .. 35
`
`D.
`
`GROUND 4-GENDEL, HAARTSEN AND SAGE DO NOT
`GROUND 4—GENDEL, HAARTSEN AND SAGE DO NOT
`RENDER CLAIMS 6 AND 18 OBVIOUS ...................................... 36
`
`RENDER CLAIMS 6 AND 18 OBVIOUS .................................... .. 36
`
`1.
`1.
`
`2.
`2.
`
`OVERVIEW OF SAGE .......................................................... 36
`
`OVERVIEW OF SAGE ........................................................ .. 36
`
`GENDEL, HAARTSEN AND SAGE DO NOT RENDER
`GENDEL, HAARTSEN AND SAGE DO NOT RENDER
`CLAIMS 6 AND 18 OBVIOUS ............................................. 36
`CLAHVIS 6 AND 18 OBVIOUS ........................................... .. 36
`
`E.
`
`
`
`CONSIDERATIONS WEIGHING AGAINST OBVIOUSNESS
`
`CONSIDERATIONS WEIGHING AGAINST OBVIOUSNESS
`REJECTIONS ........................................................................................... 37
`
`REJECTIONS ......................................................................................... ..37
`
`1.
`1.
`
`2.
`2.
`
`A POSITA WOULD NOT COMBINE GERTEN AND
`
`A POSITA WOULD NOT COMBINE GERTEN AND
`CUFFARO .............................................................................. 38
`
`CUFFARO ............................................................................ .. 38
`
`A POSITA WOULD NOT COMBINE GENDEL AND
`
`A POSITA WOULD NOT COMBINE GENDEL AND
`HAARTSEN ............................................................................ 41
`
`HAARTSEN .......................................................................... .. 41
`
`ii
`ii
`
`
`
`

`
`
`
`3.
`3.
`
`A POSITA WOULD NOT COMBINE GENDEL,
`A POSITA WOULD NOT COMBINE GENDEL,
`HAARTSEN AND SAGE ...................................................... 43
`HAARTSEN AND SAGE .................................................... .. 43
`IV. CONCLUSION ............................................................................................. 44
`
`IV. CONCLUSION ........................................................................................... .. 44
`
`
`
`iii
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`
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`

`
`
`
`
`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
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`
`
`[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] Definition of “vote,” The American Heritage
` Dictionary, Second College Edition, Boston: Houghton
` Mifflin Company, 1985; p. 1356
`
`[EXH. 1009] Definition of “while,” The American Heritage
` Dictionary, Second College Edition, Boston: Houghton
` Mifflin Company, 1985; p. 1376
`
`[EXH. 1010] Definition of “Register,” Microsoft Press Computer
` Dictionary, 3rd Edition, Redmond, WA: Microsoft,
`
`1997; p. 402
`
`[EXH. 1011] Curriculum Vitae of Zhi Ding, Ph.D.
`
`[EXH. 1012] Specification of the Bluetooth System, Version 1.0B,
` December 1, 1999
`
`v
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`
`
`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 24 and
`
`Paper 27 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 5-8 and 18-20 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 5-8 and 18-20 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.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`C.
`“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 “votes to use the particular communications channel” in
`
`its June 11, 2015 Institution Decision. Institution Decision, Paper 14, at 7. The
`
`Board concluded that “votes to use the particular communications channel” meant
`
`“expressions of preference for using the particular communications channel” only
`
`for purposes of the Institution Decision. Id.
`
`
`
`
`
`5
`
`

`
`
`
`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 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
`
`[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].
`
`
`
`
`
`6
`
`

`
`
`
`“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.” Id. 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”
`
`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
`
`
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`
`
`7
`
`

`
`
`
`POSITA would understand that limitation in view of the specification. See also
`
`EXH. 2001 at ¶27.
`
`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 14, at 12. The Board concluded that claim 5 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.
`
`In the Institution Decision, the PTAB also preliminarily agreed with
`
`Petitioner’s proposal to generically identify transceiver 216 shown in Figure 2 of
`
`the ‘624 Patent as the structure for the “means for the first participant to
`
`communicate with a third participant” limitations. Institution Decision, Paper 14, at
`
`8. However, Patent Owner respectfully submits that the selection kernel, which
`
`selects from the set identified by the communications channel selector apparatus,
`
`
`
`
`
`8
`
`

`
`
`
`offers a more appropriate corresponding structure to this means-plus-function
`
`language. ‘624 Patent at 4:62-67, 24:39-46. It is the selection kernel that
`
`specifically allows a participant to communicate with different participants over
`
`different sets of communication channels (e.g. a default set or an alternative set)
`
`within a given piconet as depicted in Fig. 5B of the ‘624 Patent. FIG. 5B depicts a
`
`selection kernel 510, and “whenever selection kernel 510 addresses a channel
`
`classified as bad in register with default channels 520, the bad channel is replaced
`
`with a good channel that is randomly selected.” ‘624 Patent at 20:34-38. The
`
`selection kernel addresses either the register with the set of default channels or the
`
`set of alternative good channels and “each participant has a selection kernel that
`
`addresses a register.” Id. at 19:65-67, 20:12-13, 19:31-32. See also EXH. 2001 at
`
`¶28.
`
`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
`
`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
`
`
`
`9
`
`
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`
`
`

`
`
`
`
`
`The Board instituted inter partes review on claims 5-8 and 17-20 of the ‘624
`
`Patent based on the following alleged grounds of unpatentability:
`
`(a) Ground 1: Claims 5, 8, 17 and 20 alleged under 35 U.S.C.
`
`§102(e) as being anticipated by United States Patent No.
`
`6,760,319 (“Gerten”);
`
`(b) Ground 2: Claims 6, 7, 18 and 19 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 5, 8, 17 and 20 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 6 and 18 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 14, at 23-24. However, with the exception of Ground
`
`1, claim 17, these proposed grounds of unpatentability fail for several reasons.
`
`One such reason is that the proposed references and combination of references fail
`
`to disclose or suggest each and every limitation as recited by the ‘624 Patent
`
`
`
`
`
`10
`
`

`
`
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`claims. In particular, as set forth herein, Gerten lacks the “means for the first
`
`participant to communicate with a third 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 communications channels and while
`
`communicating with the second participant over the second set of two or more
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`communications channels” limitation of claims 5 and 20 of the ‘624 Patent.
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`Gerten and Cuffaro additionally lack “the performance of the plurality of
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`communications channels is based on channel performance data that is transmitted
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`over one or more of the plurality of communications channels based on the
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`hopping sequence according to the frequency hopping protocol” limitation as
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`required by claims 6 and 18 of the ‘624 Patent and “the channel selection criteria
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`specifies that for a particular communications channel to be selected, the particular
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`communications channel receives a specified number of votes to use the particular
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`communications channel from among a plurality of votes” limitation as recited in
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`claims 7 and 19 of the ‘624 Patent.
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`The combination of Gendel and Haartsen further lacks the “selecting, based
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`upon performance of a plurality of communications channels at a second time that
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`is later than the first time, a second set of two or more communications channels
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`from the plurality of communications channels” limitation of independent claims 5
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`11
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`and 17 of the ‘624 Patent. Gendel and Haartsen also fail to disclose the “means for
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`the first participant to communicate with a third participant over the default set of
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`two or more communications channels while communicating with the second
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`participant over the first set of two or more communications channels and while
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`communicating with the second participant over the second set of two or more
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`communications channels” limitation of claims 5 and 20 of the ‘624 Patent.
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`Finally, the combination of Gendel, Haartsen and Sage lacks “the
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`performance of the plurality of communications channels is based on channel
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`performance data that is transmitted over one or more of the plurality of
`
`communications channels based on the hopping sequence according to the
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`frequency hopping protocol” limitation as required by claims 6 and 18 of the ‘624
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`Patent.
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`Another such reason that Petitioner’s proposed grounds of unpatentability
`
`fail is that, with respect to combining (1) Gerten and Cuffaro; (2) Gendel and
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`Haartsen; and (3) Gendel, Haartsen and Sage in formulating a proposed
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`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
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`combination necessary to support a legal conclusion of obviousness under current
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`legal precedent and USPTO guidelines.
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`12
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`Petitioner’s proposed obviousness grounds are based solely on “mere
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`conclusory statements,” and Petitioner fails to present any cogent reasoning as to
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`why a POSITA would have or even could have combined the relied upon
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`references to arrive at the invention as recited in such one or more claims of the
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`‘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
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`provide the specificity required by 37 C.F.R. §42.104(b)(4)-(5). Petitioner does
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`not address the manner in which Cuffaro and Sage teach away from one of the key
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`principles of operation of Gerten, Gendel and Haartsen or the manner in which
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`Haartsen teaches away from one of the key principles of operation of Gendel. In
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`order to make the proposed combinations, one or more of the references used in
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`these combinations would need to be modified in a manner that would require
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`substantial reconstruction and would greatly impact their principles of operation.
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`Thus, such a combination would not have been obvious to a POSITA.
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`Consequently, the Petition’s grounds for unpatentability that rely upon the
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`proposed combinations of (1) Gerten and Cuffaro; (2) Gendel and Haartsen; and
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`(3) Gendel, Haartsen and Sage are legally deficient.
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`III. PATENT OWNER’S RESPONSE TO PETITIONER’S GROUNDS
`OF REJECTION
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` “In an inter partes review instituted under this chapter, the petitioner shall
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`have the burden of proving a proposition of unpatentability by a preponderance of
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`the evidence.” 35 U.S.C. §316(e). Petitioner has not met the burden of proving a
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`proposition of unpatentability by a preponderance of the evidence with respect to
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`at least the following limitations of the ‘624 Patent claims.
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`
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`A. GROUND 1-GERTEN DOES NOT ANTICIPATE CLAIMS 5, 8
`
`AND 20
`
`
`1.
`OVERVIEW OF GERTEN
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`Gerten relates generally “to a system and method for removing channels in a
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`frequency hopping scheme having strong interference or interferers in a wireless
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`communication system.” Gerten at 2:34-37. “The present invention employs
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`signal strength measurements on N number of channels (N being an integer) of the
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`frequency hopping scheme to determine M number of channels (M being an
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`integer less than or equal to N) to avoid.” Id. at 2:37-41. “The system and/or
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`method then modify the frequency hopping scheme to avoid transmission over the
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`M channels.” Id. at 2:41-42. “The M channels to avoid can be communicated to
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`wireless units involved in the communication system, so that the members of the
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`wireless communication system can frequency hop together over the modified
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`frequency hopping scheme.” Id. at 2:43-47.
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`14
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`“[T]he master device periodically updates the channels to be avoided.” Id.
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`at 4:58-59. “If the master does not update the channels to be avoided (NO), the
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`master device and the remote device continue transmitting data at the modified
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`hopping sequence…” Id. at 4:59-62. “If the master does update the channels to be
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`avoided (YES), the master device…create[s] another link and communicate[s] the
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`new channels to the remote device.” Id. at 4:62-65.
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`
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`2.
`
`GERTEN DOES NOT ANTICIPATE CLAIM 5
`
`Claim 5 of the ‘624 Patent requires a “means for the first participant to
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`communicate with a third 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 communications channels and while communicating
`
`with the second participant over the second set of two or more communications
`
`channels.”
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` Gerten does not disclose any embodiments in which the selection kernel is
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`configured to communicate with one device over certain communications channels
`
`while also being configured to communicate with another device over other
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`communications channels, and, in fact, the Gerten device is not capable of and
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`expressly teaches away from performing this functionality. See also EXH. 2001 at
`
`¶33.
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`15
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`
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`Gerten’s disclosure is directed toward eliminating channels for use in an
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`entire piconet as opposed to eliminating channels for use by certain participants
`
`within a piconet. “The present invention provides for elimination of M channels
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`with high interference of N total channels being transmitted in a frequency
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`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
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`EXH. 2001 at ¶34.
`
`In Gerten, “[a] master unit is a device in a piconet whose clock and hopping
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`sequence are employed to synchronize other devices in the piconet—devices in a
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`piconet that are not the master are typically slaves.” Gerten at 3:22-26. The
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`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
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`16
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`
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`selection kernel of FIG. 7 as opposed to the “mod 79” of the replaced selection
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`kernel of FIG. 6. See also EXH. 2001 at ¶34.
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`In contrast, the ‘624 Patent, as shown in FIGS. 5A and 5B, discloses a
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`selection kernel capable of maintaining synchronization between the same master
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`and different slaves within the same piconet wherein some of the s