Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 41
`Entered: September 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-003151
`Patent 7,477,624 B2
`____________
`
`
`
`
`
`Before BART A. GERSTENBLITH, DAVID C. McKONE, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 Case IPR2015-01580 has been joined with this proceeding
`
`
`571-272-7822
`
`
`
`
`
`Paper 41
`Entered: September 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-003151
`Patent 7,477,624 B2
`____________
`
`
`
`
`
`Before BART A. GERSTENBLITH, DAVID C. McKONE, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 Case IPR2015-01580 has been joined with this proceeding
`
`
`
`IPR2015-00315
`Patent 7,477,624 B2
`
`
`I. INTRODUCTION
`A. Background
`Marvell Semiconductor, Inc., MediaTek Inc., and MediaTek USA,
`Inc., filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of
`claims 5–8 and 17–20 of U.S. Patent No. 7,477,624 B2 (“the ’624 patent”).
`Bandspeed, Inc. (“Patent Owner”) did not file a Preliminary Response. Prior
`to institution, we granted a motion to terminate the proceeding with respect
`to Marvell Semiconductor, Inc. Paper 13. Pursuant to 35 U.S.C. § 314, in
`our Institution Decision (Paper 14, “Dec.”), we instituted this proceeding as
`to each of the challenged claims.
`After institution, Qualcomm Inc. filed substantially the same petition
`in IPR2015-01580 (IPR2015-01580, Paper 1), together with a Motion for
`Joinder of IPR2015-01580 with the instant proceeding (IPR2015-01580,
`Paper 2). On September 17, 2015, we granted a motion to terminate this
`proceeding with respect to MediaTek Inc. and MediaTek USA, Inc., but not
`as to Patent Owner, leaving only Patent Owner as a party to the proceeding.
`Paper 22. On November 16, 2015, we granted Qualcomm Inc.’s Motion for
`Joinder, joining Qualcomm Inc. to the instant proceeding. Paper 23.
`Qualcomm Inc. (“Petitioner”) is now the sole petitioner.
`After institution of trial, Patent Owner filed a Response (Paper 28,
`“PO Resp.”), and Petitioner filed a Reply to the Patent Owner’s Response
`(Paper 29, “Reply”). An oral argument was held on May 26, 2016, and the
`transcript was entered into the record. Paper 40 (“Tr.”).
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`Petitioner relies on the testimony of Zhi Ding, Ph.D. Ex. 1002 (“Ding
`Decl.”); Ex. 1013 (“Supp. Ding Decl.”). Patent Owner relies on the
`testimony of Jose Luis Melendez, Ph.D. Ex. 2001 (“Melendez Decl.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a final
`written decision under 35 U.S.C. § 318(a) as to the patentability of the
`challenged claims. Based on the record before us, Petitioner has
`demonstrated, by a preponderance of the evidence, that claims 5, 6, 8, 17,
`18, and 20 are unpatentable, but has not demonstrated that claims 7 and 19
`are unpatentable.
`
`
`B. The ’624 Patent
`The ’624 patent was filed on April 3, 2006, as a continuation of U.S.
`Patent Application No. 09/948,488, which was filed on September 6, 2001,
`and issued as U.S. Patent No. 7,027,418. Ex. 1001 [63]. The ’624 patent
`also claims the benefit of the filing date of U.S. Provisional Application
`No. 60/264,594, filed on January 25, 2001. Id. at [60].
`The ’624 patent relates to managing the use of communications
`channels based on channel performance. Ex. 1001, col. 1, ll. 46–48.
`Figure 2 of the ’624 patent is reproduced below.
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`Figure 2 is a block diagram that depicts a communications network having
`“master” communications device 210 and multiple “slave” communications
`devices 220 and 230, each of which includes a memory, a processor, and a
`transceiver. Id. at col. 9, ll. 53–63. To manage the use of communications
`channels between the master and slaves via the respective transceivers, an
`initial set of channels is selected based on selection criteria at the start-up of
`the communications network. Id. at col. 6, ll. 19–21. Additional sets of
`channels then are selected periodically for adaptive avoidance of
`interference. Id. at col. 6, ll. 21–23.
`For example, master 210 may select a set of communications channels
`from default communications channels for a specified communications
`protocol, generate identification data for the selected set of channels, and
`transmit the identification data to slave 220. Id. at col. 9, l. 64–col. 10, l. 3.
`If slave 230 is incapable of using the selected set of channels, master 210
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`communicates with slave 220 using the selected set of communications
`channels and communicates with slave 230 using the default
`communications channels for the specified communications protocol. Id. at
`col. 10, ll. 4–15.
`The ’624 patent describes various techniques for assessing
`performance of communications channels that include the use of special test
`packets (id. at col. 10, l. 33–col. 12, l. 35), a received signal strength
`indicator (“RSSI”) (id. at col. 12, l. 37–col. 13, l. 2), and cyclic redundancy
`checks (“CRC”) (id. at col. 13, l. 50–col. 14, l. 6). Communications
`channels are classified based on channel performance as determined by such
`assessments and according to classification criteria. Id. at col. 14, ll. 63–65.
`In a particular implementation, a “referendum” approach is used in which
`participant devices “vote” whether to use a particular channel. Id. at col. 16,
`ll. 65–66. The votes may be used according to various approaches, such as
`through the use of weighted votes, in determining final channel
`classifications. Id. at col. 17, ll. 25–34.
`
`
`C. Illustrative Claim
`Independent claim 5 is illustrative of the claims at issue:
`5. A communications apparatus comprising:
`means for selecting, based upon performance of a
`plurality of communications channels at a first time, a first set
`of two or more communications channels from the plurality of
`communications channels;
`means for causing the first set of two or more
`communications channels to be used for communications
`between a pair of participants;
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`means for selecting, based upon performance of the
`plurality of communications channels at a second time that is
`later than the first time, a second set of two or more
`communications channels from the plurality of communications
`channels; and
`means for causing the second set of two or more
`communications channels to be used for communications
`between the pair of participants instead of the first set of two or
`more communications channels, wherein at each hop in a
`hopping sequence based on a frequency hopping protocol, only
`one communications channel of the second set of two or more
`communications channels is used for communications between
`the pair of participants,
`wherein the pair of participants includes a first
`participant and a second participant, wherein a default set of
`two or more communications channels is associated with the
`hopping sequence and is not changed based on the performance
`of the plurality of communications channels, and the
`communications channel selector apparatus further comprises:
`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
`communications channels.
`
`
`D. References
`Petitioner relies on the following references.
`Gerten
`US 6,760,319 B1
`July 6, 2004
`Cuffaro
`US 6,418,317 B1
`July 9, 2002
`Gendel
`US 6,115,407
`Sept. 5, 2000
`Haartsen
`US 7,280,580 B1
`Oct. 9, 2007
`Sage
`US 5,781,582
`July 14, 1998
`
`
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
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`E. Instituted Grounds of Unpatentability
`We instituted trial on the following grounds of unpatentability.
`Dec. 23–24.
`Reference(s)
`
`Gerten
`Gerten and Cuffaro
`Gendel and Haartsen
`Gendel, Haartsen, and Sage
`
`
`Claims Challenged
`Basis
`§ 102(e) 5, 8, 17, and 20
`§ 103(a) 6, 7, 18, and 19
`§ 103(a) 5, 8, 17, and 20
`§ 103(a) 6 and 18
`
`F. Related Matters
`The ’624 patent has been asserted in several lawsuits in the United
`States District Court for the Western District of Texas. Pet. 1; Paper 8, 2–3.
`Those cases include Bandspeed, Inc. v. Qualcomm Inc., 1:14-CV-00436
`(W.D. Tex.) (“Qualcomm Litigation”).
`The ’624 patent is also the subject of inter partes review in
`IPR2015-00314 and IPR2015-00316. U.S. Patent No. 7,903,608 B2 (“the
`’608 patent”), which issued from a continuation application based on the
`application issuing as the ’624 patent, is the subject of IPR2015-00237,
`which was terminated on August 12, 2015 (IPR2015-00237, Paper 19). U.S.
`Patent No. 8,542,643, which is a divisional of the ’608 patent, is the subject
`of Marvell Semiconductor, Inc. v. Bandspeed, Inc., Case IPR2015-00531.
`Cases IPR2015-00314, IPR2015-00316, and IPR2015-00531 were argued
`together with this proceeding at the May 26, 2016, oral hearing.
`
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`II. ANALYSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278 (Fed. Cir. 2015) (“We conclude that Congress
`implicitly approved the broadest reasonable interpretation standard in
`enacting the AIA.”), aff’d sub nom. Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`interpretation standard); Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012).
`
`
`1. Means-Plus-Function Limitations
`Claims 5, 7, 8, 17, 19, and 20 recite several limitations that include the
`phrase “means for . . . .” Petitioner construes these terms in accordance with
`35 U.S.C. § 112 ¶ 6, identifying an algorithm described in the specification
`corresponding to each “means” limitation. Pet. 7–9 (citing Ex. 1001, col. 8,
`l. 8–38, col. 8, ll. 49–col. 9, l. 16, col. 19, l. 25–col. 20, l. 67). Petitioner
`identifies a general purpose computer, processor 704 in Figure 7, as structure
`for “executing the instructions associated with the corresponding function”
`recited in each “means limitation,” except for the “means fro [sic] the first
`participant to communicate . . .” recited in claims 5 and 20. Pet. 7–9 (citing
`Ex. 1001, Fig. 7, col. 25, ll. 13–18). For the “means fro [sic] the first
`participant to communicate” limitation, Petitioner identifies transceiver 216,
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`shown in Figure 2, reproduced supra. Pet. 9 (citing Ex. 1001, Fig. 2, col. 9,
`ll. 54–59). Patent Owner does not contest these identifications.
`We agree with Petitioner’s identifications and adopt them as our
`constructions of the means-plus-function limitations. Specifically, as to
`those means-plus-function limitations that correspond to processor 704 in
`Figure 7, Petitioner identifies in its claim chart the algorithm described in the
`specification for performing each function of these means. Pet. 8–9;
`See also Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed.
`Cir. 2013) (“When dealing with a ‘special purpose computer-implemented
`means-plus-function limitation,’ [the Federal Circuit] require[s] the
`specification to disclose the algorithm for performing the function.”);
`Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir.
`2009) (“[W]hen a computer is referenced as support for a function in a
`means-plus-function claim, there must be some explanation of how the
`computer performs the claimed function.”).
`
`
`2. “votes to use the particular communications channel”
`The noun phrase “votes to use the particular communications
`channel” is recited in each of challenged claims 7 and 19. The term “vote”
`is not defined in the Specification of the ’624 patent. In the Institution
`Decision, we applied a preliminary construction of “votes to use the
`particular communications channel” as “expressions of preference for using
`the particular communications channel,” a construction that rejected
`Petitioner’s further proposal that the phrase alternatively encompasses
`indications whether the communications channel is “good or bad.” Dec. 7.
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`The parties do not present arguments that cause us to reconsider that aspect
`of the construction.
`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,’”
`with underscoring to indicate words it proposes to add to the Board’s
`preliminary construction. PO Resp. 6. Patent Owner contends that “all of
`the embodiments” discussed in the Specification of the ’624 patent “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.” Id. This contention is
`not disputed by Petitioner, and we find no counterexamples in the
`Specification. Patent Owner reasons that omission of reference to
`participants in the construction of the phrase “would be unduly broad and
`not supported by the specification and would not be how a [person of
`ordinary skill in the art] would understand that limitation in view of the
`specification.” Id. at 7–8 (citing Melendez Decl. ¶ 27).
`We are not persuaded by this reasoning. As Petitioner observes, the
`embodiments of the ’624 patent identified by Patent Owner are characterized
`as “examples,” and a person of ordinary skill “would understand that the
`example scenarios of the specification are not necessarily limiting on the
`claims.” Reply 3 (citing Ding Supp. Decl. ¶ 6). In addition, Petitioner notes
`that claim language in related patents owned by Patent Owner explicitly
`refers to participants, evidencing Patent Owner’s understanding “how to
`expressly create participant-specific voting requirements in claims.” Id. at 3.
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`At the oral hearing, Patent Owner suggested that explicit reference to
`participants in such other claim language “was because it wanted to clarify
`that each participant got a single vote,” and explained its position that, in the
`claims at issue in this proceeding, “participant is implicit in the claim
`language as it is.” Tr. 78:16–25. But the claims are directed to a
`“communications apparatus,” and recite “votes” in the context of what the
`“particular communications channel” “receives.” Nothing within the
`structure of the claims requires resolving the origin of such votes.
`Furthermore, Patent Owner’s proposed construction is inconsistent
`with the construction it agreed to before the district court in the Qualcomm
`Litigation. In that litigation, the parties agreed that the term “vote” should
`be construed as “a binary expression (to use or not to use),” a construction
`that makes no reference to the origin of the “vote” as from a participant or
`otherwise. Ex. 1014, 6. We see no compelling reason to excuse the
`inconsistency by adopting a narrower construction when the Board applies a
`claim-construction standard (broadest reasonable interpretation) that could
`only result in the same or a broader construction. See Amazon.com, Inc. v.
`Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent
`may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and
`another to find infringement.” (quoting Sterner Lighting, Inc. v. Allied Elec.
`Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970))).
`Accordingly, we construe “votes to use a particular communications
`channel” as “expressions of preference for using the particular
`communications channel.”
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`3. “while”
`Independent claim 5 and dependent claim 20 require that different sets
`of communications channels be used with the second and third participants:
`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 communications channels
`
`(emphases added). In the Institution Decision, we construed “while” in this
`context such that the claim language does not require simultaneous
`communications, only that communication can take place with multiple
`devices during the same time period, such as with interleaved
`communications. Dec. 12. Such a construction is consistent with a general-
`dictionary definition of “while” as “during the time that.” See Ex. 1009,
`1376; Pet. 21 n.6. Patent Owner addresses that construction as follows:
`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.
`
`PO Resp. 8 (emphasis added). Patent Owner’s characterization presents a
`gloss on the construction we applied in the Institution Decision by requiring
`that a device communicate over different sets of channels “in a single
`configuration.” But Patent Owner provides insufficient reasoning to support
`a contention that the claim language is limited to “a single configuration” in
`the manner proposed.
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`We construe “while,” as recited in claims 5 and 20, as requiring that
`communication take place with multiple devices during the same time
`period, such as with interleaved communications, but not requiring
`simultaneous communication with the multiple devices.
`
`
`B. Grounds Based on Gerten
`Gerten relates to improving noise and interference immunity by
`“removing channels in a frequency hopping scheme having strong
`interference or interferers in a wireless communication system.” Ex. 1003,
`col. 2, ll. 34–37. Figure 1 of Gerten is reproduced below.
`
`
`Figure 1 illustrates operation of three piconets 10, 12, and 14 that form a
`scatternet. Id. at col. 3, ll. 8–10. A piconet is a collection of devices that can
`be connected via Bluetooth technology in an ad hoc fashion. Id. at col. 3,
`ll. 10–12. As shown in the drawing, first piconet 10 has a plurality of
`mobile units 20 that include a master mobile unit and multiple slave mobile
`units, one of which is also a slave of second piconet 12. Id. at col. 3, ll. 27–
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`33. Gerten defines a “master unit” as a “device in a piconet whose clock and
`hopping sequence are employed to synchronize other devices in the
`piconet—devices in a piconet that are not the master are typically slaves.”
`Id. at col. 3, ll. 22–26.
`In determining channels to be avoided, a master device in the piconet
`determines which channels have the strongest interference. Id. at col. 4,
`ll. 50–51. This may be accomplished with “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 col. 2, ll. 37–41. The frequency hopping scheme then is
`modified to avoid transmission over the M channels, and the M channels to
`avoid can be communicated to wireless units involved in the communication
`system, allowing members of the communication system to frequency hop
`together over the remaining N–M good channels in a modified frequency
`hopping scheme. Id. at col. 2, ll. 41–52, col. 4, ll. 47–58. “[T]he master
`device periodically updates the channels to be avoided,” resulting in a
`similar modification to the frequency hopping sequences. Id. at col. 4,
`ll. 58–65.
`
`
`1. Claim 5
`Petitioner challenges independent claim 5 as anticipated by Gerten.
`Pet. 11–21. In its analysis drawing a correspondence between the limitations
`of independent claim 5 and the disclosure of Gerten, Petitioner identifies the
`master mobile unit of Gerten’s piconet as a “communication apparatus” that
`functions as the “first participant” and identifies the slave units as
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`functioning as “second” and “third” participants. Pet. 11, 19. Petitioner
`further observes that the master mobile unit includes a central control system
`with a processor to perform various functions and a memory in which
`software instructions reside. Id. (citing Ex. 1003, col. 3, ll. 40–48, col. 4,
`ll. 1–6). In addition, Petitioner identifies the two recited “means for
`selecting” sets of communications channels as disclosed by Gerten’s
`description of modified frequency hopping schemes, noting Gerten’s
`specific disclosure of periodic updating of the modified frequency hopping
`schemes to conclude that Gerten discloses selecting first and second sets of
`communications channels at different times. Id. at 13, 15–16. Because the
`wireless mobile units of Gerten modify their respective hopping sequences
`and begin transmitting data using the modified hopping sequences at the
`respective times, Petitioner reasons that Gerten discloses the two “means for
`causing” the sets of communications channels to be used for
`communications between a pair of participants. Id. at 14–15, 16–17.
`We agree with Petitioner’s identified correspondences and find that
`these claim limitations are disclosed by Gerten. In particular, as illustrated
`in Figure 2 of the ’624 patent reproduced above, the Specification discloses
`a master mobile unit that includes a memory, processor, and transceiver used
`to perform the functions recited in the two “means for selecting” and two
`“means for causing” limitations of claim 5. See Ex. 1001, col. 9, ll. 53–63,
`col. 6, ll. 19–21. We find this structure equivalent to the processor, memory,
`and transceiver disclosed by Gerten as components of the master mobile
`unit. See Ex. 1003, col. 3, ll. 40–48, col. 4, ll. 1–6, col. 3, ll. 53–55.
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`Claim 5 recites that “only one communications channel of the second
`set of two or more communications channels is used for communications
`between the pair of participants.” Petitioner relies on Gerten’s disclosure of
`Bluetooth frequency hopping as an example, noting that “[i]n a hopping
`sequence based on a [frequency hopping] protocol such as used in
`Bluetooth, only one communications channel is used for communications
`between a first device and a second device at each hop.” Id. at 18 (citing
`Ding Decl. ¶ 54).
`In addressing claim 5’s specific requirement that different sets of
`channels be used with the second and third participants, Petitioner reasons
`that the process summarized above may be applied by the master device to
`each of the slave devices separately: “the master mobile unit of Gerten
`performs a service discovery request to determine if each slave mobile unit
`has interference avoidance capabilities.” Id. at 21 (emphasis added) (citing
`Ding Decl. ¶ 62; Ex. 1003, col. 4, ll. 38–51). Thus, Petitioner argues, if one
`slave has such interference avoidance capabilities, communications with that
`slave may take place using a modified frequency hopping scheme; if another
`(legacy) slave lacks such interference avoidance capabilities,
`communications take place using a normal mode with default
`communications channels that are not changed based on channel
`performance. Id. at 21 (citing Ding Decl. ¶ 65); see id. at 19–20. Thus,
`Petitioner concludes, the recited communications with the third participant
`over default communications channels occur “while” communicating with
`the second communications device over the first and second sets of
`communications channels, as we have construed the term “while.”
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`Petitioner supports this reasoning with testimony by Dr. Ding, which we
`credit. Id. at 21 (citing Ding Decl. ¶¶ 62–65).
`Patent Owner responds that “the Gerten device is not capable of and
`expressly teaches away from performing this functionality.” PO Resp. 15
`(citing Melendez Decl. ¶ 33). Patent Owner contends that “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.” Id. at 16 (emphasis added). Patent Owner argues that
`Gerten does not disclose a selection kernel capable of maintaining
`synchronization between a master and more than one slave in a piconet, with
`the master and one slave using a default set of channels while the same
`master and a different slave use a different set of channels. Id. We are not
`persuaded that the absence of a specific teaching of such a selection kernel
`supports the conclusion that one of skill in the art would understand Gerten
`to function in the manner Patent Owner suggests.
`In this instance, Petitioner refers to two embodiments of Gerten “in
`which a first participant communicates with a second participant via a
`normal sequence and with another participant via an adaptive hopping
`sequence.” Reply 5. First, Figure 3 of Gerten is reproduced below.
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`Figure 3 illustrates “methodology for determining and communicating
`channels to be avoided to a remote device.” Ex. 1003, col. 2, ll. 4–6. As
`illustrated in the drawing, a master unit performs a discovery process
`(block 110) upon connecting with a new slave unit. Ding Decl. ¶¶ 60, 64. If
`the slave unit is capable of using interference avoidance, the master unit
`begins the process of determining a modified set of channels for use
`(block 120). Id. ¶ 45. If a second slave unable to use interference avoidance
`enters the piconet, standard frequency hopping is used. Supp. Ding Decl.
`¶ 9. Under Patent Owner’s characterization of Gerten, entry of the second
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`
`slave into the network would require the first slave necessarily to revert back
`to the default hopping sequence. Id. ¶ 10. But this would undermine the
`stated benefits of Gerten, which explicitly discloses:
`The above process can be applied to a Bluetooth example
`and includes identification of a Bluetooth device’s ability to
`support interference avoidance, the measurements of signal
`strength on all channels and identification of which channel
`should not be used without violating the FCC rules, 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 and a method of relating necessary
`interference avoidance information to the remote Bluetooth
`devices.
`
`Ex. 1003, col. 4, l. 66–col. 5, l. 9 (emphasis added).
`Second, Figure 1 of Gerten, reproduced above, illustrates an
`embodiment in which a single mobile unit acts as a master in one piconet
`and acts as a slave in a second piconet, where the two piconets are expressly
`described as “independent” and “non-synchronized.” Ex. 1003, col. 3,
`ll. 15–39. As a slave in one piconet, the mobile unit may use interference
`avoidance while maintaining a normal hopping sequence in another piconet
`with a legacy slave unable to use adaptive methods. See Supp. Ding Decl.
`¶ 12. Accordingly, a first participant (i.e., the mobile unit that acts as both
`master and slave) is able to communicate with a participant via a standard
`
`19
`
`
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`IPR2015-00315
`Patent 7,477,624 B2
`
`hopping sequence while communicating with a different participant via an
`adaptive hopping sequence. See Reply 7–82; Supp. Ding Decl. ¶ 12.
`Nor are we persuaded by Patent Owner’s contention that Gerten
`teaches away from the claim limitations. See PO Resp. 15. A prior-art
`reference does not teach away from the claimed subject matter unless the
`prior-art reference also criticizes, discredits, or otherwise discourages the
`solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
`In support of this contention, Patent Owner relies on testimony by
`Dr. Melendez that “the only selection kernels (Gerten Fig. 6 and Fig. 7)
`disclosed for the transceiver (Gerten Fig. 2) in Gerten are expressly not
`capable of providing the subject claimed limitations of the [’]624 patent, as
`is discussed below, and so would serve only to teach away from the claim.”
`Melendez Decl. ¶ 33. Even if Dr. Melendez’s statement is accurate, such
`examples in Gerten do not meet the “teaching away” standard because the
`mere use of examples in a reference that function in a different way does not
`criticize, discredit, or otherwise discourage the solution claimed. In
`addition, “[t]eaching away is irrelevant to anticipation.” Seachange Int’l,
`Inc. v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).
`We conclude that Petitioner has demonstrated, by a preponderance of
`the evidence, that independent claim 5 is anticipated by Gerten.
`
`
`
`2 Petitioner’s argument regarding this embodiment was not made in the
`Petition, but is properly responsive to Patent Owner’s argument that the
`Gerten device is not capable of performing the functionality recited in the
`claims. Nevertheless, we note that our decision does not hinge on this
`embodiment because of the other Gerten embodiment discussed above.
`
`20
`
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`IPR2015-00315
`Patent 7,477,624 B2
`
`
`2. Claim 8
`Petitioner challenges claim 8 as anticipated by Gerten. Pet. 22–25.
`Claim 8 depends from claim 5 and recites means for causing the sets of
`communications channels to be loaded into registers of the communications
`devices after selecting the sets of communications channels. In addressing
`these limitations, Petitioner observes that Gerten discloses that the master
`device and slave devices include register banks that are loaded with
`synthesizer code words. Id. at 22–23 (citing Ex. 1003, col. 2, ll. 47–52;
`col. 7, ll. 11–18). Petitioner contends that references in claim 8 to “causing
`the . . . set[s] of two or more communications channels to be loaded into . . .
`register[s]” does not require that the channels themselves be loaded into
`registers, but that channel identifiers be loaded. Id. at 23.
`Although the claim does not expressly recite “identifiers,” Petitioner’s
`contention is consistent with the Specification of the ’624 patent, which
`explains that “after a participant has received the set of selected
`communications channels, the participant stores data that indicates the
`new set of selected channels.” Id. (quoting Ex. 1001, col. 19, ll. 27–30,
`emphasis by Petitioner). Petitioner’s reasoning that the synthesizer code
`words described by Gerten act to identify channels used in the frequency
`hopping sequences and are loaded in registers of the master and slave
`devices is supported by the declarant testimony of Dr. Ding, which we
`credit. See Ding Decl. ¶ 68.
`Patent Owner does not raise an argument directed to the express
`limitations of claim 8, and particularly does not challenge Petitioner’s
`contention that Gerten’s teaching of loading channel identifiers discloses this
`
`21
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`IPR2015-00315
`Patent 7,477,624 B2
`
`limitation. Patent Owner’s only position with respect to claim 8 is that it
`“depends from independent claim 5 and, therefore, contains all of the
`limitations of claim 5.” PO Resp. 19. Because we disagree with Patent
`Owner’s position expressed with respect to claim 5, we also disagree with it
`with respect to claim 8.
`We conclude that Petitioner has demonstrated, by a preponderance of
`the evidence, that claim 8 is anticipated by Gerten.
`
`
`3. Claims 17 and 20
`Petitioner challenges claims 17 and 20 as anticipated by Gerten.
`Pet. 25–26. Independent claim 17 and dependent claim 20 each recite a
`combination of limitations that appear in claims 5 and 8. Petitioner provides
`a chart explaining where Petitioner addresses these limitations in its analysis
`of claims 5 and 8. Patent Owner does not address claim 17.3 For claim 20,
`Patent Owner asserts that the “means [fo
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