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 IPR2015-003161
`U.S. Patent 7,477,624 B2
`
`
`
`______________
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`
`
`
`1 Case IPR2015-01581 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 9, 12, 21, AND 24 ....... 4 
`A.  Gerten Discloses Transmitting and Receiving on an Adapted
`Sequence While Transmitting and Receiving on a Default
`Sequence in Claims 9 and 24 ............................................................... 4 
`Gerten Anticipates Claims 12 and 21 ................................................... 8 
`B. 
`IV.  GROUND 2: GERTEN IN VIEW OF CUFFARO RENDERS
`CLAIMS 10, 11, 22, AND 23 OBVIOUS ...................................................... 9 
`A. 
`The Combination of Gerten and Cuffaro Discloses or Suggests
`Transmitting Performance Data Over One or More Channels in
`Claims 10 and 22 .................................................................................. 9 
`The Combination of Gerten and Cuffaro Discloses or Suggests
`Selecting a Channel Based on a Specified Number of Votes in
`Claims 11 and 23 ................................................................................ 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 9, 12, 21, AND 24 OBVIOUS ...................................................... 15 
`A. 
`The Combination of Gendel and Haartsen Discloses
`Communicating Using an Adapted Sequence While
`Communicating Using a Default Sequence in Claims 9 and 24 ........ 15 
`The Combination of Gendel and Haartsen Discloses Selecting
`Based on Performance in Claims 9 and 21 ........................................ 17 
`The Combination of Gendel and Haartsen Renders Claim 12
`Obvious .............................................................................................. 19 
`D.  Gendel and Haartsen Are Analogous Art, and a POSA Would
`Combine Their Conceptual Teachings ............................................... 19 
`-i-
`
`
`B. 
`
`C. 
`
`B. 
`
`C. 
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`

`
`VI. GROUND 4: GENDEL IN VIEW OF HAARTSEN AND SAGE
`
`RENDERS CLAIMS 10 AND 22 OBVIOUS ........................................... ..20
`
`VI.  GROUND 4: GENDEL IN VIEW OF HAARTSEN AND SAGE
`RENDERS CLAIMS 10 AND 22 OBVIOUS ............................................. 20 
`VII.  THE INSTITUTED CLAIMS ARE INVALID ........................................... 21 
`
`VII. THE INSTITUTED CLAIMS ARE INVALID ......................................... ..21
`
`
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`-ii-
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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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`-1-
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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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`-2-
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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. 7,027,418,3 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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`-3-
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`III. GROUND 1: GERTEN ANTICIPATES CLAIMS 9, 12, 21, AND 24
`
`A. Gerten Discloses Transmitting and Receiving on an Adapted Se-
`quence While Transmitting and Receiving on a Default Sequence
`in Claims 9 and 24
`
`Gerten discloses each limitation of claims 9 and 24 of the ’624 patent, in-
`
`cluding “the first participant communicating with a third participant over the de-
`
`fault set of two or more communications channels while communicating with the
`
`second participant over the first set of two or more communications channels.” Pa-
`
`tent Owner states that “Gerten does not disclose any embodiments in which the
`
`transceiver/selection kernel is configured to transmit to and receive from one de-
`
`vice over certain communications channels while also being configured to transmit
`
`to and receive from another device over other communication channels, and, in
`
`fact, the Gerten device is not capable of and expressly teaches away from perform-
`
`ing this functionality.” Response at 14-15 (emphasis original). Specifically, the
`
`Response argues that “there is no actual disclosure of any method or device (neces-
`
`sarily including a selection kernel) for modifying a Bluetooth hop sequence to
`
`avoid channels while also communicating with devices that are not avoiding chan-
`
`nels” 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 selec-
`
`tion kernel back to use ‘mod 79’ as shown in FIG. 6, causing all of the devices in
`
`the entire piconet (i.e. the master and all slaves) to use the default set of communi-
`
`
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`-4-
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`cations channels.” Response at 18-19. Patent Owner’s argument 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
`
`use (block 120). Id. at ¶ 45. When a second slave unit enters the piconet, if it is
`
`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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`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.
`
`Specifically, Patent Owner argues that “Gerten’s modified frequency hopping
`
`schemes” do not anticipate “because the master cannot maintain synchronization
`
`with both slaves (i.e. one slave with interference-avoidance capabilities and one
`
`
`
`
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`-6-
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`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 of Gerten further confirms that a mobile unit acting as a slave in
`
`one piconet can utilize Gerten’s AFH interference avoidance. Ex. 1017 at ¶ 12.
`
`Simultaneously, 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 hopping sequence, while also communicating with a dif-
`
`
`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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`-7-
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`ferent 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 systems requiring all
`
`devices in a piconet to by synchronized (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 that is able to trans-
`
`mit to and receive from a second communications device over an adaptive hopping
`
`sequence while communicating with a third communications device over a stand-
`
`ard sequence. Therefore, Patent Owner’s arguments with respect to claims 9 and
`
`24 are without merit, and the PTAB should find that these claims are anticipated.
`
`B. Gerten Anticipates Claims 12 and 21
`
`Patent Owner did not distinguish dependent claim 12 beyond the analysis of
`
`independent claim 9. Response at 19. Therefore, claim 12 is anticipated by Gerten
`
`for at least the reasons discussed above. Additionally, the Response concedes that
`
`claim 21 is anticipated by Gerten. See id. at 9-10 (“However, with the exception
`
`of Ground 1, claim 21, these proposed grounds of unpatentability fail for several
`
`reasons.”) (emphasis added). For at least the reasons stated in the Petition and In-
`
`stitution Decision, claim 21 is also anticipated by Gerten.
`
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`-8-
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`IV. GROUND 2: GERTEN IN VIEW OF CUFFARO RENDERS CLAIMS
`10, 11, 22, AND 23 OBVIOUS
`
`A. The Combination of Gerten and Cuffaro Discloses or Suggests
`Transmitting Performance Data Over One or More Channels in
`Claims 10 and 22
`
`The combination of Gerten and Cuffaro discloses or suggests each limitation
`
`of dependent claims 10 and 22, including “channel performance data that is trans-
`
`mitted over one or more of the plurality of communications channels.” The Re-
`
`sponse 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-
`
`-9-
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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 11 and 23
`
`The combination of Gerten and Cuffaro discloses or suggests each limitation
`
`of dependent claims 11 and 23, including “for a particular communications channel
`
`to be selected, the particular communications channel receives a specified number
`
`of votes.” The Response argues that Gerten and Cuffaro fail to teach utilizing a
`
`channel selection criterion where a particular communications channel is selected
`
`if it receives a specified number of votes. Response at 23-28. This argument relies
`
`on Patent Owner’s improperly narrow reading of “votes to use a particular com-
`
`munications channel” to argue that the art must teach that a “mobile station” ex-
`
`presses 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 com-
`
`bined. Ex. 1002 at paragraphs
`
`116-121. The voting feature of
`
`Cuffaro compiles interference measurements over a plurality of samples to gener-
`
`ate a plurality of votes (see FIG 5B, 7:23-32). These votes are expressions of pref-
`
`erence for use of a particular channel, as noted by the PTAB’s decision. As de-
`
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`-11-
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`
`scribed in the Petition, the voting system of Cuffaro teaches replacing an assigned
`
`frequency channel with an unassigned frequency channel having the maximum
`
`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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`-12-
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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.
`
`Specifically, a POSA reading Cuffaro and its teaching of tallying positive
`
`votes based on interference measurements would find it obvious to set a “specific”
`
`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, 36-40. Patent Owner describes the different features of cellular and Bluetooth
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`networks and suggests that a POSA would not combine and apply the underlying
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`concepts of cellular’s master (base station)/slave (mobile station) to the Bluetooth
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`master/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, 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), founders of 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
`
`actions to systems where the uplink/downlink channels are shared. Id.
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`The proposed POSA has been agreed upon as having, e.g., a degree in elec-
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`trical engineering. Such a person obtaining knowledge in the area of interference
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`avoidance would not presume that the knowledge was limited to specific frequency
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`ranges. Id. at ¶ 17. This is especially true in light of the close frequency ranges of
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`cellular and Bluetooth communications (1.9 GHz vs. 2.4 GHz). Id. Further,
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`whether the particular frequency band is licensed or unlicensed does not change
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`the need to avoid interference. Id. Accordingly, the teachings of Gerten and
`
`Cuffaro would be 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 9, 12, 21, AND 24 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 9 and 24
`
`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
`
`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
`
`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”
`
`receiver, whereas Petitioner argued that subsystems 122, 124 and 126 which im-
`
`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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`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
`
`sytem 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
`
`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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`1002 at ¶ 147. It would make little sense to create specific Bluetooth interference
`
`avoidance systems that do not function with legacy devices. Ex. 1013 at ¶ 19. Pa-
`
`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.
`
`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-
`
`munications channels and while communicating with the second participant over
`
`the second set of two or more communications channels.”
`
`B.
`
`The Combination of Gendel and Haartsen Discloses Selecting
`Based on Performance in Claims 9 and 21
`
`The combination of Gendel and Haartsen discloses all limitations of claims 9
`
`and 216 including “selecting, based upon performance of the plurality of communi-
`
`cations channels at a second time that is later than the first time, a second set of
`
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`6 As mentioned in Section III.B above, Patent Owner concedes that Gerten antici-
`
`pates claim 21.
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`two or more communications channels from the plurality of communications chan-
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`nels.” Patent Owner also argues that the proposed combination does not teach this
`
`limitation. To make this argument, Patent Owner misconstrues Gendel and also
`
`continues to read additional limitations into the claim language. Patent Owner ar-
`
`gues 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.
`
`Response at 34. No such requirement exists in the claims. Patent Owner does not
`
`dispute that the performance of the current segment (first set of plurality of chan-
`
`nels) is monitored, and the current segment may be marked for replace