Filed on behalf of Marvell Semiconductor, Inc., MediaTek Inc., and MediaTek
`USA, Inc.
`
`
`
`
`By: Lori A. Gordon
`
`Robert E. Sokohl
`
`Jeffrey T. Helvey
`
`Sterne, Kessler, Goldstein & Fox PLLC
`
`1100 New York Avenue, NW
`
`
`Washington, D.C.
`
`Tel: (202) 371-2600
`
`Fax: (202) 371-2540
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF U.S. PATENT NO. 7,477,624
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ............................................ 1 
`I. 
`Grounds for Standing (37 C.F.R. § 42.104(a)) ........................................ 2 
`II. 
`Identification of Challenge (37 C.F.R. § 42.104(b)) ................................ 2 
`III. 
`Statutory grounds for the challenge. ............................................................ 2 
`A. 
`Citation of Prior Art ..................................................................................... 3 
`B. 
`The ’624 Patent .......................................................................................... 4 
`IV. 
`Overview of the ’624 Patent ........................................................................ 4 
`A. 
`Level of Ordinary Skill in the Art ............................................................... 7 
`B. 
`Claim Construction ...................................................................................... 7 
`C. 
`Prosecution History of Related Patents ....................................................... 8 
`D. 
`Grounds of Rejection ............................................................................... 10 
`V. 
`Ground 1: Gerten anticipates claims 9, 12, 21, and 24. ............................. 10 
`A. 
`1.  Overview of Gerten .................................................................................... 10 
`2.  Gerten anticipates independent claim 9. .................................................... 13 
`3.  Gerten anticipates claim 12. ....................................................................... 20 
`4.  Gerten anticipates independent claim 21 and dependent claim 24. ........... 23 
`Ground 2: The combination of Gerten and Cuffaro renders claims 10, 11,
`B. 
`22, and 23 obvious. ............................................................................................... 24 
`1.  The combination of Gerten and Cuffaro renders claims 10 and 22 obvious.
` .................................................................................................................... 24 
`2.  The combination of Gerten and Cuffaro renders claims 11 and 23 obvious.
` .................................................................................................................... 31 
`Ground 3: The combination of Gendel and Haartsen renders claims 9, 11,
`C. 
`12, 21, 23, and 24 obvious. ................................................................................... 36 
`1.  Overview of Gendel ................................................................................... 36 
`2.  The combination of Gendel and Haartsen renders claim 9 obvious. ......... 38 
`3.  The combination of Gendel and Haartsen renders claim 12 obvious. ....... 46 
`4.  The combination of Gendel and Haartsen renders independent claim 21
`and dependent claim 24 obvious. ............................................................... 49 
`
`
`
`i
`
`

`

`5.  The combination of Gendel and Haartsen renders claims 11 and 23
`obvious. ...................................................................................................... 50 
`Ground 4: The combination of Gendel, Haartsen, and Sage renders claims
`D. 
`10 and 22 obvious. ................................................................................................ 53 
`1.  The combination of Gendel, Haartsen, and Sage discloses the hopping
`sequence claim limitations of claims 10 and 22. ....................................... 53 
`2.  The combination of Gendel, Haartsen, and Sage discloses “the
`performance of the plurality of communications channels is based on
`channel performance data that is transmitted over one or more of the
`plurality of communications channels based on the hopping sequence
`according to the frequency hopping protocol” of claims 10 and 22 ......... 55 
`Conclusion ................................................................................................ 58
`
`VI. 
`
`ii
`
`

`

`
`
`Marvell Semiconductor, Inc., MediaTek Inc., and MediaTek USA, Inc.
`
`jointly petition for inter partes review of claims 9-12 and 21-24 of United States
`
`Patent No. 7,477,624 to Gan, et al., titled “Approach for Managing the Use of
`
`Communications Channels Based on Performance” (hereinafter “the ʼ624 patent”).
`
`The ʼ624 patent is provided as Exhibit 1001.
`
`I. Mandatory Notices (37 C.F.R. § 42.8(a)(1))
`REAL PARTY IN INTEREST: The real parties-in-interest of Petitioners are
`
`Marvell Semiconductor, Inc., MediaTek Inc., and MediaTek USA, Inc.
`
`RELATED MATTERS: The ’624 Patent is involved in the following
`
`proceedings that may affect or be affected by a decision in this proceeding:
`
`Bandspeed, Inc. v. STMicroelectronics NV, et al., 1:14-cv-00437, Bandspeed, Inc.
`
`v. Broadcom Corporation, 1:14-cv-00433, Bandspeed, Inc. v. Texas Instruments
`
`Incorporated, 1:14-cv-00438, Bandspeed, Inc. v. Qualcomm Incorporated, et al.,
`
`1:14-cv-00436, Bandspeed, Inc. v. Marvell Semiconductor, Inc., 1:14-cv-00434,
`
`and Bandspeed, Inc. v. MediaTek, Inc. et al., 1:14-cv-00435, all in the Western
`
`District of Texas.
`
`Petitioners are also contemporaneously filing with this petition two other
`
`petitions for inter partes review of the remaining claims of the ‘624 patent.
`
`LEAD AND BACKUP COUNSEL: Pursuant to 37 C.F.R. § 42.8(b)(3) and
`
`42.10(a), Petitioners appoint Lori A. Gordon (Reg. No. 50,633) as its lead
`
`
`
`- 1 -
`
`

`

`counsel, Robert E. Sokohl (Reg. No. 36,013) as its back-up counsel, and Jeffrey
`
`T. Helvey (Reg. No. 44,757) as its back-up counsel, all at the address: STERNE,
`
`KESSLER, GOLDSTEIN & FOX, 1100 New York Avenue, N.W., Washington, D.C.,
`
`20005, phone number (202) 371-2600 and facsimile (202) 371-2540.
`
`SERVICE INFORMATION: Petitioners consent to electronic service by email at
`
`the email addresses: lgordon-PTAB@skgf.com, rsokohl-PTAB@skgf.com, and
`
`jhelvey-PTAB@skgf.com
`
`II. Grounds for Standing (37 C.F.R. § 42.104(a))
`The undersigned, Marvell, MediaTek Inc., and MediaTek USA, Inc. certify
`
`that the ʼ624 patent is available for inter partes review. Marvell, MediaTek Inc.,
`
`and MediaTek USA, Inc. each certifies that it is not barred or estopped from
`
`requesting this inter partes review on the grounds identified herein.
`
`III. Identification of Challenge (37 C.F.R. § 42.104(b))
`A. Statutory grounds for the challenge.
`Petitioners request review of claims 9-12 and 21-24 on four grounds:
`
`GROUND 1: Claims 9, 12, 21, and 24 are anticipated under 35 U.S.C. § 102(e) by
`
`Gerten. GROUND 2: Claims 10, 11, 22, and 23 are obvious over the combination
`
`of Gerten and Cuffaro. GROUND 3: Claims 9, 11, 12, 21, 23, and 24 are obvious
`
`over Gendel in view of Haartsen. GROUND 4: Claims 10 and 22 are obvious over
`
`Gendel in view of Haartsen and Sage.
`
`- 2 -
`
`

`

`B. Citation of Prior Art
`In support of the grounds of unpatentability cited above, Petitioners cite the
`
`following prior art references:
`
`U.S. Patent No. 6,760,319 to Gerten, et al., provided as Exhibit 1003,
`
`qualifies as prior art under at least 35 U.S.C. §102(e) because it was filed on July
`
`5, 2000 prior to the earliest possible priority date of the ’624 patent (January 25,
`
`2001).
`
`U.S. Patent No. 6,418,317 to Cuffaro, et al., provided as Exhibit 1004,
`
`qualifies as prior art under at least 35 U.S.C. §102(e) because it was filed on
`
`December 1, 1999 prior to the earliest possible priority date of the ’624 patent
`
`(January 25, 2001).
`
`U.S. Patent No. 6,115,407 to Gendel, et al., provided as Exhibit 1005,
`
`qualifies as prior art under at least 35 U.S.C. §102(a) because it issued on
`
`September 5, 2000 prior to the earliest possible priority date of the ’624 patent
`
`(January 25, 2001).
`
`U.S. Patent No. 7,280,580 to Haartsen, provided as Exhibit 1006, qualifies
`
`as prior art under at least 35 U.S.C. §102(e) because it was filed on October 15,
`
`1999 prior to the earliest possible priority date of the ’624 patent (January 25,
`
`2001).
`
`U.S. Patent No. 5,781,582 to Sage, et al., provided as Exhibit 1007,
`
`- 3 -
`
`

`

`qualifies as prior art under at least 35 U.S.C. §102(e) because it was filed on May
`
`4, 1995 prior to the earliest possible priority date of the ’624 patent (January 25,
`
`2001).
`
`IV. The ’624 Patent
`A. Overview of the ’624 Patent
`The ’624 patent relates to “managing the use of communications channels
`
`based on channel performance.” (’624 patent, 1:46-48.) FIG. 2 of the ’624 patent
`
`(reproduced below) depicts a communications network having a number of
`
`communications devices labeled master 210, slave 220 and slave 230. Each of the
`
`communications devices includes a memory, a processor that may execute
`
`instructions stored in memory, and a transceiver
`
`that
`
`is configured
`
`to
`
`transmit and receive
`
`communications with other devices of
`
`the
`
`communications network. (Id., 9:53-59.)
`
`To manage the communications channels,
`
`the system of the ’624 patent selects a first set of
`
`communications
`
`channels
`
`“based on
`
`the
`
`performance of the communications channels and
`
`channel selection criteria.” (Id., 4:11-13.) “For example, the selection criteria may
`
`be to select the good channels but not the bad channels.” (Id., 6:53-55.) At start-up
`
`- 4 -
`
`

`

`of the communications network, the system selects an initial set of channels. (Id.,
`
`6:19-21.) The system then periodically selects sets of channels based on later
`
`performance of the communications channels. (Id., 4:14-16.)
`
`The ’624 patent describes various well-known techniques for measuring
`
`performance of communications channels. (See id., 10:19-14:59.) The disclosed
`
`techniques utilize special test packets (10:33-12:35), received signal strength
`
`indicators (RSSI) (12:37-13:2), cyclic redundancy checks (CRC) (13:50-14:6), and
`
`forward error correction (FEC) (14:19-41). The system of the ’624 patent classifies
`
`a communication channel based on channel performance and one or more
`
`classification criteria. (Id., 14:63-65.) “For example, a channel may be classified as
`
`‘good’ or ‘bad’ based on the results of the channel performance testing by applying
`
`one or more performance measurements to specified performance criteria.” (Id.,
`
`14:65-15:2.)
`
`“Channel testing and classification may be performed by a master” (e.g.,
`
`master 210) “or other participants, such as slaves” (e.g., slaves 220 or 230). (Id.,
`
`16:42-43.) “In addition, channel testing and classifications from multiple
`
`participants may be combined and/or weighted to determine an overall, or final,
`
`classification for the channels of interest.” (Id., 16:43-46.)
`
`
`
`The ’624 patent describes one technique for a “‘referendum’ approach”
`
`involving voting by participants. (Id., 16:47-49.) In the exemplary voting
`
`- 5 -
`
`

`

`technique, a participant has a “‘vote’ on whether to use the channel or not.” (Id.,
`
`16:65-66.) For example, a vote may indicate that the participant prefers not to use
`
`the channel (e.g., participant finds channel “bad”) or a vote may indicate that the
`
`participant prefers to use the channel (e.g., participant finds channel “good”). (Id.,
`
`16:66-17:4.) A certain number of total votes “is required for the channel to be
`
`judged ‘good’ and therefore available for use by the FH communications system.”
`
`(Id., 17:5-7.) “Not every participant needs to have input for each channel under
`
`consideration.” (Id., 17:29-30.) As explained in the ’624 patent, participants “may
`
`collect and combine the channel performance information, or votes, to determine
`
`the final channel classifications.” (Id., 17:30-34.)
`
`In embodiments, the devices of the ’624 patent communicate using a
`
`frequency hopping (FH) protocol such as used in Bluetooth communications. The
`
`’624 patent explains that a FH protocol “uses a frequency hopping signal
`
`transmission technique in which information or data is transmitted over a set of
`
`frequencies in a communications frequency band.” (Id., 2:5-9.) These frequencies
`
`are often referred to as channels. (Id., 2:19-20.) A FH protocol utilizes a hopping
`
`sequence, which is “[t]he order in which the communications network hops among
`
`the set of frequencies.” (Id., 2:11-13.) For example, “[t]he FH system transmits
`
`data on one channel, hops to the next channel in the hopping sequence to transmit
`
`more data, and continues by transmitting data on subsequent channels in the
`
`- 6 -
`
`

`

`hopping sequence.” (Id., 2:20-24.) “The use of an FH protocol helps to reduce
`
`problems with interference from other communications systems and other
`
`interference sources.” (Id., 2:25-27.)
`
`B. Level of Ordinary Skill in the Art
`One of ordinary skill in the art would have a B.S. degree in Electrical and/or
`
`Computer Eng., or an equivalent field, as well as at least 3-5 years of academic or
`
`industry experience in the wireless communications field. (Ding Decl.1, ¶¶14-16.)
`
`C. Claim Construction
`Except for the exemplary terms set forth below, construed under the
`
`broadest reasonable interpretation standard, the terms are to be given their plain
`
`and ordinary meaning as understood by one of ordinary skill in the art and
`
`consistent with the disclosure. Petitioners reserve the right to present different
`
`constructions in the District Court where a different claim construction standard
`
`applies.
`
`Hopping Sequence [claims 9, 10, 22, and 24]: The term “hopping
`
`sequence”2 should be construed as the order in which the network hops among a
`
`set of frequencies. The term “hopping sequence” is a well-understood term of art.
`
`
`1 The Declaration of Dr. Zhi Ding is provided as Exhibit 1002.
`2 The term “the hopping sequence” in claims 22 and 24 lacks antecedent
`
`basis.
`
`- 7 -
`
`

`

`(Ding Decl., ¶35.) The specification uses the term in accordance with this
`
`understood meaning: “The order in which the communication network hops among
`
`the set of frequencies is known as the hopping sequence.” (’624 patent, 2:11-13.)
`
`Vote [claims 11 and 23]: The term “vote” is not explicitly defined in the
`
`specification. However, a “vote” is a common term meaning an expression of a
`
`choice (an indication). (Am. Her. Dict., 2nd Col. Ed., Exh. 1011, p. 1356.)
`
`Therefore, a “vote[s] to use the particular communications channel” means at least
`
`an indication whether to use (or not to use) the communications channel or an
`
`indication whether the communication channel is good or bad. (See, e.g., ’624
`
`patent, 16:66-17:4.)
`
`D. Prosecution History of Related Patents
`The ’624 patent is one patent in a family of patents sharing the same
`
`specification.3 The prosecution of these patents is highly relevant because the
`
`Patent Owner has pursued claims having substantially identical claim terms in the
`
`’624 patent. For example, claim 1 of the ’418 patent (reproduced below), drafted as
`
`a method claim, shares limitations with claims 9 and 10 of the ’624 patent
`
`(reproduced below in part), drafted as computer-readable medium claims.
`
`Although not shown below, claims 21 and 22 of the ’624 patent also share these
`
`3 The ’624 patent is a continuation of U.S. Patent No. 7,027,418 (“the ’418
`
`patent”). The ’418 patent is provided as Exh. 1015.
`
`- 8 -
`
`

`

`
`
`same limmitations wwith claim 1 of the ’4418 patent.
`
`
`
`
`
`
`
`
`
`
`
`OOn Octoberr 6, 2011,
`
`
`
`
`
`
`an inter paartes reexaamination rrequest waas filed agaainst
`
`
`
`
`
`
`
`
`
`
`
`claims oof the ’4188 patent, inncluding cllaim 1. Duuring the reeexaminatiion proceeeding
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`In respoonse, Patennt Owner ccancelled cclaim 1, innstead of ararguing pattentability
`
`
`
`
`
`
`
`
`
`by Gertenn and
`
`over
`
`
`
`(Controol No. 95/0000,648), thhe Office rrejected claaim 1 as aanticipated
`
`
`
`
`
`
`
`
`
`
`
`
`
`as anticcipated by
`
`
`
`Gendel. (NNon-Final
`
`
`
`Office Acttion, Exh.
`
`1008, pp.
`
`
`
`34-35, 92--93.)
`
`
`
`
`
`
`
`
`
`either GGerten or GGendel. (Seee Housekkeeping Ammendment,, Exh. 10009, p. 2.) TThus,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent OOwner apppears to ackknowledgee that thesee shared limmitations oof claims 99 and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`10 of thhe ’624 paatent and cclaims 21
`
`
`
`patent weere knownn and
`
`
`
`
`
`and 22 off the ’624
`
`- 9 -
`
`

`

`moreover were disclosed by both Gerten and Gendel.4
`
`V. Grounds of Rejection
`A. Ground 1: Gerten anticipates claims 9, 12, 21, and 24.
`1. Overview of Gerten
`Gerten is directed “to a system and method for removing channels in a
`
`frequency hopping scheme having strong interference or interferers in a wireless
`
`communication system.” (Gerten, 2:34-37.) FIG. 1 of Gerten (reproduced below)
`
`depicts a network having three piconets 10, 12, and 14. (Id., 3:8-12.) As shown in
`
`FIG. 1, the first piconet 10 has a plurality of mobile units 20 including a master
`
`mobile unit and a slave mobile unit. (Id., 3:27-31.) The master mobile unit in
`
`Gerten is a device “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., 3:22-26.)
`
`
`4 The limitations of claims 11, 12, 23, and 24 of the ’624 patent are not as
`
`directly mirrored to the claims of the ’418 patent.
`
`- 10 -
`
`

`

`
`
`The mobile device 20 of Gerten, depicted below in FIG. 2, includes a
`
`transceiver 32, a frequency synthesizer 60 having a memory 62, and a central
`
`control system 30 that can include “a processor or the like that is programmed to
`
`control and operate various components within the mobile communication unit 20
`
`in order to carry out various functions.” (Id., 3:44-48.) The “frequency synthesizer
`
`component 60 cooperates with the central control system 30 and a device clock 64
`
`to provide frequency hopping for the mobile communication unit 20.” (Id., 3:65-
`
`4:1.)
`
`- 11 -
`
`

`

`
`
`In operation, a master device in the piconet determines “which channels
`
`have [the] strongest interference.” (Id., 4:50-51.) For example, the master device
`
`may employ “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., 2:37-41.) The master
`
`device communicates the channels to be avoided (the bad channels) to a remote
`
`device. (Id., 2:41-47.) The master and remote device then modify their respective
`
`hopping sequences and begin transmitting data at the modified hopping sequence
`
`with the remaining N-M good channels. (Id., 2:47-52.) The master device
`
`“periodically updates the channels to be avoided.” (Id., 4:58-59.) When a
`
`subsequent update occurs, the master device again communicates the channels to
`
`be avoided to a remote device and they both modify their respective hopping
`
`- 12 -
`
`

`

`sequences again. (Id., 4:62-65.)
`
`2. Gerten anticipates independent claim 9.
`a) Gerten discloses “[a] computer-readable medium carrying
`instructions for managing the use of communications channels for a
`communications system, wherein processing of the instructions by
`one or more processors causes” [9P] a set of actions to occur.
` Gerten discloses “[a] computer-readable medium carrying instructions for
`
`managing the use of communications channels for a communications system,
`
`wherein processing of the instructions by one or more processors causes” the
`
`channel selection actions of limitations [9A] and [9C] and the channel use actions
`
`of limitations [9B], [9D], and [9F] (discussed below) to occur.
`
`As illustrated above in FIG. 1, a piconet of Gerten is a “communications
`
`system”: “A piconet is a collections [sic] of devices that can be connected via
`
`Bluetooth technology.” (Gerten, 3:8-12.) The central control system 30 in the
`
`master mobile unit of the piconet includes “one or more processors” to cause the
`
`device to perform functions: “[a] central control system 30 is responsible for
`
`controlling general operations of the mobile communication unit 20. The central
`
`control system 30 can include a processor or the like that is programmed to
`
`control and operate various components within the mobile communication unit 20
`
`in order to carry out various functions.” (Gerten, 3:40-48.) One of the functions
`
`controlled and operated by the processor is the channel identification algorithm of
`
`Gerten. This function is a function “for managing the use of communications
`
`- 13 -
`
`

`

`channels”: “The identification algorithm can use hardware (e.g., measurement
`
`power component 66) and software (e.g., residing in central control system 30)
`
`to read signal strength of channels and determine which channels to avoid.”
`
`(Gerten, 5:20-24, emphasis added.) It is well-known that software includes
`
`“instructions.” (Ding Decl., ¶42.)
`
`The central control system 30 of Gerten also includes “[a] computer-
`
`readable medium”: “The memory component 62 may include a plurality of register
`
`banks for storing synthesizer codes that are employed to facilitate frequency
`
`hopping. Alternatively, the register banks may reside in the central control system
`
`30 (e.g., in a memory component, onboard registers or memory in a processor
`
`or in separate register components).” (Gerten, 4:1-6, emphasis added.) In order for
`
`the software that resides in central control system 30 to be used for channel
`
`identification, the set of instructions making up the software is necessarily stored in
`
`a memory and “process[ed] . . . by [the] one or more processors.” (Ding Decl.,
`
`¶43.) Gerten recognized that these details were well-understood and need not be
`
`spelled out: “The manner in which the processor can be programmed to carry out
`
`the functions relating to the present invention will be readily apparent to those
`
`having ordinary skill in the art based on the description provided herein.” (Gerten,
`
`3:48-52, emphasis added.)
`
`b) Gerten discloses “selecting, based upon performance of a plurality
`of communications channels at a first time, a first set of two or
`
`- 14 -
`
`

`

`channels
`communications
`more
`communications channels”5 [9A].
` Gerten “select[s] . . . a first set of two or more communications channels
`
`of
`
`from
`
`the plurality
`
`from the plurality of communications channels” “based upon performance of a
`
`plurality of communications channels”: “the master device performs a channel
`
`scan at completion of its last transmission (step 120) [“at a first time”] and
`
`determines which channels have strongest interference.” (Gerten, 4:47-51.) For
`
`example, the master unit of Gerten performs signal strength measurements on N
`
`channels in a frequency hopping scheme (“the plurality of communications
`
`channels”) to determine each channel’s performance. (Id., 2:37-41.) Based on this
`
`performance data, the master unit determines “M number of channels (M being an
`
`integer less than or equal to N) to avoid.” (Id.) The system of Gerten then
`
`“modif[ies] the frequency hopping scheme to avoid transmission over the M
`
`channels.” (Id., 2:41-42.) Gerten explains that M could be four. (Id., 4:24-37.)
`
`Accordingly, “(N-M) channels” are selected to use for frequency hopping for
`
`interference avoidance. (Id., 2:51-52, emphasis on the plural s added.) Therefore,
`
`the resulting set of channels (N-M) is a “first set of two or more communications
`
`channels from the plurality of communications channels.” (Ding Decl., ¶44.)
`
`
`5 As discussed above, Patent Owner
`
`tacitly acknowledged during
`
`reexamination of the ’418 patent that Gerten discloses this limitation.
`
`- 15 -
`
`

`

`c) Gerten discloses “the first set of two or more communications
`channels to be used for communications between a pair of
`participants” [9B].
`
` After the master unit of Gerten selects the first set of two or more
`
`communications channels, the master unit communicates the M channels to be
`
`avoided “to wireless units involved in the communication system, so that the
`
`members of the wireless communication system can frequency hop together over
`
`the modified frequency hopping scheme,” using namely the (N-M) channels.
`
`(Gerten, 2:43-47, emphasis added.) Once the mobile units “modify their respective
`
`hopping sequences . . . [then i]n step 170, the master device and the remote device
`
`begin transmitting data at the modified hopping sequences,” using namely the (N-
`
`M) channels. (Id., 4:54-58.) Accordingly, in Gerten, “the first set of two or more
`
`communications channels [are] used for communications between a pair of
`
`participants.”
`
`d) Gerten discloses “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”6 [9C].
`After establishing a modified hopping sequence “at a first time”, the master
`
`unit of Gerten “periodically updates the channels to be avoided.” (Gerten, 4:58-59,
`
`
`6 As discussed above, Patent Owner
`
`tacitly acknowledged during
`
`reexamination of the ’418 patent that Gerten discloses this limitation.
`
`- 16 -
`
`

`

`emphasis added.) When a subsequent update occurs (“at a second time that is later
`
`than the first time”), the master unit repeats the identification process described
`
`above: the master unit determines [M2] number of channels ([M2] being an integer
`
`less than or equal to N) to avoid. (Id., 2:37-52; see also id., 9:64-10:2.) The system
`
`of Gerten then “modif[ies] the frequency hopping scheme to avoid transmission
`
`over the [M2] channels.” (Id., 2:41-42.) The resulting set of channels (N-M2) is the
`
`“second set of two or more communications channels from the plurality of
`
`communications channels.” (Ding Decl., ¶46.)
`
`e) Gerten discloses “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” [9D].
`
` The first set of two or more communications channel are used until the
`
`master unit subsequently updates the channels to be avoided. (Ding Decl., ¶47.)
`
`When a subsequent update occurs (“at a second time”), the master unit repeats the
`
`identification process and communicates the new M2 channels to avoid to wireless
`
`units involved in the communication system. (Id.) The mobile units “modify their
`
`respective hopping sequences…[then i]n step 170, the master device and the
`
`remote device begin transmitting data at the modified hopping sequences.”
`
`(Gerten, 4:54-58.) Accordingly, in Gerten, “the second set of two or more
`
`communications channels [are] used for communications between the pair of
`
`participants instead of the first set of two or more communications channels.”
`
`- 17 -
`
`

`

`f) Gerten discloses “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 a hopping
`sequence and is not changed based on the performance of the
`plurality of communications channels” [9E].
`
`The piconet of Gerten includes a master unit (“first participant”) and
`
`multiple slave units (“second [and third] participant”). (See Gerten, FIG. 1; see
`
`also id., 3:10-18.) “A master unit is 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., 3:22-26.) The wireless
`
`communications devices of Gerten have two modes of operation – normal mode
`
`and interference avoidance mode: “The frequency hopping scheme can be
`
`modified by providing a first register bank storing synthesizer codes for
`
`generating frequency hopping over the N total channels in normal mode with an
`
`alternate register bank storing synthesizer codes for generating frequency
`
`hopping over N-M channels for interference avoidance mode.” (Id., 2:47-52,
`
`emphasis added.)
`
`The master device (in a communication pair) determines if the remote device
`
`has interference avoidance capabilities. (Id., 4:42-44.) If not, the “normal mode” of
`
`operation is used for communications; otherwise, the interference avoidance mode
`
`is used for communications. (Id. 4:44-52.) “Normal mode” in Gerten uses all N
`
`available frequency channels for “legacy” devices that cannot perform interference
`
`- 18 -
`
`

`

`avoidance. (Ding Decl., ¶50.) The N channels loaded in the first register for
`
`“normal mode” are therefore a “default set of two or more communications
`
`channels” that is “not changed based on the performance of the plurality of
`
`communications channels.” The default N set of channels in Gerten is “associated
`with a hopping sequence.” (See e.g. Gerten, 3:2-7, 7:6-8.)
`g) Gerten discloses “the computer-readable medium
`further
`comprising instructions, which when processed by the one or more
`processors, cause: the first participant communicating 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” [9F].
`
`FIG. 1 of Gerten depicts a piconet having a master mobile unit in
`
`communication with 4 other slave devices. (Ding Decl., ¶52.) In such a network,
`
`the master device of Gerten performs a service discovery request to determine if
`
`each slave device has interference avoidance capabilities. (Ding Decl., ¶53; see
`
`also Gerten, 4:38-51.) Accordingly, when Gerten’s interference avoidance scheme
`
`is applied to the piconet 10, the master mobile unit 20 (“first participant”)
`
`wirelessly communicates with a slave mobile unit 20 (“second participant”) using
`
`the interference avoidance mode during the time that the master device is
`
`wirelessly communicating with another slave device that is a legacy device (“third
`
`participant”) using the normal mode. (Ding Decl., ¶54.) Accordingly, Gerten
`
`discloses “the first participant communicating with a third participant over the
`
`- 19 -
`
`

`

`default set of two or more communications channels while7 communicating with
`
`the second participant.” As described above, the master device communicates
`
`“over the first set of two or more communications channels” and “over the second
`
`set of two or more communications channels.”
`
`3. Gerten anticipates claim 12.
`a) Gerten discloses “[the] computer-readable medium . . . further
`comprising instructions, which when processed by the one or more
`processors, causes: after selecting the first set of two or more
`communications channels, causing the first set of two or more
`communications channels to be loaded into a register of each
`participant of the pair of participants” [12A].
`The wireless communications devices of Gerten include “a first register
`
`bank storing synthesizer codes for generating frequency hopping over the N total
`
`channels in normal mode with an alternate register bank storing synthesizer
`
`codes for generating frequency hopping over N-M channels for interference
`
`avoidance mode.” (Gerten, 2:47-52, emphasis added.) Both the master and slave
`
`
`7 The term “while” is a common term meaning “during the time that.” (Am.
`
`Her. Dict., 2nd College Ed., Exh. 1012, p. 1376.) Therefore, claim 9 does not
`
`require simultaneous communications – only that the master device can
`
`communicate with multiple devices during the same time period (e.g., interleaved
`
`communications). Indeed, the ’624 patent does not disclose any mechanism that
`
`would allow true simultaneous communication with multiple devices.
`
`- 20 -
`
`

`

`device of Gerten (“pair of participants”) have registers: “the master device and
`
`the slave device define an alternate register bank of N-M channels…and [i]n step
`
`330, the alternate register bank is loaded with N-M synthesizer code words for
`
`the N-M channels with the synthesizer code w