UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`QUALCOMM INC.,
`Petitioner
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner
`___________________________________
`IPR2015-005311
`U.S. Patent No. 8,542,643 B2
`
`Title: Approach for Managing the Use of Communications Channels Based on
`Performance
`
`___________________________________
`
`DECLARATION OF DR. JOSE LUIS MELENDEZ IN SUPPORT OF
`PATENT OWNER RESPONSE RELATED TO INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,542,643
`___________________________________
`
`
`
`
`1 IPR2015-01582 has been joined with IPR2015-00531
`
`Bandspeed, Inc.
`EXH. 2001
`Patent Owner – Bandspeed, Inc.
`Petitioner – Qualcomm Inc.
`IPR2015-00531
`
`

`
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................................................... 1
`INTRODUCTION ......................................................................................................................... .. 1
`
`SUMMARY OF OPINIONS ........................................................................................................... 3
`SUMMARY OF OPINIONS ......................................................................................................... .. 3
`
`III.
`III.
`
`QUALIFICATIONS AND EXPERIENCE ..................................................................................... 5
`QUALIFICATIONS AND EXPERIENCE ................................................................................... .. 5
`
`A.
`A.
`
`B.
`B.
`
`C.
`C.
`
`EDUCATION AND WORK EXPERIENCE ..................................................................... 5
`EDUCATION AND WORK EXPERIENCE ................................................................... .. 5
`
`COMPENSATION STATEMENT .................................................................................... 7
`COMPENSATION STATEMENT .................................................................................. .. 7
`
`INFORMATION CONSIDERED IN FORMING OPINION ............................................ 8
`INFORMATION CONSIDERED IN FORMING OPINION .......................................... .. 8
`
`IV.
`
`STATEMENT OF LEGAL AND CLAIM CONSTRUCTION PRINCIPLES ............................... 8
`STATEMENT OF LEGAL AND CLAIM CONSTRUCTION PRINCIPLES ............................. .. 8
`
`A.
`A.
`
`B.
`B.
`
`C.
`C.
`
`CLAIM CONSTRUCTION LAW ...................................................................................... 8
`CLAIM CONSTRUCTION LAW .................................................................................... .. 8
`
`ANTICIPATION ................................................................................................................ 9
`ANTICIPATION .............................................................................................................. .. 9
`
`OBVIOUSNESS ............................................................................................................... 10
`OBVIOUSNESS ............................................................................................................. .. 10
`
`V.
`
`CLAIM CONSTRUCTIONS ......................................................................................................... 10
`CLAIM CONSTRUCTIONS ....................................................................................................... .. 10
`
`A. “REPLACING…A BAD CHANNEL WITH A GOOD CHANNEL”..................................... 10
`A. “REPLACING. . .A BAD CHANNEL WITH A GOOD CHANNEL” ................................... .. 10
`
`B. “CHANNEL HOPPING SEQUENCE” .................................................................................... 11
`B. “CHANNEL HOPPING SEQUENCE” .................................................................................. ..11
`
`VI.
`VI.
`
`PERSON OF ORDINARY SKILL IN THE ART ......................................................................... 11
`PERSON OF ORDINARY SKILL IN THE ART ....................................................................... ..11
`
`VII. OVERVIEW OF THE ‘643 PATENT ........................................................................................... 12
`VII.
`OVERVIEW OF THE ‘643 PATENT ......................................................................................... .. 12
`
`VIII. PATENTABILITY OF CLAIMS 1-15 OF THE ‘643 PATENT OVER HAARTSEN,
`VIII.
`PATENTABILITY OF CLAIIVIS 1-15 OF THE ‘643 PATENT OVER HAARTSEN,
`GERTEN, AND DICKER ............................................................................................................. 13
`GERTEN, AND DICKER ........................................................................................................... .. 13
`
`A.
`A.
`
`THE “LOADING A SET OF [DEFAULT/GOOD] CHANNELS INTO A [DEFAULT/GOOD]
`THE“IDADINGASEI‘OF [DEFAULT/GOOD] CHANNEIS INTOA [DEFAULT/GOOD]
`CHANNEL REGISTER,”, “IF A SELECTION KERNEL ADDRESSES A BAD CHANNEL
`CHANNELRFGIS’IER,”, “IFASELFCIIONKERNELADDRESSFS ABADCI-IANNEL
`STORED IN A PARTICULAR LOCATION OF THE DEFAULT CHANNEL REGISTER,”
`S’FOREDINAPAR'IICULARIDCATION OF'IHEDEFAULTCI-IANNE1.RFGIS’IER,”
`AND “…A GOOD CHANNEL SELECTED FROM … CHANNELS LOADED IN THE
`AND“...AGOODCHANNE1.SF1ECI‘FDFROM...CHANNE1SIDADFDINTI-IE
`GOOD CHANNEL REGISTER” LIMITATIONS IN RESPECT TO HAARTSEN .......................... 13
`GOODCHANNELRFGISTER” LIMII‘A'IIONSINRFSPFCI‘TOHAARTSEN........................ .. 13
`
`
`
`i
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`

`
`
`
`B.
`
`C.
`
`D.
`
`THE “SELECTION KERNEL ADDRESSES A BAD CHANNEL” and “THEN REPLACING,
`BY THE SELECTION KERNEL…WITH A GOOD CHANNEL SELECTED FROM…THE
`GOOD CHANNEL REGISTER” LIMITATIONS IN RESPECT TO GERTEN ................................ 20
`
`THE “REMOVING A PARTICULAR GOOD CHANNEL FROM THE GOOD CHANNEL
`REGISTER, BASED AT LEAST IN PART ON A GOOD CHANNEL USAGE TIMEOUT
`VALUE” LIMITATIONS IN RESPECT TO DICKER AND GERTEN ........................................... 25
`
`THE “RESCANNING THE DEFAULT CHANNELS, BASED AT LEAST IN PART ON THE
`NUMBER OF GOOD CHANNELS” LIMITATIONS IN RESPECT TO DICKER ........................... 27
`
`
`
`ii
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`
`I.
`
`INTRODUCTION
`1. My name is Dr. Jose Luis Melendez. I am an independent expert in
`
`the fields of imaging and wireless technologies, and I reside in Lakeway, Texas, a
`
`community in close proximity to the Texas capital city of Austin. I have been
`
`asked to and have conducted a review of US Patent 6,760,319 (“Gerten”),
`
`US Patent 7,280,580 (“Haartsen”), and US Patent 6,249,540 (“Dicker”) to
`
`determine whether or not these documents are invalidating prior art to Patent
`
`Owner’s United States Patent No. 8,542,643 (“’643 Patent”). Additionally, I have
`
`reviewed the IPR2015-01582 petition submitted by Qualcomm Inc. (“Petitioner”
`
`or “Qualcomm”) along with its exhibits, including the report of Dr. Zhi Ding
`
`(“Ding Declaration”).2 In this report, I will address only certain aspects of the
`
`petition, patent claims, and Ding Declaration that I believe will be of particular
`
`benefit to the Patent Trial and Appeal Board (“PTAB” or “Board”) in evaluating
`
`the petition, in light of the record and totality of stakeholder arguments, and in
`
`coming to its final decision regarding the ‘643 Patent in the context of the subject
`
`petition.
`
`2.
`
`During the prosecution of the ‘643 Patent and prior to its acceptance
`
`and publication, an impressive over 450 references were cited as prior art as being
`
`
`2 I have also reviewed the IPR2015-00531 petition to which IPR2015-01582 has
`been joined and the accompanying exhibits to IPR2015-00531.
`1
`
`

`
`
`
`relevant to the allowed invention comprising a combination of patents, patent
`
`applications and other publications. Many of these references related to systems
`
`that generally serve to address interference in communications systems, including
`
`frequency hopping communications systems. Indeed, all three references relied
`
`upon by Petitioner were cited to the United States Patent and Trademark Office for
`
`consideration during prosecution and are listed on the issued ‘643 Patent under
`
`References Cited.
`
`3. My declaration highlights certain aspects of how the ‘643 Patent
`
`invention differs from Gerten, Haartsen and Dicker in view of the arguments
`
`presented in the IPR2015-00531/01582 petitions, the Ding Declaration, and in light
`
`of the ‘643 Patent itself. My declaration provides additional support for the
`
`arguments put forward in the Bandspeed Patent Owner Response to which it is
`
`appended.
`
`4.
`
`This declaration and rebuttal is based on the information presently
`
`available to me. Should additional information become available, I reserve the
`
`right to supplement my opinion based upon information that may subsequently
`
`become available which may include a review of information that may be
`
`produced, or from testimony or depositions that are subsequently taken.
`
`
`
`2
`
`

`
`
`
`
`II.
`
`SUMMARY OF OPINIONS
`5.
`Neither Haartsen nor Gerten anticipate the ‘643 Patent claims, and
`
`neither the Petitioner nor its expert, Dr. Ding, dispute this claim, relying instead on
`
`claims of obviousness and an additional reference of Dicker in an attempted
`
`combination.
`
`6.
`
`The claims of the ‘643 Patent are directed to technical issues or needs
`
`that were not well recognized nor understood, and technical solutions that were not
`
`well developed to address the technical issues or needs, at the time of the priority
`
`date of the ‘643 Patent.
`
`7.
`
`It is my opinion that Claims 1-15 of the ‘643 Patent recite distinct
`
`features that were not published before and not otherwise publicly known before
`
`the priority date of the ‘643 Patent and are not rendered obvious by the prior art
`
`cited in Qualcomm’s inter partes review (“IPR”) petition.
`
`8.
`
`Haartsen is directed to the selection of channels from tables stored in
`
`general memory that relate to allowable and forbidden hop channels. Haartsen is
`
`readily distinguished from all of the claims of the ‘643 Patent which relate to
`
`loading sets of channels from tables in memory into specific types of registers.
`
`
`
`9.
`
`Gerten is directed to the use of signal strength measurements to avoid
`
`channels in a frequency hopping scheme. Unlike the subject ‘643 Patent, Gerten
`
`does not have a single selection kernel that first addresses a bad channel before
`
`
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`3
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`

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`
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`selecting a good channel. Instead, Gerten uses a different selection kernel
`
`depending upon the channels that are not to be avoided.
`
`
`
`10. Dicker is concerned with managing interference in cordless phones by
`
`shifting frequency subsets. In contrast to the ‘643 Patent, Dicker does not disclose
`
`nor suggest an ability to block individual channels for selection (dealing instead
`
`exclusively with grouped subsets), but more importantly, does not relate in any
`
`way to loading in sets of good channels into registers, or avoiding bad channels
`
`that are first addressed by a selection kernel – observations of which appear to be
`
`conceded by Petitioner who only uses Dicker to argue patent eligibility of Claims
`
`4-5, 9-10, and 14-15 of the subject patent. However, with respect to these specific
`
`claims, Dicker neither discloses nor suggests “removing a particular good
`
`channel…based on a good channel time out value” nor “rescanning the default
`
`channels, based in part on the number of good channels” as recited in respective
`
`claims of the ‘643 Patent.
`
`
`
`11.
`
`In my opinion, neither Haartsen nor Gerten, nor a combination of
`
`either with Dicker, serve as invalidating prior art of Claims 1-15 of the ‘643 Patent.
`
`As detailed herein, the references do not disclose fundamental limitations of the
`
`subject ‘643 Patent claims, nor would such limitations have been obvious to a
`
`person of ordinary skill in the art (“POSITA”) in view of Haarten and Gerten
`
`alone, or in combination each with Dicker.
`
`
`
`4
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`
`
`III. QUALIFICATIONS AND EXPERIENCE
`A. EDUCATION AND WORK EXPERIENCE
`12.
`I hold a Doctor of Philosophy in Electrical Engineering from Stanford
`
`University (awarded January 6, 1994) with a Grade Point Average of 4.0/4.0. I
`
`have a Bachelor of Science in Electrical Engineering from the Massachusetts
`
`Institute of Technology (awarded June 4, 1990) and graduated with a Grade Point
`
`Average of 5.0/5.0. I also obtained a Master of Science in Electrical Engineering
`
`and Computer Science from the Massachusetts Institute of Technology (awarded
`
`February 20, 1991) with a Grade Point Average of 4.8/5.0.
`
`13. My doctoral thesis involved the definition, solution and validation of a
`
`stiffly coupled differential equation model for the formation of high performance
`
`imaging devices. In performance of my doctoral thesis I developed novel
`
`algorithms for the solution of the complex equations and implemented those
`
`algorithms in computer code.
`
`14.
`
`I am co-inventor of patented technology related to the formation and
`
`maintenance of high data rate wireless data links. Devices exhibiting 100 Mb/sec
`
`data rates utilizing the high data rate optical wireless technology were
`
`demonstrated publicly in 2001, and included real time, live transmission of a
`
`feature length film.
`
`
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`5
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`15. While at Texas Instruments, I managed the wireless infrastructure
`
`business that designed, tested, and marketed semiconductor components for use
`
`within the radio frequency signal chain of high performance radios used in
`
`infrastructure applications such as cellular base stations. The business group I
`
`managed designed, developed and sold some of the very first radio components
`
`tested in emerging (at the time) generations of cellular systems first capable of
`
`transmitting high speed, high quality images as data by way of digital
`
`transmissions.
`
`16.
`
`In 2002, I founded Commoca, Inc. (“Commoca”). Commoca
`
`developed hardware, embedded software (or “firmware”), and network services for
`
`the deployment of converged voice and data services over wired and wireless
`
`communications networks. Commoca devices utilized IEEE 802.11 (“WiFi” or
`
`“Wi-Fi”) technology to connect touch screen telephones to access points and were
`
`believed to have been amongst the first of such devices to do so. Converged
`
`communications devices provided by Commoca were field tested by BellSouth
`
`Corporation at consumer locations in Florida and Georgia in 2006.
`
`17.
`
`In 2008, while working as a research consultant for the University of
`
`Texas Southwestern Medical in Dallas (UTSW), I co-invented a novel multi-
`
`wavelength imaging system (US 8,838,211) and worked to develop and produce a
`
`product through a university spinoff company which I led. In early 2013,
`
`
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`6
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`
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`following successful clinical studies, the resulting system was cleared by the US
`
`Food & Drug Administration for use in the United States. The system captured
`
`and analyzed high resolution, uncompressed images and subsequently created
`
`pulsatility maps representative of the underlying physiology for use in evaluating
`
`deep tissue wounds. Resulting images were compressed and transmitted over a
`
`variety of communications networks.
`
`18. As highlighted above, my professional experience and knowledge
`
`areas include wireless communications devices and systems as are relevant to the
`
`subject matter of this report. Also as detailed in my CV in Exhibit A attached, I
`
`am an inventor of subject matter claimed in 28 U.S. patents. Additional
`
`information concerning my background, qualifications, publications, conferences,
`
`honors, and awards are described in my CV.
`
`B. COMPENSATION STATEMENT
`19.
`I am paid for my work concerning the subject IPR at a rate of $450
`
`per hour. My compensation is not dependent upon the outcome of the subject IPR.
`
`I may also be reimbursed for travel and other expenses that I incur in the course of
`
`my work on the subject IPR. I have no personal interest in the outcome of the
`
`subject IPR. I have been deposed previously as an expert involving infringement
`
`and validity of wireless patents. Prior to this writing, I have never testified at a
`
`hearing or trial.
`
`
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`7
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`
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`20. The opinions I express in this report are based on my own personal
`
`knowledge and professional judgment in view of the evidence of record and
`
`documents submitted in this proceeding. If called as a witness during the
`
`proceedings in the subject IPR, I am prepared to testify competently about my
`
`opinions.
`
`INFORMATION CONSIDERED IN FORMING OPINION
`C.
`21. The documents upon which I rely for the opinions expressed in this
`
`declaration are documents identified in this declaration, including the subject
`
`Petition for inter partes review of U.S. Pat. No. 8,542,643 (including exhibits), the
`
`Decision of Institution for the subject IPR, the ‘643 Patent, the ‘643 Patent
`
`prosecution history (or at least parts thereof), Gerten, Haartsen, Dicker, the Ding
`
`Declaration and Patent Owner Bandspeed, Inc.’s Response. I have also relied on
`
`my own experiences and expert knowledge in the relevant technologies and
`
`systems that were in use (or were not in use) at the time of the invention.
`
`
`IV. STATEMENT OF LEGAL AND CLAIM CONSTRUCTION
`PRINCIPLES
`A. CLAIM CONSTRUCTION LAW
`I understand that a claim in an inter partes review proceeding is
`22.
`
`
`
`interpreted according to its broadest reasonable construction in light of the
`
`specification. 37 C.F.R. §42.100(b). Claim terms are to be given their ordinary and
`
`
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`8
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`
`
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`customary meaning as would be understood by one of ordinary skill in the art in
`
`the context of the entire patent disclosure.
`
`
`
`23.
`
`I understand that the inventor may rebut that presumption by
`
`providing a definition of the term in the specification with reasonable clarity,
`
`deliberateness, and precision; and that a claim term is to be interpreted using its
`
`ordinary and customary meaning to a person of ordinary skill in the art in the
`
`absence of a specialized definition.
`
`
`
`24. As such, I further understand that the customary meaning applies
`
`unless the specification reveals a special definition given to the claim term by the
`
`patentee, in which case the inventor’s lexicography governs.
`
`B. ANTICIPATION
`25.
`I understand that for a patent claim to be valid, it must be novel under
`
`
`
`35 U.S.C. §102. I also understand that the version of 35 U.S.C. §102 in effect
`
`prior to the American Invents Act is applicable for this IPR. I understand that if
`
`each and every limitation of a claim is disclosed in a single prior art reference then
`
`the claimed invention is anticipated, though I found no such claims to be made by
`
`the Petitioner. I further understand that it is the Petitioner’s burden to show that
`
`each and every element is described or embodied in the single prior art reference in
`
`order to establish anticipation. I also understand that a prior art reference must be
`
`enabling in order to anticipate a claim.
`
`
`
`9
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`

`
`
`
`C. OBVIOUSNESS
`26.
`I understand that for a patent claim to be valid it must be non-obvious
`
`
`
`under 35 U.S.C. §103. I further understand that where any single prior art
`
`reference discloses less than each and every limitation of a patent claim it is being
`
`used against, that patent claim is only invalid under 35 U.S.C. §103 if the
`
`differences between the claimed subject matter and that single prior art reference
`
`are such that the claimed subject matter as a whole would have been obvious at the
`
`time that the invention was made to a person having ordinary skill in the relevant
`
`art. Typically obviousness is shown using a combination of two or more prior art
`
`references that disclose all the limitations of the claimed invention.
`
`
`V. CLAIM CONSTRUCTIONS
`A. “REPLACING…A BAD CHANNEL WITH A GOOD CHANNEL”
`I understand that in its Decision to institute inter partes review
`27.
`
`
`
`concerning Case IPR2015-00531, the PTAB made comments with respect to a
`
`proposed construction of “replacing…a bad channel with a good channel”
`
`[Institution Decision at 6]. In particular, the PTAB wrote, “We do not adopt
`
`Petitioner’s proposed construction, as it risks reading ‘replacing’ out of the
`
`claims,” and furthermore that “the claim language is broad enough to encompass
`
`replacing a bad channel with a good channel in a logical sequence and not just a
`
`
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`10
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`
`
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`physical location.” [Institution Decision at 7]. My opinions as set forth in this
`
`report are consistent with the PTAB’s comments with respect to the subject term.
`
`B. “CHANNEL HOPPING SEQUENCE”
`28. Petitioner proposes the term “channel hopping sequence” to mean
`
`
`
`“the order in which the network hops among a set of frequencies,” while at the
`
`same time indicating the term to be “a well-understood term of art.” [Petition at 11,
`
`Ding Declaration at ¶41]. The Board did not comment on this proposed
`
`construction in its Institution Decision. None of the claims of the ‘643 Patent refer
`
`to a “network,” and as such I do not believe that Petitioner’s proposal is necessarily
`
`proper. Nevertheless my opinions expressed herein are consistent with what I
`
`believe the term to mean as one skilled in the art, and are not inconsistent with
`
`Petitioner’s proposed construction.
`
`
`VI. PERSON OF ORDINARY SKILL IN THE ART
`29.
`It is my understanding that the claims and specification of a patent
`
`must be read and construed as a person of ordinary skill in the art, at the time of the
`
`priority date of the claims, would understand them.
`
`30.
`
`I further understand that the following factors may be considered in
`
`determining the level of ordinary skill in the art: (a) the types of problems
`
`encountered by those working in the field and prior art solutions thereto; (b) the
`
`
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`11
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`
`
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`sophistication of the technology in question, and the rapidity with which
`
`innovations occur in the field; (c) the educational level of active workers in the
`
`field; and (d) the educational level of the inventor.
`
`31. The technical art associated with the ‘643 Patent relates to the field of
`
`processing of coded electronic
`
`instructions
`
`to establish radio frequency
`
`communication between one or more electronic devices. It is my belief that a
`
`person of ordinary skill in the relevant art of the ‘643 Patent in the relevant time
`
`period would have had a Bachelor of Science degree in Electrical or Computer
`
`Engineering or Computer Science and/or equivalent industrial work experience. A
`
`person of ordinary skill in the art would also have had access to relevant technical
`
`publications, text books, and online references.
`
`
`VII. OVERVIEW OF THE ‘643 PATENT
`32. The ‘643 Patent generally discloses methods and apparatus for use in
`
`a frequency hopping communication system that enable participants in a
`
`corresponding system to achieve more effective communication performance in an
`
`environment having radio frequency interference from other sources. The ‘643
`
`Patent discloses and claims the loading of good channels and default channels
`
`respectively into a good channel register and a default channel register. A
`
`common selection kernel is used that is capable of maintaining communications
`
`
`
`12
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`

`
`
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`with both adapting and non-adapting participants by only using an alternative
`
`channel for a communication when a bad channel is first addressed by the selection
`
`kernel. The additional computations, which must occur in real time, are enabled
`
`by loading the channel sets from general memory into registers, which are directly
`
`accessible by processors.
`
`
`VIII. PATENTABILITY OF CLAIMS 1-15 OF THE ‘643 PATENT OVER
`HAARTSEN, GERTEN, AND DICKER
`A. THE “LOADING A SET OF [DEFAULT/GOOD] CHANNELS INTO A
`[DEFAULT/GOOD] CHANNEL REGISTER,” “IF A SELECTION
`KERNEL ADDRESSES A BAD CHANNEL STORED IN A
`PARTICULAR LOCATION OF THE DEFAULT CHANNEL
`REGISTER,” AND “…A GOOD CHANNEL SELECTED FROM …
`CHANNELS LOADED IN THE GOOD CHANNEL REGISTER”
`LIMITATIONS IN RESPECT TO HAARTSEN
`33. Haartsen fails to disclose the majority of the claim limitations of
`
`Claims 1, 6, and 11 (as well as Claims 2-5, 7-10, and 12-15 which depend on
`
`Claims 1, 6, and 11, respectively) of the ‘643 Patent. More specifically, Haartsen
`
`does not disclose loading channels into registers as is required by the limitations
`
`“loading a set of default channels into a default channel register” and “loading a set
`
`of good channels into a good channel register.” Additionally, Haartsen does not
`
`disclose “if a selection kernel addresses a bad channel stored in a particular
`
`location of the default channel register, then replacing, by the selection kernel, the
`
`bad channel stored in the particular location of the default channel register with a
`
`
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`13
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`

`
`
`
`good channel selected from the set of good channels loaded in the good channel
`
`register” as required by the aforementioned claims of the ‘643 Patent, and such
`
`would also not have been obvious to a POSITA at the time of the invention.
`
`Haartsen, being at least a POSITA and inventor in the field of frequency hopping
`
`communications, and experienced patentee, would be expected to have disclosed
`
`the best mode of operation had it been known or obvious to Haartsen. Instead,
`
`Haartsen only makes use of tables in his invention that store channel values in a
`
`general purpose memory and does not disclose nor even mention registers which
`
`are understood by a POSITA to be localized memories inherent to a processor or
`
`even a “set of bits of high-speed memory within a microprocessor” or within
`
`another processing device using the data for a particular purpose [Ding Declaration
`
`at ¶52]. In contrast, the ‘643 Patent discloses and makes use of both tables and
`
`registers. By using tables and registers for adaptive frequency hopping
`
`communications, and not just tables, the ‘643 Patent discloses an invention that is
`
`non-obvious, clearly distinguishable and far superior to that disclosed by Haartsen.
`
`34. As shown in Figure 5A of the ‘643 Patent (reproduced below, red
`
`highlighted boxes inserted for empasis), the ‘643 Patent expressly discloses, as is
`
`also claimed, “loading a set of good channels into a good channel register.” As can
`
`be seen in the figures, the “set of good channels” are contained within 570 “Table
`
`
`
`14
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`

`
`of Good Channels” and the “loading” is performed by 572 “Loading” into the
`
`“good channel register” shown as 550 “Register with Good Channels.”
`
`
`
`
`
`
`
`
`
`
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`35. FIG. 5A of the ‘643 Patent contrasts with Haartsen’s Figure 9
`
`(reproduced below) wherein Haartsen directly makes use of an index to a “Table”
`
`to select the Present Hop Channel 907. As discussed in the Haartsen specification,
`
`“The generated index is used to address an entry in the table 801 and retrieve a
`
`substitute hop channel (step 907), which is then used for communication during
`
`this phase (step 909).” [Haartsen at 12:44-46].
`
`
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`15
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`36. Tellingly, Haartsen details another embodiment where he proposes to
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`eliminate the use of even a separate good channel “Table” by using a more
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`complex table, writing in reference to Haartsen Figure 10, “The table has N1 rows,
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`in correspondence with the N1 hop channels that make up an original hop
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`sequence. Each row has two entries: a hop channel entry 1003 and a forbidden
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`indicator 1005.” [Haartsen 13:9-12].
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`37.
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`In contrast, the transference of channel data contained within tables
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`into “registers” as disclosed within the ‘643 Patent offers several important
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`advantages. Registers are storage locations internal to a processor whereby a
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`processor may operate on register values directly, unlike Haartsen’s “tables”
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`[Haartsen at 13:8-9]. As stated previously, the ‘643 Patent clearly distinguishes
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`between “tables” which have the same meaning as in Haartsen, and registers which
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`were neither obvious nor disclosed in Haartsen. While requiring the additional
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`complexity of storing data in duplicate locations (tables in general purpose
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`memory and then separate registers), by allowing direct access by the processor,
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`implementation of the ‘643 Patent registers offers performance advantages in
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`adapative frequency hopping communication systems over the use of tables alone.
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`This is particulary critical in high speed adaptive frequency hopping applications
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`as those envisioned by the ‘643 Patent. The use of both tables and registers to
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`select channels is an embodiment that is superior to those disclosed within
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`Haartsen. If Haartsen had conceived of using registers, or if they were obvious, I
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`would certainly have expected Haartsen to claim such and disclose using registers
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`as the preferred embodiment, and at the very least mention “register(s)” within the
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`Haartsen specification which he does not.
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`38. Furthermore, and consistent with the use of software to access tables
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`in general purpose memory (in contrast to processor instructions that utilize
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`internal registers), Haartsen’s claims all require “select[ing] a hop channel from the
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`sequence as a function of the present phase.” [Haartsen – All Claims, underlined
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`for emphasis]. Whereas because of the use of “registers,” the ‘643 Patent
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`logically, and distinctly, claims, “if a selection kernel addresses a bad channel
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`stored in a particular location of the default channel register.” Here it is readily
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`seen that the use of tables necessitates slower software calculations acting on “the
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`sequence” generated from said calculations, whereas a processor of the ‘643 Patent
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`may directly address a default or good channel register.
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`17
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`39. To support its position, Petitioner contends that Haartsen’s “pre-stored
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`sequence” 403 is a “set of channels” [Institution Decision at 8, Petition at 16-18].
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`However, this simply is not correct. A POSITA would understand that the
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`objective of selecting channels is in fact to determine the hopping sequence.
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`Figure 4(a) of Haartsen is a specific sequence and the post processing function 603
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`does not act upon this sequence. Instead, the post processing function 603 would
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`presumably compare the output of the construct of Figure 4(a) of Haartsen to the
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`entirety of a set of channels to be avoided, an inefficient and time consuming
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`process that simply does not make use of “registers.” [Petition 17, Haartsen at
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`11:23-25].
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`40.
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`If one follows Dr. Ding’s statements that “the pre-stored sequence X
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`in memory 403” is the “set of default channels,” that “the hop carriers among the
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`set of N1 hop channels that are not in the set of S carriers to be avoided” are the
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`“set of good channels,” and that both “the set of N1 hop carriers and the set of N2
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`remaining allowable hop carriers are stored in different tables in memory,” it begs
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`the question of where the set was stored beforehand [Ding at ¶51]. Stated
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`differently, Ding’s assumptions and conclusions noted here would give no meaning
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`to the ‘643 Patent claim limitations of “loading a set of default channels into a
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`default channel register” and “loading a set of good channels into a good channel
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`18
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`register,” as there would be no benefit within Haartsen of loading a set of channels
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`already stored in memory into memory.
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`41. Finally, Dr. Ding states clearly that Haartsen does not disclose the use
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`of registers writing, “Haartsen does not explicitly describe the memories used to
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`store the tables as registers.” [Ding at ¶52]. Yet, he goes on to claim that, “A
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`person of ordinary skill would understand that registers could be successfully used
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`to reliably store table information,” while not providing any rationale as to why a
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`reader of Haartsen would find it obvious to store a table a second time.
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`Furthermore, Dr. Ding provides no explanation as to why Haartsen, a person
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`certainly having skill greater than that of a POSITA, would not have disclosed the
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`use of registers in addition to tables, if indeed it would have been obvious.
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`Additionally, Dr. Ding goes on to state in ¶53 that Haartsen teaches “loading a set
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`of [default/good] channels into a [default/good] channel register” which Haartsen
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`clearly does not, since even taking the obviousness argument at face value, Dr.
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`Ding would be suggesting that Haartsen teaches to a POSITA the loading of a set
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`of default channels already in memory to another memory – a concept which is
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`simply not disclosed nor suggested in any way by Haartsen.
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`42. Thus, as explained in the above discuss