Petitioner Microsoft Corporation
`
`IPR2019-01116 – U.S. Patent No. 7,016,676
`(Claims 1 and 2)
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`Derrick W. Toddy
`September 9, 2020
`1 P.M. EST
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`IPR2019-01116 – U.S. Patent No. 7,016,676
`(Claims 1 and 2)
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`Derrick W. Toddy
`September 9, 2020
`1 P.M. EST
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Primary References
`
`Ex. 1006 (“HomeRF”), 1.
`
`2
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1012 (“Lansford”), 1.
`
`
`
`Secondary HomeRF References
`
`Ex. 1009 (“HomeRF Liaison Report”), 1.
`
`Ex. 1008 (“HomeRF Tutorial”), 1.
`
`3
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Grounds
`
`Petition, 2.
`
`4
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Introduction
`
` HomeRF teaches all elements of the claims, including:
` “stations which operate in accordance with a first radio interface standard and/or a second radio interface
`standard”
` a control station that “renders the frequency band available for access by the stations working in accordance
`with the second radio interface standard if stations working in accordance with the first radio interface
`standard do not request access to the frequency band” (Grounds 1-3)
`
` Lansford teaches all claim elements entitled to patentable weight, which does not include conditional “if” step.
`(Ground 4 only)
`
` HomeRF Tutorial and HomeRF Liaison Report were readily accessible by a POSITA interested in HomeRF.
`(Grounds 2 and 3 only)
`
`5
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Peter Rysavy
`
` B.S. and M.S., Electrical Engineering, Stanford University
`
` 32 years of experience in the field of wireless technology
`
` Authored over 180 articles, reports, and papers, and taught more than
`40 public courses and webcasts, on wireless technology
`
`Declaration of Peter Rysavy (“Rysavy”), Ex. 1004, ¶¶ 4-9.
`
` Patent Owner did not cross-examine Mr. Rysavy.
`
`6
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`A POSITA Would Have Understood Work Done By Companies
`Within Field Of Wireless Networks And Related Standards
`
` The Board agreed with Petitioner that a POSITA would have:
` “a Bachelor’s Degree in Electrical Engineering, Computer Science, or a related subject”
` “one … year of experience working with wireless networks and related standards,” and
` “an understanding of work being done by companies within the field of wireless networks and related
`standards, including, e.g., systems or protocols for shared access of wireless networks by different protocols.”
` The Board’s only change to Petitioner’s articulation was to remove the words “or more” in reference to years of
`experience.
`Compare Institution Decision, 18 with Petition, 19, Rysavy ¶¶ 46-47.
`
` Mr. Rysavy’s initial unpatentability opinion was unchanged based on the Board’s removing “or more,”
`a change with which he agreed.
`See Rysavy Supp. ¶¶ 10-11.
`
`7
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Patent Owner Did Not Define a POSITA
`
` Patent Owner failed to define a POSITA.
` Patent Owner argued that adopted POSITA articulation “level of specialization far beyond that of one of ordinary
`skill in the art,” but offered no alternative construction, waiving the opportunity to do so.
` Patent Owner did not predicate any of its arguments on its conclusory objections to POSITA definition.
`POR, 5-6.
`
`8
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`’676 Patent Describes
`Combining Two Systems
`Using Different Access Controls
`In One Frequency Band
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`‘676 Patent: Two Sets Of Stations And Control Station
`
`Petition, 11; Rysavy ¶ 36
`showing ‘676 patent, FIG. 3
`(annotations in Petition).
`
`10
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`‘676 Patent – Two Systems With Similar Transmission Methods
`
`Petition, 3-4; Rysavy ¶ 27
`quoting ‘676 patent, 1:10-23 (highlighting added).
`
`11
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`‘676 Patent – Two Systems With “Totally Different” MACs
`
`POR, 2 (highlighting added).
`
`Petition, 7; Rysavy ¶ 30
`quoting ‘676 patent, 1:34-42
`(highlighting added).
`
`12
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`‘676 Patent – First And Second Standards:
`Alternate Use Of Frequency Band
`
`Petition, 11, 12; Rysavy ¶¶ 37-39
`quoting ’676 Patent, 2:52-57, 2:63 – 3:19
`(highlighting added).
`
`13
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`‘676 Patent - Central Controller Sends
`Broadcast Message To Allocate Time
`
`Petition, 13 (highlighting added); Rysavy ¶ 40
`quoting ’676 Patent, 5:42-45.
`
`14
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`’676 Patent, Claim 1
`
`Petition, 17 (highlighting added); Rysavy ¶ 20.
`
`15
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Describes
`Combining Two Sets Of Stations
`Using Different Access Mechanisms
`In One Frequency Band
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF: Two Sets Of Stations And Control Station
`
`Petition, 28; Rysavy ¶ 79
`showing HomeRF FIG. 1 (annotations in Petition).
`
`17
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF: A-Nodes, I-Nodes With Different Access Mechanisms
`
`TDMA, used for isochronous data (I-nodes),
`uses a subset of DECT standard
`
`CSMA/CA, used for asynchronous data (A-nodes),
`is derived from 802.11/OpenAir standards
`
`Petition, 30 (highlighting added); Rysavy¶ 81
`quoting HomeRF, pg. 23, 1:10–21.
`
`18
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Central Controller Sends Broadcast Message To Allocate Time
`
`Reply, 12-13 (highlighting added); Rysavy Supp. ¶ 32
`citing Petition, 35-37, 41-44; Rysavy ¶¶ 84-87, 99-101;
`HomeRF, pg. 23, 2:8 –pg. 24, 2:13.
`
`19
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF’s Superframe Provides Alternate Uses of Frequency Band,
`Priority Access For First Radio Interface Standard Stations
`
`Petition, 33; Rysavy ¶ 84
`showing HomeRF, FIG. 4.
`
`20
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF’s Superframe Provides Alternate Uses of Frequency Band,
`Priority Access For First Radio Interface Standard Stations
`
`Petition, 34; Rysavy ¶84
`showing HomeRF, FIG. 4 (selected portions).
`
`21
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Control Point Controls The Alternate Use Of The Same
`Frequency Band, Including Through The Use Of A Beacon
`
`Petition, 35; Rysavy ¶84
`showing HomeRF, FIG. 4 (selected portion).
`
`22
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Substantive Arguments – HomeRF
`Elements 1.2, 1.3/1.4, 1.5
`(Grounds 1-3)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction
`Element 1.2
`(Grounds 1-3)
`
`Element 2 of claim 1 as cited by Petition, 40.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – Petition
`
` Petition at 20-22; Rysavy ¶¶ 49-55:
` “stations” is plural.
` ‘676 patent describes stations operating in a wireless network. ’676 patent, 2:11-13.
` “and/or” means stations operate with first wireless network, second wireless network, or both.
` ‘676 patent describes radio stations operating in accordance with a “variant” of a standard.
`Id., 1:53-62.
` plain and ordinary meaning of “in accordance with” is “agreement; harmony; conformity.”
`Ex. 1005, Webster’s New World College Dictionary, 4th Ed., pg. 3.
`
`25
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – Petition
`
`Petition, 22; Rysavy ¶ 55.
`
`26
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – Institution Decision
`
`Decision, 12 (highlighting added).
`
`27
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – POR
`
`POR, 13 (highlighting added).
`
`28
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – Petitioner Reply
`
`Reply, 2; Rysavy Supp. ¶¶ 9-11.
`
`29
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – POR
`
`POR, 9 (highlighting added).
`
`30
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – Petitioner Reply
`
`Reply, 3 (highlighting added); Rysavy Supp. ¶ 14.
`
`Reply, 3 (highlighting added); Rysavy Supp. ¶ 15
`citing ’676 patent, 3:15-19.
`
`See generally Rysavy Supp. ¶¶ 14-20;
`’676 patent, 2:63-3:19.
`
`31
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – POR
`
`POR, 10 (quoting ’676 patent description of HiperLAN/2,
`“first radio interface standard”) (highlighting added).
`
`POR, 10-11 (quoting ’676 patent description of IEEE802.11a,
`“second radio interface standard”) (highlighting added).
`
`32
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – POR
`
`POR, 13 (highlighting added).
`
`33
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – POR / PO Sur-Reply
`
`POR, 15 (highlighting added).
`
`PO Sur-Reply, 6 (highlighting added).
`
`34
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF
`Element 1.2
`(Grounds 1-3)
`
`Element 2 of claim 1 as cited by Petition, 40.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF: Two Standards – Petition
`
`TDMA, used for isochronous data (I-nodes),
`uses a subset of DECT standard
`
`CSMA/CA, used for asynchronous data (A-nodes),
`is derived from 802.11/OpenAir standards
`
`Petition, 30 (highlighting added); Rysavy ¶ 81
`quoting HomeRF, pg. 23, 1:10–21.
`
`36
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF: Different Access Mechanisms – Petition
`
`Three kinds of devices in SWAP network,
`CP, I-nodes and A-nodes:
`
`I-nodes send isochronous data using TDMA
`
`A-nodes send asynchronous data using CSMA
`
`Petition, 29-30 (highlighting added); Rysavy ¶ 80
`quoting HomeRF, pg. 21, 2:52 – pg. 22, 1:11.
`37
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF: Different Standards/Access Mechanisms – Petition
`
`I-nodes transmit isochronous data using TDMA
`(“subset of the DECT standard” – First radio interface standard)
`
`A-nodes transmit asynchronous data using CSMA
`(“derived from” 802.11/OpenAir standards – Second radio interface standard)
`
`Petition, 30-31; Rysavy ¶¶ 80-82
`citing HomeRF, pg. 23, 1:10–21, showing id., Fig. 2 (selected portion).
`
`38
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Describes Complete Standards – Reply
`
`Reply, 8 (highlighting added).
`
`39
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF
`Element 1.3/1.4
`(Grounds 1-3)
`
`Elements 3/4 of claim 1 as cited by Petition, 41.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF: Beacon Controls Alternate Use – Petition
`
`Petition, 41-42; Rysavy ¶¶ 98-99
`citing HomeRF, 22, 1:4-5, 23, 2:22-25.
`
`41
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Teaches Control[ling] Alternate Use – Institution Decision
`
`Decision, 29.
`
`Decision, 29-30.
`
`42
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Teaches Control[ling] Access – Petition
`
`Petition, 42 (highlighting added); Rysavy ¶ 100.
`
`43
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Teaches Active Nodes, Assigning CFP Slots – POR
`
`POR, 36.
`
`44
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF
`Element 1.5
`(Grounds 1-3)
`
`Element 5 of claim 1 as cited by Petition, 43.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF: More Time For Data With Less Voice – Petition
`
`Petition, 44 (highlighting added); Rysavy ¶ 104.
`
`46
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF: More Contention Period With Less Voice – Petition
`
`Petition, 45 (highlighting added); Rysavy ¶¶ 107-109.
`
`47
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Tutorial Evinces POSITA HomeRF Understanding – Petition
`
`Petition, 45, FN. 10 (highlighting added); Rysavy ¶ 107, FN. 8.
`
`48
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF: Superframe Periods / Slots – Petition
`
`Petition, 33; Rysavy ¶ 84
`showing HomeRF, FIG. 4.
`
`49
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF: Fixed Length Slots – Petition
`
`Petition, 37-38; Rysavy ¶ 89
`citing HomeRF, 23, 2:13-18.
`
`See generally Rysavy ¶¶ 85-90.
`
`50
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF: Variable Number Of Slots – Reply
`
`Reply, 18; Rysavy Supp. ¶¶ 37-41
`citing Petition, 33-38, 43-46; Rysavy ¶¶ 84-91, 102-110.
`
`51
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF: Voice Nodes Request Access – Petition
`
`Petition, 37; Rysavy ¶ 87.
`
`See generally id. ¶¶ 87-91.
`
`52
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Voice Slots: Fixed Length, Variable Number – Reply
`
`Reply, 19; Rysavy Supp. ¶ 37.
`
`See generally id. ¶¶ 37-41.
`
`53
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF FIG. 5 Contention Slots For A-Nodes – POR
`
`POR 34, showing HomeRF, FIG. 5.
`
`54
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF FIG. 5 Illustrates Contention Period – Reply
`
`Reply, 22 (highlighting added); Rysavy Supp. ¶ 44.
`
`See generally id. ¶¶ 42-46.
`
`55
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Tutorial
`Element 1.5
`(Ground 2)
`
`Element 5 of claim 1 as cited by Petition, 43.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Tutorial: Beacon Controls Superframe Structure – Petition
`
`Petition, 55; Rysavy ¶ 117, showing HomeRF Tutorial, 21.
`
`57
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Tutorial: “Data For Entire Frame If No Voice” – Petition
`
`Petition, 51; Rysavy ¶¶ 117-118
`showing HomeRF Tutorial, pg. 22.
`
`58
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Liaison Report
`Element 1.5
`(Ground 3)
`
`Element 5 of claim 1 as cited by Petition, 43.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Liaison Report: “Contention Period … Whole Superframe” – Petition
`
`Petition, 57; Rysavy ¶¶ 138-139
`showing HomeRF Liaison Report, pg. 8.
`
`60
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Tutorial and HomeRF Liaison Report
`Were Publicly Accessible Over A Year Before
`The ’676 Application Was Filed
`(Grounds 2 and 3)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Gerard P. Grenier
`
` Senior Director of Publishing Technologies of The Institute of Electrical and Electronics Engineers, Incorporated
`("IEEE").
` IEEE is a neutral third party in this dispute,
` Neither IEEE nor Mr. Grenier received compensation.
` Custodian of records for IEEE, making declaration based on “personal knowledge and information contained in the
`business records of IEEE.”
`Grenier, Ex. 1007, ¶¶ 1-5.
`
` Provided authentication and public availability information for HomeRF (Ex. 1006).
` Patent Owner did not cross-examine Mr. Grenier.
`
`62
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Publicly Accessible
`by February 2000
`
`the
`for
`Networking
` “HomeRF: Wireless
`Connected Home” is an article authored by Kevin
`J. Negus, Adrian P. Stephens, and Jim Lansford for
`the February 2000 issue of
`IEEE Personal
`Communications.
`
` HomeRF was published in February 2000, and
`public copies were available no later
`than
`February 29, 2000 on the public IEEE digital
`library website. Ex. 1007,
`
`Grenier, ¶¶ 8-12.
`
`Ex. 1006, 1 (cited by Petition, 26)
`
`63
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`POSITA Would Seek Out HomeRF Tutorial, HomeRF Liaison Report
`
`Petition, 51; Rysavy ¶¶ 119-120.
`
`64
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Christina Boyce
`
` Director, IT Business Partner for The Institute of Electrical and Electronics Engineers, Incorporated. ("IEEE").
` IEEE is a neutral third party in this dispute,
` Neither IEEE nor Ms. Boyce received compensation.
` Custodian of records for IEEE, making declaration based on “personal knowledge, information contained in the
`business records of IEEE, or confirmation with other responsible IEEE personnel with such knowledge.”
`Boyce, Ex. 1010, ¶¶ 1-5.
`
` Provided authentication and public availability information for both HomeRF Tutorial (Ex. 1008) and HomeRF Liaison
`Report (Ex. 1009).
` Patent Owner did not cross-examine Ms. Boyce.
`
`65
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Tutorial
`Ex. 1008, 1 (cited by Petition, 47).
`
`Ex. 1010 (“Boyce”), ¶ 6 (cited by Petition, 47).
`
`Ex. 1010 (“Boyce”), Ex. D, 69 (cited by Petition, 47).
`
`HomeRF Tutorial Accessible
`to POSITA by Mar. 1999
` “HomeRF: Bringing Wireless Connectivity Home”
`is a tutorial presentation authored by Jim
`Lansford, Technical Committee Chair for the
`Home RF Working Group, dated March 9, 1999
`and uploaded to the IEEE 802 LAN/MAN
`Standards Committee website
`(http://ieee802.org/) on March 18, 1999.
` HomeRF Tutorial is maintained in the ordinary
`course of business and indexed on this publicly
`available website.
` 1999 index maintains upload date for HomeRF
`Tutorial.
`Boyce, ¶¶ 6-8; Ex. B; Ex. D, 65-76
`(cited by Petition, 47).
`
`66
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Tutorial
`Ex. 1008, 1 (cited by Petition, 47).
`
`HomeRF Tutorial Accessible
`to POSITA by Mar. 1999
` According to the 1999 index, HomeRF Tutorial
`was last modified on the date it was uploaded,
`March 18, 1999.
`DelaRosa, ¶ 11, citing Ex. B (1999 index), 27
`(cited by Petition, 47).
`
`Ex. 1011 (“DelaRosa”), Ex. B, 24, 27 (cited by Petition, 47).
`
`67
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Liaison Report
`Ex. 1009, 1 (cited by Petition, 56).
`
`Ex. 1010 (“Boyce”), ¶ 6 (cited by Petition, 56).
`
`Ex. 1010 (“Boyce”), Ex. C, 57 (cited by Petition, 56).
`
`Liaison Report Accessible
`to POSITA by Nov. 1998
` “HomeRF™ Working Group 3rd Liaison Report” is
`a presentation authored by Tim Blaney of
`Commcepts, dated July 1998 and uploaded to the
`publicly accessible IEEE 802 LAN/MAN Standards
`Committee website (http://ieee802.org/) on
`November 5, 1998.
` HomeRF Liaison Report is maintained in the
`ordinary course of business and indexed on this
`publicly available website.
` 1998 index maintains upload date for HomeRF
`Liaison Report.
`Boyce, ¶¶ 6-8; Ex. A; Ex. C, 45-64
`(cited by Petition, 56).
`
`68
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`HomeRF Liaison Report
`Ex. 1009, 1 (cited by Petition, 56).
`
`Liaison Report Accessible
`to POSITA by Nov. 1998
` According to the 1998 index, HomeRF Liaison
`Report was last modified on the date it was
`uploaded, November 5, 1998.
`DelaRosa, ¶ 7, citing Ex. A (1998 index), 16
`(cited by Petition, 56).
`
`Ex. 1011 (“DelaRosa”), Ex. A, 5, 16 (cited by Petition, 56).
`
`69
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Substantive Arguments – Lansford
`Elements 1.3/1.4, 1.5
`(Ground 4)
`
`
`
`Lansford
`Elements 1.3/1.4
`(Ground 4)
`
`Elements 3/4 of claim 1 as cited by Petition, 71.
`
`
`
`Lansford Controller Allocates Slots, Controls Alternate Use – Petition
`
`Petition, 71; Rysavy ¶¶ 169-170.
`72
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`No “Sole Alternate Use” / “Block All Alternate Use” Required – Reply
`
`Reply, 24.
`
`73
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction
`Element 1.5
`(Ground 4)
`
`Element 5 of claim 1 as cited by Petition, 72.
`
`
`
`Two Method Steps [1.4, 1.5] Were Added During Prosecution
`
`Reply, 26.
`
`75
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Element 1.5 – Control Station Renders Frequency Band Available
`To Second Stations “If” First Stations Do Not Request Access
`
`Element 5 of claim 1 as cited by Petition, 72.
`
`76
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Contingent Step In A Method Need Not Be Performed
`
`Petition, 23 (highlighting added).
`
`77
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Contingent Step In A Method Need Not Be Performed
`
`Petition, 22-23
`citing Cybersettle and Schulhauser.
`
`78
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Cases Cited In PO Sur-Reply
`
`
`
`Claim Construction – Contingent Method Steps Need Not Be
`Performed Unless Condition Precedent Exists
`
`“In this claim, the word ‘if’ in the transmitting step does modify the action of transmitting. Thus, the claim
`does not require actual transmission of updated constant data unless ‘the constant data stored in the
`memory of the remote computer is different from the constant data stored in the memory of the main
`computer.’ Id.
`However, the storing step is not conditional and requires ‘storing the updated constant data in the memory of
`the remote computer.’ Id. … Thus, the Court finds that the transmitting step is contingently claimed although
`the storing step is not.”
`
`Charles E. Hill & Assocs., Inc. v. Hanover Direct, Inc., No. CIV.A. 2:07-CV-234DF, 2008 WL 5771130, at *21
`(E.D. Tex. Nov. 21, 2008) (emphases added) (cited in PO Sur-Reply, 8).
`
`80
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – Contingent Method Steps Need Not Be
`Performed Unless Condition Precedent Exists
`
`“[C]laim 1 of the ′142 Patent … contains the following limitations:
`transmitting updated constant data from the main computer to the remote computer if the constant data
`stored in the memory of the remote computer is different from the constant data stored in the memory of
`the main computer;
`storing the updated constant data in the memory of the remote computer.
`′142 Patent, claim 1 (emphasis added).”
`
`Charles E. Hill & Assocs., Inc. v. Hanover Direct, Inc., No. CIV.A. 2:07-CV-234DF, 2008 WL 5771130, at *21
`(E.D. Tex. Nov. 21, 2008) (cited in PO Sur-Reply, 8).
`
`81
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – Contingent Method Steps Mandatory, Limiting
`Where Condition Precedent Is “Always Satisfied”
`
`“The Board construed the claim term ‘a given segment of [a/the] media presentation’ to mean ‘a media
`presentation with multiple segments.’ Google Inc. v. Koninklijke Philips N.V., No. IPR2017-00447, Paper 29, at 7–
`8 (Sept. 6, 2018) (‘Final Written Decision’) (alteration in original). As conceded by Google, under this claim
`construction, the conditional statement of claim 1—i.e., ‘if the determined file is one of a plurality of files
`required for the media presentation’—is always satisfied, rendering the [conditional] steps that follow
`mandatory and limiting.”
`
`Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1333-34 (Fed. Cir. 2020) (emphases added)
`(cited in PO Sur-Reply, 8).
`
`82
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Claim Construction – Conditional Step May Have Patentable Weight
`Where Contingent Step Is Only Step Of The Method
`
`“Regarding method claim 1, we are persuaded by Appellants' arguments that the Examiner errs by failing to give
`patentable weight to the limitations of claim 1. Reply Br. 8. First, we agree with Appellants' argument that the
`Examiner's construction would result in the claimed method “not requir[ing] any step at all, which would
`render the entire claim meaningless.”
`
`Ex Parte Prem K. Gopalan & Bryan Thomas Elverson, No. APPEAL 2017-007009, 2018 WL 2386111, at *2 (P.T.A.B. May
`21, 2018) (emphasis added) (cited in PO Sur-Reply, 9)
`quoting Ex parte Hehenberger, Appeal No. 2015-007421, 2017 WL 588626 (PTAB Jan. 27, 2017) (concurring opinion).
`
`But see Ex Parte Gopalan, 2018 WL 2386111, at *8 (A.P. J. Busch, dissenting-in-part).
`
`But see Unified Patents Inc. v. Vilox Techs. LLC, No. IPR2018-00044, 2019 WL 1768171, at *9
`(P.T.A.B. Apr. 18, 2019) (IPR decision distinguishing Ex Parte Gopalan).
`83
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Thank You
`
`Derrick W. Toddy
`September 9, 2020
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
