UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-01116
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`PATENT 7,016,676
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`MICROSOFT CORPORATION
`
`Petitioner
`
`v.
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`UNILOC 2017 LLC
`
`Patent Owner
`
`
`
`
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`IPR2019-01116
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`PATENT 7,016,676
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`
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2019-01116
`U.S. Patent 7,016,676
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`Table of Contents
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`I.
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`II.
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`INTRODUCTION .................................................................................... 1
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`THE ’676 PATENT .................................................................................. 1
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`III.
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`RELATED PROCEEDINGS .................................................................... 3
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`IV.
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`THE LEVEL OF ORDINARY SKILL IN THE ART ............................. 4
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`V.
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`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 5
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`A.
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`Claim Construction ......................................................................... 5
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`1.
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`2.
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`3.
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`“Stations Which Operate In Accordance With A
`First Radio Interface Standard And/Or A Second
`Radio Interface Standard” .................................................... 6
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`“Respective Duration In Which The Stations
`Working In Accordance With The Second Radio
`Interface Standard Are Allowed To Utilize The
`Frequency Band” .................................................................. 6
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`“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” ..................................................... 7
`
`B.
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`None of HomeRF, HomeRF Tutorial, and HomeRF
`Liaison Report (collectively “the HomeRF references”)
`Discloses “stations which operate in accordance with a
`first radio interface standard and/or a second radio
`interface standard” (Claim 1) (Grounds 1-3) ................................. 8
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`C.
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`None of HomeRF, HomeRF Tutorial, and HomeRF
`Liaison Report (collectively “the HomeRF references”)
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`ii
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`IPR2019-01116
`U.S. Patent 7,016,676
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`Discloses “a control station which controls the alternate
`use of the frequency band” / “wherein the control station
`controls the access to the common frequency band for
`stations working in accordance with the first radio
`interface standard” (Claim 1) (Grounds 1-3)................................ 10
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`1.
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`2.
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`The Petition’s primary scenario ......................................... 11
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`The Petition’s alternative scenario ..................................... 14
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`D.
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`E.
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`Lansford Does Not Disclose “a control station which
`controls the alternate use of the frequency band” (Claim
`1) (Ground 4) ................................................................................ 15
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`The Petition Fails As To The Challenged Dependent
`Claim 2 .......................................................................................... 18
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`VI.
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`CONCLUSION ....................................................................................... 18
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`iii
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`IPR2019-01116
`U.S. Patent 7,016,676
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`I.
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`INTRODUCTION
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`UNILOC 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
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`Response to Petition IPR2019-01116 for Inter Partes Review (“Pet.” or “Petition”)
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`of United States Patent No. 7,016,676 (“the ’676 Patent” or “EX1001”) filed by
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`Microsoft Corporation (“Petitioner”). The instant Petition is defective for at least the
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`reasons set forth herein.
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`II. THE ’676 PATENT
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`The ’676 patent is titled “Method, network and control station for the two-
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`way alternate control of radio systems of different standards in the same frequency
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`band.” The ʼ676 patent issued March 21, 2006, from U.S. Patent Application No.
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`10/089,959 filed April 4, 2002, which was a National Stage Entry of PCT No.
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`PCT/EP01/09258 filed August 8, 2001 and published as W002/13457, which in turn
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`claims priority to German Application No. DE10039532.5 filed August 8, 2000.
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`The inventors of the ’676 patent observed that at the time of the invention, a
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`radio system for wireless transmission of information was allowed to use
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`transmission power only in accordance with standards by the national regulation
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`authority. The national regulation authority determined on what frequencies with
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`what transmission power and in accordance with what radio interface standard a
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`radio system is allowed to transmit. There was also provided so-called ISM
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`frequency bands (Industrial Scientific Medical) where radio systems transmitted in
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`the same frequency band but in accordance with different radio interface standards.
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`EX1001, 1:10-23. And in the event of interference, methods were standardized for
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`1
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`IPR2019-01116
`U.S. Patent 7,016,676
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`an active switching to another frequency within the permitted frequency band, for
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`controlling transmission power and for the adaptive coding and modulation to reduce
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`interference. However, despite operating in the same frequency band, different radio
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`systems have different Medium Access Controls (MAC), and despite the utilization
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`of methods such as Transmitter Power Control (TPC) and Dynamic Frequency
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`Selection (DFS), those methods did not make optimum use of spreading radio
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`channels over the stations which operate under different radio standards. EX1001,
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`1:24-2:10.
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`According to the invention of the ’676 Patent, there is provided a method, a
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`wireless network and a control station which make efficient use of radio transmission
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`channels possible by an interface control protocol method for a radio system, which
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`system comprises at least a frequency band provided for the alternate use of a first
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`and a second radio interface standard, the radio system comprising stations which
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`operate in accordance with a first radio interface standard and/or a second radio
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`interface standard, respectively, a control station being provided which controls the
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`alternate use of the frequency band. Based on the idea of providing a comprehensive
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`standard exchange of implicit or explicit control information in systems that have
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`the same radio transmission methods but different radio transmission protocols. This
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`makes a simple and efficient use possible of a radio channel via a plurality of radio
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`interface standards. EX1001, 2:14-28.
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`A first number of stations preferably forms a wireless local area network in
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`accordance with a first radio interface standard and a second number of stations
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`2
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`IPR2019-01116
`U.S. Patent 7,016,676
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`forms a wireless network in accordance with a second radio interface standard. The
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`control station is preferably a station that operates in accordance with both the first
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`and the second radio interface standard. The control station can utilize the common
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`radio channel more effectively when the demand for transmission capability in
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`accordance with the first and second radio standard varies. The control station may
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`release the common frequency band for access by stations operating under the
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`second radio interface if stations operating in accordance with the first radio
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`interface standard do not request access to the frequency band. The control station
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`controls the alternate access by the first wireless network and the second wireless
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`network to the common frequency band. The control station receives requests for
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`capacity from various stations and assigns capacity accordingly. The release of the
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`common frequency band for the second radio interface standard may be effected, for
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`example, by explicitly sending control information to the stations of the second radio
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`interface standard. As another example, control can be effected in that the control
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`station determines the respective duration in which the stations operating in
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`accordance with the second radio interface standard can utilize the common
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`frequency band. EX1001, 2:36-4:26.
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`III. RELATED PROCEEDINGS
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`The following proceedings are currently pending cases concerning U.S. Pat.
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`No. 7,016,676 (EX1001).
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`Case Name
`Google, LLC v. Uniloc 2017 LLC
`Ericsson Inc. et al v. Uniloc 2017
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`Case Number
`IPR2019-01541
`IPR2019-01550
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`Filing Date
`Court
`PTAB Aug. 29, 2019
`PTAB Aug. 29, 2019
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`3
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`
`
`LLC
`Marvell Semiconductor, Inc. v.
`Uniloc 2017 LLC
`Marvell Semiconductor, Inc. v.
`Uniloc 2017 LLC
`Microsoft Corporation et al v.
`Uniloc 2017 LLC
`Uniloc 2017 LLC et al v. Google
`LLC
`Uniloc 2017 LLC v. Verizon
`Communications Inc. et al
`Uniloc 2017 LLC v. AT&T Services,
`Inc. et al
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`IPR2019-01116
`U.S. Patent 7,016,676
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`IPR2019-01349
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`PTAB
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`Jul. 22, 2019
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`IPR2019-01350
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`PTAB
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`Jul. 22, 2019
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`IPR2019-01125
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`2-18-cv-00495
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`PTAB
`
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`May. 29, 2019
`TXED Nov. 17, 2018
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`2-18-cv-00513
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`TXED Nov. 17, 2018
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`2-18-cv-00514
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`TXED Nov. 17, 2018
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`IV. THE LEVEL OF ORDINARY SKILL IN THE ART
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`The Petition alleges that “[t]he person of ordinary skill in the art at the time
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`the ’676 application was filed (“POSITA”) would have had a Bachelor’s Degree in
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`Electrical Engineering, Computer Science, or a related subject and one or more years
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`of experience working with wireless networks and related standards, and would have
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`had an understanding of work being done by companies within the field of wireless
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`networks and related standards, including, e.g., systems or protocols for shared
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`access of wireless networks by different protocols.” Pet. 19. Given that Petitioner
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`fails to meet its burden of proof in establishing prima facie anticipation or
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`obviousness when applying its own definition of a person of ordinary skill in the art
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`(“POSITA”), Patent Owner does not offer a competing definition for POSITA at this
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`preliminary stage, though it reserves the right to do so in the event that trial is
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`instituted.
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`U.S. Patent 7,016,676
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`V.
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`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
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`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
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`unpatentable”). The Petition should be denied as failing to meet this burden.
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`The raises the following obviousness challenges under 35 U.S.C. § 103:
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`Ground
`1
`2
`3
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`1 and 2
`1 and 2
`1 and 2
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`4
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`1 and 2
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`Claims
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`Reference(s)
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`HomeRF1
`HomeRF and HomeRF Tutorial2
`Home RF and HomeRF Tutorial and
`HomeRF Liaison Report3
`Lansford4 (obviousness)
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`A. Claim Construction
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`At this preliminary stage, Patent Owner submits that the Board need not
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`construe any claim term in a particular manner in order to arrive at the conclusion
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`that the Petition is substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642
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`F.3d 1355, 1361 (Fed. Cir. 2011) (“need only be construed to the extent necessary
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`to resolve the controversy”). However, some of Petitioner’s proposed constructions
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`are addressed below. Further, in the event that trial is instituted, however, Patent
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`
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` 1
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` EX1006, “HomeRF: Wireless Networking for the Connected Home”, by Kevin J.
`Negus et al.
`2 EX1008, “HomeRF: Bringing Wireless Connectivity Home”, by Jim Lansford
`3 EX1009, “HomeRF™ Working Group 3rd Liaison Report”, by Tim Blaney
`4 EX1012, U.S. Patent No. 6,937,158
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`Owner reserves the right to object to Petitioner’s proposed construction and provide
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`Patent Owner’s proposed construction.
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`1.
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`“Stations Which Operate In Accordance With A First Radio
`Interface Standard And/Or A Second Radio Interface
`Standard”
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`At this preliminary stage, Patent Owner submits that the Board need not
`
`construe this claim term in order to arrive at the conclusion that the Petition is
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`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
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`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
`
`controversy”). In the event that trial is instituted, however, Patent Owner reserves
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`the right to object to Petitioner’s proposed construction and provide Patent Owner’s
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`proposed construction.
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`2.
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`“Respective Duration In Which The Stations Working In
`Accordance With The Second Radio Interface Standard Are
`Allowed To Utilize The Frequency Band”
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`At this preliminary stage, Patent Owner submits that the Board need not
`
`construe this claim term in order to arrive at the conclusion that the Petition is
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`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
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`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
`
`controversy”). In the event that trial is instituted, however, Patent Owner reserves
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`the right to object to Petitioner’s proposed construction and provide Patent Owner’s
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`proposed construction.
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`6
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`3.
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`IPR2019-01116
`U.S. Patent 7,016,676
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`“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”
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`As the Petition acknowledges, the Petition may not challenge claims on the
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`basis of indefiniteness under this proceeding. Pet. 22. Therefore, Patent Owner does
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`not address Petitioner’s allegations. For the remaining proposed construction(s) in
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`this section, Patent Owner submits that the Board need not construe this claim term
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`in order to arrive at the conclusion that the Petition is substantively deficient.
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`Wellman, 642 F.3d at 1361. Nonetheless, to the extent Petitioner seeks to improperly
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`limit availability for “access” of the frequency band to only “transmitting” within
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`the frequency band (Pet 23-24), the Board should not adopt Petitioner’s proposed
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`construction that improperly seeks to import limitations from the specification. See
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`Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1584-85 (Fed. Cir. 1996). Moreover,
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`Petitioner’s proposed construction is further erroneous because the specification
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`itself makes clear the term “access” is not so limiting. “Access” in light of the
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`specification allows for both sending an receiving (the expecting of) information.
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`See EX1001, 4:5-18.
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`Finally, Patent Owner disagrees with Petitioner that there is no antecedent
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`basis for “the stations” in this claim term. Here, “the stations” refers back to the
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`previous claim term which recites “stations which operate in accordance with a first
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`radio standard and/or a second radio interface standard”. As the Petition points out,
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`the previous claim limitation only requires a plurality of stations operating under a
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`first and/or second radio interface standard. And here, in this limitation, “the
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`stations” refers back to the entire and original set of stations, and then the limitation
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`further narrows that set of stations to just the stations “working in accordance to the
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`second radio interface standard”. Whether that number of stations is one or more
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`than one, there is no issue with antecedent basis.
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`B. None of HomeRF, HomeRF Tutorial, and HomeRF Liaison
`Report (collectively “the HomeRF references”) Discloses “stations
`which operate in accordance with a first radio interface standard
`and/or a second radio interface standard” (Claim 1) (Grounds 1-3)
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`None of the HomeRF references discloses stations operating under “a first
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`radio interface standard and/or a second radio interface standard”, as required by
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`the claim language. Instead, HomeRF only discloses a single standard – the
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`“HomeRF Shared Wireless Access Protocol (‘SWAP’)”. Pet. 41. This is shown by
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`HomeRF itself in numerous places. For example, HomeRF’s Abstract recites: “The
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`SWAP specification for wireless voice and data networking within the home will
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`enable a new class or mobile consumer devices that draw from the power and content
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`of the Internet and home PC.” EX1006, Abstract. As stated by the Abstract, HomeRF
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`discloses a single standard – SWAP – and devices operating under that single
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`standard encompass both “voice and data networking”. HomeRF goes on to describe
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`“a SWAP network connection” (EX1006, at 20, column 2), in the singular.
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`Furthermore, that HomeRF’s SWAP happens to operate with isochronous
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`devices and asynchronous devices does not change the fact that all SWAP devices
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`(isochronous or asynchronous) are operating under a single radio interface standard
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`(i.e. SWAP). In fact, HomeRF itself describes SWAP as a “hybrid” protocol
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`(EX1006, at 22, column 1), further confirming that SWAP is a single radio interface
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`standard.
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`Additionally, HomeRF refers to its devices (again, whether isochronous or
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`asynchronous) as simply “SWAP devices”:
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`
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`EX1006, 22, column 2 (highlighting and underlining added).
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`
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`Finally, that HomeRF’s SWAP only discloses a single radio interface standard
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`is further confirmed by the Petition itself and the Lansford reference. As Petitioner
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`admits, under Lansford, in order to meet the limitation requiring “stations which
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`operate in accordance with a first radio interface standard and/or a second radio
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`interface standard”, the Petition points to two devices, one device (“Device B”)
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`which is a “HomeRF device”, and another device (“Device C”) which is a
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`“Bluetooth device”. Pet. 72. As seen by the Petition’s own admission, the “HomeRF
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`device”, or SWAP device, is a device operating under a single radio interface
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`standard.
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`Therefore, the Petition fails because none of the HomeRF references discloses
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`“stations which operate in accordance with a first radio interface standard and/or
`
`a second radio interface standard”, as required by the claim language.
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`C. None of HomeRF, HomeRF Tutorial, and HomeRF Liaison
`Report (collectively “the HomeRF references”) Discloses “a
`control station which controls the alternate use of the frequency
`band” / “wherein the control station controls the access to the
`common frequency band for stations working in accordance with
`the first radio interface standard” (Claim 1) (Grounds 1-3)
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`As discussed above, in Section V.B, the Petition fails because none of the
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`HomeRF references discloses “stations which operate in accordance with a first
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`radio interface standard and/or a second radio interface standard”, as required by
`
`the claim language. However, to the extent the Board will consider Petitioner’s
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`arguments regarding HomeRF’s so-called “I-nodes” and “A-nodes” as being
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`separate radio interface standards (which they are not), the Petition still fails for the
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`reasons below.
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`The Petition points to HomeRF’s “control point” or “CP” as being the required
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`control station. Further, the Petition points to HomeRF’s the so-called “I-nodes”
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`(voice devices or isochronous data devices) as operating in accordance with a first
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`radio interface standard and points to the so-called “A-nodes” (asynchronous data
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`devices based on the CSMA/802.11 standard) as operating in accordance with a
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`second radio interface standard. See Pet. 39-41. And according to HomeRF, the
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`common frequency band is the “2.5 GHz band”. EX1006, at 26, column 1.
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`The Petition fails because HomeRF’s “control point” or “CP” does not
`
`“control[] the alternate use of the frequency band” or, alternatively, “control[] access
`
`to the common frequency band for stations working in accordance with the first radio
`
`interface standard” as required by the claim language. Specifically, under the
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`HomeRF system and the HomeRF references, because there is always a contention
`
`period for the A-nodes, and because the A-nodes may communicate directly with
`
`one another thereby bypassing the “control point” entirely, the “control point” has
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`no ability to control the alternate use of the frequency band; or under the Petition’s
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`alternative scenario, for the same reasons, nothing in any of the HomeRF references
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`discloses the ability to control access to the common frequency band to the stations
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`working in accordance with the first radio interface standard.
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`1.
`
`The Petition’s primary scenario
`
`In the Petition’s primary scenario, the use by HomeRF’s “A-nodes” are
`
`considered the alternate use of the frequency band. And as the Petition
`
`acknowledges, in the HomeRF system, the use of the frequency band, including the
`
`alternate use by the “A-nodes”, are defined by HomeRF’s superframe. However,
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`HomeRF’s own description of its superframe confirms that its “control point” has
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`no control over the alternate use of the frequency band. Specifically, HomeRF states
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`that its protocol “incorporates two contention-free periods (CFPs) and a contention
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`period.” EX1006, at 23, column 2.In other words, according to HomeRF itself, there
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`will always be some available time for the contention period for the A-nodes (i.e.
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`the alternate use of the frequency band).5 And therefore, HomeRF’s control point
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`does not control the alternate use of the frequency band, because the HomeRF
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`control point is not able to restrict the alternate use of the frequency band, or grant
`
`the alternate use of the frequency band. For example, the HomeRF control point does
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`not have the ability to deny the alternate use of the frequency band, even if there is
`
`no primary traffic, and the HomeRF control point does not have the ability to grant
`
`the alternate use of the frequency band, even if there is enough primary traffic to
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`occupy the entire superframe. This is further confirmed by HomeRF’s discussion of
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`its Figure 1 “SWAP networking vision”:
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` 5
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` To the extent the Board may consider the testimony of Petitioner’s declarant, little
`to no weight should be given because Petitioner’s declarant merely parrots the
`same conclusory statements of the Petition. Compare e.g. Pet. 42 with EX1004, ¶
`100. This is insufficient. 37 C.F.R. § 42.65(a).
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`EX1006, at 21, column 1 (highlighting and underlining added).
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`As shown by the passage above, because asynchronous communication can
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`take place directly between two peers, that communication is not being controlled
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`by the control point. Therefore, HomeRF’s CP (or control point) does not disclose
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`“a control station which controls the alternate use of the frequency band” because
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`HomeRF’s control point cannot restrict the alternate use of the frequency band, or
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`grant the alternate use of the frequency band.
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`And nothing in HomeRF Tutorial or HomeRF Liaison Report shows
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`otherwise. The Petition includes both HomeRF Tutorial and HomeRF Liaison
`
`Report merely for the proposition that “if there is no use of the shared network by
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`the voice (first radio interface system) traffic, HomeRF Tutorial explains that the
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`entire superframe is available for data (second radio interface standard) traffic.” Pet.
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`54; see also Pet. 59. However, the Petition still fails because HomeRF Tutorial and
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`HomeRF Liaison Report merely discloses allowing for more contention period if
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`there is no voice traffic – this does nothing to change the fact that there is still no
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`disclosure anywhere that shows the control point has any ability to restrict the
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`alternate use of the frequency band, or grant the alternate use of the frequency band.
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`Specifically here, as disclosed by HomeRF shown above, there is always a
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`contention period in the superframe. And there is nothing in HomeRF Tutorial and
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`HomeRF Liaison Report that discloses the ability to grant the alternate use of the
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`frequency band, even if there is enough primary traffic to occupy the entire
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`superframe. Additionally, HomeRF Tutorial and HomeRF Liaison Report also still
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`does not disclose the ability to deny the alternate use of the frequency band, even if
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`there are no primary traffic.
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`In sum, nothing in any of HomeRF, HomeRF Tutorial, or HomeRF Liaison
`
`Report discloses “a control station which controls the alternate use of the frequency
`
`band” as the claim language requires.
`
`2.
`
`The Petition’s alternative scenario
`
`As a throwaway, the Petition merely makes the conclusory statement in a
`
`single sentence that: “Alternatively, in view of the disclosure of the CP managing
`
`when each node should send and receive data, and the presence of different slots
`
`within the contention-free period for the various I-nodes to transmit to and receive
`
`data from the CP, it would have been obvious that the CP “controls the access to the
`
`common frequency band” for these stations.” 6 Pet. 42-43.
`
`From what Patent Owner can discern from that single sentence, in the
`
`alternative Petitioner proposes HomeRF’s “A-node” to be the first radio interface
`
`standard, and the “I-node” to be the second radio interface standard, making the use
`
`by the “I-node” the alternate use of the frequency band.
`
`However, even under that alternative scenario, the Petition must still fail
`
`because in that case, HomeRF fails to disclose “wherein the control station controls
`
`
`
` 6
`
` To the extent the Board may consider the testimony of Petitioner’s declarant, little
`to no weight should be given because Petitioner’s declarant merely parrots the
`same conclusory statements of the Petition. Compare e.g. Pet. 42-43 with EX1004,
`¶ 101. This is insufficient. 37 C.F.R. § 42.65(a).
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`14
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`the access to the common frequency band for stations working in accordance with
`
`the first radio interface standard”.
`
`As shown above in discussion the Petition’s primary scenario, HomeRF
`
`always provides for a contention period (for the “A-nodes”, and under the Petition’s
`
`alternative scenario,
`
`the first radio
`
`interface), and because
`
`in HomeRF,
`
`asynchronous communication can take place directly between two peers, that
`
`communication is not being controlled by the control point. There is nothing in
`
`HomeRF Tutorial or HomeRF Liaison Report that shows otherwise, in fact, those
`
`additional references only show that the contention period can only grow larger. See
`
`EX1008, p. 22; EX1009, p. 8.
`
`Thus, under the Petition’s alternative scenario, the Petition must still fail
`
`because there is nothing in the Petition or any of the HomeRF references that
`
`discloses the control point’s ability to control access to common frequency band to
`
`the stations working in accordance with the first radio interface standard (in the
`
`Petition’s alternative scenario, the “A-nodes” during the contention period),
`
`especially where HomeRF itself shows that asynchronous communications (e.g.
`
`communications between the A-nodes) is direct and that communication is not
`
`being controlled by the control point. Therefore, the Petition has failed to show
`
`that the HomeRF references discloses “wherein the control station controls the
`
`access to the common frequency band for stations working in accordance with the
`
`first radio interface standard”.
`
`D. Lansford Does Not Disclose “a control station which controls the
`alternate use of the frequency band” (Claim 1) (Ground 4)
`
`15
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`Lansford describes a system of three devices – Device A, Device B, and
`
`Device C, and the Petition assigns the stations of the first radio interface standard
`
`and second radio interface standard as such:
`
`• Device A is referred to as the controller;
`
`• Device C is a Bluetooth device, and the Petition points to Device C
`
`as “a first radio interface standard ‘station’”;
`
`• Device B is a HomeRF device, and the Petition points to Device B
`
`as “a second radio interface standard ‘station’”.
`
`See Pet. 71; EX1012, 4:4-39.
`
`Further, according to Lansford, Device C communicates with Device A
`
`during the “contention-free” period and therefore, Device B communicates after, or
`
`outside of the “contention-free” period. EX1012, 4:51-52 (“During this contention-
`
`free period, communication between Device A and Device B is suspended.”).
`
`Therefore, under Lansford, Device C communicates with Device A during
`
`the “contention-free” period, and according to the Petition, Device C operates as a
`
`first radio interface standard station. And communication with Device A and
`
`Device B is suspended during the “contention-free” period, and according to the
`
`Petition, Device B operates as a second radio interface standard.
`
`With the above established by Lansford and the Petition, Lansford does not
`
`disclose “a control station which controls the alternate use of the frequency band”
`
`because Device A of Lansford cannot deny alternate use of the frequency band (by
`
`Device B), even if there is no traffic from Device C (on the first radio interface
`
`16
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`standard), nor can Device A of Lansford grant sole alternate use of the frequency
`
`band (by Device B), even if there is traffic from Device C.
`
`This is shown by Figure 4 of Lansford:
`
`
`
`EX1012, Fig. 4.
`
`As by the above flow-chart of the operation of the Lansford system, Device
`
`A has no control over the alternate use of the frequency band (i.e. communicating or
`
`not with Device B). For example, Device A cannot choose to simply block all
`
`alternate use of the frequency band and never communicate with Device B because
`
`every path through the flow chart runs through box 425 (“communicate with second
`
`device at second hopping frequency” – i.e. outside the contention-free period).
`
`Similarly, Device A cannot choose to block all communication with Device C and
`
`17
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`grant exclusively alternate use of the frequency band to Device B because so long
`
`as “the first device [Device C] desires communication”, Device A is compelled to
`
`communicate with Device C and provide a contention-free period. EX1012, Fig. 4,
`
`6:6-49.
`
`Thus, the Petition fails because Lansford does not disclose “a control station
`
`which controls the alternate use of the frequency band”.
`
`E.
`
`The Petition Fails As To The Challenged Dependent Claim 2
`
`Because challenged dependent Claim 2 depends from the challenged
`
`independent Claim 1, the Petition should be denied in its entirety.
`
`VI. CONCLUSION
`
`For at least the reasons set forth above, Uniloc respectfully requests that the
`
`Board deny all challenges in the instant Petition.7
`
`Date: September 6, 2019
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`
`
` 7
`
` Patent Owner does not concede, and specifically denies, that there is any legitimacy
`to any arguments in the instant Petition that are not specifically addressed herein.
`
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`CERTIFICATE OF COMPLIANCE
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), we certify that this Preliminary Response
`
`to Petition complies with the type-volume limitation of 37 C.F.R. § 42.24(b)(1)
`
`because it contains fewer than the limit of 14,000 words, as determined by the
`
`word-processing program used to prepare the brief, excluding the parts of the
`
`brief exempted by 37 C.F.R. § 42.24(a)(1).
`
`Date: September 6, 2019
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`
`
`
`
`i
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`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic copy
`
`of the foregoing PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT
`
`TO 37 C.F.R. § 42.107(a) along with any accompanying exhibits via the Patent
`
`Review Processing System (PRPS) to Petitioner’s counsel at the following
`
`addresses identified in the Petition’s consent to electronic service:
`Lead Counsel:
`Derrick W. Toddy, Reg. No. 74,591
`derrick.toddy@klarquist.com
`
`Backup Counsel:
`Andrew M. Mason, Reg. No. 64,034
`Todd M. Siegel, Reg. No. 73,232
`andrew.mason@klarquist.com
`todd.siegel@klarquist.com
`
`Date: September 6, 2019
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`
`
`ii
`
`
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