IPR2019-01125
`Patent 7,016,676
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2019-01125
`U.S. Patent No.: 7,016,676
`Issued: March 21, 2006
`Application No.: 10/089,959
`Filed: August 8, 2001
`
`Title: METHOD, NETWORK AND CONTROL STATION FOR THE
`TWO-WAY ALTERNATE CONTROL OF RADIO SYSTEMS OF
`DIFFERENT STANDARDS IN THE SAME FREQUENCY BAND
`_________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,016,676
`
`
`
`
`Patent 7,016,676
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2019-01125
`U.S. Patent No.: 7,016,676
`Issued: March 21, 2006
`Application No.: 10/089,959
`Filed: August 8, 2001
`
`Title: METHOD, NETWORK AND CONTROL STATION FOR THE
`TWO-WAY ALTERNATE CONTROL OF RADIO SYSTEMS OF
`DIFFERENT STANDARDS IN THE SAME FREQUENCY BAND
`_________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,016,676
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2019-01125
`Patent 7,016,676
`
`Page
`
`LIST OF EXHIBITS .............................................................................................. viii
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ............................................. x
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Real Party-In-Interest (37 C.F.R. § 42.8 (b)(1)) ......................... x
`
`Related Matters (37 C.F.R. § 42.8 (b)(2)) ................................ xi
`
`Lead And Back-Up Counsel
`(37 C.F.R. § 42.8 (b)(3)) And Service Information ................. xii
`
`Proof Of Service (37 C.F.R. §§ 42.6 (e) And 42.105 (a)) ...... xiii
`
`Fee For Inter Partes Review (37 C.F.R. § 42.15 (a)) .............. xiii
`
`6. Word Count Certification (37 C.F.R. § 42.24) ....................... xiii
`
`I.
`
`SUMMARY OF ARGUMENT ....................................................................... 1
`
`II. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)) ................................. 1
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND
`RELIEF REQUESTED (37 C.F.R. § 42.104(b)) ............................................ 1
`
`A.
`
`B.
`
`Claims For Which Review Is Requested (37 C.F.R. § 42.104(b)(1)) ... 2
`
`Statutory Grounds For Challenge (37 C.F.R. § 42.104 (b)(2)) ............. 2
`
`IV. BACKGROUND AND STATE OF THE ART .............................................. 3
`
`A. Applicant’s Admitted Prior Art ............................................................. 3
`
`1.
`
`2.
`
`Different Radio Interface Standards Operating
`In The Same Frequency Band Was Known ................................ 3
`
`Using A Control Station To
`Moderate Network Traffic Was Known ..................................... 7
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`IPR2019-01125
`Patent 7,016,676
`“Switching” Frequency To Avoid Interference Was Known ..... 7
`
`3.
`
`B.
`
`Summary Of The Prior Art To The ’676 Patent ................................... 8
`
`V. OVERVIEW OF THE ’676 PATENT ............................................................ 9
`
`A.
`
`B.
`
`C.
`
`The ’676 Patent’s Specification ............................................................ 9
`
`The Prosecution History ...................................................................... 14
`
`The Challenged Claim ......................................................................... 17
`
`VI. CLAIM CONSTRUCTION (37 C.F.R. § 42.104(b)(3)) ............................... 18
`
`A.
`
`B.
`
`Level Of Skill In The Art .................................................................... 19
`
`Proposed Constructions ....................................................................... 20
`
`1.
`
`2.
`
`3.
`
`(Claim 1) “Stations Which Operate In
`Accordance With A First Radio Interface
`Standard And/Or A Second Radio Interface Standard” ........... 20
`
`(Claim 1) “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” ... 22
`
`(Claim 5) “The Control Station Also
`Carries Out Functions Which Cause Radio Systems
`In Accordance With The First Radio Interface Standard
`To Interpret The Radio Channel As Interfered And To
`Seize Another Radio Channel For Its Own Operation” ............ 25
`
`VII. CLAIM 5 OF THE ’676 PATENT IS UNPATENTABLE OVER THE
`CITED PRIOR ART (37 CFR § 42.104 (b)(4), 37 CFR § 42.104(b)(5)) ..... 30
`
`A. GROUND 1: CLAIM 5 IS OBVIOUS
`OVER HOMERF IN VIEW OF HOMERF SWAP SPEC. 1.3 .......... 30
`
`1.
`
`HomeRF: Wireless Networking For The Connected Home ..... 30
`
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`IPR2019-01125
`Patent 7,016,676
`HomeRF Shows A Protocol Method For
`Alternate Use Of The Same Frequency Band
`By Two Different Radio Interface Standards ................. 31
`
`HomeRF Shows A Control Station
`Controlling Use Of The Same Frequency Band By
`Stations Using Different Radio Interface Standards ...... 32
`
`HomeRF Shows The Control Station Granting
`First Radio Interface Standard Devices “Priority”
`Over Second Radio Interface Standard Devices ............ 36
`
`HomeRF Shows Second Stations
`That Can Access The Same Frequency
`Band When First Stations Do Not “Request” It ............. 37
`
`HomeRF Shows Stations Hopping To
`Another Frequency If Interference Is Detected .............. 43
`
`a)
`
`b)
`
`c)
`
`d)
`
`e)
`
`2.
`
`3.
`
`HomeRF Teaches Or Suggests All Of The
`Limitations Of Claim 1, Incorporated Into Claim 5 ................. 43
`
`HomeRF SWAP Spec. 1.3 ........................................................ 50
`
`a)
`
`HomeRF SWAP Spec. 1.3 Shows Stations Hopping
`To Another Frequency If Interference Is Detected ........ 53
`
`4. Motivation To Combine
`HomeRF With HomeRF SWAP Spec. 1.3 ............................... 54
`
`5.
`
`HomeRF In View Of HomeRF SWAP
`Spec. 1.3 Shows The Added Limitations Of Claim 5 ............... 55
`
`B. GROUND 2: CLAIM 5 IS OBVIOUS
`OVER HOMERF IN VIEW OF HOMERF TUTORIAL
`IN FURTHER VIEW OF HOMERF SWAP SPEC. 1.3 .................... 56
`
`1.
`
`HomeRF Tutorial ...................................................................... 56
`
`a)
`
`HomeRF Tutorial Further Describes
`A Control Station Controlling Use Of The Same
`
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`Page iii
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`IPR2019-01125
`Patent 7,016,676
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`Frequency Band By Stations
`Using Different Radio Interface Standards .................... 57
`
`b)
`
`HomeRF Tutorial Further Clarifies Granting
`Second Stations Access To The Common Frequency
`Band When First Stations Do Not “Request” It ............. 59
`
`2. Motivation To Combine HomeRF With
`HomeRF Tutorial And HomeRF SWAP Spec 1.3 ................... 60
`
`3.
`
`4.
`
`HomeRF In View Of HomeRF
`Tutorial Teaches Or Suggests All Of The
`Limitations Of Claim 1, Incorporated Into Claim 5 ................. 61
`
`HomeRF In View Of HomeRF Tutorial
`In Further View Of HomeRF SWAP
`Spec. 1.3 Shows The Added Limitations Of Claim 5 ............... 65
`
`C. GROUND 3: CLAIM 5 IS OBVIOUS
`OVER HOMERF IN VIEW OF HAARTSEN ................................... 65
`
`1.
`
`U.S. Patent No. 7,280,580 (“Haartsen”) ................................... 65
`
`2. Motivation To Combine HomeRF With Haartsen .................... 68
`
`3.
`
`4.
`
`HomeRF Teaches Or Suggests All Of
`The Limitations Of Claim 1, Incorporated Into Claim 5 .......... 68
`
`HomeRF In View Of Haartsen
`Shows The Added Limitations Of Claim 5 .............................. 68
`
`D. GROUND 4: CLAIM 5 IS OBVIOUS OVER HOMERF
`IN VIEW OF HOMERF TUTORIAL AND HAARTSEN ................ 70
`
`1. Motivation To Combine HomeRF
`With HomeRF Tutorial And Haartsen ...................................... 70
`
`2.
`
`HomeRF In View Of HomeRF
`Tutorial Teaches Or Suggests All Of
`The Limitations Of Claim 1, Incorporated Into Claim 5 .......... 70
`
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`Page iv
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`IPR2019-01125
`Patent 7,016,676
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`3.
`
`HomeRF In View Of HomeRF Tutorial
`And Haartsen Shows The Added Limitations Of Claim 5 ...... 70
`
`VIII. NO OBJECTIVE INDICIA OF NON-OBVIOUSNESS .............................. 71
`
`IX. CONCLUSION .............................................................................................. 71
`
`CERTIFICATE OF COMPLIANCE WITH
`TYPE-VOLUME LIMITATION PURSUANT TO 37 C.F.R. § 42.24 .................... 1
`
`CERTIFICATE OF SERVICE IN
`COMPLIANCE WITH 37 C.F.R. § 42.6(e)(4) ......................................................... 2
`
`
`
`
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`Petition for Inter Partes Review of USP 7,016,676
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`Page v
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`
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`TABLE OF AUTHORITIES
`
`IPR2019-01125
`Patent 7,016,676
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`Page(s)
`
`Cases
`
`ClassCo, Inc. v. Apple, Inc.,
`838 F.3d 1214 (Fed. Cir. 2016) ..................................................................... 18
`
`Cybersettle, Inc. v. Nat'l Arbitration Forum, Inc.,
`243 F. App’x 603 (Fed. Cir. 2007) ................................................................ 22
`
`Ex Parte John Nicholas Gross,
`Appeal No. 2011-004811,
`2013 WL 6907805 (P.T.A.B. Dec. 31, 2013)................................................ 21
`
`Ex Parte Randal C. Schulhauser,
`Appeal No. 2013-007847,
`2016 WL 6277792 (P.T.A.B. Apr. 28, 2016) ................................................ 23
`
`IPXL Holdings LLC v. Amazon.com Inc.,
`430 F.3d 1377 (Fed. Cir. 2005) ..................................................................... 22
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014)....................................................................................... 19
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ..................................................................... 18
`
`Board Decisions
`
`Panel Claw, Inc. v. Sunpower Corp.,
`No. IPR2014-00386, Paper 7 (P.T.A.B. June 30, 2014) ............................... 18
`
`Statutes
`
`35 U.S.C. § 102 ................................................................................................ passim
`
`35 U.S.C. § 103 ................................................................................................... 2, 30
`
`35 U.S.C. § 112 ........................................................................................................ 19
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`IPR2019-01125
`Patent 7,016,676
`35 U.S.C. § 311 ......................................................................................................1, 2
`
`35 U.S.C. § 325 .......................................................................................................... 2
`
`35 U.S.C. 282 ........................................................................................................... 18
`
`Rules
`
`37 C.F.R. § 42.100 .............................................................................................. 1, 18
`
`
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`Petition for Inter Partes Review of USP 7,016,676
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`Page vii
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`IPR2019-01125
`Patent 7,016,676
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`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 7,016,676, “METHOD, NETWORK AND
`CONTROL STATION FOR THE TWO-WAY ALTERNATE
`CONTROL OF RADIO SYSTEMS OF DIFFERENT
`STANDARDS IN THE SAME FREQUENCY BAND,” issued
`March 21, 2006 (the “’676 patent”)
`File History for U.S. Patent No. 7,016,676, Application No.
`10/089,959 (“’676 FH”)
`Plaintiff’s “Disclosure of Asserted Claims And Infringement
`Contentions”, dated January 4, 2019, and including Exhibit A
`thereto (“UNILOC Contentions”)
`Declaration of Peter Rysavy, including Appendix A thereto,
`signed and dated May 29, 2019 (“Rysavy Dec.”)
`Excerpts of “Webster’s New World College Dictionary, 4th
`Edition”, © 1999 by Macmillan USA (“Webster’s”)
`“HomeRF: Wireless Networking for the Connected Home”, by
`Kevin J. Negus et al., IEEE Personal Communications, Vol. 7,
`Issue 1, pgs. 20-27, Feb. 2000 (“HomeRF”)
`Declaration of Gerard P. Grenier, including Exhibit A thereto,
`signed and dated February 22, 2019 (“Grenier Dec.”)
`“HomeRF: Bringing Wireless Connectivity Home”, by
`Jim Lansford, Technical Committee Chair for the Home RF
`Working Group, March 9, 1999 (“HomeRF Tutorial”)
`Intentionally left blank
`Declaration of Christina Boyce, including Exhibits A-D thereto,
`signed and dated March 11, 2019 (“Boyce Dec.”)
`Declaration of Rene DelaRosa, including Exhibits A and B
`thereto, signed and dated May 28, 2019 (“DelaRosa Dec.”)
`Intentionally left blank
`Intentionally left blank
`
`No.
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`1010
`
`1011
`
`1012
`1013
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`Petition for Inter Partes Review of USP 7,016,676
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`IPR2019-01125
`Patent 7,016,676
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`1014
`1015
`1016
`1017
`
`1018
`
`1019
`
`Intentionally left blank
`Intentionally left blank
`Intentionally left blank
`U.S. Patent No. 7,280,580, “HOP SEQUENCE ADAPTATION
`IN A FREQUENCY-HOPPING COMMUNICATIONS
`SYSTEM,” filed October 15, 1999, and issued October 9, 2007
`(“Haartsen”)
`Shared Wireless Access Protocol (Cordless Access)
`Specification SWAP-CA, Revision 1.3 draft 20000229, dated
`February 29, 2000 by The HomeRF™ Technical Committee
`(“HomeRF SWAP Spec. 1.3”)
`Declaration of Adrian Stephens, including Appendices A-R
`thereto, signed and dated May 16, 2019 (“Stephens Dec.”)
`
`
`
`
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`Petition for Inter Partes Review of USP 7,016,676
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`Page ix
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`IPR2019-01125
`Patent 7,016,676
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`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`1.
`Real Party-In-Interest (37 C.F.R. § 42.8 (b)(1))
`Microsoft is the real party-in-interest (“RPI”) and is the only party currently
`
`directing, controlling and funding this inter partes review. Microsoft notes that in
`
`the related district court litigation, patent owner accuses Microsoft of infringement
`
`based on its use of a component Microsoft obtained from Marvell Semiconductor.
`
`Microsoft has requested defense/indemnity from Marvell, and Marvell has refused
`
`to defend/indemnify Microsoft. Nonetheless, given uncertainty as to what a PTAB
`
`panel or court may determine is an RPI under applicable law, Microsoft names
`
`Marvell as such under Section 312(a)(2) out of an abundance of caution. After a
`
`reasonable search, Microsoft could find no public indication that Marvell previously
`
`has been served with a complaint alleging infringement of the ’676 patent; nor is
`
`Microsoft otherwise aware of Marvell being served with a complaint alleging
`
`infringement of the ’676 patent.
`
`
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`Petition for Inter Partes Review of USP 7,016,676
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`Page x
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`
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`2.
`Related Matters (37 C.F.R. § 42.8 (b)(2))
`The ’676 patent (Ex. 1001) is asserted by Uniloc 2017 LLC in the following
`
`IPR2019-01125
`Patent 7,016,676
`
`litigations:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Uniloc 2017 LLC v. Microsoft Corporation,
`8:18-cv-02053 (C.D. Cal.), filed November 17, 2018;1
`
`Uniloc 2017 LLC, et al. v. Google LLC,
`2:18-cv-00495 (E.D. Tex.), filed November 17, 2018;
`
`Uniloc 2017 LLC v. Verizon Communications Inc., et al.,
`2:18-cv-00513 (E.D. Tex.), filed November 17, 2018;
`
`Uniloc 2017 LLC v. AT&T Services, Inc., et al.,
`2:18-cv-00514 (E.D. Tex.), filed November 17, 2018;
`
`Uniloc 2017 LLC, et al. v. Google LLC,
`2:18-cv-00448 (E.D. Tex.), filed October 31, 2018;
`
`Uniloc 2017 LLC, et al. v. AT&T, Inc., et al.,
`2:18-cv-00379 (E.D. Tex.), filed August 29, 2018;
`
`Uniloc 2017 LLC, et al. v. Verizon Communications Inc., et al.,
`2:18-cv-00380 (E.D. Tex.), filed August 29, 2018; and
`
`Uniloc 2017 LLC, et al. v. Microsoft Corporation,
`8:18-cv-01279 (C.D. Cal.), filed July 24, 2018.
`
`
`
`
`
`1 Attached as Ex. 1003 is a copy of Patent Owner’s “Disclosure of Asserted Claims
`
`and Infringement Contentions”, along with Exhibit A thereto, in this Related Matter
`
`in which the ’676 patent is asserted against Petitioner (“UNILOC Contentions”).
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`Petition for Inter Partes Review of USP 7,016,676
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`Page xi
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`IPR2019-01125
`Patent 7,016,676
`Additionally, claims 1 and 2 of the ’676 patent are being challenged by
`
`Petitioner in the following PTAB matters:
`
` Microsoft Corporation v. Uniloc 2017 LLC,
`IPR2019-01116 (P.T.A.B.), filed concurrently.
`
`Petitioner is unaware of any other related matters, or of other patents that
`
`claim priority to, or share a claim of priority with, the challenged patent.
`
`3.
`
`Lead And Back-Up Counsel
`(37 C.F.R. § 42.8 (b)(3)) And Service Information
`
`Lead Counsel
`Derrick W. Toddy, Reg. No. 74,591
`derrick.toddy@klarquist.com
`
`
`Back-up Counsel
`(First Back-Up)
`Andrew M. Mason, Reg. No. 64,034
`andrew.mason@klarquist.com
`
`Todd M. Siegel, Reg. No. 73,232
`todd.siegel@klarquist.com
`KLARQUIST SPARKMAN, LLP
`121 SW Salmon Street, Suite 1600
`Portland, Oregon, 97204
`503-595-5300 (phone)
`503-595-5301 (fax)
`
`Petitioner consents to service via email at the above email addresses.
`
`Pursuant to 37 C.F.R. § 42.10(b), concurrently filed with this Petition is a
`
`Power of Attorney executed by Petitioner and appointing the above counsel.
`
`
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`Petition for Inter Partes Review of USP 7,016,676
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`Page xii
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`Patent 7,016,676
`Proof Of Service (37 C.F.R. §§ 42.6 (e) And 42.105 (a))
`
`4.
`
`Proof of service of this Petition is provided in the attached Certificate of
`
`Service.
`
`5.
`
`Fee For Inter Partes Review (37 C.F.R. § 42.15 (a))
`
`An electronic payment in the amount of $30,500 for the fee specified by 37
`
`C.F.R. § 42.15(a) is being paid at the time of filing this petition, charged to deposit
`
`account no. 02-4550. Any adjustments in the fee may be debited/credited to this
`
`deposit account.
`
`6. Word Count Certification (37 C.F.R. § 42.24)
`
`Certification of the compliance with the word count limit set forth in 37 C.F.R.
`
`§ 42.24 (a)(1)(i) is provided in the attached Certificate of Compliance with Type-
`
`Volume Limits.
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`Petition for Inter Partes Review of USP 7,016,676
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`Page xiii
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`IPR2019-01125
`Patent 7,016,676
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`I.
`
`SUMMARY OF ARGUMENT
`The ’676 patent is directed to the use of a control station that facilitates and
`
`controls alternate access to a common (i.e., the same) frequency band by multiple
`
`radio stations operating in accordance with at least two different radio standards or
`
`variants of those standards. At the time the ’676 application was filed, however, there
`
`was nothing new about providing such alternate access to a common frequency band.
`
`To the contrary, as further described below, multiple patents and printed publications
`
`disclosed the same subject matter claimed by the ’676 patent, years before the
`
`earliest possible priority date of the ’676 patent.
`
`II. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))
`Petitioner certifies that the ’676 patent is available for inter partes review, and
`
`that Petitioner is not barred or estopped from requesting an inter partes review
`
`challenging the patent claims on the grounds identified in this Petition.
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND
`RELIEF REQUESTED (37 C.F.R. § 42.104(b))
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Microsoft Corporation
`
`(“Microsoft” or “Petitioner”) respectfully requests inter partes review of U.S. Patent
`
`No. 7,016,676 (Ex. 1001, also referred to herein as the “’676 patent”, “challenged
`
`patent,” or “the patent”), allegedly assigned to Uniloc 2017 LLC (“Patent Owner”).
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`Petition for Inter Partes Review of USP 7,016,676
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`Page 1
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`Patent 7,016,676
`Petitioner asserts that there is a reasonable likelihood that claim 5 of the ’676
`
`patent (the “Challenged Claim”) is unpatentable on the grounds set forth herein. For
`
`the reasons set forth below, claim 5 should be found unpatentable and cancelled.
`
`A. Claims For Which Review Is Requested (37 C.F.R. § 42.104(b)(1))
`Petitioner requests inter partes review of claim 5 (the “Challenged Claim”) of
`
`the ’676 patent under 35 U.S.C. § 311.
`
`B.
`Statutory Grounds For Challenge (37 C.F.R. § 42.104 (b)(2))
`The Challenged Claim is unpatentable as obvious under 35 U.S.C. § 103,
`
`based at least on the following specific grounds presented in this Petition:
`
`Reference(s)
`Ground
`Ground 1 HomeRF (Ex. 1006) in view of
`HomeRF SWAP Spec. 1.3 (Ex.
`1018)
`Ground 2 HomeRF in view of
`HomeRF Tutorial (Ex. 1008),
`in further view of
`HomeRF SWAP Spec. 1.3
`Ground 3 HomeRF in view of
`Haartsen (Ex. 1017)
`Ground 4 HomeRF in view of
`HomeRF Tutorial and Haartsen
`
`Basis
`35 U.S.C. § 103
`
`Claims
`5
`
`35 U.S.C. § 103
`
`5
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`5
`
`5
`
`For each ground, in Section VII below, the Petition demonstrates at least a
`
`reasonable likelihood that the Challenged Claim is unpatentable.
`
`Neither “the same or substantially the same prior art or arguments previously
`
`were presented to the Office,” 35 U.S.C. § 325(d). Neither the applicants nor any
`
`Examiner addressed whether the references included in Grounds 1-4 (Exs. 1006,
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`Petition for Inter Partes Review of USP 7,016,676
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`Page 2
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`IPR2019-01125
`Patent 7,016,676
`1008, 1017, 1018) (or any reference substantially identical thereto) was prior art or
`
`attempted to distinguish the Challenged Claim from those references.
`
`Thus, no unpatentability ground asserted herein has been previously presented
`
`to the Patent Office.
`
`IV. BACKGROUND AND STATE OF THE ART
`The ’676 patent relates to a “Method, network and control station for the two-
`
`way alternate control of radio systems of different standards in the same frequency
`
`band”. ’676 patent, Title.
`
`A. Applicant’s Admitted Prior Art
`The ’676 patent acknowledges that a number of the features recited therein
`
`were already known in the art.
`
`1.
`
`Different Radio Interface Standards Operating
`In The Same Frequency Band Was Known
`The ’676 patent acknowledges that each of the exemplary radio interface
`
`standards it addresses in its “advantageous embodiments” was already established,
`
`and that stations operating in accordance with these standards operate in the same
`
`frequency band:
`
`A radio system for wireless transmission of information is
`allowed to use transmission power only in accordance
`with standards. The national
`regulation authority
`determines on what frequencies with what transmission
`power and in accordance with what radio interface
`
`Petition for Inter Partes Review of USP 7,016,676
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`standard a radio system is allowed to transmit. For this
`purpose there is provided for so-termed ISM frequency
`bands (Industrial Scientific Medical) that radio systems
`transmit in the same frequency band in accordance with
`different radio interface standards. An example of this is
`the US radio system IEEE802.11a and the European
`ETSI BRAN HiperLAN/2. The two radio systems
`transmit in the same frequency bands between 5.5 GHz
`and 5.875 GHz with approximately the same radio
`transmission method, but different
`transmission
`protocols.
`
`’676 patent, 1:10-23.2
`
`The specification goes on to describe these two transmission protocols
`
`and their operation, as well as their interaction within this common
`
`frequency band. The ’676 patent further provides figures 1 and 2, illustrating
`
`the function of these “known” standards:
`
`
`2 Unless otherwise noted, emphasis in quoted language throughout this Petition is
`
`added, and not part of the original document cited.
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`’676 patent, Fig. 1, described id., 4:38-39, 45-46, respectively, as “show[ing] the
`
`frame structure in accordance with the ETSI BRAN HiperLAN/2 standard” and
`
`“show[ing] the structure of the HiperLAN/2 frame” (German language in figure is
`
`
`
`in original).
`
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`
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`’676 patent, Fig. 2, described id., 4:47-49 as “diagrammatically show[ing] the media
`
`access in systems working in accordance with the radio interface standard
`
`IEEE802.11a” (German language in original).
`
`A POSITA would have recognized, then, that both Figures 1 and 2 of the ’676
`
`patent, and the accompanying discussion, refer to the state of the art at the time that
`
`the ’676 patent application was filed, as opposed to features introduced by the ’676
`
`patent itself. See Declaration of Peter Rysavy (Ex. 1004, “Rysavy Dec.”), ¶¶ 25-29.
`
`
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`2.
`
`Using A Control Station To
`Moderate Network Traffic Was Known
`The ’676 patent further acknowledges that systems operating in accordance
`
`with each of these prior art radio interface standards provided Medium Access
`
`Control, and that systems operating in accordance with ETSI BRAN HiperLAN/2 –
`
`referred to as the “first radio interface standard” in the claimed “advantageous
`
`embodiment” described in the specification – provided a control station, referred to
`
`as an “Access Point”:
`
`The Medium Access Control (MAC) of the two systems is
`totally different. ETSI BRAN HiperLAN/2 utilizes a
`centrally controlled reservation-based method in which
`a radio station takes over the role of a central instance
`co-ordinating the radio resources. This central radio
`station (Access Point, AP) which may be an access point
`to the wide area network, periodically signals every 2 ms
`the MAC frame structure from the AP and the associated
`stations if required.
`
`’676 patent, 1:34-42. Rysavy Dec., ¶¶ 30.
`
`3.
`“Switching” Frequency To Avoid Interference Was Known
`The ’676 patent further acknowledges that both of the prior art radio interface
`
`standards utilized “standardized” methods for “active switching” to another
`
`frequency within the permitted frequency band in the event of interference:
`
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`interference, method [sic] were
`the event of
`In
`standardized for an active switching to another frequency
`within the permitted frequency band, for controlling
`transmission power and for the adaptive coding and
`modulation to reduce interference. Radio systems of
`wideband LANs of the radio interface standards ETSI
`BRAN HiperLAN/2 and IEEE802.11a utilize the same
`radio transmission method, a 64-carrier OFDM method
`and an adaptive modulation and coding. About the same
`modulation and coding methods (Link Adaptation, LA)
`are defined for the two standards.
`
`’676 patent, 1:24-33. Rysavy Dec., ¶ 31.
`
`B.
`
`Summary Of The Prior Art To The ’676 Patent
`
`This Petition primarily relies on several pieces of prior art to challenge claims
`
`of the ’676 patent, whether alone, or in conjunction with the patent applicant’s own
`
`admissions regarding the state of the art at the time the ’676 patent application was
`
`filed, as further described above. These prior art references are summarized at the
`
`beginning of each ground in which they are first introduced in Section VII, with a
`
`particular focus on their specific teachings that are relevant to the claim elements
`
`against which they are cited.
`
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`V. OVERVIEW OF THE ’676 PATENT
`The ’676 patent, titled “METHOD, NETWORK AND CONTROL STATION
`
`FOR THE TWO-WAY ALTERNATE CONTROL OF RADIO SYSTEMS OF
`
`DIFFERENT STANDARDS IN THE SAME FREQUENCY BAND” issued on
`
`March 21, 2006. The ’676 patent issued from U.S. Patent Application No.
`
`10/089,959 (the “959 application”), filed on April 4, 2002, which is a National Stage
`
`Entry of PCT No. PCT/EP01/09258, filed August 8, 2001 and published as WO
`
`02/13457 A2, which in turn claims priority to a German application, No. 100 39
`
`532.5, filed August 8, 2000.3
`
`A. The ’676 Patent’s Specification
`The ’676 patent includes 5 independent claims 1, 6, 7, 8, 9, of which claim 1
`
`is the only independent claim is challenged here. Each of the first four independent
`
`claims recites “[a]n interface-control protocol method for a radio system which has
`
`at least one common frequency band that is provided for alternate use by a first and
`
`a second radio interface standard,” while claim 9 recites a “wireless network.”
`
`
`3 While Petitioner does not agree that the ’676 patent is entitled to its earliest claimed
`
`priority date, resolution of this issue is not required to determine that the ’676 patent
`
`is unpatentable, and so the issue of the ’676 patent’s alleged priority is not addressed
`
`herein.
`
`Petition for Inter Partes Review of USP 7,016,676
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`As discussed above, the ’676 patent applicant admits that it was known for
`
`radio systems using different radio interface standards to broadcast in the same
`
`frequency band, namely “US radio system IEEE802.11a and the European ETSI
`
`BRAN HiperLAN/2”. ’676 patent, 1:10-23, and that it was known to switch to a
`
`different frequency within a common frequency band in the event of detected
`
`interference. Id., 1:24-28. Rysavy Dec., ¶ 34.
`
`But, the specification claims “In case of alternating interference, [prior art]
`
`systems do not work efficiently and occupy a frequency channel even at low
`
`transmission rates.” Id., 2:8-10. Against this backdrop, the specification purports to
`
`provide “a method, a wireless network and a control station which make efficient
`
`use of radio transmission channels possible.” Id., 2:11-13. Rysavy Dec., ¶¶ 34-35.
`
`FIG. 3 is the only figure that shows something more than what the
`
`patent admits is known technology. That figure shows providing a “central
`
`control station 13” (labeled “S”) to control alternate use of a frequency band
`
`by different stations operating on different standards: “three stations 10, 11
`
`and 12 ... [each labeled “A”, that] work in accordance with the first radio
`
`interface standard A, for example, in accordance with the HiperLAN/2
`
`standard” and “four stations, 14, 15, 16, and 17 ... [each labeled “B,” that]
`
`work in accordance with the second radio interface standard B, for example,
`
`in accordance with the IEEE802.11a standard.” Id., 5:22-30. This control
`
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`station “controls the alternate access by the first wireless network and the
`
`second wireless network to the common frequency band.” Id., 5:39-41.
`
`
`
`’676 patent, FIG. 3 (annotated). Rysavy Dec., ¶ 36.
`
`The patent explains that “[t]he control of the alternate use of the common
`
`frequency band may be effected in various ways.” ’676 patent, 2:51-52.
`
`In one example: “…it is possible to provide certain predefinable time
`
`intervals for the use of the first and second radio interface standard and allocate the
`
`frequency band alternately to the first radio interface standard and then to the
`
`second radio interface standard in a kind of time-division multiplex mode.” Id.,
`
`2:52-57.
`
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`In another example, the first radio interface is prioritized, as the second
`
`wireless network stations are provided frequency band access “if stations operating
`
`in accordance with the first radio interface standard do not request access”:
`
`as claimed in claim 2, the control station is provided, on
`the one hand, for controlling the access to the frequency
`band for stations operating in accordance with the first
`radio interface standard. ... In that case the stations of the
`[first radio interface standard] send a request for capacity
`to the control station and the control station allocates
`transmission capacity to each respective station.
`
`On the other hand, the control station is provided ... for
`releasing the common frequency band for access by
`stations operating in accordance with the second radio
`interface standard, if stations operating in accordance with
`the first radio interface standard do not request access to
`the frequency band. In this advantageous embodiment of
`the invention the first radio interface standard is given
`priority over the second radio interface standard in this
`manner. The release of the common frequency band for
`the second radio interface standard may be effected, for
`example, explicitly by the sending of control information
`to the stations of the second radio interface standard.
`
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`Id., 2:63 – 3:19. Rysavy Dec., ¶¶ 37-39. Such a scheme was recited in
`
`original claim 2, which was later canceled and its subject matter added to
`
`claim 1 (see discussion of prosecution history below).
`
`The patent further explains that “[t]his [control] may be effected in an
`
`advantageous manner in that the [control station] sends a broadcast message to the
`
`[second wireless network] stations ... when the [first wireless network] stations ... do
`
`not need transmission capacity.” Id., 5:42-45.
`
`The specification further states:
`
`When the integrated controller in accordance with the
`in
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