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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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`MARVELL SEMICONDUCTOR, INC.,
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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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`––––––––––
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`Case No. IPR2019-01349
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`U.S. Patent 7,016,676
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`––––––––––
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`PETITIONER’S REPLY
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`IPR2019-01349 Reply
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`TABLE OF CONTENTS
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`Page
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`I.
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`The ’676 Patent Is Not Entitled to a Foreign Priority Claim. ......................... 4
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`A. Uniloc failed to carry its burden of proof. ............................................. 4
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`B.
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`C.
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`The applicant failed to perfect its foreign priority claim. ..................... 4
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`Uniloc argues that “some” priority documents were received,
`but this is insufficient as a matter of law and contradicted by the
`factual record. ........................................................................................ 7
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`D. Uniloc cannot blame the International Bureau for the
`applicant’s mistake. ............................................................................... 8
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`II.
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`Claim Construction .......................................................................................... 9
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`III. Ground 1 (Sherman) (Claims 1-2) ................................................................. 10
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`A.
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`The Board had the authority and was correct that step (2) is not
`required under Schulhauser. ................................................................ 10
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`1.
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`2.
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`Schulhauser is binding authority. ............................................. 11
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`Schulhauser applies to Claim 1................................................. 12
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`B.
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`Step (2) is not required, but is nonetheless rendered obvious by
`Sherman. .............................................................................................. 13
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`IV. Ground 3 (Shellhammer) (Claims 1-2) .......................................................... 19
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`A.
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`B.
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`Shellhammer teaches all limitations. ................................................... 20
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`All evidence of record supports the obviousness of the
`challenged claims, including step (2). ................................................. 22
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`V. Grounds 2, 4, and 5 (Claim 5) ....................................................................... 28
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`VI. ALJ Unconstitutionality ................................................................................ 28
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`VII. Conclusion ..................................................................................................... 29
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`The challenged claims are rendered obvious by Sherman, which teaches the
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`same technique for alternating between the same wireless standards described in
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`the ’676 patent—HIPERLAN/2 and IEEE 802.11a1—and by Shellhammer, which
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`teaches alternate access for two standards that Uniloc accuses of infringement in
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`district court—Bluetooth and IEEE 802.11. Ex. 1003 ¶¶220-224. Each reference
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`renders the challenged claims obvious, as explained by Dr. Roy.
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`In response, Uniloc offers nothing more than attorney argument. Uniloc
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`declined to take Dr. Roy’s deposition and offers no expert testimony of its own.
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`The only exhibit submitted by Uniloc (Exhibit 2001) is a non-certified copy of a
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`German PCT application for allegedly showing an earlier priority but otherwise
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`having no relevance to the obviousness of the challenged claims. Uniloc’s
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`arguments are replete with errors and unsupported by any evidence.
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`Unable to contest the facts, Uniloc asks the Board to create new law by
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`imposing a “branching process flow” requirement on Schulhauser. But the Board
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`has already rejected such a requirement, which would be at odds with the Federal
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`Circuit cases on which Schulhauser was based.
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`Uniloc is wrong on the facts and the law. Petitioner respectfully requests that
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`the Board finds claims 1 and 2 of the ’676 patent unpatentable.
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`1 Sherman and the ’676 patent both give priority access to HIPERLAN/2 stations
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`during the IEEE 802.11 contention-free period. Ex. 1003 ¶¶128-133.
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`I.
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`IPR2019-01349 Reply
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`The ’676 Patent Is Not Entitled to a Foreign Priority Claim.
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`During the prosecution of the ’676 patent, the applicant failed to provide a
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`certified copy of the foreign priority application and therefore cannot claim priority
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`to it. Even if an earlier priority date were possible, that would only affect Ground 1
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`(based on Sherman). The challenged claims would still be rendered obvious by
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`Ground 2 (based on Shellhammer).
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`A. Uniloc failed to carry its burden of proof.
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`Uniloc attempts to shift the burden to Petitioner. Paper 13 (“POR”), 7. But
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`“a patentee bears the burden of establishing that its claimed invention is entitled to
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`an earlier priority date …” See In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364,
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`1376 (Fed. Cir. 2016); Oasis, Inc. et al. v. T-Mobile USA Inc. (Appeal No. 2007-
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`1265, decided April 11, 2008). Uniloc has failed to meet its burden, and
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`furthermore, the record establishes the ’676 patent is not entitled to an earlier
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`priority date.
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`B.
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`The applicant failed to perfect its foreign priority claim.
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`The Examiner was correct in rejecting the applicant’s foreign priority claim
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`because the applicant failed to furnish a certified copy of the foreign priority
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`application (German application No. DE10039532.5) during the prosecution of the
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`’676 patent, as required by 37 C.F.R. 1.55(g)(1) (“The claim for priority and the
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`certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule
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`17 must, in any event, be filed within the pendency of the application…”)
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`(emphasis added). A certified copy the German application appears nowhere in the
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`prosecution history. See generally, Ex. 1002.
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`Three documents in the file history confirm that the USPTO did not receive
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`a certified copy of the German application. First, the Examiner indicated on the
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`Notice of Allowance that the USPTO had not received any priority documents. See
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`Ex. 1002, 0152:
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`Second, the Examiner indicated on a Bibliographic Data Sheet that the
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`application did not meet the conditions in 35 U.S.C. § 119(a)-(d) for a foreign
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`priority claim. See Ex. 1002, 0155:
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`Third, an Office Action indicates that “none” of the certified copies of the
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`alleged priority documents, i.e., the German application, have been received. See
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`Ex. 1002, 0131:
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`C. Uniloc argues that “some” priority documents were received, but
`this is insufficient as a matter of law and contradicted by the
`factual record.
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`Uniloc points to an Office Action, dated September 22, 2004, where the
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`Examiner checked a box indicating the USPTO received “some” priority
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`documents. POR, 9. But providing only “some” documents is insufficient because
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`the USPTO must receive a certified copy of the priority documents to perfect a
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`foreign priority claim. See 37 C.F.R. 1.55(g)(1). Therefore Uniloc’s argument fails
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`as a matter of law.
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`Moreover, the File History as a whole indicates this one check mark, from
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`September 2004, was a mistake because the Examiner checked the “None” box in
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`three subsequent communications to the applicant: (1) an Office Action dated
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`November 1, 2005, (2) a Bibliographic Data Sheet, dated December 2, 2005, and
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`(3) the Notice of Allowance dated December 6, 2005 as shown above. See Ex.
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`1002, 0131, 0152, 0155. The Examiner informed the applicant three times that the
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`USPTO had not received a certified copy of the priority document, and the
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`applicant never disputed this point during prosecution.
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`Furthermore, the file history contains a copy of the PCT application but not
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`a copy of the German application, providing further confirmation that the German
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`application was not provided “within the pendency of the application” as required
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`by 37 C.F.R. 1.55(g)(1).
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`D. Uniloc cannot blame the International Bureau for the applicant’s
`mistake.
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`Uniloc claims “it is the responsibility of the International Bureau to provide
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`a certified copy of the priority document to the USPTO.” POR, 9. But PCT and
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`USPTO regulations say otherwise.
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`The Bureau provides the certified copy only upon the USPTO’s request. See
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`PCT Rule 17.2(a) (“Where the applicant has complied with Rule 17.1(a), (b) or (b-
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`bis) the International Bureau shall, at the specific request of the designated Office,
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`promptly but not prior to the international publication of the international
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`application, furnish a copy of the priority document to that Office.”). In turn, the
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`USPTO provides the request to the Bureau only upon completion of a
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`PCT/RO/101 form by the applicant. MPEP 1821.
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`The file history does not include any such form, and the POR did not raise
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`any argument that the applicant made a proper request for a certified copy of the
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`German application to be furnished. Despite multiple communications from the
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`Examiner indicating a failure to perfect foreign priority, the applicant made no
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`attempt to correct the issue and therefore is not entitled to claim priority to the
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`foreign application.
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`II. Claim Construction
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`The Board modified Petitioner’s articulation of a POSITA by removing the
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`words “or more.” ID, 19. Petitioner’s invalidity grounds and arguments are not
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`affected by this modification. See Ex. 1003 ¶¶63-70. As presented by the Petition
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`and Dr. Roy, the skills and knowledge of a POSITA are based on the stated one
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`year of experience. The Petition points out that a person with more years of
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`experience would also share that baseline level of skill, but it does not rely on that
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`additional experience for its analysis, and no party has raised any factual dispute
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`based on the number of years of work experience.
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`Uniloc suggests the Institution Decision held “the qualifier ‘or more’ as
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`applied to the years of working experience is indefinite…” POR, 11. This is
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`incorrect. The Institution Decision did not adopt the “or more” qualifier but did not
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`find it to be indefinite. See Paper 9 at 21. The Board noted that “we have no reason
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`to disagree with Petitioner’s articulation of the level of ordinary skill, except to
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`note that the qualifier ‘one or more’ as applied to the level of education and years
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`of experience expands the level to encompass that of an expert” and therefore
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`“adopt Petitioner’s articulation, but without the expansive qualifier ‘or more’ as
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`applied to the amount of experience.” See id., 19.
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`III. Ground 1 (Sherman) (Claims 1-2)
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`Uniloc only disputes whether step (2) of limitation 1[d] is met (“…renders
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`the frequency band available for access by the stations working in accordance with
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`the second radio interface standard if stations working in accordance with the first
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`radio interface standard do not request access to the frequency band”). Uniloc does
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`not dispute that Sherman teaches the other limitations for claims 1 and 2.
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`Under Schulhauser, step (2) is not required. Even if step (2) were required,
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`Sherman renders it obvious.
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`A. The Board had the authority and was correct that step (2) is not
`required under Schulhauser.
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`Uniloc does not dispute that, should the Board apply Schulhauser to claim 1,
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`Sherman renders it obvious. The Board’s application of Schulhauser was correct
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`and required by law.
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`1.
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`Schulhauser is binding authority.
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`Uniloc invites the Board to error. Uniloc asks the Board to ignore the
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`binding authority of Schulhauser because the case was not cited in the Petition.
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`POR, 25-26. However, “the application of Schulhauser is a claim construction
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`issue, which is a matter of law.” See Dell Inc. v. Realtime Data LLC, IPR2017-
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`00176 (Paper 43) at 15. It is well-settled that the PTAB is not limited to the parties’
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`proposed claim constructions. See Intellectual Ventures II LLC v. Ericsson Inc.,
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`686 Fed.Appx. 900, 905 (2017); SAS Institute, Inc. v. ComplementSoft, LLC, 825
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`F.3d 1341, 1343, 1351 (2016), rev’d on other grounds, SAS Institute, Inc. v. Iancu,
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`138 S.Ct. 1348 (2018). Here, Schulhauser was raised in the Institution Decision,
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`which provides both parties with reasonable notice and the opportunity to present
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`arguments in response.
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`Uniloc’s reliance on Koninklijke Philips N.V. v. Google LLC is misplaced.
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`948 F.3d 1330 (Fed. Cir. 2020). Koninklijke held institution to be improper when
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`based on a combination of prior art references not advanced in the petition. Id. at
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`1335. Here, in contrast, the PTAB instituted on the specific grounds presented in
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`the petition. The application of binding authority is not a new invalidity ground or
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`theory. See TeraData Operations, Inc. v. Realtime Data, LLC, IPR2017-00557
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`(Paper 34) at 16 (“Schulhauser is our precedent and it should apply given its
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`applicability to the claim construction for the claims at issue.”); Dell, IPR2017-
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`00176 (Paper 43) at 11; Hulu., LLC v. Sound View Innovations, LLC IPR2018-
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`00864 (Paper 35) at 12-13.
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`2.
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`Schulhauser applies to Claim 1.
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`Uniloc attempts to distinguish Schulhauser with the same two arguments it
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`presented to the Board in another proceeding involving the ’676 patent. See
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`Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00376 (Paper 16) at 6-7. The Board
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`rejected Uniloc’s arguments. See id.
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`First, Uniloc argued that Schulhauser was based on the broadest reasonable
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`interpretation standard and should therefore be ignored under Phillips. See POR,
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`26-27. Uniloc cites no authority. To the contrary, the Board already rejected this
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`argument. See Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00376 (Paper 16) at 6
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`(“Schulhauser, on its face, does not limit its application to circumstances where the
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`broadest reasonable interpretation rule applies, and it is a precedential decision of
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`the Board to which we are bound.”). Moreover, Schulhauser relied on Federal
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`Circuit cases decided under the Philips standard. See, e.g., Ex parte Schulhauser,
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`Appeal No. 2013–007847 at 10 (PTAB April 28, 2016) (Precedential) (citing
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`Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed. Cir. 2010) (affirming
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`a district court’s interpretation of a method claim, under plain and ordinary
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`meaning); Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed. Appx. 603,
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`607 (Fed. Cir. 2007)).
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`Second, Uniloc asks the Board to create new law with a “branching”
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`requirement that is at odds with the Federal Circuit precedent. According to
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`Uniloc, “Schulhauser necessarily requires a branching process[.]” POR, 28-31. But
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`Uniloc cites no cases that have applied a branching requirement to Schulhauser,
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`and the Board rejected this argument when Uniloc presented it previously. See
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`Ericsson, IPR2020-00376 (Paper 16) at 7 (finding Schulhauser does not require
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`conditions that are mutually exclusive to each other—“it is the conditional or
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`exclusive nature of ‘if’ discussed in Schulhauser that we address herein, as
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`opposed to mutual exclusivity.”).
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`The Federal Circuit cases on which Schulhauser is based—Applera and
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`Cybersettle—do not mention any requirement for a branching process or mutually
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`exclusive steps. See, e.g., Applera, 375 Fed. Appx. at 21. And the claims in
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`Applera do not include a branching process or mutual exclusivity, contradicting the
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`notion that such a requirement exists. See id. (construing a method with a step of
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`“repeating steps (a) and (b) until the sequence of nucleotides is determined” and
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`holding that “[t]here is no need for repetition once the sequence of the
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`polynucleotide has been fully determined.”).
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`B.
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`Step (2) is not required, but is nonetheless rendered obvious by
`Sherman.
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`Sherman gives priority to HIPERLAN/2 by allowing HIPERLAN/2
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`transmissions during the 802.11 contention-free period (“CFP”), but relinquishing
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`time to 802.11 devices during a subsequent contention period (“CP”) if no
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`HIPERLAN/2 transmission requests are pending. See Ex. 1004, 6:1-8, 5:47-57,
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`Figure 5; Ex. 1003 ¶¶171-177.
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`The CFP is variable length. Its end is not fixed in time. Nor is it fixed to the
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`CFP maximum length. Instead, the Hybrid AP sends a CF_End frame to end the
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`contention-free period and begin the contention period for 802.11 CP traffic. See
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`Ex. 1004, 6:2-8 (“The CFP’s maximum length … is optimally set very close to the
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`full length of the superframe. To relinquish the time to the CP, when the CF_End is
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`sent, all terminals automatically reset their NAV’s. Normal [802.11] CP
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`transmissions would then occur.”) (emphasis added), Fig. 5; Pet., 32-33; Ex. 1003
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`¶¶173-176:
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`Sherman Figure 5 shows the Hybrid AP ending the CFP before reaching the CFP
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`max length. See Ex. 1004, 5:41-57, 6:1-8, Fig. 5 (showing CFP_End sent n x 2ms
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`before the end of the CFP max length and superframe); Ex. 1003 ¶¶173-176. In
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`Figure 5, Sherman teaches that when HIPERLAN/2 transmissions end—shown by
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`the end of H/2 MAC frames—the Hybrid AP ends the CFP by sending CF_End,
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`relinquishing the rest of the superframe for 802.11 devices. See Ex. 1004, 6:1-8,
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`5:41-57, Fig. 5; Ex. 1003 ¶¶173-177.
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`Petitioner respectfully submits that these teachings were overlooked in the
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`Institution Decision, which held that “Sherman sets the CFP ‘very close to the full
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`length of the superframe’ …” See ID, 28 (emphasis added). As explained above,
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`the CFP is not the same as its maximum length, and Sherman teaches setting CFP
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`“maximum length”—not the CFP—“very close to the full length of the
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`superframe.” See Ex. 1004, 6:2-8, Fig. 5; see also Ex. 1011, 003; Ex. 1003 ¶¶121,
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`173-175.
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`The Institution Decision requested a “clear disclosure that in the absence of
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`pending HIPERLAN/2 requests, Sherman would cut short or prematurely
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`terminate the already established CFP duration…” See ID, 28. Sherman Figure 5
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`provides explicit teaching that the CFP duration is cut short before the CFP
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`Maximum Length, at the end of HIPERLAN/2 transmissions. See Ex. 1004, 5:41-
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`57, 6:1-8, Fig. 5.
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`By teaching a CFP maximum length close to the full length of the
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`superframe, Sherman gives priority for HIPERLAN/2 devices to use the channel
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`during the CFP, which can occupy close to the entire superframe if needed. See,
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`e.g., Ex. 1004, Abstract, 2:15-19 (“HIPERLAN transmissions are offered the
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`highest level of protection possible within 802.11, which is provided within the
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`802.11 Contention Free Period (CFP).”), 6:1-8, Fig. 5; Ex. 1003 ¶¶137, 157, 173-
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`177. But Sherman also teaches that the CFP can be ended before its maximum
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`length by the AP sending CF_End after the end of HIPERLAN/2 transmissions,
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`opening the channel to 802.11 devices. See Ex. 1004, 6:1-8. 5:41-57, Fig. 5; Ex.
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`1003 ¶¶173-179. If this were not the case, the frequency band would sit idle, with
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`nearly the entire superframe reserved for non-existent HIPERLAN/2 transmission
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`requests, while 802.11 devices wait for a chance to transmit. Ex. 1003 ¶¶174-179.
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`Therefore Sherman gives priority to HIPERLAN/2 stations during the CFP, but
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`when there are no longer any pending HIPERLAN/2 transmission requests,
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`Sherman teaches sending CF_End to open the frequency band for 802.11 access.
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`See id.; Ex. 1004, 6:1-8, 5:41-57, Fig. 5.
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`Based on Sherman’s teachings, as HIPERLAN/2 transmissions decrease, the
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`length of the CFP decreases, with the CF_End being sent earlier to end the CFP.
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`See, e.g., Ex. 1004, 6:1-8, 5:41-57, Fig. 5; Ex. 1003 ¶¶173-177. A POSITA would
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`have found it obvious that when there are no HIPERLAN/2 transmission requests,
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`the Hybrid AP sends the CF_End signal to open the channel for 802.11 stations to
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`contend for access. See Ex. 1003 ¶¶173-177. Otherwise, if a POSITA did not apply
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`this obvious teaching, 802.11 CP stations would not have access to the frequency
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`band, because close to the full length of the superframe would be reserved for
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`HIPERLAN/2, even if no HIPERLAN/2 stations request access and the band is
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`idle. A static CFP would prevent the link from being shared with 802.11—
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`defeating the central purpose of Sherman. See Ex. 1004, 1:13-17, 3:62-66 (“… a
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`Super-frame structure, shown in FIG. 5 depicting signals of both standards, in a
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`channel, is disclosed herein that allows 802.11a stations (STA and AP) to share a
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`single channel with HIPERLAN/2 stations.”) (emphasis added); KSR Int'l Co. v.
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`Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill in the art is
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`also a person of ordinary creativity, not an automaton.”).
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`Uniloc offers no evidence—exhibits or expert opinion—to rebut Sherman’s
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`express teachings or Dr. Roy’s testimony, and Uniloc’s arguments are irrelevant to
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`the grounds and evidence at issue. Uniloc’s arguments presume that HIPERLAN/2
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`and 802.11 phases have fixed durations. Uniloc never addresses Sherman’s
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`variable-length phases, where the CFP ends whenever the AP sends CF_End, as
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`explained above. See Ex. 1004, 6:1-8, 5:47-57, Fig. 5.
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`Moreover, while Uniloc lists a variety of mechanisms that Sherman
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`allegedly does not teach or suggest, Uniloc never addresses the obviousness
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`rationale presented in the Petition: when HIPERLAN/2 stations do not request
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`access to the frequency band, the Hybrid AP ends the CFP, thereby rendering the
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`frequency available for access by 802.11 stations during the contention period
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`(CP). The closest argument raised by Uniloc alleges that Sherman does not teach a
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`mechanism for allocating the “CFP phase for use by 802.11stations via the super-
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`frame structure (e.g., contention free period)…” See POR, 23 (emphasis added).
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`This was not the obviousness position presented in the Petition or Dr. Roy, and
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`therefore Uniloc’s arguments are irrelevant.
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`To the extent Uniloc suggests that additional mechanisms beyond the prior
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`art 802.11 and HIPERLAN/2 standards are required, the ’676 patent would not be
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`enabled. Sherman teaches the same scheme for alternating access between
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`HIPERLAN/2 and 802.11 stations as the ’676 patent, but earlier and in greater
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`detail. The ’676 patent does not teach any modifications to the HIPERLAN/2 or
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`802.11 standards. Instead, it purports to disclose a scheme for the alternating use of
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`a frequency band by existing HIPERLAN/2 and 802.11 stations without
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`modification. See Ex. 1001, 5:20-41, 4:50-6:18; Ex. 1003 ¶¶77-80, ¶81 (“the ’676
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`patent provides minimal details regarding its alleged invention”). In the
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`embodiments of the ’676 patent, the stations are unmodified HIPERLAN/2 and
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`802.11 stations that use existing mechanisms, provided by each standard, for
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`requesting access to the frequency band. See Ex. 1001, 5:20-41, 4:50-6:18.
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`IV. Ground 3 (Shellhammer) (Claims 1-2)
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`Shellhammer renders all limitations of the challenged claims obvious.
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`Similar to Ground 1, Uniloc only disputes whether step (2) of limitation [1d] is
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`met.2 Uniloc does not dispute any other limitations for claims 1 or 2. POR, 35-44.
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`2 Step (2) is not required under Schulhauser and therefore Uniloc’s arguments fail
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`as a matter of law.
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`A.
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`Shellhammer teaches all limitations.
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`As explained in the Petition, Shellhammer teaches the alternate use of the
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`frequency band by 802.11 and Bluetooth stations. See Ex. 1005, Abstract
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`(“Techniques are for frequency coordination among two different wireless network
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`protocols, such as the IEEE 802.11 and Bluetooth protocols, operating in proximity
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`with one another.”). In particular, Shellhammer teaches an embodiment with a
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`control station (e.g., an AP/base station) controls the alternate use of the frequency
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`band (e.g., the 2.4 GHz ISM band) for IEEE 802.11 Power Saving Mode
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`(“802.11PSP”) and Bluetooth.3 See Ex. 1005, 8:52-61, Fig. 3; Ex. 1003 ¶245:
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`3 Uniloc accuses the alternating use of these same two wireless standards—IEEE
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`802.11 Power Save mode and Bluetooth—of infringing the challenged claims. See
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`Ex. 1013 at 12-13 (accusing “a coexistence strategy that makes the shared 2.4 GHz
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`frequency band available to Wi-Fi stations … when Bluetooth stations are not
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`requesting access to the frequency band …” citing to coordination between, e.g.,
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`“IEEE Power Save mode” and Bluetooth); Ex. 1003 ¶221.
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`IEEE 802.11 PSP traffic occurs during a first period (t802.11psp), then
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`Bluetooth traffic occurs during a second period (tnav). Shellhammer teaches that the
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`duration of the 802.11 PSP interval is not fixed and instead depends on “traffic
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`characteristics.” See Ex. 1005, 8:59-61. Shellhammer teaches the AP ending the
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`802.11 PSP interval by sending the “CTS” signal once all PSP MUs have received
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`their packets, i.e., once there are no longer any pending transmission requests. See
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`Ex. 1005, 8:65-9:8; Ex. 1003 ¶¶283-85. Thus, if no 802.11 PSP stations request
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`access to the frequency band during the first interval, Shellhammer teaches, and it
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`would have been obvious, for the AP to send the CTS signal, thereby rendering the
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`frequency band available for access by Bluetooth stations. See id. Dr. Roy
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`explained that these variable duration teachings would have fit well with IEEE
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`802.11’s distributed coordination function and boosted bandwidth efficiency. See
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`id.
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`B. All evidence of record supports the obviousness of the challenged
`claims, including step (2).
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`At institution, the Board held that “Petitioner’s arguments are cogent and
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`rational, and also supported by the cited disclosure of Shellhammer and the cited
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`testimony of Dr. Roy.” ID, 38-39. The factual record has not changed. Uniloc has
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`offered no exhibits, no expert declaration, and no deposition transcripts related to
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`Ground 3.4 Uniloc offers a scattershot of seven arguments that attempt to create
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`factual disputes without citing factual evidence—all seven arguments rely on raw
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`attorney arguments that are unsound and unsupported by any evidence.
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`Argument 1. Uniloc argues a POSITA would not have read the “precise
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`teachings” or “details” of Shellhammer’s embodiments “given the numerous
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`different embodiments described in brief overview by Shellhammer.” POR, 40.
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`Uniloc, however, admits that those other embodiments are only briefly mentioned
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`and unrelated to the teachings relied upon by the Petition. POR, 36 (“Neither the
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`Petition, nor the Institution Decision, addressed Shellhammer’s brief mention of
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`numerous unrelated embodiments.”) (emphasis added). Nothing prohibits a patent
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`from disclosing numerous embodiments, and Uniloc admits these additional
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`embodiments are unrelated to any issues raised in the Grounds before the Board.
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`4 Uniloc’s sole exhibit (Ex. 2001) relates to its priority date argument, which only
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`affects whether Sherman (Ground 1) is prior art. It has no bearing on Shellhammer
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`(Ground 3).
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`Argument 2. Uniloc speculates there “may” be an “alternative” design
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`where the intervals are pre-set based on the “expected complete transmission of
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`messages by the PSP MU’s.” POR, 40-41. The POR includes a single sentence of
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`attorney argument with no additional explanation regarding this alleged alternative.
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`Uniloc offers no evidence to believe this alternative is possible and no reason to
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`believe a POSITA would have considered it. Shellhammer never mentions an
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`“expected” completion of message transmission.
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`Moreover, the challenged claims do not recite any limitations requiring
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`efficiency or performance levels. See Smith & Nephew, Inc. v. Rea, 721 F.3d 1371,
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`1381 (Fed. Cir. 2013) (“[A]n unclaimed and undisclosed feature … cannot be the
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`basis for finding [a] patent to be non-obvious over the prior art.”). The Federal
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`Circuit has held it to be legal error to require proof that a POSITA would have
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`selected the prior art combination over other alternatives in the prior art. See
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`Novartis Pharm. Corp. v. W.-Ward Pharm. Int’l Ltd., 923 F.3d 1051, 1059 (Fed.
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`Cir. 2019) (‘“[O]ur case law does not require that a particular combination must be
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`the preferred, or the most desirable, combination described in the prior art in order
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`to provide motivation for the current invention.’ It is thus improper to require [the
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`defendant] to prove that a person of ordinary skill would have selected
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`everolimus over other prior art treatment methods.”) (emphasis added; citations
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`omitted); see also In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[T]hat
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`‘better alternatives exist in the prior art does not mean that an inferior combination
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`is inapt for obviousness purposes.’”).5
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`Argument 3. Uniloc conjures a hypothetical scenario, and asks what
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`happens if PSP MUs “continued to transmit, the entire time interval for Bluetooth
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`transmissions…” POR, 41. Uniloc offers no evidence to believe that this scenario
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`warrants consideration. Indeed, Uniloc’s hypothetical is contradicted by
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`Shellhammer, which explicitly states the opposite: when the 802.11 PSP traffic
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`ends, the AP sends the global CTS signal to stop 802.11 communications. See Ex.
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`1005, 8:67-9:8 (“Once all the PSP MU’s 120, 140 receive their packets, the AP 20,
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`may optionally send a global Clear to Send (CTS) signal 430 to shut down all the
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`802.11 communications for a NAV (Network Allocation Vector) period.”); Pet.
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`58-60; Ex. 1003 ¶ 261.
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`Obviousness does not require the prior art to be optimized for every
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`conceivable scenario; nor is it undermined by the existence of allegedly better
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`alternatives. See supra n. 5 and accompanying text. Even if hypothetical corner
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`cases exist—for which no evidence has been presented—it would not render
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`5 Uniloc contradicts this Federal Circuit precedent several times, including in
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`Arguments 2-4 and 6, by asking the Board to ignore Shellhammer’s teachings due
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`to speculative inefficiencies or possibly better alternatives. The Federal Circuit has
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`rejected these types of arguments, as explained above.
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`Shellhammer’s teachings inapt for obviousness purposes. See, e.g., Mouttet, 686
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`F.3d at 1334.
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`Argument 4. Uniloc speculates that Shellhammer “does not require variable
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`lengths of time periods at all” and “likely … signal[s] to the designer to select the
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`time intervals…” POR, 41-42 (emphasis added). But Shellhammer contradicts
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`Uniloc by teaching variable-length time intervals, where the AP may send a global
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`CTS signal to end the 802.11 PSP interval “[o]nce all the PSP MU's 120, 140
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`receive their packets…” See Ex. 1005, 8:67-9:8; Ex. 1003 ¶ 261.
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`To the extent Uniloc criticizes these teachings as being optional and not
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`“required,” Uniloc applies the wrong legal standard. For obviousness, teachings do
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`not have to be required or inherent. Dr. Roy explained several reasons why a
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`POSITA would have found it obvious and been motivated to send the optional
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`CTS signal as taught by Shellhammer. See Ex. 1003 ¶¶261-264, n. 8. Uniloc has
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`offered no evidence or even attorney argument to rebut Dr. Roy’s testimony.
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`Furthermore, the possible or even “likely” existence of alternatives do not
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`render a reference’s teachings unfit for obviousness, and it would be legal error to
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`require the Petitioner to prove that Shellhammer’s teachings are preferred to
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`Uniloc’s hypothetical alternatives.6 See supra n. 5 and accompanying text.
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`Argument 5. Uniloc argues there “there is no efficiency gained” by starting
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`Bluetooth transmissions when 802.11 PSP transmissions end. POR, 47. Uniloc
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`argues that leaving the frequency band idle, with no data being transferred and
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`100% wasted bandwidth, has the same efficiency as starting the Bluetooth interval
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`earlier