UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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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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`IPR2019-01349
`PATENT 7,016,676
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`PATENT OWNER SUR REPLY
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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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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`IPR2019-01349
`PATENT 7,016,676
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`PATENT OWNER SUR REPLY
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`IPR2019-01349
`U.S. Patent 7,016,676
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`Table of Contents
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`EXHIBITS............................................................................................................ III
`I.
`INTRODUCTION .................................................................................... 1
`II.
`PETITIONER DOES NOT PROVE THAT ANY
`CHALLENGED CLAIM IS UNPATENTABLE .................................... 1
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`A.
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`The Petitioner fails to demonstrate that Sherman renders
`Claim 1 obvious. (Ground 1) .......................................................... 1
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`1.
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`The Petition fails to show that Sherman teaches
`the Claim 1 recitation “wherein the control station
`… 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” .................................................................................... 1
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`2.
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`Ex parte Schulhauser is not applicable to Claim 1. ............. 2
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`B.
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`The Petitioner has failed to carry its burden of proving
`that Shellhammer renders Claim 1 obvious, as Petitioner
`fails to show that Shellhammer teaches or renders
`obvious “wherein the control station … 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” as recited in Claim 1. (Ground 3). ...................... 4
`CONCLUSION ......................................................................................... 6
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`III.
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`ii
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`IPR2019-01349
`U.S. Patent 7,016,676
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`EXHIBITS
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`International Patent Publication No.
`WO/02 13457 A2
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`Exhibit 2001
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`iii
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`IPR2019-01349
`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 Sur Reply in
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`response to the Reply (Paper 14) filed by Marvell Semiconductor, Inc. (“Petitioner”).
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`Petitioner has failed to carry its burden of showing that any challenged claim of the
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`‘676 is unpatentable for at least the reasons set forth herein and in the Patent Owner
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`Response (“Resp.”).
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`II.
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`PETITIONER DOES NOT PROVE THAT ANY CHALLENGED
`CLAIM IS UNPATENTABLE
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`A. The Petitioner fails to demonstrate that Sherman renders Claim 1
`obvious. (Ground 1)
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`For the reasons given in Patent Owner’s Response and herein, the Petitioner
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`has failed to meet its burden of establishing that Sherman renders claim 1 obvious,
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`and thus Ground 1 fails.
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`1.
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`The Petition fails to show that Sherman teaches the Claim 1
`recitation “wherein the control station … 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 explained in Patent Owner’s Response, the Petition fails to establish prima
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`facie obviousness of at least the following recitation: “wherein the control station …
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`renders the frequency band available for access by the stations working in accordance
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`with the second radio interface standard if stations working in accordance with the
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`first radio interface standard do not request access to the frequency band” as recited
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`1
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`IPR2019-01349
`U.S. Patent 7,016,676
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`in Independent Claim 1. In particular, and as agreed by the Board in the Institution
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`Decision, Paper No. 9, 26-29, Sherman does not teach or suggest any control station
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`that renders a frequency band available for access by the stations associated with a
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`second radio interface standard when other stations associated with a first radio
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`interface do not request access to the frequency band as would be required to render
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`Claim 1 obvious.
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`2.
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`Ex parte Schulhauser is not applicable to Claim 1.
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`For the reasons given in Uniloc’s Response, Ex parte Schulhauser is not
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`applicable here. Petitioner’s Reply focuses on non-binding decisions by other panels
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`of the Board without regard to specific claim language at issue. Petitioner does not
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`address that the limitations referred to by the Board as “step 2” were formerly recited
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`in dependent claim 2, were then added to claim 1, and a notice of allowance
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`subsequently issued. EX1002, 14. Thus, considering claim 1 in light of the
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`prosecution history, one of ordinary skill would understand that the two steps are
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`performed successively, and are not mutually exclusive. Moreover, the specification
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`clearly describes the situation where the control station is provided for releasing the
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`common frequency band if stations operating in accordance with the first radio
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`interface standard do not request access. EX1001, 3:7-13.
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`In addition, the proper construction is readily ascertained by considering the
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`claim language as whole. There can be no question that claim 1 affirmatively recites
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`2
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`U.S. Patent 7,016,676
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`“a control station which controls the alternate use of the frequency band.” The
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`“wherein” clause simply defines how this affirmatively recited control is to be
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`effected—i.e., “wherein the control station controls the access to the common
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`frequency band for stations working in accordance with the first radio interface
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`standard and renders the frequency band available for access by the stations working
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`in accordance with the second radio interface standard if stations working in
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`accordance with the first radio interface standard do not request access to the
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`frequency band.” Under this informative context, it would be erroneous to not give
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`patentable weight to a wherein clause that meaningfully limits and further defines
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`an expressly recited “controls” limitation in terms of how it must be effected.
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`Petitioner acknowledges that Ex parte Schulhauser was decided under a
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`different claim construction standard, the broadest reasonable interpretation
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`(“BRI”), which is not applicable here. Even when applying the former BRI standard,
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`the Board recognized that Schulhauser is not always applicable. For example, the
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`Board has interpreted conditional language recited in a method claim “to be limited
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`to the method described in which the recited conditions occur.” Ex Parte Prem K.
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`Gopalan & Bryan Thomas Elverson, IPR2017-007009, 2018 WL 2386111, at *3‒4
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`(P.T.A.B. May 21, 2018). There, the Board also found that “Schulhauser is not
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`controlling because it is factually distinguishable.” Id. “Unlike the method claim in
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`Schulhauser, the steps of method claim 1 are not mutually exclusive and the claim,
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`3
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`IPR2019-01349
`U.S. Patent 7,016,676
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`as written, covers only one method.” Id. The “if” statement of the wherein clause is
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`“integrated into one method or path and do[es] not cause the claim to diverge into
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`two methods or paths.” IPR2017-007009, at *3‒4.
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`Accordingly, as Schulhauser is not applicable, the Petitioner’s failure to show
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`that Sherman discloses the recitation “renders the frequency band available for
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`access by the stations working in accordance with the second radio interface standard
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`if stations working in accordance with the first radio interface standard do not request
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`access to the frequency band” fails to carry Petitioner’s burden to show
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`unpatentability.
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`B.
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`The Petitioner has failed to carry its burden of proving that
`Shellhammer renders Claim 1 obvious, as Petitioner fails to show
`that Shellhammer teaches or renders obvious “wherein the
`control station … 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” as recited in Claim 1. (Ground 3).
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`For the reasons given in Patent Owner’s Response, the Petition has failed to
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`show that Shellhammer renders Claim 1 obvious, at least because Petitioner fails to
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`show that Shellhammer teaches or renders obvious the Claim 1 recitation “wherein
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`the control station … renders the frequency band available for access by the stations
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`working in accordance with the second radio interface standard if stations working
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`4
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`IPR2019-01349
`U.S. Patent 7,016,676
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`in accordance with the first radio interface standard do not request access to the
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`frequency band.”.
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`Petitioner suggests that Patent Owner must introduce additional evidence to
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`overcome some burden imposed by the decision on institution. See Reply 22. But
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`it is Petitioner that carries the burden throughout the proceeding, and Uniloc has
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`relied on evidence of record to show why one of ordinary skill in the art would not
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`have made the modifications alleged by Petitioner. See Resp. 35-44.
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`Petitioner also incorrectly suggests that Patent Owner argued Petitioner must
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`show the alleged modification was the most desirable among alternatives. See Reply
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`23. This is not so. Uniloc’s Response shows how Petitioner’s alleged motivation is
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`not sufficient and fails to take into account counter-motivations plainly evident from
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`the reference itself. See Resp. 38-43.
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`As noted in Uniloc’s Response, in asserting that Shellhammer teaches the
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`aforecited limitation of Claim 1, the Petition, and the testimony of Roy (Ex. 1003),
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`key in on the statement in Shellhammer that: “Once all the PSP MU’s 120, 140
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`receive their packets, the AP 20, may optionally send a global Clear to Send (CTS)
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`signal 430 to shut down all the 802.11 communications for a NAV (Network
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`Allocation Vector) period.” Pet. 58, quoting Ex. 1005, 8:65-9:8. Petitioner’s
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`Declarant quotes this same sentence of Shellhammer. Ex. 1003, ¶261. The Petition
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`and Petitioner’s Declarant also point to Shellhammer’s statement that the duration
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`5
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`IPR2019-01349
`U.S. Patent 7,016,676
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`of time intervals (e.g., 802.11 power saving (PSP) interval t802.11PSP, Bluetooth
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`communications interval tNAV, and 802.11 communications active mode (CAM)
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`interval t802.11CAM) may depend on traffic characteristics and application needs (e.g.,
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`time critical services). Ex. 1005, column 8, lines 59-62. From these two sentences
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`of the brief description of Shellhammer, Petitioner’s Declarant provides the
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`unsupported speculation that “If no IEEE 802.11 stations request access to the
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`frequency band during the first interval (t802.11PSP), there would be no transmissions
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`during that interval, and it would have been obvious to a POSITA for the AP to send
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`the CTS signal, thereby rendering the frequency band available for access by
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`Bluetooth stations.” Ex. 1003, ¶262. However, this speculation is not sufficient to
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`support Petitioner’s burden to show that Shellhammer renders obvious a setting of
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`the 802.11 PSP interval if and when no PSP MU’s are transmitting.
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`III. CONCLUSION
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`For at least the reasons set forth above and in Uniloc’s Response, Uniloc
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`respectfully requests that the Board deny all challenges in the instant Petition.1
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` Patent Owner does not concede, and specifically denies, that there is any legitimacy
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` 1
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`to any arguments in the instant Petition that are not specifically addressed herein.
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`6
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`Date: August 31, 2020
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`Respectfully submitted,
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`IPR2019-01349
`U.S. Patent 7,016,676
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`By: /Ryan Loveless/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`IPR2019-01349
`U.S. Patent 7,016,676
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`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
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`complies with the type-volume limitation of 37 C.F.R. § 42.24(c)(1) because it
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`contains fewer than the limit of 5,600 words, as determined by the word- processing
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`program used to prepare the brief, excluding the parts of the brief exempted by 37
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`C.F.R. § 42.24(a)(1).
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`Date: August 31, 2020
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`Respectfully submitted,
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`By: /Ryan Loveless/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`IPR2019-01349
`U.S. Patent 7,016,676
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
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`copy of the foregoing was served via email to Petitioner’s counsel at the following
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`addresses identified in the Petition’s consent to electronic service:
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`Lead Counsel:
`Harper Batts, Reg. No. 56,160
`HBatts@sheppardmullin.com
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`Backup Counsel:
`Jeffrey Liang, Reg. No. 69,043
`Chris Ponder, Reg. No. 77,167
`CPonder@sheppardmullin.com
`JLiang@sheppardmullin.com
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`Date: August 31, 2020
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`Respectfully submitted,
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`By: /Ryan Loveless/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`ii
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