`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MARVELL SEMICONDUCTOR, INC.
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`
`Case IPR2019-01349
`U.S. Patent 7,016,676
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
`
`
`
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`

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`Case IPR2019-01349
`U.S. Patent 7,016,676
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`Table of Contents
`
`INTRODUCTION ........................................................................................... 1
`
`The '676 Patent ................................................................................................ 1
`
`I.
`
`II.
`
`III. RELATED PROCEEDINGS .......................................................................... 7
`
`IV. THE PETITION SHOULD BE DENIED UNDER THE BOARD’S
`DISCRETION .................................................................................................. 8
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 10
`
`VI. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM ............... 10
`
`A.
`
`1.
`
`2.
`
`3.
`
`B.
`
`C.
`
`D.
`
`Claim Construction Standard .............................................................. 11
`
`“Stations Which Operate In Accordance With A First Radio
`Interface Standard And/Or A Second Radio Interface Standard” ...... 12
`
`“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” ........ 12
`
`“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” ................................................... 14
`
`The Petition does not establish that Sherman (Ex. 1004)
`teaches “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 1) ...... 15
`
`The Petition does not establish that Sherman (Ex. 1004) in view
`of Trompower (Ex. 1006) renders Claim 5 obvious. (Ground 2) ....... 19
`
`The Petition does not establish that Ex. 1005 teaches “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) ........................... 22
`
`
`
`ii
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`Case IPR2019-01349
`U.S. Patent 7,016,676
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`E.
`
`F.
`
`The Petition does not establish that Shellhammer in view
`of Trompower renders Claim 5 obvious. (Ground 4) ........................ 25
`
`The Petition does not establish that Shellhammer (Ex. 1005) in
`view of Panasik (Ex. 1015) renders Claim 5 obvious.
`(Ground 5) ........................................................................................... 26
`
`VII. CONCLUSION .............................................................................................. 31
`
`
`
`iii
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`Case IPR2019-01349
`U.S. Patent 7,016,676
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107(a), Uniloc 2017 LLC (the
`
`“Patent Owner” or “Uniloc”) submits Uniloc’s Preliminary Response to the Petition
`
`for Inter Partes Review (“Pet.” or “Petition”) of United States Patent No. 7,016,676
`
`(“the '676 Patent” or “Ex. 1001”) filed by Marvell Semiconductor, Incorporated
`
`(“Petitioner”) in IPR2019-01349.
`
`In view of the reasons presented herein, the Petition should be denied in its
`
`entirety as failing to meet the threshold burden of proving there is a reasonable
`
`likelihood that at least one challenged claim is unpatentable.
`
`Uniloc addresses each ground and provides specific examples of how
`
`Petitioner failed to establish that it is more likely than not that it would prevail with
`
`respect to at least one of the challenged '676 Patent claims. As a non-limiting
`
`example described in more detail below, the Petition fails the all-elements-rule in
`
`not addressing every feature of any of the challenged claims.
`
`Accordingly, Uniloc respectfully requests that the Board decline institution of
`
`trial on Claims 1-9 of the '676 Patent.
`
`II. The '676 Patent
`
`The ’676 patent is titled “Method, network and control station for the two-
`
`way alternate control of radio systems of different standards in the same frequency
`
`band.” The ʼ676 patent issued March 21, 2006, from U.S. Patent Application No.
`
`10/089,959 filed April 4, 2002, which was a National Stage Entry of PCT No.
`
`PCT/EP01/09258 filed August 8, 2001 and published as W002/13457, which in turn
`
`claims priority to German Application No. DE10039532.5 filed August 8, 2000.
`
`
`
`1
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`Case IPR2019-01349
`U.S. Patent 7,016,676
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`The inventors of the ’676 patent observed that at the time of the invention, a
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`radio system for wireless transmission of information was allowed to use
`
`transmission power only in accordance with standards by the national regulation
`
`authority. The national regulation authority determined on what frequencies with
`
`what transmission power and in accordance with what radio interface standard a
`
`radio system is allowed to transmit. There was also provided so-called ISM
`
`frequency bands (Industrial Scientific Medical) where radio systems transmitted in
`
`the same frequency band but in accordance with different radio interface standards.
`
`EX1001, 1:10-23. And in the event of interference, methods were 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. However, despite operating in the same frequency band, different radio
`
`systems have different Medium Access Controls (MAC), and despite the utilization
`
`of methods such as Transmitter Power Control (TPC) and Dynamic Frequency
`
`Selection (DFS), those methods did not make optimum use of spreading radio
`
`channels over the stations which operate under different radio standards. EX1001,
`
`1:24-2:10.
`
`According to the invention of the ’676 Patent, there is provided a method, a
`
`wireless network and a control station which make efficient use of radio transmission
`
`channels possible by an interface control protocol method for a radio system, which
`
`system comprises at least a frequency band provided for the alternate use of a first
`
`and a second radio interface standard, the radio system comprising stations which
`
`operate in accordance with a first radio interface standard and/or a second radio
`
`
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`2
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`U.S. Patent 7,016,676
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`interface standard, respectively, a control station being provided which controls the
`
`alternate use of the frequency band. This is based on the idea of providing a
`
`comprehensive standard exchange of implicit or explicit control information in
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`systems that have the same radio transmission methods but different radio
`
`transmission protocols. This makes simple and efficient use possible of a radio
`
`channel via a plurality of radio interface standards. EX1001, 2:14-28.
`
`A first number of stations preferably forms a wireless local area network in
`
`accordance with a first radio interface standard and a second number of stations
`
`forms a wireless network in accordance with a second radio interface standard. The
`
`control station is preferably a station that operates in accordance with both the first
`
`and the second radio interface standard. The control station can utilize the common
`
`radio channel more effectively when the demand for transmission capability in
`
`accordance with the first and second radio standard varies. The control station may
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`release the common frequency band for access by stations operating under the
`
`second radio interface if stations operating in accordance with the first radio
`
`interface standard do not request access to the frequency band. The control station
`
`controls the alternate access by the first wireless network and the second wireless
`
`network to the common frequency band. The control station receives requests for
`
`capacity from various stations and assigns capacity accordingly. The release of the
`
`common frequency band for the second radio interface standard may be effected, for
`
`example, by explicitly sending control information to the stations of the second radio
`
`interface standard. As another example, control can be effected in that the control
`
`station determines the respective duration in which the stations operating in
`
`
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`3
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`U.S. Patent 7,016,676
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`accordance with the second radio interface standard can utilize the common
`
`frequency band. EX1001, 2:36-4:26.
`
`The '676 Patent issued with five independent claims, namely claims 1, 6, 7, 8,
`
`and 9. The text of those five independent claims are copied herein for the
`
`convenience of the Board:
`
`
`
`1. An 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, the radio
`
`system comprising:
`
`stations which operate in accordance with a first radio interface
`
`standard and/or a second radio interface standard, and
`
`a control station which controls the alternate use of the
`
`frequency band,
`
`wherein the control station controls the access to the common
`
`frequency band for stations working in accordance with the first radio
`
`interface standard and 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.
`
`
`
`6. An 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, the radio
`
`system comprising:
`
`
`
`4
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`Case IPR2019-01349
`U.S. Patent 7,016,676
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`stations which operate in accordance with a first radio interface
`
`standard and/or a second radio interface standard, and
`
`a control station which controls the alternate use of the
`
`frequency band,
`
`wherein the control station terminates the use of the radio
`
`interface in accordance with the second radio interface standard by
`
`transmitting in accordance with the first radio interface standard,
`
`without taking account of resulting interference in stations working in
`
`accordance with the second radio interface standard.
`
`
`
`7. An 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, the radio
`
`system comprising:
`
`stations which operate in accordance with a first radio interface
`
`standard and/or a second radio interface standard, and
`
`a control station which controls the alternate use of the
`
`frequency band,
`
`wherein the control station controls the access to the common
`
`frequency band by stations working in accordance with the first radio
`
`interface standard and in that duration and type of control of the radio
`
`interface in accordance with the second radio interface standard is
`
`determined by a further station and transmitted to the control station.
`
`
`
`8. An interface-control protocol method for a radio system
`
`which has at least one common frequency band that is provided for
`
`
`
`5
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`U.S. Patent 7,016,676
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`alternate use by a first and a second radio interface standard, the radio
`
`system comprising:
`
`stations which operate in accordance with a first radio interface
`
`standard and/or a second radio interface standard, and
`
`a control station which controls the alternate use of the
`
`frequency band,
`
`wherein the control station, in addition to functions in
`
`accordance with the second radio interface standard, also carries out
`
`functions which cause radio systems in accordance with the second
`
`radio interface standard to interpret the radio channel as interfered and
`
`to seize another radio channel for its own operation.
`
`
`
`9. A wireless network comprising at least one common
`
`frequency band provided for alternate use by a first and a second radio
`
`interface standard, the wireless network comprising:
`
`stations which work in accordance with a first radio interface
`
`standard and/or in accordance with a second radio interface standard,
`
`and
`
`a control station which controls the alternate use of the common
`
`frequency band,
`
`wherein the control station controls the access to the common
`
`frequency band for stations working in accordance with the first radio
`
`interface standard and 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.
`
`
`
`
`
`6
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`Case IPR2019-01349
`U.S. Patent 7,016,676
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`III. RELATED PROCEEDINGS
`
`The following proceedings are currently pending cases concerning U.S. Pat.
`
`No. 7,016,676 (EX1001).
`
`Case Name
`
`Case Number
`
`Court
`
`Filing Date
`
`Google, LLC v. Uniloc 2017 LLC
`
`IPR2019-01541
`
`PTAB Aug. 29, 2019
`
`Ericsson Inc. et al v. Uniloc 2017
`
`IPR2019-01550
`
`PTAB Aug. 29, 2019
`
`LLC
`
`Marvell Semiconductor, Inc. v.
`
`IPR2019-01350
`
`PTAB
`
`Jul. 22, 2019
`
`Uniloc 2017 LLC
`
`Microsoft Corporation et al v.
`
`IPR2019-01116
`
`PTAB May. 29, 2019
`
`Uniloc 2017 LLC
`
`Microsoft Corporation et al v.
`
`IPR2019-01125
`
`PTAB May. 29, 2019
`
`Uniloc 2017 LLC
`
`Uniloc 2017 LLC et al v. Google
`
`2-18-cv-00495
`
`TXED Nov. 17, 2018
`
`LLC
`
`Uniloc 2017 LLC v. Verizon
`
`2-18-cv-00513
`
`TXED Nov. 17, 2018
`
`Communications Inc. et al
`
`Uniloc 2017 LLC v. AT&T Services,
`
`2-18-cv-00514
`
`TXED Nov. 17, 2018
`
`Inc. et al
`
`
`
`
`
`7
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`Case IPR2019-01349
`U.S. Patent 7,016,676
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`IV. THE PETITION SHOULD BE DENIED UNDER THE BOARD’S
`DISCRETION
`
`The Petition should be denied for failing to address whether the Petition is
`
`cumulative to Microsoft’s previous petitions in IPR2019-01116 and IPR2019-
`
`01125. See Medtronic, Inc. v. NuVasive, Inc., Case IPR2014-00487, slip op. at 6
`
`(Paper 8) (Sept. 11, 2014) (informative) (denying institution, explaining in part that
`
`“[w]hile Petitioner argues that the grounds are not redundant to those instituted on
`
`in the ’506 Proceeding, Petitioner does not provide any specific reasoning to support
`
`that argument, other than to state that the grounds are based on different prior art
`
`references.”).
`
`In addition, Petitioner’s Statement Regarding Multiple Petitions (Paper 4)
`
`does not explain any justification for filing two petitions on the same patent. As the
`
`Board explains in the July 2019 Trial Practice Guide Update:
`
`Based on the Board’s prior experience, one petition should be
`
`sufficient to challenge the claims of a patent in most situations. Two or
`
`more petitions filed against the same patent at or about the same time
`
`(e.g., before the first preliminary response by the patent owner) may
`
`place a substantial and unnecessary burden on the Board and the patent
`
`owner and could raise fairness, timing, and efficiency concerns. See 35
`
`U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not
`
`necessary in the vast majority of cases. To date, a substantial majority
`
`of patents have been challenged with a single petition.
`
`Trial Practice Guide Update, 26 (July 2019).
`
`
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`8
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`Case IPR2019-01349
`U.S. Patent 7,016,676
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`This is not a “rare” case in which “more than one petition may be necessary,
`
`including, for example, when the patent owner has asserted a large number of claims
`
`in litigation.” Id. Instead, Petitioner’s only excuses for filing in two petitions what
`
`Petitioner suggests could have been filed in one (despite containing 13,975 words in
`
`one and 13,965 words in the other) are that: (1) by filing this instant Petition
`
`separately, Petitioner hopes for better chances at its motion for consolidation (see
`
`Paper 4, at 1-2), and (2) some unexplained reasons supposedly concerning the
`
`priority date of the ’676 Patent and Petitioner’s choice of two sets of grounds, one
`
`based on “Sherman” and the other based on “Shellhammer” (see Paper 4, at 2).
`
`However, both petitions present grounds based on both “Sherman” and
`
`“Shellhammer” (compare Petition at 4 (identification of grounds), with IPR2019-
`
`01350, Petition, Paper 2 at 4 (identification of grounds)). Thus, whether or not there
`
`is a dispute as to priority, Patent Owner has no meaningful opportunity to obviate
`
`the issues reserved for a second petition. As to the real-party-in-interest issue, there
`
`is no gamesmanship in exploring the issue where there is a basis to do so, and
`
`presumably a party would not be estopped if it were not a real party in interest.
`
`To the extent Petitioner’s excuses can be understood, the bottom line is that
`
`Petitioner chose to file its defective petitions separately, knowing it was more
`
`appropriate to file instead a single petition. See e.g., Paper 4 at 3. Indeed, Petitioner
`
`made a deliberate decision to engage in gamesmanship and burden the Board and
`
`Uniloc with this unnecessary and separate petition in the hopes that doing so would
`
`increase its chances in its separate motion for consolidation in IPR2019-01349.
`
`
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`9
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`Case IPR2019-01349
`U.S. Patent 7,016,676
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`Paper 4, at 1-2. Although both petitions should be denied, if one is instituted,
`
`Petitioner is certainly not entitled to two under these circumstances.
`
`Patent Owner also notes Petitioner’s filing of a “Motion for Consolidation”
`
`(Paper 3). Patent Owner is unaware of authority providing for the filing of such a
`
`motion, as opposed to a joinder motion, without authorization from the Board. To
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`the extent the motion is properly before the Board, Patent Owner opposes at least on
`
`the basis that it would be unfarily prejudiced by expediting the schedule in this case
`
`to match an earlier IPR filed by Microsoft (if instituted).
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`
`
`The Petition proposes a person of ordinary skill in the art (“POSITA”) at the
`
`2000-2001 timeframe would have had at least a Master’s Degree in electrical or
`
`computer engineering with a focus in communication systems or, alternatively, a
`
`Bachelor’s Degree in electrical or computer engineering and at least two years of
`
`experience in wireless communication systems. (Petition, p. 11). For purposes of
`
`this Preliminary Response only, Patent Owner does not dispute Petitioner’s
`
`definition of a POSITA. Moreover, Patent Owner does not provide its own
`
`definition because, even applying the multiple and varying alternative definitions
`
`proposed by Petitioner, Petitioner has not met its burden of showing that the cited
`
`references anticipate or render obvious, any of the disputed claims of the '676 Patent.
`
`
`
`VI. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`
`Patent Owner demonstrates that Petitioner has failed to establish that it is more
`
`
`
`10
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`U.S. Patent 7,016,676
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`likely than not that it would prevail with respect to at least one of the challenged '676
`
`Patent claims. By not addressing additional arguments, Patent Owner in no way
`
`concedes that any argument by Petitioner is correct.
`
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`
`§ 42.108(c). Because the Petition only presents a theory of obviousness, Petitioner
`
`must demonstrate a reasonable likelihood that at least one of the challenged patent
`
`claims would have been obvious in view of the references cited in the Petition.
`
`Petitioner “must specify where each element of the claim is found in the prior art
`
`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). The Board
`
`should reject the Petition because Petitioner fails to meet this burden for any of the
`
`grounds.
`
`The Petition presents the following grounds of purported unpatentability:
`
`
`
`Grounds()
`
`References
`
`Challenged Claim(s)s)
`
`1. 103
`
`Sherman
`
`1, 2
`
`2
`
`103
`
`Sherman in view of Trompower
`
`5
`
`3. 103
`
`Shellhammer
`
`1, 2
`
`4. 103
`
`Shellhammer in view of Trompower 5
`
`5. 103
`
`Shellhammer in view of Panasik
`
`5
`
`
`
`A. Claim Construction Standard
`
`At this preliminary stage, Patent Owner submits that the Board need not
`
`construe any claim term in a particular manner in order to arrive at the conclusion
`
`
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`11
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`U.S. Patent 7,016,676
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`that the Petition is substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642
`
`F.3d 1355, 1361 (Fed. Cir. 2011) (“need only be construed to the extent necessary
`
`to resolve the controversy”). However, some of Petitioner’s proposed constructions
`
`are addressed below. Further, in the event that trial is instituted, however, Patent
`
`Owner reserves the right to object to Petitioner’s proposed construction and provide
`
`Patent Owner’s proposed construction.
`
`1. “Stations Which Operate In Accordance With A First Radio
`Interface Standard And/Or A Second Radio Interface Standard”
`
`At this preliminary stage, Patent Owner submits that the Board need not
`
`construe this claim term in order to arrive at the conclusion that the Petition is
`
`substantively deficient. Wellman, 642 F.3d at 1361. (“need only be construed to the
`
`extent necessary to resolve the controversy”). In the event that trial is instituted,
`
`however, Patent Owner reserves the right to object to Petitioner’s proposed
`
`construction and provide Patent Owner’s proposed construction.
`
`2. “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”
`
`Patent Owner notes that the Petition may not challenge claims on the basis of
`
`indefiniteness under this proceeding. Therefore, Patent Owner does not address such
`
`allegations. For the remaining proposed construction(s) in this section, Patent
`
`Owner submits that the Board need not construe this claim term in order to arrive at
`
`the conclusion that the Petition is substantively deficient. Wellman, 642 F.3d at
`
`1361. Nonetheless, to the extent Petitioner seeks to improperly import limitations
`
`from the specification, the Board should not adopt Petitioner’s proposed
`
`
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`construction. See Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1584-85 (Fed. Cir.
`
`1996).
`
`The Patent Owner respectfully requests that the Board adopt the plain and
`
`ordinary meaning of the limitation “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.”
`
`The Petition proposes the claim construction “makes the frequency band
`
`available for transmissions by stations working in accordance with the second radio
`
`interface standard for periods during which the common frequency band is not being
`
`used by stations operating in accordance with the first radio interface standard that
`
`have requested access to the band.” (Petition, p. 15). The Petition bases this
`
`construction upon certain statements made in a district court complaint (Ex. 1013)
`
`filed by the Patent Owner. (Id). A relevant portion of the cited portions of the district
`
`court complaint are re-produced here in pertinent part:
`
`“The Marvell Avastar radio employs a coexistence strategy that makes the
`
`shared 2.4 GHz frequency band available to Wi- Fi stations communicating with
`
`Microsoft Surface only when Bluetooth stations are not requesting access to the
`
`frequency band. For example, the control station provides access to the frequency
`
`band during times that the Bluetooth stations are not requesting access.” [Ex. 1013,
`
`pp. 12-13]
`
`In formulating this statement, the Patent Owner merely provided an
`
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`13
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`Case IPR2019-01349
`U.S. Patent 7,016,676
`
`exemplary description of how the Marvell Avastar radio may function, and does not
`
`qualify or otherwise redirect the meaning and intent of the plain and ordinary
`
`meaning of the limitation “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.” For example, the district court complaint states, in
`
`exemplary form, that the control station provides access to the frequency band
`
`during times that the Bluetooth stations are not requesting access. The Petition
`
`embellishes on this statement to construe that certain periods may exist in which the
`
`common frequency band is not being used in spite of the fact that those Bluetooth
`
`stations may be actively requesting access. Thus, the Petition is improperly
`
`attempting to impart limitations into the aforementioned construction that it was
`
`never meant or intended to include.
`
`In proposing the new construction, the Petition points to paragraph 96 of Ex.
`
`1003 in which the Declarant alleges, among other things, infringement by, e.g.,
`
`rendering a single channel available for access. (Ex. 1003, paragraph 96).
`
`Nevertheless, the Patent Owner respectfully submits that the Declarant is reading
`
`legal terminology into the aforecited claim limitation, which is not permissible under
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`the current statute. (37 C.F.R. §41.158(a)).
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`Given the facts stated above, the proposed claim construction should be
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`rejected, and the plain and ordinary meaning of the present limitation be used.
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`3. “the control station also carries out functions which cause
`radio systems in accordance with the first radio interface standard to
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`interpret the radio channel as interfered and to seize another radio
`channel for its own operation”
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`Patent Owner notes that the Petition may not challenge claims on the basis of
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`indefiniteness under this proceeding. Therefore, Patent Owner does not address such
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`allegations. For the remaining proposed construction(s) in this section, Patent
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`Owner submits that the Board need not construe this claim term in order to arrive at
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`the conclusion that the Petition is substantively deficient. Wellman, 642 F.3d at
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`1361. And at this preliminary stage, Patent Owner disagrees that any phrase is
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`written in “means plus function format”.
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`B.
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`The Petition does not establish that Sherman (Ex. 1004) teaches
`“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 1)
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`The Petition fails to establish prima facie obviousness of at least the following
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`recitation: “wherein the control station … renders the frequency band available for
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`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
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`access to the frequency band” as recited in Independent Claim 1. In particular, the
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`Patent Owner respectfully submits that Sherman does not teach or suggest any
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`control station that renders a frequency band available for access by the stations
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`associated with a second radio interface standard when other stations associated with
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`a first radio interface do not request access to the frequency band as would be
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`required to render Claim 1 obvious.
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`The Petition asserts that Sherman teaches the Claim 1 recitation of “wherein
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`the control station controls the access to the common frequency band for stations
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`working in accordance with the first radio interface standard and renders the
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`frequency band available for access by the stations working in accordance with the
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`second radio interface standard if stations working in accordance with the first radio
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`interface standard do not request access to the frequency band. ” (Petition, pp. 30-
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`34). However, as is clear from Sherman, there is no disclosure that the control
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`station … renders the frequency band available for access by the stations working in
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`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.
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`Sherman is directed to a Super-frame structure, shown in FIG. 5 depicting
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`signals of both standards, in a channel, is disclosed herein that allows 802.lla stations
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`(STA and AP) to share a single channel with HIPERLAN/2 stations. (Sherman,
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`column 3, lines 62-66). Figure 5 of Sherman is re-produced and annotated herein
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`for purposes of further discussion:
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`Initially, it may be important to note that Sherman understands that the term
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`'single channel' used by both 802.11a stations and HIPERLAN/2 stations refers to a
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`specified frequency band comprising a range of frequencies. For example, Sherman
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`states that both standards operate in a frequency range that is overlapping hence
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`unless steps are taken to prevent collisions they will likely occur. (Sherman, column
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`2, lines 58-61). Also, Sherman further states that due to the wireless nature of the
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`WLAN, ordinary stations need not support both systems although such abilities
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`would be desirable since it is most likely that common frequencies will be shared.
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`(Sherman, column 3, lines 10-13).
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`Sherman teaches that super-frame structure including three phases in which
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`each phase means a collection of frames primarily controlled by a common
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`coordination or access function. (Sherman, column 3, lines 12-15). The first phase
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`would consist of the CFP beacon message, a 802.11 Broadcast sub-phase, and a
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`802.11 contention free phase (CFP) sub-phase. (Sherman, column 4, lines 15-16).
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`This first phase is collectively referred to as a broadcast phase. (Sherman, column
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`4, lines 18-20). The other two phases include a HIPERLAN/2 phase, and a CFP
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`phase as shown in annotated form above. (Sherman, column 4, lines 20-22). The
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`broadcast phase and CFP phase are both allocated for handling communication
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`traffic from 802.11 stations. (Sherman, column 5, lines 8-20). Conversely, the
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`HIPERLAN/2 phase is allocated for handling communication traffic from
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`HIPERLAN/2 stations. (Id).
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`As clearly seen from the description above, the HIPERLAN/2 phase is nested
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`within the super-frame structure to avoid collisions with 802.11 stations that would
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`otherwise interfere. (Sherman, column 3, lines 37-40). To avoid this problem, the
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`super-frame structure occurs with a regular period, and all 802.11 terminals
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`(stations) set their network allocation vectors (NAVs) during the CFP. (Sherman,
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`column 4, lines 1-3). That is, the super-frame structure is repeatedly performed to
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`inhibit or otherwise limit collisions that would occur between 802.11 stations and
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`HIPERLAN/2 stations.
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`Sherman, however, never teaches or suggests any mechanism and/or
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`technique for first determining whether or not any 802.11 stations are requesting
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`access to the frequency band, and secondly allocating the HIPERLAN/2 phase for
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`use by HIPERLAN/2 stations via the super-frame structure based on this
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`determination. Additionally, Sherman never teaches or suggests any mechanism
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`and/or technique for first determining whether or not any HIPERLAN/2 stations are
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`requesting access to the frequency band, and secondly allocating the broadcast