`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
`
`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
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`v.
`UNILOC 2017 LLC,
`Patent Owner.
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`––––––––––
`
`
`IPR2019-01349
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`U.S. Patent No. 7,016,676
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`––––––––––
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`
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`DECLARATION OF SUMIT ROY
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`REGARDING CLAIMS 1, 2, AND 5
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`Marvell Semiconductor, Inc. - Ex. 1003, Page 0001
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`I.
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`TABLE OF CONTENTS
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`Background and Qualifications ....................................................................... 5
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`A.
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`Compensation ........................................................................................ 9
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`B. Materials and Other Information Considered ....................................... 9
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`II.
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`Understanding of the Law ............................................................................... 9
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`A.
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`Legal Standard for Prior Art ................................................................ 10
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`1.
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`Anticipation and Prior Art ........................................................ 10
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`Obviousness ......................................................................................... 12
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`Legal Standard for Claim Construction .............................................. 18
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`B.
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`C.
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`III. Level of Ordinary Skill in the Art ................................................................. 22
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`IV. Overview of the Technology ......................................................................... 27
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`A. Many Standards Used the ISM Bands ................................................ 27
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`B.
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`Alternating Access .............................................................................. 28
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`V.
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`The ’676 Patent .............................................................................................. 30
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`A. Overview ............................................................................................. 30
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`B.
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`C.
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`Priority Date ........................................................................................ 32
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`Challenged Claims .............................................................................. 32
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`VI. Claim Construction ........................................................................................ 33
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`A.
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`B.
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`“stations which operate in accordance with a first radio
`interface standard and/or a second radio interface standard” ............. 34
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`“renders the frequency band available for access by the stations
`working in accordance with the second radio interface standard
`if stations working in accordance with the first radio interface
`standard do not request access to the frequency band” ....................... 35
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`C.
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`“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” ................................................... 37
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`VII. Summary of the Prior Art .............................................................................. 42
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`A.
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`Invalidity Grounds ............................................................................... 42
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`B.
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`C.
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`U.S. Patent No. 7,031,274 (“Sherman”) (Ex. 1004) ........................... 43
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`U.S. Patent No. 7,039,358 (“Shellhammer”) (Ex. 1005) .................... 48
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`D. U.S. Patent No. 6,215,982 (“Trompower”) (Ex. 1006) ...................... 51
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`E.
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`U.S. Patent No. 6,643,278 (“Panasik”) ............................................... 52
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`VIII. Invalidity ........................................................................................................ 52
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`A. Ground 1: Obviousness in View of Sherman ...................................... 52
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`1.
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`2.
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`3.
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`KSR Factors ............................................................................... 52
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`Independent Claim 1 ................................................................. 56
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`Dependent Claim 2.................................................................... 86
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`B.
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`Ground 2: Obviousness Based on Sherman in View of
`Trompower .......................................................................................... 89
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`1.
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`KSR Factors ............................................................................... 89
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`2. Motivation to Combine ............................................................. 90
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`3.
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`Dependent Claim 5.................................................................... 96
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`C.
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`Ground 3: Obviousness Based on Shellhammer ............................... 104
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`1.
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`2.
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`3.
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`4.
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`Patent Owner’s District Court Allegations ............................. 105
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`KSR Factors ............................................................................. 107
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`Independent Claim 1 ............................................................... 110
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`Dependent Claim 2.................................................................. 135
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`D. Ground 4: Obviousness Based on Shellhammer in View of
`Trompower ........................................................................................ 140
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`1.
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`KSR Factors ............................................................................. 140
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`2. Motivation to Combine ........................................................... 140
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`3.
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`Dependent Claim 5.................................................................. 147
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`E.
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`Ground 5: Obviousness Based on Shellhammer in View of
`Panasik ............................................................................................... 150
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`1. Motivation to Combine and KSR Factors ............................... 151
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`2.
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`Dependent Claim 5.................................................................. 153
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`IX. Reservation of Rights .................................................................................. 160
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`Appendix 1: Curriculum Vitae of Sumit Roy ........................................................ 161
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`Appendix 2: Materials Considered in the Preparation of This Declaration .......... 162
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`Appendix 3: Challenged Claims ............................................................................ 163
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`1.
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`2.
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`I, Sumit Roy, declare as follows:
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`I currently hold the Integrated Systems Professorship in the
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`Department of Electrical & Computer Engineering at the University of Washington,
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`Seattle. I received my M.S. and Ph.D. in Electrical Engineering from the
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`University of California, Santa Barbara in 1985 and 1988, respectively. I also
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`received my M.A. in Statistics and Appl. Probability from the University of
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`California, Santa Barbara in 1988. I have prepared this declaration as an expert
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`witness retained by Marvell Semiconductor, Inc. In this declaration I give my
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`opinions as to whether certain claims of U.S. Patent No. 7,016,676 (“the ’676
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`patent”) are invalid. I provide technical bases for these opinions as appropriate.
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`3.
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`This declaration contains statements of my opinions formed to
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`date and the bases and reasons for those opinions. I may offer additional opinions
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`based on further review of materials in this case, including opinions and/or
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`testimony of other expert witnesses. I make this declaration based upon my own
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`personal knowledge and, if called upon to testify, would testify competently to the
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`matters contained herein.
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`I.
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`BACKGROUND AND QUALIFICATIONS
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`4.
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`This section contains a summary of my educational background,
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`career history, publications, and other relevant qualifications. My full curriculum
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`vitae is attached as Appendix 1 to this declaration.
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`5.
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`Currently I am and have been a Professor with tenure, in the
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`Department of Electrical & Computer Engineering at the University of Washington,
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`Seattle for the past about 17 years. During this time, I was served as the Associate
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`Chair for Research in my department at the University of Washington, Seattle for
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`about 5 years total—from September 2005-2007 and September 2008-2011.
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`Before this, I was an Associate Professor with tenure here in the Department of
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`Electrical Engineering at the University of Washington, Seattle, from September
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`1998-September 2002. Before that, I was an Associate Professor with tenure in the
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`Division of Engineering at the University of Texas at San Antonio from January
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`1995 to August 1998. And before that I was an Assistant Professor in the
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`Department of Electrical Engineering at the University of Pennsylvania from July
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`1988 to December 1994. Prior to that, I was a Research Assistant in the
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`Department of Electrical and Computer Engineering at the University of California
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`at Santa Barbara from October 1983 to May 1988.
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`6.
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`My master’s thesis, “Target Signature Evaluation Based on
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`Radar Turntable Data”, involved developing models for range-Doppler imaging of
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`targets based on measurements obtained from an indoor (turntable) measurement
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`set-up. My Ph.D. Dissertation, “Estimation Strategies for a Network of Distributed
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`Sensors” developed new methods for estimation of target location – both static and
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`dynamic – as observed by a set of distributed RF sensors. My dissertation
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`developed new distributed Kalman filters and probabilistic filtering approaches for
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`state estimation of moving objects.
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`7.
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`c. 2000, my research interest migrated to the emerging Wireless
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`Local Area Networks (WLANs). I took a leave of absence from Sep. 2001- Dec.
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`2003 to serve as a Visiting Scientist/Wireless Architect at Intel Labs, Hillsboro,
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`OR with responsibility for contributing to and participation in the standardization
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`activities of IEEE representing Intel Corp. My initial work focused on the IEEE
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`802.15.3 Wireless Personal Area Network (WPAN) based on Ultra-Wideband
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`(UWB) technology and thereafter to the newly formed pre 802.11n (1st Multi Input,
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`Multi Output or MIMO WLAN) working group. This involvement resulted in
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`several patents and I participated at the IEEE 802.15 and 802.11 Standards
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`meetings during this period. I have maintained my affiliations with IEEE standards
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`activities to this date, see http://www.ieee802.org/Tutorials.shtml regarding my
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`participation in a recent tutorial on Spectrum Sharing at the Plenary meeting in
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`Mar. 2019.
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`8.
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`In the Summer of 1989 I was a visiting Researcher at GE’s
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`Corporate R&D Center in Schenectady, NY. Then in the Summer of 1996 I was a
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`visiting member of the Technical Staff at the Center for Wireless communications
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`at the National University of Singapore. From September 2001 to December 2003,
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`I was the Senior Staff Research at the Wireless Technology, Intel Labs in Hillsboro,
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`Oregon. I was elevated to IEEE Fellow in the Communications Society in 2007
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`(only 0.1% of IEEE members are so honored each year) and selected as a (annual)
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`Distinguished Lecturer by the IEEE Communications Society twice from 2014-
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`2015 and 2017-2018. Then from August 2014-December 2014, I was a visiting
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`faculty and external consultant at IIIT in Delhi, India. From December 2014-
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`February 2015, I served as visiting research scientist at Microsoft Research in
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`Bangalore, India. I am also a member of IEEE’s Technical Communication on
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`Cognitive Radios and have served on numerous Technical Program Committees
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`(e.g., Globecom, ICC, DySPAN) in recent years.
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`9.
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`I received my Ph.D. in Electrical Engineering and my M.A. in
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`Statistics and Appl. Probability from the University of California, Santa Barbara in
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`1988. Prior to that I received my M.S. in Electrical Engineering also from the
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`University of California, Santa Barbara in 1985.
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`10.
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`I have taught and continue to teach many courses, including
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`several courses in wireless communications. Here are some examples:
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`U. Pennsylvania
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`Commn. Systems (Theory and Lab)
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`Advanced Digital Signal Processing
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`Digital Communications
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`Radar Systems
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`U. Texas San Antonio
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`Found. of Commun. Theory
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`Random Signal Analysis
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`Linear Systems
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`Mobile Communications
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`U. Washington
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`Wireless Networks
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`Random Processes
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`Computer Communication Networks
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`A. Compensation
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`11.
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`For my efforts in connection with the preparation of this
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`declaration I have been compensated at my standard rate for this type of consulting
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`activity. My compensation is in no way contingent on the results of these or any
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`other proceedings relating to the above-captioned patent.
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`B. Materials and Other Information Considered
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`12.
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`I have considered information from various sources in forming
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`my opinions. I have reviewed and considered each of the exhibits listed in the
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`attached Appendix 2 (Materials Considered in the Preparation of This Declaration)
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`in forming my opinions.
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`II. UNDERSTANDING OF THE LAW
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`13.
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`I have applied the following legal principles provided to me by
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`counsel in arriving at the opinions set forth in this report.
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`A. Legal Standard for Prior Art
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`14.
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`I am not an attorney. I have been informed by attorneys of the
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`relevant legal principles and have applied them to arrive at the opinions set forth in
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`this declaration.
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`15.
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`I understand that the petitioner for inter partes review may
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`request the cancelation of one or more claims of a patent based on grounds
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`available under 35 U.S.C. § 102 and 35 U.S.C. § 103 using prior art that consists of
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`patents and printed publications.
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`1.
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`Anticipation and Prior Art
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`16.
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`I understand that § 102 specifies when a challenged claim is
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`invalid for lacking novelty over the prior art, and that this concept is also known as
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`“anticipation.” I understand that a prior art reference anticipates a challenged
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`claim, and thus renders it invalid by anticipation, if all elements of the challenged
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`claim are disclosed in the prior art reference. I understand the disclosure in the
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`prior art reference can be either explicit or inherent, meaning it is necessarily
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`present or implied. I understand that the prior art reference does not have to use
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`the same words as the challenged claim, but all of the requirements of the claim
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`must be disclosed so that a person of ordinary skill in the art could make and use
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`the claimed subject-matter.
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`17.
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`In addition, I understand that § 102 also defines what is
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`available for use as a prior art reference to a challenged claim.
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`18.
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`Under § 102(a), a challenged claim is anticipated if it was
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`patented or described in a printed publication in the United States or a foreign
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`country before the challenged claim’s date of invention.
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`19.
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`Under § 102(b), a challenged claim is anticipated if it was
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`patented or described in a printed publication in the United States or a foreign
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`country more than one year prior to the challenged patent’s filing date.
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`20.
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`Under § 102(e), a challenged claim is anticipated if it was
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`described in published patent application that was filed by another in the United
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`States before the challenge claim’s date of invention, or was described in a patent
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`granted to another that was filed in the United States before the challenged claim’s
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`date of invention.
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`21.
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`I understand that a challenged claim’s date of invention is
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`presumed to be the challenged patent’s filing date. I also understand that the patent
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`owner may establish an earlier invention date and “swear behind” prior art defined
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`by § 102(a) or § 102(e) by proving (with corroborated evidence) the actual date on
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`which the named inventors conceived of the subject matter of the challenged claim
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`and proving that the inventors were diligent in reducing the subject matter to
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`practice.
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`22.
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`I understand that the filing date of patent is generally the filing
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`date of the application filed in the United States that issued as the patent. However,
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`I understand that a patent may be granted an earlier effective filing date if the
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`patent owner properly claimed priority to an earlier patent application.
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`23.
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`I understand that when a challenged claim covers several
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`structures, either generically or as alternatives, the claim is deemed anticipated if
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`any of the structures within the scope of the claim is found in the prior art
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`reference.
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`24.
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`I understand that when a challenged claim requires selection of
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`an element from a list of alternatives, the prior art teaches the element if one of the
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`alternatives is taught by the prior art.
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`B. Obviousness
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`25.
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`I understand that even if a challenged claim is not anticipated, it
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`is still invalid if the differences between the claimed subject matter and the prior
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`art are such that the claimed subject matter would have been obvious to a person of
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`ordinary skill in the pertinent art at the time the alleged invention.
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`26.
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`I understand that obviousness must be determined with respect
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`to the challenged claim as a whole.
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`27.
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`I understand that one cannot rely on hindsight in deciding
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`whether a claim is obvious.
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`28.
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`I also understand that an obviousness analysis includes the
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`consideration of factors such as (1) the scope and content of the prior art, (2) the
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`differences between the prior art and the challenged claim, (3) the level of ordinary
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`skill in the pertinent art, and (4) “secondary” or “objective” evidence of non-
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`obviousness.
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`29.
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`Secondary or objective evidence of non-obviousness includes
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`evidence of: (1) a long felt but unmet need in the prior art that was satisfied by the
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`claimed invention; (2) commercial success or the lack of commercial success of
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`the claimed invention; (3) unexpected results achieved by the claimed invention; (4)
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`praise of the claimed invention by others skilled in the art; (5) taking of licenses
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`under the patent by others; (6) deliberate copying of the claimed invention; and (7)
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`contemporaneous and independent invention by others. However, I understand
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`that there must be a relationship between any secondary evidence of non-
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`obviousness and the claimed invention.
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`30.
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`I understand that a challenged claim can be invalid for
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`obviousness over a combination of prior art references if a reason existed (at the
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`time of the alleged invention) that would have prompted a person of ordinary skill
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`in the art to combine elements of the prior art in the manner required by the
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`challenged claim. I understand that this requirement is also referred to as a
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`“motivation to combine,” “suggestion to combine,” or “reason to combine,” and
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`that there are several rationales that meet this requirement.
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`31.
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`I understand that the prior art references themselves may
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`provide a motivation to combine, but other times simple common sense can link
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`two or more prior art references. I further understand that obviousness analysis
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`recognizes that market demand, rather than scientific literature, often drives
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`innovation, and that a motivation to combine references may come from market
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`forces.
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`32.
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`I understand obviousness to include, for instance, scenarios
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`where known techniques are simply applied to other devices, systems, or processes
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`to improve them in an expected or known way. I also understand that practical and
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`common-sense considerations should be applied a proper obviousness analysis.
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`For instance, familiar items may have obvious uses beyond their primary purposes.
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`33.
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`I understand
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`that
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`the combination of familiar elements
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`according to known methods is obvious when it yields predictable results. For
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`instance, obviousness bars patentability of a predictable variation of a technique
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`even if the technique originated in another field of endeavor. This is because
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`design incentives and other market forces can prompt variations of it, and
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`predictable variations are not the product of innovation, but rather ordinary skill
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`and common sense.
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`34.
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`I understand that a particular combination may be obvious if it
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`was obvious to try the combination. For example, when there is a design need or
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`market pressure to solve a problem and there are a finite number of identified,
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`predictable solutions, a person of ordinary skill has good reason to pursue the
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`known options within his or her technical grasp. This would result in something
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`obvious because the result is the product not of innovation but of ordinary skill and
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`common sense. However, I understand that it may not be obvious to try a
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`combination when it involves unpredictable technologies.
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`35.
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`It is further my understanding that a proper obviousness
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`analysis focuses on what was known or obvious to a person of ordinary skill in the
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`art, not just the patentee. Accordingly, I understand that any need or problem
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`known in the field of endeavor at the time of invention and addressed by the patent
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`can provide a reason for combining the elements in the manner claimed.
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`36.
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`It is my understanding that the Manual of Patent Examining
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`Procedure §2143 sets forth the following as exemplary rationales that support a
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`conclusion of obviousness:
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`37.
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`Combining prior art elements according to known methods to
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`yield predictable results;
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`38.
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`Simple substitution of one known element for another to obtain
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`predictable results;
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`39.
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`Use of known technique to improve similar devices (methods,
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`or products) in the same way;
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`40.
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`Applying a known technique to a known device (method, or
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`product) ready for improvement to yield predictable results;
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`41.
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`Choosing from a finite number of identified, predictable
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`solutions, with a reasonable expectation of success;
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`42.
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`Known work in one field of endeavor may prompt variations of
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`it for use in either the same field or a different one based on design incentives or
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`other market forces if the variations are predictable to one of ordinary skill in the
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`art;
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`43.
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`Some teaching, suggestion, or motivation in the prior art that
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`would have led one of ordinary skill to modify the prior art reference or to combine
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`prior art reference teachings to arrive at the claimed invention.
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`44.
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`A person of ordinary skill in the art looking to overcome a
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`problem will often use the teachings of multiple publications together like pieces
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`of a puzzle, even though the prior art does not necessarily fit perfectly together.
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`Therefore, I understand that references for obviousness need not fit perfectly
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`together like puzzle pieces. Instead, I understand that obviousness analysis takes
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`into account inferences, creative steps, common sense, and practical logic and
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`applications that a person of ordinary skill in the art would employ under the
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`circumstances.
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`45.
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`I understand that a claim can be obvious in light of a single
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`reference, if the elements of the challenged claim that are not explicitly or
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`inherently disclosed in the reference can be supplied by the common sense of one
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`of skill in the art.
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`46.
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`I understand that obviousness also bars the patentability of
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`applying known or obvious design choices to the prior art. One cannot patent
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`merely substituting one prior art element for another if the substitution can be
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`made with predictable results. Likewise, combining prior art techniques that are
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`interoperable with respect to one another is generally obvious and not patentable.
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`47.
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`In sum, my understanding is that obviousness invalidates claims
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`that merely recite combinations of, or obvious variations of, prior art teachings
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`using understanding and knowledge of one of skill in the art at the time and
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`motivated by the general problem facing the inventor at the time. Under this
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`analysis, the prior art references themselves, or any need or problem known in the
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`field of endeavor at the time of the invention, can provide a reason for combining
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`the elements of or attempting obvious variations on prior art references in the
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`claimed manner.
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`C. Legal Standard for Claim Construction
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`48.
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`I understand that before any invalidity analysis can be properly
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`performed, the scope and meaning of the challenged claims must be determined by
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`claim construction.
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`49.
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`I understand that a patent may include two types of claims,
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`independent claims and dependent claims. I understand that an independent claim
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`stands alone and includes only the limitations it recites. I understand that a
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`dependent claim depends from an independent claim or another dependent claim. I
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`understand that a dependent claim includes all the limitations that it recites in
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`addition to the limitations recited in the claim (or claims) from which it depends.
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`50.
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`In comparing the challenged claims to the prior art, I have
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`carefully considered the patent and its file history in light of the understanding of a
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`person of skill at the time of the alleged invention.
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`51.
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`I understand that to determine how a person of ordinary skill
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`would have understood a claim term, one should look to sources available at the
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`time of the alleged invention that show what a person of skill in the art would have
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`understood disputed claim language to mean. It is my understanding that this may
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`include what is called “intrinsic” evidence as well as “extrinsic” evidence.
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`52.
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`I understand that, in construing a claim term, one should
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`primarily rely on intrinsic patent evidence, which includes the words of the claims
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`themselves, the remainder of the patent specification, and the prosecution history.
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`I understand that extrinsic evidence, which is evidence external to the patent and
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`the prosecution history, may also be useful in interpreting patent claims when the
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`intrinsic evidence itself is insufficient. I understand that extrinsic evidence may
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`include principles, concepts, terms, and other resources available to those of skill
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`in the art at the time of the invention.
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`53.
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`I understand that words or terms should be given their ordinary
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`and accepted meaning unless it appears that the inventors were using them to mean
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`something else or something more specific. I understand that to determine whether
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`a term has special meaning, the claims, the patent specification, and the
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`prosecution history are particularly important, and may show that the inventor gave
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`a term a particular definition or intentionally disclaimed, disavowed, or
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`surrendered claim scope.
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`54.
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`I understand that the claims of a patent define the scope of the
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`rights conferred by the patent. I understand that because the claims point out and
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`distinctly claim the subject matter which the inventors regard as their invention,
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`claim construction analysis must begin with and is focused on the claim language
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`itself. I understand that the context of the term within the claim as well as other
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`claims of the patent can inform the meaning of a claim term. For example, because
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`claim terms are normally used consistently throughout the patent, how a term is
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`used in one claim can often inform the meaning of the same term in other claims.
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`Differences among claims or claim terms can also be a useful guide in
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`understanding the meaning of particular claim terms.
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`55.
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`I understand that a claim term should be construed not only in
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`the context of the particular claim in which the disputed term appears, but in the
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`context of the entire patent, including the entire specification. I understand that
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`because the specification is a primary basis for construing the claims, a correct
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`construction must align with the specification.
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`56.
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`I understand that the prosecution history of the patent as well as
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`art incorporated by reference or otherwise cited during the prosecution history are
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`also highly relevant in construing claim terms. For instance, art cited by or
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`incorporated by reference may indicate how the inventor and others of skill in the
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`art at the time of the invention understood certain terms and concepts.
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`Additionally, the prosecution history may show that the inventors disclaimed or
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`disavowed claim scope or further explained the meaning of a claim term.
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`57.
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`With regard to extrinsic evidence, I understand that all evidence
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`external to the patent and prosecution history, including expert and inventor
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`testimony, dictionaries, and learned treatises, can also be considered. For example,
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`technical dictionaries may indicate how one of skill in the art used or understood
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`the claim terms. However, I understand that extrinsic evidence is considered to be
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`less reliable than intrinsic evidence, and for that reason is generally given less
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`weight than intrinsic evidence.
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`58.
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`I understand that in general, a term or phrase found in the
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`introductory words or preamble of the claim, should be construed as a limitation if
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`it recites essential structure or steps, or is necessary to give meaning to the claim.
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`For instance, I understand preamble language may limit claim scope: (i) if
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`dependence on a preamble phrase for antecedent basis indicates a reliance on both
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`the preamble and claim body to define the claimed invention; (ii) if reference to the
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`preamble is necessary to understand limitations or terms in the claim body; or (iii)
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`if the preamble recites additional structure or steps that the specification identifies
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`as important.
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`59.
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`On the other hand, I understand that a preamble term or phrase
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`is not limiting where a challenged claim defines a structurally complete invention
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`in the claim body and uses the preamble only to state a purpose or intended use for
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`the invention. I understand that to make this determination, one should review the
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`entire patent to gain an understanding of what the inventors claim they invented
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`and intended to encompass in the claims.
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`60.
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`I understand that 35 U.S.C. § 112 ¶ 6 created an exception to
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`the general rule of claim construction called a “means plus function” limitation.
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`These types of terms and limitations should be interpreted to cover only the
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`corresponding structure described in the specification, and equivalents thereof. I
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`also understand that a limitation is pres