UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MARVELL SEMICONDUCTOR, INC.
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-01350
`PATENT 7,016,676
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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`IPR2019-01350
`U.S. Patent 7,016,676
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`
`Table of Contents
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`
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`EXHIBITS............................................................................................................. V
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`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`INTRODUCTION .................................................................................... 1
`
`THE ’676 PATENT .................................................................................. 1
`
`A.
`
`Priority ............................................................................................ 7
`
`RELATED PROCEEDINGS .................................................................. 10
`
`THE LEVEL OF ORDINARY SKILL IN THE ART ........................... 11
`
`PETITIONER DOES NOT PROVE THAT ANY
`CHALLENGED CLAIM IS UNPATENTABLE .................................. 12
`
`A.
`
`Claim Construction ....................................................................... 13
`
`1.
`
`2.
`
`3.
`
`“Stations Which Operate In Accordance With A
`First Radio Interface Standard And/Or A Second
`Radio Interface Standard” .................................................. 14
`
`“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” .................................................................. 14
`
`“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” ........................................... 17
`
`4.
`
`The alleged steps within Claims 1, 3, 6 and 7 .................... 17
`
`B.
`
`The Petitioner fails to carry its burden of proving that
`Sherman renders Claim 3 obvious. (Ground 1) ............................ 18
`
`1.
`
`As the Board properly determined in the
`Institution Decision, Sherman fails to teach or
`suggest the recitation a control station that renders
`the frequency band available for access by the
`stations working in accordance with the second
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`ii
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`IPR2019-01350
`U.S. Patent 7,016,676
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`
`radio interface standard if stations working in
`accordance with the first radio interface standard
`do not request access to the frequency band. ..................... 18
`
`2.
`
`By basing the Institution Decision on Ex parte
`Schulhauser, which was never raised by the
`Petitioner, the Board has taken on the role of an
`advocate and improperly instituted on a ground
`not advanced by the Petitioner. .......................................... 23
`
`3.
`
`Ex parte Schulhauser is not applicable to Claim 1. ........... 24
`
`The Petition does not establish that Sherman (Ex. 1004)
`teaches “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” as
`recited in Claim 6. (Ground 1) ..................................................... 29
`
`The Petitioner has failed to carry its burden of proving
`that Sherman renders Claim 9 obvious (Ground 1) ...................... 34
`
`The Petitioner has failed to carry its burden of proving
`that Sherman combined with Trompower renders Claim
`8 obvious (Ground 2). ................................................................... 36
`
`The Petitioner has failed to carry its burden of proving
`that Shellhammer renders Claim 3 obvious (Ground 3)............... 39
`
`The Petitioner has failed to carry its burden of proving
`that Shellhammer renders Independent Claim 7 obvious
`(Ground 3). ................................................................................... 49
`
`The Petitioner has failed to carry its burden of proving
`that Shellhammer renders Independent Claim 9 obvious
`(Ground 3). ................................................................................... 55
`
`The Petition fails to carry its burden of showing that
`Shellhammer and Trompower render Claim 8 obvious
`(Ground 4). ................................................................................... 55
`
`The Petition does not establish that Shellhammer (Ex.
`1005) in view of Panasik (Ex. 1015) renders Claim 8
`
`C.
`
`D.
`
`E.
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`F.
`
`G.
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`H.
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`I.
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`J.
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`iii
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`IPR2019-01350
`U.S. Patent 7,016,676
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`obvious. (Ground 5) ...................................................................... 56
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`VI.
`
`APJS ARE UNCONSTITUTIONALLY APPOINTED
`PRINCIPAL OFFICERS ........................................................................ 60
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`VII.
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`CONCLUSION ....................................................................................... 64
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`
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`iv
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`IPR2019-01350
`U.S. Patent 7,016,676
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`EXHIBITS
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`International Patent Publication No.
`WO/02 13457 A2
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`Exhibit 2001
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`
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`v
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`IPR2019-01350
`U.S. Patent 7,016,676
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Response to
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`Petition IPR2019-01350 for Inter Partes Review (“Pet.” or “Petition”) of United
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`States Patent No. 7,016,676 (“the ’676 Patent” or “EX1001”) filed by Marvell
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`Semiconductor, Inc. (“Petitioner”). Petitioner has failed to carry its burden of
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`showing that any challenged claim of the ‘676 is unpatentable for at least the reasons
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`set forth herein.
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`II. THE ’676 PATENT
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`The ’676 patent is titled “Method, network and control station for the two-
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`way alternate control of radio systems of different standards in the same frequency
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`band.” The ʼ676 patent issued March 21, 2006, from U.S. Patent Application No.
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`10/089,959 filed April 4, 2002, which was a National Stage Entry of PCT No.
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`PCT/EP01/09258 filed August 8, 2001 and published as W002/13457, which in turn
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`claims priority to German Application No. DE10039532.5 filed August 8, 2000.
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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
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`transmission power only in accordance with standards by the national regulation
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`authority. The national regulation authority determined on what frequencies with
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`what transmission power and in accordance with what radio interface standard a
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`radio system is allowed to transmit. There was also provided so-called ISM
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`1
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`IPR2019-01350
`U.S. Patent 7,016,676
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`frequency bands (Industrial Scientific Medical) where radio systems transmitted in
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`the same frequency band but in accordance with different radio interface standards.
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`EX1001, 1:10-23. And in the event of interference, methods were standardized for
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`an active switching to another frequency within the permitted frequency band, for
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`controlling transmission power and for the adaptive coding and modulation to reduce
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`interference. The ‘676 Patent notes that radio systems operating according to “the
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`radio interface standards ETSI BRAN HiperLAN/2 and IEEE 802.11a use the same
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`radio transmission method, a 64-carrier OFDM method,” and about the same
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`modulation and coding methods. EX1001, 1:28-33.
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`The ’676 Patent observes that, despite operating in the same frequency band,
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`different radio interface standards have different Medium Access Controls (MAC).
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`For the ETSI BRAN HiperLAN/2 radio interface standard, a centrally controlled
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`reservation-based medium access control method is employed, in which a radio
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`station takes over the role of a central instance coordinating the radio resources.
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`EX1001, 1:34-38. For the IEEE 802.11a radio interface standard, a different medium
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`access control method, namely CSMA/CA (Carrier Sense Multiple Access/Collision
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`Avoidance) is provided, in which all the radio stations listen in on the medium and
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`assume that the channel is unused for a minimum duration before 802.11a-MAC
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`frames; thus user data packets are transmitted if necessary. EX1001, 1:43-49.
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`2
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`IPR2019-01350
`U.S. Patent 7,016,676
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`Wideband LANs in accordance with the HiperLAN/2 and 802.11a radio
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`interface standards will operate in the same frequency band. EX1001, 1:63-65.
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`Despite the utilization of methods such as Transmitter Power Control (TPC) and
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`Dynamic Frequency Selection (DFS), those methods did not make optimum use of
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`spreading radio channels over the stations which operate under different radio
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`standards. EX1001, 1:65-2:10.
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`According to the invention of the ’676 Patent, there is provided a method, a
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`wireless network and a control station which make efficient use of radio transmission
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`channels possible by an interface control protocol method for a radio system, which
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`system comprises at least a frequency band provided for the alternate use of a first
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`and a second radio interface standard, the radio system comprising stations which
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`operate in accordance with a first radio interface standard and/or a second radio
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`interface standard, respectively, a control station being provided which controls the
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`alternate use of the frequency band. Based on the idea of providing a comprehensive
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`standard exchange of implicit or explicit control information in systems that have
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`the same radio transmission methods but different radio transmission protocols. This
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`makes a simple and efficient use possible of a radio channel via a plurality of radio
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`interface standards. EX1001, 2:14-28.
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`A first number of stations preferably forms a wireless local area network in
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`accordance with a first radio interface standard and a second number of stations
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`3
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`IPR2019-01350
`U.S. Patent 7,016,676
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`forms a wireless network in accordance with a second radio interface standard. The
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`control station is preferably a station that operates in accordance with both the first
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`and the second radio interface standard. The control station can utilize the common
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`radio channel more effectively when the demand for transmission capability in
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`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
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`second radio interface if stations operating in accordance with the first radio
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`interface standard do not request access to the frequency band. The control station
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`controls the alternate access by the first wireless network and the second wireless
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`network to the common frequency band. The control station receives requests for
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`capacity from various stations and assigns capacity accordingly. The release of the
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`common frequency band for the second radio interface standard may be effected, for
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`example, by explicitly sending control information to the stations of the second radio
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`interface standard. As another example, control can be effected in that the control
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`station determines the respective duration in which the stations operating in
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`accordance with the second radio interface standard can utilize the common
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`frequency band. EX1001, 2:36-4:26.
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`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:
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`4
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`IPR2019-01350
`U.S. Patent 7,016,676
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`
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`1.
`
`An interface-control protocol method for a radio system
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`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
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`system comprising:
`
`stations which operate in accordance with a first radio interface
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`standard and/or a second radio interface standard, and
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`a control station which controls the alternate use of the frequency
`
`band,
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`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
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`by the stations working in accordance with the second radio interface
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`standard if stations working in accordance with the first radio interface
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`standard do not request access to the frequency band.
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`
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`6.
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`An interface-control protocol method for a radio system
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`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 terminates the use of the radio
`
`interface in accordance with the second radio interface standard by
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`5
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`IPR2019-01350
`U.S. Patent 7,016,676
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`transmitting in accordance with the first radio interface standard,
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`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 which controls the alternate use of the frequency band,
`
`wherein the control station controls the access to the common
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`frequency band by stations working in accordance with the first radio
`
`interface standard and in that duration and type of control of the radio
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`interface in accordance with the second radio interface standard is
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`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
`
`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,
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`6
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`IPR2019-01350
`U.S. Patent 7,016,676
`
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`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.
`
`A.
`
`Priority
`
`The Petitioner fails to carry its burden of proving that the ‘676 Patent is not
`
`entitled to priority to German Application No. DE10039532.5 filed August 8, 2000
`
`(the “German Priority Application”).
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`7
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`

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`IPR2019-01350
`U.S. Patent 7,016,676
`
`As acknowledged by the Petitioner, the ‘676 Patent is a national phase
`
`application of an international application under the Patent Cooperation Treaty,
`
`namely International Application No. PCT/EP01/09258, filed August 8, 2001. Ex.
`
`1001, Items (22) & (86). The publication of the International Application clearly
`
`shows the claim of priority to German Application No. 100 39 532.5, with a filing
`
`date of August 8, 2000. Ex. 2001, Item (30).
`
`The Petition conceals the fact that, during prosecution of the application that
`
`issued as the ‘676 Patent, the Examiner acknowledged that the International Bureau
`
`under the Patent Cooperation Treaty had in fact furnished at last some priority
`
`documents:
`
`
`
`Ex. 1002, 92. This statement in the first Office Action makes clear that at least
`
`some copies of the certified copies of the priority documents had been received from
`
`the International Bureau. This statement also directs attention to the attached detailed
`
`office action for a list of any certified copies not received. In fact, there is no such
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`list in the first Office Action. Moreover, as there is a priority claim only to a single
`
`8
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`IPR2019-01350
`U.S. Patent 7,016,676
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`application, the statement that some certified copies of priority documents had been
`
`received clearly indicates that the certified copy of the priority document had in fact
`
`been received. Notably, the Petitioner utterly omits any mention of the Examiner’s
`
`admission that the priority document had in fact been received from the International
`
`Bureau.
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`Moreover, the Petitioner fails to mention that, in a national phase entry of an
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`international application under the Patent Cooperation Treaty, it is the responsibility
`
`of the International Bureau to provide the certified copy of the priority document to
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`the USPTO. As the Eighth Edition of the Manual of Patent Examination Procedure,
`
`effective August 2001, Section 1893.03(c), provided:
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`The requirement in PCT Rule 17 for a certified copy of the foreign
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`priority application is normally fulfilled by applicant providing a
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`certified copy to the Receiving Office or to the International Bureau
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`within 16 months from the priority date. Subsequently, the International
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`Bureau forwards a photocopy of the certified priority document when
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`it forwards a copy of the international application (shortly after
`
`publication at 18 months from the priority date) to each Designated
`
`Office. The copy from the International Bureau is placed in the U.S.
`
`national stage file. The International Bureau stamps the face of the
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`photocopy of the certified priority document with an indication that the
`
`certified priority document was received at the International Bureau.
`
`The stamped copy of the priority document sent to the U.S. Office of
`
`9
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`

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`IPR2019-01350
`U.S. Patent 7,016,676
`
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`PCT Operations from the International Bureau is acceptable to establish
`
`that applicant has filed a certified copy of the priority document.
`
`Thus, as of the September 22, 2004, mailing date of the first Office Action,
`
`the Examiner confirmed that the International Bureau had provided some, and thus
`
`at least one, certified copy. As only one certified copy could have been provided,
`
`given the single priority claim, it is clear that the certified copy was provided by the
`
`International Bureau.
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`Accordingly, the priority claim should be accorded.
`
`III. RELATED PROCEEDINGS
`
`The following proceedings concern the ’676 patent.
`
`Case Name
`
`Case Number
`
`Case Filing
`Date
`7/24/2018 Uniloc 2017 LLC et al v. Microsoft
`Corporation
`8/29/2018 Uniloc 2017 LLC et al v. AT&T, Inc.
`et al
`8/29/2018 Uniloc 2017 LLC et al v. Verizon
`Communications Inc. et al
`10/31/2018 Uniloc 2017 LLC et al v. Google LLC 2-18-cv-00448
`
`8-18-cv-01279
`
`2-18-cv-00379
`
`2-18-cv-00380
`
`Court
`
`CDCA
`
`EDTX
`
`EDTX
`
`EDTX
`
`CDCA
`
`EDTX
`
`11/17/2018 Uniloc 2017 LLC v. Microsoft
`Corporation
`11/17/2018 Uniloc 2017 LLC et al v. Google LLC 2-18-cv-00495
`
`8-18-cv-02053
`
`11/17/2018 Uniloc 2017 LLC v. Verizon
`Communications Inc. et al
`11/17/2018 Uniloc 2017 LLC v. AT&T Services,
`Inc. et al
`
`2-18-cv-00513
`
`EDTX
`
`2-18-cv-00514
`
`EDTX
`
`10
`
`

`

`5/29/2019 Microsoft Corporation et al v. Uniloc
`2017 LLC
`5/29/2019 Microsoft Corporation et al v. Uniloc
`2017 LLC
`7/22/2019 Marvell Semiconductor, Inc. v. Uniloc
`2017 LLC
`7/22/2019 Marvell Semiconductor, Inc. v. Uniloc
`2017 LLC
`Ericsson Inc. et al v. Uniloc 2017
`LLC
`8/29/2019 Google LLC f/k/a Google Inc. v.
`Uniloc 2017 LLC
`Ericsson Inc. v. Uniloc 2017 LLC
`
`8/29/2019
`
`1/3/2020
`
`IPR2019-01350
`U.S. Patent 7,016,676
`
`
`IPR2019-01116 PTAB
`
`IPR2019-01125 PTAB
`
`IPR2019-01349 PTAB
`
`IPR2019-01350 PTAB
`
`IPR2019-01550 PTAB
`
`IPR2019-01541 PTAB
`
`IPR2020-00376 PTAB
`
`
`
`IV. THE LEVEL OF ORDINARY SKILL IN THE ART
`
`The Petition alleges that a POSITA would have had a Bachelor’s Degree in
`
`Electrical Engineering, Computer Science, or a related subject and one or more years
`
`of experience working with wireless networks and related standards. Pet. 11-12. The
`
`Petition goes on at length to identify alleged detailed knowledge of a POSITA. Pet.
`
`11-12.
`
`The Board properly notes that the qualifier “or more” as applied to the years
`
`of working experience is indefinite, and disregarded that alleged level of experience.
`
`Paper No. 9, 21. Given that Petitioner fails to meet its burden of proof in establishing
`
`prima facie anticipation or obviousness when applying its own definition of a person
`
`of ordinary skill in the art (“POSITA”), Patent Owner does not offer a competing
`
`definition for POSITA.
`
`11
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`

`IPR2019-01350
`U.S. Patent 7,016,676
`
`
`V.
`
`PETITIONER DOES NOT PROVE THAT ANY CHALLENGED
`CLAIM IS UNPATENTABLE
`
`“In an [inter partes review], the petitioner has the burden from the onset to
`
`show with particularity why the patent it challenges is unpatentable.” Harmonic Inc.
`
`v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016).
`
`While the Board has instituted Inter Partes Review here, as the Court of
`
`Appeals has stated:
`
`[T]here is a significant difference between a petitioner's burden to
`
`establish a “reasonable likelihood of success” at institution, and
`
`actually proving invalidity by a preponderance of the evidence at trial.
`
`Compare 35 U.S.C. § 314(a) (standard for institution of inter partes
`
`review), with 35 U.S.C. § 316(e) (burden of proving invalidity during
`
`inter partes review).
`
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). As demonstrated
`
`herein, Petitioner has failed to meet its burden of proving any proposition of
`
`invalidity, as to any claim, by a preponderance of the evidence. 35 U.S.C. §316(e).
`
`The Petition raises the following obviousness challenges under 35 U.S.C. §
`
`103:
`
`12
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`

`

`IPR2019-01350
`U.S. Patent 7,016,676
`
`
`Ground
`
`Claims
`
`Reference(s)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`1, 3, 6 and 9
`
`Sherman1
`
`8
`
`Sherman and Trompower2
`
`1, 3, 7 and 9
`
`Shellhammer3
`
`8
`
`8
`
`Shellhammer and Trompower
`
`Shellhammer and Panasik4
`
`A. Claim Construction
`
`Patent Owner submits that all claim terms should be construed according to
`
`their plain and ordinary meaning. Patent Owner submits that the Board need not
`
`construe any other claim term in a particular manner in order to arrive at the
`
`conclusion 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, for completeness,
`
`Petitioner’s proposed constructions are addressed below.
`
`13
`
`
`
` 1
`
` EX1004, U.S. Patent No. 7,031,274
`
`2 EX1006, U.S. Patent No. 6,215, 982
`
`3 EX1005, U.S. Patent No. 7,039,358
`
`4 EX1015, U.S. Patent No. 6,643,278
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`

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`IPR2019-01350
`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”
`
`1.
`
`The Petitioner argues that no construction is necessary for this claim term, but
`
`then proposes a construction, which Petitioner characterizes as the plain and ordinary
`
`meaning, of “stations, each of which operates in accordance with a first radio
`
`interface standard, a second radio interface standard, or both.” Pet. 13-14. Patent
`
`Owner submits that the Board properly determined that no construction of this claim
`
`term is necessary. Paper No. 9, 17.
`
`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 construction. See
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`Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1584-85 (Fed. Cir. 1996).
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`The Patent Owner respectfully requests that the Board adopt the plain and
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`ordinary meaning of the limitation “renders the frequency band available for access
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`by the stations working in accordance with the second radio interface standard if
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`stations working in accordance with the first radio interface standard do not request
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`access to the frequency band.”
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`The Petition proposes the claim construction “makes the frequency band
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`available for transmissions by stations working in accordance with the second radio
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`interface standard for periods during which the common frequency band is not being
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`used by stations operating in accordance with the first radio interface standard that
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`have requested access to the band.” (Petition, p. 15). The Petition bases this
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`construction upon certain statements made in a district court complaint (Ex. 1013)
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`filed by the Patent Owner. (Id). A relevant portion of the cited portions of the district
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`court complaint are re-produced here in pertinent part:
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`“The Marvell Avastar radio employs a coexistence strategy that makes the
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`shared 2.4 GHz frequency band available to Wi- Fi stations communicating with
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`Microsoft Surface only when Bluetooth stations are not requesting access to the
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`frequency band. For example, the control station provides access to the frequency
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`band during times that the Bluetooth stations are not requesting access.” [Ex. 1013,
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`pp. 12-13].
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`In formulating this statement, the Patent Owner merely provided an
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`exemplary description of how the Marvell Avastar radio may function, and does not
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`qualify or otherwise redirect the meaning and intent of the plain and ordinary
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`meaning of the limitation “renders the frequency band available for access by the
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`stations working in accordance with the second radio interface standard if stations
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`working in accordance with the first radio interface standard do not request access
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`to the frequency band.” For example, the district court complaint states, in
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`exemplary form, that the control station provides access to the frequency band
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`during times that the Bluetooth stations are not requesting access. The Petition
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`embellishes on this statement to construe that certain periods may exist in which the
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`common frequency band is not being used in spite of the fact that those Bluetooth
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`stations may be actively requesting access. Thus, the Petition is improperly
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`attempting to impart limitations into the aforementioned construction that it was
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`never meant or intended to include.
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`In proposing the new construction, the Petition points to paragraph 96 of Ex.
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`1003 in which the Declarant alleges, among other things, infringement by, e.g.,
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`rendering a single channel available for access. (Ex. 1003, paragraph 96).
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`Nevertheless, the Patent Owner respectfully submits that the Declarant is reading
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`legal terminology into the afore-cited claim limitation, which is not permissible
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`under 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.
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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”
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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 Owner
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`submits that the Board need not construe this claim term in order to arrive at the
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`conclusion that the Petition is substantively deficient. Wellman, 642 F.3d at 1361.
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`
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`4.
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`The alleged steps within Claims 1, 3, 6 and 7
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`The Board, sua sponte, has interpreted claim 1 to require two steps
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`incorporated into the wherein clause, and in particular, as follows:
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`we read the wherein clause of claim 1 as setting forth two steps, both
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`carried out by the control station:
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`(1) “controls access to the common frequency band for stations working
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`in accordance with the first radio interface standard,” and
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`(2) “renders the frequency band available for access by the stations
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`working in accordance with the second radio interface standard if
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`stations working in accordance with the first radio interface standard do
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`not request access to the frequency band.”
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`Paper No. 9, 19. Similarly, the Board has interpreted claim 3’s wherein clause as
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`setting forth an additional step. Id. at 20. The Board has further interpreted the
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`wherein clauses of Claims 6 and 7 as reciting method steps. Id. at 20-21. Patent
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`Owner submits that the Board need not construe the wherein clauses of claims 1, 3,
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`6 and 7 in order to arrive at the conclusion that the Petition is substantively deficient.
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`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“need
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`only be construed to the extent necessary to resolve the controversy”).
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`B.
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`The Petitioner fails to carry its burden of proving that Sherman
`renders Claim 3 obvious. (Ground 1)
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`The Petitioner has failed to meet its burden of establishing that Sherman
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`render Claim 1 obvious; as Claim 3 depends from Claim 1, the Petition fails to meet
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`its burden that of establishing that Claim 3 is obvious, and thus Ground 1 fails.
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`1.
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`As the Board properly determined in the Institution Decision,
`Sherman fails to teach or suggest the recitation a control
`station that renders the frequency band available for access
`by the stations working in accordance with the second radio
`interface standard if stations working in accordance with the
`first radio interface standard do not request access to the
`frequency band.
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`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
`
`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. Ex.1004, 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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`Ex. 1004, column 3, lines 10-13.
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`
`
`As shown in annotated Fig. 5, Sherman teaches that the super-frame structure
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`includes three phases; each phase includes a collection of frames primarily
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`controlled by a common coordination or access function. Ex. 1004, column 3, lines
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`12-15. The first phase would consist of the CFP beacon message, a 802.11 Broadcast
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`sub-phase, and an 802.11 contention free phase (CFP) sub-phase. Ex. 1004, column
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`4, lines 15-16. This first phase is collectively referred to as a