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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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`MARVELL SEMICONDUCTOR, INC.,
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`Petitioner,
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`v.
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`UNILOC 2017 LLC,
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`Patent Owner.
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`––––––––––
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`Case No. IPR2019-01350
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`U.S. Patent 7,016,676
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`––––––––––
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`PETITIONER’S REPLY
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`IPR2019-01350 Reply
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`TABLE OF CONTENTS
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`Page
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`I.
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`The ’676 Patent Is Not Entitled to a Foreign Priority Claim. ......................... 4
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`A. Uniloc failed to carry its burden of proof. ............................................. 4
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`B.
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`C.
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`The applicant failed to perfect its foreign priority claim. ..................... 4
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`Uniloc argues that “some” priority documents were received,
`but this is insufficient as a matter of law. .............................................. 7
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`D. Uniloc cannot blame the International Bureau for the
`applicant’s mistake. ............................................................................... 8
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`II.
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`Claim Construction .......................................................................................... 9
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`III. Ground 1 (Sherman) (Claims 3, 6, and 9) ..................................................... 10
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`A.
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`Claims 3 and 9 ..................................................................................... 10
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`1.
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`2.
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`The Board’s application of Schulhauser was correct and
`required by law. ......................................................................... 10
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`Step (2) is not required, but is nonetheless rendered
`obvious by Sherman. ................................................................. 12
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`B.
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`Claim 6 ................................................................................................ 17
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`IV. Ground 3 (Shellhammer) (Claims 3, 7, and 9) .............................................. 21
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`A.
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`Claims 3 and 9 ..................................................................................... 21
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`1.
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`2.
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`Shellhammer teaches all limitations. ........................................ 22
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`All evidence of record supports the obviousness of the
`challenged claims. ..................................................................... 23
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`B.
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`Claim 7 ................................................................................................ 27
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`V. Grounds 2, 4, and 5 (Claim 8) ....................................................................... 30
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`VI. ALJ Unconstitutionality ................................................................................ 31
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`The challenged claims are rendered obvious by Sherman, which teaches the
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`same technique for alternating between the same wireless standards described in
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`the ’676 patent—HIPERLAN/2 and IEEE 802.11a—and by Shellhammer, which
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`teaches alternate access for two standards that Uniloc accuses of infringement in
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`district court—Bluetooth and IEEE 802.11. Ex. 1003 ¶¶242-243. Each reference
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`renders the challenged claims obvious, as explained by Dr. Roy.
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`In response, Uniloc offers nothing more than attorney argument. Uniloc
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`declined to take Dr. Roy’s deposition and offers no expert testimony of its own.
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`The only exhibit submitted by Uniloc (Exhibit 2001) is a non-certified copy of a
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`German PCT application allegedly showing an earlier priority but otherwise
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`having no relevance to the obviousness of the challenged claims. Uniloc’s
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`arguments are replete with errors and unsupported by any evidence.
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`Unable to contest the facts, Uniloc asks the Board to create new law by
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`imposing a “branching process flow” requirement on Schulhauser. But the Board
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`has already rejected such a requirement, which would be at odds with the Federal
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`Circuit cases on which Schulhauser was based.
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`Uniloc is wrong on the facts and the law. Petitioner respectfully requests that
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`the Board finds claims 3, 6, 7, and 9 unpatentable.
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`I.
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`IPR2019-01350 Reply
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`The ’676 Patent Is Not Entitled to a Foreign Priority Claim.
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`During the prosecution of the ’676 patent, the applicant failed to provide a
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`certified copy of the foreign priority application and therefore cannot claim priority
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`to it. Even if an earlier priority date were possible, that would only affect Ground 1
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`(Sherman) but not Ground 2 (Shellhammer).
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`A. Uniloc failed to carry its burden of proof.
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`Uniloc attempts to shift the burden to Petitioner. POR, 7. But “a patentee
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`bears the burden of establishing that its claimed invention is entitled to an earlier
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`priority date …” See In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1376 (Fed.
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`Cir. 2016); Oasis, Inc. et al. v. T-Mobile USA Inc. (Appeal No. 2007-1265, decided
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`April 11, 2008). Uniloc has failed to meet its burden, and the record establishes the
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`’676 patent is not entitled to an earlier priority date.
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`B.
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`The applicant failed to perfect its foreign priority claim.
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`The Examiner was correct in rejecting the applicant’s foreign priority claim
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`because the applicant failed to furnish a certified copy of the foreign priority
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`application (German application No. DE10039532.5) during the prosecution of the
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`’676 patent, as required by 37 C.F.R. 1.55(g)(1) (“The claim for priority and the
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`certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule
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`17 must, in any event, be filed within the pendency of the application…”)
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`(emphasis added). A certified copy the German application appears nowhere in the
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`prosecution history. See generally, Ex. 1002.
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`Three documents in the file history confirm that the USPTO did not receive
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`a certified copy. First, the Examiner indicated on the Notice of Allowance that the
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`USPTO had not received any priority documents. See Ex. 1002, 0152:
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`Second, the Examiner indicated on a Bibliographic Data Sheet that the
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`application did not meet the conditions in 35 U.S.C. § 119(a)-(d) for a foreign
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`priority claim. See Ex. 1002, 0155:
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`Third, an Office Action indicates that “none” of the certified copies of the
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`alleged priority documents, i.e., the German application, have been received. See
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`Ex. 1002, 0131:
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`C. Uniloc argues that “some” priority documents were received, but
`this is insufficient as a matter of law.
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`Uniloc points to an Office Action, dated September 22, 2004, where the
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`Examiner checked a box indicating the USPTO received “some” priority
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`documents. POR, 9. But providing only “some” documents is insufficient because
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`the USPTO must receive a certified copy of the priority documents to perfect a
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`foreign priority claim. See 37 C.F.R. 1.55(g)(1). Therefore Uniloc’s argument fails
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`as a matter of law.
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`Moreover, the File History as a whole indicates this one check mark, from
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`September 2004, was a mistake because the Examiner checked the “None” box in
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`three subsequent communications to the applicant: (1) an Office Action dated
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`November 1, 2005, (2) a Bibliographic Data Sheet, dated December 2, 2005, and
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`(3) the Notice of Allowance dated December 6, 2005 as shown above. See Ex.
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`1002, 0131, 0152, 0155. The Examiner informed the applicant three times that the
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`USPTO had not received a certified copy of the priority document, and the
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`applicant never disputed this point during prosecution.
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`The file history contains a copy of the PCT application but not a copy of the
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`German application, providing further confirmation that the German application
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`was not provided “within the pendency of the application” as required by 37
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`C.F.R. 1.55(g)(1).
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`D. Uniloc cannot blame the International Bureau for the applicant’s
`mistake.
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`Uniloc attempts to blame the International Bureau, but PCT and USPTO
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`regulations place the fault squarely on the applicant. The Bureau provides the
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`certified copy only upon the USPTO’s request. See PCT Rule 17.2(a) (“Where the
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`applicant has complied with Rule 17.1(a), (b) or (b-bis) the International Bureau
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`shall, at the specific request of the designated Office, promptly but not prior to the
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`international publication of the international application, furnish a copy of the
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`priority document to that Office.”). In turn, the USPTO provides the request to the
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`Bureau only upon completion of a PCT/RO/101 form by the applicant. MPEP
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`1821.
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`The file history does not include any such form, and the POR did not raise
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`any argument that the applicant made a proper request for a certified copy of the
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`German application to be furnished. Despite multiple communications from the
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`Examiner indicating a failure to perfect foreign priority, the applicant made no
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`attempt to correct the issue and therefore is not entitled to claim priority to the
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`foreign application.
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`II. Claim Construction
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`The Board modified Petitioner’s articulation of a POSITA by removing the
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`words “or more.” ID, 21. Petitioner’s invalidity grounds and arguments are not
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`affected by this modification—the skills and knowledge of a POSITA are based on
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`the stated one year of experience. See Ex. 1003 ¶¶63-70. The Petition points out
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`that a person with more years of experience would also share that baseline level of
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`skill, but it does not rely on that additional experience for its analysis. No party has
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`raised any factual dispute based on the number of years of work experience.
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`Uniloc suggests the Institution Decision held “the qualifier ‘or more’ as
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`applied to the years of working experience is indefinite…” POR, 11. This is
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`incorrect. The Institution Decision did not adopt the “or more” qualifier but did not
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`find it to be indefinite. See Paper 9 at 19-21.
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`III. Ground 1 (Sherman) (Claims 3, 6, and 9)
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`A. Claims 3 and 9
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`Uniloc only disputes whether Sherman teaches step (2) of limitation 1[d] and
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`the corresponding limitation in claim 9. Uniloc does not dispute that Sherman
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`teaches all other limitations of claims 3 and 9. Under Schulhauser, step (2) is not
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`required. Even if it were, Sherman renders it obvious.
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`1.
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`The Board’s application of Schulhauser was correct and
`required by law.
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`a.
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`Schulhauser is binding authority.
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`Uniloc asks the Board to ignore Schulhauser because the case was not cited
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`in the Petition. However, “the application of Schulhauser is a claim construction
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`issue, which is a matter of law.” See Dell Inc. v. Realtime Data LLC, IPR2017-
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`00176 (Paper 43) at 15. It is well-settled that the PTAB is not limited to the parties’
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`proposed claim constructions. See Intellectual Ventures II LLC v. Ericsson Inc.,
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`686 Fed.Appx. 900, 905 (2017). Here, Schulhauser was raised in the Institution
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`Decision, which provides both parties with reasonable notice and the opportunity
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`to present arguments in response.
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`Koninklijke Philips N.V. v. Google LLC is inapposite. 948 F.3d 1330 (Fed.
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`Cir. 2020). Koninklijke held institution to be improper when based on a
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`combination not advanced in the petition. Id. at 1335. Here, the PTAB instituted on
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`the specific grounds presented in the petition. The application of binding authority
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`is not a new invalidity ground or theory. See TeraData Operations, Inc. v. Realtime
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`Data, LLC, IPR2017-00557 (Paper 34) at 16 (“Schulhauser is our precedent and it
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`should apply given its applicability to the claim construction for the claims at
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`issue.”); Dell, IPR2017-00176 (Paper 43) at 11; Hulu., LLC v. Sound View
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`Innovations, LLC IPR2018-00864 (Paper 35) at 12-13.
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`b.
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`Schulhauser applies to Claim 1.
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`Uniloc attempts to distinguish Schulhauser with the same two arguments it
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`presented to the Board in another proceeding involving the ’676 patent. See
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`Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00376 (Paper 16) at 6-7. The Board
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`rejected both of Uniloc’s arguments. See id.
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`First, Uniloc argued Schulhauser was based on BRI and should therefore be
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`ignored under Phillips. But Uniloc cites no authority, and the Board rejected this
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`argument. See Ericsson Inc. v. Uniloc 2017 LLC, IPR2020-00376 (Paper 16) at 6
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`(“Schulhauser, on its face, does not limit its application to circumstances where the
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`broadest reasonable interpretation rule applies, and it is a precedential decision of
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`the Board to which we are bound.”). Moreover, Schulhauser relied on Federal
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`Circuit cases decided under the Phillips standard. See, e.g., Ex parte Schulhauser,
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`Appeal No. 2013–007847 at 10 (PTAB April 28, 2016) (Precedential) (citing
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`Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed. Cir. 2010) (affirming
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`a district court’s interpretation of a method claim, under plain and ordinary
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`meaning); Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed. Appx. 603,
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`607 (Fed. Cir. 2007)).
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`Second, Uniloc asks the Board to create new law by adding a “branching”
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`requirement to Schulhauser. See POR, 26. But Uniloc cites no cases that have
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`applied this requirement, and the Board rejected it previously. See Ericsson,
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`IPR2020-00376 (Paper 16) at 7 (“[I]t is the conditional or exclusive nature of ‘if’
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`discussed in Schulhauser that we address herein, as opposed to mutual
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`exclusivity.”). The Federal Circuit cases on which Schulhauser is based—Applera
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`and Cybersettle—do not mention any such requirement. See, e.g., Applera, 375
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`Fed. Appx. at 21. And the claims in Applera do not include a branching process or
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`mutual exclusivity, contradicting the notion that such a requirement exists. See id.
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`2.
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`Step (2) is not required, but is nonetheless rendered obvious
`by Sherman.
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`Sherman gives priority to HIPERLAN/2 by allowing HIPERLAN/2
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`transmissions during the 802.11 contention-free period (“CFP”), but relinquishing
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`time to 802.11 devices during a subsequent contention period (“CP”) if no
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`HIPERLAN/2 transmission requests are pending. See Ex. 1004, 6:1-8, 5:47-57,
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`Figure 5; Ex. 1003 ¶¶171-177.
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`The CFP is variable length. Its end is not fixed in time. Nor is it fixed to the
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`CFP maximum length. Instead, the Hybrid AP sends a CF_End frame to end the
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`contention-free period and begin the contention period for 802.11 CP traffic. See
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`Ex. 1004, 6:2-8 (“The CFP’s maximum length … is optimally set very close to the
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`full length of the superframe. To relinquish the time to the CP, when the CF_End is
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`sent, all terminals automatically reset their NAV’s. Normal [802.11] CP
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`transmissions would then occur.”) (emphasis added), Fig. 5; Pet., 28-29; Ex. 1003
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`¶¶173-176:
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`Sherman Figure 5 shows the Hybrid AP ending the CFP before reaching the CFP
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`max length. See Ex. 1004, 5:41-57, 6:1-8, Fig. 5 (showing CFP_End sent n x 2ms
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`before the end of the CFP max length and superframe); Ex. 1003 ¶¶173-176. In
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`Figure 5, Sherman teaches that when HIPERLAN/2 transmissions end—shown by
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`the end of H/2 MAC frames—the Hybrid AP ends the CFP by sending CF_End,
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`relinquishing the rest of the superframe for 802.11 devices. See Ex. 1004, 6:1-8,
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`5:41-57, Fig. 5; Ex. 1003 ¶¶173-177.
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`Petitioner respectfully submits that these teachings were overlooked in the
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`Institution Decision, which held that “Sherman sets the CFP ‘very close to the full
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`length of the superframe’ …” See ID, 30 (emphasis added). As explained above,
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`the CFP is not the same as its maximum length, and Sherman teaches setting CFP
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`“maximum length”—not the CFP—“very close to the full length of the
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`superframe.” See Ex. 1004, 6:2-8, Fig. 5; see also Ex. 1011, 003; Ex. 1003 ¶¶121,
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`173-175.
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`The Institution Decision requested a “clear disclosure that in the absence of
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`pending HIPERLAN/2 requests, Sherman would cut short or prematurely
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`terminate the already established CFP duration…” See ID, 30. Sherman Figure 5
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`provides explicit teaching that the CFP duration is cut short before the CFP
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`Maximum Length, at the end of HIPERLAN/2 transmissions. See Ex. 1004, 5:41-
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`57, 6:1-8, Fig. 5.
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`By teaching a CFP maximum length close to the full length of the
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`superframe, Sherman gives priority for HIPERLAN/2 devices to use the channel
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`during the CFP, which can occupy close to the entire superframe if needed. See,
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`e.g., Ex. 1004, Abstract, 2:15-19, 6:1-8, Fig. 5; Ex. 1003 ¶¶137, 157, 173-177. But
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`Sherman also teaches that the CFP can be ended before its maximum length by the
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`AP sending CF_End after the end of HIPERLAN/2 transmissions, opening the
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`channel to 802.11 devices. See Ex. 1004, 6:1-8. 5:41-57, Fig. 5; Ex. 1003 ¶¶173-
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`179. If this were not the case, the frequency band would sit idle, with nearly the
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`entire superframe reserved for non-existent HIPERLAN/2 transmission requests,
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`while 802.11 devices wait for a chance to transmit. Ex. 1003 ¶¶174-179. Therefore
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`Sherman gives priority to HIPERLAN/2 stations during the CFP, but when there
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`are no longer any pending HIPERLAN/2 transmission requests, Sherman teaches
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`sending CF_End to open the frequency band for 802.11 access. See id.; Ex. 1004,
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`6:1-8, 5:41-57, Fig. 5.
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`Based on Sherman’s teachings, as HIPERLAN/2 transmissions decrease, the
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`length of the CFP decreases, with the CF_End being sent earlier to end the CFP.
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`See, e.g., Ex. 1004, 6:1-8, 5:41-57, Fig. 5; Ex. 1003 ¶¶173-177. A POSITA would
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`have found it obvious that when there are no HIPERLAN/2 transmission requests,
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`the Hybrid AP sends the CF_End signal to open the channel for 802.11 stations to
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`contend for access. See Ex. 1003 ¶¶173-177. Otherwise, 802.11 CP stations would
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`not have access to the frequency band, because close to the full length of the
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`superframe would be reserved for HIPERLAN/2, even if no HIPERLAN/2 stations
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`request access and the band is idle. A static CFP would prevent the link from being
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`shared with 802.11—defeating the central purpose of Sherman. See Ex. 1004,
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`1:13-17, 3:62-66 (“… a Super-frame structure, shown in FIG. 5 depicting signals
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`of both standards, in a channel, is disclosed herein that allows 802.11a stations
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`(STA and AP) to share a single channel with HIPERLAN/2 stations.”) (emphasis
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`added); KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of
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`ordinary skill in the art is also a person of ordinary creativity, not an automaton.”).
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`Uniloc offers no evidence to rebut Sherman’s express teachings or Dr. Roy’s
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`testimony, and Uniloc’s arguments are irrelevant to the grounds and evidence at
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`issue. Uniloc’s arguments presume that HIPERLAN/2 and 802.11 phases have
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`fixed durations. Uniloc never addresses Sherman’s variable-length phases, where
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`the CFP ends whenever the AP sends CF_End, as explained above. See Ex. 1004,
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`6:1-8, 5:47-57, Fig. 5.
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`Moreover, while Uniloc lists a variety of mechanisms that Sherman
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`allegedly does not teach or suggest, Uniloc never addresses the obviousness
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`rationale presented in the Petition: when HIPERLAN/2 stations do not request
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`access to the frequency band, the Hybrid AP ends the CFP, thereby rendering the
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`frequency available for access by 802.11 stations during the contention period
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`(CP). The closest argument raised by Uniloc alleges that Sherman does not teach a
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`mechanism for allocating the “CFP phase for use by 802.11stations via the super-
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`frame structure (e.g., contention free period)…” See POR, 21 (emphasis added).
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`This was not the obviousness position presented in the Petition or Dr. Roy, and
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`therefore Uniloc’s arguments are irrelevant.
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`To the extent Uniloc suggests additional mechanisms beyond the prior art
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`802.11 and HIPERLAN/2 standards are required, the ’676 patent would not be
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`enabled. Sherman teaches the same scheme for alternating access between
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`HIPERLAN/2 and 802.11 stations as the ’676 patent, but earlier and in greater
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`detail. The ’676 patent does not teach any modifications to the HIPERLAN/2 or
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`802.11 standards. Instead, it purports to disclose a scheme for the alternating use of
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`a frequency band by existing HIPERLAN/2 and 802.11 stations without
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`modification. See Ex. 1001, 5:20-41, 4:50-6:18; Ex. 1003 ¶¶77-80, ¶81 (“the ’676
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`patent provides minimal details regarding its alleged invention”). In the
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`embodiments of the ’676 patent, the stations are unmodified HIPERLAN/2 and
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`802.11 stations that use existing mechanisms, provided by each standard, for
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`requesting access to the frequency band. See Ex. 1001, 5:20-41, 4:50-6:18.
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`B. Claim 6
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`Uniloc only disputes whether limitation 6[d] is met. Uniloc does not dispute
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`any other limitations for claim 6.
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`Sherman teaches that “the Access Port (AP) could broadcast dummy traffic
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`just prior to the CFP_Beacon preventing other traffic from seizing the medium.”
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`Ex. 1004 at 6:26-28, Fig. 5:
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`By broadcasting dummy traffic just prior to the Beacon, the AP terminates
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`the use of the radio interface by 802.11 stations, allowing the AP to regain control
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`and send a Beacon at the precise time necessary to keep superframes aligned. See
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`Ex. 1003 ¶195. Sending dummy traffic blocks 802.11a stations from contending
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`for the medium—which is why it is referred to as a “Blocking Sequence”—thereby
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`terminating their use of the medium. Ex. 1003 ¶¶198-199. A POSITA would have
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`found it obvious to use HIPERLAN/2 transmissions as dummy traffic because it is
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`one of the two signal formats in the system and it would appear as unintelligible
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`“dummy” traffic to 802.11 stations. Id. ¶200.
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`Uniloc offers unsupported attorney argument that is contradicted by the
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`evidence and Uniloc’s own admissions. First, Uniloc contends that Dr. Roy offers
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`only “bald conclusions” that “802.11a devices would, based on detecting
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`HIPERLAN/2 transmissions, refrain from transmitting simultaneously…” POR,
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`32. But Dr. Roy provided a detailed explanation of 802.11a’s collision avoidance
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`protocol, which requires a quiet period before beginning transmissions that would
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`be blocked by continuous dummy traffic, including HIPERLAN/2 transmissions
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`used for this purpose. Ex. 1003 ¶¶198, 130 n.4 (explaining 802.11 backoff
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`protocol).
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`Uniloc admits that Dr. Roy is correct, arguing that 802.11 systems begin
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`transmission only when the channel is idle. See POR, 38 (“The CSMA/CA
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`technique, in particular, used by 802.11 systems attempts to avoid collisions by
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`beginning transmission only after the channel is determined to be idle…”).
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`Therefore when the link is occupied by dummy HIPERLAN/2 traffic, then by
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`Uniloc’s admission, 802.11 stations will refrain from beginning transmissions.
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`Uniloc argues that 802.11 stations would continue to transmit in the
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`presence of HIPERLAN/2 traffic, citing Figure 3 of Sherman. But the Petition does
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`not rely on Figure 3, which shows the “PRIOR ART” lacked a mechanism to end
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`the 802.11 phase and begin a HIPERLAN/2 phase. Uniloc attempts to distort
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`Figure 3 to argue that 802.11 stations transmit regardless of whether the channel is
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`idle—but Uniloc contradicts its own argument elsewhere,1 and Sherman says no
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`such thing. Figure 3 discusses transmissions from mobile stations, which Sherman
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`explains can have “[h]idden terminal” scenarios where some mobile terminals are
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`hidden to others, even though both are in communication with the same AP (the
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`“network”), resulting in collisions where both stations transmit in the same time
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`interval. See Ex. 1004, 2:46-51 (“[S]ome terminals remain hidden to other
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`terminals even though both may access a particular network. Hidden terminals
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`coupled with an inability of a transmitting terminal to listen may result in collisions
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`as more than one terminal may transmit in the same time interval.”). Here, Dr. Roy
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`explained a POSITA would have found it obvious for the AP to send dummy
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`HIPERLAN/2 broadcasts with the express purpose of blocking 802.11 terminals—
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`this does not run into the same issue because the AP is not hidden.
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`Uniloc further claims that Dr. Roy failed to “provide an analysis of whether
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`a POSITA would find it obvious for the AP to broadcast 802.11 signals, rather than
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`HIPERLAN/2 signals, in order to cause other 802.11a devices to refrain from
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`transmission.” POR, 33. Uniloc offers no reason to believe a POSITA would have
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`1 Uniloc also suggests HIPERLAN/2 and 802.11a might not use the same “portion
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`of the frequency spectrum.” POR, 32. But the entire point of Sherman and the ’676
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`patent is to allow those standards to share the same frequency channel. See, e.g.,
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`Ex. 1004, 1:13-17, 3:62-66.
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`considered this speculative alternative. An obvious solution need not be the best
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`solution, and it would be legal error to require the Petitioner to prove that the
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`transmission of HIPERLAN/2 dummy traffic is superior to 802.11 dummy signals.
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`See Novartis Pharm. Corp. v. W.-Ward Pharm. Int’l Ltd., 923 F.3d 1051, 1059
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`(Fed. Cir. 2019) (‘“[O]ur case law does not require that a particular combination
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`must be the preferred, or the most desirable, combination described in the prior art
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`in order to provide motivation for the current invention.’ It is thus improper to
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`require [the defendant] to prove that a person of ordinary skill would have
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`selected everolimus over other prior art treatment methods.”) (emphasis added;
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`citations omitted); see also In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012)
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`(“[T]hat better alternatives exist in the prior art does not mean that an inferior
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`combination is inapt for obviousness purposes.”).
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`IV. Ground 3 (Shellhammer) (Claims 3, 7, and 9)
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`A. Claims 3 and 9
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`Similar to Ground 1, Uniloc only disputes whether step (2) of limitation [1d]
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`is met.2 Uniloc does not dispute any other limitations for claims 1, 3, or 9.
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`2 Step (2) is not required under Schulhauser and therefore Uniloc’s arguments fail
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`as a matter of law.
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`1.
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`Shellhammer teaches all limitations.
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`Shellhammer teaches an AP/base station that controls the alternate use of the
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`frequency band (e.g., the 2.4 GHz ISM band) for IEEE 802.11 Power Saving Mode
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`(“802.11PSP”) and Bluetooth.3 See Ex. 1005, Abstract, 8:52-61, Fig. 3; Ex. 1003
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`¶267:
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`The 802.11 PSP interval (t802.11psp) is not fixed and instead depends on
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`“traffic characteristics.” See Ex. 1005, 8:59-61. Shellhammer teaches the AP ends
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`t802.11psp by sending the “CTS” signal once all PSP MUs have received their
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`packets, i.e., once there are no longer any pending transmission requests. See Ex.
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`1005, 8:65-9:8; Ex. 1003 ¶¶283-85. If no 802.11 PSP stations request access to the
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`frequency band during the first interval, Shellhammer teaches, and it would have
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`3 Uniloc accuses the alternating use of 802.11 PSP and Bluetooth of infringing the
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`challenged claims. See Ex. 1013 at 12-13; Ex. 1003 ¶243.
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`been obvious, for the AP to send CTS to render the band available for access by
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`Bluetooth stations. See id.
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`2.
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`All evidence of record supports the obviousness of the
`challenged claims.
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`At institution, the Board held that “Petitioner’s arguments are cogent and
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`rational, and also supported by the cited disclosure of Shellhammer and the cited
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`testimony of Dr. Roy.” ID, 44. The factual record has not changed. Uniloc has
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`offered no exhibits, declarations, or depositions related to Ground 3.4 Uniloc offers
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`a scattershot of seven arguments, but each argument is unsound and unsupported.
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`Argument 1. Uniloc argues a POSITA would not have read the “precise
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`teachings” or “details” of Shellhammer’s embodiments “given the numerous
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`different embodiments described in brief overview by Shellhammer.” POR, 45.
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`Uniloc, however, admits that those other embodiments are only “brief[ly]
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`mention[ed]” and “unrelated” to the teachings relied upon by the Petition. POR,
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`41. Nothing prohibits a patent from disclosing numerous embodiments.
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`Argument 2. Uniloc speculates there “may” be an “alternative” design with
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`pre-set intervals, offering a single sentence of attorney argument with no additional
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`explanation and no evidence that the alternative is even possible. POR, 45. The
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`4 Uniloc’s sole exhibit (Ex. 2001) relates to whether Sherman (Ground 1) is prior
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`art.
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`alleged alternative depends on an “expected” completion of message transmission,
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`which is not mentioned in Shellhammer.
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`Moreover, the challenged claims do not recite any limitations requiring
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`efficiency or performance levels. See Smith & Nephew, Inc. v. Rea, 721 F.3d 1371,
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`1381 (Fed. Cir. 2013) (“[A]n unclaimed and undisclosed feature … cannot be the
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`basis for finding [a] patent to be non-obvious over the prior art.”). It would be
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`improper under Federal Circuit precedent to require proof that Shellhammer’s
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`teachings are preferred over Uniloc’s speculative alternatives. See Novartis, 923
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`F.3d at 1059; Mouttet, 686 F.3d at 1334.5
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`Argument 3. Uniloc conjures a hypothetical scenario, asking what happens
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`if PSP MUs “continued to transmit, the entire time interval for Bluetooth
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`transmissions…” POR, 46. Uniloc offers no evidence to believe this scenario
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`warrants consideration. Indeed, Shellhammer states the opposite: when the 802.11
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`PSP traffic ends, the AP sends the global CTS signal to stop 802.11
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`communications. See Ex. 1005, 8:67-9:8 (“Once all the PSP MU’s 120, 140
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`receive their packets, the AP 20, may optionally send a global Clear to Send (CTS)
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`5 Uniloc contradicts this Federal Circuit precedent several times, including in
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`Arguments 2-4 and 6, by asking the Board to ignore Shellhammer’s teachings due
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`to speculative inefficiencies or possible alternatives. The Federal Circuit has
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`rejected these types of arguments.
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`signal 430 to shut down all the 802.11 communications for a NAV (Network
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`Allocation Vector) period.”); Ex. 1003 ¶283.
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`Obviousness does not require the prior art to be optimized for every
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`conceivable scenario; nor is it undermined by the existence of allegedly better
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`alternatives. See supra n. 5 and accompanying text. Even if hypothetical corner
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`cases exist—for which no evidence has been presented—it would not render
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`Shellhammer’s teachings inapt for obviousness purposes. See, e.g., Mouttet, 686
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`F.3d at 1334.
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`Argument 4. Uniloc argues that Shellhammer “does not require variable
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`lengths of time periods at all…” POR, 46-47 (emphasis added). But Shellhammer
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`teaches variable-length time intervals, where the AP may send a global CTS signal
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`to end the 802.11 PSP interval “[o]nce all the PSP MU's 120, 140 receive their
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`packets…” See Ex. 1005, 8:67-9:8; Ex. 1003 ¶283.
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`To the extent Uniloc criticizes these teachings for being optional and not
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`“required,” Uniloc applies the wrong legal standard. For obviousness, teachings do
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`not have to be required or inherent. Dr. Roy explained why a POSITA would have
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`found it obvious and been motivated to send the optional CTS signal as taught by
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`Shellhammer. See Ex. 1003 ¶¶283-286, n. 8. Uniloc has offered no evidence or
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`even attorney argument to rebut Dr. Roy’s testimony. It would be improper to
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`require proof that Shellhammer’s teachings are preferred to Uniloc’s hypothetical
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`alternatives.6 See supra n. 5 and accompanying text.
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`Argument 5. Uniloc argues there “there is no efficiency gained” by starting
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`Bluetooth transmissions when 802.11 PSP transmissions end. POR, 47. According
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`to Uniloc, leaving the frequency band idle—with no data being transferred and
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`100% wasted bandwidth—has the same efficiency as starting the Bluetooth
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`interval earlier, which as Dr. Roy explained, allows Bluetooth stations to transmit
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`for a longer period and transfer more data within the fixed beacon time period. See
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`Ex. 1003 ¶¶283-286. Using idle bandwidth is more efficient than wasting it. Id.
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`¶286. Uniloc does not and cannot cite