IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
`
`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`––––––––––
`
`IPR2019-01350
`
`U.S. Patent No. 7,016,676
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`––––––––––
`
`PETITION FOR INTER PARTES REVIEW
`
`OF U.S. PATENT NO. 7,016,676
`
`

`

`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
`
`
`TABLE OF CONTENTS
`
`
`
`
`
`Background ...................................................................................................... 1
`
`’676 Patent ....................................................................................................... 3
`
`
`
`Identification of Challenge .............................................................................. 4
`
`
`
`
`
`Statutory Grounds.................................................................................. 4
`
`Relied-Upon Prior Art ........................................................................... 4
`
`
`
`
`
`
`
`
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`US Patent 7,031,274 (“Sherman”) .............................................. 4
`
`US Patent 7,039,358 (“Shellhammer”) ....................................... 6
`
`US Patent 6,215,982 (“Trompower”) ......................................... 8
`
`US Patent 6,643,278 (“Panasik”) ................................................ 8
`
`
`
`Standing ................................................................................................. 9
`
` Discretionary Analysis for Review ....................................................... 9
`
`
`
`Priority ................................................................................................. 10
`
` Level of Ordinary Skill .................................................................................. 11
`
`
`
`Claim Construction ........................................................................................ 13
`
`
`
`
`
`
`
`“stations which operate in accordance with a first radio
`interface standard and/or a second radio interface standard” ............. 13
`
`“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” ................................................... 15
`
` Challenged Claims ......................................................................................... 18
`
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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` Ground 1: Sherman Obviousness ........................................................ 18
`
`
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`
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`KSR Factors ............................................................................... 18
`
`Independent Claim 1 ................................................................. 20
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`Dependent Claim 3.................................................................... 32
`
`Independent Claim 6 ................................................................. 34
`
`Independent Claim 9 ................................................................. 37
`
`
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`Ground 2: Obviousness Based on Sherman in View of
`Trompower .......................................................................................... 38
`
`
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`KSR Factors ............................................................................... 38
`
` Motivation to Combine ............................................................. 39
`
`
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`Independent Claim 8 ................................................................. 42
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`
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`Ground 3: Obviousness Based on Shellhammer ................................. 46
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`KSR Factors ............................................................................... 46
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`Independent Claim 1 ................................................................. 47
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`Dependent Claim 3.................................................................... 60
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`Independent Claim 7 ................................................................. 61
`
`Independent Claim 9 ................................................................. 63
`
` Ground 4: Obviousness Based on Shellhammer in View of
`Trompower .......................................................................................... 64
`
`
`
`KSR Factors ............................................................................... 64
`
` Motivation to Combine ............................................................. 65
`
`
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`Independent Claim 8 ................................................................. 68
`
`
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`Ground 5: Obviousness based on Shellhammer in view of
`Panasik ................................................................................................. 70
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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` Motivation to Combine and KSR Factors................................. 70
`
`
`
`Independent Claim 8 ................................................................. 72
`
` Conclusion ..................................................................................................... 75
`
` Mandatory Notices and Fees ......................................................................... 76
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`-iii-
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`Exhibit No. Description
`
`EXHIBIT LIST
`
`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
`
`
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`1008
`
`1009
`
`1010
`1011
`
`1012
`1013
`
`1014
`
`1015
`1016
`
`U.S. Patent No. 7,016,676 to Walke et al. (“the ’676 patent”)
`Prosecution File History for the ’676 patent
`Declaration of Dr. Sumit Roy
`U.S. Patent No. 7,031,274 (“Sherman”)
`U.S. Patent No. 7,039,358 B1 (“Shellhammer”)
`U.S. Patent No. 6,215,982 (“Trompower”)
`Y. Akaiwat et al., “An integrated voice and data radio access
`system”, 1992 Proceeding Vehicular Technology Society 42nd
`VTS Conference – Frontiers of Technology, May 10-13, 1992.
`(Including authenticating declaration from IEEE) (“Akaiwa”)
`US Provisional Application No. 60/175,262 (“Shellhammer ’262
`provisional”)
`US Provisional Application No. 60/196,979 (“Shellhammer ’979
`provisional”)
`U.S. Patent No. 6,377,608 (“Zyren”)
`US Provisional Application No. 60/261,935 (“Sherman
`provisional”)
`Declaration of Dr. Sylvia Hall-Ellis
`Uniloc 2017 LLC v. Microsoft Corporation Complaint for Patent
`Infringement, No. 8:18-cv-02053, Dkt. 1
`G. Bark, “Power control and active channel selection in an LPI
`FH system for HF communications”, Proceedings of MILCOM
`97, November 3-5, 1997 (Including authenticating declaration
`from IEEE) (“Bark”)
`U.S. Patent No. 6,643,278 (“Panasik”)
`Uniloc Infringement Contentions (from IPR2019-01125, Exhibit
`1003)
`
`
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`-iv-
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`Wireless radio systems proliferated in the 1990s, leading to several standards
`
`such as IEEE 802.11 (“Wi-Fi”), Bluetooth, and HIPERLAN/2 that operated in the
`
`same frequency bands. Coexistence techniques were developed in the prior art to
`
`allow popular standards to share the same frequency bands.
`
`For example, Sherman taught a Hybrid AP that alternated between IEEE
`
`802.11a and HIPERLAN/2 on a common channel, using the 802.11a point
`
`coordination function (“PCF”) for reserving time for HIPERLAN/2 and then
`
`relinquishing the channel for 802.11a. Another reference Shellhammer taught
`
`802.11 and Bluetooth coexistence by alternating between the two standards.
`
`The ’676 patent purports to invent a coexistence technique for 802.11a and
`
`HIPERLAN/2, where a control station such as an “Access Point AP” controls the
`
`alternate use of a common frequency band, using the 802.11a PCF to reserve time
`
`for HIPERLAN/2 stations, and if they do not request access, rendering the band
`
`available for 802.11a. In district court, Patent Owner (“PO”) accused 802.11 and
`
`Bluetooth coexistence techniques.
`
`
`
`BACKGROUND
`
`By the late 1990s, the unlicensed 5 GHz and 2.4 GHz ISM band had become
`
`overcrowded with many standards. See Ex. 1010, 1:21-50. The prior art
`
`recognized “it is essential that the various radio systems utilizing the ISM band be
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`capable of at least some degree of coexistence.” Id. The ’676 patent admits this
`
`was known in the art. See Ex. 1005, 1:13-20; Ex. 1003 ¶72.
`
`Coexistence solutions often used Access Points (“AP”). In many wireless
`
`systems, APs—also referred to as base stations—coordinated traffic flow, and thus
`
`it was natural for APs to coordinate traffic between different standards. Ex. 1003
`
`¶74. A straightforward approach allowed devices of one protocol to access the
`
`medium first, and if they did not, allowed another protocol to do so. Id. ¶75. This
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`was a basic networking concept exemplified in early works, such as Akaiwa,
`
`which added data terminals into an existing system for wireless voice
`
`communications. Id.; Ex. 1007 at 0007, Figure 1:
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`Akaiwa gave voice terminals priority by allowing them to transmit normally,
`
`and when they did not request access, the base station released the channel for data
`
`transmissions. See Ex. 1007 at 0006-0007 (“The base station controls the
`
`transmission of data signal by sending a busy signal or an idle signal in a down-
`
`link control channel. When the base station detects the pause period of the voice
`
`signal being transmitted on a channel, it broadcasts the idle signal to permit data
`
`signal transmission on that channel.”); Ex. 1003 ¶76.
`
`
`
`’676 PATENT
`
`According to the ’676 patent, it was known that different radio interface
`
`standards operated on the same ISM bands, “[a]n example of this is the US radio
`
`system IEEE802.11a and the European ETSI BRAN HiperLAN/2.” See Ex. 1001,
`
`1:15-23. The ’676 patent purports to address potential interference with a “control
`
`station,” which may be an “Access Point AP”, and “which controls the alternate
`
`use of the frequency band.” See Ex. 1001, 2:67-3:1-3, 2:21-22. The control station
`
`“releas[es] the common frequency band for access by stations operating in
`
`accordance with the second radio interface standard, if stations operating in
`
`accordance with the first radio interface standard do not request access to the
`
`frequency band.” Ex. 1001, 3:7-15.
`
`However, this problem and purported solution were already known in the
`
`art. The ’676 patent provides minimal details regarding its alleged invention; in its
`
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`specification, which is less than 6 columns, the first describes the prior art, the next
`
`two-and-a-half columns mostly parrot claim language, and only the last two
`
`columns (from 4:50-6:17) describe how the alleged invention is supposed to work.
`
`Ex. 1003 ¶81.
`
`
`
`IDENTIFICATION OF CHALLENGE
`
`
`
`Statutory Grounds
`
`Petitioner requests inter partes review and cancelation of the challenged
`
`claims on the following grounds:
`
`Ground Claims Statutory Basis
`
`References
`
`1
`
`2
`
`3
`
`4
`
`5
`
`
`
`3, 6, 9 §103 Obviousness Sherman
`
`8
`
`§103 Obviousness Sherman in view of Trompower
`
`3, 7, 9 §103 Obviousness Shellhammer
`
`8
`
`8
`
`§103 Obviousness Shellhammer in view of Trompower
`
`§103 Obviousness Shellhammer in view of Panasik
`
` Relied-Upon Prior Art1
`
`None of these references were cited or considered during prosecution.
`
`
`
`US Patent 7,031,274 (“Sherman”)
`
`Sherman was “concerned with wireless local area networks (WLAN) and
`
`with allowing operability between two standards and in particular to
`
`interoperability between 802.11a standards and HIPERLAN standards.” Ex. 1004,
`
`
`1 Pre-AIA 35 U.S.C. §102 applies to the ’676 Patent. MPEP §2159.02.
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`-4-
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`1:11-16, 1:23-49, 1:50-55; Ex. 1003 ¶¶115-117. Sherman teaches a “hybrid AP”
`
`that supports both standards and alternates access to the channel between
`
`HIPERLAN/2 and IEEE 802.11a during a “super-frame.” See Ex. 1004, 2:11-19,
`
`3:3-14; Ex. 1003 ¶¶118-119. Thus Sherman “prevent[s] 802.11 terminals from
`
`transmitting during time periods allocated to HIPERLAN, so that a single channel
`
`can be shared between the two standards.” See id. HIPERLAN transmissions are
`
`protected during the 802.11a “Contention Free Period (CFP)”, which can span
`
`nearly the whole super frame; when there are no more pending HIPERLAN/2
`
`frames, the AP sends a “CF_End” frame to “relinquish” time for 802.11a CP
`
`access. See Ex. 1004, 2:11-19, 6:1-8, Figure 5:
`
`Sherman is an AT&T patent filed January 1, 2002, citing a provisional filed
`
`January 16, 2001 and issuing April 2006. Sherman’s provisional supports the
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`-5-
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`disclosures relied on in this Petition, including the “Hybrid AP” addressing the
`
`same problem and WLAN architecture as the issued patent, namely the
`
`interoperation of 802.11a and HIPERLAN/2 WLANs in bands “between 5 and 6
`
`GHz.” See Ex. 1011 at 0002-0003, 7; Ex. 1003 ¶120. It discloses the same super
`
`frame mechanism including Figure 5, including the timing and transitions of
`
`802.11 and HIPERLAN/2 phases, with HIPERLAN/2 frames transmitted during
`
`the CFP; “[a]fter HIPERLAN/2 frames, CF_End frame ends formal CFP for
`
`802.11 terminals,” and “Normal 802.11 Contention Period follows CF End under
`
`Distributed Coordination Function (DCF)”. See Ex. 1011 at 0002-0003, 0012-
`
`0014; compare Ex. 1011 at 0003 (discussing CF_End) with Ex. 1004, 6:1-8; Ex.
`
`1003 ¶¶120-121. The provisional further discloses the beacon jitter, blocking,
`
`polling, and spoofing techniques in the issued patent. See Ex. 1011 at 0015-0016;
`
`Ex. 1003 ¶121. Therefore, Sherman is prior art under at least §102(e). Ex. 1003
`
`¶114.
`
`
`
`US Patent 7,039,358 (“Shellhammer”)
`
`Shellhammer addressed “a recognized need in the art to coordinate the
`
`transmissions of devices operating under different protocols that use the same
`
`frequency band.” See, e.g., Ex. 1005, 2:28-31; Ex. 1003 ¶122. Accordingly,
`
`Shellhammer taught “[t]echniques [] for frequency coordination among two
`
`different wireless network protocols, such as the IEEE 802.11 and Bluetooth
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`protocols, operating in proximity with one another.” See Ex. 1005, Abstract.
`
`“Coordination is accomplished … using a frequency band (which may be the 2.4
`
`GHz band)” and, among other things, “a base station connected to a wired network
`
`….” See id.
`
`Shellhammer teaches a technique for dividing “[e]very 802.11 beacon time
`
`period” into separate intervals for 802.11 (t802.11psp) and Bluetooth (tnav). See Ex.
`
`1005, 8:52-60. After the 802.11 PSP stations transmit and receive their packets,
`
`the access point (“AP”) sends a “global Clear to Send (CTS) signal” that shuts
`
`down 802.11 communications and opens the frequency band for Bluetooth
`
`transmissions. See Ex. 1005, 8:61-9:10, Figure 3:
`
`Shellhammer was filed November 16, 2000, citing provisional applications
`
`filed January 10, 2000 and April 13, 2000 (60/196,979) and issuing May 2, 2006.
`
`The ’979 provisional supports the disclosures relied on in this Petition, including
`
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`-7-
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`Figures 1 and 3, their accompanying specification discussion, the signaling/timing
`
`descriptions for Figure 3, and the embodiment with no t802.11cam interval. Compare
`
`Ex. 1005, 5:65-6:44, 8:52-9:23, Figs. 1, 3 with Ex. 1009, 0007:14-0008:18,
`
`0009:20-0010:21, Figs. 1, 2; Ex. 1003 ¶122. The few edits in those sections are
`
`minor and do not add any substance relied on here. See id. This Petition does not
`
`rely on Figures 4-8, and while the Summary of the Invention is longer in the issued
`
`patent, the relied-upon portions pertain to the embodiments of Figure 3, which was
`
`disclosed. Ex. 1003 ¶122. Therefore, Shellhammer is prior art under at least
`
`§102(e). Id.
`
`
`
`US Patent 6,215,982 (“Trompower”)
`
`Trompower was filed June 28, 1996 and issued to Cisco April 10, 2001; it is
`
`prior art under at least pre-AIA §102(a) and (e). Ex. 1003 ¶124. Trompower
`
`teaches techniques for detecting interference and changing channels to avoid
`
`interference. Id. ¶¶124-126.
`
`
`
`US Patent 6,643,278 (“Panasik”)
`
`Panasik was filed December 28, 1999 and issued to TI November 4, 2003; it
`
`is prior art under at least pre-AIA §102(e). Ex. 1003 ¶126. Panasik teaches
`
`adaptive frequency hopping (“AFH”) for 802.11 and Bluetooth, which detects
`
`fixed interference in a channel and hops to a different channel instead. Id.; Ex.
`
`1015, 11:21-31. PO accused AFH of infringement. See Ex. 1016 at 0026-0027.
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`-8-
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`
`
`
`Standing
`
`Petitioner certifies it is not barred or estopped from requesting this inter
`
`partes review, and the ’676 patent is eligible for it.
`
` Discretionary Analysis for Review
`
`On May 29, 2019, Microsoft filed two petitions challenging claims 1, 2, and
`
`5 of the ’676 patent. IPR2019-01116, Paper 2 (“MSPetition1”); IPR2019-01125,
`
`Paper 2 (“MSPetition2”). No Preliminary Patent Owner Response has been filed
`
`in either proceeding, nor has any Institution Decision issued. The challenged
`
`claims in this petition do not overlap with Microsoft’s petitions.
`
`Microsoft’s petitions state their uncertainty as to what an RPI is under
`
`applicable law and name Marvell an RPI “out of an abundance of caution.”
`
`MSPetition1, MSPetition2 at “x.” Marvell is not an RPI or privy of the Microsoft
`
`petitions—Marvell had no involvement or control, provided no funding, and had
`
`no knowledge of the Microsoft IPRs until after they were filed, when they
`
`appeared in public dockets.
`
`For this Petition, the only RPI is Marvell. No other party had knowledge of
`
`this IPR prior to filing. Marvell has an independent interest in invalidating the
`
`’676 patent.
`
`No Microsoft or Marvell petitions are barred under §315(b). The art in
`
`Marvell’s and Microsoft’s petitions does not overlap. Microsoft relied on
`
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`-9-
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
`
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`HomeRF and Lansford, while Marvell relies on Sherman, Shellhammer,
`
`Trompower, and Panasik. Thus, institution would be just, speedy, and efficient.
`
`As outlined in a separate motion, Petitioner Marvell requests that its
`
`proceedings be consolidated with Microsoft’s in terms of schedule alignment. This
`
`will moot any potential argument of prejudice or unfairness by PO.
`
`
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`Priority
`
`The ’676 patent stems from a patent application that references PCT09258,
`
`filed August 8, 2001. PO has not claimed and is not entitled to a priority date
`
`earlier than August 8, 2001.
`
`The issued patent does not reference any earlier priority on its face. While
`
`the PCT cites an earlier German application, the DO/EO Worksheet did not
`
`reference any German application or priority document. See Ex. 1002 at 0049-
`
`0050. No German application (nor any translation) appears in the file history, and
`
`the Examiner marked in the Notice of Allowance that no certified foreign
`
`documents had been received and the conditions of 35 U.S.C. § 119 had not been
`
`met. Ex. 1002 at 0152, 0155:
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`-10-
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`No request was ever made to modify the Examiner’s determination of non-
`
`
`
`compliance by applicant.
`
` LEVEL OF ORDINARY SKILL
`
`A person of ordinary skill in the art (“POSITA”) as of the 2000-2001
`
`timeframe 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, and would have had an
`
`understanding of work within the field of wireless networks and related standards,
`
`including, e.g., systems or protocols for shared access of wireless networks by
`
`different protocols. See Ex. 1003 ¶¶62-63. A person with less education but more
`
`relevant practical experience may also meet this standard. See id.
`
`Given level of skill, a POSITA would have been knowledgeable regarding
`
`the following:
`
`• IEEE 802.11, HIPERLAN, and Bluetooth standards, including that the
`
`802.11a and HIPERLAN/2 standards operated
`
`in
`
`the same
`
`frequencies. See Ex. 1001, 1:20-23; Ex. 1003 ¶¶64-66. Various prior
`
`art references confirm the 802.11 and Bluetooth standards were
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`known in the art. See Ex. 1005, 1:24-25, 1:64-67. PO and the ’676
`
`patent admit 802.11 is prior art. See Ex. 1013, ¶14; Ex. 1001, 1:28-
`
`2:5.
`
`• APs in the IEEE 802.11 and HIPERLAN/2 standards; the ’676 patent
`
`admits APs were known in the art. See Ex. 1001, 1:32-42; Ex. 1003
`
`¶65.
`
`• Wireless coexistence issues, including potential interference between
`
`different standards. See Ex. 1005, cols. 1-2; Ex. 1003 ¶67. The ’676
`
`patent admits it was known that “radio systems transmit in the same
`
`frequency band
`
`in accordance with different radio
`
`interface
`
`standards”, giving the “ISM frequency bands (Industrial Scientific
`
`Medical)” as an example. See Ex. 1001, 1:15-18.
`
`• Common techniques for mitigating interference, including changing
`
`channels. See Ex. 1006, 1:42-2:15, 2:42-56. The ’676 patent admits
`
`this was known. See Ex. 1001, 1:24-28; Ex. 1003 ¶68.
`
`The ’676 patent is relatively short and relies upon a POSITA’s knowledge of
`
`the IEEE 802.11a and HIPERLAN/2 standards, interoperability, and channel-
`
`selection techniques, to understand the purported invention. Ex. 1003 ¶70.
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`-12-
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
`
`
` CLAIM CONSTRUCTION
`
`For all grounds, the challenged claims are obvious under the plain and
`
`ordinary (“P&O”) meaning and all proposed constructions. Ex. 1003 ¶¶127, 190,
`
`241, 310, 333. Below, Petitioner first addresses the P&O meaning and then any
`
`relevant claim construction positions.
`
`Petitioner’s claim construction analysis is not a concession on the proper
`
`scope of any claim term in any litigation. Nor is it a concession or waiver of any
`
`argument in any litigation that the claim terms are indefinite or lack corresponding
`
`structure under §112. While there may be issues that prevent a POSITA from
`
`determining the scope of the claims with reasonable certainty, the prior art and
`
`grounds here fall squarely within the scope and nowhere near the boundaries of the
`
`challenged claims. Therefore, for the purposes of determining invalidity under the
`
`present grounds, it is not necessary to conduct a determination on indefiniteness or
`
`determine whether ’676 patent informs a POSITA with reasonable certainty of the
`
`scope and boundaries of its claims.
`
`
`
`“stations which operate in accordance with a first radio interface
`standard and/or a second radio interface standard”
`
`No construction is necessary to decide the grounds in this Petition.
`
`Petitioner proposes P&O meaning for this limitation, which is “stations, each of
`
`which operates in accordance with a first radio interface standard, a second
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`-13-
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`radio interface standard, or both.” Ex. 1003 ¶88. The ’676 patent states that
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`stations may operate in accordance with the first standard, second standard, or
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`both. Ex. 1001, 2:29-35.
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`Microsoft proposed additional construction to address the language “operate
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`in accordance with”: “two or more devices in a wireless network, each of which
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`operates in a manner that is in agreement with or conforms to a first radio
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`standard, a second radio standard, or both a first and a second radio
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`standard, or variants thereof.” See MSPetition1 at 22; Ex. 1003 ¶¶89-90.
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`Construction of this element is not necessary to determine invalidity under the
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`grounds of this Petition, but it is satisfied by the prior art nonetheless.
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`“renders the frequency band available for access by the stations
`working in accordance with the second radio interface standard if
`stations working in accordance with the first radio interface
`standard do not request access to the frequency band”
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`The grounds in this Petition invalidate the challenged claims under P&O
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`meaning, and claim construction is not necessary. Ex. 1003 ¶¶92-94. Microsoft
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`questioned whether the “if” step needs to be performed depending on whether this
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`is a system or method claim. Here, the prior art teaches systems as claimed
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`performing all limitations of the method, including the “if” step, rendering the
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`issue moot for this Petition. See id.
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`The grounds also satisfy all proposed constructions.
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`Microsoft’s Construction: “makes the frequency band available for
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`transmissions by stations working in accordance with the second radio interface
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`standard for periods during which the common frequency band is not being used
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`by stations operating in accordance with the first radio interface standard that have
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`requested access to the band.” MSPetition1 at 25.
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`PO’s Apparent Construction. In its district court complaint, PO asserted
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`that the claimed “frequency band” limitations are met by operations on a single
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`channel within a frequency band. See, e.g., Ex. 1013 at 11-14 (alleging
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`infringement by, e.g., rendering a single channel available for access); Ex. 1003
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`¶96.
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`“the control station 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” (Claim 8)
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`The grounds in this Petition satisfy all proposed constructions. Ex. 1003
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`¶110. This limitation is drafted in means-plus-function form, with the function
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`being everything after the word “functions.” Petitioner reserves the right to argue
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`in district court that this limitation lacks sufficient corresponding structure under
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`§112; however, that determination is not necessary here because these grounds
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`disclose the only possible structure in the specification. Ex. 1003 ¶¶97-98.
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`At one point, the specification parrots the claim language, stating “the first
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`radio station” may perform this function. Ex. 1001, 3:63-4:2; Ex. 1003 ¶104. A
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`POSITA would have understood this to include the “control station.” Compare
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`Ex. 1001, 3:30, 3:46; Ex. 1003 ¶104. The passage also uses “occupy” instead of
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`“seize,” implying systems may “seize” a channel by “occupying” it. See Ex. 1001,
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`3:63-4:2; Ex. 1003 ¶105.
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`The specification does disclose any additional details or structure explaining
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`how “the first radio station” or “control station” perform this function. Ex. 1003
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`¶106. The only possible disclosures that may be related to corresponding structure
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`would be the “control station” or “first radio station”. Ex. 1003 ¶¶103-106.
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`To the extent the ’676 patent discloses corresponding structure, a POSITA
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`would have read this limitation as at least encompassing “a control station or first
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`radio station causing radio stations in accordance with the second radio
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`interface standard, including potentially the first radio/control station itself, to
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`interpret the radio channel as interfered and to seize another radio channel for
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`its own operation.” See Ex. 1003 ¶108.
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`This limitation recites “radio systems in accordance with the first radio
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`interface standard” (emphasis added), but claim 1 recites “stations which operate
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`in accordance with a first radio interface standard” (emphasis added). See Ex.
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`1003 ¶99. Claim 1 also recites “a radio system,” but not “in accordance with the
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`first radio interface standard.” While the precise contours are unclear, for purposes
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`of this IPR, the limitation would at least include “two or more stations which
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`operate in accordance with a first radio interface standard.” See id. ¶100.
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`“The radio channel.” This element lacks antecedent basis. For purposes of
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`this IPR, Petitioner assumes “the radio channel” in this context at least includes “a
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`radio channel within the common frequency band.”
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`“… to seize another radio channel for its own operation.” While it is
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`ambiguous whether “its” refers to the “control station” or “radio systems,” the
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`prior art in this Petition causes both to seize another radio channel. Therefore the
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`distinction does not matter here, and for this IPR, the Petition assumes both can
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`satisfy the limitation.
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`Microsoft’s Construction: as applied to claim 8, “at least encompassing a
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`control station causing either: a) ‘second radio frequency standard’
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`systems/stations, or b) the control station itself, to respond to interpreted
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`interference on a first channel by switching to a second channel.” See MSPetition2
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`at 29.
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
`
`
` CHALLENGED CLAIMS
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` Ground 1: Sherman Obviousness
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`
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`KSR Factors
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`The ’676 patent points to the same problem as Sherman and purports to
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`invent the same solution. Ex. 1003 ¶128. Sherman explains that “HIPERLAN/2”
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`and “IEEE 802.11a” utilized the same frequency, but “the two standards are
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`currently incompatible—Particularly at the Media Access Control (MAC) layer.”
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`Ex. 1004, 1:36-47; Ex. 1003 ¶128.
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`Similarly, the ’676 patent explains that “the US radio system IEEE802.11a
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`and the European ETSI BRAN HiperLAN/2” both “transmit in the same frequency
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`bands between 5.5 GHz and 5.875 GHz …” but “[t]he Medium Access Control
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`(MAC) of the two systems is totally different.” Ex. 1001, 1:15-23, 1:34-35; Ex.
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`1003 ¶129.
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`To solve this MAC-layer incompatibility, Sherman teaches a “hybrid AP”
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`that “prevent[s] 802.11 terminals from transmitting during time periods allocated
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`to HIPERLAN, so that a single channel can be shared between the two standards.”
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`See Ex. 1004, 2:11-19, 3:3-14; Ex. 1003 ¶130. Sherman teaches, e.g., using the
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`802.11a point coordination function (“PCF”) to reserve time for HIPERLAN/2
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
`
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`during the 802.11 CFP.2 See Ex. 1004, 5:37-57; Ex. 1003 ¶130. The hybrid AP
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`ends the CFP by sending a CF_End frame, “relinquish[ing] the time to the CP”
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`during which 802.11a stations may access the channel. See Ex. 1004, 6:1-8.
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`Similarly, the ’676 patent discloses a “central control station (Access Point)”
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`that controls alternate access between “HiperLAN/2 and IEEE802.11a standards.”
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`See Ex. 1001, 5:35-41, 5:53-56. Like Sherman, which used the 802.11a PCF to
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`reserve time for HiperLAN, the ’676 patent discloses that “the function PCF of the
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`802.11 standard could be used to occasionally render the radio channel available to
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`HiperLAN/2 systems with a time limit (periodically).” See Ex. 1001, 4:64-67; Ex.
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`1003 ¶131.
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`The challenged claims amount to nothing more than the use of known
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`elements (e.g., a hybrid AP controlling the alternate use of a common frequency
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`band) according to known methods (e.g., letting stations from one standard go first,
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`such as by reserving time with the IEEE 802.11a PCF, and if they do not request
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`access, opening the medium to stations of the other standard) to yield predictable
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`2 As was widely known, the IEEE 802.11 standard included a “contention period”
`(“CP”) and a “contention free period” (“CFP”). During the contention period, any
`station may contend for the right to transmit, using a backoff protocol set forth in
`the IEEE 802.11 standard. During the contention-free period, the access point
`schedules transmission, and stations may transmit during their allocated time
`without having to contend for the channel. Ex. 1003 n. 4.
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`IPR2019-01350, Petition
`U.S. Patent No. 7,016,676
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`results (e.g., wireless coexistence between two standards sharing a common
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`frequency band). Ex. 1003 ¶133.
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`Sherman’s teachings applied known 802.11 and HIPERLAN/2 mechanisms
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`and would have been well within the level of ordinary skill to implement for APs
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`a