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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MARVELL SEMICONDUCTOR, INC.
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`
`Case IPR2019-01350
`U.S. Patent 7,016,676
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
`

`

`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
`
`I.
`
`Table of Contents
`
`INTRODUCTION ............................................................................................. 1
`
`II. THE '676 Patent ................................................................................................. 1
`
`III. RELATED PROCEEDINGS ............................................................................. 7
`
`IV. THE PETITION SHOULD BE DENIED UNDER THE BOARD’S
`DISCRETION ................................................................................................... 8
`
`V. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 10
`
`VI. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM ................. 11
`
`A.
`
`Claim Construction Standard .............................................................. 12
`
`1.
`
`2.
`
`3.
`
`“Stations Which Operate In Accordance With A First
`|Radio Interface Standard And/Or A Second Radio
`Interface Standard” ................................................................... 12
`
`“Renders the frequency band available for access by
`the stations working in accordance with the second
`radio interface standard if stations working in accordance
`with the first radio interface standard do not request access
`to the frequency band” .............................................................. 12
`
`“the control station also carries out functions which cause
`radio systems in accordance with the first radio interface
`standard to interpret the radio channel as interfered and to
`seize another radio channel for its own operation” .................. 15
`
`The Petition does not establish that Sherman (Ex. 1004) teaches
`“wherein the control station terminates the use of the radio
`interface in accordance with the second radio interface standard
`by transmitting in accordance with the first radio interface
`standard, without taking account of resulting interference in
`stations working in accordance with the second radio interface
`standard” as recited in Claim 6. (Ground 1) ...................................... 15
`
`The Petition does not establish that Sherman (Ex. 1004)
`teaches “wherein the control station … renders the frequency
`band available for access by the stations working in accordance
`with the second radio interface standard if stations working in
`accordance with the first radio interface standard do not request
`access to the frequency band” as recited in Claim 9. (Ground 1) ...... 20
`
`B.
`
`C.
`
`ii
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`

`

`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`The Petition does not establish that Sherman (Ex. 1004) in
`view of Trompower (Ex. 1006) renders Claim 8 obvious.
`(Ground 2) ........................................................................................... 24
`
`The Petition does not establish that Shellhammer (Ex. 1005)
`teaches “wherein the control station … renders the frequency
`band available for access by the stations working in accordance
`with the second radio interface standard if stations working in
`accordance with the first radio interface standard do not request
`access to the frequency band” as recited in Claim 9. (Ground 3) ...... 27
`
`The Petition does not establish that Shellhammer (Ex. 1005)
`teaches “[a] control station [that] controls the access to the
`common frequency band by stations working in accordance
`with the first radio interface standard and in that duration and
`type of control of the radio interface in accordance with the
`second radio interface standard is determined by a further station
`and transmitted to the control station” as recited in Claim 7.
`(Ground 3) ........................................................................................... 30
`
`The Petition does not establish that Shellhammer in view of
`Trompower renders Claim 8 obvious. (Ground 4) ............................. 34
`
`The Petition does not establish that Shellhammer (Ex. 1005) in
`view of Panasik (Ex. 1015) renders Claim 8 obvious. (Ground 5) .... 35
`
`VII. CONCLUSION ................................................................................................ 39
`
`
`
`iii
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`

`

`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107(a), Uniloc 2017 LLC (the
`
`“Patent Owner” or “Uniloc”) submits Uniloc’s Preliminary Response to the Petition
`
`for Inter Partes Review (“Pet.” or “Petition”) of United States Patent No. 7,016,676
`
`(“the '676 Patent” or “Ex. 1001”) filed by Marvell Semiconductor, Incorporated
`
`(“Petitioner”) in IPR2019-01350.
`
`In view of the reasons presented herein, the Petition should be denied in its
`
`entirety as failing to meet the threshold burden of proving there is a reasonable
`
`likelihood that at least one challenged claim is unpatentable.
`
`Uniloc addresses each ground and provides specific examples of how
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`Petitioner failed to establish that it is more likely than not that it would prevail with
`
`respect to at least one of the challenged '676 Patent claims. As a non-limiting
`
`example described in more detail below, the Petition fails the all-elements-rule in
`
`not addressing every feature of any of the challenged claims.
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`Accordingly, Uniloc respectfully requests that the Board decline institution of
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`trial on Claims 1-9 of the '676 Patent.
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`II. THE '676 Patent
`
`The ’676 patent is titled “Method, network and control station for the two-
`
`way alternate control of radio systems of different standards in the same frequency
`
`band.” The ʼ676 patent issued March 21, 2006, from U.S. Patent Application No.
`
`10/089,959 filed April 4, 2002, which was a National Stage Entry of PCT No.
`
`1
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`

`

`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
`
`PCT/EP01/09258 filed August 8, 2001 and published as W002/13457, which in turn
`
`claims priority to German Application No. DE10039532.5 filed August 8, 2000.
`
`The inventors of the ’676 patent observed that at the time of the invention, a
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`radio system for wireless transmission of information was allowed to use
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`transmission power only in accordance with standards by the national regulation
`
`authority. The national regulation authority determined on what frequencies with
`
`what transmission power and in accordance with what radio interface standard a
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`radio system is allowed to transmit. There was also provided so-called ISM
`
`frequency bands (Industrial Scientific Medical) where radio systems transmitted in
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`the same frequency band but in accordance with different radio interface standards.
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`EX1001, 1:10-23. And in the event of interference, methods were standardized for
`
`an active switching to another frequency within the permitted frequency band, for
`
`controlling transmission power and for the adaptive coding and modulation to reduce
`
`interference. However, despite operating in the same frequency band, different radio
`
`systems have different Medium Access Controls (MAC), and despite the utilization
`
`of methods such as Transmitter Power Control (TPC) and Dynamic Frequency
`
`Selection (DFS), those methods did not make optimum use of spreading radio
`
`channels over the stations which operate under different radio standards. EX1001,
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`1:24-2:10.
`
`According to the invention of the ’676 Patent, there is provided a method, a
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`wireless network and a control station which make efficient use of radio transmission
`
`channels possible by an interface control protocol method for a radio system, which
`
`2
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`

`

`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
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`system comprises at least a frequency band provided for the alternate use of a first
`
`and a second radio interface standard, the radio system comprising stations which
`
`operate in accordance with a first radio interface standard and/or a second radio
`
`interface standard, respectively, a control station being provided which controls the
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`alternate use of the frequency band. This is based on the idea of providing a
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`comprehensive standard exchange of implicit or explicit control information in
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`systems that have the same radio transmission methods but different radio
`
`transmission protocols. This makes simple and efficient use possible of a radio
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`channel via a plurality of radio interface standards. EX1001, 2:14-28.
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`A first number of stations preferably forms a wireless local area network in
`
`accordance with a first radio interface standard and a second number of stations
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`forms a wireless network in accordance with a second radio interface standard. The
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`control station is preferably a station that operates in accordance with both the first
`
`and the second radio interface standard. The control station can utilize the common
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`radio channel more effectively when the demand for transmission capability in
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`accordance with the first and second radio standard varies. The control station may
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`release the common frequency band for access by stations operating under the
`
`second radio interface if stations operating in accordance with the first radio
`
`interface standard do not request access to the frequency band. The control station
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`controls the alternate access by the first wireless network and the second wireless
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`network to the common frequency band. The control station receives requests for
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`capacity from various stations and assigns capacity accordingly. The release of the
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`3
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`

`

`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
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`common frequency band for the second radio interface standard may be effected, for
`
`example, by explicitly sending control information to the stations of the second radio
`
`interface standard. As another example, control can be effected in that the control
`
`station determines the respective duration in which the stations operating in
`
`accordance with the second radio interface standard can utilize the common
`
`frequency band. EX1001, 2:36-4:26.
`
`The '676 Patent issued with five independent claims, namely claims 1, 6, 7, 8,
`
`and 9. The text of those five independent claims are copied herein for the
`
`convenience of the Board:
`
`
`
`1. An interface-control protocol method for a radio system
`
`which has at least one common frequency band that is provided for
`
`alternate use by a first and a second radio interface standard, the radio
`
`system comprising:
`
`stations which operate in accordance with a first radio interface
`
`standard and/or a second radio interface standard, and
`
`a control station which controls the alternate use of the
`
`frequency band,
`
`wherein the control station controls the access to the common
`
`frequency band for stations working in accordance with the first radio
`
`interface standard and renders the frequency band available for access
`
`by the stations working in accordance with the second radio interface
`
`standard if stations working in accordance with the first radio
`
`interface standard do not request access to the frequency band.
`
`
`
`4
`
`

`

`
`
`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`6. An interface-control protocol method for a radio system
`
`which has at least one common frequency band that is provided for
`
`alternate use by a first and a second radio interface standard, the radio
`
`system comprising:
`
`stations which operate in accordance with a first radio interface
`
`standard and/or a second radio interface standard, and
`
`a control station which controls the alternate use of the
`
`frequency band,
`
`wherein the control station terminates the use of the radio
`
`interface in accordance with the second radio interface standard by
`
`transmitting in accordance with the first radio interface standard,
`
`without taking account of resulting interference in stations working in
`
`accordance with the second radio interface standard.
`
`
`
`7. An interface-control protocol method for a radio system
`
`which has at least one common frequency band that is provided for
`
`alternate use by a first and a second radio interface standard, the radio
`
`system comprising:
`
`stations which operate in accordance with a first radio interface
`
`standard and/or a second radio interface standard, and
`
`a control station which controls the alternate use of the
`
`frequency band,
`
`wherein the control station controls the access to the common
`
`frequency band by stations working in accordance with the first radio
`
`interface standard and in that duration and type of control of the radio
`
`5
`
`

`

`
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`interface in accordance with the second radio interface standard is
`
`determined by a further station and transmitted to the control station.
`
`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
`
`8. An interface-control protocol method for a radio system
`
`which has at least one common frequency band that is provided for
`
`alternate use by a first and a second radio interface standard, the radio
`
`system comprising:
`
`stations which operate in accordance with a first radio interface
`
`standard and/or a second radio interface standard, and
`
`a control station which controls the alternate use of the
`
`frequency band,
`
`wherein the control station, in addition to functions in
`
`accordance with the second radio interface standard, also carries out
`
`functions which cause radio systems in accordance with the second
`
`radio interface standard to interpret the radio channel as interfered and
`
`to seize another radio channel for its own operation.
`
`
`
`9. A wireless network comprising at least one common
`
`frequency band provided for alternate use by a first and a second radio
`
`interface standard, the wireless network comprising:
`
`stations which work in accordance with a first radio interface
`
`standard and/or in accordance with a second radio interface standard,
`
`and
`
`a control station which controls the alternate use of the common
`
`frequency band,
`
`6
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`

`

`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
`
`wherein the control station controls the access to the common
`
`frequency band for stations working in accordance with the first radio
`
`interface standard and renders the frequency band available for access
`
`by the stations working in accordance with the second radio interface
`
`standard if stations working in accordance with the first radio
`
`interface standard do not request access to the frequency band.
`
`
`
`III. RELATED PROCEEDINGS
`
`The following proceedings are currently pending cases concerning U.S. Pat.
`
`No. 7,016,676 (EX1001).
`
`Case Name
`
`Case Number
`
`Court
`
`Filing Date
`
`Google, LLC v. Uniloc 2017 LLC
`
`IPR2019-01541
`
`PTAB Aug. 29, 2019
`
`Ericsson Inc. et al v. Uniloc 2017
`
`IPR2019-01550
`
`PTAB Aug. 29, 2019
`
`LLC
`
`Marvell Semiconductor, Inc. v.
`
`IPR2019-01349
`
`PTAB
`
`Jul. 22, 2019
`
`Uniloc 2017 LLC
`
`Microsoft Corporation et al v.
`
`IPR2019-01116
`
`PTAB May. 29, 2019
`
`Uniloc 2017 LLC
`
`Microsoft Corporation et al v.
`
`IPR2019-01125
`
`PTAB May. 29, 2019
`
`Uniloc 2017 LLC
`
`7
`
`

`

`
`
`Uniloc 2017 LLC et al v. Google
`
`2-18-cv-00495
`
`TXED Nov. 17, 2018
`
`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`LLC
`
`Uniloc 2017 LLC v. Verizon
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`2-18-cv-00513
`
`TXED Nov. 17, 2018
`
`Communications Inc. et al
`
`Uniloc 2017 LLC v. AT&T Services,
`
`2-18-cv-00514
`
`TXED Nov. 17, 2018
`
`Inc. et al
`
`
`IV. THE PETITION SHOULD BE DENIED UNDER THE BOARD’S
`DISCRETION
`
`Petitioner’s Statement Regarding Multiple Petitions (Paper 4) does not
`
`explain any justification for filing two petitions on the same patent. As the Board
`
`explains in the July 2019 Trial Practice Guide Update:
`
`Based on the Board’s prior experience, one petition should be
`
`sufficient to challenge the claims of a patent in most situations. Two or
`
`more petitions filed against the same patent at or about the same time
`
`(e.g., before the first preliminary response by the patent owner) may
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`place a substantial and unnecessary burden on the Board and the patent
`
`owner and could raise fairness, timing, and efficiency concerns. See 35
`
`U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not
`
`necessary in the vast majority of cases. To date, a substantial majority
`
`of patents have been challenged with a single petition.
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`Trial Practice Guide Update, 26 (July 2019).
`
`8
`
`

`

`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
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`This is not a “rare” case in which “more than one petition may be necessary,
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`including, for example, when the patent owner has asserted a large number of claims
`
`in litigation.” Id. Instead, Petitioner’s only excuses for filing in two petitions what
`
`Petitioner suggests could have been filed in one (despite containing 13,975 words in
`
`one and 13,965 words in the other) are that: (1) by filing this instant Petition
`
`separately, Petitioner hopes for better chances at its motion for consolidation (see
`
`Paper 4, at 1-2), and (2) some unexplained reasons supposedly concerning the
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`priority date of the ’676 Patent and Petitioner’s choice of two sets of grounds, one
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`based on “Sherman” and the other based on “Shellhammer” (see Paper 4, at 2).
`
`However, both petitions present grounds based on both “Sherman” and
`
`“Shellhammer” (compare Petition at 4 (identification of grounds), with IPR2019-
`
`01350, Petition, Paper 2 at 4 (identification of grounds)). Thus, whether or not there
`
`is a dispute as to priority, Patent Owner has no meaningful opportunity to obviate
`
`the issues reserved for a second petition. As to the real-party-in-interest issue, there
`
`is no gamesmanship in exploring the issue where there is a basis to do so, and
`
`presumably a party would not be estopped if it were not a real party in interest.
`
`To the extent Petitioner’s excuses can be understood, the bottom line is that
`
`Petitioner chose to file its defective petitions separately, knowing it was more
`
`appropriate to file instead a single petition. See e.g., Paper 4 at 3. Indeed, Petitioner
`
`made a deliberate decision to engage in gamesmanship and burden the Board and
`
`Uniloc with this unnecessary and separate petition in the hopes that doing so would
`
`increase its chances in its separate motion for consolidation in IPR2019-01349.
`
`9
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`

`

`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
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`Paper 4, at 1-2. Although both petitions should be denied, if one is instituted,
`
`Petitioner is certainly not entitled to two under these circumstances.
`
`Patent Owner also notes Petitioner’s filing of a “Motion for Consolidation”
`
`(Paper 3). Patent Owner is unaware of authority providing for the filing of such a
`
`motion, as opposed to a joinder motion, without authorization from the Board. To
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`the extent the motion is properly before the Board, Patent Owner opposes at least on
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`the basis that it would be unfarily prejudiced by expediting the schedule in this case
`
`to match an earlier IPR filed by Microsoft (if instituted).
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`
`
`The Petition proposes a person of ordinary skill in the art (“POSITA”) at the
`
`2000-2001 timeframe would have had at least a Master’s Degree in electrical or
`
`computer engineering with a focus in communication systems or, alternatively, a
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`Bachelor’s Degree in electrical or computer engineering and at least two years of
`
`experience in wireless communication systems. (Petition, p. 11). For purposes of
`
`this Preliminary Response only, Patent Owner does not dispute Petitioner’s
`
`definition of a POSITA. Moreover, Patent Owner does not provide its own
`
`definition because, even applying the multiple and varying alternative definitions
`
`proposed by Petitioner, Petitioner has not met its burden of showing that the cited
`
`references anticipate or render obvious, any of the disputed claims of the '676 Patent.
`
`
`
`10
`
`

`

`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
`VI. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`
`Patent Owner demonstrates that Petitioner has failed to establish that it is more
`
`likely than not that it would prevail with respect to at least one of the challenged '676
`
`Patent claims. By not addressing additional arguments, Patent Owner in no way
`
`concedes that any argument by Petitioner is correct.
`
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`
`§ 42.108(c). Because the Petition only presents a theory of obviousness, Petitioner
`
`must demonstrate a reasonable likelihood that at least one of the challenged patent
`
`claims would have been obvious in view of the references cited in the Petition.
`
`Petitioner “must specify where each element of the claim is found in the prior art
`
`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). The Board
`
`should reject the Petition because Petitioner fails to meet this burden for any of the
`
`grounds.
`
`The Petition presents the following grounds of purported unpatentability:
`
`
`
`Grounds()
`
`References
`
`Challenged Claim(s)s)
`
`1. 103
`
`Sherman
`
`3, 6, 9
`
`2
`
`103
`
`Sherman in view of Trompower
`
`8
`
`3. 103
`
`Shellhammer
`
`3, 7, 9
`
`4. 103
`
`Shellhammer in view of Trompower 8
`
`5. 103
`
`Shellhammer in view of Panasik
`
`8
`
`
`
`11
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`

`

`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
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`A. Claim Construction Standard
`
`At this preliminary stage, Patent Owner submits that the Board need not
`
`construe any claim term in a particular manner in order to arrive at the conclusion
`
`that the Petition is substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642
`
`F.3d 1355, 1361 (Fed. Cir. 2011) (“need only be construed to the extent necessary
`
`to resolve the controversy”). However, some of Petitioner’s proposed constructions
`
`are addressed below. Further, in the event that trial is instituted, however, Patent
`
`Owner reserves the right to object to Petitioner’s proposed construction and provide
`
`Patent Owner’s proposed construction.
`
`1. “Stations Which Operate In Accordance With A First Radio
`Interface Standard And/Or A Second Radio Interface Standard”
`
`At this preliminary stage, Patent Owner submits that the Board need not
`
`construe this claim term in order to arrive at the conclusion that the Petition is
`
`substantively deficient. Wellman, 642 F.3d at 1361. ., 642 F.3d 1355, 1361 (Fed. Cir.
`
`2011) (“need only be construed to the extent necessary to resolve the controversy”).
`
`In the event that trial is instituted, however, Patent Owner reserves the right to object
`
`to Petitioner’s proposed construction and provide Patent Owner’s proposed
`
`construction.
`
`2. “Renders the frequency band available for access by the
`stations working in accordance with the second radio interface
`standard if stations working in accordance with the first radio
`interface standard do not request access to the frequency band”
`
`Patent Owner notes that the Petition may not challenge claims on the basis of
`
`indefiniteness under this proceeding. Therefore, Patent Owner does not address such
`
`allegations. For the remaining proposed construction(s) in this section, Patent
`
`12
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`

`

`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
`
`Owner submits that the Board need not construe this claim term in order to arrive at
`
`the conclusion that the Petition is substantively deficient. Wellman, 642 F.3d at
`
`1361. Nonetheless, to the extent Petitioner seeks to improperly import limitations
`
`from the specification, the Board should not adopt Petitioner’s proposed
`
`construction. See Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1584-85 (Fed. Cir.
`
`1996).
`
`The Patent Owner respectfully requests that the Board adopt the plain and
`
`ordinary meaning of the limitation “renders the frequency band available for access
`
`by the stations working in accordance with the second radio interface standard if
`
`stations working in accordance with the first radio interface standard do not request
`
`access to the frequency band.”
`
`The Petition proposes the claim construction “makes the frequency band
`
`available for transmissions by stations working in accordance with the second radio
`
`interface standard for periods during which the common frequency band is not being
`
`used by stations operating in accordance with the first radio interface standard that
`
`have requested access to the band.” (Petition, p. 15). The Petition bases this
`
`construction upon certain statements made in a district court complaint (Ex. 1013)
`
`filed by the Patent Owner. (Id). A relevant portion of the cited portions of the district
`
`court complaint are re-produced here in pertinent part:
`
`“The Marvell Avastar radio employs a coexistence strategy that makes the
`
`shared 2.4 GHz frequency band available to Wi- Fi stations communicating with
`
`13
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`

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`IPR2019-01350
`U.S. Patent No. 7,016,676
`
`
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`Microsoft Surface only when Bluetooth stations are not requesting access to the
`
`frequency band. For example, the control station provides access to the frequency
`
`band during times that the Bluetooth stations are not requesting access.” [Ex. 1013,
`
`pp. 12-13]
`
`In formulating this statement, the Patent Owner merely provided an
`
`exemplary description of how the Marvell Avastar radio may function, and does not
`
`qualify or otherwise redirect the meaning and intent of the plain and ordinary
`
`meaning of the limitation “renders the frequency band available for access by the
`
`stations working in accordance with the second radio interface standard if stations
`
`working in accordance with the first radio interface standard do not request access
`
`to the frequency band.” For example, the district court complaint states, in
`
`exemplary form, that the control station provides access to the frequency band
`
`during times that the Bluetooth stations are not requesting access. The Petition
`
`embellishes on this statement to construe that certain periods may exist in which the
`
`common frequency band is not being used in spite of the fact that those Bluetooth
`
`stations may be actively requesting access. Thus, the Petition is improperly
`
`attempting to impart limitations into the aforementioned construction that it was
`
`never meant or intended to include.
`
`In proposing the new construction, the Petition points to paragraph 96 of Ex.
`
`1003 in which the Declarant alleges, among other things, infringement by, e.g.,
`
`rendering a single channel available for access. (Ex. 1003, paragraph 96).
`
`Nevertheless, the Patent Owner respectfully submits that the Declarant is reading
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`U.S. Patent No. 7,016,676
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`legal terminology into the afore-cited claim limitation, which is not permissible
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`under the current statute. (37 C.F.R. §41.158(a)).
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`Given the facts stated above, the proposed claim construction should be
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`rejected, and the plain and ordinary meaning of the present limitation be used.
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`3. “the control station also carries out functions which cause
`radio systems in accordance with the first radio interface standard to
`interpret the radio channel as interfered and to seize another radio
`channel for its own operation”
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`Patent Owner notes that the Petition may not challenge claims on the basis of
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`indefiniteness under this proceeding. Therefore, Patent Owner does not address such
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`allegations. For the remaining proposed construction(s) in this section, Patent
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`Owner submits that the Board need not construe this claim term in order to arrive at
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`the conclusion that the Petition is substantively deficient. Wellman, 642 F.3d at
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`1361. And at this preliminary stage, Patent Owner disagrees that any phrase is
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`written in “means plus function format”.
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`The Petition does not establish that Sherman (Ex. 1004) teaches
`“wherein the control station terminates the use of the radio
`interface in accordance with the second radio interface standard
`by transmitting in accordance with the first radio interface
`standard, without taking account of resulting interference in
`stations working in accordance with the second radio interface
`standard” as recited in Claim 6. (Ground 1)
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`B.
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`
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`The Petition fails to establish prima facie obviousness of at least the following
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`recitation: “wherein the control station terminates the use of the radio interface in
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`accordance with the second radio interface standard by transmitting in accordance
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`with the first radio interface standard, without taking account of resulting
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`interference in stations working in accordance with the second radio interface
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`standard” as recited in Independent Claim 6.
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`The Petition asserts that Sherman teaches the Claim 6 recitation of “wherein
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`the control station terminates the use of the radio interface in accordance with the
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`second radio interface standard by transmitting in accordance with the first radio
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`interface standard, without taking account of resulting interference in stations
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`working in accordance with the second radio interface standard.” (Petition, pp. 34-
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`37). However, as is clear from Sherman, there is no disclosure that teaches or
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`remotely suggests a control station that transmits in accordance with the first radio
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`interface standard, without taking account of resulting interference in stations
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`working in accordance with the second radio interface standard.
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`In formulating this assertion, the Petition further asserts that column 4, lines
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`55-64 of the '676 Patent describes this recitation of Claim 6. (Petition, p. 35). Patent
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`Owner respectfully submits that this assertion is incorrect. The asserted portion of
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`the '676 Patent is re-produced herein below for further discussion:
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`“Transmission in FIGS. 1 and 2 with respect to the associated standards is
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`understood to mean that a HiperLAN/2 AP in a partially unused downlink, uplink
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`and direct-mode phase could dispense with sending useless (dummy) information
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`and giving 802.11-systems no opportunity to observe an unused channel for a period
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`of time SIFS and starting the run as shown in FIG. 2. The AP could readily regain
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`the control in which the transmission in accordance with the HiperLan/2 standard
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`does not suppress the broadcast phase, but transmission takes place.” ['676 Patent,
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`column 4, lines 55-64]
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`As shown, the cited portion of the '676 Patent describes one particular
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`embodiment where sending useless (dummy) information can be alleviated by the
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`access point (AP) regaining control. The description immediately following the
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`cited portion of the '676 Patent describes how the AP regains this control:
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`“Likewise, the function PCF of the 802.11 standard could be used to
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`occasionally render the radio channel available to HiperLAN/2 systems with a time
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`limit (periodically).”
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`['676
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`Patent,
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`column
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`4,
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`lines
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`64-67]
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`Thus, as shown, the '676 Patent describes that the point coordination function (PCF)
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`feature of the 802.11 Standard can be used to render the render the radio channel
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`available to HiperLAN/2 systems such that sending useless (dummy) could be
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`dispensed with. Nevertheless, the previous described feature of the '676 Patent
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`comprises only one of among multiple embodiments taught by the '676 Patent, and
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`that previously described feature is not the embodiment claimed in independent
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`Claim 6.
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`Column 4, lines 3-26 of the '676 Patent describe several different
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`embodiments that may be used for two-way alternate control of radio systems of
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`different standards in the same frequency band. The cited portion of the '676 Patent
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`is re-produced herein below:
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`“The efficient common use of a radio channel by different radio systems may
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`be achieved via a suitable control protocol method. Such a radio interface control
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`protocol method enables a first station of a radio system working in accordance with
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`the first radio interface standard to control the access times to the radio channel by
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`other stations. For this purpose this first station then has to carry out functions
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`described in another, second radio interface standard in addition to the functions laid
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`down by its own first radio interface standard at times at which stations working in
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`accordance with the first radio interface standard do not send and do not expect
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`information in accordance with the standard from the first station, while the first
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`station or a further station determines the duration for which the first station is
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`allowed to transmit in