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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
`
`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`
`––––––––––
`
`
`IPR2019-01350
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`U.S. Patent No. 7,016,676
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`––––––––––
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`
`
`DECLARATION OF SUMIT ROY
`
`REGARDING CLAIMS 3, 6-9
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`I.
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`
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`TABLE OF CONTENTS
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`Background and Qualifications ....................................................................... 5
`
`A.
`
`Compensation ........................................................................................ 9
`
`B. Materials and Other Information Considered ....................................... 9
`
`II.
`
`Understanding of the Law ............................................................................... 9
`
`A.
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`Legal Standard for Prior Art ................................................................ 10
`
`1.
`
`Anticipation and Prior Art ........................................................ 10
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`Obviousness ......................................................................................... 12
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`Legal Standard for Claim Construction .............................................. 18
`
`B.
`
`C.
`
`III. Level of Ordinary Skill in the Art ................................................................. 22
`
`IV. Overview of the Technology ......................................................................... 27
`
`A. Many Standards Used the ISM Bands ................................................ 27
`
`B.
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`Alternating Access .............................................................................. 28
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`V.
`
`The ’676 Patent .............................................................................................. 30
`
`A. Overview ............................................................................................. 30
`
`B.
`
`C.
`
`Priority Date ........................................................................................ 32
`
`Challenged Claims .............................................................................. 32
`
`VI. Claim Construction ........................................................................................ 33
`
`A.
`
`B.
`
`“stations which operate in accordance with a first radio
`interface standard and/or a second radio interface standard” ............. 34
`
`“renders the frequency band available for access by the stations
`working in accordance with the second radio interface standard
`if stations working in accordance with the first radio interface
`standard do not request access to the frequency band” ....................... 35
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`C.
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`“the control station … also carries out functions which cause
`radio systems in accordance with the second radio interface
`standard to interpret the radio channel as interfered and to seize
`another radio channel for its own operation” ...................................... 37
`
`VII. Summary of the Prior Art .............................................................................. 42
`
`A.
`
`Invalidity Grounds ............................................................................... 42
`
`B.
`
`C.
`
`U.S. Patent No. 7,031,274 (“Sherman”) (Ex. 1004) ........................... 43
`
`U.S. Patent No. 7,039,358 (“Shellhammer”) (Ex. 1005) .................... 48
`
`D. U.S. Patent No. 6,215,982 (“Trompower”) (Ex. 1006) ...................... 51
`
`E.
`
`U.S. Patent No. 6,643,278 (“Panasik”) ............................................... 52
`
`VIII. Invalidity ........................................................................................................ 52
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`A. Ground 1: Obviousness in View of Sherman ...................................... 52
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`1.
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`2.
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`3.
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`4.
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`5.
`
`KSR Factors ............................................................................... 52
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`Independent Claim 1 ................................................................. 56
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`Dependent Claim 3.................................................................... 86
`
`Independent Claim 6 ................................................................. 91
`
`Independent Claim 9 ................................................................. 97
`
`B.
`
`Ground 2: Obviousness Based on Sherman in View of
`Trompower .......................................................................................... 99
`
`1.
`
`KSR Factors ............................................................................. 100
`
`2. Motivation to Combine ........................................................... 100
`
`3.
`
`Independent Claim 8 ............................................................... 106
`
`C.
`
`Ground 3: Obviousness Based on Shellhammer ............................... 116
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`1.
`
`2.
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`Patent Owner’s District Court Allegations ............................. 117
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`KSR Factors ............................................................................. 119
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`3.
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`4.
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`5.
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`6.
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`Independent Claim 1 ............................................................... 122
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`Dependent Claim 3.................................................................. 148
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`Independent Claim 7 ............................................................... 153
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`Independent Claim 9 ............................................................... 156
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`D. Ground 4: Obviousness Based on Shellhammer in View of
`Trompower ........................................................................................ 159
`
`1.
`
`KSR Factors ............................................................................. 159
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`2. Motivation to Combine ........................................................... 159
`
`3.
`
`Independent Claim 8 ............................................................... 166
`
`E.
`
`Ground 5: Obviousness Based on Shellhammer in View of
`Panasik ............................................................................................... 171
`
`1. Motivation to Combine and KSR Factors ............................... 171
`
`2.
`
`Independent Claim 8 ............................................................... 174
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`IX. Reservation of Rights .................................................................................. 181
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`Appendix 1: Curriculum Vitae of Sumit Roy ........................................................ 182
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`Appendix 2: Materials Considered in the Preparation of This Declaration .......... 183
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`Appendix 3: Challenged Claims ............................................................................ 184
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`1.
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`2.
`
`I, Sumit Roy, declare as follows:
`
`I currently hold the Integrated Systems Professorship in the
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`Department of Electrical & Computer Engineering at the University of Washington,
`
`Seattle. I received my M.S. and Ph.D. in Electrical Engineering from the
`
`University of California, Santa Barbara in 1985 and 1988, respectively. I also
`
`received my M.A. in Statistics and Appl. Probability from the University of
`
`California, Santa Barbara in 1988. I have prepared this declaration as an expert
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`witness retained by Marvell Semiconductor, Inc. In this declaration I give my
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`opinions as to whether certain claims of U.S. Patent No. 7,016,676 (“the ’676
`
`patent”) are invalid. I provide technical bases for these opinions as appropriate.
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`3.
`
`This declaration contains statements of my opinions formed to
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`date and the bases and reasons for those opinions. I may offer additional opinions
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`based on further review of materials in this case, including opinions and/or
`
`testimony of other expert witnesses. I make this declaration based upon my own
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`personal knowledge and, if called upon to testify, would testify competently to the
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`matters contained herein.
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`I.
`
`BACKGROUND AND QUALIFICATIONS
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`4.
`
`This section contains a summary of my educational background,
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`career history, publications, and other relevant qualifications. My full curriculum
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`vitae is attached as Appendix 1 to this declaration.
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`
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`5.
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`Currently I am and have been a Professor with tenure, in the
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`Department of Electrical & Computer Engineering at the University of Washington,
`
`Seattle for the past about 17 years. During this time, I was served as the Associate
`
`Chair for Research in my department at the University of Washington, Seattle for
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`about 5 years total—from September 2005-2007 and September 2008-2011.
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`Before this, I was an Associate Professor with tenure here in the Department of
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`Electrical Engineering at the University of Washington, Seattle, from September
`
`1998-September 2002. Before that, I was an Associate Professor with tenure in the
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`Division of Engineering at the University of Texas at San Antonio from January
`
`1995 to August 1998. And before that I was an Assistant Professor in the
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`Department of Electrical Engineering at the University of Pennsylvania from July
`
`1988 to December 1994. Prior to that, I was a Research Assistant in the
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`Department of Electrical and Computer Engineering at the University of California
`
`at Santa Barbara from October 1983 to May 1988.
`
`6.
`
`My master’s thesis, “Target Signature Evaluation Based on
`
`Radar Turntable Data”, involved developing models for range-Doppler imaging of
`
`targets based on measurements obtained from an indoor (turntable) measurement
`
`set-up. My Ph.D. Dissertation, “Estimation Strategies for a Network of Distributed
`
`Sensors” developed new methods for estimation of target location – both static and
`
`dynamic – as observed by a set of distributed RF sensors. My dissertation
`
`
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`developed new distributed Kalman filters and probabilistic filtering approaches for
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`state estimation of moving objects.
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`7.
`
`c. 2000, my research interest migrated to the emerging Wireless
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`Local Area Networks (WLANs). I took a leave of absence from Sep. 2001- Dec.
`
`2003 to serve as a Visiting Scientist/Wireless Architect at Intel Labs, Hillsboro,
`
`OR with responsibility for contributing to and participation in the standardization
`
`activities of IEEE representing Intel Corp. My initial work focused on the IEEE
`
`802.15.3 Wireless Personal Area Network (WPAN) based on Ultra-Wideband
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`(UWB) technology and thereafter to the newly formed pre 802.11n (1st Multi Input,
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`Multi Output or MIMO WLAN) working group. This involvement resulted in
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`several patents and I participated at the IEEE 802.15 and 802.11 Standards
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`meetings during this period. I have maintained my affiliations with IEEE standards
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`activities to this date, see http://www.ieee802.org/Tutorials.shtml regarding my
`
`participation in a recent tutorial on Spectrum Sharing at the Plenary meeting in
`
`Mar. 2019.
`
`8.
`
`In the Summer of 1989 I was a visiting Researcher at GE’s
`
`Corporate R&D Center in Schenectady, NY. Then in the Summer of 1996 I was a
`
`visiting member of the Technical Staff at the Center for Wireless communications
`
`at the National University of Singapore. From September 2001 to December 2003,
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`I was the Senior Staff Research at the Wireless Technology, Intel Labs in Hillsboro,
`
`
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`Oregon. I was elevated to IEEE Fellow in the Communications Society in 2007
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`(only 0.1% of IEEE members are so honored each year) and selected as a (annual)
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`Distinguished Lecturer by the IEEE Communications Society twice from 2014-
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`2015 and 2017-2018. Then from August 2014-December 2014, I was a visiting
`
`faculty and external consultant at IIIT in Delhi, India. From December 2014-
`
`February 2015, I served as visiting research scientist at Microsoft Research in
`
`Bangalore, India. I am also a member of IEEE’s Technical Communication on
`
`Cognitive Radios and have served on numerous Technical Program Committees
`
`(e.g., Globecom, ICC, DySPAN) in recent years.
`
`9.
`
`I received my Ph.D. in Electrical Engineering and my M.A. in
`
`Statistics and Appl. Probability from the University of California, Santa Barbara in
`
`1988. Prior to that I received my M.S. in Electrical Engineering also from the
`
`University of California, Santa Barbara in 1985.
`
`10.
`
`I have taught and continue to teach many courses, including
`
`several courses in wireless communications. Here are some examples:
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`U. Pennsylvania
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`Commun. Systems (Theory and Lab)
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`Advanced Digital Signal Processing
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`Digital Communications
`
`Radar Systems
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`
`
`U. Texas San Antonio
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`Found. of Commun. Theory
`
`
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`Random Signal Analysis
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`Linear Systems
`
`
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`Mobile Communications
`
`U. Washington
`
`Wireless Networks
`
`Random Processes
`
`
`
`
`
`Computer Communication Networks
`
`
`
`A. Compensation
`
`
`
`11.
`
`For my efforts in connection with the preparation of this
`
`declaration I have been compensated at my standard rate for this type of consulting
`
`activity. My compensation is in no way contingent on the results of these or any
`
`other proceedings relating to the above-captioned patent.
`
`B. Materials and Other Information Considered
`
`12.
`
`I have considered information from various sources in forming
`
`my opinions. I have reviewed and considered each of the exhibits listed in the
`
`attached Appendix 2 (Materials Considered in the Preparation of This Declaration)
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`in forming my opinions.
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`II. UNDERSTANDING OF THE LAW
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`13.
`
`I have applied the following legal principles provided to me by
`
`counsel in arriving at the opinions set forth in this report.
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`A. Legal Standard for Prior Art
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`14.
`
`I am not an attorney. I have been informed by attorneys of the
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`relevant legal principles and have applied them to arrive at the opinions set forth in
`
`this declaration.
`
`15.
`
`I understand that the petitioner for inter partes review may
`
`request the cancelation of one or more claims of a patent based on grounds
`
`available under 35 U.S.C. § 102 and 35 U.S.C. § 103 using prior art that consists of
`
`patents and printed publications.
`
`1.
`
`Anticipation and Prior Art
`
`16.
`
`I understand that § 102 specifies when a challenged claim is
`
`invalid for lacking novelty over the prior art, and that this concept is also known as
`
`“anticipation.” I understand that a prior art reference anticipates a challenged
`
`claim, and thus renders it invalid by anticipation, if all elements of the challenged
`
`claim are disclosed in the prior art reference. I understand the disclosure in the
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`prior art reference can be either explicit or inherent, meaning it is necessarily
`
`present or implied. I understand that the prior art reference does not have to use
`
`the same words as the challenged claim, but all of the requirements of the claim
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`must be disclosed so that a person of ordinary skill in the art could make and use
`
`the claimed subject-matter.
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`
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`17.
`
`In addition, I understand that § 102 also defines what is
`
`available for use as a prior art reference to a challenged claim.
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`18.
`
`Under § 102(a), a challenged claim is anticipated if it was
`
`patented or described in a printed publication in the United States or a foreign
`
`country before the challenged claim’s date of invention.
`
`19.
`
`Under § 102(b), a challenged claim is anticipated if it was
`
`patented or described in a printed publication in the United States or a foreign
`
`country more than one year prior to the challenged patent’s filing date.
`
`20.
`
`Under § 102(e), a challenged claim is anticipated if it was
`
`described in published patent application that was filed by another in the United
`
`States before the challenge claim’s date of invention, or was described in a patent
`
`granted to another that was filed in the United States before the challenged claim’s
`
`date of invention.
`
`21.
`
`I understand that a challenged claim’s date of invention is
`
`presumed to be the challenged patent’s filing date. I also understand that the patent
`
`owner may establish an earlier invention date and “swear behind” prior art defined
`
`by § 102(a) or § 102(e) by proving (with corroborated evidence) the actual date on
`
`which the named inventors conceived of the subject matter of the challenged claim
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`and proving that the inventors were diligent in reducing the subject matter to
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`practice.
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`22.
`
`I understand that the filing date of patent is generally the filing
`
`date of the application filed in the United States that issued as the patent. However,
`
`I understand that a patent may be granted an earlier effective filing date if the
`
`patent owner properly claimed priority to an earlier patent application.
`
`23.
`
`I understand that when a challenged claim covers several
`
`structures, either generically or as alternatives, the claim is deemed anticipated if
`
`any of the structures within the scope of the claim is found in the prior art
`
`reference.
`
`24.
`
`I understand that when a challenged claim requires selection of
`
`an element from a list of alternatives, the prior art teaches the element if one of the
`
`alternatives is taught by the prior art.
`
`B. Obviousness
`
`25.
`
`I understand that even if a challenged claim is not anticipated, it
`
`is still invalid if the differences between the claimed subject matter and the prior
`
`art are such that the claimed subject matter would have been obvious to a person of
`
`ordinary skill in the pertinent art at the time the alleged invention.
`
`26.
`
`I understand that obviousness must be determined with respect
`
`to the challenged claim as a whole.
`
`27.
`
`I understand that one cannot rely on hindsight in deciding
`
`whether a claim is obvious.
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`
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`28.
`
`I also understand that an obviousness analysis includes the
`
`consideration of factors such as (1) the scope and content of the prior art, (2) the
`
`differences between the prior art and the challenged claim, (3) the level of ordinary
`
`skill in the pertinent art, and (4) “secondary” or “objective” evidence of non-
`
`obviousness.
`
`29.
`
`Secondary or objective evidence of non-obviousness includes
`
`evidence of: (1) a long felt but unmet need in the prior art that was satisfied by the
`
`claimed invention; (2) commercial success or the lack of commercial success of
`
`the claimed invention; (3) unexpected results achieved by the claimed invention; (4)
`
`praise of the claimed invention by others skilled in the art; (5) taking of licenses
`
`under the patent by others; (6) deliberate copying of the claimed invention; and (7)
`
`contemporaneous and independent invention by others. However, I understand
`
`that there must be a relationship between any secondary evidence of non-
`
`obviousness and the claimed invention.
`
`30.
`
`I understand that a challenged claim can be invalid for
`
`obviousness over a combination of prior art references if a reason existed (at the
`
`time of the alleged invention) that would have prompted a person of ordinary skill
`
`in the art to combine elements of the prior art in the manner required by the
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`challenged claim. I understand that this requirement is also referred to as a
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`“motivation to combine,” “suggestion to combine,” or “reason to combine,” and
`
`that there are several rationales that meet this requirement.
`
`31.
`
`I understand that the prior art references themselves may
`
`provide a motivation to combine, but other times simple common sense can link
`
`two or more prior art references. I further understand that obviousness analysis
`
`recognizes that market demand, rather than scientific literature, often drives
`
`innovation, and that a motivation to combine references may come from market
`
`forces.
`
`32.
`
`I understand obviousness to include, for instance, scenarios
`
`where known techniques are simply applied to other devices, systems, or processes
`
`to improve them in an expected or known way. I also understand that practical and
`
`common-sense considerations should be applied a proper obviousness analysis.
`
`For instance, familiar items may have obvious uses beyond their primary purposes.
`
`33.
`
`I understand
`
`that
`
`the combination of familiar elements
`
`according to known methods is obvious when it yields predictable results. For
`
`instance, obviousness bars patentability of a predictable variation of a technique
`
`even if the technique originated in another field of endeavor. This is because
`
`design incentives and other market forces can prompt variations of it, and
`
`predictable variations are not the product of innovation, but rather ordinary skill
`
`and common sense.
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`
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`34.
`
`I understand that a particular combination may be obvious if it
`
`was obvious to try the combination. For example, when there is a design need or
`
`market pressure to solve a problem and there are a finite number of identified,
`
`predictable solutions, a person of ordinary skill has good reason to pursue the
`
`known options within his or her technical grasp. This would result in something
`
`obvious because the result is the product not of innovation but of ordinary skill and
`
`common sense. However, I understand that it may not be obvious to try a
`
`combination when it involves unpredictable technologies.
`
`35.
`
`It is further my understanding that a proper obviousness
`
`analysis focuses on what was known or obvious to a person of ordinary skill in the
`
`art, not just the patentee. Accordingly, I understand that any need or problem
`
`known in the field of endeavor at the time of invention and addressed by the patent
`
`can provide a reason for combining the elements in the manner claimed.
`
`36.
`
`It is my understanding that the Manual of Patent Examining
`
`Procedure §2143 sets forth the following as exemplary rationales that support a
`
`conclusion of obviousness:
`
`37.
`
`Combining prior art elements according to known methods to
`
`yield predictable results;
`
`38.
`
`Simple substitution of one known element for another to obtain
`
`predictable results;
`
`
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`39.
`
`Use of known technique to improve similar devices (methods,
`
`or products) in the same way;
`
`40.
`
`Applying a known technique to a known device (method, or
`
`product) ready for improvement to yield predictable results;
`
`41.
`
`Choosing from a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success;
`
`42.
`
`Known work in one field of endeavor may prompt variations of
`
`it for use in either the same field or a different one based on design incentives or
`
`other market forces if the variations are predictable to one of ordinary skill in the
`
`art;
`
`43.
`
`Some teaching, suggestion, or motivation in the prior art that
`
`would have led one of ordinary skill to modify the prior art reference or to combine
`
`prior art reference teachings to arrive at the claimed invention.
`
`44.
`
`A person of ordinary skill in the art looking to overcome a
`
`problem will often use the teachings of multiple publications together like pieces
`
`of a puzzle, even though the prior art does not necessarily fit perfectly together.
`
`Therefore, I understand that references for obviousness need not fit perfectly
`
`together like puzzle pieces. Instead, I understand that obviousness analysis takes
`
`into account inferences, creative steps, common sense, and practical logic and
`
`
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`applications that a person of ordinary skill in the art would employ under the
`
`circumstances.
`
`45.
`
`I understand that a claim can be obvious in light of a single
`
`reference, if the elements of the challenged claim that are not explicitly or
`
`inherently disclosed in the reference can be supplied by the common sense of one
`
`of skill in the art.
`
`46.
`
`I understand that obviousness also bars the patentability of
`
`applying known or obvious design choices to the prior art. One cannot patent
`
`merely substituting one prior art element for another if the substitution can be
`
`made with predictable results. Likewise, combining prior art techniques that are
`
`interoperable with respect to one another is generally obvious and not patentable.
`
`47.
`
`In sum, my understanding is that obviousness invalidates claims
`
`that merely recite combinations of, or obvious variations of, prior art teachings
`
`using understanding and knowledge of one of skill in the art at the time and
`
`motivated by the general problem facing the inventor at the time. Under this
`
`analysis, the prior art references themselves, or any need or problem known in the
`
`field of endeavor at the time of the invention, can provide a reason for combining
`
`the elements of or attempting obvious variations on prior art references in the
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`claimed manner.
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`C. Legal Standard for Claim Construction
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`48.
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`I understand that before any invalidity analysis can be properly
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`performed, the scope and meaning of the challenged claims must be determined by
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`claim construction.
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`49.
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`I understand that a patent may include two types of claims,
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`independent claims and dependent claims. I understand that an independent claim
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`stands alone and includes only the limitations it recites. I understand that a
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`dependent claim depends from an independent claim or another dependent claim. I
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`understand that a dependent claim includes all the limitations that it recites in
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`addition to the limitations recited in the claim (or claims) from which it depends.
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`50.
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`In comparing the challenged claims to the prior art, I have
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`carefully considered the patent and its file history in light of the understanding of a
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`person of skill at the time of the alleged invention.
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`51.
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`I understand that to determine how a person of ordinary skill
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`would have understood a claim term, one should look to sources available at the
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`time of the alleged invention that show what a person of skill in the art would have
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`understood disputed claim language to mean. It is my understanding that this may
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`include what is called “intrinsic” evidence as well as “extrinsic” evidence.
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`52.
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`I understand that, in construing a claim term, one should
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`primarily rely on intrinsic patent evidence, which includes the words of the claims
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`themselves, the remainder of the patent specification, and the prosecution history.
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`I understand that extrinsic evidence, which is evidence external to the patent and
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`the prosecution history, may also be useful in interpreting patent claims when the
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`intrinsic evidence itself is insufficient. I understand that extrinsic evidence may
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`include principles, concepts, terms, and other resources available to those of skill
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`in the art at the time of the invention.
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`53.
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`I understand that words or terms should be given their ordinary
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`and accepted meaning unless it appears that the inventors were using them to mean
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`something else or something more specific. I understand that to determine whether
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`a term has special meaning, the claims, the patent specification, and the
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`prosecution history are particularly important, and may show that the inventor gave
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`a term a particular definition or intentionally disclaimed, disavowed, or
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`surrendered claim scope.
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`54.
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`I understand that the claims of a patent define the scope of the
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`rights conferred by the patent. I understand that because the claims point out and
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`distinctly claim the subject matter which the inventors regard as their invention,
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`claim construction analysis must begin with and is focused on the claim language
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`itself. I understand that the context of the term within the claim as well as other
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`claims of the patent can inform the meaning of a claim term. For example, because
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`claim terms are normally used consistently throughout the patent, how a term is
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`used in one claim can often inform the meaning of the same term in other claims.
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`Differences among claims or claim terms can also be a useful guide in
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`understanding the meaning of particular claim terms.
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`55.
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`I understand that a claim term should be construed not only in
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`the context of the particular claim in which the disputed term appears, but in the
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`context of the entire patent, including the entire specification. I understand that
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`because the specification is a primary basis for construing the claims, a correct
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`construction must align with the specification.
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`56.
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`I understand that the prosecution history of the patent as well as
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`art incorporated by reference or otherwise cited during the prosecution history are
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`also highly relevant in construing claim terms. For instance, art cited by or
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`incorporated by reference may indicate how the inventor and others of skill in the
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`art at the time of the invention understood certain terms and concepts.
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`Additionally, the prosecution history may show that the inventors disclaimed or
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`disavowed claim scope or further explained the meaning of a claim term.
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`57.
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`With regard to extrinsic evidence, I understand that all evidence
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`external to the patent and prosecution history, including expert and inventor
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`testimony, dictionaries, and learned treatises, can also be considered. For example,
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`technical dictionaries may indicate how one of skill in the art used or understood
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`the claim terms. However, I understand that extrinsic evidence is considered to be
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`less reliable than intrinsic evidence, and for that reason is generally given less
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`weight than intrinsic evidence.
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`58.
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`I understand that in general, a term or phrase found in the
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`introductory words or preamble of the claim, should be construed as a limitation if
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`it recites essential structure or steps, or is necessary to give meaning to the claim.
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`For instance, I understand preamble language may limit claim scope: (i) if
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`dependence on a preamble phrase for antecedent basis indicates a reliance on both
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`the preamble and claim body to define the claimed invention; (ii) if reference to the
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`preamble is necessary to understand limitations or terms in the claim body; or (iii)
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`if the preamble recites additional structure or steps that the specification identifies
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`as important.
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`59.
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`On the other hand, I understand that a preamble term or phrase
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`is not limiting where a challenged claim defines a structurally complete invention
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`in the claim body and uses the preamble only to state a purpose or intended use for
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`the invention. I understand that to make this determination, one should review the
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`entire patent to gain an understanding of what the inventors claim they invented
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`and intended to encompass in the claims.
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`60.
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`I understand that 35 U.S.C. § 112 ¶ 6 created an exception to
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`the general rule of claim construction