Filed: August 29, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`_________________
`
`Case No. IPR2019-01541
`U.S. Patent No. 7,016,676
`_________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,016,676
`
`

`

`
`
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`I.
`II.
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Statement of Precise Relief Requested for Each Claim Challenged ............... 2
`A.
`Claims for Which Review Is Requested ............................................... 2
`B.
`Statutory Ground ................................................................................... 2
`III. Background and Technology of the ’676 Patent ............................................. 3
`A. Overview of the ’676 Patent .................................................................. 3
`B.
`The Challenged Claims of the ’676 Patent ........................................... 5
`C.
`Prosecution History of the ’676 Patent ................................................. 7
`IV. The Level of Ordinary Skill in the Art ............................................................ 7
`V.
`Claim Construction .......................................................................................... 8
`VI. Claims 1, 2, 4, and 9 Are Obvious over Gardner in View of Marth
`and Balachandran ............................................................................................ 9
`A. Overview of Gardner ............................................................................ 9
`B. Overview of Balachandran .................................................................16
`C. Overview of Marth ..............................................................................19
`D. Gardner, Marth, and Balachandran Render Obvious Claims 1,
`2, 4, and 9 ............................................................................................20
`1.
`Independent Claim 1 .................................................................20
`2.
`Dependent Claim 2....................................................................43
`3.
`Dependent Claim 4....................................................................47
`4.
`Independent Claim 9 .................................................................50
`VII. Petitioner Raises a New Ground of Unpatentability .....................................52
`
`
`
`i
`
`

`

`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`
`
`
`
`VIII. Mandatory Notices.........................................................................................54
`A.
`Real Party-in-Interest Under 37 C.F.R. § 42.8(b)(1) ..........................54
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ...................................54
`C.
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................56
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4) .............................56
`IX. Grounds for Standing .....................................................................................57
`X.
`Conclusion .....................................................................................................57
`
`
`
`
`
`ii
`
`

`

`
`
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) ............................................................................ 8
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 8
`Statutes
`35 U.S.C. § 102(a), (b), (e) .................................................................................... 2, 3
`35 U.S.C. § 103 .......................................................................................................... 2
`35 U.S.C. § 311 .......................................................................................................... 2
`Regulations
`37 C.F.R. § 42.8(b)(1) .............................................................................................. 54
`37 C.F.R. § 42.8(b)(2) .............................................................................................. 54
`37 C.F.R. § 42.8(b)(3) .............................................................................................. 56
`37 C.F.R. § 42.8(b)(4) .............................................................................................. 56
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`Other Authorities
`Changes to the Claim Construction Standard for Interpreting Claims
`in Trial Proceedings Before the Patent Trial and Appeal Board,
`83 Fed. Reg. 51340 (Oct. 11, 2018) ..................................................................... 8
`
`
`
`
`
`
`
`
`iii
`
`

`

`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`TABLE OF EXHIBITS
`
`Exhibit
`Ex. 1001
`
`Description
`U.S. Patent No. 7,016,676 to Walke et al. (“the ’676 patent”)
`
`Ex. 1002
`
`Excerpts of the Prosecution History of U.S. Patent No. 7,016,676
`
`Ex. 1003
`
`Proof of Service of Process of Complaint
`
`Ex. 1004
`
`Declaration of Stuart J. Lipoff
`
`Ex. 1005
`
`Curriculum Vitae of Stuart J. Lipoff
`
`Ex. 1006
`
`U.S. Patent No. 5,533,029 to Gardner (“Gardner”)
`
`Ex. 1007
`
`U.S. Patent No. 5,713,072 to Marth et al. (“Marth”)
`
`Ex. 1008 WO 96/29832 to Balachandran et al. (“Balachandran”)
`Ex. 1009 Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-01116, Petition for
`Inter Partes Review of U.S. Patent No. 7,016,676 (May 29, 2019)
`Ex. 1010 Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-01125, Petition for
`Inter Partes Review of U.S. Patent No. 7,016,676 (May 29, 2019)
`
`Ex. 1011
`
`Proof of Service of Process of Microsoft Complaint
`
`Ex. 1012
`
`TIA/EIA-553-A Mobile Station – Base Station Compatibility
`Standard (November 1999)
`
`Ex. 1013
`
`CDPD System Specification, Release 1.1 (Jan. 19, 1995)
`
`Ex. 1014
`
`Ex. 1015
`
`Marvell Semiconductor, Inc. v. Uniloc 2017 LLC, IPR2019-01349,
`Petition for Inter Partes Review of U.S. Patent No. 7,016,676
`(July 22, 2019)
`
`Marvell Semiconductor, Inc. v. Uniloc 2017 LLC, IPR2019-01350,
`Petition for Inter Partes Review of U.S. Patent No. 7,016,676
`(July 22, 2019)
`
`iv
`
`
`
`
`
`
`

`

`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`Exhibit
`
`Ex. 1016
`
`Description
`Excerpts of Sreetharan, Muthuthamby & Kumar, Rajiv, Cellular
`Digital Packet Data (1996) (“Sreetharan”)
`
`Ex. 1017
`
`Declaration of Kelley M. Hayes Greenhill
`
`Ex. 1018 MARC Records for Sreetharan
`
`v
`
`
`
`
`
`
`

`

`
`
`I.
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`Introduction
`Google LLC requests inter partes review of claims 1, 2, 4, and 9 of U.S. Patent
`
`No. 7,016,676. The ’676 patent generally relates to a radio system made up of
`
`stations that transmit using different radio interface standards in a shared frequency
`
`band. (’676 patent at Abstract, 1:10-23, 2:14-22, 2:29-44, 2:48-50, 4:35-44, 5:20-41,
`
`Fig. 3.) To facilitate communication and avoid interference in the shared band, a
`
`control station controls alternate use of the frequency band by stations using different
`
`radio interface standards. (Id. at 1:7-9, 2:11-22, 2:45-62.) For example, stations
`
`using one radio interface standard may be prioritized over stations using another.
`
`(Id. at 3:7-19.) Based on this prioritization, a control station can make the frequency
`
`band available to a second standard when stations using the first standard “do not
`
`request access.” (Id.)
`
`But the ’676 patent’s systems and methods were not new at the time the ’676
`
`patent was filed, as alternate use of a shared frequency band was known in several
`
`contexts. As is relevant here, when early cellular networks expanded to include more
`
`robust data transmission capabilities, the systems for transmitting analog voice calls
`
`shared a common frequency band with systems for transmitting digital data. Voice
`
`calls were given priority over data transmissions, and a control station enforced this
`
`hierarchy by controlling when transmissions could occur on the shared frequency
`
`band. Systems and corresponding methods for carrying out these tasks are disclosed
`
`
`
`1
`
`

`

`
`
`
`
`in Gardner, Balachandran, and Marth, and these references render obvious claims
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`1, 2, 4, and 9. Accordingly, Google respectfully requests that the Board cancel claims
`
`1, 2, 4, and 9.
`
`II.
`
`Statement of Precise Relief Requested for Each Claim Challenged
`A. Claims for Which Review Is Requested
`Petitioner respectfully requests review under 35 U.S.C. § 311 of claims 1, 2,
`
`4, and 9 of the ’676 patent and cancellation of these claims as unpatentable.
`
`Statutory Ground
`B.
`Claims 1, 2, 4, and 9 are unpatentable as obvious under 35 U.S.C. § 103 over
`
`Gardner (Ex. 1006) in view of Marth (Ex. 1007) and Balachandran (Ex. 1008).1
`
`Prior Art References
`
`Ref. 1:
`
`Ref. 2:
`
`Gardner, U.S. Patent No. 5,533,029; issued July 2, 1996; prior art
`
`under at least pre-AIA 35 U.S.C. § 102(a), (b), (e) (Ex. 1006).
`
`Marth, U.S. Patent No. 5,713,072; issued January 27, 1998; prior
`
`art under at least pre-AIA 35 U.S.C. § 102(a), (b), (e) (Ex. 1007).
`
`
`1 Petitioner takes no position whether the claims of the ’676 patent are entitled
`
`to the earliest claimed priority date on the face of the patent—August 8, 2001. Even
`
`if the challenged claims are entitled to that date, Gardner, Marth, and Balachandran
`
`are prior art under pre-AIA 35 U.S.C. § 102(b).
`
`
`
`2
`
`

`

`
`
`
`Ref. 3:
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`Prior Art References
`
`Balachandran, WO 96/29832; published September 26, 1996; prior
`
`art under at least pre-AIA 35 U.S.C. § 102(a), (b), (e) (Ex. 1008).
`
`III. Background and Technology of the ’676 Patent
`A. Overview of the ’676 Patent
`The ’676 patent relates to an “interface-control protocol method” for a radio
`
`system comprising multiple stations using different radio interface standards but all
`
`broadcasting on a common frequency band. (’676 patent at Abstract, 2:14-22, 2:29-
`
`44, 5:20-41.) These stations operate according to a first radio interface standard, a
`
`second radio interface standard, or both. (See, e.g., id. at 2:48-50, 4:43-44, 5:20-41.)
`
`As examples of radio interface standards, the ’676 patent identifies “US radio system
`
`IEEE802.11a and the European ETSI BRAN HiperLAN/2,” which “transmit in the
`
`same frequency bands between 5.5 GHz and 5.875 GHz.” (Id. at 1:10-23; see also
`
`id. at 5:35-37; Ex. 1004 ¶ 26.)
`
`To avoid interference on the shared frequency band, the ’676 patent discloses
`
`a control station that allocates use of the frequency band. (See ’676 patent at 1:7-9,
`
`2:11-22, 2:45-62.) Figure 3 below depicts an example of a network having stations
`
`that each use one of two radio standards (labeled “A” and “B”) and a central control
`
`station. (Id. at 4:43-44, 5:20-41; Ex. 1004 ¶ 27.)
`
`
`
`3
`
`

`

`
`
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`
`
`(’676 patent at Fig. 3 (annotated).)
`
`The ’676 patent explains that “alternate use of the common frequency band
`
`may be effected in various ways.” (Id. at 2:51-52; see also, e.g., Ex. 1004 ¶ 28.) For
`
`example, a control station may define time intervals for use by the first and second
`
`radio interface standards “in a kind of time-division multiplex mode.” (’676 patent
`
`at 2:51-57.) The control station may also “effect the allocation by means of adaptive
`
`protocols.” (Id. at 2:58-59.)
`
`
`
`4
`
`

`

`
`
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`In one embodiment, the radio interface standards are prioritized, so that the
`
`first radio interface standard receives higher priority than the second radio interface
`
`standard. (Id. at 3:7-19.) The control station may make the frequency band available
`
`to stations using the second standard when stations using the first higher-priority
`
`standard “do not request access” to the frequency band. (Id.; Ex. 1004 ¶ 29.)
`
`In addition, a control station can predetermine an amount of time that a station
`
`operating according to a second radio standard may use a frequency before it must
`
`vacate that frequency. (’676 patent at 3:29-38; see also, e.g., Ex. 1004 ¶ 30.) Under
`
`this technique, a “control station sends a broadcast signal [that] informs the stations
`
`of a time period in which the frequency band can be used.” (’676 patent at 3:29-38.)
`
`The ’676 patent also explains that a time period’s “beginning and duration can
`
`be defined only approximately, while the respective standards are violated regularly
`
`or from time to time.” (Id. at 3:55-58.) In this way, a “first station may preferably
`
`end the phase during which it transmits in accordance with the second radio interface
`
`standard, while disregarding resulting interference in stations operating in
`
`accordance with the second radio interface standard.” (Id. at 3:58-62; Ex. 1004 ¶ 31.)
`
`The Challenged Claims of the ’676 Patent
`B.
`Petitioner challenges two of the independent claims recited in the ’676 patent:
`
`claims 1 and 9. Claim 1 has been reproduced below:
`
`
`
`5
`
`

`

`
`
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`An interface-control protocol method for a radio system which
`1.
`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.
`
`(’676 patent at 6:20-36.)
`
`Claim 9 is substantially identical to claim 1 but relates to a “wireless network”
`
`rather than an “interface-control protocol method.” (Id. at 8:8-26.)
`
`Dependent claims 2 and 4 depend directly or indirectly from claim 1 and recite
`
`additional limitations, such as the control station “determines the respective duration
`
`in which the stations . . . are allowed to utilize the frequency band,” and “the duration
`
`of operation . . . is laid down only approximately while the respective standards are
`
`violated regularly or from time to time.” (Id. at 6:37-50.)
`
`
`
`6
`
`

`

`
`
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`Prosecution History of the ’676 Patent
`C.
`The Examiner rejected the claims of the ’676 patent as anticipated several
`
`times during prosecution. (See, e.g., Ex. 1002 at 227-30, 242-46, 260-64.) Applicant
`
`then amended each independent claim to recite additional limitations related to the
`
`control station, among other things. Applicant amended claim 1, for instance, to add
`
`the following “wherein” clause:
`
`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.
`
`(Id. at 268 (incorporated from pending claim 2); see also id. at 272 (pending claim
`
`10/issued claim 9).)
`
`The Examiner allowed the claims in response to these amendments without
`
`providing a separate statement of reasons for allowance. (Id. at 279-82.)
`
`IV. The Level of Ordinary Skill in the Art
`A person of ordinary skill in the field of the ’676 patent, as of its filing date,
`
`would have been someone knowledgeable in wireless communications systems and
`
`related standards. (Ex. 1004 ¶ 42.) That person would have a Bachelor’s degree in
`
`Computer Engineering, Electrical Engineering, Computer Science, or equivalent
`
`
`
`7
`
`

`

`
`
`
`
`training, and would have had roughly five years of experience working with and/or
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`researching wireless communications systems and related standards in an industry
`
`or academic setting. (Id.)
`
`V. Claim Construction
`The Board construes claims in accordance with Phillips v. AWH Corp., 415
`
`F.3d 1303 (Fed. Cir. 2005) (en banc). Changes to the Claim Construction Standard
`
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`
`Board, 83 Fed. Reg. 51340 (Oct. 11, 2018); 37 C.F.R. § 42.100(b). Claims only need
`
`to be construed to the extent necessary to resolve a controversy. Nidec Motor Corp.
`
`v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`For purposes of this proceeding, no terms need express construction because
`
`the claims encompass the prior-art mappings provided below under any reasonable
`
`construction of the terms consistent with the Phillips standard. To the extent further
`
`comments on claim construction are warranted, however, they are provided below
`
`in the relevant sections when addressing how the claims read on the prior art.
`
`
`
`8
`
`

`

`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`
`
`
`
`VI. Claims 1, 2, 4, and 9 Are Obvious over Gardner in View of Marth and
`Balachandran
`A. Overview of Gardner
`Like the ’676 patent, Gardner discloses controlling alternate use of a common
`
`frequency band by stations using different radio interface standards. (E.g., Gardner
`
`at Abstract, 3:66-4:4, 4:19-26, 4:38-59, 5:23-34; Ex. 1004 ¶¶ 47-59.)
`
`Gardner explains that early cellular systems transmitted voice and data using
`
`a single system, known as the Advanced Mobile Phone Service, or AMPS. (Gardner
`
`at 1:15-3:63.) AMPS was inherently analog (id. at 1:35-37) and thus, carrying digital
`
`data with an AMPS system required converting “[r]aw (base-band) digital data” to
`
`a form that could be transmitted and received “across AMPS carrier channels” (id.
`
`at 2:12-16). But this conversion and transmission setup suffered from numerous
`
`drawbacks, including loss of digital data due to several idiosyncrasies of the AMPS
`
`system. (Id. at 2:16-26; Ex. 1004 ¶ 48.)
`
`Gardner discloses a solution to this problem by using one radio standard for
`
`voice communication, and a second radio standard for digital data communication,
`
`with both sharing a common frequency band and alternating use of that frequency
`
`band. (See, e.g., ’676 patent at Abstract, 3:66-4:59, 5:23-34.) Voice communications
`
`use the AMPS standard, while digital data communications use the Cellular Digital
`
`Packet Data (“CDPD”) standard. (See, e.g., id.; Ex. 1004 ¶ 49.)
`
`
`
`9
`
`

`

`
`
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`The AMPS system includes, among other things, an AMPS base station that
`
`connects to AMPS cellular phones. (’676 patent at 7:3-13, Fig. 2.) The AMPS base
`
`station is further connected to a mobile telephone switch office, either over dedicated
`
`landlines or through a public switched telephone network. (See id. at 7:14-25.) This
`
`AMPS system connecting to the public switched telephone network is illustrated in
`
`the red box below in Gardner’s Figure 2.
`
`(Id. at Fig. 2 (annotated); Ex. 1004 ¶ 50.)
`
`The CDPD system, shown below in Gardner’s Figure 1, comprises a network
`
`management system (NMS 10 below) that is responsible for controlling the CDPD
`
`
`
`
`
`10
`
`

`

`
`
`
`
`network. (’676 patent at Fig. 1, 6:27-55.) The network management system connects
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`to a mobile data intermediate system (MD-IS 3 below), which connects to a mobile
`
`data base station (MDBS 1 below). (Id. at 6:27-55, 5:36-49.) The mobile data base
`
`station then connects to one or more mobile end systems (ME-S 2 below), such as
`
`computers, handsets, or other portable electronic devices, through radio links. (Id. at
`
`5:40-49.)
`
`
`
`(Id. at Fig. 1, 6:27-35; Ex. 1004 ¶ 51.) As Gardner explains, the “MDBS serves as a
`
`communication link between the user of the M-ES [(mobile end systems)]” and the
`
`“network of wire lines, . . . AMPS cellular links, or other CDPD links . . . to convey
`
`data.” (Gardner at 5:40-49.) And, as shown below in Gardner Figure 2, several of
`
`
`
`11
`
`

`

`
`
`
`
`the CDPD system components are “equivalent to” corresponding components in the
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`AMPS system. (Ex. 1004 ¶ 52.)
`
`
`
`Gardner discloses multiple embodiments showing how the AMPS and CDPD
`
`systems may be structured and may interface with one another. (See, e.g., id. ¶ 53.)
`
`In one embodiment, the CDPD system is “entirely transparent to the AMPS network,
`
`which is ‘unaware’ of the CDPD function.” (Gardner at 5:49-60; see also Ex. 1004
`
`¶ 53.) In this embodiment, the CDPD system functions as a standalone system with
`
`independent hardware that coexists alongside the AMPS system. (Gardner at 5:49-
`
`70, 4:2-4, 4:41-44, 8:55-56; Ex. 1004 ¶ 53.) And the CDPD system may learn about
`
`
`
`12
`
`

`

`
`
`
`
`AMPS activity by using an “RF sniffer” to observe AMPS voice traffic on a channel.
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`(See, e.g., Gardner at 12:58-13:2; Ex. 1004 ¶ 53.)
`
`In another embodiment, CDPD and AMPS are more tightly integrated. In that
`
`embodiment, the AMPS base station and CDPD MDBS (both outlined in red below)
`
`are combined into one control station that shares hardware. (Gardner at 7:5-13, 9:48-
`
`10:2 (explaining that the “CDPD system has the capability of easily interfacing with
`
`[the] existing AMPS systems and sharing some front-end equipment . . . ”), 11:46-
`
`65 (“front end portion 50 [of CDPD MDBS] is expected to be shared with the normal
`
`AMPS base station”); Ex. 1004 ¶ 54.) The AMPS and the CDPD systems exchange
`
`signaling used by the control station to facilitate use of the common frequency band.
`
`(See, e.g., Gardner at 13:46-53; Ex. 1004 ¶ 54.)
`
`
`
`13
`
`

`

`
`
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`
`
`(Gardner at Fig. 2 (annotated); see also id. at 9:48-52, 13:46-53.)
`
`In this combined embodiment, the AMPS system directly notifies the CDPD
`
`system about AMPS activity. (Ex. 1004 ¶ 55.) As Gardner explains, “the sniffer can
`
`be eliminated from the transceiver modem card if the AMPS equipment can provide
`
`a signal indicating AMPS activity. In this case, a serial port connection is established
`
`to exchange AMPS and CDPD channel activity information.” (Gardner at 13:46-53;
`
`see also Ex. 1004 ¶ 55.) This Petition maps the challenged claims to this combined-
`
`base-station embodiment.
`
`
`
`14
`
`

`

`
`
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`Gardner uses the combined base station to control “alternate use” of a shared
`
`frequency band by mobile stations acting in accordance with CDPD and/or AMPS.
`
`(Gardner at 8:17-19, 9:6-47, 12:64-13:10, 13:46-53.) According to Gardner, CDPD
`
`communications use the same existing AMPS radio frequency channels, but “AMPS
`
`calls are given first priority, and they are always able to pre-empt the use of any
`
`channel being used by CDPD.” (Id. at 8:63-66; see also, e.g., id. at 8:17-19; Ex. 1004
`
`¶ 56.) For this reason, the AMPS system shares information with the CDPD system
`
`regarding when AMPS communications occur on the common frequency band.
`
`(Gardner at 4:41-44, 8:55-56 (MDBS using RF sniffer), 13:46-53 (combined station
`
`replacing RF sniffer with direct communication link, but otherwise performing the
`
`same functions).) If the CDPD/MDBS portion of the combined base station learns
`
`of AMPS usage on a channel in the common frequency band, then it will seek a
`
`different channel within that common frequency band for its transmissions. (Id. at
`
`Abstract (“[T]o maintain the integrity of CDPD transmission, a channel hopping
`
`scheme is used based upon avoidance of AMPS channel use.”); Ex. 1004 ¶ 56.)
`
`While the network is active, the CDPD/MDBS portion of the combined base
`
`station will continue to monitor not only the channels where CDPD stations are
`
`active, but also other candidate channels for AMPS activity. (See Ex. 1004 ¶ 57;
`
`Gardner at 12:64-13:2 (disclosing RF sniffer functions), 13:46-53 (replacing RF
`
`sniffer with direct communication link but otherwise performing same functions).)
`
`
`
`15
`
`

`

`
`
`
`
`If the AMPS portion of the combined base station permits an AMPS call on a channel
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`that is carrying CDPD data, then the CDPD/MDBS portion will be notified that the
`
`channel is occupied and initiate an unplanned hop to another free channel. (Gardner
`
`at 8:58-62, 9:17-29; see also, e.g., Ex. 1004 ¶ 57.) To limit additional unplanned
`
`hops, Gardner discloses attempting to predict AMPS channel usage to “select
`
`channels for optimal CDPD usage.” (Ex. 1004 ¶ 57; Gardner at 9:25-47.)
`
`When a hop is required, “[t]he MDBS instructs all subscriber units to change
`
`channels . . . .” (Gardner at 8:17-19.) This instruction is in the form of a “switch
`
`channels message” to inform the data-transmitting station which channel to hop to
`
`and when. (Id. at 9:6-29, 9:32-40; Ex. 1004 ¶ 58.)
`
`In this way, the combined base station of Gardner controls the alternate use
`
`of a shared frequency band by stations acting according to two different radio
`
`interface standards. (Ex. 1004 ¶ 59.)
`
`B. Overview of Balachandran
`Balachandran teaches frequency-hopping techniques for use in “frequency
`
`agile mobile communications,” such as techniques that are used by CDPD networks.
`
`(Balachandran at 1:1-4:18.) In particular, it discloses methods and apparatuses that
`
`determine “to which channel within a frequency agile communications network . . .
`
`a device should change,” and under what conditions. (Id. at 1:1-5; Ex. 1004 ¶¶ 60-
`
`64.)
`
`
`
`16
`
`

`

`
`
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`In the context of AMPS and CDPD, like in Gardner, Balachandran explains
`
`that “when the AMPS network attempts to transmit a signal on a channel that is
`
`being used by CDPD, the CDPD signal must vacate within 40 ms. Thus, there is
`
`insufficient time to provide information to the mobile end system to indicate on
`
`which channel the base station is going to attempt to continue the transmission (i.e.,
`
`to which channel the base station will hop).” (Balachandran at 3:7-11.) Therefore,
`
`like Gardner (see supra Section VI.A), Balachandran states that “it is desirable to
`
`provide a system that predicts which channels are least likely to be used by a first
`
`communications network in order to determine which channels are most desirable
`
`for use by a second communications network overlaid on the first communications
`
`network.” (Balachandran at 3:15-18; Ex. 1004 ¶ 61.)
`
`A series of lists and parameters identify when and to which channel to hop.
`
`(See, e.g., Balachandran at 12:8-11, 10:26-29, 11:4-8; Ex. 1004 ¶ 62.) A first is the
`
`“Max_Channel_Time.” (Balachandran at 12:8-11.) The “Max_Channel_Time”
`
`“establishes the maximum amount of time the second communications network can
`
`occupy any channel without releasing the channel” to the first communications
`
`network for its use. (Id.) Balachandran’s system also uses the “Likely_Hop list.”
`
`(Id. at 10:26-29.) This list identifies which channels are “the most likely candidates
`
`for use by the second communications network when a frequency hop is to be
`
`performed.” (Id.; see also id. at 5:4-6; Ex. 1004 ¶ 62.) As Balachandran explains:
`
`
`
`17
`
`

`

`
`
`
`
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`[T]he Likely_Hop list 1003 is broadcast to each end system of the
`second communication system on a regular time interval. In the
`preferred embodiment, the Likely_Hop list 1003 is broadcast to each
`end system at intervals which are equal in duration to one-half the
`maximum amount of time the second communications network may
`occupy a channel [(i.e., Max_Channel_Time)].
`
`(Balachandran at 11:4-8 (emphasis added).)
`
`Balachandran describes two hopping scenarios in particular: an “unplanned”
`
`hop (id. at 14:25-15:13, 17:4-26, Figs. 3, 5, 6) and a “planned” hop (id. at 15:14-28,
`
`Figs. 3, 5). For unplanned hops, it explains that if a “first communications network
`
`is attempting to occupy a channel that is occupied by the second communications
`
`network,” the processor enters unplanned hop state 303 to leave the channel. (Id. at
`
`14:25-15:2.) In the context of an AMPS and CDPD system, a CDPD transmission
`
`ceases within 40 ms and makes the channel available for AMPS usage. (Id. at 2:8-
`
`3:14; Ex. 1004 ¶ 63.)
`
`For planned hops, Balachandran explains the processor in the “CDPD and
`
`AMPS base station” (Balachandran at 2:13-15) can establish a time interval for a
`
`CDPD signal to occupy a frequency—the “Max_Channel_Time” (id. at 15:7-28; see
`
`also Ex. 1004 ¶ 64). To implement the “planned hop,” the processor in a “combined”
`
`AMPS/CDPD base station 200 “monitors the amount of time each channel has been
`
`occupied by the second communications network [CDPD] to determine whether the
`
`
`
`18
`
`

`

`
`
`
`
`period established by the Max_Channel_Time” has been exceeded. (Balachandran
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`at 2:13-15, 15:7-13; Ex. 1004 ¶ 64.) If the interval has lapsed, the combined
`
`AMPS/CDPD base station initiates a planned hop where the CDPD station must
`
`vacate the channel and hop to another channel. (Balachandran at 15:8-13; Ex. 1004
`
`¶ 64.) The channel to attempt hopping to is provided for in the Likely_Hop list (see
`
`Balachandran at 15:20-28), broadcast to each station at a regular interval based on
`
`the “Max_Channel_Time” (id. at 11:4-8; Ex. 1004 ¶ 64).
`
`C. Overview of Marth
`Marth describes, among other things, steps for “Call Initiation in an (AMPS)
`
`System,” like the one disclosed in Gardner. (Marth at 11:20-12:17; Ex. 1004 ¶¶ 65-
`
`66.) Marth explains that initiating a call within an AMPS system first requires the
`
`mobile cellular phone to register with a cellular system. (Marth at 11:29-40; see
`
`Ex. 1004 ¶ 65.) Registration occurs through the exchange of messages between a
`
`mobile cellular phone and a cell-site (base station). (Marth at 11:29-40; see Ex. 1004
`
`¶ 65.) Registration is “necessary so that the cellular system is aware of the existence
`
`of a particular identifiable cellular phone.” (Marth at 11:33-35.) Once a mobile
`
`cellular phone is registered, it may place and receive phone calls. (Id. at 11:38-40;
`
`Ex. 1004 ¶ 65.)
`
`Marth further explains how placing a call from a mobile cellular phone
`
`requires sending requests in the form of “call-origination messages using a single
`
`
`
`19
`
`

`

`
`
`
`
`channel assigned to a local cell-site” (base station) to establish a link. (Marth at
`
`
`
`Petition for Inter Partes Review
`U.S. Patent No. 7,016,676
`
`11:41-47.) Once the link is complete, the cellular phone is “commanded by the cell
`
`site” to start communications on a voice channel. (Id. at 11:56-60.) The “voice
`
`channel is used to carry phonecall voice-transmission signals between a mobile-
`
`station cellular phone and a cell site.” (Id. at 11:60-65; Ex. 1004 ¶ 66.)2
`
`D. Gardner, Marth, and Balachandran Render Obvious Claims 1, 2,
`4, and 9
`Independent Claim 1
`1.
`An interface-control protocol method for a radio
`a.
`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:
`If the Board finds the preamble limiting, Gardner discloses this limitation.
`
`(Ex. 1004 ¶¶ 46, 67-76.) Gardner explains that early radio systems using only one
`
`standard, AMPS, to transmit voice and digital data were inadequate. (Gardner at
`
`1:15-3:63; Ex. 1004 ¶ 68.) They suffered from “narrow channel bandwidth and
`
`errors in transmission,” as well as from digital data loss. (E.g., Gardner at 2:10-26.)
`
`Gardner discloses a solution to these problems by instea