UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`
`UNILOC 2017, LLC,
`
`Patent Owner.
`
`_______________
`
`Case IPR2019-01541
`Patent 7,016,676
`
`____________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`
`UNILOC 2017, LLC,
`
`Patent Owner.
`
`_______________
`
`Case IPR2019-01541
`Patent 7,016,676
`
`____________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`RELATED PROCEEDINGS .......................................................................... 2
`
`III. THE PETITION SHOULD BE DENIED UNDER THE
`BOARD’S DISCRETION ............................................................................... 5
`
`IV. THE ’676 PATENT ....................................................................................... 15
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 20
`
`VI. PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .............................................................................. 20
`
`A.
`
`B.
`
`C.
`
`Claim Construction—Performance of the “Renders” Portion
`of Claim 1 is Required ........................................................................ 21
`
`The Petition does not establish that Gardner alone or in
`view of Balachandran and/or Marth teaches “a control
`station which controls alternate use of the frequency band”
`as recited in Claims 1 and 9. (Ground 1) ............................................ 23
`
`The Petition does not establish that Gardner alone or in
`view of Balachandran and/or Marth 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 Claims 1
`and 9. (Ground 1) ................................................................................ 26
`
`D.
`
`The Petition does not establish that Gardner in view of
`Balachandran teaches dependent claim 2. (Ground 1) ........................ 27
`
`VII. CONCLUSION .............................................................................................. 30
`
`
`
`- i -
`
`
`
`IPR2019-01541
`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 Google LLC (“Petitioner”) in
`
`IPR2019-01541.
`
`The Board should exercise its discretion to deny this burdensome,
`
`redundant, and inefficient Petition. Google presents no justifiable reason for there
`
`to be 6 petitions filed against the ’676 patent. Under these facts, the Board would
`
`be well within its discretion to deny the petition and should do so.
`
`Should the Board reach the merits, 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
`
`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.
`
`Accordingly, Uniloc respectfully requests that the Board decline institution
`
`of trial on claims 1, 2, 4, and 9 of the '676 Patent.
`
`
`
`
`
`-1-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`II. RELATED PROCEEDINGS
`
`The following district court proceedings currently involve U.S. Pat. No.
`
`7,016,676 (’676 patent):
`
`Case Name
`
`Case Number
`
`Court
`
`Filing Date
`
`Uniloc 2017 LLC v. Microsoft
`Corporation
`
`8-18-cv-02053
`(stayed)
`
`CACD Nov 17, 2018
`
`Uniloc 2017 LLC et al v. Google
`LLC
`
`2-18-cv-00495
`(stayed)
`
`TXED Nov. 17, 2018
`
`Uniloc 2017 LLC v. Verizon
`Communications Inc. et al
`
`2-18-cv-00513
`
`TXED Nov. 17, 2018
`
`Uniloc 2017 LLC v. AT&T Services,
`Inc. et al
`
`2-18-cv-00514
`
`TXED Nov. 17, 2018
`
`
`
`The ’676 patent is also the subject of six inter partes review proceedings:
`
`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
`LLC
`
`IPR2019-01550
`
`PTAB Aug. 29, 2019
`
`-2-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`Case Name
`
`Case Number
`
`Court
`
`Filing Date
`
`Marvell Semiconductor, Inc. v.
`Uniloc 2017 LLC
`
`IPR2019-01349
`
`PTAB
`
`July 22, 2019
`
`Marvell Semiconductor, Inc. v.
`Uniloc 2017 LLC
`
`IPR2019-01350
`
`PTAB
`
`July 22, 2019
`
`Microsoft Corporation et al v. Uniloc
`2017 LLC
`
`IPR2019-01116
`
`PTAB May 29, 2019
`
`Microsoft Corporation et al v. Uniloc
`2017 LLC
`
`IPR2019-01125
`
`PTAB May 29, 2019
`
`
`
`Institution was denied in IPR2019-01125.
`
`The challenges presented to the claims of the ’676 patent in this and other
`
`inter partes review proceedings are set forth below:
`
`Claim Basis
`
`1
`
`1
`
`1
`
`1
`
`1
`
`1
`
`Gardner in view of Marth and Balachandran (Ground 1 of this IPR)
`
`Shellhammer (Ground 1 of IPR2019-01550)
`
`Lansford (Ground 4 of IPR2019-01550)
`
`Home RF (Ground 1 of IPR2019-01116)
`
`Home RF in view of Home RF Tutorial (Ground 2 of IPR2019-01116)
`
`Home RF in view of Home RF Liaison Report (Ground 3 of IPR2019-01116)
`
`-3-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`Claim Basis
`
`1
`
`1
`
`1
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`3
`
`3
`
`4
`
`5
`
`5
`
`5
`
`5
`
`5
`
`5
`
`5
`
`6
`
`7
`
`Lansford (Ground 4 of IPR2019-01116)
`
`Sherman (Ground 1 of IPR2019-01349)
`
`Shellhammer (Ground 3 of IPR2019-01349)
`
`Gardner in view of Marth and Balachandran (Ground 1 of this IPR)
`
`Shellhammer (Ground 1 of IPR2019-01550)
`
`Lansford (Ground 4 of IPR2019-01550)
`
`Home RF (Ground 1 of IPR2019-01116)
`
`Home RF in view of Home RF Tutorial (Ground 2 of IPR2019-01116)
`
`Home RF in view of Home RF Liaison Report (Ground 3 of IPR2019-01116)
`
`Lansford (Ground 4 of IPR2019-01116)
`
`Sherman (Ground 1 of IPR2019-01349)
`
`Shellhammer (Ground 3 of IPR2019-01349)
`
`Sherman (Ground 1 of IPR2019-01350)
`
`Shellhammer (Ground 3 of IPR2019-01350)
`
`Gardner in view of Marth and Balachandran (Ground 1 of this IPR)
`
`Home RF (Ground 1 of IPR2019-01125)
`
`Home RF in view of Tutorial and SWAP Spec (Ground 2 of IPR2019-01125)
`
`Home RF in view of Haartsen (Ground 3 of IPR2019-01125)
`
`Home RF in view of Home RF Tutorial and Haartsen (Ground 4 of IPR2019-01125)
`
`Sherman in view of Trompower (Ground 2 of IPR2019-01349)
`
`Shellhammer in view of Trompower (Ground 4 of IPR2019-01349)
`
`Shellhammer in view of Panasik (Ground 5 of IPR2019-01349)
`
`Sherman (Ground 1 of IPR2019-01350)
`
`Shellhammer (Ground 3 of IPR2019-01350)
`
`-4-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`Claim Basis
`
`8
`
`8
`
`8
`
`8
`
`8
`
`9
`
`9
`
`9
`
`Shellhammer in combination with Haartsen (Ground 2 of IPR2019-01550)
`
`Shellhammer in combination with Panasik (Ground 3 of IPR2019-01550)
`
`Sherman in view of Trompower (Ground 2 of IPR2019-01350)
`
`Shellhammer in view of Trompower (Ground 4 of IPR2019-01350)
`
`Shellhammer in view of Panasik (Ground 5 of IPR2019-01350)
`
`Gardner in view of Marth and Balachandran (Ground 1 of this IPR)
`
`Sherman (Ground 1 of IPR2019-01350)
`
`Shellhammer (Ground 3 of IPR2019-01350)
`
`
`
`III. THE PETITION SHOULD BE DENIED UNDER THE BOARD’S
`DISCRETION
`
`This Petition presents all of the same burdens and inefficiencies due to the
`
`filing of multiple petitions to attack a single patent.
`
`The ’676 patent has only nine claims. Yet, 6 IPRs have been filed
`
`challenging the ’676 patent, presenting an array of assertions against the individual
`
`claims, including multiple challenges against the same claims challenged in this
`
`Petition presented across 4 different petitions. Despite the Petition’s arguments to
`
`the contrary, the facts show undue burden, inefficient overlap, and unexplained
`
`differences across the various petitions and challenges. The table above in the
`
`Related Proceedings section shows all of the IPR challenges levelled against the
`
`claims of the ’676 patent (to date). The table below focuses on the claims
`
`-5-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`challenged in this IPR (highlighted in yellow) to show the repeated attacks against
`
`these claims.
`
`
`
`Claim Basis
`
`1
`
`1
`
`1
`
`1
`
`1
`
`1
`
`1
`
`1
`
`1
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`2
`
`4
`
`Gardner in view of Marth and Balachandran (Ground 1 of this IPR)
`
`Shellhammer (Ground 1 of IPR2019-01550)
`
`Lansford (Ground 4 of IPR2019-01550)
`
`Home RF (Ground 1 of IPR2019-01116)
`
`Home RF in view of Home RF Tutorial (Ground 2 of IPR2019-01116)
`
`Home RF in view of Home RF Liaison Report (Ground 3 of IPR2019-01116)
`
`Lansford (Ground 4 of IPR2019-01116)
`
`Sherman (Ground 1 of IPR2019-01349)
`
`Shellhammer (Ground 3 of IPR2019-01349)
`
`Gardner in view of Marth and Balachandran (Ground 1 of this IPR)
`
`Shellhammer (Ground 1 of IPR2019-01550)
`
`Lansford (Ground 4 of IPR2019-01550)
`
`Home RF (Ground 1 of IPR2019-01116)
`
`Home RF in view of Home RF Tutorial (Ground 2 of IPR2019-01116)
`
`Home RF in view of Home RF Liaison Report (Ground 3 of IPR2019-01116)
`
`Lansford (Ground 4 of IPR2019-01116)
`
`Sherman (Ground 1 of IPR2019-01349)
`
`Shellhammer (Ground 3 of IPR2019-01349)
`
`Gardner in view of Marth and Balachandran (Ground 1 of this IPR)
`
`-6-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`Claim Basis
`
`9
`
`9
`
`9
`
`Gardner in view of Marth and Balachandran (Ground 1 of this IPR)
`
`Sherman (Ground 1 of IPR2019-01350)
`
`Shellhammer (Ground 3 of IPR2019-01350)
`
`
`
`The precedential decision in General Plastic Industrial Co., Ltd. v. Canon
`
`Kabushiki Kaisha, IPR2016-01357 (PTAB Sep. 6, 2017) (Paper 19) identifies
`
`seven non-exclusive factors that bear on the issue of whether the Board should
`
`invoke its discretion to deny institution under 35 U.S.C. § 314(a) and 37 C.F.R. §
`
`42.108(a). These factors include:
`
`1.
`
`whether the same petitioner previously filed a petition
`
`directed to the same claims of the same patent;
`
`2.
`
`whether at the time of filing of the first petition the
`
`petitioner knew of the prior art asserted in the second
`
`petition or should have known of it;
`
`3.
`
`whether at the time of filing of the second petition the
`
`petitioner already received the patent owner’s
`
`preliminary response to the first petition or received the
`
`Board’s decision on whether to institute review in the
`
`first petition;
`
`-7-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`4.
`
`the length of time that elapsed between the time the
`
`petitioner learned of the prior art asserted in the second
`
`petition and the filing of the second petition;
`
`5.
`
`whether the petitioner provides adequate explanation for
`
`the time elapsed between the filings of multiple petitions
`
`6.
`
`7.
`
`directed to the same claims of the same patent;
`
`the finite resources of the Board; and
`
`the requirement under 35 U.S.C. § 316(a)(11) to issue a
`
`final determination not later than 1 year after the date on
`
`which the Director notices institution of review.
`
`See General Plastic, IPR2016-01357, Paper 19, 9–10 (citations omitted).
`
`Moreover, the Board has statutory authority to use its discretion to manage
`
`multiple proceedings before the Board involving the same patent. 35 U.S.C. §
`
`325(d).
`
`Each of the General Plastic factors 1, 2, and 4-7 weigh in favor of
`
`exercising discretion to deny the Petition.
`
`General Plastic Factor 1
`
`Regarding General Plastic factor 1, directed to whether a petitioner filed any
`
`previous petition directed to the same claims of the same patent, the table above
`
`-8-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`shows numerous instances where the same claims were challenged. And when all
`
`challenges against the ’676 patent are considered, Google does not explain why it
`
`filed a petition containing such redundant grounds against the same claims
`
`challenged in other petitions. In other words, Google only contends that it has
`
`reason to challenge claim 4 but it does not provide any reason to include the other
`
`challenges. Petition, pp. 52-54. Further, as will be noted below, Google does not
`
`even construe claim 4 in this IPR. Instead, Google seeks to present this IPR
`
`against claim 4 and a later invalidity challenge based on indefiniteness. To wit,
`
`Google asserts regarding claim 4 that “it raises a number of indefiniteness issues,
`
`but to the extent that it has a discernible meaning, it should be construed to track
`
`the ’676 patent specification’s related disclosure.” Petition, p. 47. Thus, there is
`
`no reason to address Google’s obviousness challenge here when both obviousness
`
`and indefiniteness challenges can be addressed in the underlying district court
`
`litigation.
`
`Further Google cites no authority to contend that it “has no relationship to
`
`either Microsoft’s or Marvell’s petitions” (Petition, p. 52) other IPRs filed by
`
`defendants in parallel district court litigation should not be considered. Rather, the
`
`opposite is true. Given the overlap, Google provides no explanation as to why it
`
`elected to file its own Petition rather than coordinating with the other defendants
`
`-9-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`(or relying on joinder process of 37 C.F.R. § 42.122(b) for the overlapping
`
`challenges). Google makes no assertion that it tried, and failed, to coordinate with
`
`the other defendants.
`
`In this regard, Google does not explain why its challenges to claims 1, 2, and
`
`9 are any different than other duplicative challenges to claims 1, 2, and 9, only
`
`concluding the other “challenges are based on references not asserted here that
`
`disclose systems and methods that function differently from Petitioner’s prior art.”
`
`Petition, p. 53. Google make no attempt at all to explain those alleged differences.
`
`Indeed, Google makes no showing that its challenges are different and any better
`
`than the other petitioners’ challenges. See Medtronic, Inc. v. NuVasive, Inc.,
`
`Case IPR2014-00487, Paper 8 at 6 (Sept. 11, 2014) (informative) (denying
`
`institution, explaining in part that “[w]hile Petitioner argues that the grounds are
`
`not redundant to those instituted on in the ’506 Proceeding, Petitioner does not
`
`provide any specific reasoning to support that argument, other than to state that the
`
`grounds are based on different prior art references.”); see also Apple Inc. v.
`
`Corephotonics Ltd., IPR2018-01356, Paper 9 at 7-8 (Feb. 5, 2019) (finding that
`
`where a petitioner “merely argues that its Petition ‘is not redundant’” because the
`
`asserted reference was not raised in another petition this circumstance “weigh[s] in
`
`-10-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`favor of exercising our discretion to deny institution ... on the basis of 35 U.S.C. §
`
`314(a)”).
`
`General Plastic factor 1 weighs in favor of exercising discretion to deny the
`
`Petition.
`
`General Plastic Factors 2, 1 4, and 5
`
`Regarding General Plastic factors 2, 4 and 5, regarding whether the length
`
`of time between when petitioner knew of the references and filed the petition was
`
`adequately explained, relating to prior knowledge of the references, Google does
`
`not state when it learned of the references used in its Petition. Thus, the Board
`
`may presume Google has known of each of the references well before any petition
`
`against the ’676 patent was first filed and has no explanation for its delay. And
`
`while Google presents several observations about the timing in the litigations
`
`(Petition, pp. 53-54), Google does not actually explain why it did not file a petition
`
`soon after learning of the references. And given Google’s disavowal of Microsoft
`
`and Marvell’s actions, nothing Microsoft or Marvell did prevented Google from
`
`
`
`1General Plastic factor 3 is neutral as no preliminary response or decision to
`
`institute was filed in a prior IPR prior to Google’s filing.
`
`-11-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`filing an IPR promptly after learning of the references. General Plastic factors 2,
`
`4, and 5 weigh in favor of exercising discretion to deny the Petition.
`
`General Plastic factors 2, 4, and 5 thus heavily weigh in favor of exercising
`
`discretion to deny the Petition.
`
`General Plastic Factors 6 and 7
`
`General Plastic factors 6 and 7 are directed to efficiency and the Board’s
`
`resources and are informed by the Board’s guidance 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 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.
`
`Trial Practice Guide Update, 26 (July 2019); Consolidated Trial Practice Guide
`
`(November 2019), 59.
`
`-12-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`The unnecessary burdens identified by the Board are certainly presented
`
`here. Google presents no argument that its petition would be an efficient way to
`
`evaluate the validity of claims 1, 2, and 9 in addition to the redundant challenges
`
`against these same claims. As noted above, Google does not even explain how its
`
`Petition differs from the prior challenges. See TomTom, Inc. v. Blackbird Tech,
`
`LLC, IPR2017-02025, Paper 7 at 15-17 (March 12, 2018) (noting that the Board is
`
`“mindful of the potential inequity of parties filing multiple petitions,” where
`
`Petitioner has “relie[d] on substantially similar references and analyses” and “[has]
`
`not shown sufficiently, how the [asserted] references are different enough to
`
`warrant institution”). With regard to claim 4, as noted above, this IPR would not
`
`resolve all of the Google’s stated challenges to the validity of claim 4. Denial of
`
`institution for this Petition is thus appropriate under the Board’s discretionary
`
`authority in 35 U.S.C. § 314(a).
`
`Moreover, given the delays in presenting its challenges, Google has all but
`
`assured that any IPR in this case will have a different schedule than any other IPR
`
`against the ’676 patent. The Board has already instituted IPR2019-01116 and set a
`
`schedule in that proceeding.
`
`For all these reasons, General Plastic factors 6 and 7, and factors 1, 2, 4, and
`
`5 heavily weigh in favor of exercising discretion to deny the Petition. No factor
`
`-13-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`supports Petitioner. Under these facts, the Board be well-within its discretion to
`
`deny the Petition. Google’s Petition should be denied.
`
`Discretion Under § 325(d)
`
`Despite six IPRs having been filed against the ’676 patent, rather than review
`
`each of the factors pertaining to § 325(d), the Petition states that it “is not redundant
`
`of Microsoft’s or Marvell’s petitions because (i) none challenges claim 4, and (ii)
`
`their unpatentability challenges are based on references not asserted here that
`
`disclose systems and methods that function differently from Petitioner’s prior art.”
`
`Pet. 53.
`
`The Board should weigh Petitioner’s lack of explanation in these
`
`circumstances against institution. See Medtronic, Inc. v. NuVasive, Inc., Case
`
`IPR2014-00487, slip op. at 6 (Paper 8) (Sept. 11, 2014) (informative) (denying
`
`institution, explaining in part that “[w]hile Petitioner argues that the grounds are not
`
`redundant to those instituted on in the ’506 Proceeding, Petitioner does not provide
`
`any specific reasoning to support that argument, other than to state that the grounds
`
`are based on different prior art references.”).
`
`Institution should be denied under § 325(d).
`
`
`
`-14-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`IV. 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.
`
`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
`
`radio system for wireless transmission of information was allowed to use
`
`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
`
`radio system is allowed to transmit. There was also provided so-called ISM
`
`frequency bands (Industrial Scientific Medical) where radio systems transmitted in
`
`the same frequency band but in accordance with different radio interface standards.
`
`’676 patent, column 1, lines 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
`
`-15-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`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. ‘676 patent, column 1, line 24 to column 2, line 10.
`
`According to the ’676 Patent, there is provided a method, a 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 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
`
`alternate use of the frequency band. This is based on the idea of providing a
`
`comprehensive standard exchange of implicit or explicit control information in
`
`systems that have the same radio transmission methods but different radio
`
`transmission protocols. This makes simple and efficient use possible of a radio
`
`channel via a plurality of radio interface standards. ‘676 patent, column 2, lines 14-
`
`28.
`
`-16-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`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
`
`forms a wireless network in accordance with a second radio interface standard. The
`
`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
`
`frequency band more effectively when the demand for transmission capability in
`
`accordance with the first and second radio standard varies. The control station may
`
`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
`
`controls the alternate access by the first wireless network and the second wireless
`
`network to the common frequency band. The control station receives requests for
`
`capacity from various stations and assigns capacity accordingly. The release of the
`
`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. ‘676 patent, column 2, line 36 to column 4, line 26.
`
`-17-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`The '676 Patent issued with five independent claims, namely claims 1, 6, 7,
`
`8, and 9. The text of challenged claims 1, 2, 4, and 9 is 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.
`
`
`
`2. The method as claimed in claim 1, herein the control
`
`station determines the respective duration in which the
`
`stations working in accordance with the second radio
`
`-18-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`interface standard are allowed to utilize the frequency
`
`band.
`
`
`
`4. The method as claimed in claim 2, wherein the
`
`duration of operation in accordance with the first and
`
`second radio interface standards is laid down only
`
`approximately while the respective standards are violated
`
`regularly or from time to time.
`
`
`
`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,
`
`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
`
`-19-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`the first radio interface standard do not request access to
`
`the frequency band.
`
`
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`Google’s formulation (Petition, p. 7) of the level of ordinary skill in the art is
`
`one of many petitioners have proposed across the various petitions challenging the
`
`’676 patent. Rather than attempt to synthesize and reconcile these different
`
`expressions at this stage of the proceeding, 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 Petitioner has
`
`not met its burden of showing that the cited references render any of the disputed
`
`claims of the ’676 patent obvious.
`
`VI. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`
`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,
`
`-20-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`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 ground of purported unpatentability:
`
`Ground References
`1
`Gardner in view of Marth and
`Balachandran
`
`
`
`35 U.S.C. §
`103
`
`Challenged Claim(s)
`1, 2, 4, 9
`
`A. Claim Construction—Performance of the “Renders” Portion of
`Claim 1 is Required
`
`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”). Nevertheless, a construction applied in the
`
`Institution Decision in IPR2019-01116, Paper 8, is addressed below.
`
`The Board in IPR2019-01116 construed the final “wherein” clause of claim
`
`1 to require two steps. Institution Decision, IPR2019-01116, Paper 8 at 16-17
`
`-21-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`(“we read the wherein clause of claim 1 as setting forth two steps, both carried out
`
`by the control station”). The Board, however, found the “renders” portion of claim
`
`1 to be conditional and that “the associated action need not be performed,” relying
`
`on Ex parte Schulhauser, Appeal No. 2013–007847 (PTAB April 28, 2016)
`
`(precedential).
`
`The Board erred when finding the “renders” portion of claim 1 need not be
`
`performed. First, the Board erred in finding Ex parte Schulhauser to be “binding
`
`authority.” Schulhauser was precedential as to the meaning of a condition under
`
`the broadest reasonable interpretation standard. Schulhauser, at 5-6. Under the
`
`Phillips standard, Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`
`banc), Ex parte Schulhauser is not binding. Also, the Board erred under the
`
`Phillips standard because reading the “renders” portion in a manner that does not
`
`require performance creates inconsistencies with the language of the claim and the
`
`specification. Claim 1 is directed to “alternate” control of a frequency band.
`
`Claim 1, for example, recites a “common frequency band that is provided for
`
`alternate use by a first and a second radio interface standard” and “a control
`
`station which controls the alternate use of the frequency band.” (emphasis added).
`
`And, as noted above, the specification discloses additional detail regarding the
`
`alternate control. But, if the rendering portion of claim 1 does not need to be
`
`-22-
`
`
`
`IPR2019-01541
`U.S. Patent No. 7,016,676
`
`
`performed, then claim 1 would not involve any alternate control at all, it would
`
`only require “access to the common frequency band for stations working in
`
`accordance with the first radio interface standard.” Thus, the “renders” portion of
`
`claim 1 cannot be disregarded as the control called for by this portion is required to
`
`be performed. A POSITA would interpret it as requiring rendering “the frequency
`
`band available for access by the stations working in accordance with the second
`
`radio interface,” with the understanding that the control station can only do so
`
`when “stations working in accordance with the first radio interface standard do not
`
`request access to the frequency band.” When provided with that meaning, the
`
`claim is consistent with the specification and remainder of the claim concerning
`
`the provision of alternate control.
`
`B.
`
`The Petition does not establish that Gardner alone or in view of
`Balachandran and/or Marth teaches “a control station which
`controls alternate use of the frequency band” as recited in Claims
`1 and
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
