Ex Parte 7027418 et al

Patent Trial and Appeal Board

Jan 19, 2018

95000648 (P.T.A.B. Jan. 19, 2018)

UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
951000,648 1012712011
29989 7590 01/19/2018
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEY ARD
FLOOR 12
SAN JOSE, CA 95113
7027418
UNITED STATES DEPARTMENT OF COMMERCE
V nited States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
52637-0027 7148
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01119/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04107)
UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,108 08/29/2012 7027418 52637-0027 8175
29989 7590 01/19/2018
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/19/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BANDSPEED, INC.
Patent Owner and Appellant

v.

CSR TECHNOLOGY INC. & MOTOROLA MOBILITY, LLC
Requesters and Respondents
____________

Appeal 2017-010093
Inter partes Reexamination Control 95/000,648 & 95/002,1081
United States Patent 7,027,418 B2
Technology Center 3900
____________

Before JAMES T. MOORE, JOHN A. JEFFERY, and PATRICK M.
BOUCHER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 These two reexamination proceedings were merged on January 10, 2013.
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Patent Owner requests rehearing of our decision dated September 11,
2017 (“Dec.”), where we affirmed-in-part the Examiner’s decision to reject
claims 2–18, 20–24, 28–78, 83–106, 108–110, 114–122, 125–434, 436–591,
and 593–598 in the above-identified inter partes reexamination. Request for
Rehearing filed October 11, 2017 (“Req. Reh’g”). For the reasons noted
below, we deny the request to modify our decision.
In the Request, Patent Owner contends that we misapprehended or
overlooked Patent Owner’s argument in its Appeal Brief that Schmidl2 does
not anticipate claims 2, 75, and 85 because Schmidl allegedly does not select
a communications channel to avoid or use in a reduced hopping sequence
(RHS) based on votes from plural participants. Req. Reh’g 1, 3–7.
Although Patent Owner acknowledges that plural RHS messages may be
received from plural participants in Schmidl, Patent Owner nonetheless
contends that this does not necessarily mean that a channel is selected based
on those received messages. Id. 6.
But as we indicated on page 37 of our earlier decision, Schmidl states
explicitly that one or more slave units can monitor the channels and send
RHS messages in column 4, lines 24 to 28. In other words, plural slave
units can monitor channels and send RHS messages—messages that are then
used as a basis to select channels as we indicated in our earlier decision. See
Dec. 37 (“That one or more slave units can monitor the channels and send
these preference-based messages, as described in column 4, lines 24 to 28,
means that a specified number of affirmative votes to use a channel via these

2 Schmidl and other previously-cited references are cited in full on pages 6
to 8 of our earlier decision. Therefore, we omit their full citations here for
brevity.
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messages would be received from plural participants, including slaves.”)
(emphasis in original).
In short, the import of Schmidl’s functionality in light of the
embodiment of column 4, lines 24 to 28 is that, in at least one scenario,
plural RHS messages can be received from plural slave units, and the
resulting channel selection would, therefore, be based on these plural
received messages. Because the bits in these messages correspond to
“votes” as we explained on pages 36 and 37 of our earlier decision, channel
selection would effectively be based on a specified number of affirmative
votes from plural participants in this scenario, namely those slave units that
send RHS messages in Schmidl’s column 4, lines 24 to 28.
To the extent that Patent Owner contends that Schmidl’s system is
necessarily limited to selecting channels based on only one received RHS
message from only one participant, despite acknowledging that RHS
messages may be received from plural participants (see Req. Reh’g 6), we
find such a contention unavailing given the above-noted scenario involving
plural slave units contemplated by Schmidl’s column 4, lines 24 to 28.
Patent Owner’s additional contention that our claim interpretation is
unreasonably broad (Req. Reh’g 1–2, 7–10) is likewise unavailing. First,
Patent Owner’s theory that we may have adopted a construction of selecting
a “set” of communications channels based on channel selection criteria that
allows the same channel to be selected multiple times in the same selected
set (Req. Reh’g 7) is, at best, speculative, for we did not articulate such a
construction in our decision—a fact that Patent Owner apparently
acknowledges. See Req. Reh’g 7 (acknowledging that this possible
construction is not clear from our decision).
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Nevertheless, under Patent Owner’s characterization, multiple RHSs
set up by multiple corresponding RHS messages sent from plural
participants in Schmidl would be a selected “set” of channels, and a channel
that has the “1” bit set in each received message would be affirmative votes
to use the channel as Patent Owner indicates. Req. Reh’g 7. Despite Patent
Owner’s contentions to the contrary, however, nothing in the claim nor the
Specification precludes this scenario when construing claims 2, 75, and 85
under their broadest reasonable interpretation in light of the Specification.
In reaching this conclusion, we recognize that the broadest reasonable
interpretation in light of the Specification is not whether the Specification
precludes some broad reading of the claim term adopted by the Examiner.
See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). Nor is
the broadest reasonable interpretation simply one that is not inconsistent
with the Specification. Id. at 1383. Rather, it is an interpretation that
corresponds with what and how the inventor describes his invention in the
Specification, that is, an interpretation consistent with the Specification. Id.
(citing In re Suitco Surface, Inc., 603 F.3d 1255, 1259–60 (Fed. Cir. 2010)).
To be sure, the above scenario is not described explicitly in the ’418
patent’s disclosure of the particular embodiments cited by Patent Owner.
See Req. Reh’g 8–9 (citing ’418 patent, col. 6, l. 1 – col. 9, l. 16; col. 16, ll.
23–59). Nevertheless, we find the above scenario reasonably consistent with
the Specification at least to the extent that it involves selecting a set of
channels based on a specified number of received affirmative votes, even
assuming, without deciding, that the same channel would or could be
selected plural times in this scenario as Patent Owner contends. In reaching
this conclusion, we emphasize that although the patent’s description of these
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particular embodiments informs our construction, this description is not
limiting, and we decline to import those embodiments into the claims. See
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)
(“[A]lthough the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to
those embodiments. . . . [C]laims may embrace different subject matter than
is illustrated in the specific embodiments in the specification.”) (citations
and internal quotation marks omitted).
That the ’418 patent states explicitly that (1) the present invention can
be practiced without the numerous “specific details” used to explain the
invention in column 5, lines 30 to 35, and (2) modifications and changes can
be made to the specific described embodiments without departing from the
broader spirit and scope of the invention in column 26, lines 17 to 23, only
further bolsters the notion that the claims are not limited to the specific
embodiments in the ’418 patent. The ’418 patent’s statement in column 26,
lines 22 and 23 that the specification and drawings are illustrative—not
restrictive—is telling in this regard.
Accordingly, we are not persuaded our interpretation was
unreasonably broad in our decision, nor are we persuaded that we
misapprehended or overlooked Patent Owner’s arguments raised in its
Appeal Brief in rendering our decision.

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CONCLUSION
For the foregoing reasons, we have granted Patent Owner’s request to
the extent that we have reconsidered our decision, but we deny the request
with respect to making any changes therein.
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37
C.F.R. §§ 90.1 and 1.983.

DENIED

Appeal 2017-010093
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PATENT OWNER:

HICKMAN PALEMERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113

THIRD PARTY REQUESTERS:

RATNER / PRESITIA –SB DIVISION
PO BOX 980
VALLEY FORGE, PA 19482

John S. Pratt, Esq.
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET, SUITE 2800
ATLANTA, GA 30309