Uniloc 2017 LLC

Patent Trials and Appeals Board

Feb 1, 2021

IPR2019-01350 (P.T.A.B. Feb. 1, 2021)

Trials@uspto.gov Paper 24
571-272-7822 Date: February 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MARVELL SEMICONDUCTOR, INC.
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.

IPR2019-01350
Patent 7,016,676 B2

Before JAMESON LEE, KEVIN F. TURNER, and
MICHELLE N. WORMMEESTER, Administrative Patent Judges.

LEE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background and Summary
Marvell Semiconductor Inc. (“Petitioner”) filed a Petition for inter
partes review of claims 3 and 6–9 (“challenged claims”) of U.S. Patent No.
7,016,676 B2 (Ex. 1001, “the ’676 patent”). Paper 2 (“Pet.”). We instituted
review on February 4, 2020. Paper 9 (“Decision on Institution”). Uniloc
2017 LLC (“Patent Owner”) filed a Patent Owner Response. Paper 13 (“PO
Resp.”). Petitioner filed a Reply. Paper 14. Patent Owner filed a Sur-
Reply. Paper 15. Oral hearing was held on November 12, 2020. A copy of
the hearing transcript has been entered into the record as Paper 23 (“Tr.”).
For reasons explained below, we conclude that Petitioner has proved
by a preponderance of the evidence that claims 3 and 9 of the ’676 patent are
unpatentable.
B. Real Parties-in-Interest
Petitioner identifies itself as the only real party-in-interest. Pet. 76.
Patent Owner identifies itself as the only real party-in-interest. Paper 6, 1.
C. Related Matters
The parties identify the following civil actions involving the
’676 patent:
Uniloc 2017 LLC v. Microsoft Corporation, No. 8:18-cv-01279
(C.D. Cal.);
Uniloc 2017 LLC v. Verizon Communications Inc., No. 2:18-
cv-00380 (E.D. Tex.);
Uniloc 2017 LLC v. AT&T Inc., No. 2:18-cv-00379 (E.D. Tex.);
Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-00448 (E.D.
Tex.);
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Uniloc 2017 LLC v. AT&T Services, Inc., No. 2:18-cv-00514
(E.D. Tex.);
Uniloc 2017 LLC v. Verizon Communications Inc., No. 2:18-
cv-00513 (E.D. Tex.);
Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-00495 (E.D.
Tex.); and
Uniloc 2017 LLC v. Microsoft Corporation, No. 8:18-cv-02053
(C.D. Cal.)
Pet. 76; Paper 6, 2; PO Resp. 10.
The ’676 patent also is the subject of five other inter partes review
proceedings: IPR2019-01116, IPR2019-01125, IPR2019-01349, IPR2019-
01541, and IPR2019-01550. A final written decision in IPR2019-01116 was
rendered on October 26, 2020. No inter partes review was instituted in
IPR2019-01125, IPR2019-01541, and IPR2019-01550. A final written
decision in IPR2019-01349 is rendered concurrently with this decision.
D. The ’676 patent
The ’676 patent “relates to a method of alternate control of radio
systems of different standards in the same frequency band.” Ex. 1001, 1:7–
9. For example, the two standards can be that of “US radio system
IEEE802.11a and the European ETSI BRAN HiperLAN/2.” Id. at 1:19–20.
“The two radio systems transmit in the same frequency bands between
5.5 GHz and 5.875 GHz with approximately the same radio transmission
method, but different transmission protocols.” Id. at 1:20–23.
Specifically, under either ETSI BRAN HiperLAN/2 or IEEE802.11a,
radio systems utilize the same radio transmission method, i.e., a 64-carrier
OFDM method and adaptive modulation and coding. Id. at 28–31.
However, the Medium Access Control (MAC) of the two systems is “totally
different.” Id. at 1:34–35. For these two standards, the frequency band “is
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comprised between 5.15 GHz and 5.825 GHz.” Id. at 5:35–37. The ETSI
BRAN HiperLAN/2 utilizes a centrally controlled reservation-based method
in which a radio station takes over the role of a central station coordinating
the radio resources. Id. at 1:35–38. That central radio station (Access Point,
AP) periodically signals the MAC frame structure. Id. at 1:38–41. Figure 1
shows a frame structure and is reproduced below:

Figure 1 shows the structure of the HiperLAN/2 MAC frame. Id.
at 4:45–46. “In a HiperLAN/2 system the central controller can be
controlled via the Access Point (AP) which periodically generates the MAC
frame and then transmits the data of the broadcast phase to individually
control the service quality (packet delay sending rate and so on) of
individual links.” Id. at 4:50–54. Figure 2 is a representation of access to a
radio channel according to the IEEE802/11a standard and reproduced below:
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Figure 2 shows the media access method in systems working in
accordance with the radio interface standard IEEE802.11a. Id. at 4:47–49.
The Specification describes the IEEE802.11a standard as follows:
The IEEE802.11a standard describes a CSMA/CA (Carrier
Sense Multiple Access/Collision Avoidance) method not based
on reservations, in which all the radio stations listen in on the
medium and assume that the channel is unused for a minimum
duration (Short InterFrame Space, SIFS) before 802.11a-MAC
frames, thus user data packets, are transmitted if necessary. The
method is highly suitable for self-organizing ad hoc networks,
but requires positive acknowledgements of all the packets.
Id. at 1:43–51. The Specification further describes the standard as follows:
FIG. 2 shows by way of example the sequence for media access
in accordance with IEEE802.11a. In accordance with a variant
of the standard a station is to then transmit an RTS packet (Ready
To Send) and wait for a CTS packet (Clear To Send) from the
addressed station before it is allowed to transmit user data. All
the other stations in the radio coverage area set a time monitoring
(Network Allocation vector, NAV) and do not transmit until the
addressed station has been sent an acknowledgment
(ACKnowledge, ACK).
Id. at 1:53–62.
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Figure 3 of the ’676 patent shows two networks and is reproduced
below:

Figure 3 illustrates two wireless local area networks in accordance
with a first radio interface standard and a second radio interface standard of
the ’676 patent. Id. at 4:43–44. The ’676 patent describes the standards as
follows:
A first wireless local area network comprises three stations
10, 11, and 12. These three stations 10, 11, and 12 work in
accordance with the first radio interface standard A, for
example, in accordance with the HiperLAN/2 standard.
A second wireless local area network includes four
stations 14, 15, 16, and 17. These four stations 14, 15, 16, and
17 work in accordance with the second radio interface standard
B, for example, in accordance with the IEEE802.11a standard.
Id. at 5:22–30 (emphases added). In both standards, the frequency band is
the same. Id. at 5:35–37.
Central control station 13 is provided which controls the alternate
access by the first wireless network and the second wireless network to the
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common frequency band. Id. at 5:39–41. The Specification describes the
alternate access control as follows:
[T]he station 13 sends a broadcast message to the stations 14 to
17 of the IEEE802.11a standard when the stations 10 to 12 do
not need transmission capacity. This broadcast message
preferably contains time information which informs the stations
14 to 17 of the IEEE802.11[a] standard how long they are
allowed to utilize the common frequency band.
If the stations 10 to 12 of the first wireless network are
HiperLAN/2 stations, the control station 13 preferably also
operates as the central control station (Access Point) of the
HiperLAN/2 network and co-ordinates its radio resources. In
HiperLAN/2 systems it is planned beforehand at what time the
stations are allowed to send. For this purpose the HiperLAN/2
systems have a central controller (Access Point, AP) which
receives the request for capacity from the various stations and
assigns capacity accordingly. The central station 13 is preferably
also provided for carrying out the function of the access point of
the HiperLAN/2 standard.
Id. at 5:42–63.
The Specification describes that the control station is provided “for
controlling the access to the frequency band for stations operating in
accordance with the first radio interface standard.” Id. at 2:63–67. The
Specification further describes that the control station is provided “for
releasing the common frequency band for access by stations operating in
accordance with the second radio interface standard, if stations operating in
accordance with the first radio interface standard do not request access to the
frequency band.” Id. at 3:7–13. According to the Specification, “the first
radio interface standard is given priority over the second radio interface
standard in this manner.” Id. at 3:13–15. The Specification states the
following: “In accordance with the invention a control station is provided
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which controls the alternate use of the common frequency band of the two
radio interface standards.” Id. at 2:45–47.
Each of claims 1 and 6–9 is independent. Claim 3 depends from
claim 1 and thus incorporates the limitations of claim 1. Claim 1 is not
challenged in this proceeding. Claims 1 and 6–9 are reproduced below:
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.
6. An interface-control protocol method for a radio
system which has at least one common frequency band that
is provided for alternate use by a first and a second radio
interface standard, the radio system comprising:
stations which operate in accordance with a first radio
interface standard and/or a second radio interface
standard, and
a control station which controls the alternate use of the
frequency band,
wherein the control station terminates the use of the radio
interface in accordance with the second radio interface
standard by transmitting in accordance with the first
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radio interface standard, without taking account of
resulting interference in stations working in
accordance with the second radio interface standard.
7. An interface-control protocol method for a radio
system which has at least one common frequency band that
is provided for alternate use by a first and a second radio
interface standard, the radio system comprising:
stations which operate in accordance with a first radio
interface standard and/or a second radio interface
standard, and
a control station which controls the alternate use of the
frequency band,
wherein the control station controls the access to the
common frequency band by stations working in
accordance with the first radio interface standard and
in that duration and type of control of the radio
interface in accordance with the second radio interface
standard is determined by a further station and
transmitted to the control station.
8. An interface-control protocol method for a radio
system which has at least one common frequency band that
is provided for alternate use by a first and a second radio
interface standard, the radio system comprising:
stations which operate in accordance with a first radio
interface standard and/or a second radio interface
standard, and
a control station which controls the alternate use of the
frequency band,
wherein the control station, in addition to functions in
accordance with the second radio interface standard,
also carries out functions which cause radio systems
in accordance with the second radio interface standard
to interpret the radio channel as interfered and to seize
another radio channel for its own operation.
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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 the first radio interface standard do
not request access to the frequency band.
Ex. 1001, 6:20–36, 6:56–8:26.
E. Evidence Relied on by Petitioner
Petitioner relies on the following references:1
References Date Exhibit
Sherman US Patent No. 7,031,274 B2 Issued Apr. 18, 2006;
Filed Jan. 1, 2002
Ex. 1004
Shellhammer US Patent No. 7,039,358 B1 Issued May 2, 2006;
Filed Nov. 16, 2000
Ex. 1005
Trompower US Patent No. 6,215,982 B1 Issued Apr. 10, 2001;
Filed June 28, 1996
Ex. 1006

1 The ’676 patent issued from Application No. 10/089,959, which is a
national phase application of International Application No.
PCT/EP01/09258 filed under the Patent Cooperation Treaty and 35 U.S.C.
§ 371 on Aug. 8, 2001. Ex. 1001, codes (21), (22), (86).
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References Date Exhibit
Panasik US Patent No. 6,643,278 B1 Issued Nov. 4, 2003;
Filed Dec. 28, 1999
Ex. 1015
Petitioner additionally relies on the Declaration of Sumit Roy, Ph.D.
(Ex. 1003).
F. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:
Claim(s) Challenged 35 U.S.C. §2 Basis
3, 6, 9 103 Sherman
8 103 Sherman, Trompower
3, 7, 9 102 Shellhammer
8 103 Shellhammer, Trompower
8 103 Shellhammer, Panasik
G. Effective Filing Date of the ’676 Patent
The ’676 patent issued from Application No. 10/089,959, which is a
national phase application of International Application No.
PCT/EP01/09258, filed on Aug. 8, 2001, under the Patent Cooperation
Treaty and 35 U.S.C. § 371. Ex. 1001, codes (21), (22), (86). No ancestral
foreign patent application with an earlier filing date is identified on the ’676
patent. However, Patent Owner asserts that “[t]he publication of the
International Application clearly shows the claim of priority to German

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
Because the challenged patent has an effective filing date prior to March 16,
2013 (Ex. 1001, codes (22), (63)), we refer to the pre-AIA versions of § 103.
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Application No. 100 39 532.5, with a filing date of August 8, 2000. Ex.
2001, Item (30).” PO Resp. 8. Patent Owner asserts that a foreign priority
claim was made during prosecution of the national phase application and
that the Examiner erroneously rejected the foreign priority claim on the basis
that a certified copy of the foreign application was not provided to the
Office. PO Resp. 8–10.3
Patent Owner concludes that “the priority claim should be accorded.”4
Id. at 10. The argument is misplaced. The record before us shows that the
Examiner denied the patent applicant’s foreign priority claim. Even if the
Examiner’s decision was incorrect, the time for Patent Owner to make
correction was during prosecution or in a reissue application, not here in an
inter partes review proceeding. The Examiner’s decision rejecting an
applicant’s foreign priority claim is not on review in this proceeding.
Further, even assuming that the Patent Owner successfully shows that
the Examiner erred in not accepting the applicant’s foreign priority claim,
that does not mean Patent Owner, in this proceeding, is automatically
entitled to the filing date of the foreign application. If Patent Owner wished
to challenge the prior art status of a reference, after Petitioner satisfied its
initial burden of production by saying the reference is prior art, Patent
Owner would then have to demonstrate, in this proceeding, that the

3 Patent Owner explains as follows: “Thus, as of the September 22, 2004,
mailing date of the first Office Action, the Examiner confirmed that the
International Bureau had provided some, and thus at least one, certified
copy. As only one certified copy could have been provided, given the single
priority claim, it is clear that the certified copy was provided by the
International Bureau.” PO Resp. 10.
4 If the ’676 patent is accorded the August 8, 2000 filing date of the German
Application, then that filing date pre-dates the applicable date of
Shellhammer, and Shellhammer cannot be applied as prior art.
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challenged claims indeed do satisfy the requirements of 35 U.S.C. § 119
with respect to the foreign application the priority of which it claims.5 Cf.
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–
1380 (Fed. Cir. 2015). Dynamic Drinkware stated that because the USPTO
does not examine priority claims unless necessary, the Board has no basis to
presume that a patent is necessarily entitled to the filing date of its
provisional application. Id. at 1380. Under the reasoning of Dynamic
Drinkware, the same would be true for a foreign application the priority of
which has been claimed. Patent Owner has made no substantive showing in
this proceeding of actual entitlement to the filing date of the German
Application, by satisfaction of all pertinent requirements of 35 U.S.C. § 119.
Accordingly, the effective filing date of the ’676 patent is August 8, 2001,
not the earlier filing date of German Application No. 100 39 532.5.
II. ANALYSIS
A. Principles of Law
To prevail in its challenge to Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence that the claims are
unpatentable.6 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). That burden never
shifts to the patentee. Dynamic Drinkware, 800 F.3d at 1378.

5 “[I]f the effective filing date of what is claimed in a United States
application is at issue, to preserve symmetry of treatment between sections
120 and 119, the foreign priority application must be examined to ascertain
if it supports, within the meaning of section 112, ¶ 1, what is claimed in the
United States application.” In re Gosteli, 872 F.2d 1008, 1011 (Fed. Cir.
1989).
6 The burden of showing something by a preponderance of the evidence
requires the trier of fact to believe that the existence of a fact is more
probable than its nonexistence before the trier of fact may find in favor of
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A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) when in evidence, objective
evidence of nonobviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).
B. Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, various factors
may be considered, including the type of problems encountered in the art,
prior art solutions to those problems, rapidity with which innovations are
made, sophistication of the technology, and educational level of active
workers in the field. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
“[E]very factor may not be present, and one or more factors may
predominate.” Id.
Petitioner asserts that the level of ordinary skill in the art is reflected
by one who “would have had a Bachelor’s Degree in Electrical Engineering,
Computer Science, or a related subject and one or more years of experience
working with wireless networks and related standards, and would have had

the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
7 Patent Owner has not presented any objective evidence of nonobviousness
or any argument in that regard.
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an understanding of work within the field of wireless networks and related
standards, including, e.g., systems or protocols for shared access of wireless
networks by different protocols.” Pet. 11 (citing Ex. 1003 ¶¶ 62–63). Patent
Owner states that it “does not offer a competing definition for [a] POSITA
[person of ordinary skill in the art].” PO Resp. 11.
We have no reason to disagree with Petitioner’s articulation of the
level of ordinary skill, which is supported by the testimony of Dr. Roy (Ex.
1003 ¶¶ 62–63), except to note that the open-ended qualifier “or more” as
applied to years of experience expands the level to encompass that of an
expert, which is inappropriate for the level of “ordinary skill.” Petitioner’s
articulation without the expansive qualifier appears consistent with what is
reflected by the content of the applied prior art references. Cf. Okajima v.
Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art
may reflect an appropriate level of skill). Therefore, we adopt the
Petitioner’s articulation of the level of ordinary skill, but without the
expansive qualifier “or more” as applied to the amount of experience.
C. Claim Construction
For petitions filed on or after November 13, 2018, we use the same
claim construction standard that would be used to construe the claim in a
civil action under 35 U.S.C. § 282(b), including construing the claim in
accordance with the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent. See 37 C.F.R. § 42.100 (2019). The Petition here
was filed on July 22, 2019. Paper 2. We apply the claim construction
standard from Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc).
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Claim terms are generally given their ordinary and customary
meaning as would be understood by one with ordinary skill in the art in the
context of the specification, the prosecution history, other claims, and even
extrinsic evidence including expert and inventor testimony, dictionaries, and
learned treatises, although extrinsic evidence is less significant than the
intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
dispositive, and it is the single best guide to the meaning of a disputed term.
Id. at 1315.
The specification may reveal a special definition given to a claim term
by the patentee, or the specification or prosecution history may reveal an
intentional disclaimer or disavowal of claim scope by the inventor. Id.
at 1316. If an inventor acts as his or her own lexicographer, the definition
must be set forth in the specification with reasonable clarity, deliberateness,
and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1249 (Fed. Cir. 1998). The disavowal of claim scope, if any, can be
effectuated by language in the specification or the prosecution history. Poly-
America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016). “In
either case, the standard for disavowal is exacting, requiring clear and
unequivocal evidence that the claimed invention includes or does not include
a particular feature.” Id.
Only those claim terms that are in controversy need to be construed,
and only to the extent necessary to resolve the controversy. Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017
(Fed. Cir. 2017).

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“stations which operate in accordance
with a first radio interface standard
and/or a second radio interface standard”
Claims 1, 6, 7, 8, and 9 each recite “stations which operate in
accordance with a first radio interface standard and/or a second radio
interface standard.” Ex. 1001, 6:24–26, 6:60–62, 7:8–10, 7:24–26, 8:12–14.
Although Petitioner asserts that no construction is necessary for this phrase
and that the plain and ordinary meaning applies, Petitioner nonetheless
proposes that the phrase, according to its plain and ordinary meaning, means
“stations, each of which operates in accordance with a first radio interface
standard, a second radio interface standard, or both.” Pet. 13–14 (emphasis
omitted). Patent Owner asserts that no construction is necessary. PO Resp.
14. Regarding Petitioner’s articulation of the plain and ordinary meaning of
the phrase, Patent Owner has not refuted it in any way, and it appears
consistent with what the phrase ostensibly indicates. Thus, on the record
before us, we accept and adopt Petitioner’s articulation of the plain and
ordinary meaning for this phrase.
“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”
Claims 1 and 9 each recites: “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.” Ex. 1001,
6:32–36, 8:21–25. For this phrase, Petitioner asserts that “claim
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construction is not necessary.”8 Pet. 14. Patent Owner, likewise, “submits
that the Board need not construe this claim term.” PO Resp. 14. We agree
with the parties that express claim construction of this claim term is not
necessary. Although no additional discussion is necessary, we point out
certain inaccuracies in the Patent Owner Response, to avoid potential
confusion.
Patent Owner states that “the Board should not adopt Petitioner’s
proposed construction.” PO Resp. 14. Patent Owner articulates what it
asserts is Petitioner’s proposed construction and the basis for that
construction, and then attempts to refute it. Id. at 15–17. These arguments
need not be addressed, because Petitioner has not proposed a construction
for this claim term or argued that any particular construction should be
adopted. Both parties indicate that no construction is necessary. Pet. 14; PO
Resp. 14.
“wherein the control station, in addition
to functions in accordance with the second
radio interface standard, also carries
out functions which cause radio systems
in accordance with the second radio interface
standard to interpret the radio channel as
interfered and to seize another
radio channel for its own operation”
Claim 8 recites “wherein the control station, in addition to functions in
accordance with the second radio interface standard, also carries out

8 Petitioner additionally refers to the construction proposed by Microsoft
Corporation in IPR2019-01116 and to what it believes Patent Owner has
alleged in related district court litigation, but does not express agreement or
disagreement with either. Pet. 15. Petitioner’s position for this claim term
simply is that claim construction is unnecessary. Petitioner has not proposed
a construction for the Board to adopt.
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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.” Ex. 1001, 8:1–6. We address
the meaning of this recitation below, within the focused analysis for claim 8,
where better context is provided.
the steps within method claims 3, 6, and 7
We need not make any express construction here, except to identify
what step or steps are required by the methods of claims 3, 6, and 7.
1. The Steps within the Method of Claim 3
Claim 3 depends from claim 1, and thus we begin by determining
what steps are within independent claim 1.
Claim 1 begins with the recitation “[a]n interface-control method for a
radio system” but follows only with recitations of the components of the
radio system and a “wherein” clause that sets forth what the control station
does in certain circumstances. Ex. 1001, 6:20–36. We recognize claim 1 as
a method claim, but no step or steps within the method are facially evident.
We resort to the Specification for clues on how to read this claim.
Notably, claim 1 first recites two types of components of a radio
system: (1) stations and (2) a control station. Id. Next, in a wherein clause
following the paragraphs defining these two types of components, the claim
recites that “the control station controls . . . and—renders . . . .” Id. at 6:29–
36. Corresponding disclosure in the Specification relating to the two actions
included in the wherein clause reads as follows:
[T]he control station is provided, on the one hand, for
controlling the access to the frequency band for stations
operating in accordance with the first radio interface standard.
If the first radio interface standard is, for example, the
HiperLAN/2 standard, the control station performs the function
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of the central controller (Access Point AP) in accordance with
this standard. In that case the stations of the HiperLAN/2
standard send a request for capacity to the control station and the
control station allocates transmission capacity to each respective
station.
On the other hand, the control station is provided in an
advantageous embodiment of the invention . . . for releasing the
common frequency band for access by stations operating in
accordance with the second radio interface standard, if stations
operating in accordance with the first radio interface standard
do not request access to the frequency band. . . . The release of
the common frequency band for the second radio interface
standard may be effected, for example, explicitly by the sending
of control information to the stations of the second radio interface
standard.
Ex. 1001, 2:63–3:19 (emphases added). This portion of the Specification
describes a control station “provided” for carrying out the two functionalities
named in the wherein clause. It reflects a step-like disclosure that is outside
of merely defining what a component does, and it corresponds readily to the
functionalities included within the wherein clause of claim 1.
In light of the Specification, as noted above, we read the wherein
clause of claim 1 as setting forth two steps, both carried out by the control
station: (1) “controls access to the common frequency band for stations
working in accordance with the first radio interface standard,” and
(2) “renders the frequency band available for access by the stations working
in accordance with the second radio interface standard if stations working in
accordance with the first radio interface standard do not request access to the
frequency band.” That is consistent with how Petitioner has applied the
prior art to claim 1, although Petitioner has not expressly articulated these
specific steps.
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We recognize that the written description is not a substitute for claim
language and cannot be used to rewrite the claim language, and that it is
important not to import into a claim limitations that are not a part of the
claim. SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875
(Fed. Cir. 2004). That is not the case here. Rather, we simply look to the
written description to determine how the claim language is properly read in
light of that written description, reasonably, to set forth the steps of the
claimed method. See id.
Claim 3 additionally recites “wherein the control station sends a
broadcast signal informing the stations of a time duration in which the
common frequency band can be used by stations working in accordance with
the second radio interface standard.” Ex. 1001, 6:41–45. We read this
limitation as adding a third step, also performed by the control station, of
sending a broadcast signal informing the stations of a time duration in which
the common frequency band can be used by stations working in accordance
with the second radio interface standard.
2. The Step within the Method of Claim 6
Claim 6 is similar to claim 1, except for the wherein clause. The
wherein clause of claim 6 recites “wherein the control station terminates the
use of the radio interface in accordance with the second radio interface
standard by transmitting in accordance with the first radio interface standard,
without taking account of resulting interference in stations working in
accordance with the second radio interface standard.” Ex. 1001, 6:65–7:3.
We read this language as setting forth a step, performed by the control
station, of “terminating the use of the radio interface in accordance with the
second radio interface standard by transmitting in accordance with the first
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radio interface standard, without taking account of resulting interference in
stations working in accordance with the second radio interface standard.”
3. The Step within the Method of Claim 7
Claim 7 is similar to claim 1, except for the wherein clause. The
wherein clause of claim 7 recites “wherein the control station controls the
access to the common frequency band by stations working in accordance
with the first radio interface standard and in that duration and type of control
of the radio interface in accordance with the second radio interface standard
is determined by a further station and transmitted to the control station.” Id.
at 7:13–19. We read this language as setting forth a step, performed by the
control station, of “controlling the access to the common frequency band by
stations working in accordance with the first radio interface standard and in
that duration and type of control of the radio interface in accordance with
the second radio interface standard is determined by a further station and
transmitted to the control station.”
We made the same identification of steps for claims 3, 6, and 7 in the
Decision on Institution. Paper 9, 18–21. Post institution of trial, neither
party has argued that this reading of claims 3, 6, and 7 is incorrect.
D. Alleged Unpatentability of Claims
3, 6, and 9 as Obvious over Sherman
1. Prior Art Status of Sherman
The filing date of Sherman is January 1, 2002. The effective filing
date of the ’676 patent, as determined above, is August 8, 2001. Sherman is
not an applicable prior art reference unless its effective filing date is the date
of its ancestral Provisional Application No. 60/261,935, January 16, 2001.
Ex. 1004, code (60). The Federal Circuit has stated that “because the PTO
does not examine priority claims unless necessary, the Board has no basis to
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presume that a reference patent is necessarily entitled to the filing date of its
provisional application.” Dynamic Drinkware, 800 F.3d at 1380. Further,
because the effective filing date of the ’676 patent, August 8, 2001, is prior
to the filing date of Sherman, January 1, 2002, it is Petitioner who bears the
burden of production to prove that, under 35 U.S.C. § 119(e)(1), Sherman
was entitled to the benefit of the filing date of its provisional application
which was filed on January 16, 2001. Ex. 1004, code (60). See id.
“A reference patent is only entitled to claim the benefit of the filing
date of its provisional application if the disclosure of the provisional
application provides support for the claims in the reference patent in
compliance with § 112, ¶ 1.” Dynamic Drinkware, 800 F.3d at 1381. In its
Petition, Petitioner made no such showing for any claim in Sherman.
During oral hearing, when the panel inquired counsel for Petitioner with
regard to this issue, counsel for Petitioner responded with four arguments.
First, counsel for Petitioner referred to paragraph 120 of Dr. Roy’s
Declaration (Ex. 1003) as establishing that the Sherman provisional
application contains the same material as that in Sherman which Petitioner
has relied on in the Petition. Tr. 20. That argument is non-responsive,
because the Petition relies on Sherman to account for the claims of the ’676
patent, not to account for any claim in Sherman.
Second, counsel for Petitioner argued that what was discussed in the
Sherman provisional application was Sherman’s invention and thus it is
“implicit” that the Petition discusses that the disclosure of the Sherman
provisional application supports the Sherman claims. Id. at 21–22. We
disagree. From the Petition, it is entirely unknown which claim or claims is
supported by the disclosure of the Sherman provisional application and why.
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It simply cannot be assumed that any Sherman claim is supported by the
disclosure of the Sherman provisional application.
Third, counsel for Petitioner invited the Board to look at claim 1 of
Sherman and see for ourselves that the disclosure of the Sherman provisional
application, discussed by Dr. Roy, indeed supports Sherman claim 1. Id.
at 20–21. This effort is way too late. Oral hearing is not a time to introduce
arguments not previously presented in the parties’ submissions. See
Consolidated Trial Practice Guide (November 2019) 85–86, accessible at
https://www.uspto.gov/TrialPracticeGuideConsolidated. Further, how the
disclosure of the Sherman provisional application supports a Sherman claim
has to be alleged and explained to us by Petitioner. Asking the Board to
determine this on its own does not carry Petitioner’s burden of persuasion.
Finally, counsel for Petitioner argues that Patent Owner did not raise
the issue in the Patent Owner Response and thus should be deemed as
having been waived. Tr. 23. Counsel for Petitioner notes that the
Scheduling Order (Paper 10) states that arguments not raised in the Patent
Owner Response may be deemed waived. Id. Whether or not Patent Owner
raised the issue, Petitioner bears the burden of production that Sherman is
entitled to the earlier filing date of its provisional application, because the
effective filing date of the ’676 patent is prior to the actual filing date of
Sherman. The Scheduling Order uses the language “may be deemed
waived” by Patent Owner, but does not preclude the Board from addressing
the matter.
For the foregoing reasons, Sherman as a prior art reference is not
entitled to the date of its Provisional Application No. 60/261,935,
January 16, 2001. The applicable date of Sherman as a prior art reference is
its actual filing date, January 1, 2002. The effective filing date of the ’676
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patent, as determined above, is August 8, 2001. Consequently, Sherman
cannot be applied as prior art against any claim in the ’676 patent.
For completeness on judicial review, we continue with the substantive
analysis of the obviousness ground of unpatentability of claims 3, 6, and 7
over Sherman, assuming that Sherman is applicable prior art.
2. Overview of Sherman
Sherman discloses a data transmission system using a common
channel shared by devices operating under two different interface standards,
i.e., “802.11a standard” and “HIPERLAN/2 standard.” Ex. 1004, Abstr.,
1:12–17. Sherman discloses that both the 802.11a standard and the
HIPERLAN/2 standard work with frequencies between 5 and 6 GHz. Id.
at 1:36–42. Sherman describes that many situations exist where wireless
local area networks operating under the 802.11a standard must substantially
coexist with wireless local area networks operating under the HIPERLAN/2
standard, and that contention collisions are frequent. Id. at 1:50–53.
Sherman states that the contention collisions must be resolved if the two
wireless local area networks are to operate without interference in close
proximity to each other. Id. at 1:53–55.
Sherman asserts that previously a method has been proposed to
support interoperation of these two standards by use of a super-frame
structure including an 802.11a standard phase and a HIPERLAN/2 phase.
Id. at 1:56–65. However, Sherman indicates that method has drawbacks in
that it presumes the terminals operating under the 802.11a standard can be
prevented from transmitting during the HIPERLAN/2 phase. Id. at 2:1–5.
According to Sherman, “[c]urrently, no mechanism exists within the 802.11a
standard to allow” that preclusion. Id. at 2:5–7.
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Sherman proposes a mechanism, “in a transmission channel shared by
802.11 systems and HIPERLAN/2 systems,” “to prevent 802.11 terminals
from transmitting during time periods allocated to ‘HIPERLAN,’”
so that a single channel can be shared between devices operating under
different standards. Id. at 2:11–15. Specifically, a super-frame format is
used wherein HIPERLAN transmissions are made within the Contention
Free Period (“CFP”) of the 802.11a standard and given “the highest level of
protection possible.” Id. at 2:15–19.
Sherman notes that WLANs are accessed through stations that operate
as access ports (AP). Id. at 3:3–4. Sherman refers to such a station/access
port as “STA/AP.” Id. at 3:15–23. A terminal is referred to as a station or
“STA.” Id. at 3:24–35. Sherman explains that “802.11 STAs have a
mechanism called the Network Allocation Vector (NAV) that can be set to
prevent the STA from transmitting.” Id. at 3:29–31. Sherman proposes a
solution as shown in Figure 5, reproduced below:

Figure 5 is an illustration of Sherman’s proposed super-frame structure “for
permitting interoperability between 802.11a WLANS and HIPERLAN
WLANS.” Id. at 2:33–36.
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The super-frame structure shown in Figure 5 allows 802.11a stations
(STA and P) to share a single channel with HIPERLAN/2 stations. Id. at
3:62–66. “HIPERLAN/2 transmission occurs within the HIPERLAN/2
phase that is buried within the Contention Free Period (CFP) of 802.11. The
CFP occurs with a regular period, and all 802.11 terminals set their NAV’s
during the CFP.” Id. at 3:66–4:3.
“B” stands for CFP_Beacon and it starts a CFP. Id. at 4:8. The super-
frame includes three phases, and the first consists of the CFP_Beacon,
802.11 Broadcast, and 802.11 CFP. Id. at 4:12–17. The second is called the
“HIPERLAN/2 phase” for HIPERLAN/2 transmissions, and the third starts
from “E” (meaning “CF_End” signifying end of Contention Free Period
(Fig. 5; Ex. 1004, 5:49)) to the end of the super-frame, including the
Contention Period of 802.11a (“802.11 CP”). Id. at 4:20–22. From the
perspective of a terminal operating under the 802.11a standard, however, the
entire duration from “B” to “E” is considered “the 802.11 CFP,” i.e., the
Contention Free Period of the 802.11a standard. Id. at 4:23–26, 5:34–36.
As shown in Figure 5 above, the H/2 MAC-frames represent
HIPERLAN/2 transmissions and they occur during a portion “of the 802.11
CFP.” Id. at 5:48–52. Sherman describes that “802.11 terminals” are
prevented from transmitting during time periods allocated to “HIPERLAN.”
Id. at 2:11–14. Sherman describes that “during the CFP, all 802.11 stations
will remain quiet until CFP max Interval.” Id. at 5:14–15. Sherman
describes that the NAV, if set in a station, keeps the station from
transmitting, id. at 3:29–31, and that “all 802.11 terminals set their NAV’s
during the CFP.” Id. at 4:2–3. And then, to relinquish time to Contention
Period CP, when signal “E” is sent, “all terminals automatically reset their
NAV’s.” Id. at 6:6–8. “[B]y embedding HIPERLAN/2 transmissions
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within the contention free period of the 802.11a format both systems operate
[without] interference to/from each other.” Id. at 5:63–65.
3. Claim 3
As noted above, Petitioner has not shown Sherman to be applicable
prior art. Thus, Petitioner has not proved by a preponderance of the
evidence that claim 3 would have been obvious over Sherman. For
completeness on judicial review, we provide a substantive analysis of claim
3, assuming that Sherman is applicable prior art.
Claim 3 depends from claim 1, and thus we begin by discussing the
limitations incorporated from claim 1.
Claim 1 recites “[a]n 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.” Ex. 1001,
6:20–23. Claim 1 further recites that the radio system comprises “stations
which operate in accordance with a first radio interface standard and/or a
second radio interface standard.” Id. at 6:24–26.
We agree with Petitioner’s assertion (Pet. 20–23) that Sherman
discloses 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 radio interface standard and a second radio interface standard, and that
Sherman discloses stations which operate in accordance with a first radio
interface standard and/or a second radio interface standard. In that regard,
Patent Owner has not presented arguments which contend otherwise.
Petitioner asserts that Sherman contains numerous disclosures of a
radio system with a transmission channel shared by 802.11 systems and
HIPERLAN/2 systems and that Sherman addresses the situation where
HIPERLAN/2 and IEEE 802.11 utilize at least one common frequency band
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between 5 and 6 GHz. Pet. 21 (citing Ex. 1004, 1:36–42, 2:11–19, 2:53–61,
3:62–66; Ex. 1003 ¶¶ 138–39). The assertion is supported by the disclosure
of Sherman as well as the cited testimony of Dr. Roy. For instance, as
discussed above, HIPERLAN/2 transmission occurs within the
HIPERLAN/2 phase within the Contention Free Period of 802.11. Ex. 1004,
3:66–4:3. During that time, the NAV is set in all 802.11 terminals, which
prevents the 802.11 terminals from transmitting. Id. at 2:11–14, 3:29–31,
4:2–3. Later, the signal E is sent, automatically resetting the NAVs and
relinquishing time to Contention Period CP, during which the 802.11
terminals are free to transmit. Id. at 3:54–56, 6:6–8.
Petitioner identifies Sherman’s stations 111, 113, and 115 as stations
which operate under the first radio interface standard, i.e., HIPERLAN/2,
and/or under the second radio interface standard, i.e., 802.11a. Pet. 21–23
(citing Ex. 1004, 2:52–3:14; Ex. 1003 ¶¶ 143, 145). The assertion is
supported by the cited disclosure of Sherman as well as the cited testimony
of Dr. Roy. For instance, Mr. Roy testifies that in Sherman IEEE 802.11a
and HIPERLAN/2 WLANs operate on close proximity, and that Sherman
depicts these WLANs with a mixture of IEEE 802.11 and HIPERLAN/2
stations. Ex. 1003 ¶ 145.
Claim 1 further recites that the radio system comprises “a control
station which controls the alternate use of the frequency band.” Ex. 1001,
6:27–28. For reasons discussed below, we are persuaded by Petitioner that
Sherman discloses a control station which controls the alternate use of the
frequency band. In that regard, Patent Owner has not presented arguments
contending otherwise.
Petitioner identifies Sherman’s “Access Point,” also referenced as
“access port” or merely “AP,” as the claimed control station. Pet. 23–24
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(citing Ex. 1004, 2:62–3:14; Ex. 1003 ¶¶ 150–151). Petitioner explains that
Sherman begins and ends its discussion of its embodiments by describing
how a hybrid AP controls 802.11a and HIPERLAN/2 traffic, including the
periods they are allowed to access the channel. Id. (citing Ex. 1004, 3:57–
61, 5:66–67; Ex.1003 ¶ 152). Sherman refers to an AP which supports two
standards as a “hybrid AP.” Ex, 1004, 3:13–14.
As to alternate use, Petitioner notes that Sherman provides exclusive
access for HIPERLAN/2 transmissions by scheduling them during the IEEE
802.11 contention free period, when IEEE 802.11 stations have their NAVs
set to prevent them from transmitting. Id. at 24 (citing Ex. 1004, 2:17–19).
As shown in Figure 5 of Sherman, the super-frame controls the alternate use
through the “B” and “E” signal frames. As to a common frequency band,
Petitioner points out, relying on Dr. Roy’s testimony, that Sherman discloses
alternate use of a channel within a common frequency band. Id. at 26 (citing
Ex. 1003 ¶ 168). Indeed, Sherman discloses that a single channel is shared
between the 802.11 standard and the HIPERLAN/2 standard. Ex. 1004,
Abstr., 2:11–15.
We are persuaded that Sherman’s hybrid AP controls the alternate use
of the frequency band between HIPERLAN/2 stations and 802.11a stations,
thus satisfying claim 1’s recitation of “a control station which controls the
alternate use of the frequency band.”
Claim 1 further recites a wherein clause which, as explained above in
Section II.C., sets forth two steps:
(1) controls access to the common frequency band for
stations working in accordance with the first radio interface
standard, and
(2) renders the frequency band available for access by the
stations working in accordance with the second radio interface
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standard if stations working in accordance with the first radio
interface standard do not request access to the frequency band.
For reasons discussed below, we are persuaded by Petitioner that
Sherman satisfies step (1) but not step (2). For step (1), Petitioner explains
as follows:
Sherman teaches a Hybrid AP that supports HIPERLAN/2 and
controls access for HIPERLAN/2 stations by determining when
they are allowed to access the band, including the time and
duration of the HIPERLAN/2 phase of the super frame. See
supra, Element [1c]. The Hybrid AP further controls access
through HIPERLAN/2’s reservation system where stations must
request access to the band from the AP. Ex. 1003 ¶ 170.
Pet. 28. Petitioner’s assertions are supported by the cited testimony of
Dr. Roy. Ex. 1003 ¶ 170. Also, Sherman describes that HIPERLAN/2
transmissions occur during a portion of the 802.11 CFP. Ex. 1004, 5:50–
52. As discussed above, Sherman’s hybrid AP sets the maximum length or
duration of the contention free period CFP within the 802.11a protocol,
between frames “B” and “E.” Id. at 5:40–57. Patent Owner does not present
any contrary argument with regard to this step (1) limitation.
For step (2), Petitioner asserts as follows:
Sherman gives priority to HIPERLAN/2 by reserving
“very close to the full length of the superframe” for the CFP and
then “relinquish[ing] time” for 802.11 CP access. See Ex. 1004,
6:1–8; Ex. 1003 ¶175. With enough traffic, HIPERLAN/2 could
effectively occupy the entire superframe, precluding 802.11a
access. See id. If no HIPERLAN/2 transmissions are requested,
the AP may send the CFP at any point—it does not need to wait
until the CFP max length. See Ex. 1004, Figure 5, 5:47-57
(“[T]he CF-End management frame [is] shown occurring at less
than the maximum”); Ex. 1003 ¶¶174-176.
Pet. 29–30. Petitioner further asserts as follows:
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It would have been obvious that when no HIPERLAN/2 stations
request access during the CFP, the Hybrid AP does not allocate
time for non-existent HIPERLAN/2 frames and instead ends the
HIPERLAN/2 phase, as Sherman teaches, by sending a CF-End
frame, thereby rendering the channel available for access [by]
IEEE 802.11 stations during the subsequent 802.11a CP phase.
See Ex. 1004, 6:6-8, 5:47-57, Figure 5; Ex. 1003 ¶¶174-176.
Otherwise, bandwidth would be wasted in a HIPERLAN/2 phase
where no HIPERLAN/2 transmissions exist and the channel
remains unused. See id.
Pet. 30.
Petitioner’s declarant, Dr. Roy, further testifies as follows:
Sherman teaches ending the HIPERLAN/2 phase (by sending a
CF_End frame) if there are no pending HIPERLAN/2 requests.
Sherman’s protocol does not rely on a fixed duration for the
HIPERLAN/2 and 802.11a phases. Instead, Sherman gives
priority to HIPERLAN/2 by reserving nearly “very close” to the
full superframe for HIPERLAN/2 CFP—a POSITA would have
understood this to include effectively the entire superframe if
there is sufficient HIPERLAN/2 traffic—and then
“relinquish[es]” time to 802.11 CP access if no HIPERLAN/2
transmission requests are pending. See Ex. 1004, 6:1-8.
Sherman teaches that “[t]he HIPERLAN/2 phase is viewed by
802.11 terminals as part of the CFP,” whose maximum should be
“optimally set very close to the full length of the superframe.”
See Ex. 1004, 6:1-6. Thus, if there is sufficient HIPERLAN/2
traffic, Sherman teaches that the HIPERLAN/2 phase may be
extended to very close to the entire superframe (CFP max length),
which effectively could occupy the whole superframe leaving
insufficient time for 802.11 CP access, thereby precluding access
by 802.11a stations.
Ex. 1003 ¶ 175 (emphasis added).
Patent Owner argues that Sherman never teaches or suggests any
mechanism and/or technique for first determining whether or not any
HIPERLAN/2 stations are requesting access to the frequency band, and then
allocating time for use by the 802.11 stations based on this determination.
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PO Resp. 20–21. We understand Patent Owner to be arguing that Sherman
does not teach or suggest first determining whether or not any HIPERLAN/2
stations are requesting access to the frequency band, and then allocating time
for use by the 802.11 stations based on this determination, and not that
Sherman teaches that sequence of actions but just not the means to perform
them.
We are unpersuaded by Petitioner’s arguments as to step (2). We find
insufficient disclosure in Sherman to support Petitioner’s contentions. In
essence, Petitioner is contending that Sherman’s CFP period has a variable
duration which is automatically adjusted depending on whether all of the
pending requests from HIPERLAN/2 stations have been serviced. The
assertion is not supported by sufficient evidence. Similarly, we are not
persuaded that that would have been suggested by Sherman to one with
ordinary skill in the art.
First, Sherman describes that “during the CFP, all 802.11 stations will
remain quiet until CFP max Interval regardless of whether the channel is
occupied by a known signal.” Ex. 1004, 5:14–16. That indicates the CFP
interval during which the 802.11 stations stay quiet is not automatically
shortened when no HIPERLAN/2 stations request access or if all pending
HIPERLAN/2 requests have been serviced. Second, Sherman discloses
potentially setting the CFP “very close to the full length of the superframe,”
without any reference to whether or how many HIPERLAN/2 stations are
requesting access to the frequency band. Ex. 1004, 6:5–6. That indicates
the CFP duration or interval is preset and not based on how many
HIPERLAN/2 stations are requesting access to the frequency band.
Third, the disclosure lacks any teaching of determining whether or
how many HIPERLAN/2 stations are requesting access to the frequency
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band, or terminating the CFP interval, already set to a longer period, early
based on such determination. Fourth, Sherman describes that “[t]he CFP
occurs with a regular period.” Id. at 4:1–2. Without any disclosure that in
the absence of pending HIPERLAN/2 requests, Sherman would cut short or
prematurely terminate the already established CFP interval, the fact that
Sherman operates in that manner cannot be assumed. Similarly, we are not
persuaded that the same would have been suggested by Sherman to one with
ordinary skill in the art.
With regard to Dr. Roy’s testimony cited by Petitioner, it is not
supported by the underlying disclosure of Sherman. Dr. Roy in
paragraph 175 of his Declaration (Ex. 1003) cites to column 4, lines 1–8, of
Sherman, which states: “The CFP occurs with a regular period, and all
802.11 terminals set their NAV’s during the CFP. To realize such a super
frame the following sequence of frames/phases can be used as shown in the
graph of FIG. 5.” Ex. 1004, 4:1–5. This disclosure does not indicate, as
Dr. Roy concludes, that the control station “relinquish[es]” time to 802.11
CP access if no HIPERLAN/2 transmission requests are pending. Ex. 1003
¶ 175. We also find unpersuasive Dr. Roy’s testimony that if there is
sufficient HIPERLAN/2 traffic, Sherman teaches that the HIPERLAN/2
phase may be extended to very close to the entire superframe. Id. As
discussed above, in Sherman, the CFP already is preset, without regard to
whether or how many HIPERLAN/2 requests are pending. Ex. 1004, 6:5–6.
Dr. Roy’s conclusion is not supported by the disclosure of Sherman and also
is not adequately explained.
In its Reply, Petitioner expressly reiterates its position that in Sherman
the CFP interval is variable in length. Paper 14, 12. Petitioner refers to
Sherman’s Figure 5 and asserts that Figure 5 shows the CFP period ending
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early at “E” prior to reaching its maximum length. Id. at 12–15. Petitioner
asserts that in Sherman the CFP is not the same as its maximum length, and
that Sherman teaches setting CFP’s maximum length, not the CFP, “very
close to the full length of the superframe.” Id. at 14. Petitioner’s
explanation is just one way to read Figure 5. Another way to read Figure 5
is that the selectable maximum length of the CFP, as represented by the
uppermost bar in Figure 5, occupies a span that can get close to the end of
the superframe, and that the actual selected maximum length of the
superframe, as shown in Figure 5’s embodiment, is at the location
corresponding to “E.”
The reading urged by Petitioner is not consistent with Sherman’s
express disclosure that “during the CFP, all 802.11 stations will remain quiet
until CFP max Interval regardless of whether the channel is occupied by a
known signal.” Ex. 1004, 5:14–16. That description indicates the CFP
interval during which the 802.11 stations stay quiet is not automatically
shortened when no HIPERLAN/2 stations request access or if all pending
HIPERLAN/2 requests have been serviced. Rather, it indicates the 802.11
stations would stay quiet for the entire duration of the CFP up to the selected
maximum length. Thus, we are not persuaded that Sherman discloses
terminating the CFP interval early if there are no HYPERLAN/2 requests or
if all HYPERLAN/2 requests have been serviced. We are also not
persuaded that that would have been suggested by Sherman to one with
ordinary skill in the art.
Based on the foregoing, we are not persuaded by Petitioner that
Sherman discloses or would have rendered obvious step (2): “renders the
frequency band available for access by the [802.11] stations working in
accordance with the second radio interface standard if [HIPERLAN/2]
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stations working in accordance with the first radio interface standard do not
request access to the frequency band.”
The insufficient accounting by Petitioner of step (2) of claim 1,
however, is inconsequential, because step (2) is a conditional step. With
regard to application of conditional steps, we follow the logic and reasoning
set forth in Ex parte Schulhauser, Appeal No. 2013–007847 (PTAB
April 28, 2016) (precedential). Under Schulhauser, for a conditional step, if
the condition is not met, then the associated action need not be performed.
Schulhauser, at 6–7. Here, Sherman makes no reference to any
circumstance in which there is no request from a HIPERLAN/2 station, and
thus in Sherman, the condition is not met that stations working in
accordance with the first radio interface standard do not request access to
the frequency band. Consequently, the action corresponding to that action
need not be performed. Thus, Petitioner’s failure to establish that Sherman
discloses step (2) is inconsequential.
Patent Owner makes several arguments regarding our reliance on
Schulhauser. First, Patent Owner notes that “Petitioner nowhere advanced
the applicability of Ex parte Schulhauser to Claim 1.” PO Resp. 23. On that
basis, Patent Owner asserts that the Board “should not take on the role of an
advocate on behalf of the Petitioner and accord the Petitioner the benefit of
Ex parte Schulhauser.” Id. Also on that basis, Patent Owner asserts that by
raising Schulhauser, “the Board has improperly instituted an inter partes
review outside the scope of 35 U.S.C. 314(b), as, by instituting on a ground
not advanced by the Petitioner, the Board has instituted other than ‘pursuant
to a petition.’” Id. at 23–24. Neither contention is persuasive.
It is not beyond the scope of a petition for the Board to perform claim
construction and apply applicable law, even if Petitioner does not. Indeed, it
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is the Board’s responsibility to construe the claims, when necessary. We
have not changed Petitioner’s the alleged ground of unpatentability, which is
obviousness over Sherman, and we have not applied any disclosure of
Sherman that was not relied on by Petitioner. Likewise, construing claim
terms by applying legal principles does not make the Board an advocate for
Petitioner. Similarly, if the legal principles lead to a result favoring Patent
Owner, that would not make the Board an advocate for Patent Owner.
Second, Patent Owner argues that Schulhauser applied the broadest
reasonable interpretation standard to reading the claims at issue, whereas,
here we use a claim construction standard based on the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent. PO Resp. 25–26.
But Schulhauser, on its face, does not limit its application to circumstances
where the broadest reasonable interpretation rule applies. Further, the word
“if” is conditional whether or not the broadest reasonable interpretation
applies. Patent Owner does not contend that the Specification of the ’676
patent specially defines the term “if” such that it has a special or unique
meaning that does not denote a condition.
Third, Patent Owner argues that although Schulhauser involves two
conditions that are mutually exclusive to each other or that represent a
“branching process flow,” that is not so in the context of claim 1. Id. at 26–
27. We do not see substantive significance in that distinction. The
conditions are conditions whether or not they are mutually exclusive to each
other. It is the conditional nature of “if” discussed in Schulhauser that
matters, not the presence of two mutually exclusive conditions that represent
a “branching process flow.” Even if only one condition is recited, not two
complementary conditions, the corresponding action need not be performed
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unless the recited condition is met. Schulhauser’s application is not limited
to circumstances involving a branching process flow or mutually exclusive
conditions.
Fourth, Patent Owner argues “it is clear that claim 1 requires a step of
rendering the frequency band available for access by the stations working in
accordance with the second radio interface standard in response to the
condition being fulfilled that stations working in accordance with the first
radio interface standard do not request access to the frequency band.” Id.
at 28–29. In making this argument, Patent Owner has rewritten the claim to
be without the conditional term “if.” That is inappropriate. We read the
claims as they are written and are without power to rewrite them. See SRAM
Corp. v. AD-II Eng’g Inc., 465 F.3d 1351 (Fed. Cir. 2006), 1359; K-2 Corp.
v. Solomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999).
Fifth, Patent Owner argues that “[t]he prosecution history is clear that
this recitation, formerly in dependent claim 2, was added to claim 1, and a
notice of allowance subsequently issued.” PO Resp. 29. The argument is
vague and does not help Patent Owner, because even a conditional step
limitation is a limitation that narrows a claim to which it is added. If the
recited condition is met, then the added step must be performed. Patent
Owner does not indicate whether the prior art applied during examination
actually discloses occurrence of the claimed condition, in which case the
step has to be performed to meet the claim.
In any event, Patent Owner’s characterization of events is inaccurate.
The circumstances in prosecution simply are that the Examiner allowed
application claim 2 (Ex. 1002, 133), which includes the limitation at issue
and depends from claim 1, and then the Applicant rewrote application claim
2 in independent form as claim 1 (Ex. 1002, 143). That does not show
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disavowal of anything by the Applicant, much less conversion of a
conditional step to a non-conditional step or effective deletion of the word
“if.” Further, as noted above, we are powerless to rewrite the claim to
eliminate “if.”
In its Sur-Reply, Patent Owner identifies a Board decision which
purportedly construed a claim with conditional language in a method claim
as “limited to the method described in which the recited conditions occur.”
Paper 15, 3. We do not so construe claim 1 here and we are not bound by
the cited decision which has not been designated as a precedential decision
of the Board.
In its Sur-Reply, Patent Owner argues that claim 1 recites a control
station which controls the alternate use of the frequency band, and the
wherein clause which we construed as comprising two steps simply define
how the previously recited control is to be effected. Id. at 3. Thus, Patent
Owner asserts that “it would be erroneous to not give patentable weight to a
wherein clause that meaningfully limits and further defines an expressly
recited ‘control’ limitation in terms of how it must be effected.” Id. at 3.
The argument is misplaced because, as we noted above, even a conditional
step limitation narrows a claim to which it is a part. If the recited condition
is met, then the corresponding action must be performed. Further, the
wherein clause has been construed as requiring two steps, the first one of
which is not a conditional step and must always be performed. Thus, the
wherein clause has not been disregarded, as Patent Owner suggests.
Assuming that Sherman constitutes applicable prior art, which it does
not, Petitioner has shown that the limitations of claim 1, which are
incorporated into claim 3, are taught or would have been suggested by
Sherman to one with ordinary skill in the art.
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Claim 3 further recites “wherein the control station sends a broadcast
signal informing the stations of a time duration in which the common
frequency band can be used by stations working in accordance with the
second radio interface standard.” Ex. 1001, 6:41–45. Petitioner explains as
follows:
Sherman already discloses the AP broadcasting relevant
durations to stations. See Ex. 1004, 6:2–5, 3:57–61 (“. . . transmit
a spoofing frame with a duration field . . .”); Ex. 1003 ¶ 189. It
would have been obvious for the Hybrid AP to likewise send a
broadcast, such as “CF_End”, informing stations of the duration
for 802.11a access, which allows them to know the available time
and bandwidth and to recover the timing of the superframe. Ex.
1003 ¶¶ 189–190.
Pet. 34. Petitioner’s assertion is supported by the cited testimony of Dr. Roy.
Ex. 1003 ¶¶ 189–190. Specifically, Dr. Roy testifies:
A POSITA [Person with Ordinary Skill In The Art] would
have similarly been motivated and found it obvious to broadcast
the duration for IEEE 802.11a access. For example, it would have
been obvious for the Hybrid AP to broadcast the duration of IEEE
802.11a access (“n”) as part of its “CF_End” broadcast. See Ex.
1004, Figure 5. A POSITA would have found this advantageous
for several reasons: it lets 802.11 stations know the total length
of time, and thus bandwidth, available to them in this superframe;
it provides redundancy and reliability, in case there is an issue
with timing or transmission; it provides additional
synchronization because stations may compare “n” with their own
timing parameters to confirm that they match with respect to the
next anticipated beacon “B”; and it allows stations to recover the
timing of the superframe and beacons if they have lost
synchronization.
Id. ¶ 190. We find the above-quoted testimony to be presenting cogent and
rational reasoning sufficient to account for the limitation added by claim 3.
Patent Owner also has not presented arguments separate from those directed
to the limitations incorporated from claim 1.
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Accordingly, if Sherman constitutes applicable prior art, Petitioner has
proved by a preponderance of the evidence that claim 3 would have been
obvious over Sherman. However, because Petitioner has not shown that
Sherman constitutes applicable prior art, Petitioner has not proved that
claim 3 would have been obvious over Sherman.
4. Claim 9
As noted above, Petitioner has not shown Sherman to be applicable
prior art. Thus, Petitioner has not proved by a preponderance of the
evidence that claim 9 would have been obvious over Sherman. For
completeness on judicial review, we provide a substantive analysis of
claim 9, assuming that Sherman is applicable prior art.
Claim 9 is an apparatus claim directed to a wireless network. Its
structural components are the same as those recited in method claim 1,
except that claim 9 recites a “wireless network” and claim 1 recites a “radio
system.” That difference is inconsequential because Sherman’s radio system
is a wireless network. Ex. 1004, 2:62–4:5; Fig. 1. The steps recited by
claim 1 are the functions performed by the control station recited in claim 9.
As such, claim 9 is the apparatus counterpart to method claim 1.
With regard to the alleged unpatentability of claim 9 over Sherman,
our analysis above of the limitations of claim 1 applies equally to claim 9,
except that In re Schulhauser, supra, applicable to a conditional step in
claim 1, has no application in the context of apparatus claim 9. The analysis
need not be reiterated here. We are not persuaded that Sherman discloses or
would have suggested to one with ordinary skill in the art that Sherman’s
hybrid Access Point would perform the function of “renders the frequency
band available for access by the stations working in accordance with the
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second radio interface standard if stations working in accordance with the
first radio interface standard do not request access to the frequency band.”
Additionally, as discussed above, Petitioner has not shown Sherman to be
prior art to the challenged claims.
Accordingly, Petitioner has not shown by a preponderance of the
evidence that claim 9 would have been obvious over Sherman.
5. Claim 6
As noted above, Petitioner has not shown Sherman to be applicable
prior art. Thus, Petitioner has not proved by a preponderance of the
evidence that claim 6 would have been obvious over Sherman. For
completeness on judicial review, we provide a substantive analysis of
claim 6, assuming that Sherman is applicable prior art.
As noted above, claim 6 is similar to claim 1, except for the wherein
clause which we construe as setting forth a step, performed by the control
station, of “terminating the use of the radio interface in accordance with the
second radio interface standard by transmitting in accordance with the first
radio interface standard, without taking account of resulting interference in
stations working in accordance with the second radio interface standard.”
For the limitations that are the same as in claim 1, our analysis above
in the context of claim 1 equally applies here in claim 6 and need not be
reiterated. Here, we address the different step set forth in claim 6.
For this step, Petitioner argues that, like the ’676 patent, Sherman
teaches that the Access Port could broadcast dummy traffic just prior to the
CFP_Beacon preventing other traffic from seizing the medium. Pet. 35
(citing Ex. 1004, 6:26–28). Petitioner explains:
Sherman’s AP uses dummy traffic to terminate the use of the
medium by 802.11a devices at the end of the CP, which could
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otherwise spill over into the next superframe if there is Beacon
jitter. See Ex. 1004, 6:13–32; Ex. 1003 ¶ 195. This allows the
AP to regain control of the channel if 802.11a stations are still
transmitting when the Beacon should be sent. Ex. 1003 ¶ 197.
Id. Petitioner further explains that by broadcasting dummy traffic just prior
to the CFP_Beacon signal, the AP blocks 802.11a stations from contending
for the medium, thereby terminating their use of the medium. Id. at 36
(citing Ex. 1004, 6:26–28; Ex. 1003 ¶ 198).
Other than the assertion that the ’676 patent discloses the same
technique, the assertions of Petitioner are supported by the cited disclosure
of Sherman and by the cited testimony of Dr. Roy. We are not persuaded
that the ’676 patent discloses an embodiment using this same technique.
The portion of the ’676 patent cited by Petitioner refers to “dispens[ing] with
sending useless (dummy) information,” not sending dummy information.
Ex. 1001, 4:55–64. However, it matters not whether the ’676 patent
discloses the technique, but whether Sherman discloses the technique.
Petitioner has shown sufficiently that Sherman does.
To satisfy the limitation of claim 6, the dummy traffic in Sherman has
to be sent in accordance with the HIPERLAN/2 interface standard. Sherman
does not explicitly specify any particular format for the dummy signals. In
that regard, Petitioner explains:
A POSITA would have found it obvious to use
HIPERLAN/2 transmissions as dummy traffic, whose purpose is
simply to occupy the channel—to talk over 802.11a stations
without regard to the resulting interference for those stations.
Ex. 1003 ¶ 200. HIPERLAN/2 transmissions would have
satisfied this purpose with the added benefit that it would appear
as unintelligible, i.e., “dummy,” traffic. See id.
Pet. 37. We are persuaded that the format of the dummy transmissions is
inconsequential because the objective simply is to have something to occupy
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the medium. Notwithstanding Patent Owner’s arguments to the contrary,
discussed below, we are persuaded that it would have been obvious to one
with ordinary skill in the art to transmit the dummy signals according to the
first interface standard, i.e., HIPERLAN/2.
Patent Owner argues:
The Declarant does not explain, for example, how IEEE.802.1a
devices interpret noise in the portion of the frequency spectrum
used by HIPERLAN/2 transmissions. Nor does the Declarant
explain the logic programmed into IEEE 802.11a devices
relating to interpretation of noise in that portion of the frequency
spectrum, the steps that would be carried out by IEEE 802.11a
devices in determining whether the spectrum is occupied, and
how HIPERLAN/2 transmissions would be interpreted.
PO Resp. 32. We see no reason why Petitioner needed to have specifically
addressed how 802.11a stations distinguish purposeful communication from
random noise. First, Sherman describes sending dummy packets without
describing how to distinguish them from random noise. That indicates the
task is within the level of ordinary skill in the art. Second, Patent Owner
provides no technical witness testifying to the effect that such recognition
and distinction is not within the level of ordinary skill in the art. Third, the
continuous or consistent nature of dummy traffic appears readily
distinguishable from random noise. For all of these reasons, the issue raised
by Patent Owner does not undermine Petitioner’s position and reasoning.
Patent Owner further argues that “Sherman explicitly teaches
‘spoofing frames/frame sequences’ including ‘a CTS transmitted by an AP, a
data frame transmitted by an AP,’ Ex. 1004, 3:40–46, but Declarant does not
provide any explanation as to why a POSITA, aware of these teachings of
Sherman, would instead employ HIPERLAN/2 traffic as a dummy signal.”
PO Resp. 33. The argument is misplaced for several reasons. First, the
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spoofing referred to by Patent Owner pertains to what Sherman describes as
prior art, not an embodiment of Sherman’s invention. Second, the spoofing
referred to by Patent Owner does not express the format of the spoofed data
frames, i.e., whether they are in the format of 802.11 standard or a different
format of a competing system contending for the same frequency band. A
pertinent part of Sherman is reproduced below:
Some prior solutions to the problem of collisions between
competing systems sharing a common frequency band have
relied on a spoofing technique to spoof terminals into thinking
that the media was busy during a time period identified by a
duration field defined by the 802.11 standard.
Ex. 1004, 3:24–28. An additional pertinent part of Sherman, also in the
portion of Sherman discussing prior art, states: “Possible spoofing
frames/frame sequences that could be useful include a CTS transmitted by
an AP, a data frame transmitted by an AP, . . . . Other frame sequences can
also be used with this regard.” Id. at 3:40–47. None of this description
pertains to Sherman’s disclosed embodiment, and none specifies the format
of the spoofed data frame. Patent Owner does not point out where Sherman
describes the format of the spoofing data frame.
Third, contrary to Petitioner’s contention, Dr. Roy has provided
specific and adequate reasoning why one with ordinary skill in the art
would have known to employ HIPERLAN/2 format for the dummy
signals provided in Sherman’s disclosed embodiment. First, Dr. Roy
explains why Sherman uses dummy traffic to avoid interference:
802.11a devices practice collision avoidance and require a
period of quiet before they begin transmissions. By sending
dummy traffic just prior to the Beacon, the AP blocks 802.11a
stations from contending for the medium—which is why it is
referred to as a “Blocking Sequence”—thereby terminating
their use of the medium. This allows the AP to send the next
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CFP_Beacon “B” aligned with the start of the next superframe
(shown on the right of Figure 5) and prevents potential spillover
DCF frames (shown on the left side of Figure 5). The Beacon
ends the 802.11a CP and begins a new superframe with a CFP
phase.
Ex. 1003 ¶ 198. Patent Owner also states that 802.11 systems use a
technique which “attempts to avoid collisions by beginning transmission
only after the channel is determined to be idle.” PO Resp. 38. Dr. Roy then
explains why one with ordinary skill in the art would have known to use
HIPERLAN/2 transmission format for the dummy transmission:
A POSITA would have been motivated and found it
obvious to use HIPERLAN/2 transmissions as the dummy
traffic. The purpose of the dummy traffic is simply to occupy
the medium during the CP—to talk over the IEEE 802.11a
devices without regard to the resulting interference.
HIPERLAN/2 transmissions would have satisfied this purpose
with the added benefit that it would appear as unintelligible, i.e.,
“dummy,” traffic. Thus, it would have been obvious to effect
Sherman’s “dummy traffic” teaching by transmitting in
accordance with HIPERLAN/2, without taking into account of
resulting interference in stations working in accordance with
IEEE 802.11a.
Id. ¶ 200.
Fourth, even assuming that Sherman describes that its dummy traffic
is in the format of the 802.11 standard, that does not undermine Petitioner’s
reasoning why one with ordinary skill in the art would have known to use
HIPERLAN/2 format for the dummy traffic. Dr. Roy credibly explained
that one with ordinary skill in the art would have recognized that the goal is
to occupy the medium and that the goal does not require transmission of
dummy traffic in 802.11 format. Id.
Patent Owner additionally argues that Dr. Roy “does not provide an
analysis of whether a POSITA would find it obvious for the AP to broadcast
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802.11a signals, rather than HIPERLAN/2 signals, in order to cause other
802.11a devices to refrain from transmission.” PO Resp. 32–33. The
argument is without merit, because even if using 802.11 format for the
dummy traffic would have been obvious to one with ordinary skill in the art,
that does not undermine Petitioner’s reasoning for why using HIPERLAN/2
format for the dummy traffic would have been obvious to one with ordinary
skill in the art. Obviousness of one is not inconsistent with obviousness of
the other. Petitioner need not have discussed whether using a different
format for the dummy traffic would have been obvious.
Further, Patent Owner argues:
Still further, Sherman explicitly states that a disadvantage
of the arrangement disclosed in Figure 3 is that the “802.11 STA
would view the HIPERLAN phase as a part of the 802.11
Contention Period (CP), and would normally be free to transmit
during the CP.” Ex. 1004, 3:53–56. Thus, Sherman explicitly
teaches that the 802.11 devices would continue to transmit in the
presence of HIPERLAN/2 traffic. A POSITA, familiar with
Sherman as a whole, would clearly be motivated not to employ
HIPERLAN/2 traffic as the dummy traffic, in view of this
teaching.
PO Resp. 32. The argument is without merit. First, Figure 3 of Sherman
illustrates what Sherman regards as prior art, not an embodiment of
Sherman’s invention. Ex. 1004, 2:27–29. Unlike Figure 5, which shows an
embodiment of Sherman’s invention, Figure 3 (labeled as “PRIOR ART”)
shows no contention free period “CFP” including a HIPERLAN phase. The
two are not the same. The description about Figure 3 does not apply to
Figure 5. We are not persuaded that in Figure 5, the 802.11 STA would
view the HIPERLAN/2 phase as a part of the Contention Period CP.
Second, Patent Owner has read too much into the language “and
would normally be free to transmit during the CP” (Ex. 1004, 3:55–56). It
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does not have to mean 802.11 devices no longer operate in the manner they
normally operate, i.e., wait for an idle period before beginning transmissions
(Ex. 1003 ¶ 199). Rather, it is more reasonable to read the language as
meaning that the 802.11 devices are free to transmit in their usual manner.
As we noted above, Patent Owner states that 802.11 systems use a technique
which “attempts to avoid collisions by beginning transmission only after the
channel is determined to be idle.” PO Resp. 38. Thus, we are unpersuaded
that Sherman teaches that the 802.11 devices would continue to transmit in
the presence of HIPERLAN/2 traffic, i.e., talking over HIPERLAN/2 traffic,
even in the prior art system according to Sherman’s Figure 3.
During oral hearing, counsel for Patent Owner asked “why then you
go and use the HIPERLAN/2 traffic as a dummy signal when presumably
that’s the traffic that you’re then going to start using after the 802.11 traffic
ceases.” Tr. 41:12–14. The question assumes that something is awry when
the dummy traffic has the same format as the next phase of communication
to be started. But no such problem has been articulated, either in the Patent
Owner Response or at oral hearing. As explained by Dr. Roy, the purpose of
sending dummy traffic simply is to occupy the medium. Ex. 1003 ¶ 200.
Accordingly, if Sherman constitutes applicable prior art, Petitioner has
proved by a preponderance of the evidence that claim 6 would have been
obvious over Sherman. However, because Petitioner has not shown that
Sherman constitutes applicable prior art, Petitioner has not proved that claim
6 would have been obvious over Sherman.
E. Alleged Obviousness of Claims 3, 7, and 9 over Shellhammer
1. Overview of Shellhammer
Shellhammer relates to techniques for frequency coordination among
two different wireless network protocols operating in proximity with one
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another. Ex. 1005, Abstr. More specifically, Shellhammer teaches
coordination techniques for operating Bluetooth and 802.11 enabled devices
in the same frequency band at the same time. Id. at 2:59–62.
According to Shellhammer, a Bluetooth network consists of up to
eight Bluetooth devices operating in a piconet, the piconet having one
master device and up to seven slave devices. Id. at 7:41–43. Shellhammer
recognizes that it may be desirable to operate multiple Bluetooth piconets in
close proximity to each other, but notes that given the 79 different frequency
channels used by Bluetooth, different Bluetooth networks are unlikely to be
operating on the same frequency at the same time. Id. at 2:18–22.
Shellhammer points out that while communication protocols such as 802.11
and Bluetooth are designed to ensure that devices using the same protocol
may operate in the same frequency band with a minimum of interference,
such design considerations do not take into account a method of
coordination for the use of these wireless devices in the same frequency
operating under different communication protocols. Id. at 2:43–49.
Figure 1 of Shellhammer shows a wireless communication system and
is reproduced below.

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Figure 1 is a block diagram of a wireless communications system using
802.11 and Bluetooth devices. Id. at 5:42–43.
Shellhammer describes wireless communication between access
points (AP), mobile units (MU), and other devices, such as Bluetooth Slave
(BTS) devices. Id. at 5:10–18, 5:65–6:27. For example, in Figure 1,
Shellhammer discloses APs 20 and 30, MUs 120 and 130, and BTS devices
160, 170, 180, 190, 200, and 210. Id. According to Shellhammer, a mobile
unit communicates with an access point using a first wireless
communication protocol, such as 802.11, in a frequency band and also
communicates with other devices using a second wireless communication
protocol, such as Bluetooth, in the same frequency band. Id. at 5:10–18.
Shellhammer discloses MUs configured as dual mode devices, such that a
single MU is configured to transmit and receive RF signals associated with
the 802.11 protocol as well as communicate via Bluetooth, acting as a
Bluetooth Master (BTM) device. Id. at 6:5–15. Each BTM communicates
with one or more BTS devices via the Bluetooth protocol such that each
BTS is connected to a piconet uniquely associated with a BTM. Id. at 6:16–
25. For example, Figure 1 shows BTM 130 is associated with piconet 280,
which includes BTS devices 160, 170, and 180. Id. at 6:16–22. Likewise,
BTM 150 is associated with piconet 290, which includes BTS devices 190,
200, and 210. Id. at 6:22–27.
According to Shellhammer, beacon signals are periodically
transmitted from the AP, and such beacon signals demarcate time intervals
(beacon time period T) under the 802.11 protocol. Id. at 3:67–4:1, 4:66–5:2,
8:54–56. A depiction of an example of a beacon time period T, for use by
802.11 and Bluetooth devices, is shown in Figure 3 of Shellhammer,
reproduced below.
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Figure 3 is a schematic diagram of an embodiment of Shellhammer
illustrating operations of 802.11 and Bluetooth devices. Id. at 5:49–51.
Shellhammer explains that each beacon time period may be divided
into three time intervals: 1) 802.11 communications in the power saving
(PSP) mode (t802.11PSP), 2) Bluetooth communications (tNAV), and 3) 802.11
communications in the active (CAM) mode (t802.11CAM). Examples of the
respective time periods are shown in the graph of Fig. 3 relative to beacon
time period T. Id. at 8:55–59. According to Shellhammer, the durations of
t802.11PSP, tNAV, and t802.11CAM may depend on traffic characteristics and
application needs. Id. at 8:59–61.
During the first time period (t802.11PSP 310), 802.11 PSP devices receive
and transmit packets according to the 802.11 protocol. Id. at 8:61–9:3. For
the second time period (tNAV 320), the AP sends a CTS signal to shut down
all the 802.11 communications for a NAV (Network Allocation Vector)
period, and Bluetooth piconets begin communications. Id. at 8:67–9:7.
After completion of the NAV period 320, BTM radios are disabled and all
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Bluetooth communications cease. Id. at 9:8–13. The rest of the time until
the next beacon T (t802.11CAM) is dedicated for 802.11 Continuously Aware
Mode (CAM) MUs that operate according to the 802.11 protocol. Id. at
9:10–13.
2. Claim 3
Claim 3 depends from claim 1. We begin by discussing the
limitations incorporated from claim 1.
Claim 1 recites “[a]n 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.” Ex. 1001,
6:20–23. Claim 1 further recites that the radio system comprises “stations
which operate in accordance with a first radio interface standard and/or a
second radio interface standard.” Id. at 6:24–26.
Petitioner asserts that Shellhammer discloses a frequency band (which
may be the 2.4 GHz ISM band) being used by IEEE 802.11 and Bluetooth
protocols, operating in proximity with one another. Pet. 47 (citing Ex. 1005,
Abstr., 1:32–39, 1:13–20, 1:61–62, 2:28–31, 2:59–62). Petitioner further
asserts that one of ordinary skill in the art would have understood that
wireless communications in the ISM band utilized radio systems. Id. at 48
(citing Ex. 1003 ¶ 252). The assertions are supported by the cited disclosure
of Shellhammer as well as the cited testimony of Dr. Roy.
Petitioner identifies Shellhammer’s APs and MUs as stations
operating according to IEEE 802.11 protocol, i.e., a first radio interface
standard, and Shellhammer’s BTM devices and BTS devices as stations
operating according to Bluetooth protocol, i.e., a second radio interface
standard. Pet. 48–50 (citing Ex. 1005, 5:65–6:32). Petitioner’s assertions
are supported by the cited disclosure of Shellhammer. Shellhammer teaches
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APs and MUs configured for the transmission and reception of radio
frequency signals under the 802.11 protocol as well as BTM devices and
BTS devices configured for communication via Bluetooth. Ex. 1005, 5:65–
6:27.
Patent Owner does not dispute Petitioner’s above-identified
assertions. We are persuaded that Shellhammer discloses 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, and that Shellhammer
discloses stations which operate in accordance with a first radio interface
standard and/or a second radio interface standard.
Claim 1 further recites that the radio system comprises “a control
station which controls the alternate use of the frequency band.” Ex. 1001,
6:27–28. Petitioner identifies Shellhammer’s AP as a control station which
controls the alternate use of the frequency band. Pet 52–55 (citing Ex. 1005,
Fig. 3, 8:52–9:23). Petitioner asserts that Shellhammer confirms the AP
controls its alternating intervals because the access point conducts
communications during each interval, and that the AP transmits periodic
beacon signals and global clear to send signals that control the alternating
intervals and prevent mobile units from transmitting signals using the first
data communications protocol during an allocated time interval. Pet 53
(citing Ex. 1005, 3:67–4:6, 4:12–21, 8:52–9:13; Ex. 1003 ¶¶ 270–271).
Petitioner’s assertions are supported by the cited disclosure of Shellhammer
as well as the cited testimony of Dr. Roy.
Patent Owner does not dispute the above-identified assertions of
Petitioner. We are persuaded that Shellhammer discloses a control station
which controls the alternate use of the frequency band.
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Claim 1 further recites a wherein clause which, as explained above in
Section II.C., sets forth two steps:
(1) controls access to the common frequency band for
stations working in accordance with the first radio interface
standard, and
(2) renders the frequency band available for access by the
stations working in accordance with the second radio interface
standard if stations working in accordance with the first radio
interface standard do not request access to the frequency band.
For step (1), Petitioner explains that Shellhammer teaches the AP
controlling access to the common frequency band for stations working in
accordance with 802.11 by determining when 802.11 stations are allowed to
access the band, including sending beacons and CTS signals to control the
802.11 PSP interval (t802.11PSP) and to prevent 802.11 stations from
transmitting during certain intervals, citing its previous accounting for the
limitation of “a control station which controls the alternate use of the
frequency band” and the testimony of Dr. Roy (Ex. 1003 ¶ 280). Pet. 56.
Petitioner’s assertions are supported by the cited disclosures of Shellhammer
and its previous accounting of the limitation of “a control station which
controls the alternate use of the frequency band.” With regard to step (1),
Patent Owner has not presented a counter-argument. We are persuaded by
Petitioner that Shellhammer discloses step (1).
For step (2), Petitioner states that “Shellhammer teaches that the
duration of the 802.11 PSP interval (t802.11PSP) is not fixed and instead
depends on ‘traffic characteristics.’” Pet. 58 (citing Ex. 1005, 8:59–61).
Specifically, Petitioner explains as follows:
Shellhammer teaches dividing each beacon time period T
into either two or three intervals. Ex. 1003 ¶282; supra, Element
[1c]. In either scenario, the beacon time period begins with an
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interval IEEE 802.11 PSP stations. Ex. 1005, 8:61-64 (“At the
beginning of each beacon period 300, AP 20 sends a beacon
signal 350 to the 802.11 PSP MU's 120, 140 that wake up in this
period …”); Ex. 1003 ¶282. “During this period the PSP MU’s
120, 140 receive and transmit their packets according to the
802.11 protocol. Once all the PSP MU's 120, 140 receive their
packets, the AP 20, may optionally send a global Clear to
Send (CTS) signal 430 to shut down all the 802.11
communications for a NAV (Network Allocation Vector)
period.” Ex. 1005, 8:65-9:8 (emphasis added). The CTS begins
the second interval, rendering the frequency band available for
access by Bluetooth stations, which “may begin BT
communications.” See Ex. 1005, 8:65-9:8, 6:39-43 (“… In one
embodiment, the Bluetooth systems are enabled or disabled
according to a global/central signal from the 802.11 AP as
described herein. …”), 4:62-5:9; Ex. 1003 ¶283.
Pet. 56–57. Petitioner additionally explains:
Shellhammer teaches that the CTS signal may be sent “once” all
PSP MUs have received their packets, i.e., once there are no
longer any pending transmission requests. See Ex. 1005, 8:65-
9:8. If no 802.11 stations (including the AP) request access to
the frequency band during the t802.11PSP interval—for example by
contending for the medium—then there would be no
transmissions, and it would have been obvious for the AP to send
the CTS signal, thereby rendering the frequency band available
for access by Bluetooth stations. Ex. 1003 ¶¶ 284-286.
Indeed, Shellhammer teaches that the duration of the
802.11 PSP interval (t802.11PSP) is not fixed and instead depends
on “traffic characteristics.” See Ex. 1005, 8:59–61 (“The
duration of time intervals T, t802.11PSP, tNAV, and t802.11CAM
depend on traffic characteristics and application needs . . .”);
Ex. 1003 ¶¶ 284–285. A POSITA would have recognized that
this sort of variable duration would have (a) fit well with IEEE
802.11’s DCF, (b) been consistent with the 802.11 RTS/CTS
protocol, which was intended to facilitate dynamic resource
allocation, and (c) boosted bandwidth efficiency by allowing
Bluetooth stations to utilize the frequency band, rather than
letting it sit idle since no 802.11 stations were utilizing the band.
Ex. 1003 ¶¶ 285–296, 266 n.7.
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Pet. 57–58 (emphasis added).
Patent Owner presents seven arguments with respect to the step (2)
limitation of claim 1 and Shellhammer. PO Resp. 45–48. Notwithstanding
those arguments, which we address below, we are persuaded by Petitioner
that step (2) in claim 1 would have been obvious to one with ordinary skill in
the art. Petitioner’s arguments are cogent and rational, and also supported
by the cited disclosure of Shellhammer and the cited testimony of Dr. Roy.
Patent Owner’s arguments are not sufficiently persuasive to undermine
Petitioner’s contentions.
First, Patent Owner argues that “given the numerous different
embodiments described in brief overview by Shellhammer, a POSITA
would not read precise teachings into these statements.” Id. at 45. By “these
statements,” Patent Owner is referring to Shellhammer’s statement that
“[o]nce all the PSP MU’s 120, 140 receive their packets, the AP 20, may
optionally send a global Clear to Send (CTS) signal 430 to shut down all the
802.11 communications for a NAV (Network Allocation Vector) period”
(Ex, 1005, 8:65–9:8), and Shellhammer’s statement that “[t]he duration of
time intervals T, t802.11PSP, tNAV, and t802.11CAM depend on traffic
characteristics and application needs (e.g., time critical services)” (Ex. 1005,
8:59–61). PO Resp. 44.
The argument does not undermine Petitioner’s persuasive showing.
That Shellhammer discloses numerous other embodiments does not detract
from what the one embodiment identified by Petitioner would have revealed
to one with ordinary skill in the art. Indeed, a prior art reference must be
considered for everything it teaches by way of technology and is not limited
to the particular invention it is describing and attempting to protect. EWP
Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985).
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Moreover, what Petitioner relies on here is an embodiment of
Shellhammer’s invention.
Patent Owner also phrases its argument as follows: because
“Shellhammer teaches general descriptions of various embodiments,” one
with ordinary skill in the art “would not attempt to read details into those
embodiments.” PO Resp. 45. We know of no authority that supports
Patents Owner’s position. We also disagree with the contention. What a
reference would have disclosed is not determined with a pre-conceived goal
of trying to read more or less detail into the prior art disclosure. Further,
Petitioner’s assertion here is one not based on anticipation, but obviousness.
It is misplaced for Patent Owner to characterize Petitioner’s effort as an
“attempt to read details into those embodiments.”
Second, Patent Owner asserts that there are alternative ways to satisfy
the interval duration depending on traffic characteristics and application
needs, such as setting the t802.11PSP interval sufficiently long to allow
complete transmission of all messages by PSP MU’s. Id. The argument is
misplaced because the existence of other alternatives, perhaps equally
obvious, do not detract from obviousness of the option discussed by
Petitioner. Petitioner need only discuss that option which meets the claim
limitation at issue. Petitioner’s argument is not deficient on the basis that
Petitioner did not discuss options which do not meet the claim limitation.
Third, Patent Owner argues that, potentially, if the PSP MU’s in
Shellhammer continued to transmit after occurrence of the CTS signal and
during the NAV period, that could cause a problem not addressed by
Petitioner. PO Resp. 45–46. The argument is misdirected because, by
definition, the CTS signal shuts down all 802.11 communications for the
NAV period. Shellhammer expressly states that “[o]nce all PSP MU’s 120,
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140 receive their packets, the AP 20, may optionally send a global Clear to
Send (CTS) signal 430 to shut down all the 802.11 communications for a
NAV (Network Allocation Vector) period.” Ex. 1005, 8:67–9:3. The
situation referred to by Patent Owner is internally inconsistent and
contradicts its basic premise. Patent Owner has presented no persuasive
reason why one with ordinary skill in the art would expect such a situation
would occur and be expected to devise a solution. Patent Owner also does
not contend that one with ordinary skill in the art would not have had
sufficient skills to address the matter. We further find that Petitioner need
not have accounted for this speculative outcome.
Fourth, Patent Owner argues that “the disclosure in Shellhammer that
the duration of the time intervals may depend on traffic characteristics and
application needs, such as time critical services, does not require variable
lengths of time periods at all.” PO Resp. 46. Patent Owner asserts that the
disclosure likely suggests selecting a fixed time interval according to those
needs. Id. Patent Owner further argues that even if variable intervals are
suggested, “Petitioner and Petitioner’s Declarant have not offered any
formula which so much as take into account the factor of ‘time critical
services.’” Id. These arguments are misplaced. The existence of other
ways of implementing the described dependency, which do not meet the
claim, does not detract from or undermine Petitioner’s proposed
combination. It is not the law that whatever would have been deemed
obvious to one with ordinary skill in the art must be required by prior art
disclosure. It is also not the law that if the prior art suggests more than one
solution, Petitioner may not rely on the one that meets the claim. Further,
the claim limitation does not require a more specific formula on how to
calculate interval lengths, much less how to calculate interval lengths based
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on time critical services. Additionally, Petitioner relies on Shellhammer’s
discussion on interval duration depending on traffic characteristics, not
application needs. Pet. 58.
Fifth, Patent Owner disputes Petitioner’s assertion (Pet. 58) that a
variable 802.11 transmission interval based on traffic characteristics, such as
allowing Bluetooth stations to utilize the common frequency band when no
802.11 stations use the band, boosts bandwidth efficiency. PO Resp. 46–47.
Patent Owner contends that “unless there were some reason to believe that
the Bluetooth communications could not be accommodated in the Bluetooth
time slot, a possibility nowhere mentioned by the Declarant, there is no
efficiency gained by starting the Bluetooth time slot earlier with a fixed
beacon time period.” Id. at 47. The argument does not undermine
Petitioner’s persuasive showing. The possibility always exists that whatever
period made available for Bluetooth stations are not enough to accommodate
all Bluetooth transmission requests and need not be expressly noted by
Petitioner. Allowing Bluetooth stations to access the common frequency
band as soon as all 802.11 stations are finished with their communications
does in fact boost bandwidth efficiency, by leaving more time for the
Bluetooth stations to communicate. Petitioner notes that using idle
bandwidth is more efficient than wasting it. Reply 26. We agree.
Patent Owner asserts that “[m]oreover, the Declarant [Dr. Roy] does
not address the fact that these time periods are all within a fixed beacon time
period, thus demonstrating the incomplete and conclusory nature of
Declarant’s testimony.” PO Resp. 47. The argument itself is vague, as it
does not explain how the fixed beacon period affects any testimony of
Dr. Roy. It is not known what testimony is allegedly incomplete and what
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testimony is allegedly conclusory. Dr. Roy’s explanation regarding boosting
bandwidth efficiency is reproduced below:
Given Shellhammer’s teachings, if no 802.11 stations
(including the AP) request access to the frequency band during
the t802.11PSP interval—for example by contending for the
medium—then it would have been obvious to a POSITA for the
AP to determine after a short amount of time, such as a multiple
of DIFS intervals without activity, that no packets or
transmission requests were pending. It would then have been
obvious for the AP to send the CTS signal, rendering the
frequency band available for access by Bluetooth stations.
Sending the CTS at that time would have boosted bandwidth
efficiency by allowing Bluetooth stations to utilize the frequency
band, since the 802.11 stations were not requesting access to
utilize the medium, rather than letting the frequency band sit idle.
Ex. 1003 ¶ 286. We find it sufficiently complete and non-conclusory.
Sixth, Patent Owner argues: “[T]he Petitioner’s analysis fails to
acknowledge that the Bluetooth time slot proceeds even if the 802.11
Continuously Aware Mode (CAM) MU’s that operate according to the
802.11 protocol, Ex. 1005, 9:10–14, have unsent messages and are in need
of access to the frequency band.” PO Resp. 47. Patent Owner asserts that
“[n]either the Declarant nor the Petition attempt to reconcile this denial of
access to the frequency band with the Petitioner’s attempt to read the
teachings of Shellhammer onto the pertinent recitations.” Id.
As Petitioner has noted, however, the provision for a t802.11CAM interval
is optional. Reply 26 (citing Ex. 1005, 9:19–23). Shellhammer states: “In a
further embodiment, the t802.11CAM 330 time interval may be eliminated if the
MUs do not operate in CAM mode. Here, the CTS signal 340 would trigger
only tNAV 320 and t802.11PSP 310 time intervals for every 802.11 beacon period
T 300.” Ex. 1005, 9:19–23. Thus, the t802.11CAM interval is not required and
that provides a complete response to Patent Owner’s contention. Further,
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even in an embodiment with a t802.11CAM interval, the issue raised by Patent
Owner appears non-existent or simply not supported by this record. Patent
Owner provides no declaration testimony explaining the existence of such
unsent messages. Patent Owner also cites to nothing in Shellhammer which
refers to any accumulation of unsent messages. Further, in Shellhammer,
the CTS signal is sent and the tNAV period is entered when all 802.11 stations
are finished with their transmissions. Ex. 1005, 8:65–9:8. That indicates to
one with ordinary skill in the art, if there were unsent messages which have
accumulated, they would have been serviced as well prior to entering the
tNAV period.
Seventh, Patent Owner asserts that Shellhammer does not provide for
advancing to the Bluetooth communications interval tNAV from the 802.11
power saving (PSP) interval t802.11PSP “only in the event” that 802.11 stations
are not requesting access to the frequency band medium. PO Resp. 47–48.
According to Patent Owner, regardless of whether 802.11 stations are, or are
not, still requesting access to the frequency band, the control station of
Shellhammer will activate the Bluetooth communications interval tNAV
following the 802.11 power saving (PSP) interval t802.11PSP. Id. at 48. Patent
Owner’s argument is misplaced for two reasons: (1) claim 1 does not
require allowing access by second interface standard stations “only in the
event” that first interface standard stations do not request access; (2) the
circumstance Patent Owner refers to, i.e., entering tNAV at a certain time
regardless of which stations are or are not requesting access, has been
modified by Petitioner’s reasoning as discussed in detail above.
Patent Owner also argues that although Shellhammer does teach that
the duration of the time intervals t802.11PSP, tNAV, and t802.11CAM may depend on
traffic characteristics and application needs, Shellhammer “never teaches
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that either of the 802.11 power saving (PSP) interval t802.11PSP or Bluetooth
communications interval tNAV, would, or would not be used, based upon the
existence or non-existence of requests present at the other time interval.” Id.
The argument is misplaced because Petitioner’s alleged ground of
unpatentability based on Shellhammer is not anticipation but obviousness.
Express disclosure in Shellhammer of the limitation at issue is not required.
Shellhammer teaches that the durations of time intervals t802.11PSP, tNAV, and
t802.11CAM depend on traffic characteristics. Ex. 1005, 8:59–62. That
teaching gives strong support for Petitioner’s obviousness contentions,
reproduced above, including that if no 802.11 station requests access to the
frequency band during the t802.11PSP interval, then send the CTS signal to
render the frequency band available for access by Bluetooth stations in a
tNAV period.
For the foregoing reasons, Petitioner has shown that all of the
limitations from claim 1 are taught or would have been suggested by
Shellhammer to one with ordinary skill in the art.
Claim 3 further recites “wherein the control station sends a broadcast
signal informing the stations of a time duration in which the common
frequency band can be used by stations working in accordance with the
second radio interface standard.” Ex. 1001, 6:41–45. Petitioner explains:
The AP [of Shellhammer] initiates tNAV interval by
“send[ing] a global Clear to Send (CTS) signal 430 to shut down
all the 802.11 communications for a NAV (Network Allocation
Vector) period”. Ex. 1003 ¶ 295; see Ex. 1005, 9:1–3. The
802.11 standard defines a variable field in the CTS frame for the
NAV period. Ex. 1003 ¶ 297. It would have been obvious for
the AP to determine the length of the NAV period and include it
in the CTS broadcast signal. Ex. 1003 ¶¶ 295–296. The NAV
period is the duration when Bluetooth stations may use the band.
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Pet. 61. Petitioner’s assertion is supported by cited disclosure of
Shellhammer and the cited testimony of Dr. Roy. Dr. Roy testifies:
The AP initiates tNAV interval by “send[ing] a global Clear
to Send (CTS) signal 430 to shut down all the 802.11
communications for a NAV (Network Allocation Vector)
period.” See Ex. 1005, 9:1–3; supra n. 9. A POSITA would have
understood this to refer to the IEEE 802.11 NAV mechanism,
which is defined in the standard as a variable field in the CTS
frame that tells stations to turn off their transmissions for the
period specified in the field. The NAV is defined in the standard
to be a variable field. Shellhammer teaches each 802.11 stations
setting its NAV to shut down communications for a duration, so
that Bluetooth stations may use the frequency band. Thus, it
would have been obvious from Shellhammer’s teachings for the
AP to determine the length of the NAV period and include it as
the NAV field in the CTS broadcast signal.
Id. ¶ 295. We find the above-quoted testimony to be cogent and rational and
sufficient to account for the limitation added by claim 3. Patent Owner has
not presented arguments directed to claim 3, which are separate from those it
has presented for claim 1, and we have already rejected those arguments
above in the discussion of the limitations from claim 1.
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that claim 3 would have been rendered obvious by
Shellhammer to one with ordinary skill in the art.
3. Claim 9
Claim 9 is an apparatus claim directed to a wireless network. Its
structural components are the same as those recited in method claim 1,
except that claim 9 recites a “wireless network” and claim 1 recites a “radio
system.” That difference is inconsequential because Shellhammer’s radio
system is a wireless network. Ex. 1005, 2:66–3:11; 3:37–52; Fig. 1. The
steps recited by claim 1 are the functions performed by the control station
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recited in claim 9. As such, claim 9 is the apparatus counterpart to method
claim 1.
With regard to the alleged unpatentability of claim 9 over
Shellhammer, our analysis above of the limitations of claim 1 applies
equally to claim 9. The analysis need not be reiterated here. For the same
reasons discussed above for claim 1, Petitioner has shown by a
preponderance of the evidence that claim would have been rendered obvious
by Shellhammer to one with ordinary skill in the art.
4. Claim 7
Claim 7 recites as follows:
7. An interface-control protocol method for a radio system
which has at least one common frequency band that is provided
for alternate use by a first and a second radio interface standard,
the radio system comprising:
stations which operate in accordance with a first radio
interface standard and/or a second radio interface
standard, and
a control station which controls the alternate use of the
frequency band,
wherein the control station controls the access to the
common frequency band by stations working in
accordance with the first radio interface standard and
in that duration and type of control of the radio
interface in accordance with the second radio interface
standard is determined by a further station and
transmitted to the control station.
Ex. 1001, 7:4–19. According to claim 7, although the control station
controls alternate access to the frequency band by first radio interface
standard devices and second radio interface standard devices, the control
information directed to second radio interface standard devices “is
determined by a further station and transmitted to the control station.”
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To satisfy that requirement, Petitioner asserts that Shellhammer
teaches a further embodiment in which alternate access to the frequency
band is controlled by “a coordinator associated with the base station.”
Pet. 62 (citing Ex. 1005, 2:66–3:11). The assertion, even if true, is
insufficient to satisfy the limitation at issue. That is because claim 7 still
requires “the control station” itself to control access to the common
frequency band by stations working in accordance with the first radio
interface standard.
The cited portion of Shellhammer describes as follows:
An embodiment of the present invention includes a first
radio transceiver operating in accordance with a first
communication protocol which may be the 802.11 protocol) and
using a frequency band (which may be the 2.4 GHz ISM band),
a base station operating in accordance with the first
communication protocol, a second radio transceiver operating in
accordance with a second communication protocol (which may
be the Bluetooth protocol) and using the frequency band, and a
coordinator associated with the base station for, in turn,
activating the first radio transceiver, deactivating the first radio
transceiver, activating the second radio transceiver, and
deactivating the second radio transceiver.
Ex. 1005, 2:66–3:11 (emphasis added). Petitioner regards the referenced
“coordinator associated with the base station” as the further station recited in
claim 7, some unit other than the base station itself. Based on that
reasoning, it follows then that according to this embodiment of
Shellhammer, even access by the first radio interface standard devices would
be controlled by this further station and not by the base station as is required
by claim 7.
Further, claim 7 requires control information to be sent from the
“further station” to the control station. Petitioner does not account for that
requirement. The cited text reproduced above does not describe that any
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control information is sent from the coordinator associated with the base
station to the base station. Similarly, although Petitioner asserts that it
would have been obvious to one with ordinary skill in the art to use
Shellhammer’s CPU as this coordinator associated with the base station (Pet.
63), Petitioner does not explain why the CPU has to send pertinent control
information to the base station for indirect transmission to the controlled
devices.
We articulated the above analysis in the Decision on Institution.
Paper 9, 46–48. In its Reply, Petitioner did not present any rebuttal directed
to our analysis of the arguments in the Petition with respect to claim 7.
When asked to explain how Shellhammer’s “coordinator” accounts for the
limitations of claim 7, counsel for Petitioner stated: “Well, Your Honor, we
read the institution decision and your analysis of the coordinator there. And
we aren’t disputing that analysis from the institution decision. And we --
and as explained in the reply briefing, we are no longer relying on that
citation to the coordinator.” Tr. 16:23–26. Thus, the argument in the
Petition for claim 7 is unpersuasive.
Instead, in its Reply, Petitioner presents a new argument with respect
to claim 7, dropping its original argument based on the referenced
“coordinator” entirely. Reply 27–30. Specifically, Petitioner asserts:
A POSITA would have found it obvious for CPU 12 to
coordinate the APs because its central connectivity (shown in
Fig. 1) makes it optimally suited to coordinate timing and control
between multiple APs by determining and then transmitting the
duration and type of control to the APs. Ex. 1003 ¶ 304.
Therefore a POSITA would have found it obvious for CPU 12 to
coordinate information such as the duration and type of control
of the interface in accordance with the second radio interface
standard (e.g., Bluetooth), including transmitting such
information to the APs in the system. Ex. 1003 ¶ 304.
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Reply 28–29 (footnote omitted). That is substantively a new argument,
because the thrust of the argument is no longer the same as that of the
argument first presented in the Petition.
The initial argument first identified Shellhammer’s described
“coordinator” and the functions performed by that “coordinator,” and then
proposed to implement that “coordinator” and its functions by
Shellhammer’s CPU. Pet. 62–63. The Reply argument, however, jettisons
Shellhammer’s described coordinator and, instead, proposes to use
Shellhammer’s CPU (1) to perform a function not expressed by
Shellhammer as performed by the coordinator, and (2) not to perform a
function that is performed by the coordinator. The added function is the
sending of control information from the claimed further station to the
claimed control station, and the removed function is the control by the
coordinator of the first radio interface standard devices.
In the Reply, Petitioner states: “The Petition’s citation to the
discussion of a “coordinator” in Shellhammer was intended as a general
suggestion to modify the teachings, while Dr. Roy’s declaration provided the
more detailed explanation on why a POSITA would have modified
Shellhammer’s teachings based on the central role of CPU 12 in Figure 1.
See Ex. 1003 ¶ 304.” Reply 29 n. 7. The argument is misplaced as well as
unpersuasive. It is misplaced because neither Patent Owner nor the Board
reasonably can be expected to speculate on Petitioner’s intent, if that intent
is not reflected by the actual argument, as here. It is unpersuasive because
the argument expressed in the Petition, as discussed above, is not general but
specific in its reasoning, i.e., note Shellhammer’s “coordinator,” and
implement Shellhammer’s “coordinator” with Shellhammer’s CPU.
Thus, the new argument first presented in the Reply is not
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entitled to consideration. See 37 C.F.R. § 42.23(b); Intelligent-
BioSystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70
(Fed. Cir. 2016). Petitioner has not shown by a preponderance of the
evidence that claim 7 would have been obvious over Shellhammer.
F. Alleged Obviousness of Claim 8
Petitioner alleges that claim 8 is unpatentable on three separate
grounds: (1) Sherman and Trompower; (2) Shellhammer and Trompower;
and (3) Shellhammer and Panasik. A meaningful review of those grounds
cannot be performed because, as we explained below, claim 8 has
ambiguous claim scope, and it is unclear what is covered by claim 8. Claim
8 reads as follows:
8. An interface-control protocol method for a radio system
which has at least one common frequency band that is provided
for alternate use by a first and a second radio interface standard,
the radio system comprising:
stations which operate in accordance with a first radio
interface standard and/or a second radio interface
standard, and
a control station which controls the alternate use of the
frequency band,
wherein the control station, in addition to functions in
accordance with the second radio interface standard,
also carries out functions which cause radio systems
in accordance with the second radio interface
standard to interpret the radio channel as interfered
and to seize another radio channel for its own
operation.
Ex. 1001, 7:20–8:6 (emphasis added). The emphasized text also appears in
claim 5 which is reproduced below, except that it refers to “in accordance with
the second radio interface standard” rather than “in accordance with the first
radio interface standard” as in claim 5. Claim 5 is reproduced below:
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5. The method as claimed in claim 1, wherein the control
station also carries out functions which cause radio systems
in accordance with the first radio interface standard to
interpret the radio channel as interfered and to seize another
radio channel for its own operation.
Ex. 1001, 6:51–55. In IPR2019-01125, we determined that claim 5 has
ambiguous claim scope and it is unclear what is covered by claim 5.
IPR2019-01125, Paper 8, 16. We declined to institute inter partes review on
that basis. Id. at 17. For similar reasons as we expressed in IPR2019-01125
regarding claim 5, in our view the scope of claim 8 is ambiguous. Our
reasoning is essentially the same as that expressed with regard to claim 5 in
the decision declining to institute inter partes review in IPR2019-01125.
In the Decision on Institution, we determined that claim 8 has
ambiguous claim scope and that it is unclear what is covered by claim 8.
Paper 9, 49. We also concluded that “to make sense of claim 8 we would
have to engage in impermissible rewriting of the claim.” Id. at 52. We have
no reason to deviate from that analysis, notwithstanding Patent Owner’s
argument to the contrary, as discussed below.9
Claim 8 specifically refers to “radio systems” in plural. The only
“radio system” that has been defined or otherwise set forth, however, is that
radio system earlier recited in the claim, which includes stations that operate
in accordance with a first radio interface standard and/or a second radio
interface standard. Id. at 7:23–36. Further, given that that radio system
includes stations which operate in accordance with a first and/or a second

9 In its Reply, Petitioner states that it agrees with the Board’s determination
that claim 8 has ambiguous claim scope and points out that Patent Owner’s
arguments are merely “raw attorney argument, citing no evidence or expert
testimony.” Reply 30.
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radio interface standard, it cannot be referred to simply as a radio system “in
accordance with the first radio interface standard.”
If the term at issue were not “radio systems” but “stations,” the
language would be understandable because claim 8 cites to multiple stations
that may operate in accordance with a first radio interface standard. But the
term here is “radio systems,” and “radio system” and “station” are not used
interchangeably in the context of claim 8. Also, in the context of the
Specification, the terms “radio system” and “station” are not used
interchangeably. Indeed, the Specification states the following:
The radio system comprises one or more stations. The
stations may be, for example, computers of a wireless local area
network. These stations may be arranged, for example, only for
operation in accordance with a first or second radio interface
standard. But it is also possible for stations to operate in
accordance with both the first and the second radio interface
standard.
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 first
radio interface standard may be, for example, the HiperLAN/2
standard and the second radio interface standard may be the
IEEE802.11a standard.
Id. at 2:29–42. Thus, within the context of both the claim and the
Specification, a radio system and a station are not the same. It is unclear
what is referred to by the reference in claim 8 to “radio systems in
accordance with the second radio interface standard.”
We have reviewed the Specification and find nothing to give
sufficient meaning to the recited phrase in the context of claim 8. The
recited “radio systems” appear to be extraneous to the claim. Their role,
identity, and interaction with the rest of the claim are all uncertain. For
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example, although the claim recites that these radio systems can interpret the
radio channel as interfered, it is uncertain whether it is the communications
of those radio systems or the stations defined in claim 8 that are interfered.
It is even uncertain whether the “radio systems” make any transmission over
the common frequency band. In short, it is uncertain what the “radio
systems” are within the structural organization of claim 8.
We also do not think “radio systems” read on the stations defined in
claim 8. As discussed above, within the structural organization of claim 8, a
station is different from a radio system in that a station is contained within a
radio system. The Specification describes the same. Ex. 1001, 2:29.
Further, the Specification consistently does not refer to a “station” as a
“radio system.” In the context of claim 8, and in light of the Specification,
there is but just one radio system, the one that includes the stations of claim
8. Even when viewed with a lenient eye, it would be uncertain whether
“radio systems” read on the stations defined in claim 8.
There also is uncertainty with regard to the recitation “for its own
operation” at the end of claim 8. This phrase is too remote from the control
station recited at the beginning of claim 8 to be referring to the control
station, and the Specification appears not to support such a reading. We find
no specific example in the Specification of any radio channel seized by
another device “for use by the control station.” Further, although the phrase
is proximate to the recited action of the “radio systems,” the word “its” does
not agree, in number, to plural “radio systems.” Thus, the source or origin
of the “it” in “its” is uncertain. We do not know what the “it” is that forms
the basis for the possessive pronoun “its.”
We conclude that to make sense of claim 8 we would have to engage
in impermissible rewriting of the claim. In patent law, “the name of the
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game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998). We read the claims as they are written, and are “powerless to rewrite
the claims.” SRAM Corp., 465 F.3d at 1359; see also K-2 Corp., 191 F.3d at
1364 (“Courts do not rewrite claims; instead, we give effect to the terms
chosen by the patentee.”). We know of no authority suggesting that if a
claim as written does not make sense, then we are to rewrite it, in the name
of claim construction, to eliminate the problem.10
In the Petition, Petitioner acknowledges that the language of claim 8 is
unclear, but states as follows: “While the precise contours are unclear, for
purposes of this IPR, the limitation would at least include ‘two or more
stations which operate in accordance with a first radio interface
standard.’” Pet. 17 (citing Ex. 1003 ¶ 100). Dr. Roy does not explain in his
testimony why it is that “radio systems” at least includes two or more
stations which operate in accordance with a first radio interface standard.
Ex. 1003 ¶ 100. Neither does Petitioner. As we explained above, if the
claim were rewritten to refer to “stations” rather than “radio systems,” the
claim would make more sense. That is not, however, a justification to
rewrite the claim in that way.
Petitioner also asserts that “[t]he grounds [challenging claim 8] in this
Petition satisfy all proposed constructions.” Pet. 15. By “all proposed
constructions,” Petitioner appears to be additionally referring to the
construction proposed by the petitioner in IPR2019-01125. Id. at 17;

10 We recognize that in limited circumstances, clear errors in claims can be
corrected. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354
(Fed. Cir. 2003). The deficiency in the claim language here clearly does not
meet that standard. What the Applicant for patent intended by the language
used is subject to much speculation and conjecture.
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Ex. 1003 ¶ 110. That argument is misplaced, because it is uncertain, in light
of the ambiguity discussed above, whether a proper construction is one of
the proposed constructions. Also, Petitioner does not explain why we should
find that what have been proposed would fill the entire universe of possible
constructions to consider. Thus, that the grounds allegedly satisfy all
proposed constructions does not resolve the ambiguity problem.
Finally, Petitioner contends that the limitation “the control station [, in
addition to functions in accordance with the second radio interface standard]
also carries out functions which cause radio systems in accordance with the
second radio interface standard to interpret the radio channel as interfered
and to seize another radio channel for its own operation” constitutes a
means-plus-function element. Pet. 15. Petitioner also asserts that the
alleged grounds of unpatentability rely on prior art references that disclose
“the only possible [corresponding] structure in the specification” with
respect to the means-plus-function element. Id. The argument is without
merit because (1) we disagree that the limitation constitutes a means-plus-
function element under 35 U.S.C. § 112, paragraph 6,11 and (2) as discussed
above, the Specification does not indicate interchangeable use of the terms
“radio system” and “stations” but, rather, describes stations as contained
within a radio system. It is not enough for Petitioner to rely on mere
“possible” correspondence of disclosed structure, which has not been
sufficiently established.

11 Paragraphs 1–6 of § 112 were replaced with §§ 112(a)–(f) when § 4(c) of
the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284,
329 (2011) (“AIA”) took effect on September 16, 2012. Because the patent
application resulting in the ’676 patent was filed before the effective date of
the AIA, we refer to the pre-AIA version of 35 U.S.C. § 112.
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Under 35 U.S.C. § 112, paragraph 6, “[a]n element in a claim for a
combination may be expressed as a means or step for performing a specified
function without the recital of structure, material, or acts in support thereof,
and such claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents thereof.” The
limitation at issue here, i.e., “the control station [, in addition to functions in
accordance with the second radio interface standard] also carries out
functions which cause radio systems in accordance with the second radio
interface standard to interpret the radio channel as interfered and to seize
another radio channel for its own operation” does not include the word
“means” and thus presumptively is not a means-plus-function limitation
under 35 U.S.C. § 112, paragraph 6. See Williamson v. Citrix Online, LLC,
792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). However, that presumption
can be overcome when the phrase does not recite sufficiently definite
structure or recites function without sufficient structure for performing that
function. Id. at 1349.
Petitioner has not alleged, much less submitted evidence to
demonstrate, that one with ordinary skill in the art would not have
recognized the term “control station” as setting forth at least a class of
specific structures. Dr. Roy, Petitioner’s technical witness, gave no
testimony to that effect. Furthermore, if “control station” is entirely
functional in the claim, it is just as functional in the Specification and cannot
constitute the corresponding structure. Additionally, whether “control
station” is functional or structural does not resolve the ambiguity discussed
above, which relates to the term “radio systems” in the limitation.
Patent Owner argues that the limitation of claim 8 at issue is not
ambiguous but clear. PO Resp. 36–37. Patent Owner asserts:
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[T]he Patent Owner respectfully submits that the scope of Claim
8 is not ambiguous. Contrary to the statement in the Board
decision, Paper No. 9, 50-51, the control station may carry out
functions which would cause radio systems, i.e., any radio
system capable of receiving a signal from the control station,
which radio system operates in accordance with the second radio
interface standard, to understand that the radio channel/at least
one common frequency band, is not available; as a result, any
such radio systems would use a different radio channel. Thus, the
“radio systems” are clearly other radio systems, other than the
radio system recited in the preamble to which the stations and the
control station belong. It is also clear that by the radio channel/at
least one common frequency being interfered it is clear that there
are transmissions in the radio channel/at least one common
frequency, such that the other radio systems would experience
interference if they transmitted in that radio channel/at least one
common frequency.
Moreover, the alleged uncertainty as to the recitation “for
its own operation” is not of concern. It is clear that the phrase
refers to any one of the other radio systems, as it is clear that “for
its own operation” refers to the action “to seize another radio
channel,” and there is no question that it is the [other] radio
systems which, based on the functions of the control station,
seize another radio channel.
As it is clear that the “radio systems” are other radio
systems, and not the radio system of the preamble, the meaning
of that term is clear. In addition, as the meaning of the phrase
“interpret the radio channel as interfered” makes clear that the
radio systems understand that, if the radio systems were to
transmit in the radio channel, the signals of the radio systems
would be interfered with, and as the reference of “for its own
operation” to any one of the other radio systems is clear, the
meaning of claim 8 is not ambiguous.
PO Resp. 36–37.
The arguments are unpersuasive. For each point addressed by Patent
Owner, rather than to explain with reasons, references to embodiments in the
Specification, and supporting testimony from a technical witness, Patent
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Owner simply concludes that it is clear the language at issue carries a certain
meaning. Such conclusory disagreement, without analysis and factual
underpinning, is not sufficient to persuade. Petitioner correctly notes that
Patent Owner’s arguments are merely “raw attorney argument, citing no
evidence or expert testimony.” Reply 30. Argument of counsel cannot take
the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d
775, 782 (CCPA 1977).
Further, Patent Owner’s proposed construction is anything but a clear
reading of the claim as Patent Owner asserts. Despite the fact that claim 8
begins with recitation of a “radio system,” Patent Owner urges that “radio
systems” in the body of the claim clearly refers to radio systems other than
the radio system previously introduced in the claim. PO Resp. 36–37. That
proposed reading runs against the grain is not readily suggested by the claim
language and the previous introduction of “radio system.” Patent Owner
does not explain why one with ordinary skill would not attempt a reading
that maps to a previous introduction of the same term. Also, Patent Owner’s
proposed construction limits actions of radio systems that are outside of the
operation of the radio system that is claimed. Such a reading is atypical and
certainly less than clear.
Regarding situations where the Board cannot reasonably determine
the scope of a challenged claim, the Court of Appeals for the Federal Circuit
has instructed as follows:
[T]he proper course for the Board to follow, if it cannot ascertain
the scope of a claim with reasonable certainty for purposes of
assessing patentability, is to decline to institute the IPR or, if the
indefiniteness issue affects only certain claims, to conclude that
it could not reach a decision on the merits with respect to whether
petitioner had established the unpatentability of those claims
under sections 102 or 103.
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Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353 (Fed.
Cir. 2020) (footnote omitted). This is such a situation. We cannot reach a
decision on the merits with respect to whether Petitioner has established the
unpatentability of claim 8 under any ground of unpatentability asserted by
Petitioner, i.e., (1) obvious over Sherman and Trompower, (2) obvious over
Shellhammer and Trompower, and (3) obvious over Shellhammer and
Panasik.
III. CONSTITUTIONAL APPOINTMENT
Patent Owner argues that Administrative Patent Judges (“APJs”) “are
principal officers under the Appointments Clause of the Constitution” “but
undisputably are not appointed through the constitutionally-mandated
mechanism of appointment for principal officers.” PO Resp. 60. The
Federal Circuit, however, addressed this issue and devised a remedy in
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1325 (Fed. Cir. 2019)
cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206
(Oct. 13, 2020). Patent Owner argues that the remedy devised by the
Federal Circuit “impermissibly rewrites the statutes governing APJs.” Id. at
61. We decline to consider the argument because the Arthrex decision states
otherwise. See Arthrex, 941 F.3d at 1337 (“This as-applied severance . . .
cures the constitutional violation.”).
IV. CONCLUSION12
Petitioner has proved by a preponderance of the evidence that
claims 3 and 9 of the ’676 patent are unpatentable on at least one asserted
ground of unpatentability, as summarized in the following table:

12 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
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Claims 35 U.S.C. §
Reference(s)/
Basis
Claim Shown
Unpatentable
Claim Not
Shown
Unpatentable
3, 6, 9 103(a) Sherman 3, 6, 9
3, 7, 9 103(a) Shellhammer 3, 9 7
Overall
Outcome
3, 9 6, 7

We cannot reach a decision on the merits with respect to whether
Petitioner has established the unpatentability of claim 8 under any ground of
unpatentability asserted by Petitioner. See Samsung, 948 F.3d at 1353.

V. ORDER
Accordingly, it is:
ORDERED that claims 3 and 9 of the ’676 patent have been proved
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).

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For PETITIONER:
Harper Batts
Jeffrey Liang
Chris Ponder
Sheppard, Mullin, Richter & Hampton LLP
hbatts@sheppardmullin.com
jliang@sheppardmullin.com
cponder@sheppardmullin.com

For PATENT OWNER:
Ryan Loveless
Brett Mangrum
James Etheridge
Jeffrey Huang
Etheridge Law Group
ryan@etheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
jeff@etheridgelaw.com