Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: April 16, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01562
`Patent 6,977,944 B2
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Marvell Semiconductor, Inc. (“Petitioner”) filed a Petition pursuant to
`35 U.S.C. §§ 311–319 to institute an inter partes review of claims 7–12 and
`19–24 of U.S. Patent No. 6,977,944 B2 (“the ’944 patent”). Paper 2
`(“Pet.”). Intellectual Ventures I LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). Applying the standard set forth in
`
`
`571-272-7822
`
`Paper 11
`Entered: April 16, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01562
`Patent 6,977,944 B2
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Marvell Semiconductor, Inc. (“Petitioner”) filed a Petition pursuant to
`35 U.S.C. §§ 311–319 to institute an inter partes review of claims 7–12 and
`19–24 of U.S. Patent No. 6,977,944 B2 (“the ’944 patent”). Paper 2
`(“Pet.”). Intellectual Ventures I LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). Applying the standard set forth in
`
`
`
`IPR2014-01562
`Patent 6,977,944 B2
`
`35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood
`that Petitioner would prevail with respect to at least one challenged claim,
`we deny the Petition and do not institute an inter partes review of claims 7–
`12 and 19–24.
`
`I. BACKGROUND
`A. The Prior Petition
`This is the second attempt by Petitioner to institute inter partes review
`of claims 7–12 and 19–24 of the ʼ944 patent. An earlier petition was filed
`on March 27, 2014. Case IPR2014-00547 (“the ʼ547 case”), Paper 1.1 That
`petition was denied by the Board in a Decision entered on December 3,
`2014. Id. at Paper 17 (“ʼ547 Decision”).
`The Petition in this case was filed on September 29, 2014, before
`entry of the Board’s decision denying the petition in the ʼ547 case. This
`Petition is limited to one of the references relied upon in the ʼ547 case:
`Sherman U.S. Patent No. 7,046,690. Ex. 1004 (“Sherman”).
`In the Patent Owner’s Preliminary Response in the ʼ547 case (Paper
`15), Patent Owner asserted that Petitioner had failed to establish that
`Sherman is prior art to the ʼ944 patent:
`On its face, the Sherman patent claims priority to three U.S.
`provisional applications filed
`in January 2001. Though
`Petitioner relies on the priority dates of Sherman’s provisional
`applications in alleging that Sherman is prior art with respect to
`the ’944 patent, Petitioner fails to establish that the subject
`matter relied upon in Grounds 1 and 2 finds support in any of
`Sherman’s provisional patent applications. In fact, Petitioner
`did not even file Sherman’s underlying U.S. provisional patent
`
`1 A Corrected Petition (Paper 13) was filed in the ʼ547 case on June 2, 2014.
`
`2
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`IPR2014-01562
`Patent 6,977,944 B2
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`
`applications as exhibits. Accordingly, Petitioner has not shown
`that Sherman is prior art.
`Id. at 4.
`
`In our Decision denying institution in the ʼ547 case, we were
`persuaded by this argument:
`We agree with Patent Owner that Petitioner has failed to
`demonstrate adequately that Sherman qualifies as prior art.
`Petitioner was aware that the ʼ944 patent claimed the benefit of
`the January 12, 2002 provisional filing date, but did not provide
`the Board with any evidence that Sherman’s effective filing
`date was earlier.
`ʼ547 Decision 10. In this Petition, Patent Owner addresses this issue. Pet.
`49–52. For the reasons that follow, we are persuaded that Petitioner has
`demonstrated that Sherman qualifies as prior art to the ʼ944 patent.
`B. The ʼ944 patent (Ex. 1101)
`The ʼ944 patent is directed to systems and methods for reducing the
`likelihood of collisions between data packets in wireless communications
`channels. Ex. 1101, col. 1, ll. 17–20.
`According to Patent Owner, one problem in the state-of-the-art at the
`time of the claimed invention was that a wireless device compliant with the
`IEEE 802.11(b) standard could not determine when a wireless device
`compliant with the IEEE 802.11(g) standard is transmitting over a wireless
`communication channel. Prelim. Resp. 3; Ex. 1101, col. 1, ll. 45–53. This
`problem was caused by the two types of wireless devices operating in the
`same frequency spread spectrum (e.g., the 2.4 GHz frequency spectrum), but
`employing incompatible modulation schemes. Id. The modulation standard
`for IEEE 802.11(b) is Complementary Code Keying (“CCK”), while IEEE
`802.11(g) uses Orthogonal Frequency Division Multiplexing (“OFDM”).
`3
`
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`IPR2014-01562
`Patent 6,977,944 B2
`
`Ex. 1101, col. 1, ll. 30–31, 50. The latter scheme provides higher bit rates.
`Id. at col. 1, ll. 43–45. The IEEE 802.11(g) OFDM transmissions, however,
`are “hidden” from legacy 802.11(b) nodes, which cannot detect the OFDM
`carrier. Id. at col. 1, ll. 50–53.
`The system of the ʼ944 patent overcomes this problem by transmitting
`two types of signals: a first signal in accordance with a first modulation
`scheme (e.g., OFDM) and a second signal in accordance with a second
`modulation scheme (e.g., CCK). Prelim. Resp. 4. The second signal (which
`is transmitted before the first signal) is detected and processed by both types
`of wireless devices. The second signal indicates clear to send (“CTS”) and
`includes a duration field having a value based upon the expected length of
`time required to transmit at least one data frame. The first signal, which
`contains at least one data frame, is then transmitted after the second signal
`using the first modulation scheme. Id.
`In one embodiment, two types of devices are involved. One type of
`wireless device detects and processes the second signal but not the first
`signal. Prelim. Resp. 4. A second type of device processes both signal
`types. Because both types of wireless devices detect and process the second
`signal type, both types of wireless devices refrain from using the
`communications channel after receiving the second signal until after the
`length of time indicated by the second signal. Id. During that time, the first
`signal (including the at least one data frame) can be transmitted without
`colliding with another signal. Id.; Ex. 1101, col. 3, ll. 22–37.
`The ʼ944 patent also describes a device sending a second signal
`indicating CTS that is self-addressed to the sender of the second signal.
`
`4
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`IPR2014-01562
`Patent 6,977,944 B2
`
`Prelim. Resp. 4. In the prior art, a request to send/clear to send
`(“RTS/CTS”) sequence, requiring two CCK data frames, was employed. Id.
`at 5; Ex. 1101, col. 2, ll. 45–47. The technique of addressing the CTS signal
`to the sender is said to overcome deficiencies of signaling overhead in the
`prior art because it requires just one frame (a CTS frame) and has other
`advantages. Prelim. Resp. 5.; Ex. 1101, col. 6, ll. 49–54.
`
`
`D. Illustrative Claim
`Claim 7 is illustrative of the ʼ944 patent claims at issue:
`7. A station comprising:
`(a) a receiver for monitoring a shared-communications
`medium for an opportunity to transmit a first signal and a
`second signal; and
`(b) a transmitter for:
`(1) transmitting said second signal in accordance with a
`second modulation scheme on said shared-communications
`medium, wherein:
`
`(i) said second signal conveys a frame indicating
`clear to send that is addressed to the sender of said frame
`indicating clear to send; and
`
`(ii) said frame indicating clear to send comprises a
`duration field that has a value based on the expected length of
`time required to transmit at least one data frame; and
`(2) transmitting said first signal in accordance with a first
`modulation scheme on said shared-communications medium
`after said second signal, wherein said first signal conveys said
`at least one data frame;
`wherein said frame indicating clear to send and said at
`least one data frame are addressed to different stations.
`
`
`5
`
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`IPR2014-01562
`Patent 6,977,944 B2
`
`
`E. Related Proceedings
`Petitioner states that the ’944 patent is the subject of the following
`civil actions: Intellectual Ventures I LLC v. Canon Inc., 1:13-cv-473 (D.
`Del.); Intellectual Ventures I LLC v. Ricoh Co. Ltd., 1:13-cv-474 (D. Del.);
`and Intellectual Ventures I LLC v. AT&T Mobility LLC., 1:12-cv-00193 (D.
`Del.). Pet. 1.
`
`
`F. Claim Construction
`Petitioner requests construction of five terms that were considered in
`our ʼ547 Decision and presents arguments substantially the same as in that
`proceeding:
`
`1. a “receiver for monitoring a shared-communications medium”
`
`2. a “frame indicating clear to send that is addressed to the sender of
`
` said frame”
`
`3. the “expected length of time required to transmit at least one data
`
` frame”
`4. “modulation scheme”
`5. the “expected length of time required to transmit the subsequent
` data frames conveyed by said first signal and said third signal”
`
`Pet. 4–16.
`
`In the ʼ547 Decision we concluded that for each, no express
`construction was required. Id. at 5–8. Presented with the substantially the
`same arguments here, we are not persuaded of any reason to construe those
`terms expressly.
`
`
`G. References
`Petitioner relies on one reference: Sherman U.S. Patent No.
`7,046,690 (“Sherman”). Ex. 1104. Petitioner also relies on Admitted Prior
`
`6
`
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`IPR2014-01562
`Patent 6,977,944 B2
`
`Art (“APA”) as discussed below. Finally, Petitioner also relies on a
`Declaration from Professor Zhi Ding (“Ding Decl.”). Ex. 1103.
`
`
`H. Grounds Asserted
`Petitioner challenges claims 7–12 and 19–24 of the ’944 patent on the
`following grounds.
`References
`
`Sherman
`
`Sherman and APA
`
`
`
`Claims Challenged
`Basis
`§ 102(e) 7, 8, 10, 19, 22, and
`23
`§ 103(a) 9, 11, 12, 20, 21, and
`24
`
`II. ANALYSIS
`A. Sherman Qualifies as Prior Art
`Petitioner contends that Sherman qualifies as prior art to the ʼ944
`patent under 35 U.S.C. § 102(e). Pet. 3. The ʼ944 patent issued from a
`provisional application dating back to January 12, 2002, and claims the
`benefit of that earlier filing date. Pet. 3, 14; Ex. 1101, col. 1, ll. 9–13. We
`determined in the ʼ547 case that Patent Owner had demonstrated adequately
`the entitlement of the ʼ944 patent to the January 12, 2002, filing date of the
`provisional application. ʼ547 Decision 10. Petitioner does not challenge
`that determination in this proceeding.
`We concluded also in the ʼ547 case that Petitioner had not established
`an effective date for Sherman as prior art that is earlier than the effective
`filing date of the ʼ944 patent. Id. at 10. In that regard, Sherman claims the
`benefit of the filing date of several provisional applications, the earliest of
`which was filed on January 16, 2001. Ex. 1104, col. 1, ll. 4–12.
`
`7
`
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`IPR2014-01562
`Patent 6,977,944 B2
`
`
`Petitioner has now provided proof that Sherman is entitled to that
`earlier filing date. Pet. 50–51. Patent Owner’s Preliminary response does
`not challenge this assertion. We are persuaded, therefore, that Sherman
`qualifies as prior art to the ʼ944 patent claims challenged in the Petition.
`
`
`B. Overview of Sherman
`Sherman addresses the problem of avoiding interference on wireless
`networks when new protocols are introduced:
`In development of quality of service enhancements for
`the existing 802.11 standard, it is desirable to guarantee the
`time a packet or frame will be delivered on the wireless local
`area networks. However, when new protocols within new
`versions such as the enhanced 802.11e standard are introduced,
`there may be stations on the wireless local area networks that
`may not understand these new protocols. That is, there may be
`older stations in the wireless local area network that may not be
`equipped
`to practice
`the enhanced 802.11e
`standard.
`Furthermore, not all new stations practice the enhanced 802.11e
`standard. Accordingly, the older stations or stations not
`practicing the enhanced 802.11e standard might interfere with
`the enhanced 802.11e protocols.
`
`
`Ex. 1104, col. 1, ll. 31–42. The patent describes using the duration field of
`the CTS signal to suppress transmissions by certain stations:
`Because the stations within the range and obeying the duration
`field may believe the duration field represents the time it will
`take for transmissions immediately following the sequence, the
`obeying stations are
`in essence being spoofed by
`the
`transmitting station. That is, the duration field is not being used
`by
`the
`transmitting station for
`its
`intended purpose of
`representing the time it will take for transmissions immediately
`following the sequence. Rather, the duration field is used by the
`
`8
`
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`IPR2014-01562
`Patent 6,977,944 B2
`
`
`the
`to suppress
`times
`indicate
`to
`transmitting station
`transmissions Tx1, Tx2, . . . TxN by the stations within the
`range of the signal 80, where if the suppressed transmissions
`Tx1, Tx2, . . . TxN have begun, another more critical
`transmission may be delayed, a protocol other than 802.11
`which might be undetectable to the 802.11 station may interfere
`with the 802.11 station, or the transmitting 802.11 stations may
`interfere with a foreign protocol or advanced 802.11 protocol.
`
`Id. at col. 8, ll. 10–27.
`
`In one embodiment (shown in Fig. 7) a technique for sharing with a
`non-802.11 protocol is described. Id. at col. 12, ll. 4–22. This technique
`involves a station sending a CTS signal addresses to itself:
`For example, as shown in FIG. 7, a station practicing the
`enhanced 802.11e standards could send a signal 80, such as a
`clear-to-send signal (CTS), to itself with a duration field set to a
`specified duration value. All stations
`including stations
`practicing the enhanced 802.11e standards would set their
`network allocation vectors (NAV) accordingly. The other
`unknown or foreign protocol would then have preferential use
`of the medium during that specified duration value interval. The
`stations practicing the 802.11 standards within the range of the
`clear-to-send signal (CTS) would set their network allocation
`vectors so as not to use the medium, even thought they might
`not be able to detect the other protocol.
`
`Id. at col 12, ll. 11–22.
`
`
`C. Anticipation of Claims 7, 8, 10, 19, 22 and 23 by Sherman
`Petitioner’s analysis of this challenge appears at pages 17–37 of the
`Petition. Patent Owner responds that Sherman does not disclose certain
`elements of the challenged claims. Prelim. Resp. 1 (“In at least two
`dispositive ways, Sherman discloses elements that cannot coexist with the
`9
`
`
`
`IPR2014-01562
`Patent 6,977,944 B2
`
`structure specified by the limitations of the challenged claims.”)
`
`Specifically, Patent Owner asserts that Petitioner fails to establish that
`two elements of independent claims 7 and 19 (and thus their dependent
`claims) are not met.
`1. a “transmitter for transmitting a signal . . . .”
`Patent Owner contends that “Sherman does not disclose a transmitter
`that transmits a signal that conveys at least one data frame after transmitting
`a signal that conveys a frame indicating ‘clear to send’ that is addressed to
`itself, as recited by each of the challenged claims.” Prelim. Resp. 1. Patent
`Owner asserts that according to the description of Figure 7 in Sherman,
`quoted supra and relied on by Petitioner to meet this limitation, a station
`sending a CTS frame addressed to itself would be “precluded” from
`transmitting the first signal called for in these claims. Prelim. Resp. 21.
`Specifically, the station upon receiving the CTS sent to itself would set its
`network navigation vector (NAV) so that for the duration indicated in the
`CTS signal, it cannot transmit the “one or more data frames” called for in the
`claims. Id. at 22.
`Petitioner does not explain how the statement in Sherman’s discussion
`of Figure 7, that “[a]ll stations including stations practicing the enhanced
`802.11e standards would set their network allocation vectors (NAV)
`accordingly,” would not apply to the station sending the self-addressed CTS.
`Likewise, Petitioner’s citations to the Sherman provisional application (Ex.
`1107) do not demonstrate that this limitation is met.2 Pet. 23–24. Nor does
`
`
`2 Three Sherman provisional applications were submitted by Petitioner. See
`
`
`10
`
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`
`IPR2014-01562
`Patent 6,977,944 B2
`
`Petitioner point to any discussion of this in the Ding Declaration.
`Accordingly, we are persuaded by Patent Owner’s argument, and therefore
`conclude that the information in the Petition does not demonstrate that this
`limitation is met by Sherman.
`2. a “duration field has a value based on . . .”
`Patent Owner contends that the determination of the duration field of
`the CTS addressed to the sender in Sherman does not meet the requirement
`that the field that have “a value based on the expected length of time
`required to transmit at least one data frame” in claim 7, or the similar
`requirement in claim 19. Patent Owner asserts that Sherman’s discussion of
`“spoofing” (see supra) discloses that the duration field is not related to the
`expected length of time to transmit a data frame, but in fact is intended to
`“misrepresent” that length of time. Prelim. Resp. 24.
`Petitioner addresses this limitation at pages 25–28 of the Petition. The
`Petition states: “Sherman describes setting the duration field based on a
`length of time the shared medium is expected to remain busy because of
`transmissions that will follow the signal 80 and its component CTS frame
`(i.e., the amount of time required to transmit data for which the channel is
`being cleared through transmission of the CTS).” Id. at 26. The supporting
`citation to Sherman (col. 12, ll. 7–11), however, does not discuss how the
`duration is determined: “If the medium is to be reserved for a period of time
`for use by a non-802.11 protocol, the transmitting station could send a
`message with the duration field set so as to prevent use of the medium by
`
`Exs. 1105–07. Petitioner relies only on U.S. Provisional Application No.
`60/262,604, filed January 17, 2001 (Ex. 1107). Pet. 16.
`
`11
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`IPR2014-01562
`Patent 6,977,944 B2
`
`802.11 stations when another protocol is active.” Nothing is said there or in
`the surrounding text that would support Petitioner’s statement regarding the
`duration length.
`Petitioner relies also on the Sherman provisional application (Ex.
`1104) and paragraph 28 of the Ding Declaration (Ex. 1103). Pet. 26. We
`are not convinced that these support Petitioner. Petitioner’s citations to the
`Sherman provisional include the following description of “spoofing” as
`“lying”:
`Because the STA obeying the duration field may believe it is
`being done for another purpose, they are in essence being lied
`too or "spoofed" by the sending STA. This is in part the novelty
`of the invention, as the duration field is not being used for its
`intended purpose. By lying to legacy STA (LSTA), it is
`possible to get them to exhibit behavior for which they were not
`originally programmed.
`
`
`Ex. 1107, p.2. This citation supports Patent Owner’s position. Likewise,
`the Ding Declaration does not support Petitioner. The Declaration does not
`address what the Sherman provisional discloses to a person of ordinary skill
`in the art. Instead, the Declaration states an opinion from Professor Ding’s
`own perspective as to what is “contemplated” by the Sherman provisional.
`Ding Decl. ¶ 29 (“Therefore, it is clear to me that the Sherman Provisional
`contemplated setting a duration field of the CTS based on the expected time
`of transmission using another protocol.”). We do not find this type of
`opinion persuasive. See infra.
`Accordingly, we are persuaded by Patent Owner’s argument, and
`therefore conclude that the Petition does not demonstrate that this limitation
`is met by Sherman.
`
`12
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`
`D. Obviousness of Clams 9, 11, 12, 20, 21, and 24 over Sherman and APA
`Petitioner’s analysis of this challenge appears at pages 37–49 of the
`Petition. Patent Owner responds that Petitioner does not show how the
`admitted prior art (APA) “compensates for the fundamental deficiencies of
`Sherman’s disclosure with respect to independent claims 7 and 19.” Prelim
`Resp. 25.
`Petitioner’s obviousness analysis is directed to features of the
`challenged dependent claims, for example, the use of OFDM and CCK in
`claims 9 and 21 (Pet. 39, 48); transmission of a third signal in claim 11 (id.
`at 41); use of the 2.4 GHz band in claims 12 and 24 (id. at 46); and use of
`two different modulation schemes in claim 20 (id.). We agree with Patent
`Owner that this analysis does not show how the claim elements missing
`from Sherman discussed supra are present in the APA, or provide a rationale
`for why one of ordinary skill would modify Sherman to include them.
`In that connection, we are not persuaded by the Ding Declaration that
`it would have been obvious to supply those missing features. For example,
`the declaration states: “Therefore, it is clear to me that the Sherman
`Provisional contemplated a station setting a duration field of the CTS frame
`to block the medium from being used by other stations based on the
`expected time of transmission the station itself needs.” Ding Decl. ¶ 29.
`This opinion is not convincing of obviousness, which should be determined
`from the perspective of a person of ordinary skill, and not what may be
`“clear” to the expert. Furthermore, stating what the Sherman provisional
`application “contemplated” is speculation and in any event not sufficient.
`
`13
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`
`This is not an isolated statement by Professor Ding. Elsewhere, the
`Ding Declaration states: “[I]t is clear to me that the transmitting station’s
`own address has to be used in that address field in order for the transmitting
`station to send the CTS frame to itself.” Id. ¶ 26. Further, the Declaration
`states: “[I]t is clear to me that the station to which the CTS frame is
`addressed (i.e., the transmitting station itself) differs from the station to
`which the data frame is being addressed (i.e., the destination station).”
`Id.¶ 27. Still elsewhere, the Declaration states: “[I]t is clear to me that the
`transmissions using the other protocol (i.e., the protocol for which the
`medium is reserved) would include at least one data frame, and could
`include multiple data frames.” Id. at ¶ 28. Such expressions of personal
`opinion, without reference to a person of ordinary skill and absent
`supporting citations, are not persuasive. We, therefore, give the Ding
`Declaration limited weight on the issues of patentability before us.
`E. Summary and Conclusion
`We conclude that the information presented in the Petition does not
`
`demonstrate a reasonable likelihood that the challenged claims are
`anticipated by Sherman or obvious over Sherman and APA.
`
`
`III. MOTION FOR JOINDER
`The original Petition was accompanied by a motion seeking to join
`
`this proceeding with the ʼ547 case. Paper 3. In light of the Board’s denial
`of both petitions, the motion is dismissed as moot.
`
`
`14
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`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied and no inter partes review is
`instituted.
`
`
`
`15
`
`
`
`16
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`IPR2014-01562
`Patent 6,977,944 B2
`
`PETITIONER:
`W. Karl Renner
`axf@fr.com
`
`Jeremy Monaldo
`IPR27410-0022IP2@fr.com
`
`PATENT OWNER:
`Herbert D. Hart III
`hhart@mcandrews-ip.com
`
`Kirk A. Vander Leest
`kvanderleest@mcandrews-ip.com
`
`Michael T. Cruz
`mcruz@mcandrews-ip.com
`
`Tim R. Seeley
`Intellectual Ventures
`tim@intven.com
`
`James R. Hietala
`Intellectual Ventures
`jhietala@intven.com
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