Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 39
`Entered: September 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-003141
`Patent 7,477,624 B2
`____________
`
`
`
`
`
`Before BART A. GERSTENBLITH, DAVID C. McKONE, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 Case IPR2015-01577 has been joined with this proceeding
`
`
`571-272-7822
`
`
`
`
`
`Paper 39
`Entered: September 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-003141
`Patent 7,477,624 B2
`____________
`
`
`
`
`
`Before BART A. GERSTENBLITH, DAVID C. McKONE, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 Case IPR2015-01577 has been joined with this proceeding
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`
`I. INTRODUCTION
`A. Background
`Marvell Semiconductor, Inc., MediaTek Inc., and MediaTek USA,
`Inc., filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of
`claims 1–4, 13–16, and 25–29 of U.S. Patent No. 7,477,624 B2 (“the
`’624 patent”). Bandspeed, Inc. (“Patent Owner”) did not file a Preliminary
`Response. Prior to institution, we granted a motion to terminate the
`proceeding with respect to Marvell Semiconductor, Inc. Paper 11. Pursuant
`to 35 U.S.C. § 314, in our Institution Decision (Paper 12, “Dec.”), we
`instituted this proceeding as to each of the challenged claims.
`After institution, Qualcomm Inc. filed substantially the same petition
`in IPR2015-01577 (IPR2015-01577, Paper 1), together with a Motion for
`Joinder of IPR2015-01577 with the instant proceeding (IPR2015-01577,
`Paper 2). On September 17, 2015, we granted a motion to terminate this
`proceeding with respect to MediaTek Inc. and MediaTek USA, Inc., but not
`as to Patent Owner, leaving only Patent Owner as a party to the proceeding.
`Paper 20. On November 16, 2015, we granted Qualcomm Inc.’s Motion for
`Joinder, joining Qualcomm Inc. to the instant proceeding. Paper 21.
`Qualcomm Inc. (“Petitioner”) is now the sole petitioner.
`After institution of trial, Patent Owner filed a Response (Paper 26,
`“PO Resp.”), and Petitioner filed a Reply to the Patent Owner’s Response
`(Paper 27, “Reply”). An oral argument was held on May 26, 2016, and the
`transcript was entered into the record. Paper 38 (“Tr.”).
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`Petitioner relies on the testimony of Zhi Ding, Ph.D. Ex. 1002 (“Ding
`Decl.”); Ex. 1017 (“Supp. Ding Decl.”). Patent Owner relies on the
`testimony of Jose Luis Melendez, Ph.D. Ex. 2001 (“Melendez Decl.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a final
`written decision under 35 U.S.C. § 318(a) as to the patentability of the
`challenged claims. Based on the record before us, Petitioner has
`demonstrated, by a preponderance of the evidence, that claims 1, 2, 4, 13,
`14, 16, 25, 26, 28, and 29 are unpatentable, but has not demonstrated that
`claims 3, 15, and 27 are unpatentable.
`
`
`B. The ’624 Patent
`The ’624 patent was filed on April 3, 2006, as a continuation of U.S.
`Patent Application No. 09/948,488, which was filed on September 6, 2001,
`and issued as U.S. Patent No. 7,027,418. Ex. 1001 [63]. The ’624 patent
`also claims the benefit of the filing date of U.S. Provisional Application
`No. 60/264,594, filed on January 25, 2001. Id. at [60].
`The ’624 patent relates to managing the use of communications
`channels based on channel performance. Ex. 1001, col. 1, ll. 46–48.
`Figure 2 of the ’624 patent is reproduced below.
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`Figure 2 is a block diagram that depicts a communications network having
`“master” communications device 210 and multiple “slave” communications
`devices 220 and 230, each of which includes a memory, a processor, and a
`transceiver. Id. at col. 9, ll. 53–63. To manage the use of communications
`channels between the master and slaves via the respective transceivers, an
`initial set of channels is selected based on selection criteria at the start-up of
`the communications network. Id. at col. 6, ll. 19–21. Additional sets of
`channels then are selected periodically for adaptive avoidance of
`interference. Id. at col. 6, ll. 21–23.
`For example, master 210 may select a set of communications channels
`from default communications channels for a specified communications
`protocol, generate identification data for the selected set of channels, and
`transmit the identification data to slave 220. Id. at col. 9, l. 64–col. 10, l. 3.
`If slave 230 is incapable of using the selected set of channels, master 210
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`communicates with slave 220 using the selected set of communications
`channels and communicates with slave 230 using the default
`communications channels for the specified communications protocol. Id. at
`col. 10, ll. 4–15.
`The ’624 patent describes various techniques for assessing
`performance of communications channels that include the use of special test
`packets (id. at col. 10, l. 33–col. 12, l. 35), a received signal strength
`indicator (“RSSI”) (id. at col. 12, l. 37–col. 13, l. 2), and cyclic redundancy
`checks (“CRC”) (id. at col. 13, l. 50–col. 14, l. 6). Communications
`channels are classified based on channel performance as determined by such
`assessments and according to classification criteria. Id. at col. 14, ll. 63–65.
`In a particular implementation, a “referendum” approach is used in which
`participant devices “vote” whether to use a particular channel. Id. at col. 16,
`ll. 65–66. The votes may be used according to various approaches, such as
`through the use of weighted votes, in determining final channel
`classifications. Id. at col. 17, ll. 25–34.
`
`
`C. Illustrative Claim
`Independent claim 1 is illustrative of the claims at issue:
`1. A communications device for use in a network of devices,
`comprising:
`a memory for storing instructions;
`a processor that is communicatively coupled to the
`memory, wherein the memory includes instructions which, when
`processed by the processor, causes:
`selecting, based upon performance of a plurality of
`communications channels at a first time, a first set of two
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`or more communications channels from the plurality of
`communications channels;
`selecting, based upon performance of the plurality
`of communications channels at a second time that is later
`than the first time, a second set of two or more
`communications channels
`from
`the plurality of
`communications channels; and
`a transceiver that is communicatively coupled to the
`memory and that is configured to transmit to and receive from
`another communications device, wherein:
`for a first period of time, the first set of two or more
`communications channels is used to transmit to and
`receive from the other communications device; and
`for a second period of time that is after the first
`period of
`time,
`the second set of
`two or more
`communications channels is used to transmit to and
`receive from the other communications device instead of
`the first set of two or more communications channels,
`wherein
`the communications device
`is a
`first
`communications device, the other communications device is a
`second communications device, a default set of two or more
`communications channels is associated with a hopping sequence
`and is not changed based on the performance of the plurality of
`communications channels; and
`the transceiver is configured to transmit to and receive
`from a third communications device over the default set of two
`or more communications channels while transmitting to and
`receiving from the second communications device over the first
`set of two or more communications channels and while
`transmitting to and receiving from the second communications
`device over the second set of two or more communications
`channels.
`
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`D. References
`Petitioner relies on the following references.
`Gerten
`US 6,760,319 B1
`July 6, 2004
`Cuffaro
`US 6,418,317 B1
`July 9, 2002
`Gendel
`US 6,115,407
`Sept. 5, 2000
`Haartsen
`US 7,280,580 B1
`Oct. 9, 2007
`Sage
`US 5,781,582
`July 14, 1998
`
`
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`
`E. Instituted Grounds of Unpatentability
`We instituted trial on the following grounds of unpatentability.
`Dec. 25.
`Reference(s)
`
`Gerten
`Gerten and Cuffaro
`Gendel and Haartsen
`Gendel, Haartsen, and Sage
`
`
`Claims Challenged
`Basis
`§ 102(e) 1, 4, 13, 16, 25, 28, and 29
`§ 103(a) 2, 3, 14, 15, 26, and 27
`§ 103(a) 1, 4, 13, 16, 25, 28, and 29
`§ 103(a) 2, 14, and 26
`
`F. Related Matters
`The ’624 patent has been asserted in several lawsuits in the United
`States District Court for the Western District of Texas. Pet. 1; Paper 6, 2–3.
`Those cases include Bandspeed, Inc. v. Qualcomm Inc., 1:14-CV-00436
`(W.D. Tex.) (“Qualcomm Litigation”).
`The ’624 patent is also the subject of inter partes review in
`IPR2015-00315 and IPR2015-00316. U.S. Patent No. 7,903,608 B2 (“the
`’608 patent”), which issued from a continuation application based on the
`application issuing as the ’624 patent, is the subject of IPR2015-00237,
`which was terminated on August 12, 2015 (IPR2015-00237, Paper 19). U.S.
`Patent No. 8,542,643, which is a divisional of the ’608 patent, is the subject
`of Marvell Semiconductor, Inc. v. Bandspeed, Inc., Case IPR2015-00531.
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`Cases IPR2015-00315, IPR2015-00316, and IPR2015-00531 were argued
`together with this proceeding at the May 26, 2016, oral hearing.
`
`
`II. ANALYSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, 1278 (Fed. Cir. 2015) (“We conclude that Congress
`implicitly approved the broadest reasonable interpretation standard in
`enacting the AIA.”), aff’d sub nom. Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`interpretation standard); Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012).
`
`
`1. “hopping sequence”
`Each of challenged claims 1, 2, 14, 16, 26, and 28 recites a “hopping
`sequence.” Petitioner’s declarant, Dr. Zhi Ding, attests that the phrase is “a
`well-understood term of art.” Ding Decl. ¶ 35 (citing Ex. 1016, 127–33).
`Consistent with Dr. Ding’s testimony, we applied a preliminary construction
`of “hopping sequence” in the Institution Decision as “the order in which the
`communications network hops among the set of frequencies.” Dec. 7. That
`construction is not contested by Patent Owner, and we adopt it for this Final
`Written Decision.
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`2. “votes to use the particular communications channel”
`The noun phrase “votes to use the particular communications
`channel” is recited in each of challenged claims 3, 15, and 27. The term
`“vote” is not defined in the Specification of the ’624 patent. In the
`Institution Decision, we applied a preliminary construction of “votes to use
`the particular communications channel” as “expressions of preference for
`using the particular communications channel,” a construction that rejected
`Petitioner’s further proposal that the phrase alternatively encompasses
`indications whether the communications channel is “good or bad.” Dec. 7–
`8. The parties do not present arguments that cause us to reconsider that
`aspect of the construction.
`Patent Owner “submits that ‘votes to use the particular
`communications channel’ should be construed to mean ‘expressions of
`preference of participants for using the particular communications channel,’”
`with underscoring to indicate words it proposes to add to the Board’s
`preliminary construction. PO Resp. 6. Patent Owner contends that “all of
`the embodiments” discussed in the Specification of the ’624 patent “are
`limited to originating from participant devices involved in the
`communications and are intended to be used to determine the best channels
`for communication among those same participants.” Id. This contention is
`not disputed by Petitioner, and we find no counter examples in the
`Specification. Patent Owner reasons that omission of reference to
`participants in the construction of the phrase “would be unduly broad and
`not supported by the specification and would not be how a [person of
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`ordinary skill in the art] would understand that limitation in view of the
`specification.” Id. at 7–8 (citing Melendez Decl. ¶ 28).
`We are not persuaded by this reasoning. As Petitioner observes, the
`embodiments of the ’624 patent identified by Patent Owner are characterized
`as “examples,” and a person of ordinary skill “would understand that the
`example scenarios of the specification are not necessarily limiting on the
`claims.” Reply 3 (citing Ding Supp. Decl. ¶ 6). In addition, Petitioner notes
`that claim language in related patents owned by Patent Owner explicitly
`refers to participants, evidencing Patent Owner’s understanding “how to
`expressly create participant-specific voting requirements in claims.” Id. at 3.
`At the oral hearing, Patent Owner suggested that explicit reference to
`participants in such other claim language “was because it wanted to clarify
`that each participant got a single vote,” and explained its position that, in the
`claims at issue in this proceeding, “participant is implicit in the claim
`language as it is.” Tr. 78:16–25. But the claims are directed to a
`“communications device,” and recite “votes” in the context of what the
`“particular communications channel” “receives.” Nothing within the
`structure of the claims requires resolving the origin of such votes.
`Furthermore, Patent Owner’s proposed construction is inconsistent
`with the construction it agreed to before the district court in the Qualcomm
`Litigation. In that litigation, the parties agreed that the term “vote” should
`be construed as “a binary expression (to use or not to use),” a construction
`that makes no reference to the origin of the “vote” as from a participant or
`otherwise. Ex. 1018, 6. We see no compelling reason to excuse the
`inconsistency by adopting a narrower construction when the Board applies a
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`claim-construction standard (broadest reasonable interpretation) that could
`only result in the same or a broader construction. See Amazon.com, Inc. v.
`Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent
`may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and
`another to find infringement.” (quoting Sterner Lighting, Inc. v. Allied Elec.
`Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970))).
`Accordingly, we construe “votes to use a particular communications
`channel” as “expressions of preference for using the particular
`communications channel.”
`
`
`3. “while”
`Independent claim 1 requires that different sets of communications
`channels be used with the second and third communications devices:
`the transceiver is configured to transmit to and receive from a
`third communications device over the default set of two or more
`communications channels while transmitting to and receiving
`from the second communications device over the first set of two
`or more communications channels and while transmitting to and
`receiving from the second communications device over the
`second set of two or more communications channels
`
`(emphases added). Challenged claims 16 and 28 include similar limitations.
`In the Institution Decision, we construed “while” in this context such that the
`claim language does not require simultaneous communications, only that
`communication can take place with multiple devices during the same time
`period, such as with interleaved communications. Dec. 11. Such a
`construction is consistent with a general-dictionary definition of “while” as
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`“during the time that.” See Ex. 1012, 1376; Pet. 18 n.4. Patent Owner
`addresses that construction as follows:
`To the extent the Board is suggesting that a device need not be
`capable of
`simultaneous communication with multiple
`participants over different sets of channels but is still requiring
`that the device, in a single configuration, be capable of
`communication with multiple participants over different sets of
`channels, Patent Owner does not object
`to
`this claim
`construction.
`
`PO Resp. 8 (emphasis added). Patent Owner’s characterization presents a
`gloss on the construction we applied in the Institution Decision by requiring
`that a device communicate over different sets of channels “in a single
`configuration.” But Patent Owner provides insufficient reasoning to support
`a contention that the claim language is limited to “a single configuration” in
`the manner proposed.
`We construe “while,” as recited in claims 1, 16, and 28, as requiring
`that communication take place with multiple devices during the same time
`period, such as with interleaved communications, but not requiring
`simultaneous communication with the multiple devices.
`
`
`B. Grounds Based on Gerten
`Gerten relates to improving noise and interference immunity by
`“removing channels in a frequency hopping scheme having strong
`interference or interferers in a wireless communication system.” Ex. 1003,
`col. 2, ll. 34–37. Figure 1 of Gerten is reproduced below.
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`Figure 1 illustrates operation of three piconets 10, 12, and 14 that form a
`scatternet. Id. at col. 3, ll. 8–10. A piconet is a collection of devices that can
`be connected via Bluetooth technology in an ad hoc fashion. Id. at col. 3,
`ll. 10–12. As shown in the drawing, first piconet 10 has a plurality of
`mobile units 20 that include a master mobile unit and multiple slave mobile
`units, one of which is also a slave of second piconet 12. Id. at col. 3, ll. 27–
`33. Gerten defines a “master unit” as a “device in a piconet whose clock and
`hopping sequence are employed to synchronize other devices in the
`piconet—devices in a piconet that are not the master are typically slaves.”
`Id. at col. 3, ll. 22–26.
`In determining channels to be avoided, a master device in the piconet
`determines which channels have the strongest interference. Id. at col. 4,
`ll. 50–51. This may be accomplished with “signal strength measurements on
`N number of channels (N being an integer) of the frequency hopping scheme
`to determine M number of channels (M being an integer less than or equal to
`N) to avoid.” Id. at col. 2, ll. 37–41. The frequency hopping scheme then is
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`modified to avoid transmission over the M channels, and the M channels to
`avoid can be communicated to wireless units involved in the communication
`system, allowing members of the communication system to frequency hop
`together over the remaining N–M good channels in a modified frequency
`hopping scheme. Id. at col. 2, ll. 41–52, col. 4, ll. 47–58. “[T]he master
`device periodically updates the channels to be avoided,” resulting in a
`similar modification to the frequency hopping sequences. Id. at col. 4,
`ll. 58–65.
`
`
`1. Claim 1
`Petitioner challenges independent claim 1 as anticipated by Gerten.
`Pet. 11–19. In its analysis drawing a correspondence between the limitations
`of independent claim 1 and the disclosure of Gerten, Petitioner identifies the
`piconet of Gerten as a “network of devices” and the master mobile unit as a
`(first) “communications device for use in the network of devices.” Pet. 11
`(citing Ex. 1003, col. 3, ll. 8–12, col. 3, ll. 27–31) (italics omitted). The
`master mobile unit has a “processor” that causes the device to perform
`functions (Ex. 1003, col. 3, ll. 40–48); a memory for storing instructions
`(id. at col. 4, ll. 1–6); and a transceiver communicatively coupled to the
`memory (id. at col. 3, ll. 53–55). Petitioner further draws a correspondence
`between the recited “second” and “third” “communications devices” and the
`slave units disclosed by Gerten. Pet. 16–17 (citing Ex. 1003, col. 3, ll. 10–
`18, col. 3, ll. 22–26). We agree with Petitioner’s identified correspondences
`and find that these claim limitations are disclosed by Gerten.
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`Petitioner identifies the recited selection of communications channels
`as disclosed by Gerten’s description of modified frequency hopping
`schemes. Id. at 14. In doing so, Petitioner notes that Gerten discloses
`periodic updating of the modified frequency hopping scheme, supporting a
`conclusion that Gerten discloses selection at different times. Id. at 14, 15–
`16. Petitioner highlights this periodic updating to identify distinct “period[s]
`of time” during which different “set[s] of two or more communications
`channels [are] used to transmit and receive.” Id. at 15–16 (italics omitted).
`In addressing independent claim 1’s specific requirement that different sets
`of channels be used with the second and third communications devices,
`Petitioner reasons that the process summarized above may be applied by the
`master device to each of the slave devices separately: “the master device of
`Gerten performs a service discovery request to determine if each slave
`device has interference avoidance capabilities.” Id. at 18 (emphasis added)
`(citing Ding Decl. ¶ 53; Ex. 1003, col. 4, ll. 38–51). Thus, Petitioner argues,
`if one slave has such interference avoidance capabilities, communications
`with that slave may take place using a modified frequency hopping scheme;
`if another (legacy) slave lacks such interference avoidance capabilities,
`communications take place using a normal mode with default
`communications channels that are not changed based on channel
`performance. Id. at 18 (citing Ding Decl. ¶ 55); see id. at 16–17. Thus,
`Petitioner concludes, the recited transmissions and receptions from the third
`communications device over default communications channels occur
`“while” transmitting to and receiving from the second communications
`device over the first and second sets of communications channels, as we
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`have construed the term “while.” Petitioner supports this reasoning with
`testimony by Dr. Ding, which we credit. Id. at 18 (citing Ding Decl. ¶¶ 53–
`55).
`
`Patent Owner responds that “the Gerten device is not capable of and
`expressly teaches away from performing this functionality.” PO Resp. 15
`(citing Melendez Decl. ¶ 33). Patent Owner contends that “Gerten’s
`disclosure is directed toward eliminating channels for use in an entire
`piconet as opposed to eliminating channels for use by certain participants
`within a piconet.” Id. (emphasis added). Patent Owner argues that Gerten
`does not disclose a selection kernel capable of maintaining synchronization
`between a master and more than one slave in a piconet, with the master and
`one slave using a default set of channels while the same master and a
`different slave use a different set of channels. Id. We are not persuaded that
`the absence of a specific teaching of such a selection kernel supports the
`conclusion that one of skill in the art would understand Gerten to function in
`the manner Patent Owner suggests.
`In this instance, Petitioner refers to two embodiments of Gerten “in
`which a first participant communicates with a second participant via a
`normal sequence and with another participant via an adaptive hopping
`sequence.” Reply 5. First, Figure 3 of Gerten is reproduced below.
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`Figure 3 illustrates “methodology for determining and communicating
`channels to be avoided to a remote device.” Ex. 1003, col. 2, ll. 4–6. As
`illustrated in the drawing, a master unit performs a discovery process
`(block 110) upon connecting with a new slave unit. Ding Decl. ¶¶ 60, 63. If
`the slave unit is capable of using interference avoidance, the master unit
`begins the process of determining a modified set of channels for use
`(block 120). Id. ¶ 45. If a second slave unable to use interference avoidance
`enters the piconet, standard frequency hopping is used. Supp. Ding Decl. ¶
`9. Under Patent Owner’s characterization of Gerten, entry of the second
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`slave into the network would require the first slave necessarily to revert back
`to the default hopping sequence. Id. ¶ 10. This would undermine the stated
`benefits of Gerten, which explicitly discloses:
`The above process can be applied to a Bluetooth example
`and includes identification of a Bluetooth device’s ability to
`support interference avoidance, the measurements of signal
`strength on all channels and identification of which channel
`should not be used without violating the FCC rules, a method of
`modifying the Bluetooth hop sequence so that it will avoid
`channels containing strong or fixed interferers while still
`supporting standard Bluetooth hopping with other non-enabled
`members of the piconet and a method of relating necessary
`interference avoidance information to the remote Bluetooth
`devices.
`
`Ex. 1003, col. 4, l. 66–col. 5, l. 9 (emphasis added).
`Second, Figure 1 of Gerten, reproduced above, illustrates an
`embodiment in which a single mobile unit acts as a master in one piconet
`and acts as a slave in a second piconet, where the two piconets are expressly
`described as “independent” and “non-synchronized.” Ex. 1003, col. 3,
`ll. 15–39. As a slave in one piconet, the mobile unit may use interference
`avoidance while maintaining a normal hopping sequence in another piconet
`with a legacy slave unable to use adaptive methods. See Supp. Ding Decl.
`¶ 12. Accordingly, a first participant (i.e., the mobile unit that acts as both
`master and slave) is able to communicate with a participant via a standard
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`hopping sequence while communicating with a different participant via an
`adaptive hopping sequence. See Reply 7–82; Supp. Ding Decl. ¶ 12.
`Nor are we persuaded by Patent Owner’s contention that Gerten
`teaches away from the claim limitations. See PO Resp. 15. A prior-art
`reference does not teach away from the claimed subject matter unless the
`prior-art reference also criticizes, discredits, or otherwise discourages the
`solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
`In support of this contention, Patent Owner relies on testimony by Dr.
`Melendez that “the only selection kernels (Gerten Fig. 6 and Fig. 7)
`disclosed for the transceiver (Gerten Fig. 2) in Gerten are expressly not
`capable of providing the subject claimed limitations of the [’]624 patent as is
`discussed below, and so would serve only to teach away from the claim.”
`Melendez Decl. ¶ 33. Even if Dr. Melendez’s statement is accurate, such
`examples in Gerten do not meet the “teaching away” standard because the
`mere use of examples in a reference that function in a different way does not
`criticize, discredit, or otherwise discourage the solution claimed. In
`addition, “[t]eaching away is irrelevant to anticipation.” Seachange Int’l,
`Inc. v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).
`We conclude that Petitioner has demonstrated, by a preponderance of
`the evidence, that independent claim 1 is anticipated by Gerten.
`
`
`
`2 Petitioner’s argument regarding this embodiment was not made in the
`Petition, but is properly responsive to Patent Owner’s argument that the
`Gerten device is not capable of performing the functionality recited in the
`claims. Nevertheless, we note that our decision does not hinge on this
`embodiment because of the other Gerten embodiment discussed above.
`
`19
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`
`2. Claim 4
`Petitioner challenges claim 4 as anticipated by Gerten. Pet. 19–22.
`Claim 4 depends from claim 1 and recites memory instructions that cause
`the sets of communications channels to be loaded into registers of the
`communications devices after selecting the sets of communications
`channels. In addressing these limitations, Petitioner observes that Gerten
`discloses that the master device and slave devices include register banks that
`are loaded with synthesizer code words. Id. at 18–20 (citing Ex. 1003,
`col. 2, ll. 47–52, col. 7, ll. 11–18). Petitioner contends that references in
`claim 4 to “causing the . . . set[s] of two or more communications channels
`to be loaded into . . . register[s]” does not require that the channels
`themselves be loaded into registers, but that channel identifiers be loaded.
`Id. at 20.
`Although the claim does not expressly recite “identifiers,” Petitioner’s
`contention is consistent with the Specification of the ’624 patent, which
`explains that “after a participant has received the set of selected
`communications channels, the participant stores data that indicates the
`new set of selected channels.” Id. (quoting Ex. 1001, col. 19, ll. 27–30,
`emphasis by Petitioner). Petitioner’s reasoning that the synthesizer code
`words described by Gerten act to identify channels used in the frequency
`hopping sequences and are loaded in registers of the master and slave
`devices is supported by the declarant testimony of Dr. Ding, which we
`credit. See Ding Decl. ¶ 60.
`Patent Owner does not raise an argument directed to the express
`limitations of claim 4, and particularly does not challenge Petitioner’s
`
`20
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`contention that Gerten’s teaching of loading channel identifiers discloses this
`limitation. Patent Owner’s only position with respect to claim 4 is that it
`“depends from independent claim 1 and, therefore, contains all of the
`limitations of claim 1.” PO Resp. 19. Because we disagree with Patent
`Owner’s position expressed with respect to claim 1, we also disagree with it
`with respect to claim 4.
`We conclude that Petitioner has demonstrated, by a preponderance of
`the evidence, that claim 4 is anticipated by Gerten.
`
`
`3. Claims 13, 16, 28, and 29
`Petitioner challenges claims 13, 16, 28, and 29 as anticipated by
`Gerten. Pet. 22–24. Independent claim 13 and dependent claim 29 each
`recite a combination of limitations that appear in claims 1 and 4. Similarly,
`claims 16 and 28 recite limitations from claim 1. Petitioner provides a chart
`explaining where Petitioner addresses these limitations in its analysis of
`claims 1 and 4. Patent Owner does not address claims 13 or 29.3 For
`claims 16 and 28, Patent Owner asserts that the “transceiver” limitation of
`claim 1 is recited in those claims and refers to its arguments regarding that
`limitation as presented in the context of claim 1. PO Resp. 19. We have
`reviewed Petitioner’s claim charts, and, we agree that Gerten discloses each
`and every element of claims 13, 16, 28, and 29 for the same reasons
`discussed with respect to claim 1.
`
`
`3 Patent Owner appears to concede that claims 13 and 29 are anticipated by
`Gerten. See PO Resp. 9–10 (“[W]ith the exception of Ground 1
`[anticipation by Gerten], claims 13, 25 and 29, [the] proposed grounds of
`unpatentability fail for several reasons.”).
`
`21
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`
`We conclude that Petitioner has demonstrated, by a preponderance of
`the evidence, that claims 13, 16, 28, and 29 are anticipated by Gerten.
`
`
`4. Claim 25
`Petitioner challenges claim 25 as anticipated by Gerten. Pet. 22–25.
`In addition to reciting a combination of limitations that appear in claims 1
`and 4, independent claim 25 recites that “the number of channels in the first
`set of two or more communications channels varies from the number of
`channels in the second set of two or more communications channels.”
`Petitioner’s chart, at pages 22–24 of its Petition, explains where it addresses
`the limitations that appear in claims 1 and 4. With respect to the additional
`limitation, Petitioner notes that periodic updating of channels selected for
`avoidance by Gerten accounts for variations in interference patterns in the
`network. Id. at 24 (citing Ding Decl. ¶ 102). Petitioner also points to a level
`scheme disclosed by Gerten in which different thresholds are used in
`evaluating channel strength. Id. at 24–25 (citing Ex. 1003, col. 5, ll. 32–37,
`col. 5, ll. 40–63, col. 6, ll. 50–55). Petitioner reasons that “th
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