Trials@uspto.gov
`571-272-7822
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`Paper 12
`Entered: August 23, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM INCORPORATED,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-006201
`Patent 8,873,500 B2
`____________
`
`
`Before THOMAS L. GIANNETTI, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Case IPR2016-00623 has been consolidated with the instant proceeding.
`
`
`571-272-7822
`
`Paper 12
`Entered: August 23, 2017
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUALCOMM INCORPORATED,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-006201
`Patent 8,873,500 B2
`____________
`
`
`Before THOMAS L. GIANNETTI, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Case IPR2016-00623 has been consolidated with the instant proceeding.
`
`
`
`IPR2016-00620
`IPR2016-00623
`Patent 8,873,500 B2
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`
`I. BACKGROUND
`
`In Case IPR2016-00620, Qualcomm Incorporated (“Petitioner”) filed
`a Petition pursuant to 35 U.S.C. §§ 311–19 to institute an inter partes review
`of claims 1–31 of U.S. Patent No. 8,873,500 B2 (Ex. 1001, “the ’500
`patent”).2 IPR2016-00620, Paper 2 (“620 Pet.”).3 In Case IPR2016-00623,
`Petitioner filed a Petition pursuant to 35 U.S.C. §§ 311–19 also to institute
`an inter partes review of claims 1–31 of the ’500 patent. IPR2016-00623,
`Paper 1 (“623 Pet.”). Bandspeed, Inc. (“Patent Owner”) did not file a
`Preliminary Response in either case.4
`On August 24, 2016, we issued decisions in Case IPR2016-00620 and
`Case IPR2016-00623 (1) granting institution of inter partes review of claims
`1–5, 8–20, and 23–31 of the ’500 patent and (2) denying institution of inter
`partes review of claims 6, 7, 21 and 22 of the ’500 patent. IPR2016-00620,
`Paper 6 (“620 Dec. on Inst.”), 34; IPR2016-00623, Paper 6 (“623 Dec. on
`Inst.”), 34. Further, we consolidated the inter partes reviews of Case
`IPR2016-00620 and Case IPR2016-00623. E.g., IPR2016-00620, Paper 7,
`2–3.
`
`After consolidation, the parties only made filings for the consolidated
`cases in Case IPR2016-00620. In the consolidation order, we ordered that
`
`
`2 Because the ’500 patent was filed as Exhibit 1001 in each case, we refer to
`this exhibit number without identifying the case in which it was filed.
`3 Petitioner identifies Qualcomm Incorporated, Qualcomm Atheros, Inc., and
`Qualcomm Innovation Center, Inc., as real parties-in-interest. See, e.g., 620
`Pet. 2.
`4 Patent Owner identifies only Bandspeed, Inc., as a real party-in interest.
`IPR2016-00620, Paper 5 (“620 Paper 5”), 2.
`2
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`“each Party shall file any exhibits previously filed only in IPR2016-00623 in
`IPR2016-00620 within ten (10) business days of the entry of this Order.”
`IPR2016-00620, Paper 7, 3; see 37 C.F.R. § 42.63(a). Petitioner did not
`comply with our order. In addition, we ordered that “each Party shall file an
`exhibit list in IPR2016-00620 identifying (1) the exhibits previously filed in
`IPR2016- 00620 and (2) the exhibits previously filed only in IPR2016-
`00623, but newly filed IPR2016-00620, within ten (10) business days of the
`entry of this Order.” IPR2016-00620, Paper 7, 3; see 37 C.F.R. § 42.63(e).
`Petitioner again did not comply with our order. We also ordered that “the
`case caption in IPR2016-00620 shall be changed to reflect the consolidation
`of IPR2016-00623 with IPR2016-00620, in accordance with the attached
`example.” IPR2016-00620, Paper 7, 3. Petitioner yet again did not comply
`with our order. See Paper 11; cf. Paper 10. The purpose of these orders was
`to facilitate the creation of a clear record in the consolidated proceedings and
`the efficient presentation of the parties’ arguments and evidence and our
`efficient review of such arguments and evidence in preparation of this Final
`Written Decision. Petitioner’s failure to comply with our orders in this
`proceeding placed unnecessary burdens on Patent Owner and on us. See PO
`Resp. vi–v; infra Section I.D. Consequently, we now cite to papers filed
`after consolidation only by their paper numbers and exhibit numbers and
`identify the particular case for papers and exhibits filed before consolidation.
`We strongly caution Petitioner that it disregards our orders at its peril. See
`37 C.F.R. § 42.12(a) (“The Board may impose a sanction against a party for
`misconduct, including: (1) Failure to comply with an applicable rule or order
`in the proceeding”).
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`After institution and consolidation, Patent Owner filed a Patent Owner
`Response to the Petition (Paper 10, “PO Resp.”), and Petitioner replied
`(Paper 11, “Reply”). Neither party requested a hearing in the consolidated
`case; consequently, no hearing was held.
`We have jurisdiction under 35 U.S.C. § 6, and this Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,
`addresses issues and arguments raised during the review. For the reasons
`discussed below, we determine that Petitioner has met its burden to prove,
`by a preponderance of the evidence, that claims 1–5, 8–12, 14–20, 23–27,
`and 29–31 of the ’500 patent are unpatentable on the grounds upon which
`we instituted inter partes review.
`
`
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`A. The ʼ500 Patent (Ex. 1001)
`
`The ʼ500 patent is entitled “Approach for Managing the Use of
`Communications Channels Based on Performance.” Ex. 1001, [54]; see id.
`at 1:1–3, 60–62. Figure 2 of the ’500 patent is reproduced below.
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`Figure 2 depicts a communications network having communications devices
`or mechanisms labeled master 210, slave 220, and slave 230. Id. at 9:51–
`10:9; see id. at 2:5–18 (describing “participants” as “a device or mechanism
`that communicates with other devices or mechanisms,” including “a master
`participant” or “master” and “slave participants” or “slaves”). Each
`communication device or mechanism includes a memory, a processor that
`may execute instructions stored in memory, and a transceiver configured to
`transmit and receive communications with other devices of the
`communications network. Id. at 10:3–9.
`To manage the communications channels, the methods and devices of
`the ’500 patent communicate between communication devices over a
`plurality of communication channels, test the plurality of communication
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`channels, and select a first set of communications channels based on the
`results of the testing, e.g., “based on the performance of the communications
`channels and channel selection criteria.” See id. at 4:26–28. “For example,
`the selection criteria may be to select the good channels but not the bad
`channels.” Id. at 7:3–5; see id. at 4:4–12 (describing a “bad” channel as one
`that suffers from interference). The methods and devices may revert to the
`plurality of channels and thereafter may select a second set of
`communication channels. See id. at 4:28–31.
`The ’500 patent describes various techniques for measuring
`performance of communications channels. See id. at 10:33–15:7. For
`example, the methods and devices of the ’500 patent may measure
`performance by means of special test packets (id. at 10:49–12:53), received
`signal strength indicators (“RSSI”) (id. at 12:57–13:17), cyclic redundancy
`checks (“CRC”) (id. at 14:1–21), and forward error correction (“FEC”) (id.
`at 14:39–56). The methods and devices of the ’500 patent may classify a
`communication channel based on channel performance and one or more
`classification criteria. Id. at 15:14–42. “For example, a channel may be
`classified as ‘good’ or ‘bad’ based on the results of the channel performance
`testing by applying one or more performance measurements to specified
`performance criteria.” Id. at 15:16–19.
`The methods and devices of the ’500 patent use a frequency hopping
`(“FH”) protocol, such as defined by Bluetooth standards.5 Id. at 8:19–23.
`A frequency hopping (FH) protocol is an approach for
`wireless communications in a communications network that
`
`5 The “Bluetooth” word mark and logos are registered trademarks owned by
`Bluetooth SIG, Inc. E.g., 620 Dec. on Inst. 5 n.3.
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`uses a frequency hopping signal transmission technique in
`which information or data is transmitted over a set of
`frequencies in a communications frequency band. . . . The
`order in which the communications network hops among the set
`of frequencies is known as the hopping sequence.
`Id. at 2:19–27 (emphasis added). For example, a method or a device using a
`FH protocol “transmits data on one channel, hops to the next channel in the
`hopping sequence to transmit more data, and continues by transmitting data
`on subsequent channels in the hopping sequence.” Id. at 2:34–38. “When
`the FH communications system hops over part of the frequency band
`occupied by an [non-frequency hopping (“NFH”)] communications system,
`there may be interference between the systems.” Id. at 3:33–36 (emphasis
`added). “Interference results in data transmission errors, such as an increase
`in the bit error rate (BER) or the loss of data packets, resulting in reduced
`transmission quality and performance and the need to retransmit the data.”
`Id. at 3:58–61. Thus, the use of an FH protocol may reduce problems with
`interference from other communications systems and other interference
`sources. Id. at 2:39–41.
`Figure 5B of the ’500 patent also is reproduced below.
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`Figure 5B depicts forming a modified hopping sequence through
`replacement of a bad channel, i.e., default channel 522b, in a default set of
`channels, e.g., in a default FH sequence, with a good channel, i.e., good
`channel 576a, from table of good channels 570. Id. at 5:51–53; see id. at
`20:13–16. For example, “whenever [the] selection kernel 510 addresses a
`bad default channel in [the] register with default channels 520, the bad
`channel is replaced with good channels that are randomly selected from [the]
`table of good channels 570.” Id. at 20:64–21:1. As a result, “only good
`channels are selected to form the hopping sequence.” Id. at 20:61–62.
`The ’500 patent also discloses switching from using the modified
`hopping sequence back to using the default channels. Id. at 24:15–16. The
`decision to switch back to default channels may be based on elapsed time or
`changed performance. See id. at 24:18–28.
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`B. Illustrative Claims
`
`Claims 1, 14, 16, and 29 are independent claims. Claims 1 and 14 are
`method claims, and claims 16 and 29 are directed to devices which
`implement methods substantially similar to those recited in claims 1 and 14,
`respectively. In particular, claim 16 recites a device including “at least one
`processor” and a memory storing instructions “which, when executed by the
`at least one processor” cause the device to perform substantially the same
`steps of the method recited in claim 1. Ex. 1001, 28:53–29:4 (claim 16); cf.
`id. at 27:11–27 (claim 1);6 see 620 Dec. on Inst. 21 n.8. Claims 2–13
`depend directly or indirectly from claim 1; claim 15 depends from claim 14;
`claims 17–28 depend directly or indirectly from claim 16; and claims 30 and
`31 depend directly from claim 29.
`Although we instituted review of claims 1–5, 8–20, and 23–31, Patent
`Owner has elected only to argue the patentability of claims 4, 10, 11, 13, 19,
`25, 26, and 28 of the ’500 patent. PO Resp. 1–2. “Patent Owner does not
`make any arguments herein related to the patentability of claims 1-3, 5, 8-9,
`12, 14-18, 20, 23-24, 27 and 29-31 of the ‘500 Patent.” Id. at 2 n.2
`(emphasis added).
`Claim 1 is illustrative of the independent claims 1 and 16 at issue and
`is reproduced below:
`
`
`6 Although claim 16 recites “[a] frequency hopping wireless communication
`device” and “another frequency hopping wireless communication device,”
`instead of “a master device” and “a slave device,” as recited in claims 1 and
`14, we understand that the communication devices of claim 16 encompass
`master and slave devices. See Ex. 1001, 2:5–18.
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`1. A method performed by a master device in a frequency
`hopping wireless communication system, the method
`comprising:
`communicating with a slave device over a plurality of
`communication channels according to a default hopping
`sequence;
`testing the plurality of communication channels;
`selecting a subset of the plurality of communication
`channels based on results of the testing;
`communicating with the slave device over the subset of
`communication channels according to an adapted hopping
`sequence;
`monitoring the subset of communications channels;
`based on results of the monitoring or after a specified
`period of time, reverting back to communicating with the
`slave device over the plurality of communication channels
`according to the default hopping sequence.
`Id. at 27:11–27. As noted previously, claims 17–28 recite limitations that
`parallel those of claims 2–13, and the limitations of claim 15 parallel those
`of claim 30. E.g., 620 Dec. on Inst. 7. In particular, we note the following
`correspondence of the recited limitations between the dependent claims
`argued by Patent Owner.
`Dependent from Claim 1
`4
`10
`11
`13
`
`Dependent from Claim 16
`19
`25
`26
`28
`
`Thus, we again determine, for purposes of our analysis, that the device
`claims, although differing in format, do not require a separate analysis, and
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`claims 4, 10, 11, and 13 are representative of the claims remaining in dispute
`in this proceeding. E.g., id. at 7–8; see Ex. 1001, 27:45–50 (claim 4),
`28:16–23 (claims 10 and 11), 28:27–30 (claim 13).
`
`
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`C. Related Proceedings
`
`Petitioner and Patent Owner identify pending related litigation in the
`Western District of Texas involving the ʼ500 patent: Bandspeed, Inc. v.
`Qualcomm Incorporated et al., Case No. 1:14-cv-436 (W.D. Tex.);
`Bandspeed, Inc. v. Texas Instruments Incorporated, Case No. 1:14-cv-438
`(W.D. Tex.). 620 Pet. 2; 620 Paper 5, 2–3. Patent Owner, however,
`identifies additional related litigations in the Western District of Texas
`involving the ʼ500 patent, which are no longer pending: Bandspeed, Inc. v.
`Broadcom Corp., Case No. 1:14-cv-433 (W.D. Tex.); Bandspeed, Inc. v.
`Marvell Semiconductor, Inc., Case No. 1:14-cv-434 (W.D. Tex.);
`Bandspeed, Inc. v. MediaTek USA, Inc., Case No. 1:14-cv-435 (W.D. Tex.);
`and Bandspeed, Inc. v. STMicroelectronics N.V. et al., Case No. 1:14-cv-437
`(W.D. Tex.). 620 Paper 5, 2–3. In addition to now consolidated Case
`IPR2016-00623, the parties identify the following administrative
`proceedings before the Office: In re Treister et al., Inter Partes
`Reexamination Control Nos. 95/000,647 & 95/002,111; In re Gan et al.,
`Inter Partes Reexamination Control Nos. 95/000,648 & 95/002,108;
`MediaTek USA, Inc. v. Bandspeed, Inc., IPR2015-00237; Qualcomm Inc. v.
`Bandspeed, Inc., IPR2015-00314 (joined with IPR2015-01577), IPR2015-
`00315 (joined with IPR2015-01580), IPR2015-00316 (joined with IPR2015-
`01581), and IPR2015-00531 (joined with IPR2015-01582). 620 Pet. 2; 620
`Paper 5, 2.
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`D. Applied References and Declaration
`
`Petitioner relies on the following references and declarations in
`support of its asserted grounds of unpatentability:
`
`IPR2016-00620 1010
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`IPR2016-00623 1002
`IPR2016-00623 1009
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`IPR2016-00623 1011
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`Exhibit References and Declaration
`Case
`IPR2016-00620 1002
`Declaration of Dr. Zhi Ding (“620 Ex. 1002”)
`U.S. Patent No. 7,684,465 B1 to Dabak et al.,
`IPR2016-00620 1009
`filed Feb. 18, 2000 (“Dabak”)
`U.S. Patent No. 6,909,737 B1 to Kockmann,
`publ’d Dec. 23, 1999 (“Kockmann”)
`Declaration of Dr. Zhi Ding (“623 Ex. 1002”)
`U.S. Patent No. 6,760,319 B1 to Gerten et al.,
`filed July 5, 2000 (“Gerten”)
`U.S. Patent No. 7,280,580 B1 to Haartsen, filed
`Oct. 15, 1999 (“Haartsen”)
`Kockmann
`
`IPR2016-00623 1012
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`620 Pet. i.; 623 Pet. i.
`The ’500 patent issued from U.S. Patent Application No. 14/034,206,
`filed September 23, 2013. Ex. 1001, [21], [22]. The ’500 patent, however,
`claims priority to a string of patent applications as a division or a
`continuation; the earliest of these claims a filing date of September 6, 2001.
`Id. at [60]; see 620 Pet. 4–5. Nevertheless, Petitioner notes that the ’500
`patent claims priority to U.S. Provisional Patent Application No.
`60/264,594, filed January 25, 2001. Ex. 1001, [60]; see, e.g., 620 Pet. 5.
`Petitioner asserts that the filing date of the provisional application is the
`“‘earliest effective filing date’” to which the ’500 patent could claim
`priority, but argues that each of Dabak, Gerten, Haartsen, and Kockmann is
`prior art to the ’500 patent as of that date or the September 6, 2001, filing
`date of the earliest utility application from which the ’500 patent claims
`priority. 620 Pet. 5; 623 Pet. 5. Patent Owner does not propose an
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`alternative date, but asserts that “[a] POSITA would also have had access to
`relevant technical publications, text books and online references at the time
`of the invention just prior to January 25, 2001 which is the date of U.S.
`Provisional Application No. 60/264,594 to which the ‘500 Patent claims
`priority.” PO Resp. 6. For purposes of this Final Written Decision, we treat
`January 25, 2001, as the earliest effective filing date.
`
`E. Grounds of Unpatentability
`
`We instituted review on the following grounds of unpatentability:
`
`Challenged Claims
`Basis
`§ 103(a) 1–5, 8–20, and 23–31
`§ 103(a) 1–5, 10, 11, 13–20, 25, 26, and 28
`§ 103(a) 1–5, 8–11, 13–20, 23–26, and 28–31
`
`§ 103(a) 12 and 27
`
`Reference(s)
`Dabak and Kockmann
`Gerten
`Gerten and Kockmann
`Gerten and Haarsten,
`alone or in combination
`with Kockmann
`IPR2016-00620, Paper 6, 34; IPR2016-00623, Paper 6, 34. Nevertheless, in
`view of Patent Owner’s decision to waive all arguments and the presentation
`of evidence with respect to challenged claims, other than claims 4, 10, 11,
`13, 19, 25, 26, and 28 (PO Resp. 2 n.2; Paper 8, 3 (“The patent owner is
`cautioned that any arguments for patentability not raised in the response will
`be deemed waived.”)), the challenges to independent claims 1 and 16 and
`the following grounds are addressed in greater detail below:
`Reference(s)
`Basis
`Challenged Claims
`Dabak and Kockmann
`§ 103(a) 4, 10, 11, 13, 19, 25, 26, and 28
`Gerten
`§ 103(a) 4, 10, 11, 13, 19, 25, 26, and 28
`Gerten and Kockmann
`§ 103(a) 4, 10, 11, 13, 19, 25, 26, and 28
`
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`F.
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`Assessment of Person of Ordinary Skill in the Art
`
`Petitioner argues that a person of ordinary skill in the relevant art
`“would have a B.S. degree in Electrical and/or Computer Engineering, or an
`equivalent field, as well as at least 3-5 years of academic or industry
`experience in the wireless communications field.” E.g., 620 Pet. 11 (citing
`620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent
`Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this
`proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s
`declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002
`¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower
`assessment of a person of ordinary skill in the art, and, for purposes of this
`Final Written Decision and to the extent necessary, we adopt this assessment
`of a person of ordinary skill in the relevant art.
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b).
`Under that standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`
`
`7 Although each party relies on declarant testimony to support its arguments,
`neither party elected to cross-examine the other party’s declarant.
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`Petitioner proposed constructions for four claim terms in its Petitions:
`“hopping sequence,” “clear” and “occupied” channel, and “default hopping
`sequence.” E.g., 620 Pet. 11–13. We construed each of these terms in our
`institution decisions for Case IPR2016-00620 and Case IPR2016-00623.
`620 Dec. on Inst. 10–15; 623 Dec. on Inst. 5–7.
`
`1. “hopping sequence” (Claims 1, 14, 16, and 29 and others)
`
`In the institution decisions, we determined that, in light of the
`Specification of the ’500 patent, the broadest reasonable interpretation of the
`phrase “hopping sequence” is “the order in which the communications
`network hops among the set of frequencies.” E.g., 620 Dec. on Inst. 10–11
`(citing 620 Pet. 11–12). Patent Owner does not contest this construction.
`PO Resp. 6–7. For the reasons set forth in the Decision on Institution in
`Case IPR2016-00620, we remain persuaded that Petitioner’s proposed
`construction is the broadest reasonable interpretation of the phrase “hopping
`sequence.”
`
`2. “clear” and “occupied” channel (Claims 4, 7, 19, and 22)
`
`In our institution decisions, we determined that the broadest
`reasonable interpretation of a “clear” channel is “‘a channel that is not
`already in use by a non-frequency hopping (NFH) communication system’”
`and that the broadest reasonable interpretation of an “occupied” channel is
`“‘a channel that already is in use by a NFH communication system.’” E.g.,
`620 Dec. on Inst. 11–13. Patent Owner does not contest that construction
`(PO Resp. 6–7), but Petitioner raises new arguments regarding the
`
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`construction of these terms (Reply 2–6).8 For the reasons set forth below,
`we maintain our previous constructions.
`First, Petitioner argues that “[t]he specification of the ’500 Patent does
`not teach classifying a channel as ‘clear’ or ‘occupied.’ The ’500 Patent
`does, however, disclose examples of multiple types of interference, e.g.,
`both isolated interference and fixed NFH systems. [Ex. 1001,] 3:27-44;
`15:32-43.” Reply 2. Nevertheless, Petitioner fails to show where any of the
`examples of isolated interference refers to “occupied” channels. Instead, as
`we noted in the institution decisions, the Specification of the ’500 patent
`states that “[w]hen the FH communications system hops over part of the
`frequency band occupied by an NFH communications system, there may be
`interference between the systems.” Ex. 1001, 3:33–36 (emphasis added);
`see, e.g., 620 Dec. on Inst. 12. Moreover, the claims are part of the
`Specification, and claim 4, as well as claim 19, states that “the channel
`classifications for the plurality of communication channels comprise one of
`two values for each channel of the plurality of communication channels, one
`of the two values indicating the channel is occupied and the other of the two
`
`
`8 Petitioner acknowledges that:
`Patent Owner does not raise any argument regarding Claims 4
`and 19 under Petitioner’s proposed constructions. Instead,
`Patent Owner argues that these claims are not obvious because
`the [Institution Decision] adopted a narrower construction of
`“clear” and “occupied” channel than proposed by Petitioner.
`Reply 2. Because Patent Owner does not challenge the construction of these
`terms, Petitioner’s new arguments in its Reply may exceed the scope of the
`Patent Owner Response. 37 C.F.R. § 42.23(b). Nevertheless, Patent Owner
`does not object to the presentation of these arguments, and we consider them
`here.
`
`
`
`16
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`values indicating the channel is clear.” Ex. 1001, 27:45–50 (emphases
`added). Thus, we read the Specification as describing “occupied” in relation
`to frequency bands, e.g., channels, in use by a NFH communications system,
`and “clear” as the alternative, i.e., the other of two classification values, to
`“occupied.”
`Second, according to Petitioner, “[t]hat ‘clear’ and ‘occupied’ are not
`limited to NFH systems is further confirmed by the disclosed channel
`classification methods, which assign performance characteristics by
`applying one or more performance measurement tests.” Reply 3 (citing
`Ex. 1001, 15:60–16:13 (Table 1), 17:15–30 (Table 2)). Specifically,
`Petitioner argues that the ’500 patent discloses that
`Determining an interference situation results from an NFH
`system, among other things, requires at least two performance
`measurements - a first identifying and a second confirming a
`continued presence of interference. Indeed, the specification
`recognizes that use of “multiple tests” is needed to distinguish
`“an isolated instance of interference [that] may cause a poor
`channel performance measurement . . . .” [Ex. 1001,] 15:32-
`37.
`Id. Thus, Petitioner argues that, because multiple tests must be applied to
`determine the continued presence of interference regardless of the source,
`limiting “occupied” to NFH communications systems is overly narrow.
`Nevertheless, the words chosen by the patentee to describe its invention
`have significance. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is
`the applicants’ burden to precisely define the invention, not the PTO’s.”).
`As noted above, “occupied” is only used in the Specification with respect to
`NFH communications systems, and neither claims 4 and 19 nor their base
`claims nor the intervening claims specify a single or multiple tests.
`
`
`
`17
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`Therefore, we find Petitioner’s arguments, which attempt to incorporate the
`teachings of “bad” and “good” channels from elsewhere in the Specification
`into the interpretation of these claim limitations, unpersuasive. See Intervet
`America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir.
`1989) (“[I]nterpreting what is meant by a word in a claim ‘is not to be
`confused with adding an extraneous limitation appearing in the specification,
`which is improper.’”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993).
`Third, Petitioner argues that principles of claim differentiation suggest
`that our construction of “occupied” and “clear” are overly narrow. Reply 3.
`In particular, Petitioner argues that “Claims 4 and 19 depend from claims[,
`i.e., independent claims 1 and 16, respectively,] requiring a single test of
`communication channels prior to classification of channels as ‘occupied’ or
`‘clear.’” Id. at 3–4. Thus, Petitioner argues that, because the determination
`that a channel is “occupied” by a NFH communications system requires
`multiple tests, our construction of claims 4 and 19 renders claims 10 and 25
`superfluous. Id. at 4. We disagree.
`Petitioner’s argument is based on the incorrect premise that claims 1
`and 16 are limited to the use of a single test for classification. Petitioner
`fails to point to any language of claim 1 or 16 that recites the use of only a
`single test. In fact, each of claims 1 and 16 only refers generally to “testing”
`and to the results of “testing.” See, e.g., Ex. 1001, 27:17–19. Because we
`interpret claims 1 and 16 to recite that “testing” may include one or more
`tests, claims 4, 10, 19, and 25 may recite methods or systems employing
`multiple tests. Moreover, we find that claims 10 and 25 depend directly
`
`
`
`18
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`from claims 1 and 16, respectively, and recite different limitations from
`those recited in claims 4 and 19. Compare Ex. 1001, 27:45–50 (claim 4)
`with id. at 28:16–18 (claim 10). Thus, we are not persuaded that any
`limitations of other claims are contradicted or that any limitations of these
`claims are rendered superfluous by our constructions.
`Fourth, Petitioner argues that, because we find that “‘clear’ should be
`construed ‘in the context’ of the term ‘occupied,’” we should look to other
`uses of the term “clear” in the Specification. Reply 4 (citing 620 Dec. on
`Inst. 12–13). In particular, Petitioner argues that we should look to “good
`channel usage timeout” to interpret “clear channel usage timeout.” Id. at 5
`(citing Ex. 1001, 21:30–41). In its Petitions, Petitioner asserts that
`[t]he specification of the ’500 Patent does not use the
`terms “clear” or “occupied” to refer to channels. Instead, the
`’500 Patent uses the terms “good” and “bad” channels.
`Ex. [1001] 4:10, 6:58-63. A “good” channel is one that
`experiences a low interference level, whereas a “bad” channel
`experiences a high interference level. Id. A [person of
`ordinary skill in the art] reading the specification would equate
`a “good” channel to a “clear” channel and a “bad” channel to
`an “occupied” channel. [620] Ex. 1002 ¶ 32.
`620 Pet. 12 (emphasis added). As we stated in the institution decisions, we
`find that the terms “occupied” and “clear,” however, are narrower terms than
`“bad” and “good,” respectively, and their meanings cannot properly be
`equated under the broadest reasonable interpretation standard. 620 Dec. on
`Inst. 12; see IPR2016-00620, Ex. 1011, 10 (“[T]he existence of NFH
`systems will give high RSSI in channels they occupy.”), 12 (“A channel
`which gives constant packet loss or high [number of error bits (“NEB”)] will
`be identified as occupied by NFH system, and classified as Occupied. Other
`
`
`
`19
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`channels will be classified as Clear, even though they occasionally give
`packet loss or high NEB, as this could be a clash by another FH system or
`local fading.”). We maintain that distinction here.
`
`Finally, Petitioner argues that, because claims 4 and 19 refer to
`“channel classifications” and because throughout the Specification channel
`classifications are referred to “good” or “bad,” rather than “clear” and
`“occupied,” we should modify our constructions because they cover “new
`matter” absent from the Specification. Reply 5. As the Specification
`explains, “[i]n contrast to FH systems, a non-frequency hopping (NFH)
`system is simply a communications system whose carrier does not hop over
`a set of frequencies. A typical NFH system may occupy a portion of the
`communications frequency band corresponding to several frequencies used
`by an FH system.” Ex. 1001, 2:28–32 (emphasis added); see 620 Dec. on
`Inst. 13. A relevant dictionary defines a “channel” as “[a] band of radio
`frequencies channel allotted to a particular purpose.” MCGRAW-HILL
`DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 328 (4th ed. 1989) (Ex.
`3003). Thus, we are persuaded that the Specification of the ’500 patent
`teaches classifying a channel as “occupied,” rather than only as “bad,” and,
`in the context of claims 4 and 19, we understand that the term “clear” should
`be construed as an alternative to “occupied.”9 No “new matter” is covered
`by this construction. See Reply 5.
`
`
`9 Petitioner also faults Patent Owner for failing to provide extrinsic evidence
`supporting our constructions of the terms “occupied” and “clear.” Reply 5.
`Because Patent Owner elected not to contest our constructions, it was not
`required to attempt to strengthen them with additional evidence. Given that
`we found that the language of the claims and the Specification was sufficient
`20
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`Consequently, we maintain that the broadest reasonable interpretation
`of a “clear” channel is “a channel that is not already in use by a non-
`frequency hopping communications system” and that the broadest
`reasonable interpretation of an “occupied” channel is “a channel that already
`is in use by a non-frequency hopping communications system.”
`
`3. “default hopping sequence” (Claims 1, 14, 16, and 29)
`
`In the institution decisions, we determined that the broadest
`reasonable interpretation of “default hopping sequence” is “‘a pr
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