Uniloc 2017 LLC

Patent Trials and Appeals Board

Oct 26, 2020

IPR2019-01116 (P.T.A.B. Oct. 26, 2020)

Trials@uspto.gov Paper 22
571.272.7822 Date: October 26, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORPORATION
and ERICSSON INC.,
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.
____________

IPR2019-011161
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 All Challenged Claim Unpatentable
35 U.S.C. § 318(a)

1 Ericsson Inc., who filed a petition in IPR2020-00376, has been joined as a
petitioner in this proceeding. Paper 13.
IPR2019-01116
Patent 7,016,676 B2

2
I. INTRODUCTION
A. Background
Microsoft Corporation filed a Petition for inter partes review of
claims 1 and 2 of U.S. Patent No. 7,016,676 B2 (Ex. 1001, “the
’676 patent”). Paper 2 (“Pet.”). We instituted review on December 4, 2019.
Paper 8 (“Decision on Institution”). Uniloc 2017 LLC (“Patent Owner”)
filed a Patent Owner Response. Paper 11 (“PO Resp.”). Microsoft
Corporation filed a Reply. Paper 12 (“Reply”). Ericsson Inc. was then
joined as a party petitioner. Paper 13. Microsoft Corporation and Ericsson
Inc. are now jointly referred to as “Petitioner.” Patent Owner filed a Sur-
Reply. Paper 14 (“Sur-Reply”). Oral hearing was held on September 9,
2020. A copy of the hearing transcript has been entered into the record as
Paper 21 (“Tr.”).
For reasons explained below, we conclude that Petitioner has proved
by a preponderance of the evidence that claims 1 and 2 of the ’676 patent are
unpatentable.
B. Related Matters
The parties identify the following civil actions involving the
’676 patent:
Uniloc 2017 LLC v. Microsoft Corporation, No. 8:18-cv-02053
(C.D. Cal.);
Uniloc 2017 LLC, et al. v. Google LLC, No. 2:18-cv-00495
(E.D. Tex.);
Uniloc 2017 LLC v. Verizon Communications Inc., et al., No.
2:18-cv-00513 (E.D. Tex.);
Uniloc 2017 LLC v. AT&T Services, Inc., et al., No. 2:18-cv-
00514 (E.D. Tex.);
IPR2019-01116
Patent 7,016,676 B2

3
Uniloc 2017 LLC, et al. v. Google LLC, No. 2:18-cv-00448
(E.D. Tex.);
Uniloc 2017 LLC, et al. v. AT&T, Inc., et al., No. 2:18-cv-
00379 (E.D. Tex.);
Uniloc 2017 LLC, et al. v. Verizon Communications Inc., et al.,
No. 2:18-cv-00380 (E.D. Tex.); and
Uniloc 2017 LLC, et al. v. Microsoft Corporation, No. 8:18-cv-
01279 (C.D. Cal.).
Pet. xi; Paper 3, 2; PO Resp. 4–5.
Patent Owner also identified the following other inter partes review
proceedings involving the ’676 patent: IPR2019-01125 (filed by Microsoft
Corporation and denied institution), IPR2019-01349 (filed by Marvell
Semiconductor Inc. and review instituted on February 4, 2020), IPR2019-
01350 (filed by Marvell Semiconductor Inc. and review instituted on
February 4, 2020), IPR2019-01541 (filed by Google LLC and denied
institution), IPR2019-01550 (filed by Ericsson Inc. and denied institution),
and IPR2020-00376 (filed by Ericsson Inc. and review instituted —
proceeding now terminated due to joinder). PO Resp. 5.
C. 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 of ETSI BRAN HiperLAN/2 or
IEEE802.11a, radio systems utilize the same radio transmission method, i.e.,
IPR2019-01116
Patent 7,016,676 B2

4
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 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:
IPR2019-01116
Patent 7,016,676 B2

5

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.
IPR2019-01116
Patent 7,016,676 B2

6
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
IPR2019-01116
Patent 7,016,676 B2

7
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
IPR2019-01116
Patent 7,016,676 B2

8
which controls the alternate use of the common frequency band of the two
radio interface standards.” Id. at 2:45–47.
Claim 1 is independent. Claim 2 depends from claim 1. Claims 1 and
2 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.
2. The method as claimed in claim 1, herein the control
station determines the respective duration in which the stations
working in accordance with the second radio interface standard are
allowed to utilize the frequency band.
Ex. 1001, 6:20–40.
D. Evidence Relied on by Petitioner
Petitioner relies on the following references:2

2 The ’676 patent issued from Application No. 10/089,959, which is the
designated United States application of International Application No.
PCT/EP01/09258 filed under 35 U.S.C. § 371 on Aug. 8, 2001. Ex. 1001,
Codes (21), (22), (86). The § 371 (c)(1), (2), (4) date is April 4, 2002. Id.
IPR2019-01116
Patent 7,016,676 B2

9

References3 Date Exhibit
HomeRF4 Kevin J. Negus et al., HomeRF:
Wireless Networking for the Connected
Home, 7 IEEE PERSONAL
COMMUNICATIONS 20–27 (2000).
Feb. 29,
2000
Ex. 1006
HomeRF
Tutorial
Jim Lansford et al., HomeRF: Bringing
Wireless Connectivity Home, IEEE
802.11, 1–27 (1999),
http://www.ieee802.org/11/Documents/
DocumentArchives/1999_docs/90548S-
WPAN-HomeRF-Tutorial-Office-
97.pdf.
Mar. 18,
1999
Ex. 1008
HomeRF
Liaison
Report
Tim Blaney, HomeRFTM Working
Group 3rd Liaison Report, IEEE
802.11, 1–13 (1998),
http://www.ieee802.org/11/Documents/
DocumentArchives/1998_docs/82997S-
HomeRF-3rd-Liaison.pdf.
Nov. 5,
1998
Ex. 1009
Lansford U.S. Patent No. 6,937,158 B2 Aug. 30,
2005
Ex. 1012
Petitioner additionally relies on the Declaration and Supplemental
Declaration of Peter Rysavy (Exs. 1004, 1013) and Declarations of Gerard
P. Grenier (Ex.1007), Christina Boyce (Ex. 1010), and Rene DelaRosa
(Ex. 1011). Petitioner also cites to page 3 of Webster’s New World College
Dictionary (4th ed. 1999) (“Webster’s Dictionary”) (Ex. 1005) for the
meaning of “accordance.” Pet. 21–22.

3 In the interest of consistency and to avoid confusion, we adopt Petitioner’s
designated abbreviations for the cited prior art references. See Pet. viii-ix.
4 When citing to HomeRF, we refer to the original page numbers in small
print and not the large inserted page numbers at the bottom right of each
page of Exhibit 1006.
IPR2019-01116
Patent 7,016,676 B2

10
E. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:

Claims Challenged 35 U.S.C. §5 Reference(s)/Basis
1 and 2 103 HomeRF
1 and 2 103 HomeRF, HomeRF Tutorial
1 and 2 103
HomeRF, HomeRF Liaison
Report
1 and 2 103 Lansford
II. ANALYSIS
A. Principles of Law
To prevail in its challenge to Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence6 that the claims are
unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). That burden never
shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
800 F.3d 1375, 1378 (Fed. Cir. 2015).
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

5 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), (86)), the effective date of the applicable AIA
provisions, we refer to the pre-AIA version of § 103.
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
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).
IPR2019-01116
Patent 7,016,676 B2

11
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
an understanding of work being done by companies within the field of
wireless networks and related standards, e.g., systems or protocols for shared
access of wireless networks by different protocols.” Pet. 19. Petitioner also

7 Patent Owner has not presented any objective evidence of nonobviousness
or any argument in that regard.
IPR2019-01116
Patent 7,016,676 B2

12
asserts that less work experience may be compensated by a higher level of
education. Id.
Patent Owner does not propose its own articulation of the level of
ordinary skill in the art. PO Resp. 6. Patent Owner, however, argues that
Petitioner is incorrect in asserting that a person with ordinary skill in the art
at the time of the invention would have experience specifically in “systems
or protocols for shared access of wireless networks by different protocols.”
Id. We do not see that Petitioner has made that alleged assertion. Petitioner
merely asserts that one with ordinary skill in the art “would have had an
understanding of work being done by companies 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. 19.
Petitioner’s articulation of the level of ordinary skill in the art is
supported by the Declaration of Mr. Rysavy. Ex. 1004 ¶¶ 46–47. It also is
consistent with what is reflected by the content of HomeRF and Lansford.
Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the
applied prior art may reflect an appropriate level of skill). On this record,
we have no reason to disagree with Petitioner’s articulation of the level of
ordinary skill, except to note that the qualifier “or more” as applied to the
years of working experience potentially expands the level to encompass that
of an expert, which is inappropriate for the level of “ordinary skill.”
Therefore, we adopt the Petitioner’s articulation, but without the expansive
qualifier “or more” as applied to working 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
IPR2019-01116
Patent 7,016,676 B2

13
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 Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R.
§ 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R.
§ 42.100(b) (2019)). The Petition here was filed on May 29, 2019. Paper 2.
We apply the claim construction standard from Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc) (“the Phillips standard”).
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 1312–1317. 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 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, 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). “[I]n either case, the standard
IPR2019-01116
Patent 7,016,676 B2

14
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., 868 F.3d 1013, 1017 (Fed.
Cir. 2017).
“stations which operate in accordance
with a first radio interface standard
and/or a second radio interface standard”
Claim 1 recites: “stations which operate in accordance with a first
radio interface standard and/or a second radio interface standard.” Ex. 1001,
6:24–26. Petitioner proposes that the phrase means “two or more devices in
a wireless network, each of which operates in a manner that is in agreement
with or conforms to a first radio standard, a second radio standard, or both
a first and a second radio standard, or variants thereof.” Pet. 22. It is
uncertain what is meant by “or variants thereof” and when a difference
extends beyond being a “variant thereof.” Petitioner has not provided
adequate explanation to justify expanding the scope of the phrase to include,
expressly, “variants” of a radio interface standard. We decline to broaden
the phrase to cover, expressly, “variants” of radio interface standards.
Further, Petitioner’s reading the portion “in accordance with” as “in
agreement with” or “conforms to” does not add anything of significance and
does not serve to clarify anything.
Petitioner further proposes to include express recitation of “wireless
network” in the construction, because the communications are said to be in
accordance with first and second “radio” interface standards and a person of
ordinary skill in the art would have understood that operation in accordance
IPR2019-01116
Patent 7,016,676 B2

15
with “radio” interface standards requires a wireless network. Pet. 20. We
need not resolve this aspect of the proposed construction because all
references applied by Petitioner disclose a wireless network.
We do not adopt Petitioner’s proposed construction of “stations which
operate in accordance with a first radio interface standard and/or a second
radio interface standard.” Patent Owner has not proposed a construction for
this phrase. We find no need to expressly construe this phrase.
“radio interface standard”
Petitioner does not propose any construction for “radio interface
standard.” Patent Owner does, and Patent Owner asserts that we have to
construe “a radio interface standard.” PO Resp. 9. In light of express
acknowledgment by Petitioner’s counsel at oral hearing that neither TDMA
nor CSMA nor CSMA/CA by itself constitutes a radio interface standard
(Tr. 10:14–11:19) and that Petitioner’s position is that in HomeRF, Digital
Enhanced Cordless Telecommunications (“DECT”) is a first radio interface
standard and IEEE801.11 or OpenAir is a second radio interface standard
(Tr. 12:15–13:9), it is not necessary to construe “radio interface standard”
expressly. See Section II.D.2. below.
“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”
Claim 1 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. Petitioner
proposes that this phrase means “makes the frequency band available for
IPR2019-01116
Patent 7,016,676 B2

16
transmissions by stations working in accordance with the second radio
interface standard for periods during which the common frequency band is
not being used by stations operating in accordance with the first radio
interface standard that have requested access to the band.” Pet. 25.
Petitioner proposes to limit “access” to a frequency band to
“transmissions” over the frequency band such that it does not cover
reception over the frequency band. Id. at 24. We need not resolve this
question because all references relied on by Petitioner to meet this limitation
disclose transmissions over the frequency band. It is a non-issue whether
“access” covers reception without transmission.
Petitioner further asserts that in claim 1 there is no antecedent basis
for “the stations working in accordance with the second radio interface
standard.” Pet. 24. The basis for the contention is that prior to such
reference claim 1 only recites stations which operate in accordance with a
first radio interface standard “and/or” a second radio interface standard. Id.
Whether or not there is precise, exact, and literal antecedent basis is
inconsequential here. We readily understand the phrase, given the earlier
recitation in the claim, to be referring to whichever stations that are working
with the second radio interface standard.
Petitioner proposes to change the language “if stations working in
accordance with the first radio interface standard do not request access to the
frequency band” to “for periods during which the common frequency band is
not being used by stations operating in accordance with the first radio
interface standard that have requested access to the band.” Id. at 25. No
explanation has been provided to justify such a major rewriting of the claim.
The original language makes no mention of “use,” just “request,” and
Petitioner’s proposal eliminates an express condition that is present in the
IPR2019-01116
Patent 7,016,676 B2

17
original claim language. Consequently, we do not adopt Petitioner’s
proposed construction.
“respective duration”
For claim 2, Petitioner asserts that the term “respective duration”
should be construed as “time period.” Id. Patent Owner has not expressed
disagreement but asserts that we need not construe the term. PO Resp. 6.
Petitioner’s proposed construction is in accordance with the term’s plain and
ordinary meaning and appears consistent with the Specification. However,
nothing hinges on Petitioner’s proposed construction. It is a non-issue.
Thus, the term need not be construed.
[the steps of 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
(“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
IPR2019-01116
Patent 7,016,676 B2

18
HiperLAN/2 standard, the control station performs the function
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 5 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, 2:63-3:6 (emphasis 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 claim 1,
although Petitioner has not expressly articulated these specific steps.
IPR2019-01116
Patent 7,016,676 B2

19
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, to set forth the steps of the claimed method.
See id. (“[U]nderstanding the claim language may be aided by the
explanations contained in the written description[.]”).
We proposed the same construction in the Decision instituting review.
Paper 8, 15–17. Post institution, neither party disputed this construction.
For the foregoing reasons, we arrive at the same conclusion.
[steps within claim 2]
Claim 2 depends from claim 1 and thus includes all of the steps from
claim 1. Claim 2 further recites a single wherein clause,8 similar to the
wherein clause of claim 1 but setting forth a different functionality of the
control station. As with claim 1, claim 2 does not explicitly recite any step.
However, for reasons similar to that supporting our reading of claim 1’s
wherein clause as setting forth two steps, we read claim 2’s wherein clause
as setting forth an additional step.
The Specification describes as follows:
[C]ontrol is effected in that the control station determines the
respective duration in which the stations operating in accordance

8 Actually, claim 2 recites “herein” rather than “wherein.” Ex. 1001, 6:37.
We treat the “herein” recitation the same as a “wherein” recitation, because
the “herein” appears to be a misspelling for “wherein” in that context and no
recognizable meaning is apparent if it is literally read as “herein.”
IPR2019-01116
Patent 7,016,676 B2

20
with the second radio interface standard can utilize the common
frequency band.
Ex. 1001, 3:30-33. This description refers to effecting control, in a step-like
manner, outside of merely defining what a component does. Also, the act of
effecting control corresponds readily to the functionality included within the
wherein clause of claim 2. Therefore, we read the wherein clause of claim 2
as setting forth another step carried out by the control station, in addition to
those of claim 1. Specifically, claim 2 sets forth the step, performed by the
control station, of: “determines the respective duration in which the stations
working in accordance with the second radio interface standard are allowed
to utilize the frequency band.”
We adopted the same construction in the Decision instituting review.
Paper 8, 17–18. Post institution, neither party disputed this construction.
Here, for the foregoing reasons, we arrive at the same conclusion.
D. Alleged Unpatentability of Claims
1 and 2 as Obvious over HomeRF
1. Overview of HomeRF
HomeRF describes a specification for a shared wireless access
protocol named SWAP, an acronym for Shared Wireless Access Protocol,
for wireless voice and data networking within the home. Ex. 1006, 20,
Abstr. Figure 1 shows a network using SWAP and is reproduced below:
IPR2019-01116
Patent 7,016,676 B2

21

Figure 1 shows the SWAP home network that supports both
isochronous clients that are slaves to the main home PC and an
asynchronous network of peer devices which is effectively a wireless
Ethernet. Id. at 21, 1:36–40. The system includes a control point, usually
connected to the main home PC through USB. Id. at 21, 1:40–42. This
control point is not necessary for devices in the asynchronous network of
Figure 1. Id. at 21, 1:42–44.
“The isochronous clients, such as cordless telephones, wireless
headsets, or remote I/O devices to the home PC (a consumer personal
information manager, PIM), are always bound to the control point, which
assigns them guaranteed bandwidth for bounded latency communication.”
Id. at 21, 1:46–51. “[D]ata transfer on the asynchronous network between
any two peers is directly to each other as opposed to routed through the
control point.” Id. at 21, 1:53–55. The asynchronous devices can also
IPR2019-01116
Patent 7,016,676 B2

22
communicate to the main home PC as with any other asynchronous peer
device. Id. at 21, 1:51–52.
The control point acts as a gateway between the main home personal
computer (PC), the public switched telephone network (PSTN), and all
SWAP-compatible devices in the network. Id. at 21, 2:62–64. Three kinds
of devices can be in a SWAP network: (1) the control point or CP;
(2) Voice devices (isochronous data devices, also called I-nodes); and
(3) Asynchronous devices, also called A-nodes. Id. at 21, 2:60–67.
The control point manages the network to provide priority access to
the radio medium for isochronous devices over asynchronous peer-peer
devices. Id. at 22, 1:4–5. HomeRF describes that the SWAP protocol is a
hybrid, i.e., client-server between the control point and voice devices, and
peer-to-peer between data devices. Id. at 22, 1:6–8.
The asynchronous and isochronous SWAP devices operate in
accordance with different medium access control methods for accessing the
transmission medium. Id. at 23, 1:18–23. For instance, TDMA (time-
division multiple access) is used for transmission of isochronous data, e.g.,
interactive voice, and CSMA with collision avoidance (CSMA/CA) is used
for transmission of asynchronous data. Id. The SWAP MAC protocol
provides “[g]ood support for voice and data by using both TDMA and
CSMA/CA access mechanisms.” Id. at 23, 1:25–26. Figure 2 shows the
two types of devices, isochronous for voice and asynchronous for data, and
is reproduced below.
IPR2019-01116
Patent 7,016,676 B2

23

Figure 2 shows an example of a typical SWAP network consisting of two A-
nodes, one I-node, and a control point CP. Id. at 22, 2:11–12. As shown in
Figure 2, the A-nodes (asynchronous peer-peer devices) operate in
accordance with CSMA/CA transmission protocol, and the I-node
(isochronous voice devices) operate in accordance with TDMA transmission
protocol. See id. at 23, 1:18–23.
With regard to standards, HomeRF states that “[t]he SWAP MAC has
been optimized for the home environment and is designed to carry both
voice and data traffic and interoperate with the PSTN using a subset of the
Digital Enhanced Cordless Telecommunications (DECT) standard, a digital
cordless telephone standard used in residential applications throughout
Europe.” Id. at 23, 1:12–18 (emphasis added). With regard to its
CSMA/CA type of medium access, HomeRF states that it is “derived from
wireless LAN standards such as IEEE802.11 and OpenAir to support the
delivery of asynchronous data.” Id. at 23, 1:21–23.
IPR2019-01116
Patent 7,016,676 B2

24
The use of two different medium access control methods in SWAP is
illustrated in part through Figure 4 which is reproduced below.

Figure 4 shows a superframe implemented by the SWAP MAC protocol. Id.
at 23, 2:22–23.
Each SWAP superframe includes two contention-free periods (CFP1
and CFP2) and a contention period. Id. at 23, 2:23–25. The access
mechanism used during each a contention-free-period is TDMA, and the
access mechanism used during each contention period is CSMA/CA. Id.
at 23, 2:29–31. The duration of each superframe is fixed, and the start of the
superframe is the point at which a station begins to hop to a new channel and
ends immediately before the station starts to hop to the next channel. Id.
at 23, 2:25–29.
The contention-free-periods are used to support up to four high quality
voice connections using TDMA. Id. at 23, 2:16 to 25, 1:2. With regard to
the two contention free periods CFP1 and CFP2, HomeRF describes the
following:
Each CFP is divided into a number of pairs of fixed-length slots,
two per voice connection. The first slot in each pair is used to
transmit voice data from the CP to a node (downlink), and the
second is used to transmit voice data from a node to the CP
IPR2019-01116
Patent 7,016,676 B2

25
(uplink). In a managed network a beacon is transmitted
immediately after the hop. This beacon is used to maintain
network synchronization, control the format of the superframe,
and manage when each node should transmit and receive data.
CFP2 at the end of the superframe is used for the initial
transmission of the voice data, while CFP1 at the start of the
superframe is used for the optional retransmission of any data
which was not received or incorrectly received in the previous
dwell. The dwell period is fixed at 20 ms to provide acceptable
performance with respect to latency. . . . With a 20 ms superframe
the MAC can provide four voice connections with a large enough
CFP at the start of the frame to enable up to four retransmissions
to be accommodated.
Id. at 23, 2:17–39 (emphasis added). At the end of CFP1 in the superframe,
there is a space reserved for a service slot which is used by voice nodes to
request connections from the CP. Id. at 23, 2:43–45. SWAP allows the CP
to determine prior to a hop which voice data transmissions were lost,
determine the retransmissions required, and advertise the retransmissions in
the beacon at the start of the next superframe. Id. at 23, 2:50 to 25, 1:2.
With regard to the single contention period in which the CSMA/CA
access mechanism is used, HomeRF’s Figure 5 is illustrative and reproduced
below:

Figure 5 illustrates how the transmission medium is accessed during the
contention period. Id. at 24, 1:16–18. The CSMA/CA access procedure
used in the contention period is designed to provide fair access to the
IPR2019-01116
Patent 7,016,676 B2

26
medium to all nodes by using a contention window and a backoff counter.
Id. at 24, 1:19–21. HomeRF describes as follows:
Before any node transmits a packet it selects a backoff counter (a
number of contention slots) and then starts listening. When the
medium has been clear for a DIFS period it decrements its
backoff counter for each free contention slot. When the backoff
counter expires the node transmits the message. Whenever the
medium is busy the countdown is suspended and only resumes
when the medium has been free for a FIFS. This backoff
mechanism reduces the probability of collision, and performing
a backoff before transmission also ensures that responses from
multiple nodes responding to a broadcast message on an
otherwise idle network do not all collide.
Id. at 24, 1:21–33. Notably, the beacon signal generated by the control
point, shown in Figure 4, is used to maintain network synchronization,
controls the format of the superframe, and manages when each node should
transmit and receive data. Id. at 23, 2:35–39.
2. Independent Claim 1
Claim 1 recites “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.” 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 6:23–26. Claim 1 additionally
recites “a control station which controls the alternate use of the frequency
band.” Id. at 6:27–28.
The parties do not dispute that the recited alternate use is by stations
which operate in accordance with a first radio interface standard on the one
hand, and stations which operate in accordance with a second radio interface
standard on the other hand, and have presented their arguments consistent
IPR2019-01116
Patent 7,016,676 B2

27
with that reading. We agree with that understanding of the claim. A
determinative issue with regard to these limitations is whether HomeRF
discloses two types of stations, one type which operates in accordance with a
first radio interface standard, and another type which operates in accordance
with a second radio interface standard. For reasons discussed below,
Petitioner has not persuaded us that HomeRF discloses a set of stations
operating in accordance with a first radio interface standard and another set
of stations operating in accordance with a second radio interface standard.
In the Decision instituting review, we preliminarily determined that
TDMA is a radio interface standard and CSMA/CA is another radio
interface standard, based on assertions in the Petition. Paper 8, 24–25. On
that basis, we preliminarily determined that the I-nodes would be stations
using a first radio interface standard and the A-nodes would be stations
using another radio interface standard. Id. Patent Owner argues that TDMA
and CSMA/CA are just medium access mechanisms which can be adopted
within a radio interface standard but do not themselves constitute a radio
interface standard. PO Resp. 9. Patent Owner asserts that a “‘radio interface
standard’ is a complete radio interface standard, such as IEEE 802.11a or
ETSI BRAN HiperLAN/2, as distinguished from such characteristics as
medium access control or channel-access methods, as well as other
characteristics such as modulation and coding methods.” Id.
In its Reply, Petitioner did not dispute Patent Owner’s assertion that
TDMA and CSMA/CA are not themselves any radio interface standard, but
just a medium access mechanism or method. At oral hearing, in response to
panel inquiry, counsel for Petitioner expressly acknowledged and confirmed
that neither TDMA nor CSMA/CA by itself constitutes a radio interface
IPR2019-01116
Patent 7,016,676 B2

28
standard and that it is not Petitioner’s position that either TDMA or
CSMA/CA by itself constitutes a radio interface standard. Tr. 10:14–11:19.
Further, counsel for Petitioner clarified that it is Petitioner’s position
that in HomeRF, DECT is the first radio interface standard, and either
IEEE802.11 or OpenAir is the second interface standard. Tr. 12:21–13:9,
14:8–13. That was not clear from the Petition, because the Petition
consistently inserted “TDMA” in front of “DECT” and “CSMA/CA” or
“CSMA” in front of “IEEE802.11” when referring to standards. Thus,
Petitioner’s argument, as clarified at oral argument, is that in HomeRF, the I-
Nodes or isochronous devices operate according to the radio interface
standard DECT and the A-Nodes or asynchronous devices operate in
accordance with the radio interface standard “IEEE802.11” or “OpenAir.”
Id.
Patent Owner does not dispute that each of “DECT,” “IEEE802.11,”
and “OpenAir” is a recognized radio interface standard. Tr. 30:24–31:11;
32:2–9. Petitioner, however, does not persuade us that in HomeRF, the I-
Nodes or isochronous devices operate in accordance with DECT or that the
A-nodes or asynchronous devices operate in accordance with either
“IEEE802.11” or “OpenAir.”
For support, Petitioner cites to the following paragraph of HomeRF:
The SWAP MAC has been optimized for the home
environment and is designed to carry both voice and data traffic
and interoperate with the PSTN using a subset of the Digital
Enhanced Cordless Telecommunications (DECT) standard, a
digital cordless telephone standard used in residential
applications throughout Europe. The MAC is designed for use
with a frequency-hopping radio and includes a TDMA service to
support the delivery of isochronous data (e.g. interactive voice),
and a CSMA with collision avoidance (CSMA/CA) service
IPR2019-01116
Patent 7,016,676 B2

29
derived from wireless LAN standards such as IEEE802.11 and
OpenAir to support the delivery of asynchronous data.
Ex. 1006, 23, 1:12–23 (cited at Pet. 30). This description is inadequate to
support Petitioner’s assertion for several reasons.
First, the reference to a subset of DECT makes no distinction between
transmission of voice versus transmission of data. Facially, both I-Nodes
and A-nodes would be operating with a subset of DECT, not that I-Nodes
operate under a subset of DECT and A-Nodes do not. In that regard, the
Petition provides no explanation. Neither does any cited testimony of
Mr. Rysavy.
Second, the claim requires operation “in accordance with a first radio
interface standard and/or a second radio interface standard,” not operation in
accordance with a “subset” of a radio interface standard and/or a second
radio interface standard. Ex. 1001, 6:24–26. Petitioner asserts that
operating in accordance with a standard does not require implementation of
the “complete” standard. Reply 3 (citing Ex. 1013 ¶ 14). In that regard,
Mr. Rysavy testifies that one with ordinary skill in the art would not have
understood that the claims are limited to implementing a complete radio
interface standard in connection with the requirement of “operate in
accordance with” a standard. Ex. 1013 ¶ 14. That position, even if true,
does not help Petitioner.
Neither Petitioner nor Mr. Rysavy takes the position that to operate
“in accordance with” a standard, the operations need not be in compliance
with a substantial or significant portion of the standard. In HomeRF, the
reference to a subset of DECT does not reveal the size of the subset. Indeed,
ninety-five percent of all requirements of a standard constitutes a “subset” of
the standard. The same is true for just one percent. Petitioner simply noting
IPR2019-01116
Patent 7,016,676 B2

30
that not everything in a standard needs to be complied with does not
persuade us that if any part of the standard is complied with, then, in general,
a station operates “in accordance with” that standard.
The conclusion is the same even if we assume that “accordance”
means “agreement; harmony; conformity” as Mr. Rysavy states. Ex. 1004
¶ 54. Because only a subset of DECT is adopted by HomeRF, depending on
the size of the subset and the nature of the items within the subset, there may
be more non-conformity than conformity to DECT, more disharmony than
harmony with DECT, and more disagreement than agreement with DECT.
Further, under Petitioner’s view, if a certain technique is commonly used or
approved by multiple standards, then a station practicing that technique
would be operating according to each of the multiple standards. That is not
a reasonable position, because the station may be doing something else that
may be prohibited by or inconsistent with other requirements of the
standards. In essence, Petitioner has over-simplified the matter.
Third, that CSMA/CA data service is described in HomeRF as
“derived from wireless LAN standards such as IEEE802.11 and OpenAir to
support the delivery of asynchronous data” does not sufficiently establish
that the A-Nodes or asynchronous devices operate in accordance with either
the IEEE801.11 standard or the OpenAir standard. The term “derived from”
itself signifies change, and Petitioner does not address how much change is
embodied in that process. Further, it is unknown and also not addressed by
Petitioner how the characteristics of HomeRF (other than the medium access
method CSMA/CA) compares to either the IEEE801.11 standard or the
OpenAir standard.
For instance, it is possible that although CSMA/CA service is
“derived” from IEEE801.11 or OpenAir, everything else in HomeRF is
IPR2019-01116
Patent 7,016,676 B2

31
contrary to or inconsistent with IEEE801.11 and OpenAir. Like the
circumstance with a “subset” of DECT, discussed above with respect to the
I-Nodes or isochronous devices, Petitioner has over-simplified the matter
with respect to CSMA/CA being derived from IEEE801.11 or OpenAir. The
problem is not overcome by Petitioner’s argument that “in accordance with”
a standard does not require implementation of the complete standard. The
real question is how much of IEEE801.11 or OpenAir is adopted in HomeRF
such that it would be reasonable to regard the asynchronous devices as
operating in accordance with IEEE801.11 or OpenAir. For that, Petitioner
provides no answer.
During oral hearing, counsel for Petitioner asserts, in essence, that it
does not matter if the first stations operate contrary to the first radio interface
standard in many ways so long as it is consistent with the first radio interface
standard with respect to a claim element, i.e., medium access method, and
that it does not matter if the second stations operate contrary to the second
radio interface standard in many ways so long as it is consistent with the
second radio interface standard with respect to a claim element, i.e., medium
access method. Tr. 16:1–17:1. That is an argument not presented by
Petitioner either in the Petition or in the Reply, but first raised during oral
hearing. Parties are not permitted to raise new arguments at oral hearing.
Consolidated Trial Practice Guide9 at 85–86; see Dell Inc. v. Acceleron,
LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018). Patent Owner has not had a fair
opportunity to respond. We decline to consider this new argument.
Alternatively, even if we were to consider the belated argument, it is
unpersuasive. Claim 1 unequivocally recites “stations which operate in

9 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2019-01116
Patent 7,016,676 B2

32
accordance with a first radio interface standard and/or a second radio
interface standard,” not in accordance with “any” aspect of a standard.
Petitioner also points to nothing in the Specification which refers to
accordance with “any” aspect of either standard. The focus of the claim
limitation is on “the first [or second] radio interface standard,” not just an
aspect of either standard. Further, the recitation precedes any limitation
regarding the medium access method. In this circumstance, to do as
Petitioner urges amounts to impermissible rewriting of the claim. 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, 1359 (Fed. Cir. 2006); K-2
Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999).
For the foregoing reasons, we are not persuaded by Petitioner that
HomeRF’s I-Nodes or isochronous devices operate in accordance with a first
radio interface standard, i.e., DECT, or that HomeRF’s A-Nodes or
asynchronous devices operate in accordance with a second radio interface
standard, i.e., IEEE802.11 or OpenAir. Therefore, Petitioner has not proved
by a preponderance of the evidence that claim 1 would have been obvious
over HomeRF.10

10 We need not, and do not, reach Patent Owner’s additional arguments that
(1) HomeRF does not disclose “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 (2) HomeRF does not disclose “wherein
the control station . . . 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.” PO Resp. 28–39, 39–44.
IPR2019-01116
Patent 7,016,676 B2

33
3. Dependent Claim 2
Claim 2 depends from claim 1 and thus incorporates all the limitations
of claim 1. Consequently, all of the deficiencies discussed above with
respect to claim 1 equally apply to claim 2. Petitioner has not proved by a
preponderance of the evidence that claim 2 would have been obvious over
HomeRF.
E. Alleged Unpatentability of Claims 1 and 2
as Obvious over HomeRF and HomeRF Tutorial and
also as Obvious over HomeRF and HomeRF Liaison Report
1. HomeRF and HomeRF Tutorial
According to Petitioner, “HomeRF Tutorial describes the same
HomeRF system as described in [HomeRF], and provides additional
discussion regarding alternate use of the frequency band by first and second
radio protocols.” Pet. 47–48. Petitioner makes the same assumption it does
in the context of alleged unpatentability based solely on HomeRF, i.e., I-
Node devices operate in accordance with DECT and A-Node devices
operate in accordance with IEEE802.11 or OpenAir. Petitioner specifically
states that “[HomeRF Tutorial] shows the two modes of communications
based on the two different standards, DECT and 802.11.” Id. at 48. The
assertion is no more persuasive than it is in the context of HomeRF alone.
Petitioner does not point out any discussion in HomeRF Tutorial that
would cure the deficiencies discussed above in the context of alleged
unpatentability over HomeRF alone. For example, Petitioner identifies
nothing that sheds light on the size of the “subset” of DECT that is used;
Petitioner identifies nothing that sheds light on how much of IEEE802.11 or
OpenAir is adopted for use in HomeRF as a whole; and Petitioner identifies
IPR2019-01116
Patent 7,016,676 B2

34
nothing that sheds light on what changes take place when “deriving”
CSMA/CA data service from IEEE802.11 or OpenAir.
Thus, even assuming HomeRF Tutorial is applicable prior art, the
above-discussed deficiency of HomeRF also applies to HomeRF Tutorial.
2. HomeRF and HomeRF Liaison Report
According to Petitioner, “HomeRF Liaison Report describes the same
HomeRF system as described in [HomeRF] and provides additional
discussion regarding the alternate use of the frequency band by first and
second radio protocols.” Pet. 57. Petitioner makes the same assumption it
does in the context of the alleged unpatentability based solely on HomeRF,
i.e., I-Node devices operate in accordance with DECT and A-Node devices
operate in accordance with IEEE802.11 or OpenAir. The assertion is no
more persuasive than it is in the context of HomeRF alone.
Petitioner does not point out any discussion in HomeRF Liaison
Report that would cure the deficiencies discussed above in the context of
alleged unpatentability over HomeRF alone. For example, Petitioner
identifies nothing that sheds light on the size of the “subset” of DECT that is
used; Petitioner identifies nothing that sheds light on how much of
IEEE802.11 or OpenAir is adopted for use in HomeRF as a whole;
Petitioner identifies nothing that sheds light on what changes take place
when “deriving” CSMA/CA data service from IEEE802.11 or OpenAir.
Thus, even assuming HomeRF Liaison Report is prior art, the above-
discussed deficiency of HomeRF also applies to HomeRF Liaison Report.
3. Public Accessibility of
HomeRF Tutorial and HomeRF Liaison Report
To prevail in a final written decision in an inter partes review, a
petitioner bears the burden of establishing by a preponderance of the
IPR2019-01116
Patent 7,016,676 B2

35
evidence that a particular document is a printed publication. Nobel Biocare
Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018);
Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 11
(PTAB Dec. 20, 2019) (Precedential). Whether an applied reference
qualifies as a “printed publication” is a legal conclusion based on underlying
factual findings, including a finding on whether the reference was publicly
accessible. Nobel, 903 F.3d at 1375; Hulu, IPR2018-01039, Paper 29 at 9.
“Public accessibility” has been called the touchstone in determining
whether a reference constitutes a “printed publication.” Blue Calypso, LLC
v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016); Hulu, IPR2018-
01039, Paper 9 at 10. “A given reference is ‘publicly accessible’ upon a
satisfactory showing that such document has been disseminated or otherwise
made available to the extent that persons interested and ordinarily skilled in
the subject matter or art exercising reasonable diligence, can locate it.” SRI
Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008).
a. HomeRF Tutorial
Petitioner represents (1) that HomeRF is a tutorial presentation
“uploaded to the IEEE 802 LAN/MAN Standards Committee website
(http://ieee802.org/) on March 18, 1999”; (2) that “HomeRF Tutorial is
maintained in the ordinary course of business and indexed on this publicly
available website”; and (3) that “HomeRF Tutorial was last modified on the
date it was uploaded, March 18, 1999.” Pet. 47. For reasons discussed
below, we are not persuaded of the sufficiency of the so-called “index.”
That “portion” of the alleged website document “index,” as submitted
by Petitioner and referred to in the Declaration of Christina Boyce, custodian
of certain records for IEEE (Ex. 1010, ¶ 8), is 25 pages in length, and
Petitioner does not indicate how large is the entirety of the “index.” The
IPR2019-01116
Patent 7,016,676 B2

36
page of the partial index on which HomeRF Tutorial appears is reproduced
below (Ex. 1010, 69):

IPR2019-01116
Patent 7,016,676 B2

37
As shown by the above-reproduced page, which is representative of
all the submitted pages, the so-called index is merely a listing of all of the
uploaded documents together with the date of upload. It is mostly
chronologically ordered by date of upload, with some exceptions. More
importantly, it is not organized by subject matter. Further, some entries have
nothing to indicate the corresponding technical content, e.g., “90447W-
Letter-Ballot-17.doc,” and “90397b texteditorial comment resolution2.doc.”
The “index” entry for HomeRF Tutorial does not even include the full title
of HomeRF Tutorial. The words “Bringing Wireless Connectivity Home”
are omitted. Other entries may have similar omissions. For all of these
reasons, the so-called “index” is not a useful index for finding material of
interest. Searching the list is tantamount to having to inspect only the cover
page of every book on every shelf in a library, where the books are
organized only by publication date, with author information and a part of the
title masked. Petitioner has not shown that such an index facilitates subject
matter searching by anyone. We are not persuaded that HomeRF Tutorial
was made available to the extent that persons interested and ordinarily
skilled in the subject matter, exercising reasonable diligence, could have
located it prior to the earliest possible effective filing date of the ’676 patent.
During oral hearing, counsel for Petitioner pointed out that no matter
what, the “index” is a list with a finite number of pages and one with an
interest in “HomeRF” would see the entry whose caption includes the word
“HomeRF” and thus locate the document. Tr. 28:11–17. The argument of
not looking for technical subject matter directly but looking indirectly for the
word “HomeRF” instead is an argument first raised during oral argument
and not entitled to consideration. Parties are not permitted to raise new
arguments at oral hearing. Consolidated Trial Practice Guide at 85–86; see
IPR2019-01116
Patent 7,016,676 B2

38
Dell, 884 F.3d at 1369. Patent Owner has not had a fair opportunity to
respond. We decline to consider this new argument.
Alternatively, even if we were to consider this new argument, it is
unpersuasive. The so called “index” still is not organized by subject matter
in any way, and one still would have to go through the entire list of uploaded
documents, manually, to search for pertinent material. As we noted above, it
is unknown how long the entire list is, and Petitioner has not submitted
evidence that the list is electronically word-searchable.11
Further, Petitioner’s new argument is circular in that one has to know
the existence and meaning of HomeRF before embarking on an endeavor to
conduct further search for material relating to HomeRF. Petitioner has not
established that the word “HomeRF” had acquired such widespread
recognition in the art with a well understood technical meaning that it could
and would have been used for searching technical content. This is not a
circumstance where one reference contains a specific identification of
another reference. Although one could locate HomeRF first, learn about its
content, and then search for related material by using the word “HomeRF”
for searching, having to do the search in this manner exceeds the bounds of
reasonable diligence, especially where it is unknown how long the entire
“index” on the IEEE website is and Petitioner has not established that the list
is electronically word-searchable.

11 Counsel for Petitioner states that the entire index for both years, 1998 and
1999, has been provided. Tr. 28, 4–6. But that implies the index, in full, is
not limited to 1998 and 1999. Petitioner gives no reason why one with an
interest and is ordinarily skilled would limit the search to 1998 and 1999.
IPR2019-01116
Patent 7,016,676 B2

39
b. HomeRF Liaison Report
Petitioner represents (1) that HomeRF Liaison Report is a presentation
“uploaded to the publicly accessible IEEE 802 LAN/MAN Standards
Committee website (http://ieee802.org/) on November 5, 1998”; (2) that
“HomeRF Liaison Report is maintained and indexed on this publicly
available website”; and (3) that “HomeRF Liaison Report was last modified
on the date it was uploaded, November 5, 1998.” Pet. 56.
The issue and arguments with regard to the public accessibility of
HomeRF Liaison Report are essentially the same as those regarding public
accessibility of HomeRF Tutorial. The same IEEE website is at issue, and
the same so-called “index” is at issue. We need not reiterate our discussion
above in the context of HomeRF Tutorial. But it is useful to reproduce here
the page of the listing containing the entry for HomeRF Liaison Report
(Ex. 1010, 63):
IPR2019-01116
Patent 7,016,676 B2

40

For essentially the same reasons we determined that Petitioner has not
shown sufficient indexing to permit an interested person having ordinary
IPR2019-01116
Patent 7,016,676 B2

41
skill in the art, with exercise of reasonable diligence, to locate HomeRF
Tutorial, we find the same with respect to the HomeRF Liaison Report.
c. Conclusion
For the foregoing reasons, Petitioner has not proved by a
preponderance of the evidence that either one of HomeRF Tutorial or
HomeRF Liaison Report is a printed publication as of a date prior to the
earliest possible effective filing date of the ’676 patent.
4. Conclusion
For the foregoing reasons, Petitioner has not proved by a
preponderance of the evidence that any one of claims 1 and 2 would have
been obvious over HomeRF and HomeRF Tutorial.
For the foregoing reasons, Petitioner also has not proved by a
preponderance of the evidence that any one of claims 1 and 2 would have
been obvious over HomeRF and HomeRF Liaison Report.
F. Alleged Unpatentability of Claims 1 and 2 over Lansford
1. Overview of Lansford
Lansford relates to wireless communication involving two different
protocols. Ex. 1012, 1:5–8. A controller is capable of wireless
communication with a first class of devices in accordance with a first
wireless communication protocol and with a second class of devices in
accordance with a second wireless communication protocol. Id. at 2:10–18.
The first protocol includes provisions defining a contention-free period
during which the first class of devices do not communicate with the
controller. Id. at 2:18–21.
Lansford explains that the controller communicates with the first class
of devices according to the first wireless communication protocol, detects
IPR2019-01116
Patent 7,016,676 B2

42
the presence of a device belonging to the second class of devices, and then
determines a time frame for a contention-free period. Id. at 2:22–29.
During the contention-free period, communication between the controller
and the first class of devices ceases, and communication between the
controller and the second class of devices takes place. Id. at 2:30–35. After
the end of the contention-free period, the controller again operates
according to the first communication protocol and communicates with the
first class of devices. Id. at 2:39–42. Such communication continues until
the next contention-free period. Id. at 2:42–43.
Lansford describes that “the first wireless communication protocol
may be the HomeRF[] protocol described in the Shared Wireless Access
Protocol (SWAP) Specification 1.0, released Jan. 5, 1999, and the second
wireless communication protocol may be the Bluetooth[] protocol described
in the Bluetooth Specification, Version 1.0A, released Jul. 24, 1999.” Id. at
2:45–50. Lansford further explains that in accordance with both the
HomeRF and Bluetooth protocols, “each block frequency is in the vicinity
of 2.4 GHz.” Id. at 3:19–21.
Figure 1 of Lansford is reproduced below.

IPR2019-01116
Patent 7,016,676 B2

43
Figure 1 shows how three devices A, B and C may communicate with each
other and operate in accordance with two different wireless communication
protocols. Id. at 1:60–62. Within the communication frame structure shown
in Figure 1, the first block is bounded by times 101 and 111, and the second
block is bounded by times 111 and 121. Id. at 3:27–33. In general, in each
block Device A communicates with Device B according to a first
communication protocol. Id. at 3:29–37. That is shown by the common
blank boxes between devices A and B in Figure 1.
During the period bounded by times 103 and 104 within the first
block, however, devices A and C communicate with each other according to
a second communication protocol. Id. at 3:41–45. Similarly, during the
period bounded by 113 and 114 in the next block, devices A and C again
communicate with each other according to a second communication
protocol. Id. at 3:49–53.
Time periods 103 to 104 and 113 to 114 are referred to as
“contention-free” periods reserved for communication between Devices A
and C according to a second communication protocol. Id. at 5:11–34.
During these contention-free periods, communication between Device A and
Device B is suspended, and Device B does not attempt to contend for
communication with Device A. Id. at 4:49–56. Outside of the contention-
free periods in each block, Devices A and B communicate according to a
first communication protocol. Id. at 5:20–29.
Device A is referred to as the controller. Id. at 4. Coordination
of communication between all three devices shown in Figure 1 is
controlled by Device A. Id. at 4:2–3. Device B learns of the time
frame for these periods from Device A. Id. at 4:52–55. Lansford
describes that Device A sends a signal to Device B to indicate the
IPR2019-01116
Patent 7,016,676 B2

44
time frame for the contention-free period. Id. at 4:40–42. In a
disclosed embodiment of Lansford, Device B is a HomeRF device,
and Device C is a Bluetooth device. Id. at 4:5–6.
2. Independent Claim 1
Claim 1 recites “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.” 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 6:23–26. We are persuaded by
Petitioner, as explained below, that Lansford 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 Lansford discloses
stations which operate in accordance with a first radio interface standard
and/or a second radio interface standard.
Petitioner asserts that Lansford discloses wireless communication
among at least three devices including a controller on a common frequency
band and using two different communication protocols. Pet. 69 (citing
Ex. 1012, 2:45–51, 3:8–22, 4:8–9). Petitioner further asserts that Lansford’s
controller controls alternate use of the common frequency band by a
HomeRF station during contention periods but not during contention-free
periods in one protocol and by a Bluetooth device during the contention-free
periods in another protocol. Id. at 69–70 (citing Ex. 1012, 2:11–21, 4:16–
29, 40–56, 5:36–38, Fig. 1; Ex. 1004 ¶¶ 165–166). The assertions are
supported by the cited disclosure of Lansford as well as the cited testimony
of Mr. Rysavy. For instance, as discussed above by reference to Figure 1,
during contention-free periods 103–104 and 113–114, controller Device A
IPR2019-01116
Patent 7,016,676 B2

45
communicates with a Bluetooth device, Device C, using one protocol.
Ex. 1012, 3:41–53, 4:5–6, 5:11–34. Outside of the contention-free periods,
controller Devices A communicates with a HomeRF device, Device B, using
another protocol. Id. at 5:20–29.
Petitioner identifies Lansford’s Bluetooth device, Device C, as a
station operating according to the Bluetooth protocol, i.e., a first radio
interface standard, and Lansford’s HomeRF device, Device B, as a station
operating according to the HomeRF protocol, i.e., a second radio interface
standard. Pet. 70–71 (citing Ex. 1012, 2:45–51, 3:23–28, 4:5–9).
Petitioner’s declarant, Mr. Rysavy, testifies that one with ordinary skill in
the art would have understood each of the wireless communication protocols
to be a radio interface standard. Ex. 1004 ¶¶ 167–168. Petitioner’s
assertions are supported by the cited disclosure of Lansford and the cited
testimony of Mr. Rysavy. Patent Owner does not dispute that the Bluetooth
protocol is a first radio interface standard and also does not dispute that the
HomeRF protocol is 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. Notwithstanding Patent Owner’s arguments to the contrary, which
we discuss below, we are persuaded that Lansford discloses a control station
which controls the alternate use of the frequency band.
Petitioner identifies Lansford’s controller, Device A, as the control
station which controls the alternate use of the frequency band. Pet. 71.
Petitioner asserts that Device A controls such “alternate use” by allocating
corresponding time slots during which Device C would sometimes use the
frequency band in accordance with a first radio interface standard, and
Device B would sometimes use the frequency band in accordance with a
IPR2019-01116
Patent 7,016,676 B2

46
second radio interface standard. Id. (citing Ex. 1012, 2:8–43, 4:8–56, 5:23–
55; Ex. 1004 ¶¶ 169–170). Petitioner’s assertions are supported by the cited
portions of Lansford and the cited testimony of Mr. Rysavy. For instance,
Lansford explains that the controller communicates with the first class of
devices according to the first wireless communication protocol, detects the
presence of a device belonging to the second class of devices, and then
determines a time frame for a contention-free period during which the
second class of devices can communicate. Ex. 1012, 2:22–29. After the end
of the contention-free period, the controller again operates according to the
first communication protocol and communicates with the first class of
devices. Id. at 2:39–42.
Furthermore, Lansford describes that coordination of communication
between all devices shown in Figure 1 is controlled by Device A. Id. at 4:2–
3. Device B learns of the time frame for these periods from Device A. Id.
at 4:52–55. Lansford describes that Device A sends a signal to Device B to
indicate the time frame for the contention-free period. Id. at 4:40–42.
Patent Owner argues that Lansford’s controller Device A is not a
control station which controls the alternate use of the common frequency
band because (1) it cannot deny alternate use of the frequency band by
Device B “even if” there is no traffic from Device C, and (2) it cannot grant
Device B sole alternate use of the frequency band “even if” there is traffic
from Device C. PO Resp. 51. According to Patent Owner, for Device A to
control alternate use of the frequency band, it must be able to block all use
of the band by Device B whether or not Device B desires communication,
and, similarly, block all use of the band by Device C whether or not Device
C desires communication. Id. at 17–18.
IPR2019-01116
Patent 7,016,676 B2

47
Patent Owner’s arguments are unpersuasive. The recitation “controls
the alternate use of the frequency band” requires only “providing alternating
uses of the frequency band.” That is consistent with the following
description in the Specification: “In accordance with the invention a control
station is provided which controls the alternate use of the common frequency
band of the two radio interface standards.” Ex. 1001, 2:45–47. It also is
consistent with the following description in the Specification:
The control of the alternate use of the common frequency
band may be effected in various ways. For example, it is possible
to provide certain predefinable time intervals for the use of the
first and second radio interface standard and allocate the
frequency band alternately to the first radio interface standard
and then to the second radio interface standard in a kind of time-
division multiplex mode.
Id. at 2:51–57.
The limitation “a control station which controls the alternate use of
the frequency band” is not so restrictive as to require an ability to impose a
complete ban on access in whatever situation or to grant absolute and
immediate access at any time no matter what other devices request access.
Patent Owner points to no part of the Specification which conveys this
restrictive meaning, and we can see none. Also, Patent Owner identifies no
disclaimer or disavowal, either in the Specification or in the prosecution
history, which limits the scope of the claims to this restrictive extent, and we
can find none. “Control” may be effected in various degrees and covers
assigning respective time slots, of whatever duration, for two types of
devices to gain access to a medium or resource in alternating manner, as is
described in Lansford. An ability to grant or deny access at will in all
circumstances is not required by the claim. Lansford’s specific control
scheme meets the claim.
IPR2019-01116
Patent 7,016,676 B2

48
Claim 1 further recites a wherein clause, which, as explained above in
Section II.A., 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.
We are persuaded by Petitioner that Lansford discloses step (1). For
step (1), Petitioner explains that Lansford’s control Device A controls access
by Device C to the common frequency band by allocating time slots, during
which Device C would access the common frequency band in accordance
with a first radio interface standard. Pet. 71 (citing Ex. 1012, 2:8–43, 4:8–
56, 5:23–55; Ex. 1004 ¶¶ 169–170). Petitioner’s assertions are supported by
the cited disclosures of Lansford and the cited testimony of Mr. Rysavy.
With regard to step (1), we find no pertinent counter-argument by Patent
Owner. To the extent Patent Owner’s “no control” argument, discussed
above in the context of the limitation regarding controlling “alternate use” of
the frequency band applies, it is without merit as we have explained above.
For step (2), Petitioner asserts as follows:
As discussed above, the controller controls the common
frequency band. Lansford describes that the controller sends “a
beacon” that indicates the time for a contention-free period
during which communication is limited to only Bluetooth
communication. Lansford, 4:40–56. HomeRF device, Device B
(a station working in accordance with the second radio interface
standard), can communicate during the time not used by the
contention-free periods, namely the contention periods (id.,
5:23–35), while the above-referenced contention-free periods are
reserved for Bluetooth communication with Device C, a
IPR2019-01116
Patent 7,016,676 B2

49
Bluetooth device that has requested access to the frequency band
(e.g., it has requested communication with the controller) (id.,
4:15–29). See, generally, id., 4:15–6:49. Rysavy Dec., 171–172.
Pet. 72.
The above assertions, even if assumed to be true, are insufficient to
support the position that Lansford discloses step (2) of the method of
claim 1, i.e., 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. The assertions make no representation about a
situation or circumstance in which Device C makes no request for access. It
is unknown, by Petitioner’s presentation, whether the contention-free period
will always exist or be provided regardless of whether Device C has made a
request for access. Petitioner’s presentation is overly broad and is consistent
with a circumstance in which contention-free periods always are reserved or
provided, even if no Device C has requested access. Also, Petitioner has
identified no disclosure in Lansford to the effect that the more requests from
Device C, the longer are the contention-free periods, or the fewer the
requests from Device C, the shorter are the contention-free periods. Thus,
step (2) has not been adequately accounted for by Petitioner.
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. In the case of Lansford, because as presented by
IPR2019-01116
Patent 7,016,676 B2

50
Petitioner Lansford makes no reference to the circumstance in which there is
no request from Device C (a station operating in accordance with the first
radio interface standard), the condition is never 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 Lansford
discloses step (2) is inconsequential.
Patent Owner makes several arguments regarding our reliance on
Schulhauser. First, Patent Owner argues that because Petitioner did not
identify step (2) of claim 1 as a conditional step under Schulhauser, our
doing so would not be “pursuant to a petition” as is required by 35 U.S.C.
§ 314(b). PO Resp. 53. According to Patent Owner, the Petition “was silent
as to the ‘conditional step’ doctrine, and Ex parte Schulhauser.” Id. That is
incorrect. Petitioner was not silent as Patent Owner asserts. Instead,
Petitioner does, in the Petition, make an argument based on Schulhauser and
on the law regarding a conditional step in a method claim. Specifically, the
Petition states:
One difficulty in interpreting the scope of the claim as a
whole resulting from the improper system/method claim is the
interpretation of the conditional limitation “if stations . . . do not
request access . . .”. For a claimed method to be performed, a
contingent step need not be performed if the condition for
performing the contingent step is not performed. See
Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 F.App’x
603, 607 (Fed. Cir. 2007). On the other hand, in a claimed
system, it may be necessary to have structure for performing the
recited function, whether or not the function is actually
performed. See Ex Parte Randal C. Schulhauser, Appeal No.
2013-007847, 2016 WL 6277792, at *7 (P.T.A.B. Apr. 28,
2016).
IPR2019-01116
Patent 7,016,676 B2

51
In an abundance of caution, for purposes of this IPR,
Petitioner is treating the “if” limitation as if it must be performed
by the cited prior art, but it should be understood that if the claims
are interpreted as strictly method claims, performance of this step
may not be required if the condition precedent does not exist,
namely “render[ing] the frequency band available for access by
the stations working in accordance with the second radio
interface standard” need not occur “if stations working in
accordance with the first radio interface standard do not request
access to the frequency band.”
Pet. 22–23 (emphasis in original). Further, 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. We have not changed the alleged ground of
unpatentability, which is obviousness over Lansford, and we have not
applied any disclosure of Lansford that was not relied on by Petitioner.
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. 54.
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 while Schulhauser involves two
conditions that are mutually exclusive to each other, that is not so in the
context of claim 1. Id. at 54–55. We do not see significance in that
distinction. The conditions are conditions whether or not they are mutually
IPR2019-01116
Patent 7,016,676 B2

52
exclusive to each other. It is the conditional nature of “if” discussed in
Schulhauser that matters, not the presence of two mutually exclusive
conditions.
Fourth, Patent Owner argues “it is clear that claim 1 requires
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 55. 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.,
465 F.3d at 1359; K-2 Corp., 191 F.3d at 1364.
Fifth, Patent Owner argues that “[t]he prosecution history is clear that
this recitation, formerly in dependent claim 2, was added to claim 1 in order
to secure allowance of claim 1.” PO Resp. 55 (citing Ex. 1002, 14).
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 circumstance in prosecution simply is that the Examiner allowed
application claim 2 (Ex. 1002, 28) which includes the limitation at issue and
depends from claim 1, and the Applicant rewrote application claim 2 in
independent form as claim 1. That does not show disavowal of anything by
the Applicant, much less conversion of a conditional step to a non-
IPR2019-01116
Patent 7,016,676 B2

53
conditional step or effective deletion of the word “if.” Further, as noted
above, we are powerless to rewrite the claim to eliminate “if.”
Petitioner notes that application claim 1 did not include either of the
two steps present in application claim 2. Petitioner is correct that “it cannot
be said that only the second, conditional step, as opposed to the first step,
was added to secure allowance.” Reply 27.
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 14, 9. 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. Also in its Sur-Reply, Patent Owner identifies a district court
decision which did not apply Schulhauser’s treatment of a conditional step
limitation in a method claim. Id. at 8. That does not help the Patent Owner
here, because we are not bound by the district court decision.
Also in its Sur-Reply, citing Koninklijke Philips N.V. v. Google LLC,
948 F.3d 1330, 1333 (Fed, Cir. 2020), Patent Owner asserts: “[T]he Federal
Circuit recently affirmed a finding of obviousness where the Board
interpreted a conditional ‘if’ statement recited in a method claim to be
limiting.” Paper 14, 8. The reliance on Koninklijke Philips is inapposite
because, as framed by Patent Owner, an obviousness conclusion was
affirmed even when taking a conditional “if” statement to be limiting. That
does not shed light on the issue we have here, i.e., whether the action in a
conditional step needs to be met by the prior art in the absence of the
condition precedent.
Finally, in its Sur-Reply and also during oral hearing, Patent Owner
makes a new argument not presented in its Patent Owner Response, which
IPR2019-01116
Patent 7,016,676 B2

54
ignores Schulhauser as it applies to a conditional step and, instead,
characterizes the action performed by the step as the capability of a
structural component, the control station. Id. at 7–8; Tr. 44:20–45:7.
According to Patent Owner, the conditional step is a structural limitation
because it is performed by a structural component. Tr. 47:15–20. This is a
new argument only vaguely suggested in the Sur-Reply (Paper 18, 7–8) and
then clearly articulated for the first time at oral hearing. Petitioner has not
had a fair opportunity to respond. The new argument is not entitled to
consideration and we decline to consider it.
“Sur-replies should only respond to arguments made in reply briefs,
comment on reply declaration testimony, or point to cross-examination
testimony.” Consolidated Trial Practice Guide at 73–74. Manifestly, this
argument extends beyond merely responding to Petitioner’s arguments in the
Reply and sets out in a new direction toward where no argument of
Petitioner in the Reply had gone before. Patent Owner should have
presented it in its Patent Owner Response, but did not. Also, parties are not
permitted to raise new arguments at oral hearing. Consolidated Trial
Practice Guide at 85–86; see Dell Inc. v. Acceleron, LLC, 884 F.3d at 1369.
Alternatively, even if we were to consider the new argument, it would
be unpersuasive. All physical steps necessarily are performed by one or
more structural elements. They do not exist only in one’s imagination.
Patent Owner’s assertion, in effect, transforms all steps into a structural
limitation, resulting in a lack of distinction therebetween and confusion of
claim scope.
For the foregoing reasons, Petitioner has proved by a preponderance
of the evidence that claim 1 would have been obvious over Lansford.

IPR2019-01116
Patent 7,016,676 B2

55
3. Dependent Claim 2
Claim 2 recites: “The method as claimed in claim 1, [w]herein the
control station determines the respective duration in which the stations
working in accordance with the second radio interface standard are allowed
to utilize the frequency band.” Ex. 1001, 6:37–40. As discussed above in
Section II.F.2, the limitations of claim 1 incorporated into claim 2 by reason
of claim 2’s dependence from claim 1 have been adequately accounted for
by Petitioner based on the teachings of Lansford.
With respect to the limitation added by claim 2, Petitioner explains as
follows:
The controller controls the common frequency band, as
described in section VII.D.2, above. Additionally, Lansford
states that the controller sends a “beacon” setting forth a
contention-free period, setting forth a time period during which
HomeRF Sta[t]ion B, or as set forth above, other devices in the
same “class” cannot communicate, while also establishing
contention periods during which these devices can communicate
(i.e., a respective duration in which these stations are allowed to
use the common frequency band). Lansford, 4:40–56. Given
this restriction on the duration, or time period, during which the
HomeRF device, or other devices in the same “class” can
communicate, and the fact that the controller controls this access
through, e.g., use of the HomeRF beacon, it would have been
obvious to a POSITA that such control would include the control
unit determining the respective duration (or time period) in
which the stations working in accordance with the second radio
interface standard are allowed to utilize the frequency band.
Rysavy Dec., ¶¶ 173–175.
Pet. 72–73. The above-quoted reasoning is cogent, supported by the cited
disclosure of Lansford and the cited testimony of Mr. Rysavy, and
unrebutted by Patent Owner. Patent Owner has not advanced any argument
IPR2019-01116
Patent 7,016,676 B2

56
apart from those it has asserted in the context of claim 1 and already
addressed above.
For the foregoing reasons, Petitioner has proved by a preponderance
of the evidence that claim 2 would have been obvious over Lansford.
III. CONSTITUTIONAL ARGUMENT
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. 56. 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).
Patent Owner argues that the remedy devised by Federal Circuit
“impermissibly rewrites the statutes governing APJs.” Id. 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.”).

IPR2019-01116
Patent 7,016,676 B2

57
IV. CONCLUSION12
Petitioner has proved by a preponderance of the evidence that
claims 1 and 2 of the ’676 patent are unpatentable on at least one asserted
ground of unpatentability, as summarized in the following table:

Claim 35 U.S.C. § References
Claim Shown
Unpatentable
Claim Not
Shown
Unpatentable
1, 2 103(a) HomeRF

1, 2
1, 2 103(a)
HomeRF,
HomeRF
Tutorial

1, 2
1, 2 103(a)
HomeRF,
HomeRF
Liaison Report

1,2
1, 2 103(a) Lansford 1, 2

Overall
Outcome
1, 2

12 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
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).
IPR2019-01116
Patent 7,016,676 B2

58
VI. ORDER
Accordingly, it is:
ORDERED that claims 1 and 2 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.

IPR2019-01116
Patent 7,016,676 B2

59
For PETITIONER:

Derrick W. Toddy
Andrew M. Mason
Todd M. Siegel
KLARQUIST SPARKMAN, LLP
derrick.toddy@klarquist.com
andrew.mason@klarquist.com
todd.siegel@klarquist.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