Marvell Semiconductor, Inc.v.Intellectual Ventures I LLC

Patent Trial and Appeal Board

Dec 3, 2014

10295596 (P.T.A.B. Dec. 3, 2014)

Trials@uspto.gov Paper 17
571-272-7822 Entered: December 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MARVELL SEMICONDUCTOR, INC.,
Petitioner,

v.

INTELLECTUAL VENTURES I LLC,
Patent Owner.
____________

Case IPR2014-00547
Patent 6,977,944 B2
____________

Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
PATRICK M. BOUCHER, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

Marvell Semiconductor, Inc. (“Petitioner”) filed a Petition pursuant to
35 U.S.C. §§ 311–319 to institute an inter partes review of claims 7–12 and
19–24 of U.S. Patent No. 6,977,944 B2 (“the ’944 patent”). Paper 13
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(“Pet.”).
1
Intellectual Ventures I LLC (“Patent Owner”) filed a Preliminary
Response. Paper 15 (“Prelim. Resp.”). Applying the standard set forth in
35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood
that Petitioner would prevail with respect to at least one challenged claim,
we deny the Petition and decline to institute an inter partes review of claims
7–12 and 19–24.
I. BACKGROUND
A. The ʼ944 patent (Ex. 1001)
The ʼ944 patent is directed to systems and methods for reducing the
likelihood of collisions between data packets in wireless communications
channels. Ex. 1001, col. 1, ll. 17–20.
According to Patent Owner, one problem in the state-of-the-art at the
time of the claimed invention was that a wireless device compliant with the
IEEE 802.11(b) standard could not determine when a wireless device
compliant with the IEEE 802.11(g) standard is transmitting over a wireless
communication channel. Prelim. Resp. 9; Ex. 1001, col. 1, ll. 45–53. This
problem was caused by the two types of wireless devices operating in the
same frequency spread spectrum (e.g., the 2.4 GHz frequency spectrum), but
employing incompatible modulation schemes. Id. The modulation standard
for IEEE 802.11(b) is Complementary Code Keying (“CCK”) while IEEE
802.11(g) uses Orthogonal Frequency Division Multiplexing (“OFDM”).
Ex. 1001, col. 1, ll. 30–31, 50. The latter scheme provides higher bit rates.
Id. at col. 1, ll. 43–45. The IEEE 802.11(g) OFDM transmissions, however,

1
References are to the Corrected Petition (Paper 13) filed on June 2, 2014.
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are “hidden” from legacy 802.11(b) nodes, which cannot detect the OFDM
carrier. Id. at col. 1, ll. 50–53.
The ʼ944 patent overcomes this problem by transmitting a first signal
in accordance with a first modulation scheme (e.g., OFDM) and a second
signal in accordance with a second modulation scheme (e.g., CCK). The
second signal is detected and processed by both types of wireless devices.
The second signal indicates clear to send (“CTS”) and includes a duration
field having a value based upon the expected length of time required to
transmit at least one data frame. The first signal is then transmitted using the
first modulation scheme. Prelim. Resp. 10.
In one embodiment the first signal is detected and processed by one of
the types of wireless devices, but not the other. But because the second
signal is detected and processed by both types of wireless devices, the
wireless devices refrain from using the communications channel until after
the length of time indicated by the second frame. During that time, the first
signal is transmitted without colliding with another signal. Prelim. Resp. 10;
Ex. 1001, col. 3, ll. 22–37.
The ʼ944 patent also describes a second signal indicating CTS that is
self-addressed to the sender of the second signal. Prelim. Resp. 10. In the
prior art, a request to send/clear to send (“RTS/CTS”) sequence requiring
two CCK data frames was employed. Prelim. Resp. 10; Ex. 1001, col. 2, ll.
45–47. The technique of addressing the CTS signal to the sender is said to
overcome deficiencies of signaling overhead in the prior art and has other
advantages. Id., at col. 6, ll. 49–54.

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B. Illustrative Claim
Claim 7 is illustrative of the ʼ944 patent claims at issue:
7. A station comprising:
(a) a receiver for monitoring a shared-communications
medium for an opportunity to transmit a first signal and a
second signal; and
(b) a transmitter for:
(1) transmitting said second signal in accordance with a
second modulation scheme on said shared-communications
medium, wherein:
(i) said second signal conveys a frame indicating
clear to send that is addressed to the sender of said frame
indicating clear to send; and
(ii) said frame indicating clear to send comprises a
duration field that has a value based on the expected length of
time required to transmit at least one data frame; and
(2) transmitting said first signal in accordance with a first
modulation scheme on said shared-communications medium
after said second signal, wherein said first signal conveys said
at least one data frame;
wherein said frame indicating clear to send and said at
least one data frame are addressed to different stations.

C. Related Proceedings
Petitioner states that the ’944 patent is the subject of the following
civil actions: Intellectual Ventures I LLC v. Canon Inc., 1:13-cv-473 (D.
Del.); Intellectual Ventures I LLC v. Ricoh Co. Ltd., 1:13-cv-474 (D. Del.);
and Intellectual Ventures I LLC v. AT&T Mobility LLC., 1:12-cv-00193 (D.
Del.). Pet. 1.

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D. Claim Construction
The Board interprets claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).

1. “a receiver for monitoring a shared-communications medium”
Petitioner proposes that this phrase should be construed to include
“any device that (1) monitors a shared-communications medium via a
physical carrier sense mechanism, or that (2) monitors the
shared-communication[s] medium via a virtual carrier sense mechanism.”
Pet. 4. In support of this construction, Petitioner relies on the Background of
the Invention in the ʼ944 patent. Id. at 4–5. Patent Owner criticizes
Petitioner’s construction for importing limitations from the Background into
the claims. Prelim. Resp. 20–21. And Patent Owner points to a description
of an embodiment in the Specification that is broader that Petitioner’s
proposed construction. Id. at 21. Patent Owner proposes, instead, that the
term should be given its plain and ordinary meaning. Id. We are persuaded
by Patent Owner’s argument and, based on Patent Owner’s reasoning,
conclude that Petitioner’s construction is not supported by the Specification.
Based on our review of the record and the disputes before us at this stage in
the proceeding, we determine that no express construction of this term is
necessary.

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2. “a frame indicating clear to send that is addressed to the sender of
said frame”

Petitioner construes this phrase as “broad enough to include and be
met by a CTS frame in which a destination address is the address of the
device transmitting the CTS frame.” Pet. 6. Patent Owner contends that
Petitioner’s construction “is merely a proposal of a future construction that
would ‘be broad enough’ to encompass some unarticulated criterion.”
Prelim. Resp. 22. According to Patent Owner, Petitioner is trying to add
additional examples to the one specific example (CTS) recited in the claim.
Id. We agree with Patent Owner’s argument and, therefore, based on Patent
Owner’s reasoning, we do not adopt Petitioner’s proposed construction.
Based on our review of the record and the disputes before us at this stage in
the proceeding, we determine that no express construction of this term is
necessary.

3. “the expected length of time required to transmit at least one data
frame”

Petitioner proposes that this phrase be construed as “any length of
time that is equal to or greater than the time needed to transmit one data
frame.” Pet. 7. Patent Owner responds that this construction is not the
broadest reasonable construction because it disregards the context of the
term (“based on the expected length of time required to transmit at least one
data frame”). Prelim. Resp. 24. Patent Owner proposes that this term be
given its plain and ordinary meaning. Id. We agree with Patent Owner’s
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contention and reasoning and conclude that no express construction of this
term is necessary.

4. “modulation scheme”
Petitioner proposes that we construe this term to mean “a protocol
used to communicate data, with different modulation schemes covering
different protocols used to communicate data.” Pet. 9. Patent Owner
responds by proposing as a construction “a scheme by which one or more
characteristics of a carrier are varied in accordance with a modulating
signal.” Prelim. Resp. 25. Patent Owner relies on an IEEE dictionary
definition. Id. at 25–26; Ex. 2003. Patent Owner asserts that Petitioner’s
proposed construction is contrary to the plain meaning of the term because it
appears to specify that different communication protocols necessarily have
different modulation schemes. Prelim. Resp. 26. Patent Owner points out
that IEEE 802.11(g) and 802.11(a) are different communication protocols
that can use the same modulation scheme (e.g., OFDM). Id. We are
persuaded by Patent Owner’s argument and agree that this term should be
given its plain and ordinary meaning. Id. We, therefore, determine that no
express construction of this term is necessary.

5. “the expected length of time required to transmit the
subsequent data frames conveyed by said first signal and
said third signal”

This term appears in claims 19–24. Petitioner proposes that we
construe it as “interpreted broadly enough to include and be met by a length
of time required to transmit two data frames.” Pet. 10. Patent Owner asserts
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that this is not a construction, but a proposal for a “future unspecified
construction.” Prelim. Resp. 27. Patent Owner proposes, instead, that this
term be given its plain and ordinary meaning. Id. We agree with Patent
Owner’s argument, and therefore, we do not adopt Petitioner’s proposed
construction. Based on our review of the current record and the disputes
before us, we are persuaded that no express construction is required at this
time.

E. References
Petitioner relies on the following references:
Sherman US 7,046,690 B2 Jan. 15, 2002 Ex. 1004
Chen US 7,177,294 B2 Oct. 25, 2001 Ex. 1005
Sugar US 7,050,452 B2 Oct. 5, 2001 Ex. 1006
Choi US 7,206,840 B2 Oct. 12, 2001 Ex. 1007

Petitioner also relies on Admitted Prior Art (“APA”) as discussed
below. Petitioner also relies on a Declaration from Professor Zhi Ding
(“Ding Decl.”). Ex. 1003.
F. Grounds Asserted
Petitioner challenges claims 7–12 and 19–24 of the ’944 patent on the
following grounds.
References Basis Claims Challenged
Sherman § 102(e) 7, 8, 10, 19, 22, and
23
Sherman and APA § 103(a) 9, 11, 12, 20, 21, and
24
Chen and Choi § 103(a) 7, 8, 10–12, 19, 20,
and 22–24
Chen, Choi, and APA § 103(a) 9 and 21
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Sugar and Choi § 103(a) 7, 8, 10–12, 19, 20,
and 22–24
Sugar, Choi, and APA § 103(a) 9 and 21

II. ANALYSIS
1. Asserted Grounds Based on Sherman
Sherman is relied upon alone and in combination with APA as prior
art against all challenged claims. Pet. 3. Sherman’s filing date of January
15, 2002, is earlier than the November 15, 2002, filing date of the ʼ944
patent. Petitioner contends that Sherman qualifies as prior art to the ʼ944
patent under 35 U.S.C. § 102(e). Id.
However, as Petitioner recognizes, the ʼ944 patent issued from a
provisional application dating back to January 12, 2002, and claims the
benefit of that earlier filing date. Pet. 3, 14; Ex. 1001, col. 1, ll. 9–13. As
Petitioner acknowledges, “[a]s a consequence, the effective filing date for
claims 7–12 and 19–24 of the ʼ944 patent is no earlier than January 12,
2002.” Pet. 3.
In support of that earlier effective filing date, Patent Owner provides
an analysis of the ʼ944 patent in relation to the provisional application.
Prelim. Resp. 14–19. We have reviewed that analysis and determined that
Patent Owner has demonstrated adequately the entitlement of the ʼ944 patent
to the benefit of the January 12, 2002, filing date of the provisional
application.
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Patent Owner further contends that Sherman does not qualify as prior
art to the ʼ944 patent because Sherman was filed after the ʼ944 patent’s
effective filing date of January 12, 2002. Prelim. Resp. 4, 28–29. Patent
Owner contends that Petitioner has not shown that Sherman is entitled to an
effective date as prior art that is earlier than the effective filing date of the
ʼ944 patent. Id. In that regard, Sherman claims the benefit of the filing date
of several provisional applications, the earliest of which was filed on
January 16, 2001. Ex. 1004, col. 1, ll. 4–12. However, Petitioner has not
provided the necessary proof that Sherman is entitled to that earlier filing
date. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010); Ex parte
Yamaguchi, 88 USPQ2d 1606 (BPAI 2008)(precedential). In fact, Petitioner
has not even provided copies of the provisional applications for the record.
Prelim. Resp. 28–29.
We agree with Patent Owner that Petitioner has failed to demonstrate
adequately that Sherman qualifies as prior art. Petitioner was aware that the
ʼ944 patent claimed the benefit of the January 12, 2002 provisional filing
date, but did not provide the Board with any evidence that Sherman’s
effective filing date was earlier.
Patent Owner asserts that even if Sherman were prior art to the ʼ944
patent, Sherman does not disclose certain elements of the challenged claims.
Prelim. Resp. 5, 29–31. Patent Owner also asserts that the combination of
Sherman and APA does not render obvious any of the challenged claims. Id.
at 31–32. Because we have determined that Petitioner has not established
that Sherman qualifies as prior art, we do not reach those contentions.

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2. Asserted Grounds Based on Chen
As described by Petitioner, Chen describes a control point that
reduces collisions in a shared wireless network in which signals are
exchanged in the wireless local area network (“WLAN”) and Bluetooth
(“BT”) protocols. See Ex. 1005, Fig. 1B. To avoid collisions, the control
point in Chen monitors the shared wireless network for potential collisions
between WLAN traffic and BT traffic. When a potential collision is
detected, the control transmits a WLAN jamming signal that temporarily
stops transmission of a WLAN data signal, transmits a BT signal without
interference, and then transmits the WLAN data signal after the BT signal
has had sufficient time to transmit without interference. See Pet. 28.
As described by Petitioner, Choi describes a device that temporarily
stops WLAN traffic for a specified time by sending a CTS frame addressed
to itself. Pet. 29. Petitioner recognizes that the purpose of pausing WLAN
traffic in Choi (to assess signal strength) is different than the purpose of
pausing WLAN traffic in Chen (reducing collisions). Id. Nevertheless,
Petitioner contends that a person of ordinary skill would have recognized
that using the address of the sender in Chen’s CTS frame “is a suitable
option for the needed address and involved a simple application of a known
technique that would yield a predictable result.” Id.
Patent Owner contends that it would not have been obvious to
combine Chen and Choi in the manner proposed by Petitioner. Prelim.
Resp. 32. Patent Owner contends that those references teach away from one
another. Id. Patent Owner recognizes that Petitioner relies on Choi only for
its teaching of a CTS frame addressed to its sender. Id. at 33. However,
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Patent Owner contends that Choi teaches sending a CTS frame from a
control point to keep all of the Bluetooth and WLAN devices silent for a
period of time so that channel can be measured when the network is silent.
Id. This, according to Patent Owner, is contrary to the purpose of Chen,
which is to defer transmission of WLAN devices so that the BT service can
transmit higher priority data packets. Id.
We are persuaded by Patent Owner’s argument that Petitioner has not
provided a sufficient rationale for combining Chen and Choi. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007)(“‘[T]here must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.’”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)). In that regard, we find instructive the testimony provided by
Petitioner’s declarant Professor Ding, on which Petitioner relies in support
of its obviousness argument. Professor Ding testifies as follows:
I find Choi’s technique for temporarily pausing WLAN traffic
perfectly applicable and relevant to Chen’s need to temporarily
pause WLAN traffic. Upon reading Choi’s disclosure of a self-
addressed CTS frame to pause WLAN traffic . . . , it is clear to
me that the technique can be readily extended to Chen’s system
to use the address of the sender in Chen’s CTS frame.

Ex. 1003 ¶ 41 (emphasis added.) Professor Ding does not explain
adequately why a person of ordinary skill would have applied Choi’s self-
addressed CTS frame in Chen’s system when the purpose of the systems is
so different. Instead he provides conclusory testimony that “I find Choi’s
technique for temporarily pausing WLAN traffic perfectly applicable and
relevant to Chen’s need to temporarily pause WLAN traffic.” Id.
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We are persuaded after reviewing Professor Ding’s testimony that he
has not sufficiently taken into account what would have been obvious to a
person of ordinary skill in the time the invention of the ʼ944 patent was
made and instead, has used his own present skill and knowledge as a
reference point. This is not the proper test for obviousness. See Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966); Ruiz v. A.B. Chance Co., 234
F.3d 654, 666–67 (Fed. Cir. 2000). Accordingly, we give Professor Ding’s
testimony little weight.
Nor are we persuaded by Petitioner’s argument that a person of
ordinary skill would have recognized, from reviewing Choi that self-
addressing the CTS frame “is a suitable option for the needed address and
involved a simple application of a known technique that would yield a
predictable result.” Pet. 29. In support of this assertion, Petitioner cites the
testimony of Professor Ding discussed above, to which we give minimal
weight. We are, instead, persuaded by Patent Owner’s argument that
because Choi is directed to a solving a different problem (channel
measurement), combining its teachings with Chen would not have been
obvious. Prelim. Resp. 32–34.
We are not persuaded that Petitioner has demonstrated a reasonable
likelihood that it would prevail on its argument that person of ordinary skill
would have modified Chen in accordance with Choi’s disclosure of self-
addressing a CTS frame. We agree with Patent Owner that this would be
contrary to the teachings of Chen, and we, therefore, are not persuaded that
Petitioner has provided sufficient record support for why person of ordinary
skill would have made such a combination.
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Patent Owner also asserts that even if combined, the combination of
Chen and Choi does not render obvious any of the challenged claims.
Prelim. Resp. 34–38. Because we have determined that Petitioner has not
provided an adequate record for making that combination, we do not reach
those contentions.
3. Asserted Grounds Based on Sugar
As described by Petitioner, Sugar describes interference mitigation for
a multiprotocol device (“MPD”). The MPD acts as both an access point for
an 802.11 network, as well as a node for a BT network. “To guarantee
reliable delivery of a BT packet, the MPD transmits a guard packet using an
802.11 protocol to alert other 802.11 stations to refrain from transmitting for
a duration long enough to transmit the BT packet.” Pet. 41. Information
concerning the duration can be included in a CTS packet within the header
of the guard packet. Id.
In Sugar, any given 802.11 station in the network can transmit
continuously for a maximum time duration denoted as F. Therefore, to
ensure each 802.11 station in the network receives at least one CTS packet,
“Sugar describes transmitting N consecutive CTS packets such that they
outlast the duration F.” Pet. 41.
Petitioner again relies on Choi for its teaching of stopping WLAN
traffic for a specified period of time by sending a CTS frame addressed to
itself. Pet. 42. And Petitioner again recognizes that the purpose of stopping
WLAN traffic in Choi (i.e., to assess the signal strength) is different than the
purpose of stopping 802.11 traffic in Sugar (i.e., to mitigate interference
with the BT packets). However, Petitioner describes that Choi has “an
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efficient way of addressing multiple stations to ask them to refrain from
transmitting for a predetermined time period.” Pet. 42. Thus, according to
Petitioner, a person of ordinary skill would have found Choi’s technique for
temporarily stopping WLAN traffic “perfectly applicable and relevant to
Sugar’s need to temporarily stop 802.11 traffic.” Pet. 42. According to
Petitioner, a person of ordinary skill would have recognized that using the
address of the sender and Sugar’s CTS frame is “a suitable option for the
needed address and involved a simple application of a known technique that
would yield a predictable results.” Id.
In support of this assertion, Petitioner again relies on Professor Ding’s
testimony, particularly where he testifies as follows:
Upon reading Choi’s disclosure of a self-addressed CTS
frame to pause WLAN traffic . . . it is clear to me that the
technique can be readily extended to Sugar’s system to use the
address of the sender in the CTS frames described by Sugar. I
find that to be a suitable option for the needed address, which
involves a simple application of a known technique and would
yield a predictable result. It is also clear to me that using
Choi’s address of the sender in Sugar’s CTS frames would offer
the same advantages noted above with respect to the
combination of Chen and Choi.

Ex. 1003 ¶47 (emphases added.)
Patent Owner responds that there is no factual basis for the asserted
combination of Sugar and Choi. Prelim. Resp. 38. Patent Owner further
contends that Choi and Sugar teach away from making this combination. Id.
Recognizing that Choi discloses sending a CTS frame self-addressed to the
receiver, Patent Owner contends that this teaches away from Sugar, which
discloses inserting a sequence of N CTS packets not addressed to the sender
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in the header portion of the guard packet. Id. Patent Owner asserts Sugar’s
teachings would have led one of ordinary skill in the art in a different
technical direction than Choi’s teachings. Id. at 39. Patent Owner asserts
there is no motivation to replace the N consecutive CTS packets in Sugar
with a single self-addressed CTS frame as described in Choi. Id. at 39–40.
Patent Owner points out that Sugar’s arrangement guarantees that at least
one CTS packet is received by all of the 802.11 stations. Id. at 40. This
would “thwart[]” the purpose of Choi, which is to silent all stations in the
network. Id.
For the same reasons expressed above with respect to the combination
of Chen and Choi, we agree with Patent Owner’s argument that Petitioner
has not established a sufficient rationale for combining Sugar and Choi. We
find Professor’s Ding’s testimony on this point unhelpful and give it
minimal weight. In that regard, we note once again that Professor Ding’s
frame of reference for obviousness is himself and not a person of ordinary
skill in the art at the time the invention was made. We also are persuaded by
Patent Owner’s argument that Choi and Sugar address different problems in
different ways. We, therefore, are not persuaded that Petitioner has provided
sufficient record support for why person of ordinary skill would have made
such a combination.
In view of this determination, we do not reach Patent Owner’s
contentions regarding the inadequacy of Sugar-Choi combination to meet the
elements of the claims.

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III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no inter partes review is
instituted.

PETITIONER
W. Karl Renner
axf@fr.com

Jeremy Monaldo
IPR27410-0022IP1@fr.com

PATENT OWNER
Herbert D. Hart III
hhart@mcandrews-ip.com

Jonathan R. Sick
jsick@mcandrews-ip.com