Qualcomm Inc v. Bandspeed Inc

1. Case Identification

• Case #: IPR2015-01581
• Patent #: 7,477,624
• Filed: July 13, 2015
• Petitioner(s): Qualcomm Incorporated
• Challenged Claims: 9-12 and 21-24

2. Patent Overview

• Title: Approach for Managing the Use of Communications Channels Based on Performance
• Brief Description: The ’624 patent relates to a system for managing communications channels in a frequency hopping (FH) network. The system selects and periodically updates sets of channels for communication between devices based on measured channel performance.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 9, 12, 21, and 24 over Gerten

• Prior Art Relied Upon: Gerten (Patent 6,760,319).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gerten, which is directed to removing channels with strong interference in a wireless FH system, anticipates all limitations of independent claims 9 and 21. Gerten’s master device was said to perform a channel scan to determine which channels have the strongest interference (“selecting, based upon performance… at a first time”), modify its hopping sequence to use the remaining good channels (“first set of two or more communications channels to be used”), and periodically update the list of channels to be avoided (“selecting… at a second time”). For dependent claim 12, Petitioner contended that Gerten’s disclosure of loading synthesizer codes for the good channels into an “alternate register bank” met the limitation of loading the selected channels into a register of each participant.
  • Key Aspects: Petitioner highlighted that in a related inter partes reexamination of the parent ’418 patent, the Patent Owner cancelled a claim with substantially identical limitations after it was rejected as anticipated by Gerten, which Petitioner characterized as an acknowledgment of Gerten’s teachings.

Ground 2: Obviousness of Claims 10, 11, 22, and 23 over Gerten in view of Cuffaro

• Prior Art Relied Upon: Gerten (Patent 6,760,319) and Cuffaro (Patent 6,418,317).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Gerten discloses nearly all elements of claims 10 and 22 but fails to explicitly teach that channel performance data is transmitted from a remote device to a master device. Cuffaro was argued to supply this limitation by disclosing a mobile station that measures channel quality and reports the performance data back to a base station. For claims 11 and 23, Petitioner argued Gerten teaches selecting channels based on performance but lacks the claimed “channel selection criteria” requiring a “specified number of votes.” Cuffaro allegedly supplied this by teaching a voting mechanism where a device casts votes for or against channels based on performance comparisons, with the channel receiving the maximum number of positive votes being selected.
  • Motivation to Combine: A POSITA would combine Gerten and Cuffaro as both solve the problem of interference-driven channel selection. Incorporating Cuffaro’s teaching of having the slave device report performance data would be an obvious way to improve the accuracy of Gerten’s master-centric measurements. Likewise, adding Cuffaro's voting feature to Gerten's system would have been a known technique to improve the robustness of the channel selection decision process.
  • Expectation of Success: Petitioner argued the combination was a predictable substitution of known elements to improve Gerten’s system, yielding the expected result of more accurate channel selection based on receiver-side conditions.

Ground 3: Obviousness of Claims 9, 11, 12, 21, 23, and 24 over Gendel in view of Haartsen

• Prior Art Relied Upon: Gendel (Patent 6,115,407) and Haartsen (Patent 7,280,580).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gendel discloses a frequency hopping system that replaces poorly performing frequency "segments" (channels) based on detected reception errors, thus teaching the core "selecting based on performance" limitations of the independent claims. Gendel’s system performs this replacement when an error threshold is met and communicates the change to a secondary device. Petitioner contended that while Gendel teaches the channel management functionality, Haartsen explicitly discloses implementing such functions using a "processor executing a suitable set of program instructions stored on a computer readable storage medium," thereby supplying the preamble limitations of the claims. Haartsen was also cited for teaching the use of a register to store a channel table.
  • Motivation to Combine: A POSITA would combine the references as both are directed to FH communications. Petitioner argued it would have been an obvious design choice to implement the channel selection method of Gendel using the well-known processor-and-memory architecture taught by Haartsen to execute the required functions.
  • Expectation of Success: The combination was presented as a predictable implementation of Gendel's method using the standard, well-understood hardware components described in Haartsen, which would have yielded a working system with no unexpected results.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 10 and 22 based on the combination of Gendel, Haartsen, and Sage. This ground relied on Sage to supply the teaching of transmitting channel performance data (error-rate statistics) from a remote mobile device back to a master device.

4. Key Claim Construction Positions

• Hopping Sequence (claims 9, 10, 22, 24): Petitioner proposed this term be construed as "the order in which the network hops among a set of frequencies." This construction was based on the term's well-understood meaning in the art and its consistency with the ’624 patent’s disclosure.
• Vote (claims 11, 23): Petitioner proposed this term be construed as "at least an indication whether to use (or not to use) the communications channel or an indication whether the communication channel is good or bad." As the patent did not explicitly define the term, Petitioner argued for this construction based on its plain and ordinary meaning. This interpretation was critical to mapping Cuffaro's system, which compares quality metrics to decide on channel swaps, to the "voting" limitations of the claims.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 9-12 and 21-24 of Patent 7,477,624 as unpatentable.