Qualcomm Inc v. Bandspeed Inc

1. Case Identification

• Case #: IPR2016-00623
• Patent #: 8,873,500
• Filed: February 12, 2016
• Petitioner(s): Qualcomm Inc
• Patent Owner(s): Bandspeed, Inc.
• Challenged Claims: 1-31

2. Patent Overview

• Title: Approach for Managing the Use of Communications Channels Based on Performance
• Brief Description: The ’500 patent describes systems and methods for managing frequency hopping in wireless communication networks, such as Bluetooth. The technology involves testing communication channels, creating an adapted hopping sequence using only "good" channels, and subsequently reverting to a "default" hopping sequence based on criteria like elapsed time or changes in channel performance.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gerten - Claims 1-7, 10-11, 13-22, 25-26, and 28 are obvious over Gerten.

• Prior Art Relied Upon: Gerten (Patent 6,760,319)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gerten teaches all core elements of the challenged claims. Gerten discloses a master-slave frequency hopping system that tests channels for interference (e.g., using signal strength measurements), determines a set of "bad" channels to avoid, and communicates over a modified hopping sequence using the remaining "good" channels. Petitioner asserted that Gerten's "normal mode" of operation, which uses all channels, is equivalent to the ’500 patent's "default hopping sequence," and its "interference avoidance mode" corresponds to the "adapted hopping sequence." Gerten also discloses periodically monitoring and updating the list of bad channels.
  • Key Aspects: Petitioner contended that Gerten's teaching of sending an interference avoidance packet with "zero channels" to avoid is a direct disclosure of reverting to the default sequence. A person of ordinary skill in the art (POSITA) would understand that a clear reason to do so is when monitoring reveals no significant interference, rendering the reversion obvious.

Ground 2: Obviousness over Gerten and Kockmann - Claims 1-11, 13-26, and 28-31 are obvious over Gerten in view of Kockmann.

• Prior Art Relied Upon: Gerten (Patent 6,760,319) and Kockmann (Patent 6,909,737).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground relied on Gerten for the baseline adaptive frequency hopping system, as in Ground 1. To the extent Gerten's disclosure of reverting to a default sequence was deemed insufficient, Petitioner argued Kockmann explicitly teaches this limitation. Kockmann describes monitoring previously disturbed frequencies and, once a frequency is no longer disturbed, canceling its "inhibit" status and re-introducing it into the hopping sequence. This re-introduction of a previously excluded channel effectively reverts the system toward its original, default state based on monitoring results. Kockmann also explicitly discloses reverting to the default sequence after a predetermined time duration has expired.
  • Motivation to Combine: A POSITA would combine Gerten and Kockmann to improve the system's immunity to disturbances. Gerten provides the basic framework for adaptive hopping, and Kockmann provides a more robust method for dynamically managing the channel list by reintroducing cleared channels. This combination increases the number of available frequencies, enhancing performance, which was a known goal in the art.
  • Expectation of Success: Both Gerten and Kockmann are directed to improving performance in frequency hopping systems by avoiding interference. Combining their similar concepts for a common purpose would be a simple substitution of known methods that would yield predictable results.

Ground 3: Obviousness over Gerten and Haartsen - Claims 12 and 27 are obvious over Gerten in view of Haartsen.

• Prior Art Relied Upon: Gerten (Patent 6,760,319) and Haartsen (Patent 7,280,580).
• Core Argument for this Ground:
  • Prior Art Mapping: Claims 12 and 27 add the limitation that at least one channel is repeated in the adapted hopping sequence. Petitioner relied on Gerten for the foundational adaptive hopping system. Haartsen was introduced to teach the specific feature of repeating a channel. Haartsen discloses modifying a hopping sequence by replacing a "forbidden" (high-interference) channel with a substitute "allowable" (good) channel. In Haartsen's illustrated embodiment, this substitution results in an allowable channel (e.g., channel 6) being used in consecutive time slots, thus being "repeated" in the adapted sequence.
  • Motivation to Combine: A POSITA seeking to improve Bluetooth communication quality, as addressed by both Gerten and Haartsen, would have looked to both references. Both solve the same interference avoidance problem. A POSITA would have found it obvious to incorporate Haartsen's beneficial method of substituting good channels for bad ones—which can result in repetition—into Gerten's adaptive hopping framework to enhance performance.
• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 12 and 27 based on the combination of Gerten, Kockmann, and Haartsen.

4. Key Claim Construction Positions

• "hopping sequence": Petitioner proposed adopting the PTAB's prior construction from a related case: "the order in which the communications network hops among the set of frequencies."
• "clear" and "occupied" channel: As the ’500 patent uses the terms "good" and "bad" channels, Petitioner argued a POSITA would equate "clear" with a "good" channel (low interference) and "occupied" with a "bad" channel (high interference).
• "default hopping sequence": Petitioner argued this term refers to an original hopping sequence that does not change based on channel performance, as distinguished from an "adapted" sequence where bad channels are avoided or replaced.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-31 of Patent 8,873,500 as unpatentable.