Qualcomm Incorporated v. BANDSPEED, INC.

1. Case Identification

• Patent #: 8,873,500
• Filed: February 12, 2016
• Petitioner(s): QUALCOMM INCORPORATED
• 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 methods and systems for managing channel use in frequency hopping (FH) wireless communication systems, such as Bluetooth. The technology involves testing communication channels, classifying them (e.g., as "good" or "bad"), creating a modified or adapted hopping sequence to avoid bad channels, and subsequently reverting to a default hopping sequence based on certain criteria.

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, which is directed to removing channels with strong interference in an FH system, discloses or renders obvious all limitations of the challenged claims. Gerten allegedly teaches a master device communicating with a slave device, using a "normal mode" that corresponds to the claimed "default hopping sequence." Gerten further describes scanning channels for interference ("testing"), determining channels to avoid, and modifying the hopping sequence to use only the good channels ("selecting a subset" and communicating via an "adapted hopping sequence"). Critically, Petitioner contended Gerten teaches the step of reverting back to the default sequence, as Gerten explains that a return to the normal hop sequence may be desired "for some reason" and can be achieved by sending a message indicating zero channels are to be avoided.
  • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground. Petitioner asserted that all claimed features are either expressly taught or would have been obvious modifications of the Gerten system.
  • Expectation of Success (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSA) would understand that the most apparent "reason" to revert to the normal mode in Gerten is when monitoring reveals that interference has subsided, making all channels available and improving system performance. A POSA would have expected this to work predictably.

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 built upon the teachings of Gerten. To the extent Gerten's disclosure of "reverting back" was considered insufficient, Petitioner argued Kockmann explicitly supplied this teaching. Kockmann describes a system that monitors channels and reintroduces a previously disturbed (bad) frequency back into the hopping sequence once it is no longer disturbed. Kockmann also explicitly discloses reverting to the original sequence after a "predetermined time duration has expired." This combination allegedly provides explicit teachings for reverting based on either monitoring results or a specified time period (a "clear channel usage timeout"), as recited in various dependent claims.
  • Motivation to Combine (for §103 grounds): A POSA would combine Gerten and Kockmann, both of which address performance improvement in FH systems, to create a more robust system. The motivation would be to improve immunity to disturbances by using Kockmann's explicit teaching of re-introducing cleared channels to Gerten's adaptive system, thereby maximizing the number of available frequencies and yielding a predictable improvement in performance.
  • Expectation of Success (for §103 grounds): Both references operate in the same technical field (FH communications) to solve the same problem (interference avoidance). A POSA would have a high expectation of success in combining their complementary techniques—Gerten's framework for adaptive hopping and Kockmann's specific triggers for reverting to a default state—as it involved a simple substitution of known methods to yield predictable results.

Ground 3 & 4: Obviousness over Gerten, Haartsen, and Kockmann - Claims 12 and 27 are obvious over Gerten in view of Haartsen, and alternatively, over Gerten and Kockmann in further view of Haartsen.

• Prior Art Relied Upon: Gerten (Patent 6,760,319), Haartsen (Patent 7,280,580), and Kockmann (Patent 6,909,737).
• Core Argument for this Ground:
  • Prior Art Mapping: These grounds specifically addressed claims 12 and 27, which require that at least one channel is repeated in the adapted hopping sequence. Petitioner asserted that while Gerten and Kockmann establish the foundation, Haartsen provides the explicit teaching of channel repetition. Haartsen discloses a system where a "forbidden" (bad) channel in a sequence is replaced by substituting an "allowable" (good) channel in its place. As illustrated in Haartsen's Figure 15, this substitution can result in an allowable channel being used twice in a row or multiple times within the revised sequence.
  • Motivation to Combine (for §103 grounds): A POSA seeking to improve the performance of the Gerten/Kockmann system would look to other known techniques like that in Haartsen. The motivation would be to further enhance performance by not just avoiding bad channels, but by actively substituting them with known good channels. This method, taught by Haartsen, is a logical and well-known approach to maintaining communication continuity and would be an obvious design choice to implement.
  • Expectation of Success (for §103 grounds): All three references are in the field of Bluetooth and FH communications and aim to solve interference problems. Combining Haartsen's channel substitution-and-repetition technique with the adaptive systems of Gerten and Kockmann would be a straightforward integration of known elements, with a high expectation of achieving the predictable result of improved performance.

4. Key Claim Construction Positions

• "hopping sequence": Petitioner argued for the construction previously adopted by the PTAB in a related case: "the order in which the communications network hops among the set of frequencies." This construction was based on expert testimony and was described as a well-understood term of art.
• "clear" and "occupied" channel: The patent uses "good" and "bad" channels. Petitioner proposed that a POSA would equate "clear" with the patent's "good" channel (low interference) and "occupied" with the "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. This was supported by the patent's specification equating "default" with "original" and by constructions in related district court litigation.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-31 of Patent 8,873,500 as unpatentable under 35 U.S.C. §103.