Petition for Inter Partes Review of U.S. Patent No. 5,371,734 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper No. 1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD BIOTRONIK, INC., Petitioner v. ATLAS IP, LLC, Patent Owner Patent No. 5,371,734 Issued: December 6, 1994 Filed: January 29, 1993 Inventor: Michael A. Fischer Title: MEDIUM ACCESS CONTROL PROTOCOL FOR WIRELESS NETWORK Inter Partes Review No. IPR

2 TABLE OF CONTENTS Page I. REQUEST FOR INTER PARTES REVIEW... 1 II. MANDATORY NOTICES... 1 A. Certification that the Patent May Be Contested via Inter Partes Review by the Petitioner B. Real parties-in-interest... 2 C. Related Matters D. Lead and Back-up Counsel and Service Information E. Payment of Fees... 3 F. Relief Requested G. Threshold for Instituting Inter Partes Review... 3 III. STATEMENT OF PRECISE RELIEF REQUESTED... 4 IV. TECHNICAL INTRODUCTION... 4 A. Overview of the 734 patent... 4 B. MAC Protocol of the 734 Patent... 5 C. Prior Art MAC Protocols D. Examination of the 734 patent V. CLAIM CONSTRUCTION A. Overview of the challenged claims B. Applicable legal standard for expired claims C. Claims 6, 11, 14, and 21 communication cycle D. Claims 6, 11, 14, and 21 interval i

3 E. Claims 6, 11, 14, and 21 frame F. Claims 6, 11, 14, and 21 hub G. Claims 6, 11, 14, and 21 designating one of the communicators of the Group as a hub H. Claims 6, 11, 14, and 21 the hub transmitting information to the remotes to establish the communication cycle and a plurality of predeterminable intervals during each communication cycle VI. DETAILED EXPLANATION OF REASONS FOR UNPATENTABILITY Ground 1. Claims 6, 14, and 21 are unpatentable under 35 U.S.C. 102(a) over Natarajan Ground 2. Claim 11 is unpatentable under 35 U.S.C. 103(a) over Natarajan 1992 as in Ground 1, in further view of Bella 37 Ground 3. Claims 6, 14 and 21 are unpatentable under 35 U.S.C. 103(a) over Natarajan 542 in view of Bantz Ground 4. Claim 11 is unpatentable under 35 U.S.C. 103(a) over Natarajan 542 and Bantz as in Ground 3, in view of Bella VII. CONCLUSION v.1 ii

4 I. REQUEST FOR INTER PARTES REVIEW Pursuant to 35 U.S.C and 37 C.F.R. 42, Petitioner, Biotronik, Inc. hereby respectfully request inter partes review of claims 6, 11, 14 and 21 of U.S. Patent No. 7,371,734 ( the 734 patent ) (Ex. 1001). The challenged claims are the subject of a prior petition: IPR Inter partes review of claims 6, 11, 14 and 21 was instituted by decision dated December 8, The present petition seeks review on precisely the same grounds on which review was instituted in IPR , and relies on the same evidence, arguments and expert declaration presented by the Petitioners in IPR A motion for joinder with IPR is submitted concurrently herewith. II. MANDATORY NOTICES A. Certification that the Patent May Be Contested via Inter Partes Review by the Petitioner. Pursuant to 37 CFR 104(a), Petitioner certifies that the patent sought for review is available for inter partes review and that the 1 The Petitioners in IPR also challenged claim 44, but the Board did not authorize review of claim 44, finding that a person of ordinary skill in the art would not understand the scope of claim 44. Petitioner Biotronik does not seek review of claim 44. 1

5 petitioner is not barred or estopped from requesting an inter partes review of the patent. B. Real parties-in-interest. Pursuant to 37 CFR 42.8(b)(1), Petitioner identifies the real party-in-interest as Biotronik, Inc. C. Related Matters. Pursuant to 37 CFR 42.8(b)(2), in addition to IPR mentioned above, Petitioner identifies the following civil actions as related matters: Atlas IP, LLC v. Medtronic Inc. et al., No (S.D. Fla.), now on appeal in No (CA FC); Atlas IP, LLC v. Biotronik, Inc., No (S.D. Fla.), dismissed on October 28, 2014; 2 Atlas IP, LLC v. St. Jude Medical, Inc. et al., No (S.D. Fla.), now on appeal in No (CA FC); Atlas IP, LLC v. Medtronic, Inc. et al, No (S.D. Fla.), stayed 2 The dismissal was without prejudice, except that if the summary judgment order disposing of Case No (S.D. Fla, dkt. 260) is neither vacated nor reversed, and there being no further right to appeal, the dismissal will then be with prejudice. See Case No (S.D. Fla.), dkts If the summary judgment order (dkt. 260) is vacated or reversed, Atlas is permitted to refile its amended complaint for patent infringement against Biotronik, solely as to those claims that were currently pending in this litigation at the time of dismissal, without the loss of any right to recover damages for those claims as if the case had never been dismissed. Id v.1 2

6 pending outcome in No ; Atlas IP, LLC v. Boston Scientific Corp. et al., No (D. Minn.). D. Lead and Back-up Counsel and Service Information. Pursuant to 37 CFR 42.8(b)(3)-(4) and 42.10(a), Petitioner identifies lead and back-up counsel as follows below, and can be served as follows below: Lead Counsel Jeffrey M. Olson Reg. No. 30,790 Sidley Austin LLP 555 W. Fifth St. Ste Los Angeles, CA (213) (tel) (213) (fax) Back-up Counsel Matthew S. Jorgenson Reg. No. 54,203 Sidley Austin LLP 555 W. Fifth St. Ste Los Angeles, CA (213) (tel) (213) (fax) E. Payment of Fees. The director is authorized to charge the fee specified by 37 CFR 42.15(a) to Deposit Account No F. Relief Requested. Pursuant to 37 C.F.R (a)(1), Petitioner respectfully requests the cancellation of claims 6, 11, 14 and 21 of the 734 patent as unpatentable under 35 U.S.C. 102 and 103.Threshold for Instituting Inter Partes Review. Pursuant to 35 U.S.C. 314(a), Petitioner meets the threshold for institution of an inter partes review because there is a reasonable likelihood that it will prevail with respect to at least one of the challenged claims v.1 3

7 III. STATEMENT OF PRECISE RELIEF REQUESTED The Petitioner respectfully requests that claims 6, 11, 14 and 21 of the 734 patent (Ex. 1001) be canceled based on the following grounds of unpatentability, explained in detail in the next section: Ground 1. Claims 6, 14, and 21 are unpatentable under 35 U.S.C. 102(a) over Natarajan Ground 2. Claim 11 is unpatentable under 35 U.S.C. 103(a) over Natarajan 1992 as in Ground 1, in further view of Bella. Ground 3. Claims 6, 14 and 21 are unpatentable under 35 U.S.C. 103(a) over Natarajan 542 in view of Bantz. Ground 4. Claim 11 is unpatentable under 35 U.S.C. 103(a) over Natarajan 542 and Bantz as in Ground 3, in further view of Bella. IV. TECHNICAL INTRODUCTION The petition is supported by the declaration of Dr. Haas (Ex. 1002), which is the same declaration filed in the St. Jude IPR ( ). Biotronik does not rely on those portions of the Haas declaration that relate to claim 44. A. Overview of the 734 patent The 734 patent relates generally to computer networks. A computer network has a collection of computers (called stations or nodes ) that communicate with one another. This communication happens through some communications medium. The medium can be, for example, a physical wire that v.1 4

8 connects stations, or the electromagnetic field if radio communications are used. (Ex. 1002, 31). In any network having multiple stations and a shared medium, there is a chance for collisions. (Ex. 1001, 1:56-64). A collision occurs when two stations try to transmit on the communications medium at the same time. (Ex. 1001, 3:4-10). For example, there can be a collision if two stations transmit interfering radio signals at the same time. (Ex. 1002, 32-33). To reduce the probability of collisions, network communications have used Medium Access Control protocols ( MAC protocols ). Such MAC protocols are sets of rules specifying when and how particular stations can transmit using the physical communications medium. (Ex. 1001, 1:51-53) (Ex. 1002, 34). B. MAC Protocol of the 734 Patent The 734 patent discusses such a MAC protocol for wireless network communications. The MAC protocol of the 734 patent is said to be an improvement over three admitted prior art MAC protocols: CSMA, TDMA and PRMA. (Ex. 1001, 2:54-4:22) (Ex. 1002, 35-39). The first admitted prior art MAC protocol approach is carrier sense multiple access ( CSMA ). In a CSMA system (according to the 734 patent), each station uses its receiver to monitor the network medium (Ex. 1001, 2:67-68) (Ex. 1002, 36). If the monitoring detects an ongoing transmission, the detecting station v.1 5

9 waits for the medium to free up. (Ex. 1001, 3:1-4) (Ex. 1002, 36). This technique, however, is said to perform poorly when many stations are contending for access to the medium. (Ex. 1001, 3:13-15) (Ex. 1002, 36). The second admitted prior art protocol is time division multiple access or TDMA. A TDMA system, according to the 734 patent, only allows a particular station to transmit during a pre-assigned time slot. The time slot for a station will repeat after a given cycle period. (Ex. 1001, 3:27-36). This technique is said to reliably avoid collisions, but is also characterized as inefficient if transmission requirements are bursty. Under bursty conditions, a station transmits infrequently, but when it transmits, it transmits a lot of data. According to the 734 patent: In burst message situations a large portion of the available time is unused for data communications because that time is assigned to stations that have nothing to send when their time slots occur. (Ex. 1001, 3:43-48) (Ex. 1002, 37). The third admitted prior art protocol is packet reservation multiple access or PRMA. The 734 patent states that in a PRMA system, each station must request and reserve a time to access and use the radio link to send its packets. (Ex. 1001, 3:60-61). However, the 734 patent states that PRMA entails rather v.1 6

10 complex communication of control information, referred to as overhead. (Ex. 1001, 4:13-22) (Ex. 1002, 38). The 734 patent further states that prior art MAC protocols caused stations to use too much power. This was said to be because conventional MAC protocols all assume that the network receivers are capable of receiving frames at all times that they are not actively transmitting. (Ex. 1001, 4:57-62). This in turn was said to require the protocols to leave the receivers on, which was disadvantageous because low-power, short-distance radio transceivers consume about as much electrical power in their receiving function as in their transmitting function. (Ex. 1001, 4:65-67). Power consumption was said to be important for wireless networks because of the increasing proliferation of battery-powered, portable computers. (Ex. 1001, 4:24-25) (Ex. 1002, 41). The MAC protocol of the 734 patent attempted to overcome these alleged issues. To do this, the 734 patent combined aspects of TDMA and PRMA, while allowing stations to power down their radios at certain times. The MAC protocol of the 734 patent may be described with reference to Fig. 3, which is reproduced at right. Figure 3 shows a communication cycle, represented by the circle v.1 7

11 At the top of the circle there is an arrow showing the passage of time that occurs by traversing the perimeter of the circle. Figure 3 shows the communication cycle between a hub and multiple remotes. A hub serves as a central coordinator and relay for communications of mobile or remote units. (Ex. 1001, 10:56-68) (Ex. 1002, 43). The remotes are other stations in the network that are not presently serving as the hub. (Ex. 1002, 43). As shown in Fig. 3, the communication cycle between a hub and the remotes has two portions. The first portion is for outbound transmissions, during which the hub sends information to the remotes. Some of this information which is transmitted first during the information portion 76 enables each remote to determine the time when it will receive information from the hub. (Ex. 1001, Abstract; 11:56-62; 12:1-5) (Ex. 1002, 46-50). Other portions of the outbound interval allow for data transfer to remotes and housekeeping tasks. (Ex. 1001, 11:66-12:1) (Ex. 1002, 46-50). The second portion of the cycle is for inbound transmissions, where the hub receives information from the remotes. During this portion, individual remotes have scheduled and predictable transmission opportunities (abbreviated Txops ), for transmission. The remotes can determine when these opportunities will occur using information transmitted by the hub. (Ex. 1001, Abstract) (Ex. 1002, 51-55). Near the end of the inbound portion, the v.1 8

12 remotes have the opportunity to request bandwidth during the next cycle (the Txop Request portion) or register with the hub. Transmissions from the remote to the hub during the Txop Request portion 86 of the communication cycle are contention-based. That is, the remotes must contend for transmission time during the Txop Request. (Ex. 1001, 12:30-34) (Ex. 1002, 56-58). According to the 734 patent, the system of Fig. 3 combined aspects of TDMA and PRMA. Aspects of TDMA were present because the hub set specific times for each remote to transmit during the Txop portions of the communication cycle. The MAC protocol of the 734 patent allegedly differs from TDMA, however, by adjusting the length of the reserved Txop allocated to each remote. These adjustments are made based on bandwidth requests from the remotes during the Txop Request portion of the cycle, akin to a PRMA system. This facet of a PRMA system is said to allow the MAC protocol to accommodate the communication of the more active remotes. (Ex.1001, 6:16-18). The 734 patent further states that its MAC protocol saves power. Specifically, a remote is allowed to power down its transmitter, except when the remote expects to transmit information to the hub. (Ex. 1001, Abstract). Similarly, a remote is allowed to power down its receiver, except when the remote expects to receive information from the hub during the remotes transmission periods. (Ex. 1001, 32:49-55). After powering down a subsystem, the remote must wake up that v.1 9

13 subsystem when the subsystem is needed. The remote knows when to do this because the hub sends information to the remote that is used to determine wake-up times. (Id.) (Ex. 1002, 48). The 734 patent describes this as follows: Because all frames, both outbound and inbound, occur at predetermined times, the remotes 66 are able to determine in advance approximately when to expect frames transmitted from the hub and when to transmit frames to the hub. As a consequence of the predictable times when frames may be both received and transmitted, the remotes can power their radio interfaces down to preserve power at other times. (Ex. 1001, 13:29-36.)(Ex. 1002, 48). C. Prior Art MAC Protocols The MAC protocol discussed in the 734 patent was already well-known by the time that the application for the 734 patent was filed, including in systems that powered stations off when not receiving or transmitting information. For example, work done by Natarajan, et al. in , as part of the IEEE Working Group, utilized a very similar method. Natarajan s efforts for the Working Group led to a variety of publications, including: a 1992 article entitled Medium Access Control Protocol for Radio LANs (An Update) ( Natarajan 1992 ) (Ex. 1011); and v.1 10

14 U.S. Patent No. 5,241,542 ( Natarajan 542 ), entitled Battery Efficient Operation of Schedule Access Protocol. Like the 734 patent, Natarajan s MAC protocol combined aspects of TDMA and PRMA to achieve better bandwidth utilization. (Ex. 1003, 4:20-6:5) (Ex. 1011, p. 1) (Ex. 1011, pp. 1-6) (Ex. 1002, 78). The Natarajan MAC protocol also directed remotes to conserve power by shutting down subsystems at appropriate times. (Ex. 1003, 3:59-4:6) (Ex. 1011, p. 20) (Ex. 1002, 78). The Natarajan protocol is quite similar to the protocol of the 734 patent, and can be explained with reference to Fig. 4 of Natarajan 542 (see also Natarajan 1992, Fig. 1), shown below, with highlighting added by the Petitioner: Figure 4 shows a frame of Natarajan 542. Note that Natarajan s publications use the term frame to mean the same thing as a communication cycle in the 734 patent. (Ex. 1002, 79). The frame of Natarajan is divided into portions by the vertical lines. In these portions, different types of communication take place, with portions on the left being earlier in time. (Ex. 1002, 80) v.1 11

15 As shown in Fig. 4, the frame of Natarajan 542 has a header AH (near top left of Fig. 4), during which the base station transmits information to the remotes. The transmitted information in header AH tells each remote whether it can expect to receive information from the base station, when it can expect to receive that information, and how long the transmission will take. The information described in the header AH is then transmitted by the base station in period A. Period A is divided into a number of time slots (shown by vertical lines highlighted in green). During these time slots, remotes can expect to receive packets from the base station. (Ex. 1001, 4:39-5:8) (Ex. 1011, pp. 3-5) (Ex. 1002, 80-84). Following period A, the base station transmits another header BH. Header BH contains a list of remotes that will be allowed to transmit information to the base station, and a time slot allocation. The time slot allocation specifies one or more portions of the following Period B for specific remotes to transmit. Because each remote can only transmit in allocated time slots, collisions are avoided. (Ex. 1001, 5:9-5:39) (Ex. 1011, pp. 4-5) (Ex. 1002, 85-89). Following the inbound period B, there is a contention period C, during which remotes can communicate requests for additional bandwidth. During period C, new remotes can register with the network. (Ex. 1003, 5:40-6:5) (Ex. 1011, pp. 5-6) (Ex. 1002, 90-95). Natarajan s MAC protocol thus sets a schedule according to which mobile stations transmit at scheduled times (i.e., the scheduled time slots of TDMA). As v.1 12

16 in the 734 patent, the amount of time allocated by the base station to the mobile units is variable based on bandwidth requests from the mobile stations (i.e., the packet reservation of PRMA). (Ex. 1003, 5:60-65) (Ex. 1011, Fig. 3, pp. 5-7). Like the 734 patent, the Natarajan system uses the information provided by the remotes, including bandwidth and registration requests, to adjust the transmission opportunities. (Ex. 1003, 4:41 5:22) (Ex. 1011, p. 7, bottom) (Ex. 1002, 96). Also like the 734 patent, Natarajan allows for the mobile stations to power down at times that they do not expect to be active. Natarajan 542 explains: In general, the main idea for minimizing battery power consumed by wireless link adapters at the mobile units is as follows [ ] Scheduled access multiaccess protocols can be implemented to effectively conserve battery power by suitable control of the state of transmitter and receiver units at the portable units (i.e., by scheduling when they should be turned ON or OFF). A desirable solution is one in which the transmitter (or receiver) consumes power only when it is actively transmitting a message (or actively receiving a message). (Ex. 1003, 3:59-4:6) (Ex. 1002, 95-96) (emph. add.). D. Examination of the 734 patent Only Natarajan 542 was identified as prior art during prosecution of the application for the 734 patent by the Examiner. (Ex. 1004, p. 2). The Examiner v.1 13

17 used Natarajan 542 to reject application claim 1 and several dependent claims. The Examiner did not, however, reject other dependent claims over prior art, including the claims that issued as challenged claims 6, 11, 14 and 21. In its response the rejection, the Applicant agreed with the Examiner that Natarajan 542 taught numerous aspects of the pending claims (Ex. 1005, pp ). The Applicant attempted to distinguish Natarajan 542, however, based on the number of times a mobile unit would be required to power on during a Natarajan communication cycle. Specifically, because Natarajan 542 teaches sending out separate headers AH, BH and CH, each of which contains information describing the following periods A, B and C, the receivers of the Natarajan mobile units would allegedly be required to power up at least three times during the communication cycle. Following this argument, the Applicant amended independent claim 1 of the application, and stated in its remarks that: In the manner now set forth in amended claim 1 a frame communicates the cycle establishing information to define the intervals for outbound and inbound intervals and the specific intervals when the transmitters and receivers of the individual remotes are to be powered. By communicating this complete information at one time, it would appear that an even further power savings improvement may be possible by the present invention over v.1 14

18 Natarajan, since Natarajan must power up the receivers three times during one communication cycle just to obtain the information necessary to complete the cycle. (Ex. 1005, pp ). In making this argument, the Applicant failed to point out to the Examiner that the 734 patent actually teaches transmitting its cycle establishing information twice: in both intervals 76 and 82 (Ex. 1001, 12:1-5), and that the 734 patent leaves its receiver on during the entire outbound interval (Ex. 1001, 32:49-55). The amendment made to claim 1 was also not made to any of the claims challenged here. Nor does the alleged Patent Owner assert claim 1 in co-pending litigation, or contend that claims 6, 11, 14, or 21 require cycle establishing information to be transmitted at a single time. (Ex and Ex. 1006, pp. 3, 4-5, 7-8, 10-11, and 13-14, the hub transmitting limitation). Indeed, claim 21 expressly requires at least two such transmissions. V. CLAIM CONSTRUCTION A. Overview of the challenged claims Claims 6, 11, 14, and 21 are all independent claims. Each of these claims begins the same way with a number of limitations that are substantively identical. The claims differ only in their last few limitations. A chart comparing each of the challenged claims is attached to the declaration of Dr. Haas as Exhibit v.1 15

19 B. Applicable legal standard for expired claims The 734 patent expired on January 29, If the patent is expired, the Board applies the same standard as a district court. See Ex Parte Papst-Motoren, 1 USPQ.2d 1655, (BPAI Dec. 23, 1986). The Petitioners also note the recent Supreme Court opinion in Nautilus, Inc. v. Biosig Instruments, Inc., 110 U.S.P.Q.2d 1688 (U.S. 2014), concerning the standard for claim indefiniteness. In Nautilus, the Court held that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. Id. Thus, claims are not required to be insolubly ambiguous to be indefinite. This is relevant here because, even if the construction of a claim might not be reasonably certain to a person of ordinary skill, that person may nonetheless be able to discern a best construction for the claim sufficient for determining invalidity over prior art. C. Claims 6, 11, 14, and 21 communication cycle The term communication cycle is used in all claims at issue. The term is not expressly defined in the 734 patent. However, certain characteristics of the communication cycle are apparent from the specification. The communication cycle is shown in Figs. 3 and 10 (7:12-18 and 7:32-34). As shown in Fig. 10, reproduced below with highlighting, the communication cycle v.1 16

20 is made up of a plurality of intervals. The intervals represent times when either the hub or one or more of the remotes is allowed to transmit (outbound or inbound intervals). (Ex. 1001, 7:32-34, 11:45-53). The 734 patent explains that FIG. 10 is a diagram showing the intervals occurring during an outbound portion and an inbound portion of the communication cycle shown in FIG. 3. (Ex. 1011, 7:32-34). A description of Fig. 3, in turn, states that the communication cycle is used to control outbound signal transmissions and to control inbound signal transmissions. (Ex. 1011, 7:12-17). A proper construction for communication cycle would therefore be a series of intervals for outbound and inbound communications. The Board adopted this proposed construction in its Institution Decision in IPR (Ex. 1014, p.8) D. Claims 6, 11, 14, and 21 interval Claims 6, 11, 14 and 21 use the term interval. The 734 patent does not expressly define an interval. It is clear that an interval is some subdivision of a communication cycle. (Ex. 1001, 4:44-47; see also Fig. 3). The intervals also have the characteristic that their time-boundaries are pre-assigned by the hub: v.1 17

21 All intervals of the communication cycle 70 take place within the limits of predesignated assigned times established by the hub. (Ex. 1001, 13:12-14; see also 3:26-36 and 46:49-51; 31:49-57; 13:15-33) (emph. add.). An interval should therefore be defined as a pre-designated time period established by the hub within a communication cycle. E. Claims 6, 11, 14, and 21 frame Claims 6, 11, 14, and 21 use the term frame. The word frame has potential to be confusing, because it is used in the 734 patent in a way different than in some of the prior art. In the Natarajan prior art, e.g., a frame is used similarly to a communication cycle in the 734 patent. In contrast, a frame in the 734 patent is equivalent to a packet in Natarajan. The 734 patent states: Communication between nodes is typically accomplished by sending and receiving an ordered Group of bits known as a frame or packet. (Ex. 1001, 1:41-43; see also 9:63-66) (emph. add.) Thus, the term frame means an ordered group of bits, such as a packet, used to carry information between network stations. This is consistent with the Patent Owner s interpretation in litigation. (Ex. 1006, p. 1). The Board adopted this proposed construction in its Institution Decision in IPR (Ex. 1014, p. 8-9) v.1 18

22 F. Claims 6, 11, 14, and 21 hub Claims 6, 11, 14, and 21 use the term hub, which is explained as follows: [B]ecause of its central location, the hub 64 will be able to receive and relay transmissions from all the communicators 60a, 60b, 60c, 60d and 60e achieving communications between all communicators 60, including those which are not within range of each other for pointto-point or direct communications, such as communicators 60a and 60d. In receiving and relaying all transmission in the Group of communicators 60, the hub 64 allows for the single logical network to be larger than the transmission range 62 of a single communicator 60. The remotes 66 need not be within transmission range 62 of each other to communicate as long as the remotes 66 are within transmission range of the hub 64. (Ex. 1001, 10:56-68; see also 10:41-46) (emph. add.). The hub likewise serves as an overall coordinator of communications ( the hub 64 controls the communications to and from the remotes ) (Ex. 1001, 11:27-28). This is because the hub transmits control information to the remotes to establish the communication cycle and to establish a plurality of predeterminable intervals during each communication cycle (Ex. 1001, 5:47-49). The term hub should thus be defined as a communicator that serves as a coordinator of and v.1 19

23 central relay for communications between other communicators. The Patent Owner construes hub to be any communicator. (Ex. 1007). G. Claims 6, 11, 14, and 21 designating one of the communicators of the Group as a hub Claims 6, 11, 14, and 21 recite designating one of the communicators of the Group as a hub. According to the preamble of the claims, the designating step must be effected by the MAC protocol. (e.g., Ex. 1001, 46:23-26). The designating claim term relates to the 734 patent MAC protocol s arbitration feature. This arbitration feature is used to determine which communicator is better suited to act as the hub. (Ex. 1001, Abstract). Factors that go into the arbitration process are discussed in column 42, line 6 to column 43, line 2, and can include whether a communicator is running on batteries or AC power and whether the communicator is directly connected to a LAN. (Ex. 1001, 42:13-39). The 734 patent explains the arbitration process in the following way: It should be noted that more than two communicators could be involved in a hub arbitration, and the same criteria would be established to determine which of the plurality of communicators will be designated as the hub. The active hub either confirms its own selection and sends Txop grant frames to all those communicators sending Txop request frames, or designates the superior hub v.1 20

24 candidate by responding to the Txop request frame with a hub handoff request frame. (Ex. 1001, 42:54 col. 43:3) (emph. add.). The phrase designating one of the communicators of the Group as a hub should therefore be construed to mean the communicators using the MAC protocol to dynamically select one of the group to function as a hub. Patent Owner construes designating to mean serving as. (Ex. 1006, p. 1). H. Claims 6, 11, 14, and 21 the hub transmitting information to the remotes to establish the communication cycle and a plurality of predeterminable intervals during each communication cycle Claims 6, 11, 14, and 21 recite the hub transmitting information to the remotes to establish the communication cycle and a plurality of predeterminable intervals during each communication cycle. This term relates to sending information from the hub that allows remotes to determine the timing of their transmission and reception opportunities. The 734 patent explains as follows: All intervals of the communication cycle 70 take place within the limits of predesignated assigned times established by the hub. The hub 64 controls the duration and usage of the communication cycles 70. The time for the overall communication cycle 70, along with the specific interval allocations within the cycle 70, are broadcast by the hub 64 in during the information intervals 76 and 82 in the form of control information delivered in an information v.1 21

25 frame transmitted during the information interval 76. (Ex. 1001, 13:12-22; see also col. 36:11-34; 43:14-25) (emph. add.). Using this information sent from the hub, each remote is able to determine times when their receivers and transmitters can be powered OFF. (Ex. 1001, 5:54-62). For example, later in the claims, the remotes use the information to power off their transmitters and receivers when not required to transmit or receive, respectively. (e.g., Ex. 1001, 47:30-37). The hub transmitting information to the remotes to establish the communication cycle and a plurality of predeterminable intervals during each communication cycle thus means the hub transmitting to the remotes information necessary to know in advance the starting time and duration for the communication cycle and the plurality of predesignated intervals during each communication cycle. The Patent Owner, in contrast, construes this limitation to mean [t]he hub [as defined] transmitting information to the remotes to initiate the communication cycle. (Ex. 1007). VI. DETAILED EXPLANATION OF REASONS FOR UNPATENTABILITY Ground 1. Claims 6, 14, and 21 are unpatentable under 35 U.S.C. 102(a) over Natarajan 1992 Claims 6, 14 and 21 are unpatentable under 35 U.S.C. 102(a) over Natarajan, et al. Medium Access Control Protocol for Wireless LANs (An Update) (1992) (Ex. 1011) ( Natarajan 1992 ). As explained in the declarations v.1 22

26 of Dr. Natarajan and Dr. Heile, Natarajan 1992 was an IEEE Working Group paper. The paper was published by oral presentation and distribution of copies at and immediately after the March 11, Working Group meeting, and was accessible to the interested public through the Working Group. This is demonstrated in the declarations of Dr. Robert Heile (Ex. 1009, 1-46) and the declaration of Dr. Natarajan himself (Ex. 1012, 1-11), together with supporting exhibits The evidence shows that Natarajan 1992 met the requirements for a printed publication by March 9-11, See, e.g. Massachusetts Inst. of Tech. v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir. 1985) (paper presented orally at meeting and distributed to six people at the meeting qualified as a printed publication ); MPEP Natarajan 1992 discloses a Multi-Access Protocol that reduces battery power draw and employs both TDMA and PRMA concepts, just like the 734 patent. A basic explanation of Natarajan s work was provided in the technical introduction, beginning on page 8, above, incorporated here. (Ex. 1002, 78-96). Vocabulary Used in the Natarajan Work Natarajan 1992 uses some of the same terms used in the 734 patent, but in different ways. For example, the 734 patent refers to a frame as being the same as a packet. (Ex. 1001, 1:41-43). Natarajan s publications, in contrast, use the term packet in the same way as the 734 patent, but use the term frame in a v.1 23

27 way similar to communication cycle in the 734 patent. A table (Ex. 1002, 97) showing the correspondence of terms in the Natarajan publications and the 734 patent is provided below: Term in Natarajan frame period or interval slot packet Corresponding term in 734 patent communication cycle interval interval frame or packet Natarajan 1992 teaches claims 6, 14, and 21, as shown in the following: [6a]. A communicator for wirelessly transmitting frames to and receiving frames from a least one additional communicator [6b]. in Natarajan 1992 discloses communicators in the form of mobile units and access points for wirelessly transmitting and receiving frames ( packets ) from at least one additional communicator (also mobile units and access points ). Natarajan 1992 states: The proposed MAC scheme is first described in the context of Infrastructure-based LANs. The same scheme is used in Adhoc LANs as described in a later section. A half-duplex wireless link is assumed. The link is shared between inbound (mobile stations to Access Point) and outbound (Access Point to mobile stations) traffic. (Ex. 1011, p. 3) (emph. add.) (Ex at 98). Natarajan 1992 teaches that the communicators send and receive frames of data. These frames in Natarajan 1992 are called packets, which are ordered groups of bits. (Ex. 1011, pp. 4, 7-10, 13 and 12, Figs. 5, 11) (Ex. 1002, 99). The packets of Natarajan 1992 are the frames of the 734 patent. (Ex. 1001, 734 patent, 1:41-43). Natarajan 1992 discloses a predetermined medium access v.1 24

28 accordance with a predetermined medium access control protocol, [6c.] the communicators which transmit and receive the frames constituting a Group, each communicator including a transmitter and a receiver for transmitting and receiving the frames respectively, control protocol. Natarajan 1992 explains: This contribution provides an updated and expanded description of a medium access control protocol for wireless LANs. (Ex. 1011, p. 1, Abstract) (emph, add.) (Ex. 1002, 100). The Medium Access Control protocol is predetermined because it is programmed into communicators (Ex. 1011, p. 12) ( implementation of Access Point functions in software in mobile station adapter cards ) and controls the sequencing of all communications. (Ex. 1011, p. 3, Fig. 1) (Ex. 1002, 101). Natarajan 1992 discloses communicators ( mobile units and access points ) constituting a Group. For example, Fig. 7 (below), shows two mobile units (highlighted yellow) and an access point (blue) in communication: Natarajan 1992 explains: When two stations are within a Basic Service Area and registered with the same Access Point, then there are two choices for communication between them. Fig. 7 shows an Access Point and two mobile stations that are registered with it. (Ex. 1011, p. 9, last paragraph) (emph. add.) (Ex at ). Natarajan 1992 discloses that each mobile station includes both a transmitter and a receiver ( transceiver ): The MAC protocol minimizes battery power consumption in mobile station adapters as follows. The basic idea is to utilize knowledge of receiver and transmitter schedules of mobile stations. (Ex. 1011, p. 20, near top) (emph. add.) (Ex. 1002, 104) v.1 25

29 Natarajan 1992 further teaches that access points have receivers and transmitters. This is because Natarajan 1992 teaches that access points also receive and transmit, and thus must have receivers and transmitters. (Ex. 1002, 105). Furthermore, access points and mobile units are the same physical units in the ad-hoc network embodiment. (Ex. 1011, p. 12, section 2, bottom) ( A mobile station is explicitly designated to provide the basic control functions of an Access Point. ) (Ex. 1002, 105). [6d.] the medium access control protocol controlling each communicator of the Group to effect predetermined functions comprising: [6e.] designating one of the communicators of the Group as a hub and the remaining the communicators of the Group as The transmitter and receiver units transmit and receive packets (see discussion under limitation [6a], above). The packets of Natarajan 1992 are frames of the 734 patent. (Ex. 1001, 734 patent, 1:41-43). The packets of Natarajan 1992 contain ordered bits. (Ex. 1002, 106, 99). Natarajan 1992 discloses the medium access control protocol controlling each communicator of the Group. Natarajan 1992 states: The medium access control protocol used is a hybrid of reservation and random access based protocols. Channel time is structured as a sequence of frames of equal duration. The protocol divides a frame into three intervals. In the first two intervals, transmission is scheduled by the controller, and a decentralized contention-based medium access control protocol is used in the third interval. (Ex. 1011, p. 1, Abstract) (emph. add.) (Ex. 1002, 107). The protocol, which is the entire subject of Natarajan 1992, causes the communicators to effect predetermined functions, described below. (Ex. 1002, 108). Natarajan 1992 teaches that a group of communicators in an adhoc network must designate at least one of their members as an access point (hub) on-the-fly. Natarajan 1992 states: This section describes a simple approach to create Adhoc networks. With this approach, mobile stations would require implementation of Access Point functions in software in mobile station adapter cards. A mobile station is explicitly designated to provide the basic control v.1 26

30 remotes; functions of an Access Point. The designated mobile station, called an Adhoc-type Access Point, performs only the core functions of an Infrastructure-type Access Point. (Ex. 1011, p. 12, near bottom) (emph. add.) (Ex. 1002, 109). Designating an access point also serves to designate remotes. (Ex. 1002, 110) (Ex. 1001, 10:39-41). The designated access point is a hub, because it coordinates the communications of the network and serves as a relay. (Ex. 1002, 111). With regard to control of the medium access for mobile stations, Natarajan 1992 states: The designated mobile station, called an Adhoc-type Access Point, performs only the core functions of an Infrastructure-type Access Point. These include the following: 1. Bandwidth allocation based on reservation requests 2. Registration of stations that wish to join the Adhoc network 3. Timing and framing information for coordinating the stations in the Adhoc network. With a Frequency Hopping PHY layer, the control functions includes specifying the frequency hopping pattern to use, time instants when the stations should hop and how long they should stay in a hop. The above control information facilitates synchronized frequency-hopping by all mobile stations that belong to the Adhoc LAN. Data 25 transfer will occur using the same MAC protocol as in Infrastructure-based LAN. (Ex. 1011, pp ) (emph. add.) (Ex. 1002, 111). Furthermore, the access point relays communications between different mobile stations. This is referred to as the Store and Forward repeat mode, where the hub accepts a communication from one remote and forwards it to another. This is shown in Fig. 7 (relevant portions highlighted yellow): v.1 27

31 Natarajan 1992 explains this as follows: The data transfer can occur in: Store-and-Forward (S- F) repeat mode: The Access Point receives from the source station, and retransmits to the destination. This requires two transmissions but has potential to provide coverage over a larger area. (Ex. 1011, p. 10, top) (emph. add.) (Ex. 1002, ). Natarajan 1992 discloses that the Store-and-Forward repeat mode can also be used in an adhoc network: [6f.] the hub establishing repeating communication cycles, each of which has intervals during which the hub and the remotes The primary mode of operation is Direct Data Transfer between stations that belong to the Adhoc LAN. The Adhoc Access Point need not function as a Store-and-Forward repeater for data communication between peer stations that are in direct range of each other. However, Store-and-Forward repeat is a backup option available at the Adhoc Access Point and can be used for extending the coverage range of the Adhoc LAN. (Ex. 1011, p. 13, near top) (emph. add.) (Ex. 1002, 114). Natarajan 1992 discloses that its MAC protocol has a communication cycle, which Natarajan 1992 calls a frame. As Natarajan 1992 states: Channel time is structured as a sequence of frames of equal duration. The duration of a frame is subdivided into three intervals as shown In Fig. 1. Centralized control is used in the first two intervals and decentralized control in the third interval. (Ex. 1011, p. 1) (emph. add.) v.1 28

32 transmit and receive frames; (Ex. 1002, 115). As shown in the quote above ( sequence of frames ) communication cycles are repeating (Ex. 1011, Abstract; see also pp. 3, 7-8) (Ex. 1002, 116). The communication cycles (frames) of Natarajan 1992 have intervals during which the hub and remotes transmit and receive frames (packets). Figure 1 of Natarajan 1992, depicting its frame (communication cycle) is shown here (highlighting added): In Fig. 1, one can see that each frame has multiple intervals, including the periods A, B, and C, during which transmissions between the access point (hub) and the mobile stations (remotes) take place. Period A is for outbound transmissions ( AP to Mobiles in Fig. 1), and Periods B and C are for inbound transmissions ( Mobiles to AP in Fig. 1). Natarajan 1992 explains: In the first interval (Period A), the link is used exclusively for outbound data transfer from the Access Point to mobile stations. In the second interval (Period B), bandwidth is allocated for contention-free inbound data transfer from mobile stations to the Access Point. (Ex. 1011, p. 3, bottom) (emph. add.) (Ex. 1002, v.1 29

33 118). Period C (Random access from mobile stations to Access Point) is the interval during which any station may contend for the channel and transmit a message without any explicit allocation from the Access Point. (Ex. 1011, p. 6, last ) (emph. add.) (Ex. 1002, ). The communication cycle (frame) also has individual slots (small, closely spaced vertical lines in Figure 1). Within these slots, the hub or individual remotes are allowed to transmit. These slots are also intervals. (Ex. 1002, 118). Each of the Periods A, B and C and are predesignated time periods established by the hub. Natarajan 1992 explains that the hub transmits control information to establish the intervals during headers AH, BH and CH. (Ex. 1011, pp. 4, 5 and 6, respectively). For example, Natarajan 1992 states: Header AH (Broadcast from Access Point to mobile stations) is the interval during which the Access Point broadcasts a special message to all the mobile stations that identifies the beginning of Period A and contains additional control information shown in Fig. 2. (Ex. 1011, p ) (emph. add.) (Ex. 1002, 119). The beginning of Period A, together with the length of each interval and header establishes the timing for the communication cycle. (Ex. 1002, ). The length of each interval and header is provided in header AH, as shown in Fig. 2, reproduced here with yellow highlighting to show the information establishing the lengths of the periods and headers: v.1 30

34 Similar information on future intervals is re-broadcast in headers BH and CH. (Ex. 1011, pp. 5 (Fig. 3) and 6 (Fig. 4), respectively) (Ex. 1002, 121). Furthermore, the slots in Period B (also intervals ) have timing that is predesignated by the hub. Specifically, Natarajan 1992 teaches that the hub transmits header BH, which contains the slot allocations for each remote, such that each remote can determine exactly when to turn on its transmitter: [6g.] the hub transmitting information to the remotes to establish the communication cycle and a Header BH specifies a list of ordered pairs of the form < I, S(I) > that indicates mobile station I is allocated S(I) slots in the current frame. Since the list is ordered, the order in which they are allowed to transmit to the Access Point is known to the mobile stations. Since each mobile station knows the list of stations that precede it and their allocations, it can determine when it should begin its transmission. At its designated time, the mobile station transmits for a fixed period of time whose duration depends on the number of slots allocated to it. (Ex. 1011, pp. 5-6) (emph. add.) (Ex. 1002, 122). See discussion under element [6f.] above concerning information transmitted during headers AH, BH and CH to establish the communication cycle and a plurality of predeterminable intervals during each communication cycle. The intervals are predeterminable because, as discussed under element [6f.], the hub transmits information that allows the remotes to determine the beginning and duration of each interval. (Ex. 1002, v.1 31

35 plurality of predeterminable intervals during each communication cycle, [6h.] the intervals being ones when the hub is allowed to transmit frames to the remotes, [6i.] when the remotes are allowed to transmit frames to the hub, [6j.] and when each remote is expected to receive a frame from the hub; 123). Furthermore, as discussed on page 20 of Natarajan 1992, the hub transmits the necessary information in headers AH, BH and CH for the remotes to know in advance the start time and duration of each interval, and of the frame (communication cycle) as a whole. (Ex. 1011, Fig. 2, p. 20). This allows the remotes to turn receivers and transmitters on and off at the appropriate times. (Ex. 1002, 123). Natarajan 1992 discloses intervals ( slots and periods ) being ones when the hub ( access point ) is allowed to transmit to the remotes ( mobile stations ). These are period A and each of the headers AH, BH and CH. Natarajan 1992 states with regard to period A, that: Period A (Broadcast from Access Point to mobile stations) is the interval during which outbound traffic is transmitted. The Access Point broadcasts packets and mobile stations receive packets addressed to them. (Ex. 1011, p. 4) (emph. add.) (Ex. 1002, 124). During the headers, Natarajan 1992 teaches that the base station (hub) transmits to all the mobile users. (Ex. 1011, pp. 4-6) (Ex. 1002, 125). Natarajan 1992 likewise discloses other intervals (period B and its slots) being ones when the remotes are allowed to transmit frames to the hub ( to Access Point ). For example, Natarajan 1992 states: Period B (Contention Free Transfer from Mobile stations to Access Point) is the interval during which mobile stations take turn to transmit according to the slot allocation specified in BH. (Ex. 1011, p. 5) (emph. add.) (Ex. 1002, 126). Natarajan 1992 teaches that each remote receives broadcast packets (frames of the 734 patent) from the hub during headers AH, BH and CH. Natarajan 1992 teaches: Header AH (Broadcast from Access Point to mobile stations) is the interval during which the Access Point v.1 32

36 broadcasts a special message to all the mobile stations. (Ex. 1011, p. 4) (emph. add.) (Ex. 1002, 127). [6k.] the remotes powering off their transmitters during times other than those intervals when the remote is allowed to transmit frames to the hub, by using the information transmitted from the hub; [6l.] the remotes powering off their receivers during times other than those intervals when the remote is expected to receive a frame Similar disclosure is provided for headers BH and CH on pages 5 and 6 under 2. and 2.3. (Ex. 1002, 128). Natarajan 1992 discloses remotes ( mobile stations ) powering off their transmitters during times other than those intervals ( slots allocated ) when the remote ( mobile unit ) is allowed to transmit frames to the hub ( base station ). Natarajan 1992 teaches that: The MAC protocol minimizes battery power consumption in mobile station adapters as follows. The basic idea is to utilize knowledge of receiver and transmitter schedules of mobile stations. Power consumption is kept to a minimum when the mobile station is neither actively transmitting nor actively receiving information. (Ex. 1011, p. 20) (emph. add.) (Ex. 1002, 129). The knowledge of receiver and transmitter schedules referred to above is information transmitted by the hub, as the hub sends it in headers AH, BH and CH. See discussion under limitation [6f.], above. The remainder of page 20 of Natarajan 1992 discusses specific powering down of transmitters and receivers. (Ex. 1011, p. 20) (Ex. 1002, ). As described there, transmitters are powered down during times other than those intervals when they are allowed to transmit, and receivers power during times other than those intervals when they are expected to receive. (Id.). See discussion under limitation [6k.] immediately above, which applies to both the transmitters and receivers of the remotes. (Ex. 1002, ) v.1 33