UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. Emerson Electric Co., Petitioner. IP Co, LLC, Patent Owner

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Emerson Electric Co., Petitioner v. IP Co, LLC, Patent Owner Case U.S. Patent 8,000,314 IP Co, LLC S PATENT OWNER S PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R (a)

2 TABLE OF CONTENTS I. INTRODUCTION...1 II. THE BOARD SHOULD DENY INSTITUTION UNDER 35 U.S.C. 314(A) AND 325(D)...4 A. Petitioner Failed to Demonstrate that Fifer Or LayerNet Were Unavailable at the Time They Filed Their First Petition....7 B. Petitioner Improperly Used Patent Owner s Responses And The Board s Institution Decision In The Previous IPR Against The 314 Patent as a Roadmap to Support Improper Serial Petitions....8 C. Petitioner Failed to Show That This Follow-On Petition Advances Arguments That Are Not Substantially the Same as the First Petition III. TECHNOLOGY BACKGROUND...12 A. Prior Art Wireless Routing...12 B. The 314 Patent: Edwin B. Brownrigg and Thomas W. Wilson Invent A New Type Of Wireless server client network with both centralized and decentralized routing IV. SUMMARY OF THE PETITIONER S PROPOSED GROUNDS FOR REVIEW...16 V. CLAIM CONSTRUCTION A. selecting a radio transmission path to said first/server node (claims 1 and 10) B. transmission path of a second node to the gateway (claim 15) C. a map of transmission paths of the first network (claim 15) VI. THE SCOPE AND CONTENT OF THE PRIOR ART A. Kahn (Ex. 1006) B. Jubin peer-to-peer network with decentralized routing (Exhibit 1003) C. Schwartz (Exhibit 1009) VII. THE PETITIONER FAILED TO DEMONSTRATE THAT IT IS MORE LIKELY THAN NOT TO PREVAIL ON ANY OF ITS PROPOSED OBVIOUSNESS REJECTIONS...29 A. Claims 1 and 10 Would Not Have Been Rendered Obvious By Either Jubin Alone Or The Combination Of Jubin and Fifer (Proposed Ground 1)...30 ii

3 1. Jubin Does Not Teach A Server As Recited In Claim a. Jubin s fully distributed network management is not a client-server network...30 b. Jubin s PR attached to a gateway is not a server and does not perform a server process The Combination of Jubin and Fifer Does Not Teach a Client Process selecting a radio transmission path to said server node, As Recited In Claim 10 And As Similarly Recited In Claim a. Jubin s next hop is not a radio transmission path to said server node, as recited in claim 10 and as similarly recited in claim b. Jubin s PRs Do Not Select a Radio (Wireless) Transmission Path to A Server The Combination of Jubin and Fifer Does Not Teach That In Response To A Request From The Client Node, implementing by the server node changes to upgrade the selected transmission path to an optimized transmission path, As Recited In Claim 10 And As Similarly Recited In Claim B. Claim 11 Is Not Rendered Obvious By The Combination Of Jubin And Fifer (Ground 1)...41 C. Claim 1 Would Not Have Been Rendered Obvious By The Combination Of Jubin, Fifer, and LayerNet (Ground 3) The Combination Of Jubin, Fifer, and LayerNet Would Not Have Taught selecting a radio transmission path to said first node that is direct or through at least one of the remainder of said plurality of second nodes, As Recited In Independent Claim The Combination Of Jubin, Fifer, and LayerNet Would Not Have Taught That A first node controller implements changes to upgrade the selected transmission path in response to a request from at least one of said second nodes, As Recited In Independent Claim D. Claim 4 Would Not Have Been Rendered Obvious By The Combination Of Jubin, Fifer, the APA and Cerf (Ground 2) The Prior Art Combination Would Not Have Taught A First Node Providing A Gateway Comprising a controller configured to implement changes to a transmission path from the second node to the first node based upon viable network paths observed by the second node, As Recited In Claim iii

4 E. Independent Claims 4 and 15 And Claims Dependent From Claim 15 Are Not Rendered Obvious By The Combination Of Jubin, Fifer, APA, Cerf, and LayerNet (Ground 4) Or The Combination That Further Includes Schwartz (Ground 5) The Asserted Prior Art Does Not Teach A Gateway Between A First Wireless Network and A Second Network Comprising A digital controller sending the map of transmission paths to any second node that requests the map, the digital controller dynamically updating the map of transmission paths, adding and removing second nodes and changing the transmission paths of the at least one second node to optimize the transmission paths, As Recited In Independent Claim Claims Dependent From Claim 15 Are Not Obvious The Asserted Prior Art Does Not Teach All the Limitations Of Independent Claim F. Independent Claim 4 Is Not Rendered Obvious By The Combination Of Kahn, Burchfiel, Schwartz and Cerf (Ground 6) The Petitioner Failed To Show That It Would Have Been Obvious To Modify Kahn With Burchfiel, Schwartz, and Cert To Achieve The Particular Structure Of A Gateway Between A First Wireless Network and A Second Network that changes to a transmission path from the second node to the first node based upon viable network paths observed by the second node so that the path to the first node is chosen from the group consisting essentially of the path to first node through the least possible number of additional second nodes, the path to the first node through the most robust additional second nodes, the path to the first node through the second nodes with the least amount of traffic, and the path to the first node through the fastest second nodes., As Recited in Independent Claim The Petitioner Failed To Show That It Would Have Been Obvious To Modify Kahn With Burchfiel, Cerf and Schwartz To Achieve The Particular Structure Of A Gateway Between A First Wireless Network and A Second Network That changes to a transmission path from the second node to the first node based upon viable network paths observed by the second node so that the path Meets The Criteria Recited In Claim G. Secondary Considerations Support A Finding Of Nonobviousness The 314 Patent Solved a Long-Felt Need Unexpected Results VIII. THE PETITIONER FAILED TO IDENTIFY ANY COMPELLING RATIONALE FOR ADOPTING REDUNDANT GROUNDS OF REJECTION iv

5 IX. CONCLUSION...70 v

6 EXHIBITS Exhibit No. Description 2001 The American Heritage College Dictionary, Third Edition, Houghton Mifflin Company, 1993, p The American Heritage College Dictionary, Third Edition, Houghton Mifflin Company, 1993, p Expert Report of Dr. Kevin Almeroth from IPR Transcript of Deposition of Dr. Heppe from IPR P. Krishna et al., A Cluster-based Approach for Routing in Ad-Hoc Networks, Proc. Of 2nd Symposium on Mobile and Location-Independent Computing, 1995 ( Krishna ) David B. Johnson, Routing in Ad Hoc Networks of Mobile Hosts, (WMCSA 1994), pp , IEEE Computer Society (Dec. 1994) ( Johnson ) Packet Radio Networks, Architectures, Protocols, Technologies and Applications, Clifford A Lynch & Edwin B Brownrigg, Pergamon Press, Dr. Almeroth s Curriculum Vitae 2009 Appeal , Decision on Appeal, November 10, vi

7 I. INTRODUCTION The Board should deny the present request for inter partes review of U.S. Patent No. 8,000,314 ( the 314 patent ) because there is not a reasonable likelihood that the Petitioner would prevail at trial with respect to at least one claim of the 314 patent for four different reasons. First, the Petitioner proposes rejections against many of the same claims that it challenged in IPR (i.e., claims 10, 11, 15, 16, 17, 18, and 19). In IPR , Petitioner proposed (i) three different grounds of rejection against claim 10, (ii) two different grounds of rejection against claim 11, and (iii) one ground of rejection against claims 15, 16, 17, 18, and In this IPR, Petitioner proposes (i) two additional grounds of rejection against claim 10, 2 (ii) two additional grounds of rejection against claim 11, and (iii) two additional grounds of rejections against claims 15, 16, 17, 18, and That is, Petitioner wants a total of five bites at the apple for claim 10 and four bites at the apple against claims 11, 15, 16, 17, 18, and IPR , Petition, p Petitioner included two different grounds of rejection against claims 10, and 11 under the category of Ground 1 (Petitioner, p. x). 3 Petition, pp

8 The Board has consistently denied these multiple attacks against the same claims, particularly when the petitioner fails to provide any explanation for why the new grounds could have not been asserted earlier, as Petitioner Emerson has failed to do here. See, e.g., Samsung Elecs. Co. Ltd. v. Rembrandt Wireless Techs., LP, IPR , Paper No. 14 at 6 (Jan. 28, 2015); Toyota Motor Corp. v. Cellport Systems, Inc., IPR , Paper No. 7 at 7-8 (Oct. 28, 2015). Substantively, this Petition is similar to the one that the Petitioner Emerson filed for IPR As explained in detail below, the present Petition suffers from many of the same deficiencies in the previous IPR. For both substantive and procedural reasons, neither the Board nor Respondent should be burdened with this additional Petition. 4 Second, each of the Petitioner s proposed grounds of rejection is missing one or more limitations of the claims of the 314 patent. 5 Third, the Petitioner did not present any objective evidence as to why one of ordinary skill in the art would have been able to combine the various portions of the prior art 4 Infra, II. 5 Infra, VII. 2

9 references to achieve the particular scheme of optimizing radio transmission paths by both a client and server node, or maintaining a map of data packet transmission paths between a first node and a plurality of second nodes in a first network by a gateway to a second network. 6 That is, the Petitioner did not show that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so. OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012). Fourth, most of the proposed grounds of rejection within the Petition are redundant. For example, for claim 4, the Petitioner set forth 4 different grounds of rejection. 7 For claims 1, 10, 11, and the Petitioner set forth 2 different grounds of rejection. 8 The Petitioner did not even attempt to explain how the references in one of the proposed grounds differ from the references in the other proposed grounds. 9 6 See e.g., Petition, pp Petition, pp Id. 9 Id. at pp

10 That is, instead of preparing a well-reasoned explanation for how the claims are rendered invalid by the prior art with a reasonable number of proposed grounds of rejection, the Petitioners instead squeezed 7 different proposed grounds of rejection into its Petition with very little support for each ground, apparently expecting the Board to sift through the redundancies throughout the Petition to pick a small number of grounds, and to supplement the Petitioner s argument with the Board s own analysis in order to compensate for the deficiencies in the Petitioner s arguments. That is something the Board cannot and should not do. Rather, the Petitioner bears the burden to show that there is a reasonable likelihood that they will prevail with respect to at least one of the claims challenged in the petition. For the reasons mentioned above as explained more fully below, the Petitioner failed to show that it is reasonably likely to prevail on any proposed ground. Accordingly, the Board should deny the Petition. II. THE BOARD SHOULD DENY INSTITUTION UNDER 35 U.S.C. 314(A) AND 325(D) Congress did not mandate that an inter partes review must be instituted under certain conditions. Rather, by stating that the Director and by extension, the Board may not institute review unless certain conditions are met, Congress made institution discretionary. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case IPR , Paper 19 at 4 (Nov. 21, 2013); 4

11 see also 35 U.S.C. 314(a). In particular, 35 U.S.C. 325(d) states that [i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. Based on these provisions, the Board has routinely denied petitioners follow-on petitions as interfering with the Board s mandate to secure the just, speedy, and inexpensive resolution of every proceeding. See, e.g., Samsung Elecs. Co. Ltd. v. Rembrandt Wireless Techs., LP, IPR , Paper No. 14 at 6 (Jan. 28, 2015). The Board has repeatedly noted that [s]uch a second bite at the apple wastes the Board s limited resources and imposes undue burden on the Patent Owner. See, e.g., Toyota Motor Corp. v. Cellport Systems, Inc., IPR , Paper No. 7 at 7-8 (Oct. 28, 2015); see also, e.g., Samsung Elecs., IPR , Paper No. 14 at 6. Consistent with the above policy and precedent, the Board has denied follow-on petitions in cases where, for example, (1) the Petitioner failed to demonstrate that the newly cited references were unavailable at the time of filing of the initial petition, (2) the follow on petition utilizes a previous Board decision or Patent Owner s preliminary response as a roadmap to attempt to remedy deficiencies in the earlier petition, or (3) the follow-on petition presents 5

12 substantially the same arguments or prior art as the initial petition. See, e.g., Toyota Motor Corp., IPR , Paper No. 7 at 7-8 (noting that Petitioner presented no argument or evidence that the newly cited references were unknown or unavailable to Petitioner at the time of filing of the first petition); Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations, LLC, IPR , Paper 17 at 5 (PTAB Oct. 31, 2014) (refusing to institute a follow-on petition because Petitioners are typically not entitled to a second chance ); Nvidia Corp. v. Samsung Elecs. Co., IPR , Paper 9 at 13 (PTAB May 4, 2016) (denying institution because Petitioner did not articulate any meaningful difference between an earlier petition and a follow-on petition). Because the Board frequently denies follow-on petitions, it has consistently warned petitioners that they must provide an adequate explanation as to why a new petition is necessary in the petition itself. See, e.g., Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR , Paper 10 at 3 (PTAB Jan. 29, 2015) (denying Petition where Petitioner failed to explain why it did not include the grounds of a follow-on petition in an earlier filed petition). This requirement is important because the burden of justifying a follow-on petition falls on the petitioner. Id. If a Petitioner does not even attempt to meet that burden in its Petition, neither the Board nor the patent 6

13 owner has a fair opportunity to evaluate the petitioner s position. Here, the Petition is silent as to why a follow-on Petition is necessary. It cites no evidence that Petitioners were unaware of or unable to obtain either of the newly-asserted references (e.g., Fifer and LayerNet) when it filed its first Petition against the 314 patent. Nor does the Petition identify a change in circumstance that would otherwise justify a follow-on Petition. Cf. Microsoft Corp. v. Proxyconn, Inc., Case IPR , Paper 15 at 3, 5 (PTAB Feb. 25, 2014). Moreover, Petitioner could not have possibly met its burden even if it had tried to do so. A. Petitioner Failed to Demonstrate that Fifer Or LayerNet Were Unavailable at the Time They Filed Their First Petition. Most of the references asserted by Petitioner Emerson in this IPR are the same references that were asserted by Emerson in IPR Kahn, Jubin, Schwartz, Birchfiel, and Cerf and the APA were asserted by Petitioner in both IPRs. Only two of the references (Fifer and LayerNet) asserted in the present Petition were not asserted by Emerson in IPR Moreover, Petitioner did not even attempt to show that either Fifer or LayerNet were unavailable to it when it filed the Petition for IPR The Petitioner 10 Petition, pp

14 did not allege, for example, that it conducted diligent searches or contacted knowledgeable employees to discuss sources of relevant prior art. 11 There is currently no evidence before the Board from which the Board could infer that either Fifer or LayerNet were actually unavailable to Petitioner at the time they filed the Petition for IPR Because Petitioner did not allege let alone present any evidence that Fifer or LayerNet were unavailable were it filed its first Petition, the proposed grounds in the present Petition against the same claims (i.e., claims 10, 11, and 15-19) that were challenged in IPR should be denied. Nvidia, IPR , Paper 9 at 10 (holding that unsubstantiated attorney argument that reference was unavailable when filing an earlier petition was incorrect and denying institution). B. Petitioner Improperly Used Patent Owner s Responses And The Board s Institution Decision In The Previous IPR Against The 314 Patent as a Roadmap to Support Improper Serial Petitions. The Board discourages serial attacks on patents. Toyota Motor Corp., Paper No. 7 at 7-8 (explaining that the opportunity to read Patent Owner s Preliminary Response in [the previous IPR proceeding], prior to filing the Petition here, is unjust ); see also US Endodontics, LLC, v. Gold Standard Instruments, LLC, IPR , Paper No. 13 at 9-10 (Oct. 26, 2015) (denying institution and observing that [t]o the extent that the grounds [in the 11 Id. 8

15 follow-on petition] are offered in some capacity to respond to arguments made by [patent owner] in its Preliminary Response in the [first IPR proceeding] ). The Board s rationale for its decisions is clear and straightforward: Allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress s intent in enacting the Leahy-Smith America Invents Act. Butamax Advanced Biofuels, Paper No. 8 at (emphasis added). Indeed, as noted in the AIA s legislative history, AIA proceedings are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation. See H.R. Rep. No , pt.1, at 48 (2011) (emphasis added). [I]t is more efficient for the parties and the Board to address a matter once rather than twice. Samsung Elec. Co. v. Rembrandt Wireless Techs., LP, IPR , Paper No. 14 at 6 (Jan. 28, 2015). The Board should deny this follow-on petition according to its reasoning expressed in the authority discussed above. Petitioner filed this second petition after (i) Patent Owner filed its preliminary response in the first IPR proceeding against the 314 patent, (ii) the Board instituted the first proceeding on three grounds and rejected three other proposed grounds, (iii) Patent Owner filed its 9

16 Response, and (iv) the Board conducted the hearing. That is, Petitioner used the entire proceeding of the first IPR as a roadmap for this Petition. Indeed, the Petitioner shamelessly admitted that it attempted to alter its strategy in response to the Board s holding that Petitioner did not provide persuasive evidence as to why one of ordinary skill in the art would use Jubin s teaching of a decentralized PR network in conjunction with Kahn s stations or a sufficient explanation as to how a decentralized or station-less network would teach one of ordinary skill in the art to select a transmission path to a server. 12 The filing of the present Petition, therefore, is the very same gamesmanship that has been consistently found by the Board to be improper. For this additional reason, this Petition should be denied under 314(a). C. Petitioner Failed to Show That This Follow-On Petition Advances Arguments That Are Not Substantially the Same as the First Petition. Even if it were acceptable for the Petitioner to use the Patent Owner s responses and the Board s Institution Decision in a previous IPR as a roadmap for the present Petition, the Petition should still be denied because its arguments have the same deficiencies as the arguments in the previous petition. 12 Petition, p. 11, quoting IPR , Institution Decision at

17 As admitted by Petitioner, the Board held in the previous IPR against the 314 patent that Petitioner did not provide a sufficient explanation as to how a decentralized or station-less network would teach one of ordinary skill in the art to select a transmission path to a server. 13 Nonetheless, Petitioner continues to rely in the present Petition on prior art that discloses distributed, decentralized routing, which is fundamentally different than the claimed approach which includes centralized routing features. For example, the Petitioner relies upon Jubin in both the present Petition and the previous Petition for claims 10, 11, and Petitioner also relies upon Schwartz and the APA in both the present Petition and the previous Petition for claims For the proposed grounds against claims 1 and 4 in this Petition, Petitioner relies upon the same references that were used in the previous Petition including Jubin, the APA, Cerf, Kahn, Burchfiel and Schwartz. 16 Thus, the arguments in the present Petition are substantially the same as the previous Petition. 13 Id. 14 Petition, p. 10; IPR , Petition, p Id. 16 Id. 11

18 For these additional reasons, the present Petition should be denied. III. TECHNOLOGY BACKGROUND A. Prior Art Wireless Routing The 314 patent is generally directed towards wireless networks and routing data packets within those networks. As discussed in the background of the 314 patent, there are generally two types of wireless networks: client-server networks and peer-to-peer networks. Ex at 1: Client-server networks employ at least one server that influence[s] data flow within the network and access to certain network functions such as central file repository, printer functions, Internet gateways, etc. Id. at 1: Peer-to-peer networks, on the other hand, do not use servers, but, rather, each node operates independently without central control. Id. at 1: Some prior art networks employed point-to-point routing where a data packet followed a specific path through a network from the source node to the destination node. Conventional point-to-point routing may be centralized or decentralized. In centralized routing, typically associated with client-server networks, a central node or server is the only node with general knowledge of the network, and that node selects the routing paths to be used by other nodes or clients in the network. In decentralized routing, typically associated with 12

19 peer-to-peer networks, each node in the network maintains knowledge of the network topology and calculates its own routes to every other node. Both the centralized and decentralized routing protocols suffer certain drawbacks. For example, with centralized routing, clients are incapable of making any independent routing decisions. Instead, all path selections are made by a single node: the server. Decentralized routing results in high overhead and low network bandwidth, especially as the size of the network (i.e., number of nodes) increases. This is in part due to the vast amounts of data that need to be exchanged between nodes in order for nodes to discover the network topology, which is necessary for nodes to make routing path selections independently. 17 Accordingly, the 314 patent sought to improve upon these conventional systems by providing a client-server network that employed both centralized and decentralized features. Specifically, the 314 patent teaches that a server gathers and maintains a central link tree showing best routes to it from each client, and this best link can be shared with each client. See, e.g., Ex at 22:5 24. While each client receives a best link to the server, each client also 17 This scalability problem was recognized as a long standing problem by Jubin, one of the prior art references asserted by the Petitioner. Exhibit 1003, Jubin, D. Network Size. 13

20 monitors transmissions from its neighbors to determine if a better path to the server exists. Id. at 9: Thus, the client independently selects its path to the server. As described in more detail below, this hybrid approach is what is claimed in the 314 patent. B. The 314 Patent: Edwin B. Brownrigg and Thomas W. Wilson Invent A New Type Of Wireless server client network with both centralized and decentralized routing. The patent describes and claims systems and methods that implement a client-server network employing features of both centralized and decentralized routing to provide enhanced network communication. For example, claim 10 requires a client node controller selecting a radio transmission path to said server node [and] requesting updated radio transmission path data from said server node, and a server node that in response to the request, upgrades[s] the selected transmission path to an optimized transmission path. Each client selects a radio transmission path to said server, that can be either a direct link, i.e., the client communicates directly with the server via a single hop, or an indirect link, i.e., the client communicates indirectly with the server via multiple hops with other clients and/or repeater nodes. Id. at 4:51 5:2. The client can independently search for a better path to the server by for example, monitoring transmissions of its neighbors to determine if one of the 14

21 neighbors has a better link to the server. Id. at 9:59 67, 21: If so, the client can select a path to the server through that neighbor with the better link. Id. Thus, clients can select the path to the server using both data received from the server and knowledge of how other clients are communicating with the server. The client selection limitation of each claim reflects decentralized routing at the client, and the map of transmission paths and optimizing client-selected paths limitations reflect centralized routing at the server. None of the cited prior art taught this novel, hybrid routing technique. Moreover, independent claim 12 requires a first node providing a gateway between a first and second network maintaining a map of data packet transmission paths to a plurality of second nodes of said first network [and that] changes the transmission paths of each of the second nodes to optimize the transmission paths. Independent claims 14 and 15 recite similar limitations. None of the prior art, either alone or in combination, teach these limitations of independent claims 12, 14, and 15. Moreover, this hybrid approach to solving the scalability problem is nowhere suggested by Jubin or any of the other references asserted by the Petitioner. Indeed, the Board of Patent Appeals and Interferences (the PTAB s predecessor) found in an appeal of a related patent that Jubin did not disclose this aspect of the claimed invention (Exhibit 2009, pp. 8-9). 15

22 IV. SUMMARY OF THE PETITIONER S PROPOSED GROUNDS FOR REVIEW For the Board s convenience, below is a summary (as understood by Patent Owner) of the claim rejections proposed by the Petitioner: 1. Ground 1: Claims 1, 10, and 11 are alleged to be obvious under 35 U.S.C. 103 over (i) Jubin alone or, in the alternative, (ii) the combination of Jubin and Fifer; 2. Ground 2: Claim 4 is alleged to be obvious under 35 U.S.C. 103 over the combination of Jubin, Fifer, APA, and Cerf; 3. Ground 3: Claim 1 is alleged to be obvious over the combined teachings of Jubin, Fifer, and LayerNet; 4. Ground 4: Claims 4 and are alleged to be obvious over the combined teachings of Jubin, Fifer, APA, Cerf, and LayerNet; 5. Ground 5: Claims 4 and are alleged to be obvious over the combined teachings of Jubin, Fifer, APA, Cerf, LayerNet, and Schwartz; and 6. Ground 6: Claim 4 is alleged to be obvious over the combined teachings of Kahn, Burchfiel, Schwartz, and Cerf. 16

23 V. CLAIM CONSTRUCTION. Patent Owner opposes the Petitioner s proposed claim constructions. The Petitioner s proposed constructions generally ignore the context of the terms within the claim. Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Additionally, the appropriate context to read a claim term includes both the specification and the claim language itself. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). A. selecting a radio transmission path to said first/server node (claims 1 and 10). Claim 1 recites a wireless communication network having a first node, a plurality of second nodes, a process on a second node selecting a radio transmission path to said first node that is direct or through at least one of the remainder of said plurality of second nodes. Claim 10 recites a controller on a client node selecting a radio transmission path to said server node that is one of a direct link to said server and an indirect link to said server through at least one other client node. The claim language itself, therefore, requires the second or client node to select a path from itself to the first node or server 17

24 either directly or indirectly. In its Institution Decision on the previous IPR against the 314 patent, the Board agreed by stating that Patent Owner is correct in noting that the ordinary and customary meaning of select is to make a choice between alternatives. 18 That Board was not persuaded that the claim term when viewed in light of the specification should be construed to have a meaning other than the ordinary and customary meaning of the term. 19 The construction of the radio transmission path portion of the claim limitation should not be limited to only one of many ways of describing a path. Although one way of describing a path is to list identifiers for each node on the path, both experts agree that one of ordinary skill of the art as of the priority date of the 315 patent, would have known of many other ways to describe a path. As explained by the Patent Owner s expert, Dr. Almeroth, one of ordinary skill at that time would also have known that a path could have been 18 IPR , Institution Decision, Paper No. 9, pp Id. at p

25 identified by neighbor numbers. 20 As further explained by Dr. Almeroth, one of ordinary skill at that time would also have known that a path could be described by identifying the neighboring nodes to which data should not be sent. 21 One of ordinary skill in the art would at that time would also have known that a path could be described by a flow label. 22 One of ordinary skill in the art would also have known that a path in an Asynchronous Transfer Mode (ATM) network could be identified by its Virtual Path Identifier (VPI). 23 Dr. Heppe, the Petitioner s expert, agreed that there were many ways of describing a path known as of the priority data of the 314 patent; he testified that a path could be described by neighbor tables that list their nearest 20 Ex. 2003, Id. 22 Id. at Id. at

26 neighbors Dr. Heppe admitted that there were many ways to describe a path known to one of ordinary skill as of the priority date of the 314 patent. 26 Further, the Specification of the 314 patent supports Patent Owner s proposed construction that a radio transmission path to said server must describe a path from the client node to the server. The Specification uses the term path and link interchangeably: the client will communicate with a neighbor client which has its own path ( link ) to the server. Therefore, a client can communicate with the server along a link that includes one or more other clients. 27 And the Specification clearly states that the link or path includes all the nodes along a path from the client to the server: 24 Ex. 2004, p. 109, ll Indeed, the Petitioner s counsel was so concerned that Dr. Heppe would testify that there were many ways to describe a path that the counsel interrupted Dr. Heppe s deposition to ask the Board to stop Patent Owner s counsel from asking questions on this topic (id. at pp ). Not surprisingly, the Board allowed the questions to be asked (id. at p. 103). 26 Id. at pp Ex. 1001, 4:56 59 (emphasis added). 20

27 the term link is used to convey both the connection to an adjacent client as well as the entire path from a client to a server. It will therefore be understood that when speaking of a link to an adjacent client, that this also implicitly includes all necessary links from that adjacent client to the server, i.e. a link is the entire path description from a given client to a given server. 28 Thus, the proper construction of a transmission path to said first/server node is a description of an entire path from the second/client node to the first/server node is the broadest reasonable construction in light of the specification and should be adopted in this proceeding. The proper construction of selecting a radio transmission path to said server node is choosing a path to the server including an identification of an entire path from the client to the server. B. transmission path of a second node to the gateway (claim 15). Claim 15 recites a gateway between two networks (i.e., a first and second network), a second node in the first network, and a transmission path of a second node to the gateway. Claim 15 also includes language requiring the transmission path to include an entire path from a second node in a first or wireless network to a first node (i.e., gateway). For example, claim 15 recites that the transmission path of a second node to the gateway can be directly 28 Ex at 9:52 58 (emphasis added). 21

28 from the second node to the gateway or indirectly to the gateway through one or more of other second nodes of the first network. Therefore, the transmission path of a second node to the gateway of claim 15 should be construed as a description of an entire path of nodes from a second node to the gateway. As explained above, the Specification of the 314 patent supports Patent Owner s proposed construction that a transmission path from a second node to a first node or gateway must describe a path from the second node to the first node or gateway respectively. 29 Also, claim 15 does not include a path from a client to a server node because it does not recite a server node. Rather, claim 15 recites a first node providing a gateway. Thus, the Patent Owner s construction of the transmission path limitations of claim 15 is the broadest reasonable construction in light of the specification and should be adopted in this proceeding. C. a map of transmission paths of the first network (claim 15). As explained above, a transmission path in the context of claim 15 is a description of the entire path from a second node to either a first node or a 29 Supra, IV.A. 22

29 gateway. 30 A map of transmission paths as recited in claim 15 is properly construed as a data structure containing a representation of a plurality of transmission paths. This proposed interpretation is the broadest reasonable construction because it is supported by the dictionary definition of the term map as a representation usually on a plane surface, of a region of the earth or heavens. 31 Moreover, a term ending in a letter s like the claim term paths would ordinarily be understood as being plural (i.e., a plurality). Indeed, Petitioner s expert Dr. Heppe admitted that terms ending in the letter s are ordinarily understood to be plural: Q. One of ordinary skill in the art seeing the term paths, with an S at the end, would they understand that term to refer to two or more paths? A I mean the word is plural, so I think in many cases, you know, the presumption is that it would be more than one path but you've said in general without reference to this particular document and 30 Supra IV.B. 31 Ex. 2001, The American Heritage College Dictionary, Third Edition, Houghton Mifflin Company, 1993, p

30 probably without narrowing it even to this case, so it's, there may be some example you can come up with that is kind of strange, but most people would recognize the word spelled P-A-T-H-S is plural and probably refers to more than one path unless the context indicates otherwise. 32 The 314 patent does not provide to use Dr. Heppe s phrase a kind of strange definition of the claim term paths. That is, the 314 patent does not define the claim term paths ending in an s in a strange way to indicate that it includes just one path (i.e., that it is not plural). 33 The Petitioner proposed a construction of a map of transmission paths as all transmission paths rather than one or more transmission paths in the previous IPR 34 but abandoned that construction in this proceeding. It is little wonder why; Petitioner s proposed construction violates Federal Circuit precedent by importing improper limitations into this claim term. Claim 15 recites a map of transmission paths, not all paths in a network. Thus, the Patent Owner s construction of the map of transmission paths, as recited in claim 15 is the broadest reasonable construction in light of the 32 Exhibit 2004, p. 75, ll (emphasis added). 33 See e.g., 314 patent, cols IPR , Petition, p

31 specification and is consistent with Federal Circuit precedent, and therefore, should be adopted in this proceeding. VI. THE SCOPE AND CONTENT OF THE PRIOR ART. Any obviousness analysis requires a consideration of the scope and content of the prior art and the differences between the prior art and the claims. See MPEP , The Petitioner proposed obviousness rejections based on Kahn, Jubin, Schwartz, and other secondary references. Kahn, Jubin, and Schwartz are summarized below. A. Kahn (Ex. 1006). Kahn discusses the basic concepts of packet radio and present[s] the recent technology and system advances in this field. Exhibit 1006, Kahn, Abstract. [T]wo key routing options (point to-point and broadcast) and the protocols which support them are discussed. Id. at 1476, col. 1. Petitioner relies on Kahn s point-to-point, server-client approach based on one or more stations and a plurality of packet radios ( PRs ) in a packet radio network ( PRNET ). Id. at 1477, col. 1. To further a primary goal of Kahn, which is to minimize PR cost and complexity, Kahn disclosed centralized routing in which [t]he station 25

32 determines the route to each [PR] and plays an active role in initializing, organizing, and maintaining the operational network. Id. [A]ll routes are assigned by the station. Id. [T]he point-to-point route (which consists of an ordered set of selectors) is first determined by the station (id. at 1479, col. 2) and then provided to the PR. In Kahn, when a PR transmits a data packet to a station, the path from the PR to the station is selected by the station not the PR. The only disclosure in Kahn of how routes between PRs and stations are determined is based on a labeling process. Id. In this process, each station is aware of nearby PRs, which are a subset of the overall network. Id. For each such PR, the station determines good routes to itself for each radio in the subset and then distributes to each radio in its subset the route from that radio to the station. Id. While one PR can be in range of two stations and thus be part of two subsets, the labeling process used by each station is the same and each station assigns good routes to itself, which is the only disclosed way for any PR to reach any station. Therefore, Kahn discloses a system in which a station selects routes both (1) from PRs to itself and (2) from PRs to other PRs. These routes are distributed to the respective PRs. When a PR attempts to transmit a packet, the packet is transmitted along the route selected by the station. Accordingly, in 26

33 Kahn, PRs do not select the routing path to a station. Rather, the station controls and dictates all aspects of the route selection process. B. Jubin peer-to-peer network with decentralized routing (Exhibit 1003). Jubin discloses a single-tier, peer-to-peer network referred to as the PRNET, consisting of PRs that each make independent routing decisions. Ex. 1003, p. 22. While devices, such as host computers and terminals, can be attached to a packet radio via a wire high-level data link control (HDLC) interface, the attached devices employ the PRNET to transmit data packets from one device to another. Id. From a network communication standpoint, however, these devices are not part of the PRNET. Id. To the devices, the PRNET network appears as a black box providing packet communication service between pairs of user devices. Id. at 23. Thus, a device simply passes a data packet to its corresponding PR, and the PR together with other PRs in the network implements the communication process to ensure the packet arrives at its destination device. Id. at In contrast to Kahn s centralized approach, Jubin discloses a decentralized routing algorithm where [e]ach [PR] gathers and maintains enough information about network topology so that it can make independent decisions about how to route data through the network to any destination. Id. at 23. Jubin discloses that Routing in the PRNET is done by having each PR maintain knowledge of the best PR to forward packets to every 27

34 prospective destination. Id at 24. Jubin recognized that its system suffered from the same scalability problem that is addressed by the claimed hybrid routing approach of the 314 patent. C. Schwartz (Exhibit 1009). Schwartz Chapter 6, entitled Network layer: Routing Function, from the textbook Telecommunication Networks by Schwartz ( Schwartz ), provides an overview of routing algorithms used to establish the appropriate routing paths between nodes in a network. Ex. 1009, p Schwartz teaches that routing algorithms can be either centralized by establishing the paths between source and destination nodes at a centralized network management center and then distributing the routing information to all nodes in the network (like Kahn), or can be decentralized where each node exchang[es] cost and routing information with its neighbors on an iterative basis, until routing tables at the nodes converge to the appropriate shortest-path entries (like Jubin). See id. at 267. What Schwartz does not teach, however, is a network management system in which both centralized and decentralized routing decisions are made (as in the 314 patent). Schwartz also teaches that packet switched networks typically employ shortest path routing algorithms and discloses two algorithms for achieving this result: Algorithm A, which is the link-state approach, and Algorithm B, 28

35 which is the distance vector approach. Id. at Petitioner alleges that combining the teachings of Kahn with Algorithm A as taught by Schwartz would make obvious claim 4 in the 314 Patent. See, e.g., Petition, p. 75. In Algorithm A, each node keeps a complete (global) topological database [of the network] that is updated regularly as topological changes occur. Ex. 1007, 297; see also id. at 268. [E]ach node... then carr[ies] out its own computation, using the same global information and generat[es] its own tree and corresponding routing table. Id. at 270. Accordingly, each node finds the shortest paths from [itself] to all other nodes. Id. at 268. VII. THE PETITIONER FAILED TO DEMONSTRATE THAT IT IS MORE LIKELY THAN NOT TO PREVAIL ON ANY OF ITS PROPOSED OBVIOUSNESS REJECTIONS As set forth by the Supreme Court, the question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see also KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007). A petitioner proposing an obviousness rejection must demonstrate that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation 29

36 of success in doing so. OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012). The Petition s evidence must also address every limitation of every challenged claim. Here, the Board should decline to institute an inter partes review because (i) the Petition failed to demonstrate that any of the different combinations of references teaches every element of any of the challenged claims and (ii) the Petition failed to demonstrate that one of ordinary skill in the art would have been motivated to combine the teachings of the numerous prior art references in the combination to achieve the claimed invention with a reasonable expectation of success. A. Claims 1 and 10 Would Not Have Been Rendered Obvious By Either Jubin Alone Or The Combination Of Jubin and Fifer (Proposed Ground 1) 1. Jubin Does Not Teach A Server As Recited In Claim 10 a. Jubin s fully distributed network management is not a client-server network The Petitioner admitted in the previous IPR, as it must, that Jubin discloses a fully distributed routing algorithm. 35 Petitioner repeated this admission in this IPR by stating that Jubin teaches a distributed routing 35 IPR , Petition, p

37 process. 36 In Jubin, each PR makes independent decisions about how to route data through the network, 37 and there is no disclosure of any centralized network management of routing. Thus, all of the teachings of Jubin are directed to routing in a decentralized network, which is fundamentally different from routing in the centralized client-server network described in the claims of the 314 patent. As a result, Jubin fails to disclose both a server implementing a server process and a client process that selects a radio transmission path to the server as required by the claims. b. Jubin s PR attached to a gateway is not a server and does not perform a server process Jubin s PRNET system discloses two distinct sets of equipment: the PRNET subnet, which consists of packet radios, and a collection of devices that are attached to a packet radio via a wire... interface. 38 Devices are host computers and terminals that wish to exchange data in real time. 39 In some cases, a host or terminal may be connected to a network 36 Petition, p Ex. 1003, 23, col Ex. 1003, 22, col Id. 31

38 interface unit or a gateway to provide translation between network protocols or to allow the PRNET to be accessed from other networks, respectively. 40 Importantly, however, the devices and any attached gateway are not part of the packet radio network itself. [O]rganizationally, the devices lie outside the PRNET subnet: the network appears as a black box providing packet communication services between pairs of user devices. 41 Jubin s Fig. 4 illustrates the boundary of the black box as a cloud, with packet radios inside the network and hosts, gateways, and NIUs on the outside. There are at least two reasons why Jubin s gateway and/or PR do not teach a server as recited in the claims. First, Jubin teaches that the gateway is separate from the wireless PRNET subnet, not a part of it. The devices (including gateways) outside the black box of the PRNET subnet have no knowledge of or control over how information propagates within it. See e.g., id., 22, col. 1 ( The PRNET subnet provides the means of interconnecting a community of users, which are devices... that wish to exchange data in real time. id. at 23, col. 1 ( [T]he network appears as a black box providing packet communication service between pairs of user devices. (emphasis added)); id. at 25, col. 1 ( In Fig. 6, Device 1 launches a packet destined for distant 40 Id. at 22, col. 2 to 23, col Id. at 23, col. 1 (emphasis added). 32

39 Device 2. The packet is sent across the wire interface to [the PR attached to Device 1].... The device-to-pr mapping is totally transparent to the user and to the device. (emphasis added)). The packet headers and forwarding protocols in Jubin provide further evidence of the distinction between network routing inside and outside the PRNET. Devices that want to use the wireless PRNET subnetwork do not know, much less decide, the routing path employed; neither the source device nor the destination device plays any role in how a given packet is sent over the wireless network. It is, therefore, improper for Petitioner to consider these devices that do not participate in the PRNET subnet to be part of the wireless network system. Second, Jubin s gateway does not control a server radio modem. Jubin makes clear that the devices connected to the PRNET do not have radio modems nor do these devices exercise any control over the radio modems of PRs, as required by the claims. Ex. 1003, 22, col. 1 (describing that devices... [are] attached to a packet radio via a wire ). For example, claim 10 recites a server controller which implements a server process that includes controlling the server node to receive and transmit data packets via said server node to other nodes in the network. Petitioner points to nothing in the gateway that performs any such controlling of the server node to receive and transmit data 33