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 IPR Patent 8,000,314 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 8,000,314

2 TABLE OF CONTENTS Page I. Mandatory Notices under 37 C.F.R A. Notice of Real Party in Interest... 1 B. Notice of Related Matters... 1 C. Notice of Lead and Backup Counsel... 2 D. Service Information... 3 E. Claim Listing... 3 II. 37 C.F.R Requirements... 9 A. Standing... 9 B. Challenges and Relief Requested III. Background A. Summary B. POSITA C. Claim Construction selecting a transmission path (claims 1 and 10) first node (claim 1)/ first node providing a gateway between a wireless network and a second network (claim 4)/ gateway (claim 15) changes to upgrade the selected transmission path (claims 1, 10)/ changes to a transmission path (claim 4)/ changes the transmission paths (claim 15) D. Brief Summary of the Cited Prior Art Packet Radio Prior Art a. Jubin b. Fifer c. LayerNet d. Kahn e. Burchfiel Gateway Prior Art i-

3 TABLE OF CONTENTS (continued) Page a. Admitted Prior Art ( APA ) b. Cerf Routing Optimization Prior Art - Schwartz IV. SPECIFIC GROUNDS FOR PETITION A. Ground 1: Claims 1, 10, and 11 are obvious under 35 U.S.C. 103 in view of Jubin or, in the alternative, would have been obvious over the combined teachings of Jubin and Fifer B. Ground 2: Claim 4 would have been obvious over the combined teachings of Jubin, Fifer, APA, and Cerf C. Ground 3: Claim 1 would have been obvious over the combined teachings of Jubin, Fifer, and LayerNet D. Ground 4: Claims 4 and would have been obvious over the combined teachings of Jubin, Fifer, APA, Cerf, and LayerNet E. Ground 5: Claims 4 and would have been obvious over the combined teachings of Jubin, Fifer, APA, Cerf, LayerNet, and Schwartz F. Ground 6: Claim 4 would have been obvious over the combined teachings of Kahn, Burchfiel, Schwartz, and Cerf V. CONCLUSION ii-

4 Exhibit TABLE OF EXHIBITS Description 1001 U.S. Patent No. 8,000,314 (issued August 16, 2011), Wireless Network System and Method for Providing Same ( 314 patent ) 1002 Prosecution History of U.S. Patent No. 8,000,314 ( 314 PH ) 1003 Jubin, John, et al., The DARPA Packet Radio Network Protocols, Proceedings of the IEEE, Vol. 75, No. 1 (Jan. 1987) ( Jubin ) 1004 Fifer, William C. and Bruno, Frederick J., The Low-Cost Packet Radio, Proceedings of the IEEE, Vol. 75, No. 1, January 1987 ( Fifer ) 1005 Bhatnagar, A. and Robertson, T., LayerNet: A New Self- Organizing Network Protocol, MILCOM 90, 1990 IEEE Military Comm. Conf. 845 (Sept.-Oct. 1990) ( LayerNet ) 1006 Kahn, Robert E., Advances in Packet Radio Network Protocols, Proceedings of the IEEE, Vol. 66, No. 11, November 1978 ( Kahn ) 1007 J. Burchfiel, et al., Functions and structure of a packet radio station, National Computer Conference presented paper, 1975 ( Burchfiel ) 1008 Vinton G. Cerf, et al., Issues in Packet-Network Interconnection, Proceedings of the IEEE, Vo. 66, No. 11, November 1978 ( Cerf ) 1009 Mischa Schwartz, Telecommunication Networks: Protocols, Modeling and Analysis, Addison-Wesley Pub. Co., 1988 ( Schwartz ) 1010 V. G. Cerf and R. E. Kahn, A protocol for packet network intercommunications, IEEE Trans. Commun., vol. COM-22, pp (May 1974) ( Cerf74 ) -iii-

5 1011 Bolt Beranek and Newman Inc., Command and Control Related Computer Technology: Packet Radio, Report No. 4340, ADA (Final Report) (Dec. 1980) 1012 Haverty, J., XNET Formats for Internet Protocol Version 4, IEN 158 (Oct. 1, 1980), found in DDN Protocol Handbook, Volume 2, AD-A166325, at to (Apr. 7, 1986) Declaration of Gerald P. Greiner (Nov. 3, 2015) 1014 Declaration of Stephen Heppe, Ph.D. ( Heppe ) 1015 Heppe curriculum vitae 1016 Second Declaration of Stephen Heppe, Ph.D. (IPR ) 1017 U.S. Patent No. 6,249, Patent Owner Opening Claim Construction Brief IPCO, LLC v. Tropos, Action No.: 1:06-C CC (N.D. Ga.) Patent Owner Responsive Claim Construction Brief IPCO, LLC v. Tropos, Action No.: 1:06-C CC (N.D. Ga.) Joint Claim Construction Statement IPCO, LLC v. Elster, Action No. 1:05-CV-1138-CC (N.D. Ga.) 1021 Ex. B to Joint Claim Construction Statement SIPCO et al. v. Emerson Elect. Co. et al., Civ. No. 6:15-cv-907, D.I (E.D. Tex.) 1022 Office Action in Ex Parte Reexamination, Control No. 90/008,011 (Aug. 13, 2008) 1023 Declaration of Gerald P. Greiner (Oct. 25, 2016) 1024 Declaration of Phyllis Ann Bell (Oct. 28, 2016) 1025 Declaration of Pamela Stansbury (May 23, 2016) 1026 Declaration of Pamela Stansbury (May 5, 2016) -iv-

6 Petitioner seeks cancelation of claims 1, 4, 10-11, and of U.S. Patent No. 8,000,314 ( the 314 Patent ). I. MANDATORY NOTICES UNDER 37 C.F.R A. Notice of Real Party in Interest Emerson Electric Co. is the Petitioner. Emerson Electric Co., Emerson Process Management LLLP, Fisher-Rosemount Systems, Inc. and Rosemount, Inc. are real parties-in-interest. B. Notice of Related Matters Claims 10 and of the 314 patent are currently the subject of inter partes review in IPR Claims 1, 4, and 11 are not at issue in IPR If the present Review is instituted, Petitioner requests that it be assigned to the same Board for administrative efficiency. Two Inter Partes Reviews, IPR and IPR , were filed on October 12, 2016, against United States Patent No. 8,233,471, which is related to the 314 patent. An Inter Partes Review, IPR , was filed on November 9, 2016, against United States Patent No. 8,625,496, which is related to the 314 patent. Two other related patents, U.S. Patent Nos. 6,044,062 and 6,249,516, were subject to inter partes review, IPR and IPR , respectively. Both Reviews were terminated at the request of the parties thereto. -1-

7 The 062 patent was subject to an ex parte reexamination, control number 90/008,011, during which several claims were cancelled following a decision from the Board of Patent Appeals and Interferences. The 516 patent was subject to an ex parte reexamination, control number 90/008,005. The 314 patent was asserted by Patent Owner against Petitioners in SIPCO v. Emerson Electric Co., 6-15-cv (E.D. Tex. Oct. 16, 2015) (SIPCO is a related entity to Patent Owner, IPCO). That case was transferred to the Northern District of Georgia, SIPCO v. Emerson Electric Co., Civ. No cv (N.D. Ga. July 26, 2016), where it was consolidated with Emerson Electric Co. v. SIPCO, Civ. No. 1:15-cv (N.D. Ga. Jan. 30, 2015). Petitioners had filed a declaratory judgment against the 314 patent, Emerson Electric Co. v. SIPCO, Civ. No. 1:13-cv (N.D. Ga. July 13, 2013), but that action was dismissed without prejudice on January 29, C. Notice of Lead and Backup Counsel Lead counsel in this matter is Donald L. Jackson (Reg. No. 41,090) of Davidson Berquist Jackson & Gowdey, LLP, 8300 Greensboro Dr., Suite 500, McLean, Virginia 22102, Telephone: , Fax: , djackson@dbjg.com. Back-up counsel includes James D. Berquist (Reg. No. 34,776; jberquist@dbjg.com); Wayne M. Helge (Reg. No. 56,905; whelge@dbjg.com), Walter D. Davis, Jr. (Reg. No. 45,137; -2-

8 and James T. Wilson (Reg. No. 41,439; of the same law firm. D. Service Information Documents may be delivered by hand to the address of lead and back-up counsel above. Petitioners consent to service by to the following address: E. Claim Listing 1. Claim 1. Claim 1. A wireless network system comprising: [1.1] a first node including a first node controller and a first node radio modem, said first node controller implementing a first node process that includes controlling said first node radio modem, said first node process including receiving and transmitting data packets via said first node radio modem; [1.2] a plurality of second nodes each including a second node controller and a second node radio modem, said second node controller implementing a second node process that includes controlling of said second node radio modem, said second node process including receiving and transmitting data packets via said second node radio modem, [1.3] wherein said second node process of each of said second nodes includes selecting a radio transmission path to said first node that is direct or through at -3-

9 least one of the remainder of said plurality of second nodes; [1.4] and wherein said selected path to said first node utilizes the least number of other second nodes, such that said transmission path from each of said second nodes to said first node is optimized [1.5] and the first node controller implements changes to upgrade the selected transmission path in response to a request from at least one of said second nodes. 2. Claim 4. Claim 4. A first node providing [4.1] a gateway between a wireless network and a second network, the first node comprising: [4.2] a first data packet receiver configured to receive a data packet from a second node of said wireless network, a first converter configured to convert the data packet to a format used in said second network, and a data packet sender configured to send the data packet to a proper location on said second network; and [4.3] a second data packet receiver configured to receive the data packet from said second network, a second converter configured to convert the data packet to a format used in said wireless network, and a data packet sender configured to send said data packet with a header to a second node of said wireless network; and -4-

10 [4.4] 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 [4.5] 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. 3. Claim 10 Claim 10. A client node in a network including a server node having [10.1] a server radio modem and 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, the client node comprising: [10.2] a client node radio modem; and a client node controller; said client node controller implementing a process including receiving and transmitting data packets via said client modem; [10.3] selecting a radio transmission path to said server node that is one of a -5-

11 direct link to said server node and an indirect link to said server node through at least one other client node; [10.4.1] implementing a process requesting updated radio transmission path data from said server node, and in response thereto, [10.4.2] implementing by the server node changes to upgrade the selected transmission path to an optimized transmission path. 4. Claim 11. Claim 11. The client node of claim 10, wherein [11.1] said transmission path data is chosen from the group comprising data identifying: a path to said server node through the minimum number of client nodes; a path to the server node through the most robust additional client nodes; a path to the server through the client node with the least amount of traffic; and a path to the server node through the fastest client nodes. 5. Claim 15. Claim 15. A gateway between at least two networks, where at least one of the two networks is a wireless network, the gateway comprising: [15.1] a first interface capable of communicating with a first network that operates, at least in part, by wireless communication and includes at least one second node; a second interface capable of communicating with a second -6-

12 network; and a digital controller coupled to the first interface and the second interface, the digital controller capable of communicating with the first network via the first interface and communicating with the second network via the second interface, [15.2] the digital controller maintaining a map of transmission paths of the first network, where the transmission path of a second node to the gateway can be directly from the second node to the gateway or indirectly to the gateway through one or more of other second nodes of the first network, [15.3] the digital controller sending the map of transmission paths to any second node that requests the map, [15.4] the digital controller dynamically updating the map of transmission paths, adding and removing second nodes and [15.5] changing the transmission paths of the at least one second node to optimize the transmission paths; wherein said digital controller changes the transmission paths second nodes to optimize the transmission paths including changing the transmission path from the second node to the gateway through the least possible number of additional second nodes, the path to the gateway through the most robust additional second nodes, the path to the gateway through the second nodes with the least amount of traffic and the path to the gateway through the fastest second nodes. -7-

13 6. Claim 16. Claim 16. The gateway of claim 15: wherein when the gateway receives information from the first network that is destined for the second network, the gateway converts the information received from the first network into a format used in the second network if necessary, and sends the information from the first network destined for the second network to the second network; and wherein when the gateway receives information from the second network that is destined for the first network, the gateway converts the information received from the second network into a format used in the first network if necessary, and sends the information from the second network destined for the first network to the first network. 7. Claim 17. Claim 17. The gateway of claim 15, wherein converting the information received from the second network into the format used in the first network includes adding a header that includes an address of a destination second node of the first network and the transmission path to the destination second node of the first network. 8. Claim 18. Claim 18. The gateway of claim 15, wherein [18.1] the second network is a TCP/IP protocol network, and the information received from first network, the -8-

14 information sent to the first network, the information sent to the second network, and the information received from the second network are in the form of data packets. 9. Claim 19. Claim 19. The gateway of claim 15, wherein changing the transmission paths of second nodes to optimize the transmission paths includes adding a new second node of the first network to the map as the new second node becomes active, and removing a second node of the first network from the map if the second node becomes inactive. II. 37 C.F.R REQUIREMENTS A. Standing Petitioner certifies that the 314 patent is available for inter partes review. Petitioner is not barred or estopped from requesting inter partes review on the grounds identified herein. Patentee asserted the 314 patent against Petitioner in SIPCO, LLC, et al. v. Emerson Electric Co., et al., Civil Action No. 1:16-cv (N.D. Georgia). That complaint was served less than one year before the filing date of this Petition. -9-

15 B. Challenges and Relief Requested Petitioner respectfully requests that claims 1, 4, 10-11, and of the 314 patent be cancelled based on the following: Ground 1 Claims 1, 10, and 11 are obvious under 35 U.S.C. 103 in view of Jubin or, in the alternative, would have been obvious over the combined teachings of Jubin and Fifer; Ground 2 Claim 4 would have been obvious over the combined teachings of Jubin, Fifer, APA, and Cerf; Ground 3 Claim 1 would have been obvious over the combined teachings of Jubin, Fifer, and LayerNet; Ground 4 Claims 4 and would have been obvious over the combined teachings of Jubin, Fifer, APA, Cerf, and LayerNet; Ground 5 Claims 4 and would have been obvious over the combined teachings of Jubin, Fifer, APA, Cerf, LayerNet, and Schwartz; Ground 6 Claim 4 would have been obvious over the combined teachings of Kahn, Burchfiel, Schwartz, and Cerf. Claims 1 and 4, not challenged in IPR , were asserted against Petitioner after Petitioner filed the IPR petition with the Board. LayerNet (Grounds 3-5) was not previously relied upon in IPR Thus, Ground 1 (as applied to claim 1), Grounds 2-3, and Grounds 4-5 (as applied to -10-

16 claim 4) involve claims and issues not previously considered by the Board. Claim 4 has broader aspects than claim 14, and Ground 6, challenging that claim here, presents the same basis of institution as claim 14 in IPR The Board should exercise its discretion to permit these challenges. With regard to Ground 1 as applied claims 10 and 11 and Grounds 4 and 5 as applied to claims 15-19, the challenges presented here are substantially different than those in IPR See Microsoft Corp. v. Bradium Tech. LLC, IPR , Paper 9 at 9 (July 27, 2016) (exercising discretion based on whether the arguments in the Petition and the disclosures in the references are distinguished substantively from those in the initial petition ); Palo Alto Networks, Inc. v. Finjan, Inc., IPR , Paper 13 at 7 (June 23, 2016) ( sufficient differences in the way the prior art has been asserted ). The Board in IPR held 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. (Decision at ) Here, Jubin is the primary reference for Grounds 1 and 4-5 (rather than Kahn), and there are no modifications to Jubin based on Kahn (or any reference -11-

17 similar to Kahn). As Jubin was not the base reference and the Board was not asked to evaluate Jubin independently of Kahn, as presented here, the challenges are substantially different. Also, Grounds 4 and 5 rely on LayerNet, which was not previously considered by the Board. III. BACKGROUND A. Summary The 314 Patent is directed to digital networks involving wireless network systems. 314 patent, 1:13-15; 7: A wireless network system may communicate with a second network via digital communication bridge or router. Id., 7: The second network may be the Internet. Id., 7: In the wireless network, a server, implementing a server process, can act as a gateway between networks. Id., 7: Clients, each with a client machine (or controller) and a radio modem, implements a client process. Id., 7:64-8:34. Figure 1a illustrates connection between a server and client machines as tree structures. Id., 9:19-21; 9: Figure 1b illustrates a second tree structure showing optimized data communication paths. Id., 6:

18 In Figure 1a, client 18A is in direct (1 hop) radio communications with server 16. Id., 9: Client 18B, which is not in direct radio communication with server 16, communicates data packets to client 18A, which relays them to server 16. Similarly, client 18C is out of transmission range of server 16. Thus, client 18C transmits its data packets to client 18B, which relays them to client 18A, and then on to server 16 (3 hops). Figure 1b shows the scenario where client 18C has a better connection to server 16 via client 18D. Id., 9: A new radio link 34 is established between clients 18C and 18D, creating a 2-hop link for client 18C and optimizing data transmission in the network. The wireless network system calculates communication paths and optimizes its data transmissions. Id., 8: B. POSITA For purposes of this Petition, a person of ordinary skill in the art of the 314 patent ( POSITA ) is a person who has, through education or extensive practical experience, the equivalent of a Bachelor s Degree in Electrical Engineering and

19 3 years of experience in designing and developing radio communications and/or computer network systems or marketing such systems from a technical standpoint. See Heppe, 9. C. Claim Construction Because 314 patent will expire no later than December 6, 2016, Patent Owner may elect to move to apply a Phillips-type claim construction for certain terms. See (b). Because the broadest reasonable construction at least includes the construction under Phillips, Petitioner provides herein constructions that are, at minimum, within and part of the broadest reasonable interpretation. As the art herein invalidates under these narrower aspects, it is unnecessary to determine the outer boundaries of the broadest reasonable interpretation. See Vivid Techs. v. Am. Sci. & Eng g, 200 F.3d 795, 803 (Fed. Cir. 1999); Toshiba v. Global Touch Sols., IPR , Paper 10 at 5. Should Patent Owner move for a narrower construction of any specific term, Petitioner submits the claims are still invalid for the reasons presented below and reserves its right to further showing in opposition to such a motion. Except as argued for specific terms, for the purposes of this IPR only, the claim terms can be given their plain and ordinary meaning in light of the specification. Petitioner reserves the right to argue different constructions, indefiniteness, and/or construe other claims terms in any other proceedings. -14-

20 1. selecting a transmission path (claims 1 and 10) In the institution decision in IPR , the Board construed the phrase selecting a radio transmission path to said server node in claim 10 as choosing the entire path from the client to the server including the identification of all nodes in the path. Decision at 9. The term selecting a radio transmission path to said first node in claims 1 and 10 should be given a corresponding construction in this proceeding. The 314 patent itself equates a link or path with the identification of every hop to be taken en route from a client originating a packet to the server, and vice versa. The identification of every hop in the path is a fundamental aspect of the technique in the 314 patent, without which the system would not work. See Figs. 17 and 18 (adding Linking Path in header and determining Am I On The Route? ); see also 314 patent, 20:31-21:4; id., 4: Every intended hop must be identified for the operations described in the 314 patent. See Heppe, For example, the 314 patent s pooning method does not allow a client to learn new routes, or change existing routes, without a full listing of all hops along a link or transmission path. 314 patent, 20:57-22:4. Headers in the 314 patent specify each hop to be taken en route to the server, and nothing in the 314 patent discusses use of abstractions for a route. See Heppe,

21 2. first node (claim 1)/ first node providing a gateway between a wireless network and a second network (claim 4)/ gateway (claim 15) A first node or gateway encompasses a computer and attached radio modem. See Heppe, Fig. 3 of the 314 patent illustrates a computer system 38 attached to various peripherals, including radio modem patent, 12: A server process can span the computer system 38 and the radio modem patent, 12:66-13:2 ( More particularly, the server process 70 can be -16-

22 implemented on computer system 38, within the control section of the radio modem 62, or partially in both of those places. ). With regard to claims 4 and 15, the first node or gateway can be considered part of the wireless network and between a wireless network and a second network. See Heppe, 21; 314 patent, Fig. 1, col. 7: As explained in the 314 patent, a gateway can simultaneously be both in a network and between that network and another network. Id., 12:32-35 ( In FIG. 3, a block diagram of the server 16 of FIG. 1 is illustrated. In this instance, the server 16 includes a computer system 38 and a number of peripherals coupled to the computer system. ); id., 13:52-54 ( Furthermore, a router 14 or bridge can be used to couple the I/O bus 46 to the Internet 12 as previously described. ); id., 16:63-17:3 ( A router, bridge or other device is used to connect the server to a network, such as TCP /IP network 12. Of course, the radio packet modem 62 and the server computer 38 can be considered part of the wireless network system 10 as described previously. The combination of the server and the router or the like performs a gateway function, in that it provides translation services between the two networks 10 and 12. ) (emphasis added); see also id., 7:

23 3. changes to upgrade the selected transmission path (claims 1, 10)/ changes to a transmission path (claim 4)/ changes the transmission paths (claim 15) The phrases changes to upgrade the selected transmission path (claims 1 and 10), changes to a transmission path (claim 4), and changes the transmission paths (claim 15) should all be construed to encompass automatically updating transmission path data as network conditions change. See Heppe, The 314 patent describes a distributed architecture in which each client seeks the optimal routing to the gateway and changes its routing to reflect any new, more optimal, route identified by the client. See, e.g., 314 patent, 4:29-34 ( if a better link to a server becomes known to a client, where the link for a client can be updated and improved ); id., 5:13-20; id., 9:35-51; id., 9:59-12:16; and id., 20:39-21:23. Patent Owner distinguished their purported invention over the prior art identified by the Examiner ( Hayashi ) by asserting that their passive pooning process avoided the use of special search frames which increase network load. 314 PH at 608 (July 30, 2008 Response). As argued by Patent Owner, the specification discloses that each node listens to the transmissions of neighboring nodes and analyzes the transmission to determine topology and assess whether better transmission routes for its packets are available. Id., When a client node identifies a better transmission route, it reconnects to the better node and reports the new route to the server. See Heppe,

24 The server, in turn, maintains a map of the links and can provide that map to the wireless clients on request. 314 patent, 5:53-55; 9: The 314 patent teaches that, by maintaining this map, the server can properly address packets received from the wireless network or through the second network gateway to the appropriate wireless client, and furthermore allows the client[s] of the network to maintain and upgrade their data communications paths to the server. Id., 5: However, in the 314 patent, clients are described as being responsible for route determination, and servers merely keep track of the evolving topology based on actions of clients. See Heppe, 18. D. Brief Summary of the Cited Prior Art 1. Packet Radio Prior Art a. Jubin Jubin was published in 1987 and is prior art to the 314 patent under 102(b). See Ex1013. During ex parte reexamination, half of the independent claims of the 062 patent were cancelled in light of Jubin. Jubin describes a packet radio network, PRNET. Jubin at 21, col.1; Heppe, 22. Jubin s PRNET includes packet radios (PRs) and host devices connected to the PRs. The PRNET subnet provided means to interconnect users and services, each associated with a packet radio, including gateways to the Internet and wideband satellite, and fixed as well as mobile terminals. Jubin at 22, col.1; Fig. 4: -19-

25 To route packets, Jubin discloses that each PR [packet radio] is responsible for receiving a packet and relaying it on to a PR that is one hop closer to the final destination and then the packets can be routed either to another PR or to an attached device (i.e., host computer or terminal). Jubin at 22, col.2. [E]ach packet radio 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 through the use of neighbor table[s], tier table[s], and device table[s]. Jubin at 23, col.2. A PR populates its tier table by -20-

26 determining the best PR to forward a packet for a given destination. Id.at 24, col.1. See Heppe, 22. Jubin discloses that each packet radio knows its distance in tiers from any prospective destination PR and which PR is the next PR enroute to that destination PR via the tier table that also maintains the best information about how to get to a destination packet radio, the best route being defined as the shortest route with good connectivity on each hop. Id. at 24, col.2. Jubin also discloses that any device in the network may request service from any other device in a general category, e.g., any name server or any gateway. Jubin at 25, col.1. See Heppe, 23. b. Fifer Fifer was published in the same issue of the IEEE Proceedings as Jubin (January 1987), and is prior art to the 314 patent under 102(b). See Ex1023. Fifer provides additional detail on the packet radios employed in Jubin s PRNET, and Jubin references Fifer. Heppe, 25. For example, Fifer s Fig.2 provides a block diagram of a PR: -21-

27 The CPU section of the processor contains an 8086 CPU. Fifer at 39. c. LayerNet LayerNet was published in 1990 and is prior art to the 314 patent under 102(b). See Ex1023; Heppe, LayerNet describes routing in a distributed, self-organizing multi-hop radio network. LayerNet at 845. LayerNet s protocol applies to nodes having direct and indirect connections. LayerNet at 845 ( [t]he network is comprised of links ); id. ( all pairs of nodes are not directly connectable, but all nodes can be organized into a single multihop network. ). See Heppe, One node in LayerNet is defined as a starter node, LayerNet at 84, and LayerNet creates a network when the starter node sends a broadcast search -22-

28 message, which is rebroadcast by all nodes, until the broadcast reaches periphery nodes. See Heppe, Peripheral nodes initiate return messages to the starter node. Each return message contains all information about the tree below a node and the node s neighbors. When a return message is received from each of the starter node s neighbors, the starter node learns the network connectivity. LayerNet at 846; Heppe, 41. Using the complete connectivity of the network, the starter node creates a map, in the form of a tree, having minimum connectivity of the network. LayerNet at 846. [T]his entire map is then transmitted down the tree to all the nodes, thus giving them complete global information. Id.; Heppe, 42. Nodes add links to the initial tree to form a highly connected network. LayerNet at 846. Links are added when a shorter route is found. LayerNet at ( If the distance from a node to any of its physical neighbors measured along the tree by the map is greater than two hops, a link is added connecting it to that neighbor. Using this rule any node can produce a new complete map of the entire network. ). Heppe, 43. The nodes update links based on changes in network topology, and those changes are reported to other nodes, for use in updating their network maps. LayerNet at 849 ( Changes in topology can result in an old link (or node) going -23-

29 down or a new link (or node) coming up during the operation of the network. ); id. ( This information will be allowed to percolate throughout the network. ). Heppe, 44. When a change is noted, nodes search their routing tables for alternate paths to route their data packets and register the fact that the link no longer exists, which is also reported to other nodes in the network by appending this information with all data packets and negation messages. LayerNet at 849; see also id. ( This formation of new links is reported to other nodes during the course of scheduled operation in a manner similar to the reporting of a broken link. ); Heppe, 45. d. Kahn Kahn was published in 1978 and is prior art to the 314 patent under 102(b). See Ex1013; Heppe, 26. Kahn provides an overview of the basic concepts of packet radio, including a then-current (1978) description of PRNET, a multi-hop, multi-access packet radio network. Kahn at Kahn suggests that routing options be chosen based on particular PRNET applications. Kahn, 1469, col.2; Heppe, 27-28; see also Kahn, 1477, col 1 (assigning routes to minimize PR cost ). In general, packet radio uses packet-switched wireless communications for distributing information and communicating among computers. Id., The unit -24-

30 of transmission is a packet that includes a number of data bits that include all the addressing and control information necessary to correctly route it to its destination. Kahn, 1468, col.1; Heppe, 27. According to Kahn, [a] primary objective of a packet radio network is to support real-time interactive communications between computer resources (hosts) connected to the network and user terminals. Kahn, 1469, col.2. This objective is fulfilled, in part, through routing by the network. 1470, col.2. Kahn describes protocols for two routing options, point-to-point and broadcast. 1476, col.1; ). Kahn s PRNET centralizes network control protocols that have global effect in a network entity called a station. 1477, col.1. Thus, the network has a twolevel hierarch[y], with stations at the top. 1477, col.1. The station of Kahn serves as a gateway to another network, specifically the ARPANET. Id. 1470, col.1; 1494, col.2; Heppe, 28. The station assembles a map of the network, i.e., the overall connectivity of the network, as follows: Each packet radio maintains a neighbor table, which is a list of neighboring packet radios with which it is in direct communication. 1477, col.1.the packet radios communicate their neighbor tables to the station, which calculates a topological map of the connectivity of the packet radio network. 1477, col.1. Using this information, the station computes the good routes to itself from each of the radios for packets in the network. 1477, col.1 (all routes are assigned -25-

31 by the station to minimize PR cost and complexity ). The station distributes these routes to the respective packet radios. 1477, col.1. In a process known as labeling, the station must periodically label (defined at 1477, col.1 as the distribution of the route from that radio to the station) the radios in its subset. Id., 1482, col.1. In addition, the station can compute point-to-point routes for packets between each node in the network and distributes these routes as necessary. Id., 1479, col.2. See also Heppe, e. Burchfiel Burchfiel was published in 1975 and is prior art to the 314 patent under 102(b). See Ex1025. Burchfiel is referenced in the Kahn article to describe the functions of the station. See Kahn at 1477, col.1 [note 24]. Burchfiel discloses that the information for maintaining these connections [the routing connection once all of the PRs have been labelled by assigning routing] is entered into the station s connection table. Burchfiel at 247, col.2; see also Heppe, Gateway Prior Art a. Admitted Prior Art ( APA ) Applicants admitted that the construction and operation of a gateway between two networks was well-known to those skilled in the art and added no inventive contributions to those known gateway structures in the specification of the 314 patent. 314 patent, 7:33-37; Heppe,

32 b. Cerf Cerf was published in 1978 and is prior art to the 314 patent under 102(b). See Ex1013. Kahn explicitly references Cerf (Kahn, 1494). Cerf describes early ideas of internetworking, when the two ends of the connection are on different networks, such as Ethernet and packet radio. Cerf at 1387, col.1; 1388, col.2; Heppe, Cerf describes four different options for creating an internetwork. 1393, col , col.1. Each option uses a gateway between networks. Id. For Option 3, for example: The basic model of network interconnection for the datagram host gateway is that internetwork datagrams will be carried to and from hosts and gateways and between gateways by encapsulation of the datagrams in local network packets. Cerf at 1397, col.2. The gateway is a host on two networks, using whatever native network protocol each network demands on that respective network. Id., 1397, col.1. Datagrams are encapsulated within the payloads of the underlying networks. Id., col.2. Option 4 provides for translating protocols of the networks coupled by the gateway. Id., 1399, col.1. Rather than encapsulating a universal internetworking protocol inside each underlying network s native protocol, the protocols are -27-

33 semantically translated at the same layer. Id. The complexity of the translation depends on the commonality of concept between the protocols. Id. 3. Routing Optimization Prior Art - Schwartz Schwartz was published in 1988 and is prior art to the 314 patent under 102(b). Ex1026. Schwartz describes packet routing functions performed at the network layer. Schwartz, 259; Heppe, Packets may be routed along a virtual circuit or may be transmitted by datagrams. Id. In either case, the path between source and destination is established. Id. Routing paths are usually stored in routing tables at each node along the paths. Id. Routing algorithms are used to calculate the routing paths (or their equivalents) for each node. Id. Schwartz classifies routing algorithms as either those that are centrally calculated or those that are calculated in a decentralized fashion. Id. Alternatively, Schwartz classifies routing algorithms on the basis of the performance objective, e.g., shortest path, shortest delay, etc. Id. at 261. Schwartz describes that most packet-switched networks in current operation use some form of shortest-path routing in carrying out the routing function at the network layer. Schwartz, 267. Calculation of the shortest-path routes may be performed centrally or may be performed in a decentralized fashion. Id. Schwartz describes two generic algorithms for carrying out shortest path computations, -28-

34 labeled algorithms A and B. Id. Algorithm A calculates the shortest paths from a source node to all other nodes using information on the costs of each link. Id. at Algorithm B calculates the shortest path in part by calculating the cost of each link between nodes. Id., A special case of shortest-path algorithm is when the cost of each link is 1, in which case the routing algorithm calculates minimum-hop paths. Schwartz, 275, Algorithm A requires global topological knowledge, i.e., a list of all nodes in the network and their interconnections, as well as costs for each link. It thus lends itself to centralized computation, with complete topological information available at a central database. Id., 268. In the centralized form, the centralized node computes a shortest-path tree and a routing table for each node. Id., 270. The centralized node distributes the routing tables respectively. Id. Algorithms A and B are applicable to centralized and decentralized networks. Schwartz, 267, 268, 270, , 285. IV. SPECIFIC GROUNDS FOR PETITION A. Ground 1: Claims 1, 10, and 11 are obvious under 35 U.S.C. 103 in view of Jubin or, in the alternative, would have been obvious over the combined teachings of Jubin and Fifer. 1. Claim 1. a) Preamble -29-

35 If the preamble is deemed a limitation, Jubin discloses a wireless network system. Jubin, 21, col.2; Heppe, 53. b) Elements [1.1] and [1.2] Elements [1.1] and [1.2] provide parallel generic descriptions of features of nodes in a packet radio communications network, specifically a radio modem, under the command of a controller, that receives and transmits data packets. Such features are disclosed, or would have been obvious, in view of Jubin. Jubin discloses various packet radio nodes, sometimes referred to as Lowcost Packet Radio (LPR) in Jubin, each having a controller and a radio modem. The radio modem, referred to as a RF subsystem in Jubin, transmits and receives packets over the radio channel. Jubin at 22, cols.1-2 ( The LPR consists of both digital and RF subsystems. capable of transmission/reception. The digital subsystem controls the routing and flow of packets between PRs while the RF subsystem transmits and receives packets over the radio channel. ). The controller, referred to as a digital subsystem in Jubin, controls the routing and flow of packets between PRs, id. at 22, col.2, satisfying the requirement for a process that includes controlling said [first/second] node radio modem. See Heppe, Fifer, referenced by Jubin (pp. 22 and 30), offers more detail on Jubin s LPRs. Fifer explicitly identifies the digital controller used in the radio for protocol -30-

36 processing (an 8086 CPU), and notes the existence of other processors (dual 8089 CPUs) and circuitry for transmitter-receiver I/O processing, FEC encode/decode, CRC encode/decode, and other transmit-receive functions (Fifer at 39, col.2). A POSITA would have found it obvious to provide the LPR of Fifer in Jubin for a number of reasons. Jubin specifically references Fifer for more information about LPRs, and a POSITA would have viewed Fifer as providing certain more detailed descriptions of packet radio components in Jubin, the incorporation of which would have been obvious. Modification of Jubin to include Fifer s additional details regarding LPRs would have provided the predictable result of providing components to achieve packet radio communications and networking. In this regard, providing Fifer s LPRs in Jubin s network would have provided the hardware and firmware components for packet radio communications referenced by Jubin. Also, the inclusion of details of Fifer s LPRs into Jubin s packet radios would have involved a simple enhancement of the hardware and firmware components of Jubin with the components of Fifer, each of which provide radio communications. The LPRs of Fifer were known components for packet radio networks and use of the LPRs in Jubin would have improved Jubin s packet radio network in the same manner by providing a component for radio communications. It also would have been obvious to try to use Fifer s LPR in Jubin s packet radio network, as trying a solution -31-

37 suggested by Jubin would have been reasonable and would have yielded a predictable result with a high expectation of success, particularly given the mutual disclosures in Jubin and Fifer. Fifer s work in the same field of endeavor as Jubin would have prompted its use in Jubin based on design incentives such as providing a known solution and design for a packet radio node. See Heppe, c) Element [1.3] Note that, prior to element [1.3], claim 1 makes no distinction between the first node and second nodes. Thus, any node in Jubin could serve as a first node or a second node. As will be discussed below (e.g., with regard to element [10.1]), in other claims, and in the specification, there is a correspondence between elements of the first node and a server or gateway and between elements of the second nodes and clients. With that understanding, Jubin discloses a routing methodology that allows each of the packet radios, or second nodes, to select routes to another packet radio, including, for example, a packet radio associated with a gateway service. Name servers and gateways, along with their associated PRs, both fall within the scope of the first node set forth in claim 1. Specifically, Jubin advises that [e]ach packet radio 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 through -32-

38 the use of neighbor table[s], tier table[s], and device table[s]. Jubin at 23, col.2. A PR populates its own neighbor and tier table by determining the best PR to which to forward a packet for a given destination. Id. at 24 (defining the best route as the shortest route with good connectivity). The route selected by a packet radio can be direct or through another packet radio. With regard to the small packet radio network of Jubin s Fig. 2, Jubin explains, Since PRs L, N, and Q are all within line-of-sight of M, a transmission by M can be received by all of these PRs; they are said to be one hop away from M. Note, however, that a transmission by, say, PR P can be received only by PRs L and N. In general, a PRNET consists of many PRs that are not all within line-of-sight of each other, and packets must traverse multiple hops to reach their destination. Jubin at 22, col.2. As part of the selection of a route, Jubin maintains a tier table, which shows direct connections (tier 1) and connections through another route (tier 2 or more). With regard to the example network shown, packet radio N can select a -33-

39 direct route to packet radio M, for example, (instead of an indirect route to M through P and L), and an indirect route, through M, to packet radios L or O. If packet radio N determines that its route to M has degraded, packet radio N would select the longer, indirect route to packet radio M. Jubin at 24, col.2 ( When the link quality to a neighboring PR (say the link from PR N to PR M) becomes bad, all routes in N s tier table for which the neighbor PR M is the next PR in the route are also set bad. This means that M can no longer provide a reliable way for N to send packets to a destination PR, and a new next PR should be chosen, and thus a new, good route can be formed even if it is longer than the old, bad one. ). See Heppe, In the small packet radio network of Jubin s Fig. 2, where each node is no more than two tiers away from another node, a node sending a communication to another node will include the hop-by-hop path to reach the destination. Jubin explains that the routing header of a packet includes a source PR ID, a Next PR ID, and a Destination PR ID. Jubin at 25, col.1. Jubin also provides an example of a communication from device 1, connected to node L, to a destination node N. Jubin at 26, col.1. Node L can be associated with the claimed second node, and node N can be associated with the claimed first node. The packet sent from node L includes a destination PR ID of N, a transmitting PR ID of L, and a next PR ID of M. Jubin at 26, col.1. Thus, Jubin discloses the selecting limitation, including -34-

40 choosing the entire path from the second node to first node including the identification of all nodes in the path (see Section III.C.1 supra). See Heppe, 63. This analysis mirrors the analysis relied upon to cancel similar claims in the ex parte reexamination of the 062 patent. Ex1022 at 31. d) Element [1.4] Jubin discloses that the selected path utilizes the least number of other second nodes, such that said transmission path from each of said second nodes to said first node is optimized. As discussed above, each of the packet radios in Jubin maintains its own optimal tier table, which reflects the optimal path to any destination. Jubin explains that the best route is currently defined as the shortest route with good connectivity on each hop and that the tier table is updated only when certain conditions are met. Jubin at 24, col.2 (emphasis added). One condition is that the prospective new tier ('T') is strictly less than the stored one (id.) thereby utilizing the least number of other second nodes. In particular, when this condition triggers an update, fewer other nodes would be selected on the path. See also Heppe, e) Element [1.5] Jubin discloses that the first node controller implements changes to upgrade the selected transmission path in response to a request from at least one of said second nodes. Nodes in Jubin disclose good news and bad news, and data -35-

41 packets requesting response to other nodes. Each of these communications, especially the bad news, requests that the first node controller implement changes to upgrade the selected transmission path. See Heppe, Specifically, Jubin teaches a distributed routing process whereby individual nodes exchange PROP packets (Packet Radio Organization Packets) every 7.5 seconds. These are used to build and maintain neighbor tables, tier tables and device tables. Jubin, pp Once a PR begins participating in the network, data packets it passes are used, in addition to the PROPs, to maintain tables. Id., p. 24. As discussed above, a node makes routing decisions and selects a radio transmission path based on these tables. Jubin teaches that, [t]he goal of the tier table is always to maintain the best information about how to get to a destination packet radio. The best route is currently defined as the shortest route with good connectivity on each hop. Jubin, p. 24 (introducing discussion of how the tier table is updated). Because of the updating protocol, and the fact that PROPs are only exchanged periodically, nodes might not be in agreement on the best radio propagation path between them at a given point in time. Because Jubin teaches that the data packets are used in addition to the PROPs to maintain the neighbor table (id., p. 24), any packet that demands a response packet is an implicit request for an upgrade to the first node s routing tables, regardless of any other purpose of -36-

42 the data exchange. See Heppe, Thus, when a node in Jubin (taken alone or in combination with Fifer) sends a packet demanding a response to another node, it also requests that the first node controller upgrade a previously selected path. See Heppe, PROP data is also evaluated to determine the best route to a destination packet radio, and the first node s tier table is updated if certain conditions are met. Jubin at 24, col.2. In addition to the sending of good tier data, another node can request that the first node controller upgrade its tier table by sending a PROP noting bad tier data. Jubin, page 24, col.2. In response to the bad tier data, the first node upgrades the selected transmission path to a good route, instead of using a previously selected transmission path. Thus, disclosures by nodes in Jubin of good news and bad news, and data packets requesting responses from second/client nodes, can induce a first node controller to implement changes to upgrade the selected transmission path (in response to a request) from at least one of said second nodes. Heppe, Claim 10 a) Element [10.1] Claim 1 refers to a plurality of second nodes. Those same nodes are referred to as client nodes in claim 10. These two claims are similar in other respects as well. Claim 10 states in its preamble that the network includes a server -37-