Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 48
` Entered: September 9, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00501
`Patent 7,136,392 B2
`____________
`
`
`
`Before MICHAEL W. KIM, PATRICK R. SCANLON, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`571-272-7822
`
`
`
` Paper 48
` Entered: September 9, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00501
`Patent 7,136,392 B2
`____________
`
`
`
`Before MICHAEL W. KIM, PATRICK R. SCANLON, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`Case IPR2014-00501
`Patent 7,136,392 B2
`
`
`
`
`I. INTRODUCTION
`
`Motorola Mobility LLC (“Petitioner”) filed a Petition to institute an
`
`inter partes review of claims 1–21 of U.S. Patent No. 7,136,392 B2 (“the
`
`’392 patent”) pursuant to 35 U.S.C. § 311–319. Paper 4 (“Pet.”).
`
`Intellectual Ventures I LLC (“Patent Owner”) filed a Preliminary Response.
`
`Paper 8 (“Prelim. Resp.”). We instituted trial on all challenged claims.
`
`Paper 13 (“Dec.”).
`
`During trial, Patent Owner filed a Patent Owner Response (Paper 22,
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`“PO Resp.”), which was accompanied by a Declaration from Ahmed
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`Tewfik, Ph.D. Ex. 2004 (the “Tewfik Declaration”). Petitioner filed a
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`Reply to the Patent Owner Response. Paper 28 (“Pet. Reply”). A hearing
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`for this proceeding was held on May 5, 2015. A transcript of the hearing has
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`been entered into the record. Paper 47 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`We determine that Petitioner has shown by a preponderance of the evidence
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`that claims 1–3, 7, 9–12, and 16–18 of the ’392 patent are unpatentable.
`
`Patent Owner’s Motion to Exclude (Paper 35) is dismissed-in-part and
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`denied-in-part.
`
`A. Related Proceedings
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`Petitioner represents that the ’392 patent has been asserted against it
`
`by Intellectual Ventures I LLC and Intellectual Ventures II LLC in
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`Intellectual Ventures I LLC v. Motorola Mobility LLC, No. 0:13-cv-61358-
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`RSR (S.D. Fla.) (“the district court case”). Pet. 1–2; Ex. 1007.
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`B. The ’392 Patent
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`The ’392 patent relates to a communication network having a plurality
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`of stations that share a communication channel. Ex. 1001, 1:65–67. Each
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`internal queue of a station accumulates and releases, for transmission during
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`an appropriate transmission opportunity, data messages that have a specific
`
`traffic classification, and thus, a different level of priority than those
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`accumulated and released by other internal queues of that station. Id.
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`at 2:1–7. “[P]referential access to the shared communication channel is
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`given to data messages having higher levels of priority.” Id. at 2:9–11. The
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`release of data messages having the same level of priority, however, is
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`governed by a set of parameters that is common for all stations of the
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`network. Id. at 2:13–16. Thus, the ’392 patent states, transmission
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`opportunities are fairly allocated between all queues containing data
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`messages of the same priority level. Id. at Abstract.
`
`C. Illustrative Claims
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`Of the challenged claims, claims 1, 7, 9, and 16 are independent.
`
`Claim 1 is illustrative of the claims at issue:
`
`1. A method comprising:
`directing to a first output queue at a first station of a
`communication network, message data units to be transmitted
`over a communication medium and having a first traffic
`classification;
`directing to a second output queue at the first station,
`message data units to be transmitted over the communication
`medium and having a second traffic classification; and
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`3
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`sensing the communication medium for an opportunity to
`transmit message data units without interference from message
`data units transmitted by a second station, according to sets of
`rules that vary by traffic classification yet are common to the
`first station and the second station.
`
`Ex. 1001, 11:45–59.
`
`D. Prior Art Supporting Instituted Unpatentability Grounds
`
`Ayyagari ’508, U.S. 7,079,508 B2, issued July 18, 2006 (Ex. 1003).
`
`Arun Ayyagari et al., IEEE 802.11 Quality of Service — White Paper,
`IEEE 802.11-00/028, Feb. 15, 2000 (“Ayyagari White Paper”)
`(Ex. 1005).
`
`IEEE Standard for Information technology — Telecommunications
`and information exchange between systems — Local and metropolitan
`area networks — Specific requirements; Part 11: Wireless LAN
`Medium Access Control (MAC) and Physical Layer (PHY)
`Specifications, ANS/IEEE Std. 802.11 (1999) (“IEEE 802.11 1999”)
`(Ex. 1009).
`
`
`
`E. Instituted Unpatentability Grounds
`
`We instituted an inter partes review of claims 1–21 of the ’392 patent
`
`on the following grounds. Dec. 23.
`
`References
`
`Ayyagari ’508
`
`Basis
`
`§ 102(e)
`
`Claim(s)
`Challenged
`1–21
`
`Ayyagari White Paper
`
`§ 102(b)
`
`1–9 and 11–21
`
`Ayyagari White Paper and IEEE 802.11 1999 § 103(a)
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`II. ANALYSIS
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`We have reviewed the Petition, the Patent Owner Response, and
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`Petitioner’s Reply, as well as the relevant evidence discussed in those
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`papers. The parties focus their arguments on whether the Ayyagari
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`references are prior art, and also on several terms or common limitations
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`present in certain claims of the ’392 patent, namely:
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`(A) attempting to initially transmit/as if (claims 4–6, 8, 13–15, and
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`19–21);
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`(B) “means for sensing” (claims 16–21);
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`(C) sensing a transmission opportunity (claims 9–15); and
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`(D) transmission at a particular opportunity (claims 2, 7, 11, and 17).
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`A. Claim Construction
`
`The Board interprets claims in an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
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`they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793
`
`F.3d 1268, 1277–79 (Fed. Cir. 2015), reh’g en banc denied, 2015 WL
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`4100060 (Fed. Cir. July 8, 2015); see also Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). Under that
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`construction, claim terms are given their ordinary and customary meaning,
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`as would be understood by one of ordinary skill in the art in the context of
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`the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007).
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`In the Decision to Institute, we construed various terms reciting
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`“means,” in claims 16–20: “means for directing to a first output queue,”
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`“means for directing to a second output queue,” “means for sensing,”
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`“means for allowing,” “means for attempting to retransmit,” “means for
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`attempting to initially transmit,” and “means for attempting to transmit.”
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`Dec. 7–11. Patent Owner indicates that it does not contest the Board’s
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`constructions of the construed claim terms. PO Resp. 6. Petitioner relies on
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`these constructions in its Reply. Pet. Reply 9–13. Based on considering
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`anew the complete record now before us, we see no reason to alter our
`
`earlier constructions, and maintain the constructions for this Final Written
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`Decision. We see no need to construe expressly any other claim limitations.
`
`B. Summary of Prior Art
`
`1.
`
`Ayyagari ’508 (Ex. 1003)
`
`Ayyagari ’508 discloses providing “Quality of Service assurances in a
`
`manner expected in other media to communications over paths that include
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`one or more wireless links.” Ex. 1003, Abstract. Ayyagari ’508 combines a
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`subnet bandwidth manager at an access point to track allocations of wireless
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`bandwidth, and “incorporates multiple priority levels for packet transmission
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`in a two-prong stochastic scheme.” Id. This scheme assures that data
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`packets are transmitted based on priority and prior failure to transmit due to
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`a collision. Id. at 3:56–57. Specifically, Ayyagari ’508 discloses that
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`“packets with a similar priority level are queued together to ensure earlier
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`transmission of higher priority packets than packets having lower priority.”
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`Id. at 5:30–33.
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`2.
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`Ayyagari White Paper (Ex. 1005)
`
`The Ayyagari White Paper notes “[w]hile IEEE 802.11 provides high
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`bandwidth connectivity in a LAN environment that is suitable for most data
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`applications, it does not meet Quality of Service (QoS) requirements for
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`real-time data traffic applications such as voice and video transmissions.”
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`Ex. 1005, 2. The Ayyagari White Paper proposes “the combined use of
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`resource based admission and traffic flow control and expedited
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`transmission of higher priority data over the shared wireless network as the
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`mechanisms to provide QoS guarantee for real-time application data traffic
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`in IEEE 802.11.” Id. at Abstract. The Ayyagari White Paper depicts one
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`version of its proposed system of utilizing a tag that “carries one of eight
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`priority values that correspond to one of eight possible service levels” in
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`Figure 1. Id. at 5. In the Ayyagari White Paper, the network devices
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`“transmit the frames based on the non-gated head-of-line priority scheme
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`where transmission of the frame with the highest priority in the simple first
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`in first out (FIFO) priority queue is scheduled ahead of the rest of the queued
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`frames.” Id.
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`
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`1.
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`Prior Art Status of Ayyagari ’508
`
`C. Priority Arguments
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`Certain dates relevant to this discussion are as follows, in reverse
`
`chronological order:
`
`
`’392 patent filing date
`Ayyagari ’508 filing date
`Wentink Declaration
`
`
`
`
`
`
`Ayyagari Provisional filing date
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`
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`
`
`a.
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`Ayyagari Provisional
`
`August 31, 2001
`February 22, 2001
`alleged reduction to practice by
`January 2001
`alleged conception date prior to
`November 3, 2000
`February 23, 2000
`
`Petitioner states that “Ayyagari ’508 claims priority to U.S.
`
`Provisional Application No. 60/184,290 (Ex. 1005), filed on February 23,
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`2000, which is also prior to the August 31, 2001 filing date of the ’392
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`patent, and thus is prior art under 35 U.S.C. §102(e).” Pet. 15–16. On its
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`face, Ayyagari ’508 discloses, under “Related U.S. Application Data,”
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`“Provisional application No. 60/184,290, filed on Feb. 23, 2000.” Ex. 1003,
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`Cover Page. The Petition further states: “Analysis of the disclosure of
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`Provisional Application No. 60/184,290 (Exhibit 1005) with respect to the
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`claims of the ’392 patent, and thus the priority of the Ayyagari ’508 patent,
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`is included in the analysis of Ayyagari White Paper (Exhibit 1006), below.”
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`Pet. 16 n.2.
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`Patent Owner argues that “the Petition does not establish that the
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`portions of Ayyagari ’508 relevant to this IPR are entitled to the provisional
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`filing date.” PO Resp. 51. Patent Owner argues that, because Petitioner has
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`the burden of establishing the Ayyagari ’508 102(e) date, and because the
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`Petition does not set forth any evidence that Ayyagari ’508 is entitled to the
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`provisional filing date, Ayyagari ’508’s 102(e) date should be February 22,
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`2001 rather than February 23, 2000. Id. at 51–52.
`
`The Petition provides one claim chart comparing the claims of the
`
`’392 patent to Ayyagari ’508 (Pet. 17–36), and a separate claim chart
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`comparing the claims of the ’392 patent to the Ayyagari White Paper and
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`Ayyagari Provisional (Pet. 38–59). Petitioner also states that the “Ayyagari
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`White Paper is also substantively identical to Provisional Application
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`60/184,290 [the Ayyagari Provisional].” Pet. 37. In question, however, is
`
`not the relationship of the Ayyagari Provisional to the Ayyagari White
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`Paper, but the relationship of Ayyagari ’508 to the Ayyagari Provisional.
`
`With respect to entitlement to any earlier effective priority date, a
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`party must identify, specifically, the disclosure in ancestral applications
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`“which do not share the same disclosure,” and which allegedly show § 112
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`support for the relied-upon priority date. See, e.g., Polaris Wireless, Inc. v.
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`TruePosition, Inc., Case IPR2013-00323, slip. op. at 29 (PTAB Nov. 15,
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`2013) (Paper 9). To link the Ayyagari Provisional with Ayyagari ’508,
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`Petitioner relates the claims of the ’392 patent to Ayyagari ’508, and then,
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`separately, relates the claims of the ’392 patent to the Ayyagari Provisional.
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`This triangulation does not meet Petitioner’s burden of showing that
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`Ayyagari ’508 is entitled to the earlier filing date of the Ayyagari
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`Provisional. Specifically, while the cited portions of the Ayyagari
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`Provisional and Ayyagari ’508 may each disclose a certain claim limitation,
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`the disclosures may be in different embodiments or contexts such that the
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`cited portion of the Ayyagari Provisional does not provide an adequate
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`ancestral basis for the cited portion of Ayyagari ’508. Petitioner should not
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`expect the Board to search the record and cull the evidence necessary to
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`support Petitioner’s arguments. Amazon.com, Inc. v. Personalized Media
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`Comm., LLC, Case IPR2014-01533, slip op. at 6 (PTAB April 20, 2015)
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`(Paper 16); cf., DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999)
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`(“A brief must make all arguments accessible to the judges, rather than ask
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`them to play archeologist with the record.”). Petitioner has not, in its case-
`
`in-chief, linked the Ayyagari Provisional disclosure with the Ayyagari ’508
`
`disclosure in a sufficient manner to meet its burden. Petitioner has not
`
`shown that Ayyagari ’508 is entitled to a priority date any earlier than its
`
`actual filing date of February 22, 2001.
`
`
`
`b. Wentink Declaration
`
`Petitioner also alleges that the Wentink Declaration and Exhibits,
`
`submitted during prosecution of the ’392 patent, are insufficient to establish
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`any date of invention prior to the August 31, 2001, filing date of the ’392
`
`patent. Pet. 4–5. The Wentink Declaration states that the date of conception
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`was “[s]ome time before . . . November 3, 2000,” and alleges diligence until
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`its “eventual reduction to practice in January 2001.” Ex. 1002, 132, 134.1
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`Patent Owner argues that the Wentink Declaration and supporting
`
`evidence establish a conception and reduction to practice of the claimed
`
`invention prior to the February 22, 2001 filing date of Ayyagari ’508.
`
`PO Resp. 28. Narrowing the focus of its argument and relying on 37 C.F.R.
`
`§ 1.131(b) and MPEP § 715.07(III)(A), which requires “(actual) reduction to
`
`practice of the invention prior to the effective date of the reference,” Patent
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`Owner argues that the Wentink Declaration and evidence show an actual
`
`reduction to practice by January 2001. Id. at 28–29, 47–51. Patent Owner
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`provides a claim chart comparing the ’392 patent claims to “Wentink’s Facts
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`and Evidence” to corroborate that Wentink had possession of each element
`
`of the claimed invention prior to February 2001. Id. at 34–47. Notably,
`
`however, apart from the Section 131 declaration, no declaration by or
`
`deposition of Mr. Wentink are in the record. Petitioner’s argument in the
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`Patent Owner Response, and its claim chart, rely on the Tewfik Declaration
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`as support. Ex. 2004.
`
`Petitioner responds that the Tewfik Declaration is “[t]he only possibly
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`relevant addition to the record” since the Decision to Institute, and that the
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`claim chart linking the claims to the Exhibits to the Wentink Declaration is
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`“facially deficient.” Pet. Reply 2. Petitioner argues that (1) Dr. Tewfik’s
`
`stated understanding of the relevant legal standards is incorrect, in that one
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`cannot show alleged reduction to practice by showing possession of the
`
`
`1 For the purposes of this Decision, we refer to Petitioner’s inserted page
`numbers in Exhibit 1002, rather than the original page numbers of the
`relevant documents.
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`“heart of the invention” (id. at 3); (2) the Tewfik Declaration fails to discuss
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`the Board’s claim constructions with regard to the Wentink Declaration and
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`supporting exhibits (id.); (3) nothing in the Response “supplements, or
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`corroborates, the Wentink Declaration’s inadequate evidence of diligence,”
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`(id. at 4); (4) the only evidence suggesting Exhibit F represents a reduction
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`to practice of the claimed invention consists of the uncorroborated
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`statements in the Wentink Declaration (id.); and (5) Patent Owner takes the
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`position that Mr. Wentink need not be produced for cross-examination (id. at
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`4–5).
`
`As we noted in our Decision to Institute, we are not bound by the
`
`implicit determinations of the Examiner regarding the Wentink Declaration.
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`Dec. 12. Nevertheless, upon review of the complete record, we remain
`
`unpersuaded by Patent Owner’s arguments that the reduction to practice date
`
`is prior to the filing date of Ayyagari ’508.
`
`Establishing an actual reduction to practice requires three things:
`
`(1) construction of an embodiment or performance of a process that met all
`
`the limitations of the claims; (2) determination that the invention would
`
`work for its intended purpose; and (3) the existence of sufficient evidence to
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`corroborate inventor testimony regarding these events. Medichem, S.A. v.
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`Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006) (quoting Cooper v.
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`Goldfarb, 154 F.3d 1321, 1327, 1330 (Fed. Cir. 1998)); see Mahurkar v.
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`C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996). A rule of reason
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`applies to determine whether the inventor’s testimony has been
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`corroborated. Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993).
`
`The Wentink Declaration provides exhibits showing activity at
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`specific times from October 2000 to January 2001, including Exhibit F, a
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`presentation given in January 2001. Ex. 1002, 133–134. As is relevant to
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`Patent Owner’s actual reduction to practice argument, the inventor declares:
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`In January 2001, Greg Chesson did complete a simulator that
`embodied the VDCF concepts within the D-QoS standard,
`thereby actually reducing the invention to practice as reflected
`in Exhibit F. Exhibit F, labeled “Simulation Results for QoS,
`pDCF, VDCF, Backoff/Retry” and presented to the 802.11
`Task Group E in January 2001, provides a number of test
`results generated from the simulator. See slides 11, 20–23, and
`27–34, for example.
`
`Id. at 134. This alleged reduction to practice date of January 2001 would
`
`have been prior to the filing date of Ayyagari ’508.
`
`Patent Owner must establish reduction to practice of the subject
`
`matter of each of the challenged claims. In our Decision to Institute, we
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`stated that the Wentink Declaration “does not appear to provide sufficient
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`detail relating VDCF as described in the Exhibits to the subject matter of
`
`each of the challenged claims.” Dec. 14. In response, Patent Owner
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`provides the claim chart in its Response. PO Resp. 34–47.
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`We are concerned, primarily, at the unavailability of Mr. Wentink to
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`explain the alleged reduction to practice embodied in Exhibit F. In
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`evaluating a Patent Owner’s reliance on a declaration, we take into
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`consideration whether Petitioner has had an opportunity to cross-examine
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`the declarant. Amneal Pharms., LLC v. Endo Pharms. Inc., Case IPR2014-
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`00360, slip op. at 4 (PTAB December 3, 2014) (Paper 39). If Patent Owner
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`does not produce a declarant for cross-examination, we will give that
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`declaration little to no weight. See Mexichem Amanco Holdings S.A. de C.V.
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`v. Honeywell Int’l, Inc., Case IPR2013-00576, slip op. at 3 (PTAB Sept. 5,
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`2014) (Paper 36). Petitioner, upon requesting deposition availability for Mr.
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`Wentink, was informed by Patent Owner that “[w]ith respect to Mr.
`
`Wentink, Patent Owner does not believe it is required, under the rules, to
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`produce Mr. Wentink for deposition.” Ex. 1017 (corrected), 1. No further
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`explanation of Patent Owner’s interpretation of the rules, or regarding
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`availability of Mr. Wentink for deposition, is before us. Although we have
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`no reason to question Dr. Tewfik’s credentials, his value as a witness is
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`compromised heavily by his distance from and post hoc evaluation of the
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`circumstances of the alleged reduction to practice of the invention. Patent
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`Owner is correct that it was not required, under the rules, to make Mr.
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`Wentink available for cross-examination. Under these circumstances,
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`however, we accord Mr. Wentink’s declaration little weight.
`
`The Wentink Declaration states that Exhibit E, a presentation given to
`
`the IEEE 802.11 Task Group E in November 2000, set forth a baseline
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`proposal for the D-QoS mechanism. Id. at 133. The Wentink Declaration
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`further states that “[a]s part of the Task Group E efforts, Greg Chesson
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`prepared a simulator that embodied concepts proposed to be incorporated
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`within the D-QoS standard.” Id. The statement that the simulator
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`“embodied concepts proposed to be incorporated” is insufficient to
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`demonstrate that all the limitations of the ultimately claimed invention were
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`to be tested. With no further testimony from Mr. Wentink, the relationships
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`among the Exhibit E proposal, the Exhibit F results, and the ultimately
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`claimed invention remain unclear. Thus, we are not persuaded that Mr.
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`Wentink’s testimony supports sufficiently an actual reduction to practice, as
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`it does not persuasively support construction of an embodiment or
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`performance of a process that met all the limitations of the claims, or a
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`determination that the invention would work for its intended purpose.
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`Furthermore, we are not persuaded that the testimony of Dr. Tewfik
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`corroborates sufficiently the Wentink Declaration, or in and of itself meets
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`the first and second requirements of proof of actual reduction to practice.
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`See Medichem, S.A., 437 F.3d at 1169. As we noted, Dr. Tewfik’s value as a
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`witness is limited by his post hoc evaluation of the circumstances and the
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`content of the invention. Dr. Tewfik takes the various Exhibits proffered in
`
`the Wentink Declaration and applies them to the subject claims. Although
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`the various Exhibits, as marshalled by Dr. Tewfik, may provide bits and
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`pieces of the ultimately claimed invention, we do not, without further
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`information about the links between the Exhibits, place much weight on the
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`claim chart provided in the Response. We agree with Petitioner that Patent
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`Owner has provided “no additional information regarding what simulation
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`was performed, whether the simulation included all the claim limitations, or
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`even whether any physical embodiment that incorporated or could perform
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`the claim limitations existed prior to the filing of the application for either
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`Ayyagari [’]508 or the [’]392 Patent itself.” Pet. Reply 4. Dr. Tewfik could
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`not determine the technical content of the simulation, which is discussed
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`broadly in Exhibit F, and did not examine any code for the simulation to
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`determine what it actually did. Id. (citing Ex. 1018, 13:12–21, 24:17–25:5).
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`We have considered all of Patent Owner’s arguments and evidence in
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`support of the effort to antedate Ayyagari ’508. We find that Patent Owner
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`has not carried its burden of producing sufficient evidence and corroboration
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`to demonstrate a reduction to practice date prior to February 2001.
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`Therefore, because the Ayyagari ’508 filing date is prior to the ’392 patent
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`filing date, Ayyagari ’508 constitutes prior art in this proceeding.
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`Patent 7,136,392 B2
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`Prior Art Status of the Ayyagari White Paper
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`2.
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`Petitioner alleges that the Ayyagari White Paper “was published to the
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`IEEE database of 802.11 WG documents on January 25, 2000.” Pet. 36.
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`With its Petition, Petitioner submitted Exhibit 1005 (Ayyagari White Paper)
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`that on its face indicates “Date: February 15, 2000,” and Exhibit 1006 (IEEE
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`802.11 Documents) identifying the Ayyagari paper as “Uploaded” on
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`February 25, 2000. Ex. 1006, 7. We noted in the Decision to Institute that
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`none of these alleged publication dates removes the Ayyagari White Paper
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`as a reference under § 102. Dec. 17.
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`Patent Owner alleges that the Petition fails to establish that the
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`Ayyagari White Paper is prior art, as the Petition and the expert’s
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`“conclusory statements, unsubstantiated by any documentary evidence or
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`testimonial evidence of anyone with knowledge of the alleged publication of
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`Ayyagari White Paper, are entitled to no weight.” PO Resp. 54. Patent
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`Owner argues that Petitioner has not met its burden to show that Ayyagari
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`White Paper is a “printed publication” and cannot rely upon evidence raised
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`in its Reply to establish that Ayyagari White Paper is prior art. Id.
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`Petitioner responds that the Ayyagari White Paper (i) on its face,
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`demonstrates that it was submitted as of February 15, 2000; (ii) was
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`published to the IEEE 802.11 Working Group database at least as of
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`February 25, 2000, as shown in Exhibit 1006, and (iii) that Patent Owner has
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`failed to provide additional evidence to change the Board’s initial
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`determination that the Ayyagari White Paper is prior art. Pet. Reply 5.
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`Petitioner submits testimony that “all submissions (as opposed to draft
`
`standards) uploaded to the IEEE’s database were publicly available via an
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`IEEE-maintained FTP site or website, and any member of the public
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`15
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`interested in submissions to any task group could access those submissions
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`at the FTP site or website.” Id. at 5–6 (citing Declaration of Harry Worstell,
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`Vice Chair of the IEEE 802.11 Working Group from 2000 to 2008, Ex.
`
`1010, 4); see also Exs. 1013, 1014. The Ayyagari White Paper itself,
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`according to the testimony of Mr. Worstell, “would have been publicly
`
`available as of the upload date and time February 25, 2000 at 7:56:48 AM
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`(Eastern Time) or within a few days thereafter.” Id. at 6 (citing Ex. 1010, 6).
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`Although the ultimate determination of whether a document is a
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`printed publication is a question of law, it is a question that is closely based
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`on the underlying facts and circumstances surrounding the disclosure of a
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`document to members of the public. Suffolk Techs., LLC v. AOL Inc., 752
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`F.3d 1358, 1364 (Fed. Cir. 2014); SRI Int’l, Inc. v. Internet Sec. Sys., Inc.,
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`511 F.3d 1186, 1192 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345,
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`1350 (Fed. Cir. 2004). Public accessibility is a key question in determining
`
`whether a document is a printed publication and is determined on a case-by-
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`case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed
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`publication, a document “must have been sufficiently accessible to the
`
`public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
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`2009).
`
`“A given reference is ‘publicly accessible’ upon a satisfactory
`
`showing that such document has been disseminated or otherwise made
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`available to the extent that persons interested and ordinarily skilled in the
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`subject matter or art exercising reasonable diligence, can locate it.” SRI
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`Int’l, 511 F.3d at 1194 (quoting Bruckelmyer v. Ground Heaters, Inc., 445
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`F.3d 1374, 1378 (Fed. Cir. 2006)).
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`16
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`The Ayyagari White Paper, on its face, has a date of February 15,
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`2000. Ex. 1005, 1. The IEEE 802.11 Documents webpage indicates that the
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`Ayyagari White Paper was uploaded on February 25, 2000. Ex. 1006, 7.
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`The question of whether the upload rendered the Ayyagari White Paper
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`publicly accessible was addressed persuasively by Petitioner’s deponent
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`Harry Worstell, and not challenged by Patent Owner. To that end, we
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`determine that evidence submitted with Petitioner’s Reply is properly before
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`us because (1) the Petition provided sufficient evidence to make at least an
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`initial determination that the Ayyagari White Paper was publicly accessible;
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`(2) the evidence was submitted in reply to Patent Owner’s arguments; and
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`(3) Patent Owner had an opportunity to challenge the evidence, in particular,
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`the opportunity to cross-examine Mr. Worstell.
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`The evidence submitted with the Petition, and supplemented with
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`properly submitted evidence, supports that the Ayyagari White Paper was
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`publicly available as of at least February 25, 2000. The IEEE reference, as
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`explained by Mr. Worstell, illustrates that the linked document was
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`disseminated or otherwise made available to the extent that persons
`
`interested and ordinarily skilled in the subject matter or art exercising
`
`reasonable diligence could locate it. Ex. 1010, 4. We conclude that the
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`Ayyagari White Paper was published at least as early as February 25, 2000,
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`for the same reasons explained in the Decision to Institute. Patent Owner on
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`this complete record does not show persuasively that the sources Petitioner
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`relies upon to show a publication date are incorrect. Accordingly, we
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`determine that Petitioner has met its burden of showing that the Ayyagari
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`White Paper is prior art to the ’392 patent.
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`17
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`D. Analysis of Unpatentability Challenges
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`Group A: Claims 4–6, 8, 13–15, and 19–21:
`Attempting to Transmit/As If
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`Claims 4–6, 13–15, and 19–21 of the ’392 patent each require
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`attempting to “initially transmit a first message data unit . . . as if an
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`unsuccessful attempt to transmit the first message data unit had already been
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`made during a previous transmission opportunity.” PO Resp. 7 (citing Ex.
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`2004 ¶ 31). Patent Owner argues that neither Ayyagari reference discloses
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`this limitation, as the Ayyagari system is not concerned with “internal
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`collisions” or pre-emption. Id. at 8.
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`Patent Owner characterizes “internal collision” or pre-emption as a
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`situation in which a “single station with multiple schedulers could possibly
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`attempt to transmit messages from multiple queues within that station at the
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`same time.” Id. at 2. Patent Owner calls this scenario an “internal collision”
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`because “it is similar to an ‘external collision’ in which multiple stations in
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`the network attempt to transmit messages at the same time.” Id. Petitioner
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`characterizes an “internal collision” as the situation in which, “when two
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`queues within a station have data that are ready to transmit at the same time,
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`the scheduling coordination function in the station will pick one packet from
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`one queue (the higher priority queue) and identify it as the packet to be
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`transmitted.” Pet. Reply 7.
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`Patent Owner states that, in relation to this limitation, “this message
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`that’s being preempted, is going to be treated as if it’s already tried to go out
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`and access the medium, and it’s been backed off.” Tr. 29:16–18. Patent
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`Owner emphasizes that the “initially transmit” language is important, in that
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`18
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`before the message that is being preempted has even “gone out and been
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`interfered with” it is given the backoff treatment. Id. at 35:10–12.
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`1.
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`Ayyagari ’508
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`Petitioner relies on the following language in Ayyagari ’508 to
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`disclose the disputed limitation: “a packet with higher priority than a packet
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`waiting during step 640 may be transmitted if the higher priority packet has
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`a shorter wait time even if it results in the superseded packet being forced
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`into another backoff state.” Pet. 22 (citing Ex. 1003, 13:61–65).
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`Patent Owner argues that Petitioner’s claim charts fail to show where
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`in Ayyagari ’508 the “attempting to initially transmit” limitation is found.
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`PO Resp. 8–9. Patent Owner alleges that Ayyagari ’508 merely describes
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`successful transmissions and unsuccessful transmissions, which does not
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`teach or suggest “attempting to initially transmit.” Id. at 10. Patent Owner
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`criticizes the portion of Ayyagari ’508 cited by Petitioner above (Ex. 1003,
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`13:61–65) as merely reciting “a characteristic of a communication system
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`that prioritizes packets.” Id. at 11. According to Dr. Tewfik, this passage
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`indicates that the transmission of a higher priority packet before a lower
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`priority packet “sometimes causes the lower priority packet to enter another
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`backoff st
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