Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 33
`Entered: January 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`IP CO., LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01602
`Patent 6,249,516 B1
`____________
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`571-272-7822
`
`
` Paper No. 33
`Entered: January 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`IP CO., LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01602
`Patent 6,249,516 B1
`____________
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2016-01602
`Patent 6,249,516 B1
`
`I. INTRODUCTION
`Emerson Electric Co. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`seeking inter partes review of claims 1, 2, 4, 5, 10, 11, 13, and 14 of U.S.
`Patent No. 6,249,516 B1 (Ex. 1001, “the ’516 patent”). IP CO., LLC
`(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we granted Petitioner’s request and
`instituted an inter partes review on all challenged claims. Paper 10
`(“Institution Dec.”).
`Following institution, Patent Owner filed a Response to the Petition
`(Paper 19, “PO Resp.”) and Petitioner filed a Reply (Paper 21, “Pet. Reply).
`In addition, Patent Owner filed a motion for observations on the cross-
`examination of Petitioner’s expert, Mr. Geier, and Petitioner filed a
`response. Papers 23, 26. In addition, a final oral hearing was held on
`November 13, 2017. A transcript of that hearing has been entered in the
`record. Paper 32 (“Hr’g Tr.”).
`For the reasons discussed below, Petitioner has shown by a
`preponderance of the evidence that all challenged claims of the ’516 patent
`are unpatentable.
`A. Related Proceedings
`
`The parties advise us that Patent Owner has asserted the ’516 patent
`against Petitioner in SIPCO, LLC v. Emerson Electric Co., No. 6:15-cv-
`00907 (E.D. Tex.), which has been transferred to the Northern District of
`Georgia, Case No. 1:16cv2690. Pet. 3–4; Paper 4. The parties have
`identified another inter partes review challenging the ’516 patent, IPR2014-
`
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`00147, which has been terminated, and several involving related patents. Id.
`In addition, the ’516 patent has been reexamined. See Ex. 1001, 58–60 (Ex
`Parte Reexamination Certificate US 6,249,516 C1).
`B. The ’516 Patent (Ex. 1001)
`
`The ’516 patent is titled “Wireless Network Gateway and Method for
`Providing Same.” Figure 1 of the ’516 patent is reproduced here:
`
`
`
`Figure 1 illustrates a first wireless network 10 in communication with
`second wireless network 12 via router 14. Ex. 1001, col. 7, ll. 37–40.
`Server 16 acts as a gateway between the two networks. Id. col. 7, ll. 62–66.
`Clients 18 each include a client machine 20 (a digital processor) and radio
`modem 22. Id. col. 8, ll. 17–19.
`
`In operation, a client of the wireless network has either a direct (1
`hop) or an indirect (2 or more hops) path to a server of the wireless network
`system. Id. col 4, l. 66–col. 5, l. 11. The patent describes an optimization
`
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`process which minimizes the number of hops from the clients to the servers,
`on the theory that the fewer the number of hops, the better the performance
`of the network. Id. col. 5, ll. 11–16.
`
`The server includes a radio modem capable of communicating with
`the first wireless network, a network interface capable of communicating
`with the second network (a wired TCP/IP network such as the Internet), and
`a digital controller coupled to the radio modem and to the network interface.
`Ex. 1001, col. 5, ll. 54–61. The digital controller maintains a map of the
`links of the first network and provides that map to first network clients on
`request. Id. col. 5, l. 8–col. 6, l.2. By maintaining a map of the first network
`links, the server is able properly to address packets received from either the
`first network or the second network to the appropriate client of the first
`network, and allows the clients of the network to maintain and upgrade their
`data communication paths to the server. Id. col. 6, ll. 2–7.
`C. Illustrative Claims
`
`Of the challenged claims, claims 1 (directed to an apparatus) and 10
`(directed to a method) are independent.
`
`Claim 1 reads as follows:
`
`1. A server providing a gateway between two networks,
`where at least one of the two networks is a wireless network,
`said server comprising:
`
`a radio modem capable of communicating with a first
`
`network that operates, at least in part, by wireless
`communication;
`
`a network interface capable of communicating with a
`
`second network; and
`
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`a digital controller coupled to said radio modem and to
`
`said network interface, said digital controller communicating
`with said first network via said radio modem and
`communicating with said second network via said network
`interface, said digital controller passing data packets received
`from said first network that are destined for said second
`network to said second network, and passing data packets
`received from said second network that are destined for said
`first network to said first network, said digital controller
`maintaining a map of data packet transmission paths of a
`plurality of clients of said first network, where a transmission
`path of a client of said first network to said server can be
`through one or more of other clients of said first network;
`
`wherein said digital controller changes the transmission
`
`paths of clients to optimize the transmission paths including
`changing the transmission path from the client to the gateway
`so that the path to the gateway is chosen from the group
`consisting essentially of the path to the gateway through the
`least possible number of additional clients, the path to the
`gateway through the most robust additional clients, the path to
`the gateway through the clients with the least amount of traffic,
`and the path to the gateway through the fastest clients.
`
`Challenged claims 2, 4, and 5 depend from claim 1.
`
`Claim 10 was modified in ex parte reexamination.1 Claim 10, as
`modified, reads as follows:
`
`10. A method providing a gateway between a wireless
`network and a second network comprising:
`
`receiving a data packet from a client of said wireless
`network, converting said data packet to a proper format for said
`second network, and sending said data packet to said second
`network; and
`
`receiving a data packet from said second network, adding
`a header to said packet including a reverse link and a data
`
`1 See Reexamination Certificate US 6,249,516 C1 (Ex. 1001, 58–60).
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`packet type if said data packet is destined for a client of said
`wireless network, said reverse link being one of a direct link to
`said client and an indirect link to said client through one or
`more other clients of said network, and transmitting said data
`packet with said header; and
`
`changing transmission paths of clients to optimize the
`transmission paths including changing the transmission path
`from the client to the gateway so that the path to the gateway is
`chosen from the group consisting essentially of the path to the
`gateway through the least possible number of additional clients,
`the path to the gateway through the most robust additional
`clients, the path to the gateway through the clients with the least
`amount of traffic, and the path to the gateway through the
`fastest clients.
`Challenged claims 11, 13, and 14 depend from claim 10.
`
`
`D. Prior Art Relied Upon
`
`We instituted trial based on the following references:
`
`1. J. Burchfiel, et al., Functions and Structure of a Packet Radio
`Station, AFIPS NATIONAL COMPUTER CONFERENCE, Vol. 44, at 245–51
`(1975) (Ex. 1005; “Burchfiel”)
`
`2. F. E. Heart, et al., The Interface Message Processor for the ARPA
`Computer Network, AFIPS SPRING JOINT COMPUTER CONFERENCE, Vol. 36,
`at 551–67 (1970) (Ex. 1006; “Heart”)
`3. M. Schwartz, TELECOMMUNICATION NETWORKS: PROTOCOLS,
`
`MODELING AND ANALYSIS, Addison-Wesley Pub. Co. (1987) (Ex. 1007;
`“Schwartz”)
`4. B. Aboba, et al., THE ONLINE USER’S ENCYCLOPEDIA BULLETIN
`
`BOARDS AND BEYOND, Addison-Wesley Pub. Co. (1993) (Ex. 1008; “Online
`Encyclopedia”)
`
`In addition, both parties rely on expert testimony. Petitioner relies on
`a Declaration of James T. Geier submitted with the Petition (Ex. 1004,
`“Geier I Decl.”). With its Preliminary Response, Patent Owner submitted a
`Declaration of Dr. Kevin C. Almeroth (Ex. 2002; “Almeroth I Decl.”). With
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`its Response, Patent Owner submitted a second declaration of Dr. Almeroth
`(Ex. 2004; “Almeroth II Decl.”). Finally, with its Reply, Petitioner
`submitted a rebuttal declaration of Mr. Geier (Ex. 1031, “Geier II Decl.”).
`
`Patent Owner has also submitted deposition testimony of Mr. Geier
`(Ex. 2006, “Geier I Dep.”; Ex. 2007 “Geier II Dep.”).
`E. The Asserted Grounds
`
`Trial was instituted on two grounds of obviousness under 35 U.S.C.
`§ 103 as follows:
`References
`Burchfiel, Schwartz, and
`Heart
`Burchfiel, Schwartz, Heart,
`and Online Encyclopedia
`
`Challenged Claims
`1, 4, 10, 13, 14
`
`2, 5, 11
`
`
`II. ANALYSIS
`A. Legal Principles
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`
`The question of obviousness is resolved on the basis of underlying
`factual determinations including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of skill in the art; and, (4) where in evidence, so-called secondary
`considerations, including commercial success, long-felt but unsolved needs,
`failure of others, and unexpected results. Graham v. John Deere Co., 383
`U.S. 1, 17-18 (1966) (“the Graham factors”).
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`B. Level of Ordinary Skill
`
`The parties differ on the level of ordinary skill applicable to this case.
`Petitioner contends the person of ordinary skill “would have a minimum of a
`bachelor’s degree in Electrical Engineering and 2-3 years of experience in
`the development and design, or technical marketing, of radio
`communications and computer network systems, or the equivalent.” Pet. 11.
`Patent Owner’s expert, Dr. Almeroth, responds: “a person of ordinary skill
`in the art for the patent-in-suit would have the equivalent of a four-year
`degree from an accredited institution (usually denoted as a B.S. degree) in
`computer science, computer engineering or the equivalent and experience
`with, or exposure to, computer networks and routing. A person of ordinary
`skill in the art would also have approximately two years of professional
`experience with computer networking, routing, and wireless networks.”
`Almeroth II Decl. ¶ 74. Dr. Almeroth takes issue with Petitioner’s definition
`“since it does not specifically list Computer Science as a possible degree.”
`Id. at ¶ 78.
`
`We adopt Patent Owner’s slightly more inclusive definition. As the
`definitions do not differ substantially, however, under either we would reach
`the same result.
`C. Claim Construction
`In an inter partes patent review of an unexpired patent, claim terms
`are construed according to their broadest reasonable interpretation in light of
`the specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`2012).
`
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`The ’516 patent has expired. Accordingly, the parties appear to agree
`that the Phillips standard of claim construction should apply. Pet. 9; Prelim.
`Resp. 11–12. For claims of an expired patent, the Board’s claim
`interpretation is similar to that of a district court. See In re Rambus, Inc.,
`694 F.3d 42, 46 (Fed. Cir. 2012). “In determining the meaning of the
`disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips
`v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)).
`However, there is a presumption that a claim term carries its ordinary and
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1366 (Fed. Cir. 2002).
`Petitioner offered constructions of several claim terms. Pet. 9–11.
`Patent Owner responded with additional constructions, and by disputing
`Petitioner’s proposed constructions. Prelim. Resp. 13–20.
`In our Institution Decision, we addressed the scope of two claim
`terms: “link”/“path” and “map of data packet transmission paths.”
`Institution Dec. 7–8. For this Final Written Decision, however, we address
`two additional terms: “changing the transmission path from the client to the
`gateway so that the path to the gateway is chosen” and “reverse link.” We
`determine that it is unnecessary to construe any other claim terms. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(holding that “only those terms need be construed that are in controversy,
`and only to the extent necessary to resolve the controversy”).
`
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`1. “link”/“path”
`
`These terms appear in all challenged claims. The ’516 patent
`
`specification describes a link as follows:
`It should be noted that the term “link” is used to convey both
`the connection to an adjacent client as well as the entire path
`from a client to a server. It will therefore be understood that
`when speaking of a link to an adjacent client, that this also
`implicitly includes all necessary links from that adjacent client
`to the server, i.e. a link is the entire path description from a
`given client to a given server.
`Ex. 1001, col. 10, ll. 10–16. Accordingly, and consistent with the
`specification, we construed the terms “link”/“path” as “connections between
`adjacent nodes and the entire path description from a given client to a given
`server.” Institution Dec. 8.
`
`Although both parties addressed this construction in their post-
`institution submissions (see PO Resp. 8–11, Pet. Reply 2), the parties appear
`to agree that the construction of this term is not critical to the outcome of
`this case. Petitioner states “[t]he construction of this term does not affect the
`outcome of these proceedings.” Pet. Reply 2. Similarly, at oral argument,
`after discussing the Board’s construction, Patent Owner agreed that “this
`particular dispute . . . doesn’t have to be resolved here.” Hr’g Tr. 22:19–21.
`Accordingly, we do not address the parties’ arguments on this issue, and for
`the purposes of this Decision, apply the same construction as in our
`Institution Decision.
`
`2. “map of data packet transmission paths”
`
`This phrase appears in challenged claims 1, 2, 5, 13, and 14.
`Petitioner does not propose a construction for this phrase. The specification
`of the ’516 patent states:
`
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`The digital controller further maintains a map of the links of the
`first network and provides that map to first network clients on
`request. By maintaining a map of the first network links, the
`server is able to properly address packets received from either
`the first network or the second network to the appropriate client
`of the first network, and allows the client of the network to
`maintain and upgrade their data communication paths to the
`server.
`Ex. 1001, col. 5, l. 65–col. 6, l. 7. Consistent with this description, we
`construed the term “map” as containing the paths or links to a node in the
`network. Institution Dec. 8.
`
`Patent Owner contends that the term “map of transition paths” means
`“a data structure containing a representation of a plurality of transmission
`paths from the client to the server through one or more other clients.” PO
`Resp. 11. Patent Owner emphasizes that a map must contain a “plurality” of
`paths from a client to the server. Id. Patent Owner relies on a dictionary
`definition of “map” as “a representation usually on a plain surface, of a
`region of the earth or heavens.” Id. at 11 (citing Ex. 2001, 827). Patent
`Owner also relies on the fact that the phrase itself refers to plural “paths.”
`Id. at 11–12. Patent Owner criticizes the Board’s construction of “map” as
`“incomplete.” Id. at 12.
`
`Petitioner opposes the construction of “map” as requiring multiple
`transmission paths from a particular client to the server. Pet. Reply 5–6.
`Petitioner responds that Patent Owner’s dictionary definition relates to “a
`physical map, not a structure for organizing data in mathematics or computer
`science.” Id. at 6. We agree with Petitioner that this particular definition of
`“map” is not pertinent to the subject matter of the ’516 patent, and therefore
`give Patent Owner’s argument based on this definition little weight. See id.
`
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`If anything, the dictionary entry cited by Patent Owner supports
`
`Petitioner’s view that the construction of “map” should not be limited to
`multiple paths from one client. Thus, the second definition of “map” in the
`dictionary entry is not limited to multiple elements: “The correspondence of
`one or more elements in one set to one or more elements in the same set or
`another set.” Ex. 2001, 827 (“map,” definition 2; emphasis added). We
`deem this second definition, identified as pertaining to mathematics
`(“Math.”), to be more pertinent to the technology of the ’516 patent than that
`chosen by Petitioner.
`
`Nor are we persuaded by Patent Owner’s other argument, based on the
`reference in the ’516 patent claims to plural “paths.” PO Resp. 11–12. As
`Petitioner points out, claims 1 and 13 recite “changing the transmission path
`[singular] from the client to the gateway so that the path to the gateway is
`chosen.” Pet. Reply 6.
`
`We are, therefore, not persuaded by the arguments presented that the
`construction of this term in our Institution Decision requires modification.
`We therefore construe the term “map” as containing the paths or links to a
`node in the network, including a single path.
`
`3. “changing the transmission path from the client to the gateway so
`that the path to the gateway is chosen”
`
`We declined to construe this language from claims 1 and 10 in our
`Institution Decision. Institution Dec. 7. Petitioner contends that the term
`should take its plain and ordinary meaning and does not require an express
`construction. Pet. Reply 6–7. Patent Owner proposes the following
`construction: “changing the selection of a transmission path including an
`identification of an entire path from the client to the server.” PO Resp. 14.
`
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`We agree with Petitioner that this term needs no express construction.
`
`However, we determine that it is necessary to address Patent Owner’s
`proposed construction, as it is central to its defense to Petitioner’s challenge.
`
`Patent Owner’s construction of this term is related to its proffered
`construction of “map of data packet transmission paths,” discussed supra.
`According to Patent Owner, “[t]he claim language itself . . . requires the
`server to change the selection of a transmission path including an
`identification of an entire path from the client to the server.” PO Resp. 13
`(emphasis added). We disagree with this interpretation. The claim uses the
`word “chosen,” not “select.” We agree with Petitioner that this is a
`significant difference, in that “chosen” does not necessarily imply a selection
`among alternative paths. Pet. Reply 7. Further support for this conclusion is
`found in our discussion of “map of data packet transmission paths,” supra.
`There, we conclude that “map” should not be limited to multiple paths from
`a client. See supra. In the same way, the claim language should not be
`construed as requiring choosing from a selection of alternative paths.
`
`Patent Owner points to a decision in which another panel of the
`Board, in IPR2015-01901, construed the word “select” in a “related patent.”
`PO Resp. 13–14. We are not persuaded by that decision that we are
`misconstruing the claims at issue here, which do not use the word “select.”
`In the context of the ’516 patent claims, we do not regard “chosen” as
`having the same meaning as “select.”
`
`4. “reverse link”
`
`Patent Owner did not request an express construction for the term
`“reverse link” in the Preliminary Response. Patent Owner now contends
`“[t]he proper construction of the claim term ‘reverse link’ is a ‘path from
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`a gateway to a client through the same nodes as a link from the client to the
`gateway, in the opposite order.’” PO Resp. 15. Petitioner responds the
`Board need not construe this term because the cited prior art, namely,
`Burchfiel, meets this limitation, even under Patent Owner’s construction.
`Pet. Reply 8.
`
`We do not agree with Patent Owner’s construction insofar as it
`requires traversing the same nodes. We see nothing in the claim language
`that would restrict the term “reverse path” to a path following the same
`nodes in the opposite order. Moreover, we are not persuaded by Patent
`Owner’s reference to examples in the specification. PO Resp. 15–16. While
`claims must be read in view of the specification, limitations from the
`specification are not to be read into the claims. Teleflex, Inc. v. Ficosa N.
`Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2001) (citations omitted). Even
`when the specification describes only a single embodiment, the claims of the
`patent will not be read restrictively unless the patentee has demonstrated a
`clear intention to limit the claim scope using words or expressions of
`manifest exclusion or restriction. Liebel-Flarsheim Co. v. Medrad, Inc., 358
`F.3d 898, 906 (Fed. Cir. 2004) (citing Teleflex, supra). To construe “reverse
`link” as requiring the same path to be followed would violate this principle.
`
`As is discussed infra, however, we agree with Petitioner that Burchfiel
`meets this limitation even under Patent Owner’s construction. Pet. Reply 8.
`Accordingly, we do not further construe this term.
`D. Claims 1, 4, 10, 13, and 14 – Obviousness over Burchfiel, Schwartz, and
`Heart
`
`Petitioner challenged the patentability of these claims as obvious over
`Burchfiel alone, as well as over the combinations of Burchfiel and Schwartz
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`and Burchfiel, Schwartz, and Heart. Pet. 11–55. We instituted trial on this
`obviousness challenge based on Burchfiel, Schwartz, and Heart.
`
`1. Burchfiel (Ex. 1005)
`Burchfiel is titled “Functions and Structures of a Packet Radio
`
`Station.” Ex. 1005, 245. Burchfiel’s “Packet Radio Network (PRN)” is
`comprised of central station, mobile terminals, and remote repeaters. Pet. 10
`(citing Ex. 1005, 245). Communication on the PRN is accomplished using a
`“Packet Radio Unit, or PRU.” Id. at 12 (citing Ex. 1005, 245). Burchfiel’s
`station is responsible for initializing and maintaining the PRN, including
`identifying routes between station and each PRU and making “dynamic
`routing changes.” Pet. 13 (citing Ex. 1005, 247–48, 250).
`
`A station determines routes by building a “connectivity matrix”
`identifying PRUs “capable of direct communication with each other,” and
`then uses this “connectivity matrix” to generate routes between station and
`each PRU. Pet. 13–14 (citing Geier Decl. I ¶¶ 74–75); Ex. 1005, 247.
`Burchfiel also teaches the “PRN must provide routing which adapts
`dynamically to component failures.” Pet. 14 (citing Ex. 1005, 245). Once
`routes are established, the station is able to reconfigure the PRN by
`“recomputing minimum distance routes” to the PRUs/terminals. Ex. 1005,
`248; Geier Decl. I ¶ 76. “The station performs this reconfiguration by
`updating the connectivity matrix to indicate that the failed element is
`incommunicado; by recomputing minimum distance routes to the elements
`which are still active; and finally, by updating repeater routing parameters to
`routes.” Ex. 1005, 248.
`
`Burchfiel also teaches a digital controller in station that is interfaced
`to ARPANET through an ARPANET IMP (Interface Message Processor)
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`and functions as a gateway by forwarding packets between the PRN and
`ARPANET. Pet. 14 (citing Ex. 1005, 246, 249-50). Burchfiel’s gateway
`also may provide “conversion between the host-host protocols of the two
`networks.” Ex. 1005, 249.
`
`2. Heart (Ex. 1006)
`
`Heart is a published paper titled “The Interface Message Processor for
`the ARPA Computer Network.” Heart discloses a “host special interface”
`which serves as a network interface to ARPANET. Pet. 14–15 (Ex. 1006,
`551–52, 554). These are “Interface Message Processors” or “IMPs,” and are
`connected by common-carrier circuits. Id.
`
`3. Schwartz (Ex. 1007)
`
`Schwartz is a textbook titled “Telecommunication Networks:
`Protocols, Modeling and Analysis.” Schwartz discloses network routing
`protocols and algorithms. Pet. 17 (citing Ex. 1007, 259-60). Schwartz
`teaches shortest-path algorithms are designed to provide a least-cost path
`between two nodes. Id. at 17–18 (citing Ex. 1007, 261).
`
`4. Analysis
`
`Petitioner has provided detailed claim charts for challenged claims 1,
`4, 10, 13, and 14 in relation to Burchfiel, Schwartz, and Heart. Pet. 21–55.
`In addition, Petitioner provides supporting testimony from its expert, Mr.
`Geier. Geier I Decl. ¶¶ 66–275. As explained by Mr. Geier,
`it is my opinion that claims 1, 4, 10, 13 and 14 are, at minimum,
`rendered obvious by the teachings of Burchfiel, and by the
`teachings of Burchfiel in view of the teachings of Schwartz, and
`by the teachings of Burchfiel in view of the teachings of
`Schwartz and Heart.
`Geier I Decl. ¶ 67.
`
`
`
`16
`
`
`
`IPR2016-01602
`Patent 6,249,516 B1
`
`Petitioner’s arguments are summarized as follows. In asserting
`
`obviousness of these claims, Petitioner relies mainly on Burchfiel for
`teaching or suggesting all limitations. Thus, for example, Petitioner relies
`on Burchfiel’s server or station as providing a gateway between two
`networks, the PRN and ARPANET. Pet. 21–22. Petitioner identifies
`Burchfiel’s PDP-11 digital computers with the digital controller called for in
`the claims. Id. at 29–30. Petitioner identifies Burchfiel’s connection table
`with the map of data transmission paths called for in the claims. Id. at 36–
`37.
`Petitioner relies on Heart for its disclosure of network interfaces
`
`(“IMPs”) capable of communicating with ARPANET. Id. at 25–28.
`Petitioner relies on Schwartz for its disclosure of algorithms for optimizing
`transmission paths including changing the transmission path from the source
`to the destination. Id. at 38–42. Petitioner also relies on Heart for its
`disclosure of adding a header to a packet and for “additional details about
`implementing data packet headers.” Id. at 48–51.
`
`Petitioner provides detailed analyses including claim charts for each
`of the challenged claims in relation to Burchfiel, Schwartz, and Heart. Pet.
`21–55. Petitioner also provides a rationale for combining these references.
`Id. at 18–20. For example, Petitioner asserts
`[i]t would have been obvious to POSITA to apply Heart’s
`advantageous express teachings of the ARPA Network IMP and
`ARPA Network in implementing station and ARPANET IMP
`disclosed in Burchfiel, such that station interfaces with the
`ARPANET IMP and serves as a gateway to ARPANET, as
`already disclosed in Burchfiel, but with less of the
`advantageous implementation detail provided in Heart.
`
`
`
`17
`
`
`
`IPR2016-01602
`Patent 6,249,516 B1
`
`Id. at 18. Similarly, Petitioner asserts “[i]t would have been obvious to
`POSITA to apply Schwartz’s advantageous express teachings of network
`routing algorithms running on a centralized network management center in
`implementing Burchfiel’s station to recompute minimum distance routes as
`part of relabeling and reconfiguring the repeater routing parameters and
`connections between station and PRUs.” Id. at 19 (internal quotation marks
`and brackets omitted).
`
`We find Petitioner’s analysis of Burchfiel, Heart, and Schwartz and
`the supporting evidence to be persuasive that each element of claims 1, 4,
`10, 13, and 14 is taught or suggested by the combination. We determine,
`also, that Petitioner’s rationale for combining the references is persuasive,
`and therefore adopt Petitioner’s analysis. Our reasoning will be discussed in
`greater detail infra.
`
`We have considered Patent Owner’s arguments to distinguish
`Burchfiel, Schwartz, and Heart, and find them unavailing for the following
`reasons. PO Resp. 18–23.
`
`a. “maintaining a map . . . ”
`Patent Owner contends that Burchfiel does not teach “maintaining a
`
`map of data packet transmission paths” as recited in claims 1 and 13 and
`their dependent claims. PO Resp. 46–50. Patent Owner asserts:
`“Burchfiel’s connectivity matrix is not a data structure containing a plurality
`of descriptions of the entire path from a client to the server or gateway.” Id.
`at 47. Patent Owner contends that the connectivity matrix has routes to the
`client only and thus does not describe the entire path. Id.
`
`We find that Petitioner has demonstrated that Burchfiel’s connectivity
`matrix meets this claim limitation. Pet. 35–35; 54. We are not persuaded by
`
`
`
`18
`
`
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`IPR2016-01602
`Patent 6,249,516 B1
`
`Patent Owner’s arguments in rebuttal. First, addressing the “plurality of
`descriptions” argument, we have construed the term “map” as not limited to
`storing multiple paths from one client to the server. Thus, Patent Owner’s
`argument calling for a “plurality of descriptions” of a path from a client to
`the server is contrary to our construction. Moreover, we are not persuaded
`that a map must contain the “entire path.” We have construed “map” as
`containing the paths or links to a node in the network, including a single
`path. See infra. Thus, the “entire path” argument fails for this reason alone.
`
`We find, however, that even under Patent Owner’s construction of
`map as requiring a “description of the entire path,” Burchfiel would meet
`this limitation. Ex. 1005, 246. Burchfiel teaches a map containing both the
`path from the station to the server and from the server to the station.
`According to Burchfiel, a connection table provides a map of path
`information:
`Once a station has labelled all PRU’s and established
`connections to them, the information for maintaining these
`connections is entered into the station’s connection table. This
`contains the status information described above for handling the
`connection protocol.
`Ex. 1005, 247 (emphasis added). As Petitioner points out, Burchfiel
`specifically describes these connections as “bidirectional.” Pet. Reply 9
`(citing Ex. 1005, 246 (“Since most expected uses of the PRN will require bi-
`directional communication, the PRN connection is bi-directional.”)).
`Petitioner provides persuasive expert testimony to the effect that “it would
`have been obvious to recompute the route in both directions, to the extent
`not disclosed by Burchfiel, based on Burchfiel’s disclosure that, e.g., the
`‘PRN connection is [a] bidirectional’ ‘data transmission path.” Geier II
`Decl. ¶ 69. We find that at the very least, therefore, Burchfiel’s reference to
`19
`
`
`
`
`
`IPR2016-01602
`Patent 6,249,516 B1
`
`“bi-directional” connections suggests such a computation. “Even if a
`reference’s teachings are insufficient to find anticipation, that same
`reference’s teachings may be used to find obviousness.” CRFD Research,
`Inc. v. Matal, 876 F.3d 1330, 1345 (Fed. Cir. 2017)
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