Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 37
`Filed: May 30, 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 IPR2017-00252
`Patent 8,000,314 B2
`_______________
`
`
`
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 37
`Filed: May 30, 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 IPR2017-00252
`Patent 8,000,314 B2
`_______________
`
`
`
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
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`IPR2017-00252
`Patent 8,000,314 B2
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`I. INTRODUCTION
`
`A. Background
`Emerson Electric Co. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`seeking to institute an inter partes review of claims 1, 4, 10, 11, and 15–19
`of U.S. Patent No. 8,000,314 B2 (Ex. 1001, “the ’314 patent”) pursuant to
`35 U.S.C. §§ 311–319. IP Co., LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 6. Based on our review of these submissions and
`associated evidence, we instituted inter partes review of claims 1 and 4 of
`the ’314 patent. Paper 7 (“Dec.”). Subsequently, the Supreme Court held
`that under 35 U.S.C. § 314 the Board may not institute on less than all
`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`1352–53 (2018). The parties filed a Joint Motion to Limit the Petition, and
`by that motion the parties sought to limit this proceeding to the claims and
`grounds upon which inter partes review initially had been instituted. Paper
`35. We granted the Joint Motion (Paper 36) and thereby permitted the
`parties to limit this proceeding to the following claims and grounds:
`
`
`References
`Jubin1 and Fifer2
`
`Claim Challenged
`1
`
`
`1 John Jubin & Janet D. Tornow, The DARPA Packet Radio Network
`Protocols, Proceedings of the IEEE, Vol. 75, No. 1, Jan. 1987 (Ex. 1003,
`“Jubin”).
`2 William C. Fifer & Frederick J. Bruno, “The Low-Cost Packet Radio,”
`Proceedings of the IEEE, Vol. 75, No. 1, January 1987 (Ex. 1004, “Fifer”).
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`References
`Jubin, Fifer, APA,3 and Cerf4
`Kahn,5 Burchfiel,6 Schwartz, and Cerf
`
`Claim Challenged
`4
`4
`
`
`Id. at 2–3.
`Patent Owner filed a Patent Owner’s Response (Paper 14, “PO
`Resp.”), and Petitioner filed a Reply (Paper 25, “Reply”). An oral hearing
`was held on February 5, 2018. Paper 33 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 318(a). For the reasons
`discussed below, Petitioner has demonstrated by a preponderance of the
`evidence that claims 1 and 4 of the ’314 patent are unpatentable.
`
`B. Related Proceedings
`We have been informed that SIPCO, LLC, v. Emerson Electric Co.,
`No. 6:15-cv-00907-JRG-KNM (E.D. Tex.), which has been transferred to
`the Northern District of Georgia and consolidated with Civil Action No.
`1:15-cv-0319-AT (N.D. Ga.), may be impacted by this proceeding. Paper 3,
`Paper 23. In addition, the ’314 patent was the subject of an inter partes
`review involving the same parties. Emerson Electric Co., v. IPCO, LLC,
`
`
`3 Petitioner relies upon the disclosures found in column 7, lines 33 through
`37 of the ’314 patent as Admitted Prior Art (“APA”). See Pet. 26.
`4 Vinton G. Cerf & Peter T. Kirstein, Issues in Packet-Network
`Interconnection, Proceedings of the IEEE, Vol. 66, No. 11, Nov. 1978 (Ex.
`1008, “Cerf”).
`5 Robert E. Kahn, Advances in Packet Radio Network Protocols,
`Proceedings of the IEEE, Vol. 66, No. 11, Nov. 1978 (Ex. 1006, “Kahn”).
`6 J. Burchfiel et al., Functions and structure of a packet radio station,
`National Computer Conference presented paper, 1975 (Ex. 1007,
`“Burchfiel”).
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`Case IPR2015-01901, slip op. at 32 (PTAB Mar. 8, 2017) (Paper 28)
`(holding claims 10 and 12–19 to be unpatentable). The final written
`decision in that proceeding is under appeal. IPR2015-01901, Paper 29. In
`addition, Petitioner has filed a number of other petitions for inter partes
`review directed to related patents. Papers 23, 24.
`
`C. The ʼ314 Patent
`The ’314 patent describes a digital computer network. Ex. 1001,
`1:13–15. This network is depicted in Figure 1, which is reproduced below.
`
`
`Figure 1 shows wireless network 10 that is in communication with second
`network 12. Id. at 7:18–22. Wireless network 10 includes one or more
`servers 16 that may act as a gateway between the two networks. Id. at 7:42–
`46. Servers include a digital controller that “maintains a map of the links of
`the first network and provides a map to the first network clients on request.”
`Id. at 5:53–55. The network also includes any number of clients 18. Id. at
`7:64–67. Servers implement processes for receiving and transmitting data
`packets from the clients. Id. at 5:6–9. Clients implement processes for
`receiving and transmitting data packets to and from the server and other
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`clients. Id. at 5:9–11. “Preferably, the client process of each of the clients
`initiates, selects, and maintains a radio transmission path (‘link’) to the
`server . . . [and] also constantly searches for improved paths to the server.”
`Id. at 5:11–15, 5:19–21.
`
`D. Instituted Claims
`We instituted inter partes review of claims 1 and 4, which are
`reproduced below.
`1. A wireless network system comprising:
`
` 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;
`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, 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 least one
`of the remainder of said plurality of second nodes; 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 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.
`
`
`Ex. 1001, 22:56–23:13.
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`4. A first node providing a gateway between a wireless network
`and a second network, the first node comprising:
`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
`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
`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 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.
`
`
`Id. at 23:56–24:13.
`E. Person of Ordinary Skill in the Art
`Petitioner’s declarant, Dr. Stephen Heppe, opines that this individual
`would have, through formal education or practical experience, the equivalent
`of a Bachelor’s Degree in Electrical Engineering and two to three years of
`experience in designing and developing radio communications and/or
`computer network systems or marketing such systems from a technical
`standpoint. Pet. 13–14 (citing Ex. 1014 ¶ 9). Patent Owner’s declarant, Dr.
`Kevin Almeroth, opines that this individual would have a four-year degree
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`from an accredited institution (usually denoted as a B.S. degree) in computer
`science, computer engineering or the equivalent and at least two years of
`experience with, or exposure to, computer networks, routing, and wireless
`networks. Ex. 2011 ¶ 80. Dr. Almeroth also states that graduate education
`could substitute for professional experience and significant experience in the
`field might substitute for formal education. Id. Based upon our review of
`the ’314 patent and prior art of record, we agree with Dr. Almeroth and
`adopt his definition of a person of ordinary skill in the art.
`
`II. CLAIM CONSTRUCTION
`
`A. Introduction
`The ’314 patent has expired. See Ex. 1001, 1:4–9; 35 U.S.C.
`§ 154(a)(2); see also Pet. 14 (stating that the ’314 patent will expire no later
`than December 6, 2016). The Board interprets claim terms in expired
`patents as would a district court, by applying the claim construction
`principles outlined in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`(en banc). In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Under that
`standard, the “words of a claim ‘are generally given their ordinary and
`customary meaning,’” as would be understood by a person of ordinary skill
`in the art in question at the time of the invention. Phillips, 415 F.3d at 1312
`(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
`Cir. 1996)). “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, 415 F.3d at 1312–17). We also
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`can consider extrinsic evidence, although it is “less significant than the
`intrinsic record.” Phillips, 415 F.3d at 1317.
`In the Petition, Petitioner requested construction of the terms
`“selecting a transmission path,” “first node,” and “changes to upgrade the
`selected transmission.” Pet. 15–19. In the Institution Decision, we
`construed “selecting a radio transmission path to said first node.” Dec. 11–
`12. We also determined that no other terms required express construction
`for the purposes of that Decision. Id. at 11 (citing Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`Patent Owner proposes constructions for “selecting a radio
`transmission path to said first node” and “transmission path from the second
`node to the first node based upon viable network paths observed by the
`second node.” PO Resp. 7–11. Based on the issues currently before us, we
`discern a need to address the proper construction of the term “selecting a
`radio transmission path to said first node.” For the purposes of this
`Decision, no other terms require express construction.
`
`B. Construction of “Selecting a Radio Transmission Path to Said First
`Node”
`Claim 1 recites, in relevant part, “selecting a radio transmission path
`to said first node.” In the Institution Decision, we preliminarily determined
`the broadest reasonable interpretation of “selecting a radio transmission path
`to said first node” is at least broad enough to encompass “choosing the entire
`path from the second node to the first node including the identification of all
`nodes in the path.” Dec. 11–12. We note that our Institution Decision
`contained a preliminary construction based on the broadest reasonable
`construction standard, and now we review the term using the principles
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`stated in Phillips. Thus, part of our analysis includes determining whether
`the change in construction standards affects our construction of the term.
`We conclude that in this case it does not. Here, the parties do not dispute
`that the preliminary construction is within the scope of the recited term. See
`PO Resp. 8; Reply 3. The only dispute is whether a broader construction
`should apply.
`Patent Owner argues that “[t]he construction of the ‘radio
`transmission path’ portion of the claim limitation should not be limited to
`only one of many ways of describing a path..” PO Resp. 8. Thus, Patent
`Owner asserts that the construction should be “choosing a path to the server
`including an identification of an entire path from the client to the server.”
`Id. at 10. At the oral hearing, Patent Owner’s counsel stated that there was
`no need for further construction of this term “because it doesn’t involve
`issues related to patentability, [and thus, it is unnecessary] to resolve that
`particular portion of the dispute with respect to the construction of this claim
`limitation.” Tr. 14:23–15:3. Based on our review of the issues before us,
`we determine that it is unnecessary to determine whether this broader
`construction would be correct. The Federal Circuit has cautioned that “only
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci., 200
`F.3d 795, 803 (Fed. Cir. 2000) (emphasis added). Thus, we decline to
`decide whether the interpretation sought by Patent Owner would be correct.
`Therefore, we determine that the construction of “selecting a radio
`transmission path” is at least broad enough to encompass “choosing the
`entire path from the client to the server including the identification of all
`nodes in the path.”
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`III. ANALYSIS
`
`A. Objective Evidence of Nonobviousness
`All of the instituted grounds in this proceeding are based on
`allegations that the challenged claims would have been obvious over the
`cited art. As part of the obviousness inquiry we must consider evidence of
`relevant secondary considerations such as long-felt need in the art and
`unexpected results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
`(citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
`Patent Owner asserts that the claims of the ’314 patent solved a long-
`felt need in regards to the reduction of overhead in wireless networks. PO
`Resp. 64–65. “Evidence of a long felt but unresolved need tends to show
`non-obviousness because it is reasonable to infer that the need would have
`not persisted had the solution been obvious.” WBIP, LLC v. Kohler Co., 829
`F.3d 1317, 1332 (Fed. Cir. 2016) (citing Iron Grip Barbell Co. v. USA
`Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)). Here, Patent Owner
`asserts that prior to the ’314 patent, “routing overhead had long been a
`bottleneck for wireless networks.” Id. at 64. Dr. Kevin Almeroth supports
`Patent Owner’s argument by explaining why he believes that several prior
`art references documented the existence of a long-felt need for a solution of
`the problem of routing overhead. Id. at 65 (citing Ex. 2011 ¶ 201). Patent
`Owner asserts that “[t]he invention claimed in the ’314 patent solved this
`long-felt need by significantly reducing the overhead of a distributed
`network through the use of both centralized and decentralized techniques —
`e.g., selecting a radio transmission path to a server node at a client node and
`upgrading the selected radio transmission path to an optimized path at the
`server.” Id. at 68–69 (citing Ex. 2011 ¶ 205). Patent Owner also argues that
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`the claims of the ’314 patent provided an unexpected result by decreasing
`overhead (and increasing bandwidth) even as the number of nodes in the
`system increased. Id. at 71–72 (citing Ex. 2011 ¶ 210). Dr. Almeroth
`supports this assertion with testimony regarding the “minimal overhead” of
`the network claimed in the ’314 patent. Ex. 2011 ¶ 210.
`To be relevant, evidence of nonobviousness must be commensurate in
`scope with the claimed invention. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir.
`2011). Thus, to be accorded substantial weight, there must be a nexus
`between the claimed invention and the evidence of secondary
`considerations. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995).
`Nexus is a legally and factually sufficient connection between the objective
`evidence and the claimed invention, such that the objective evidence should
`be considered in determining nonobviousness. Demaco Corp. v. F. Von
`Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). In the
`absence of an established nexus with the claimed invention, secondary
`consideration factors are not entitled to much, if any, weight and generally
`have no bearing on the legal issue of obviousness. See In re Vamco Machine
`& Tool, Inc., 752 F.2d 1564, 1577 (Fed. Cir. 1985). The burden of showing
`that there is a nexus lies with the Patent Owner. See In re Paulsen, 30 F.3d
`1475, 1482 (Fed. Cir. 1994).
`Patent Owner asserts that there is a nexus between challenged claims
`1 and 4 and its evidence of unexpected results and long-felt need. PO Resp.
`73. Specifically, Patent Owner directs us to Dr. Almeroth’s testimony and
`claims 1 and 4 of the ’314 patent. Id. Dr. Almeroth testifies that at the time
`of the invention of the ’314 patent it was “generally accepted that routing
`overhead for a wireless network was directly proportional to the number of
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`nodes in the wireless networks.” Ex. 2011 ¶ 206. He opines that the ’314
`patent solved this problem through the use of “a server [that] maintains a
`tree with paths from each client to the server (centralized) and clients [that]
`maintain the ability to select paths to the server independently
`(decentralized).” Id. at ¶ 208. Dr. Almeroth concludes that “[t]his
`centralized/decentralized approach is clearly recited in the challenged
`claims. That is, each of the challenged claims clearly recites the
`centralized/decentralized routing features that were demonstrated . . . to
`reduce the routing overhead and to thereby solve the long-felt need.” Id. at
`¶ 212.
`Petitioner disputes this assertion and contends that “[Patent Owner’s]
`evidence does not establish any nexus between the Claims and the purported
`long-felt needs [Patent Owner] imagines because the ’314 [patent] never
`mentions—let alone suggests it solves—‘routing overhead.’” Reply 26. We
`agree. The ’314 patent does not discuss routing overhead. Further, the term
`bandwidth only appears once in the specification and there it is part of a
`discussion of prior art. Ex.1001, 2:50–56. The ’314 patent states that the
`prior art “create[d] a great deal of ‘packet duplication’ or ‘pollution’ as
`copies of a particular data packet are multipl[ied] repeated[ly], rather than
`routed” (id. at 2:40–42) and that “such duplicate packets increase data
`congestion in the network and increases work that must be performed by the
`server” (id. at 2:47–50). The specification further describes the prior art as
`lacking “robustness (i.e. the ability to maintain communication with the
`network under adverse conditions).” Id. at 2:61–64. In addition, the
`specification notes that the prior art does not include a network that is both
`robust and efficient. Id. at 4:27–29; see also id at 6:4–6 (stating that the
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`inventive network is both robust and efficient). Thus, on its face, the ’314
`patent is directed to solving problems of robustness and efficiency. In
`addition, neither claim 1 nor 4 contains a reference to routing overhead. We
`note that we are not requiring a specific wording here, but rather we are
`looking to the substance of the claims to see if one of ordinary skill in the art
`would have understood them to include a solution for the high overhead
`purportedly found in prior art systems.
`We are not persuaded that one of ordinary skill in the art would have
`understood the ’314 patent to be solving issues of routing overhead. Nor are
`we persuaded that one of ordinary skill in the art would have found this
`purported reduction in overhead (and increase in bandwidth) to be caused by
`the network and apparatus of the challenged claims. We do not credit Dr.
`Almeroth’s testimony on this point because he does not provide sufficient
`factual support for his conclusions. For example, Dr. Almeroth’s discussion
`of secondary considerations does not include a single citation to the ’314
`patent. See Ex. 2011 ¶¶ 199–212.
`Thus, we are not persuaded that Patent Owner has presented sufficient
`evidence of nexus between its asserted secondary considerations and the
`challenged claims. Therefore, we give little weight to Patent Owner’s
`assertions of secondary considerations of non-obviousness. See Vamco
`Machine & Tool, Inc., 752 F.2d at 1577.
`
`B. Analysis of Asserted Ground of Obviousness Based on Jubin and Fifer
`Petitioner argues that claim 1 is unpatentable under 35 U.S.C.
`§ 103(a) over Jubin and Fifer. Pet. 29–43. Petitioner’s assertions are
`supported by a declaration from Dr. Stephen Heppe. Ex. 1014.
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`1. Overview of Jubin
`Jubin provides a description of the state of the Defense Advanced
`Research Projects Agency (“DARPA”) Packet Radio Network (also known
`as PRNET) in 1986. Ex. 1003, 21, col. 1. Figure 4 of Jubin is reproduced
`below.
`
`
`Figure 4 of Jubin depicts PRNET with its packet radios (“PRs”) and
`associated host computers and user terminals. Id. at 23, col. 1. PRNET
`includes a plurality of PRs, each comprising a digital subsystem and a radio
`subsystem. Id. at 22, col. 1. Figure 4 also depicts a gateway connecting the
`PRNET to the internet. Id. at 23, col. 1.
`“The PRNET features fully distributed network management. Each
`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, even before it is given a packet to
`deliver or forward.” Id. at 23, col. 2. Jubin discloses storing network
`information in three tables: (1) neighbor table, (2) tier table, and (3) device
`table. Id.
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`A PR’s neighbor table maintains a list of PRs that are one hop away
`from that PR and information about the quality of the links to those PRs. Id.
`at 24, col. 1; see id. at Fig. 5. Neighbor tables are populated using Packet
`Radio Organization Packets (“PROPs”). Id. at 23, col. 2–24, col. 1. PROPs
`are broadcast by a PR every 7.5 seconds. Id. at 23, col. 1. These packets
`announce the existence of the PR and information about the network’s
`topology from the perspective of the broadcasting PR. Id. at 24, col. 1.
`The tier table allows a PR to track how many hops away it is from
`each of the other PRs in the network. Id. at 24, col. 2; see id. at Fig. 5. “The
`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.” Id. This table is
`updated as conditions change. Id. Finally, the device table maintains a
`listing of the network’s device to PR mapping. Id. at 25, col. 1.
`In PRNET, “a packet traverses a single path through the network, and
`is acknowledged at every packet radio along the path.” Id. at 25, col. 2.
`This routing of packets is accomplished by using a PR’s routing tables and
`the packet’s header information. Id. The header includes fields such as the
`identity of the source of the packet, the identity of the previous PR, and the
`identity of the destination PR. Id.
`2. Overview of Fifer
`Fifer is a paper titled “The Low-Cost Packet Radio.” Ex. 1004. Fifer
`describes the state of packet radios in 1986. Id. at 33. Fifer was cited in
`Jubin as providing further description of the PRs. Ex. 1003, 30 n.14. In
`addition, Jubin was published in the same issue of the IEEE Proceedings as
`Fifer and Fifer appears to be the article directly after Jubin. Ex. 1014 ¶ 25;
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`Ex. 1003, 32 (showing last page of Jubin as page 32 of the IEEE
`Proceedings); Ex. 1004, 33 (showing the first page of Fifer as page 33 of the
`same issue of the IEEE Proceedings). Figure 2 of Fifer is reproduced below.
`
`
`Figure 2 of Fifer depicts a block diagram of a low cost packet radio (“LPR”).
`Ex. 1004, 36.
`3. Claim 1
`Petitioner’s assertions regarding claim 1 may be summarized as
`follows: Petitioner asserts that Jubin’s PRs teach the recited first and second
`nodes. Pet. 30–32. Petitioner asserts that Fifer provides a detailed
`description of the recited modem and controller found in each of the first and
`second nodes. Id. at 30–31. According to Petitioner, Jubin’s discussion of
`PRs maintaining their own optimal tier table teaches the recited selection of
`the transmission path utilizing the least number of second nodes. Id. at 35.
`Petitioner also relies on Jubin to teach the recited first controller
`implementing changes to upgrade the path in response to a request from a
`second node. Id. Petitioner asserts that this limitation is taught by Jubin’s
`disclosure of using PROP packets to disseminate “good” news and “bad”
`news regarding changes to the network’s topology and then implementing
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`changes to the PR’s tier table in response to the receipt of “bad” news
`regarding changes to the topology. Id. at 35–36. Petitioner asserts that it
`would have been obvious to one of ordinary skill in the art to combine the
`teachings of Jubin and Fifer because Fifer would have provided additional
`details regarding Jubin’s PRs and this combination would have provided a
`predictable result. Id. at 31.
`Patent Owner argues that the disclosures of Jubin and Fifer are
`insufficient to teach the limitations of claim 1. Specifically, Patent Owner
`asserts that the cited art does not teach (1) “said second node process . . .
`selecting a radio transmission path to said first node” (PO Resp. 17–20) or
`(2) “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” (id. at 20–23).
`Patent Owner asserts that Jubin does not teach “said second node
`process . . . selecting a radio transmission path to said first node” because
`(1) Jubin’s hops are not radio transmission paths (id. at 17–18); and
`(2) Jubin’s PRs do not select a radio transmission path to a first node (id. at
`18–20). We address each argument in turn.
`First, Patent Owner argues that claim 1 requires the second node to
`select an entire path. Id. at 18. According to Patent Owner, Jubin fails to
`teach this limitation “because Jubin’s PRs use distance-vector routing and,
`thus, only select the next ‘hop’ to the destination and not the entire path.”
`Id. at 17. Petitioner directs us to Jubin’s disclosure of neighbor, tier, and
`device tables. Reply 6 (citing Ex. 1003, 23). Dr. Heppe testifies that Jubin’s
`PRs make independent routing decisions using these tables. Ex. 1028 ¶ 27.
`Petitioner asserts that “Jubin maintains a ‘tier table,’ which shows direct
`
`17
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`IPR2017-00252
`Patent 8,000,314 B2
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`connections (tier 1) and connections through another route (tier 2 or more).”
`Pet. 33. Figures 2 and 5 of Jubin (as annotated by Petitioner) are reproduced
`below.
`
`
`
`Figure 2 depicts a small packet radio network with PRs L, M, N, Q, and P.
`Id. at 32. Figure 5 illustrates a tier table for PR N of the network displayed
`in Figure 2. Id. at 32–33. The tier table contains information for each
`destination in the network including the number of hops (for example L is
`tier 2 and thus, it is two hops away) and the next PR that should receive the
`packet in order to route a packet to a particular destination. Dr. Heppe
`opines that “in Figure 2, Jubin discloses network connectivity that would
`support two potential routes from PR M to PR L: a) a direct route
`(highlighted here in blue) to L; and b) an indirect route to L through Q
`(highlighted here in red).” Ex. 1028 ¶ 27. In addition, he notes that “when
`PR M transmits its PROP packet, it reports that it is ‘tier 1’ with respect to
`PR L (Ex. 1003, 24), indicating that the selected route is direct from M to
`L.” Id. Petitioner also directs us to Jubin’s disclosure of routing information
`in the headers of packets. Pet. 34. Specifically, Jubin’s packets contain
`source, destination, and next hop for each packet. Id. Jubin provides an
`example in which the header contains all of the nodes necessary to transmit a
`packet from PR L to PR N. Id. Thus, Petitioner asserts that Jubin discloses
`a PR that selects a radio transmission path to another PR. Reply 6–7.
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`18
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`IPR2017-00252
`Patent 8,000,314 B2
`
`We find Petitioner’s contentions to be persuasive and supported by the
`record in this matter. We also credit Dr. Heppe’s testimony and find it to be
`well supported by the record. Each of Jubin’s PRs “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,
`even before it is given a packet to deliver or forward.” Ex. 1003, 23
`(emphasis added). “Once installed, the system discovers the radio
`connectivity between packet radios and organizes routing strategies
`dynamically on the basis of this connectivity.” Id. at 22. Further, Jubin
`states 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.” The tier table contains the complete route for any first or second tier
`connections. For example as shown in Figures 2 and 5, a packet traveling
`from PR N to PR L would travel from N to M to L. See Fig. 5.
`Patent Owner also argues that Jubin does not teach this limitation
`because Jubin’s devices (destinations) lie outside of the PRNET and thus,
`any radio transmission path discussed in Jubin would terminate before
`reaching the destination. PO Resp. 17. Petitioner disputes this argument
`and contends that “Claim 1 recites ‘a radio transmission path to said first
`node’—not that the ‘first node’ is a ‘device,’ ‘client,’ or ‘server.’” Reply 7.
`Thus, under Petitioner’s view the claim language would encompass a path
`from a PR to another PR and does not require that the path reach a device
`that may be connected to a PR. Id. Jubin describes that “[t]he packets can
`be routed either to another PR over the radio channel or to an attached
`device.” Ex. 1003, 22. Further, as discussed above, Jubin’s routing tables
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`IPR2017-00252
`Patent 8,000,314 B2
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`contain information regarding the path from one PR to another PR in the
`network. See e.g., id. at Fig. 5. We are persuaded by Petitioner’s
`arguments. Claim 1 requires routing data packets from the second node to
`the first node. We are not persuaded that the claim should be read to
`exclude routes between PRs. The ’314 patent refers to nodes broadly and
`uses the term node interchangeably with terms such as client and server. See
`e.g., Ex. 1001, Figs. 2f, 2h, 9:63–64. We determine that claim 1’s nodes are
`not limited to a terminal device that would be connected to a radio and that
`the term node is broad enough to include Jubin’s PRs.
`Next, Patent Owner argues that Jubin and Fifer do not teach “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.” PO
`Resp. 20–23. According to Patent Owner, “‘[i]n Jubin, the PR destination
`(which corresponds to the first node as claimed) has no control of and no
`ability to change the way that nodes get to it, in particular, the paths
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