Paper No. ___
`Filed: January 24, 2022
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`SONOS, INC.,
`Petitioner
`v.
`GOOGLE, LLC,
`
`Patent Owner
`______________________
`
`Case No. IPR2021-00964
`U.S. Patent No. 10,229,586
`
`
`PATENT OWNER’S RESPONSE
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`
`
`

`

`
`
`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
`
`
`
`
`
`TABLE OF CONTENTS
`Introduction ................................................................................................. 1
`The Invention of the ’586 Patent .................................................................. 3
` Level of Ordinary Skill in the Art ................................................................ 6
`
`B.
`
` Claim Construction ...................................................................................... 7
` Ground 1: Baker and Bruckert Do Not Render Obvious Claims 1, 5, 8,
`9, 14, and 15 ................................................................................................ 8
`A.
`Baker does not disclose the packet relay determination in the
`independent claims ............................................................................ 8
`Petitioner fails to show that the combination of Baker and
`Bruckert renders obvious “a controller operatively coupled to . . .
`the reset element” .............................................................................15
` Ground 2: Petitioner’s Omnibus Motivations to Combine Baker and
`Bruckert with McMillin to Reach Claims 2-5, 7, 10-12, 16, 18, and 20
`Are Facially Deficient .................................................................................17
` Ground 3: Petitioner Has Not Met Its Burden of Showing that Claims
`1-5, 7-12, 14-16, 18, and 20 Are Rendered Obvious ...................................20
`
`A. Marman does not render obvious the claimed “communication
`packet including a preamble portion, an identification code
`portion, a data payload portion, and an integrity portion” .................20
`1.
`The pieces identified in Marman are not transmitted or
`received as part of a packet .....................................................20
`2. Marman does not render obvious the claimed “integrity
`portion” ...................................................................................26
`A POSITA would not be motivated to combine Marman and
`Shoemake .........................................................................................29
`1. Marman teaches away from use of Shoemake’s packet ...........30
`
`B.
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`C. Marman and Shoemake do not render obvious the recitations of
`claim 3 ..............................................................................................33
`D. Marman and Shoemake do not render obvious the recitations of
`claim 5 ..............................................................................................34
`
` Conclusion ..................................................................................................35
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`ii
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ........................................................................ 19
`Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp.,
`838 F. App’x 555 (Fed. Cir.), cert. denied, 141 S. Ct. 2721 (2021) .................. 17
`Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp.,
`IPR2018-00340, Paper 58 (PTAB Mar. 29, 2019)................................ 17, 18, 19
`Ecolochem, Inc. v. S. Cal. Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) ........................................................................ 25
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) ........................................................................ 25
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) ............................................................................ 31
`Harris Corp. v. Fed. Exp. Corp.,
`502 F. App’x 957 (Fed. Cir. 2013) ................................................................... 16
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................. 29, 30, 34
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .................................................................. 19, 30
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`777 F. App’x 501 (Fed. Cir. 2019) ................................................................... 29
`Tec Air, Inc. v. Denso Mfg. Mich. Inc.,
`192 F.3d 1353 (Fed. Cir. 1999) .................................................................. 30, 33
`TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C.,
`375 F.3d 1126 (Fed. Cir. 2004) .......................................................................... 7
`
`iii
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
`
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ............................................................................ 8
`W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .................................................................... 1, 16
`
`iv
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`Introduction
`Petitioner alleges that the ’586 patent claims recite only “standard
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`components” performing standard functions like receiving, comparing, and
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`relaying. Pet. 17. But Petitioner vastly oversimplifies the claims, ignoring certain
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`limitations and their interconnections. Id. Petitioner’s obviousness analysis is
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`therefore legally flawed because “[e]ach claimed invention must be considered as a
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`whole.” W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir.
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`1983). Taken as a whole, the ’586 patent’s independent claims define audio-
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`enabled devices, and methods of operating them, that selectively forward a certain
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`type of “communication packet” to only devices having an identification code
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`portion that matches with a locally stored table of identifiers. See Ex. 1001 at
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`17:23-46. Petitioner has not shown that these independent claims are obvious
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`under either of its two grounds that challenge them.
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`Grounds 1 and 2 fail for two reasons. First, Baker does not teach or suggest a
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`controller that “determine[s] to relay the communication packet” specifically
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`“based on the comparison of the identification code portion . . . matching an
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`entry in the table of identifiers,” as claimed. See infra Section V.A. Specifically,
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`Baker’s lookup operation does not compare an identification code portion to an
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`entry in a table of identifiers to make a selective determination to relay a packet.
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`Instead, in almost all of Baker’s disclosures, Baker’s table does not include
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`1
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`identifiers, and thus the comparison cannot be made. And in the only two instances
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`where Baker does disclose a table with identifiers, Baker does not disclose
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`determining to relay the packet based on a comparison of the identifiers,
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`because Baker expressly discloses that the packet will always be forwarded if it
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`can be. The second, independent, reason Grounds 1 and 2 fail is that the Petition
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`fails to even address the requirement that the “controller [is] operatively coupled to
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`. . . the reset element.” See infra Section V.B.
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`Ground 2 fails for another reason: Petitioner presents a deficient obviousness
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`analysis. See infra Section VI. Even though Ground 2 covers multiple dependent
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`claims, Petitioner presents a generalized omnibus motivation to combine McMillin
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`with Baker/Bruckert that is untethered to any of the limitations in the challenged
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`dependent claims.
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`Finally, Petitioner’s Ground 3 fails on the merits because (1) Marman does
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`not teach a single communication packet with all the portions recited in the
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`claim; and (2) a person of ordinary skill in the art (POSITA) would not be
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`motivated to modify Marman to include Shoemake’s packet because it would
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`introduce undesirable complexity and power requirements that Marman
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`specifically sought to avoid. See infra Section VII.
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`In sum, Patent Owner respectfully requests that the Board confirm the
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`patentability of the challenged claims.
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`2
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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` The Invention of the ’586 Patent
`The ’586 patent improves upon communication in distributed wireless
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`systems comprised of geographically remote audio-enabled devices (e.g., smoke
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`detectors), each seeking to communicate with one another and/or a central base
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`station. See, e.g., Ex. 1001 at 1:38-42, 2:10-12, 3:14-21; Ex. 2006, ¶ 33. As one
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`example, the system’s audio-enabled devices include “repeaters [that] are used
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`between the sensor units and the base unit to extend the range of the system.”
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`Ex. 1001 at 2:18-22. These units provide the advantage of “allow[ing] the base unit
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`to communicate with a larger number of sensors,” but they also introduce
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`additional nodes in the network. Id. at 2:18-22, 3:16-18, 7:6-10, FIG. 1.
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`Embodiments of the invention thus set out to create a system where audio-enabled
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`devices can “operate in an environment with several other repeater units” while
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`communicating with one another. See, e.g., id. at 3:16-18, 7:6-10; Ex. 2006, ¶ 33.
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`One such embodiment appears in claim 1, which provides for delivery of
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`communications even in crowded networked environments. Ex. 1001 at 3:16-18,
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`7:6-10, 17:23-46; Ex. 2006, ¶ 34. By its terms, the claim covers an audio-enabled
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`wireless device that stores a table of identifiers, receives communication packets
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`with certain specific portions, and strategically limits packet relays to other devices
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`based on a comparison of the packet to the table of identifiers:
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`3
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`
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`1. An audio-enabled wireless device configured for
`bidirectional wireless communication in a wireless mesh
`network, the wireless device comprising:
`a wireless transceiver;
`an audio output element;
`a reset element; and
`a controller operatively coupled to the wireless
`transceiver, the audio output element, and the reset
`element, the controller being configured to:
`receive a communication packet using the wireless
`transceiver, the communication packet including a
`preamble portion, an identification code portion, a
`data payload portion, and an integrity portion;
`compare at least the identification code portion
`of the received communication packet to a table of
`identifiers stored in the audio-enabled wireless device;
`based on the comparison of the identification
`code portion of the received communication packet
`matching an entry in the table of identifiers stored in the
`audio-enabled wireless device, determine to relay the
`communication packet to another audio-enabled
`wireless device; and
`relay the communication packet to the other audio-
`enabled wireless device.
`
`Ex. 1001 at 17:23-46 (emphases added); Ex. 2006, ¶ 34. Independent claim 9
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`recites similar features in the context of a “method of forwarding a communication
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`packet.” Ex. 1001 at 18:15-35. Likewise, independent claim 15 recites “audio-
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`enabled wireless devices” having similar features in the context of a “wireless
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`mesh network.” Id. at 18:58-19:11.
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`
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`Figure 5 of the specification shows one example of a communication packet
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`that can be used in the claimed invention, having the claimed “preamble portion”
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`4
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`(e.g., preamble 501), “identification code portion” (e.g., address 502), “data
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`payload portion” (e.g., data 503), and “integrity portion” (e.g., checksum 504):
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`
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`Id. at FIG. 5, 11:1-9. The claimed “audio-enabled wireless device” can use this
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`packet structure for communications that the “controller” is configured to
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`selectively determine to relay “based on the comparison of the identification code
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`portion of the received communication packet matching an entry in the table of
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`identifiers stored in the audio-enabled wireless device.” Id. at 17:23-42; Ex. 2006,
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`¶ 35.
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`
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`The specification provides an example where a given repeater is dedicated to
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`forwarding packets to only the devices having IDs located in its table of identifiers.
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`Ex. 2006, ¶ 36. Because “[t]he repeater unit 110 typically operates in an
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`environment with several other repeater units,” “the repeater 110 has database
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`entries for the [IDs] of the sensors 102-104, and thus the sensor 110 will only
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`communicate with sensor units 102-104.” Ex. 1001 at 7:6-13. In the exemplary
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`system in Figure 1, for example, the repeater unit 110 may store the IDs of sensors
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`102-104, and the repeater unit 111 may store the IDs of sensors 105-106. See id. at
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`FIG. 1, 7:10-13, 36-39; Ex. 2006, ¶ 36. In this embodiment, the repeater 110 may
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`operate to relay a packet only if the identification code portion of the packet is for
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`5
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`a sensor unit boxed in red, and the repeater 111 may operate to relay a packet only
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`if the identification code portion of the packet is for a sensor unit boxed in pink:
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`
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`Ex. 1001 at FIG. 1 (annotated), 7:10-13, 36-39; Ex. 2006, ¶ 36. In this way, the ’586
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`patent employs communication packets having certain fields and selectively relays
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`a communication packet when an ID match is made with the stored table of
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`identifiers. Ex. 2006, ¶¶ 36-37.
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` Level of Ordinary Skill in the Art
`Petitioner proposes that a POSITA would have “had a degree in computer
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`engineering, computer science, or a similar discipline, along with two years of
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`professional experience developing wireless sensor systems or an equivalent level
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`6
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`of skill, knowledge, and experience,” and “would be aware of and generally
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`knowledgeable about the types of components found in wireless networks,
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`communication protocols, packet structure, and industry standards and best
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`practices that were known and available at the time the ’586 patent was filed.” Pet.
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`33.
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`It is unclear from Petitioner’s definition whether a POSITA could obtain the
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`requisite qualifications through education or experience because it is unclear what
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`part of the phrase “or an equivalent level of skill, knowledge, and experience”
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`modifies. Ex. 2006, ¶¶ 29-31. It is also unclear why the POSITA would have had
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`to have worked “developing wireless sensor systems” when knowledge of such
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`systems could be acquired in other ways. Id. Accordingly, a POSITA at the time of
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`invention of the ’586 patent would have held a bachelor’s degree in electrical
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`engineering, computer science, or a similar discipline, or at least two years of
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`professional or research experience in the fields of computer hardware and
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`software, wireless networking, or an equivalent subject matter. Id.
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` Claim Construction
`Before a claim can be compared against the prior art, the scope of the claim
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`must first be determined. TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am., L.L.C.,
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`375 F.3d 1126, 1138-39 (Fed. Cir. 2004). In its Institution Decision (“Paper 7”),
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`7
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`the Board addressed the term “preamble portion” in the body of its decision but
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`determined that “[n]o other terms require construction at this stage.” Paper 7 at 12.
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`Petitioner proposed constructions for three terms: “claim preambles,” “reset
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`element,” and “preamble portion.” Pet. 18-23. However, none of these terms
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`requires express construction to resolve the underlying validity controversy. See,
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`e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (“[O]nly those terms need be construed that are in controversy, and only to
`
`the extent necessary to resolve the controversy.”). None of the arguments presented
`
`herein turn on whether the claim preambles are limiting, or whether the terms
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`“reset element” and “preamble portion” receive a special construction beyond their
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`plain and ordinary meanings. Ex. 2006, ¶¶ 38-39. Accordingly, no express
`
`constructions are necessary for purposes of this proceeding.
`
` Ground 1: Baker and Bruckert Do Not Render Obvious Claims 1, 5, 8,
`9, 14, and 15
`A. Baker does not disclose the packet relay determination in the
`independent claims
`Claim 1 recites that the controller is configured to “compare at least the
`
`identification code portion of the received communication packet to a table of
`
`identifiers stored in the audio-enabled wireless device; [and] based on the
`
`comparison of the identification code portion . . . matching an entry in the table
`
`of identifiers . . . , determine to relay the communication packet to another
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`8
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`audio-enabled wireless device.” Ex. 1001 at 17:29-44 (emphases added).
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`Independent claims 9 and 15 recite similar recitations in the context of method and
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`system claims. Id. at 18:25-33, 19:1-9.
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`The independent claims thus require (1) comparing a specific part of the
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`received packet (i.e., the identification code portion) with an entry in the table of
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`identifiers; and (2) determining to relay the packet to another device based on a
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`match between that identification code portion of the packet and the entry in the
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`table of identifiers. Id. at 17:29-44, 18:25-33, 19:1-9; Ex. 2006, ¶¶ 40-41. The
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`’586 patent employs this packet-to-table matching as a basis for determining to
`
`relay a packet because “[t]he repeater units typically operate in an environment
`
`with several other repeater units,” and certain repeater units may relay to only
`
`certain devices. Ex. 1001 at 3:16-18, 7:6-13, 7:28-31, 7:36-39; Ex. 2006, ¶ 42.
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`Specifically, the repeater “only communicates with designated wireless sensor
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`units whose IDs appears [sic] in the repeater’s database” or table. Ex. 1001 at 3:19-
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`21. For example, repeater 110 may be configured with the ID of sensor 102 in its
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`table of identifiers, while repeater 111 does not have the ID of sensor 102 in its
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`table of identifiers. Id. at 7:10-13, 7:36-39. As such, repeater 110 determines to
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`relay the packet because the ID code portion of the packet includes the ID for
`
`sensor 102, which appears in its table of identifiers. Id. In this way, the ’586 patent
`
`is concerned with determining to relay an incoming packet. Ex. 2006, ¶ 42.
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`9
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`Packets are selectively relayed by only certain repeaters based on a match between
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`the ID code portion of the packet and the existence of this ID code in a given
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`repeater’s table. Id., ¶¶ 42-43. This feature may enable reduced congestion (and
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`distribute processing and communication load) in the network because repeater
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`units do not relay every received packet that is capable of being forwarded; they
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`selectively relay only packets with ID code portions that match an entry in their
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`table of identifiers. Id.; Ex. 1001 at 7:6-13, 7:28-31, 7:36-39.
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`In its Institution Decision, the Board found that “at this stage, Baker’s
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`lookup operation discloses the claimed comparison.” Paper 7 at 16. But Baker’s
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`lookup operation is only concerned with how to relay a packet, not determining to
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`relay it in the first place. Ex. 2006, ¶ 44. Specifically, Baker never discloses using
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`its lookup table in any manner to determine to relay a packet—much less making
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`a relay determination based on a match between the ID code portion of the
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`incoming packet and an identifier in the table. Id., ¶¶ 44-45. The Board noted that
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`Baker “not only determines that the table specifies a valid port and channel
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`number, but also performs a lookup operation, which Patent Owner overlooks.”
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`Paper 7 at 16. However, as explained below and supported by Patent Owner’s
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`expert testimony, that lookup operation in Baker does not compare the specific
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`information recited in the claim—the ID code portion of the packet—to an
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`identifier in the table and use a match between them as the basis for determining to
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`10
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`relay the packet. Ex. 2006, ¶ 45. Indeed, even in the portion of Baker cited in the
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`Institution Decision by the Board, there is no address-to-address match that forms
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`the basis for a determination to relay the packet, as explained in more detail below.
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`Id.
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`Specifically, Petitioner mapped the destination address 706 in Baker to the
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`recited “identification code portion” of the incoming packet (Pet. 44 (citing
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`Ex. 1001 at 11:3-5, FIG. 5)), and it mapped the local routing table in Baker to the
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`recited “table of identifiers” (Pet. 45-46 (citing Ex. 1004, ¶¶ [0027], [0030])). But
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`no embodiment in Baker compares the destination address 706 in an incoming
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`packet to an entry in the local routing table and uses a match between them as the
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`basis for determining to relay the packet, as claimed. Ex. 1001 at 17:29-44,
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`18:25-33, 19:1-9; Ex. 2006, ¶ 46.
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`
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`In all but the two instances in Baker discussed in greater detail below, the
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`first recitation of the claim, namely, “compare at least the identification code
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`portion of the received communication packet to a table of identifiers,” could not
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`even occur. Ex. 2006, ¶ 47. This is because in these embodiments, device
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`addresses are not stored in the routing table. See Ex. 1004, ¶ [0030] (“[I]n
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`embodiments a routing table entry for a device defines two connections, one for
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`the link for the connection to the device, the second for the link for the connection
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`from the device (for one-way communication only one of these links need be
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`11
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`defined).”), ¶ [0027] (“Each intermediary device merely knows that incoming data
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`U.S. Patent No. 10,229,586
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`on one channel (and/or port) should be forwarded on a second channel [(]and/or
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`port), such a list of associated channels being locally stored, for example as a
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`table.”). This is because the intermediary devices (e.g., repeaters) in Baker “need
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`only be locally aware.” Id., ¶ [0027]. “[N]o single device requires a map of the
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`global network structure (or changes in this) because routing can be performed
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`without such a map.” Id. The local routing tables in Baker primarily link incoming
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`channel/port numbers with outgoing channel/port numbers to enable an
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`intermediary device to determine which channel/port to use when forwarding
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`the incoming packet. See, e.g., id., ¶¶ [0027], [0076], [0085]; Ex. 2006, ¶ 47. As
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`such, in these embodiments, there is nothing in Baker’s routing table that could
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`even be meaningfully compared to the ID code portion (i.e., the destination
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`address) of the incoming packet because no such corresponding identifiers are
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`stored in the local routing table. Ex. 1004, ¶¶ [0027], [0076], [0085]; Ex. 2006,
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`¶ 47.
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`
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`Baker mentions only twice that the local routing table may include a
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`destination address to which the ID code portion of the incoming packet could
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`hypothetically be compared. Ex. 1004, ¶¶ [0030], [0076]. But in neither of those
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`instances does a match between the ID code portion of the incoming packet and
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`the stored destination media access control (“MAC”) address form the basis for a
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`12
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`determination to relay the incoming packet. Id.; Ex. 2006, ¶ 48. This is why the
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`“lookup operation” in Baker identified by the Board in its Institution Decision does
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`not meet the recitations in the independent claims. Ex. 2006, ¶ 48; see also Paper 7
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`at 16.
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`In the first instance, Baker explains that although “an identifier for the
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`intended end recipient” may be stored in the table, “in embodiments this is not
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`necessary because a message containing an identifier for the intended recipient is
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`always forwarded (if it can be) unless the node is in fact the recipient.” Ex. 1004,
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`¶ [0030]. That is, in this embodiment, even if the destination address in the
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`incoming packet could hypothetically be compared to “[the] identifier for the
`
`intended end recipient,” Baker never teaches that a comparison match forms the
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`basis for a determination to relay the packet, as claimed. Instead, it is
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`predetermined that the packet is always going to be relayed if possible. Ex. 2006,
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`¶ 49. For at least this reason, this embodiment of the lookup table in Baker cannot
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`be relied on for a teaching of the claim recitations. Id.
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`
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`The second instance in Baker that discusses the MAC address being
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`included in the table of identifiers also does not disclose determining to relay a
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`packet based on a match between the destination address in the packet and the
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`MAC address in the local routing table, as claimed. Ex. 2006, ¶ 50. While the
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`Board found that “Baker does not base retransmission on the mere existence of
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`valid routing information” (Paper 7 at 16), it overlooked that retransmission in the
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`Patent Owner’s Response – IPR2021-00964
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`claim is based on something else—a match between the ID code portion in the
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`packet and the table—that Baker does not disclose as forming a basis for
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`retransmission. Ex. 2006, ¶ 50. Specifically, in this embodiment, Baker explains
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`that the destination MAC address instead informs the determination of which
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`outgoing channel should be used—not determining that the packet should be
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`relayed at all:
`
`Since packets intended for more than one destination
`may arrive at a node on the same incoming channel
`(depending upon the topology of the network) destination
`information such as a destination MAC address may be
`included in the connection table so that an incoming
`channel and destination determine an outgoing
`channel for retransmission of a packet. In
`embodiments the condition is that the routing tables must
`hold an identifier that uniquely identifies the (bi-
`directional) path through the network. This may either be
`a paired source-destination MAC address, or a
`specialised network (not UWB) channel number that
`serves the same purpose.
`
`
`Ex. 1004, ¶ [0076] (emphasis added); Ex. 2006, ¶ 50. Baker does not disclose that
`
`the device “determine[s] to relay the communication packet” based on a
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`“match[]” between the destination address 706 in the packet and the destination
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`MAC address in the table. Ex. 1001 at 17:39-44 (emphases added). This is because
`
`Baker is focused on how to relay the packet (i.e., which channel and/or port to
`
`14
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`use)—not determining to relay the packet—because Baker does not employ the
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`type of selective relay disclosed and claimed in the ’586 patent. Ex. 2006, ¶ 50.
`
`
`
`For these reasons, the lookup table operation in Baker does not disclose the
`
`recitations of independent claims 1, 9, and 15. Id., ¶ 51. Since Petitioner relied on
`
`Baker for these features and did not point to Bruckert for these features, Petitioner
`
`has not met its burden of showing that Baker, taken alone or in combination with
`
`Bruckert, renders obvious claims 1, 5, 8, 9, 14, and 15. Id.
`
`B.
`
`Petitioner fails to show that the combination of Baker and
`Bruckert renders obvious “a controller operatively coupled to . . .
`the reset element”
`Claim 1 recites, inter alia, “a controller operatively coupled to the wireless
`
`transceiver, the audio output element, and the reset element.” Ex. 1001 at 17:29-
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`30 (emphases added). Petitioner never identifies where Baker or Bruckert discloses
`
`the controller operatively coupled to the reset element, nor does Petitioner explain
`
`why this feature would have been obvious in view of the prior art. Pet. 40-41.
`
`Petitioner instead only addresses how the prior art allegedly teaches that the
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`controller is coupled to the “wireless transceiver” and “audio output element.”
`
`Pet. 41. Petitioner’s sole mention of the “reset element” fails to address any
`
`operative coupling with the controller:
`
`While Baker does not expressly reference a “reset
`element,” it would have been obvious to include this
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`15
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`element for the reasons explained in Section VII.C.1.[1-
`3].
`
`
`Id. This statement only alleges that it would have been obvious to “include” the
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`reset element; it is silent with respect to where the prior art teaches that the
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`“controller [is] operatively coupled to . . . the reset element.” Id.; Ex. 2006, ¶ 52.
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`Moreover, the section of the Petition referenced in this statement cannot obviate
`
`this deficiency because it too only alleges that Bruckert discloses a “reset element”
`
`and that a POSITA would have incorporated Bruckert’s reset element into Baker,
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`but it never alleges that the prior art discloses or renders obvious operatively
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`coupling Bruckert’s reset element with Baker’s controller. Pet. 37-40; Ex. 2006,
`
`¶ 53. Petitioner thus fails to provide a factual basis in the Petition capable of
`
`supporting its challenge to claim 1, whether based on Baker alone or in
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`combination with Bruckert. See, e.g., W.L. Gore, 721 F.2d at 1548 (“Each claimed
`
`invention must be considered as a whole.”); Harris Corp. v. Fed. Exp. Corp.,
`
`502 F. App’x 957, 967 (Fed. Cir. 2013) (finding that subtle but unaddressed claim
`
`features do not relieve patent challenger of “its burden to prove by clear and
`
`convincing evidence that these additional limitations actually were known in the
`
`prior art”).
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
`
` Ground 2: Petitioner’s Omnibus Motivations to Combine Baker and
`Bruckert with McMillin to Reach Claims 2-5, 7, 10-12, 16, 18, and 20
`Are Facially Deficient
`Petitioner’s combination of Baker, Bruckert, and McMillin is facially
`
`deficient because the Petition fails to articulate a motivation to combine the
`
`features of the prior art to yield the claimed invention. Specifically, the Petition
`
`acknowledges that the features of dependent claims 2-5, 7, 10-12, 16, 18, and 20
`
`are “not expressly discussed in Baker and Bruckert” and, accordingly, relies on
`
`McMillin for a teaching of “the claimed techniques for purposes of avoiding
`
`transmission collisions.” Pet. 52. The Petition then steps through each claim,
`
`pointing to where the features are allegedly taught by McMillin, including no
`
`explanation for why a POSITA would have combined the particular feature of
`
`McMillin with the hypothetical Baker/Bruckert combination to reach the claim
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`recitation. Pet. 52-56; Ex. 2006, ¶ 54. While the Petition attempts to cure this
`
`deficiency with an omnibus “motivation to combine” section, this too falls short of
`
`meeting Petitioner’s evidentiary burden of proving obviousness. Pet. 56-58.
`
`See, e.g., Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp., IPR2018-00340,
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`Paper 58 at 26 (PTAB Mar. 29, 2019) (finding Petitioner’s rationale for its
`
`combinations insufficient because it was “untethered to any claim element, or to
`
`the claim as a whole”); Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp.,
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`838 F. App’x 555, 557 (Fed. Cir.) (upholding Board finding of lack of “motivation
`
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`to combine because [the petition] merely (1) alleged the references came from the
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`Patent Owner’s Response – IPR2021-00964
`U.S. Patent No. 10,229,586
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`same field of study and address the same problem; and (2) recited boilerplate legal
`
`conclusions untethered to any claim language”), cert. denied, 141 S. Ct. 2721
`
`(2021).
`
`The Petition’s entire motivation-to-combine analysis for McMillin spans
`
`four generalist paragraphs that do not reference a single claim feature. Pet. 56-58.
`
`The first paragraph is conclusory and offers no substantive reason for the
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`combination. Pet. 56; Ex. 2006, ¶ 55. The second paragraph generally discusses
`
`McMillin’s “collision avoidance techniques,” but says nothing about combining
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`McMillin with Baker/Bruckert, let alone meeting any specific claim recitation.
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`Pet. 57; Ex. 2006, ¶ 55.
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`The third paragraph explains that McMillin and Baker teach “the same
`
`general type of network,” and generally alleges that McMillin’s techniques could
`
`imp