Trials@uspto.gov
`571-272-7822
`
`Paper7
`Date: October 18, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONOS, INC.,
`Petitioner,
`
`Vv.
`
`GOOGLE LLC,
`Patent Owner.
`
`IPR2021-00964
`Patent 10,229,586 B2
`
`Before KEVIN F. TURNER, TERRENCE W. MCMILLIN,and
`SCOTT RAEVSKY,Administrative Patent Judges.
`
`RAEVSKY,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 US.C. § 314
`
`
`571-272-7822
`
`Paper7
`Date: October 18, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONOS, INC.,
`Petitioner,
`
`Vv.
`
`GOOGLE LLC,
`Patent Owner.
`
`IPR2021-00964
`Patent 10,229,586 B2
`
`Before KEVIN F. TURNER, TERRENCE W. MCMILLIN,and
`SCOTT RAEVSKY,Administrative Patent Judges.
`
`RAEVSKY,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 US.C. § 314
`
`
`
`IPR2021-00964
`Patent 10,229,586 B2
`
`I.
`
`INTRODUCTION
`
`Sonos, Inc. (“Petitioner”) filed a Petition (Paper1, “Pet.”) requesting
`
`inter partes review of claims 1—5, 7-12, 14-16, 18, and 20 of U.S. Patent
`
`No. 10,229,586 B2 (Ex. 1001, “the ’586 patent’). Google LLC (“Patent
`
`Owner”)filed a Preliminary Response (Paper 6,“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review may not beinstituted
`
`unless it is determined that there is a reasonable likelihood that the petitioner
`
`would prevail with respectto at least one of the claims challenged in the
`
`petition. Based on the information presented in the Petition and the
`
`supporting evidence, we are persuadedthere is a reasonablelikelihood
`
`Petitioner would prevail with respect to the challenged claims. Accordingly,
`
`weinstitute an inter partes review of claims 1-5, 7-12, 14-16, 18, and 20 on
`
`all of the groundsset forth in the Petition.
`
`Ourfactual findings and conclusionsat this stage of the proceeding
`
`are based on the evidentiary record developed thus far. This is not a final
`
`decision as to patentability of the challenged claim.
`
`Il. BACKGROUND
`
`A. Related Matter
`
`Theparties identify the following related district court litigation:
`
`Google LLC v. Sonos, Inc., No. 3:20-cv-03845 (N.D. Cal. June 11, 2020).
`
`Pet. 4; Paper5, 2.
`
`B. The ’586 patent
`
`The 586 patent describes “a wireless sensor system.” Ex. 1001, 2:8—
`
`10. Figure 1, reproduced below, depicts an example of this system:
`
`
`
`IPR2021-00964
`Patent 10,229,586 B2
`
`oo— Fic. 1
`
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`
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`
`Id. at 4:13-15. Figure 1 shows a system that includes sensorunits that
`
`communicate with a base unit through repeater units. Jd. Sensors 102-106
`
`measure conditions like smoke, temperature, moisture, and carbon
`
`monoxide. Jd. at 4:60-65. The sensors wirelessly communicate with
`
`repeaters 110, 111. Jd. at 4:37-40. The repeaters in turn communicate with
`
`base unit 112 and monitoring computer system 113. /d. at 4:39-40. When
`
`sensors 102—106 detect smoke,fire, water, or some other condition, they
`
`communicate with a repeater 110, 111, which forwards data to base unit 112
`
`and computer 113. Jd. at 5:26-32.
`
`Figure 5 depicts an example communication packet used by sensors
`
`102-106, repeaters 110-111, and base unit 112:
`
`
`
`IPR2021-00964
`Patent 10,229,586 B2
`
`wennNaeeeECACT ee
`poveceionfei
`PosGINSLERATUTCEnad
`
`
`|PREAMBLE
`
`
`
`S03 pra Sth
`
`v5bt
`
`SQ?
`
`Fic. 5
`
`Id. at 4:19-21. The packet includes preamble portion 501, address (or ID)
`
`portion 502, data payload portion 503, and integrity portion 504 (which can
`
`include a checksum).
`
`/d. at 11:1-6.
`
`C. Challenged Claims
`
`Petitioner challenges claims 1-5, 7-12, 14-16, 18, and 20 ofthe °586
`patent. Pet. 1. Claim 1 is illustrative:'
`
`1. [1-p] An audio-enabled wireless device configured for bidirectional
`wireless communication in a wireless mesh network, the wireless
`device comprising:
`
`[1-1] a wireless transceiver;
`
`[1-2] an audio output element;
`
`[1-3] a reset element; and
`[1-4] a controller operatively coupled to the wireless transceiver,
`the audio output element, and the reset element, the controller
`being configuredto:
`[1-5] 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;
`[1-6]? compareatleast the identification code portion of the
`received communication packetto a table of identifiers stored
`in the audio-enabled wireless device;
`
`' For convenience, weuse Petitioner’s element labeling. See Pet. 34-44.
`? Petitioner uses “[1-6]” to group multiple limitations. Pet. at 44.
`4
`
`
`
`IPR2021-00964
`Patent 10,229,586 B2
`
`based on the comparison ofthe 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.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 7),
`
`supported by the declaration of Dr. Stephen B. Wicker (Ex. 1003):
`
`_9
`
`14_
`
`3
`
`Baker* alone? or Baker and
`
`
`
`
`
`
`
`Claim(s) Challenged|35 U.S.C. § Reference(s)/Basis
`
`OP 10-12, 16, 18,|193a) Baker, Bruckert, and McMillin’
`
`
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285-88 (2011), revised 35 U.S.C. §§ 102, 103 effective March 16,
`2013. Because the challenged patent claimspriority to applicationsfiled
`before March 16, 2013, we refer to the pre-AIA version of §§ 102, 103. Our
`opinions on this record would not change if the AIA versions of §§ 102, 103
`were to apply.
`* U.S. Patent Pub. No. 2006/0120433 A1 to Bakeret al. (“Baker”) (Ex.
`1004).
`> Petitioner’s grounds summary refers only to obviousness over Baker and
`Bruckert, Pet. 6—7, but Petitioner also asserts obviousness over Baker alone
`(except for claims 8 and 14, which Petitioner argues over “Baker and
`Bruckert together”), id. at 34-47.
`6 European Patent No. 0416732 B1 to Bruckert et al. (“Bruckert”) (Ex.
`1009).
`7 U.S. Pub. No. 7,027,773 B1 to McMillin (“McMillin”) (Ex. 1018).
`5
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`IPR2021-00964
`Patent 10,229,586 B2
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`
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`Claim(s) Challenged|35 U.S.C. § Reference(s)/Basis
`
`1-5, 7-12, 14—16, 18,
`103(a)
`Marman®alone? or Marman and
`
`20
`Shoemake!”
`
`
`Il. ANALYSIS
`
`A. Discretion Under 35 U.S.C. § 325(d)
`
`Patent Ownercontends that we should exercise our discretion under
`
`35 U.S.C. § 325(d) to deny institution of inter partes review. Prelim. Resp.
`14-24. Petitioner preemptively addressed § 325(d) discretion in the Petition,
`arguing that there is no basis for us to exercise discretion. Pet. 11-13. We
`
`disagree with Patent Ownerand decline to exercise our discretion to deny
`
`institution.
`
`Pursuant to 35 U.S.C. § 325(d), in determining whetherto institute an —
`inter partes review,“the Director may take into account whether, and reject
`
`the petition or request because, the sameor substantially the samepriorart
`
`or arguments previously were presented to the Office.” In evaluating
`
`arguments under § 325(d), we use
`
`[a] two-part framework:(1) whether the sameor substantially the
`same art previously was presented to the Office or whether the
`same or substantially the same arguments previously were
`presentedto the Office; and (2) if either condition of first part of
`the
`framework is
`satisfied, whether
`the petitioner has
`demonstrated that the Office erred in a manner material to the
`patentability of challenged claims.
`
`8 PCT Pub. No. WO 00/21053 to Marmanetal. (“Marman”) (Ex. 1006).
`° Petitioner’s grounds summary refers only to obviousness over Marman
`and Shoemake,Pet. 6-7, but Petitioner also asserts obviousness over
`Marmanalone, id. at 58-66.
`10 U.S. Pub. No. 2002/0122413 Al to Shoemake (“Shoemake”) (Ex. 1010).
`6
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`
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`IPR2021-00964
`Patent 10,229,586 B2
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`Advanced Bionics, LLC v. MED-EL Elektromedizinische Gerdte GmbH,
`
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential); see also
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
`
`8 at 17-18 (PTAB Dec.15, 2017) (precedential as to Section III.C.5, first
`
`paragraph)(listing factors to consider in evaluating the applicability of
`
`§ 325(d)).
`
`Under Advanced Bionics, Becton Dickinson factors (a), (b), and (d)
`
`are considered in the evaluation of whether the sameor substantially the
`
`sameart or arguments were previously presented to the Office. Advanced
`
`Bionics, Paper 6 at 10. Becton, Dickinson identifies these factors as (a) the
`
`similarities and material differences between the asserted art and the prior art
`
`involved during examination; (b) the cumulative nature of the asserted art
`
`andthe prior art evaluated during examination; and (d) the extent of the
`
`overlap between the arguments made during examination and the mannerin
`
`whichPetitionerrelies on the prior art. Becton, Dickinson, Paper 8 at 17-18.
`
`Patent Ownerargues that Marmanis substantively identical to U.S.
`
`Patent No. 6,624,750 (“Marman °750’), which wascited on the face of the
`
`’586 patent and wastherefore considered by the Examiner during
`
`prosecution of the ’586 patent. Prelim. Resp. 16-17. Patent Owneralso
`
`argues that Shoemake is cumulative of Marman because Petitioner
`
`“highlights the similarities between the communication packets in Marman
`
`and Shoemake.” Jd. at 17-18. Patent Owner viewsPetitioner as relying on
`
`Marmanforall the independent claim limitations and as cumulatively
`
`relying on Shoemake for what a POSITA would have understood Marmanto
`
`teach. Jd. Thus, Patent Owner contends,“Petitioner admits that Shoemake
`
`is redundant of Marman.” Jd. at 17.
`
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`IPR2021-00964
`Patent 10,229,586 B2
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`We agree with Patent Ownerthat the same or substantially the same
`
`art previously was presented to the Office with respect to Ground 3.
`
`Marmanand Marman ’750 are cumulative because Marman is a PCT
`
`publication related to Marman ’750, the corresponding U.S. issued patent.
`
`Compare Ex. 2001, code (86), with Ex. 1006, code (21) (same PCT
`
`application number). As such, they appear to be substantively identical.
`
`And Shoemakeis cumulative of Marman ’750 because we determine below
`
`that Petitioner has showna reasonablelikelihood that both Marmanalone
`
`and Marman and Shoemakediscloseall the challenged claim limitations. In
`
`other words, because Marmanis cumulative of Marman ’750, and because
`
`Shoemakediscloses claim limitations that Marmanalso discloses, Shoemake
`
`is also cumulative of Marman ’750.
`
`Although Patent Owner’s § 325(d) arguments only apply to one of the
`
`three groundsraised by Petitioner and it is unclear whether § 325(d) is
`
`sufficiently implicated for the petition as a whole, we need not decidethis
`
`issue because wefind that Petitioner has demonstrated material error under
`
`the second prong of Advanced Bionics. Underthe secondpart of the
`
`Advanced Bionics framework, Becton Dickinson factors(c), (e), and (f) are
`
`considered in the evaluation of whether the petitioner has made a case for
`
`reconsidering the art and arguments. Becton, Dickinson identifies these
`
`factors as (c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for rejection;(e)
`
`whetherpetitioner has pointed out sufficiently how the Examinererred inits
`
`evaluation ofthe asserted prior art; and (f) the extent to which additional
`
`evidence and facts presented in the petition warrant reconsideration of the
`
`asserted prior art or arguments. Becton, Dickinson, Paper 8 at 17-18.
`
`8
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`IPR2021-00964
`Patent 10,229,586 B2
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`Petitioner asserts that the Examinererred by not expressly assessing
`
`or applying Marman ’750, only citing Marman ’750 onthe face of the ’586
`
`patent. Pet. 11. Patent Owner disagrees because the Examiner expressly
`
`applied Marman ’750in five other membersof the ’586 patent family.
`
`Prelim. Resp. 19-20. Consequently, in Patent Owner’s view, we should
`
`“infer from these circumstances that the Examiner considered the substance
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`of’ Marman ’750 during prosecution of the ’586 patent. Jd. at 21 (quoting
`
`Universal Imaging Indus., LLC v. Lexmark Int'l, Inc., IPR2019-01383,
`
`Paper 7 at 20 (PTAB Feb. 27, 2020)). These arguments are less relevant to
`
`the second part of the framework because they address whether the same or
`
`substantially the same art or arguments were previously presented, not
`
`whetherPetitioner has demonstrated Office error.
`
`Moreto the point, Patent Ownerasserts that the examinerexplicitly
`
`found that Marman ’750 was “missing a feature”—the claimed“integrity
`
`portion.” Jd. Patent Ownerargues that Petitioner does not show examiner
`
`error because Marmanlikewise does not disclose the claimedintegrity
`
`portion. Jd. (citing Pet. 62). Patent Ownerfaults Petitioner’s reliance on
`
`Marman’s “packeterror control” disclosure as insufficient to establish that
`
`Marmandiscloses an “integrity portion.” Jd. (citing Pet. 62). But Patent
`
`Owneroverlooks that Petitioner also relies on Marmanas teaching that
`
`packets include an “end sync word”in addition to “packet error control.”
`
`Pet. 62. As we explain below, on this record we agree with Petitioner that
`
`Marman’s “end sync word”and “packeterror control”likely disclose the
`
`claimed “integrity portion.” Thus, by showing how Marmanteachesthe
`
`claimed “integrity portion,” Petitioner sufficiently points out how the
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`IPR2021-00964
`Patent 10,229,586 B2
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`Examinererred in a manner material to the patentability of the challenged
`
`claims.
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`Weconcludethat the circumstances presented here do not warrant
`
`exercising our discretion to deny institution based on § 325(d).
`
`B. Principles ofLaw
`
`Petitioner bears the burden to demonstrate unpatentability. Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015). At this preliminary stage, we determine whetherthe information
`
`presented in the Petition showsa reasonable likelihood that Petitioner would
`prevail in establishing that at least one ofthe challenged claims would have
`been obvious over the proposed combinationsofprior art. See 35 U.S.C.
`
`§ 314(a).
`
`A claim is unpatentable as obviousif “the differences between the
`
`subject matter sought to be patented andthe priorart are such that the
`
`subject matter as a whole would have been obviousat 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)
`
`(quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based
`
`on underlying factual determinations, including: (1) the scope and content of
`
`the prior art; (2) any differences between the prior art and the claims;(3) the
`
`level of skill in the art; and (4) whenin evidence, objective indicia of
`
`nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`Weapply these principles to the Petition’s challenges.
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`10
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`C. Level of Ordinary Skill in the Art
`
`Wereviewthe grounds of unpatentability in view of the
`
`understanding of a person of ordinary skill in the art at the time of the
`
`invention. /d. at 13, 17. Petitioner asserts that
`
`{a] POSITA[personofordinary skill in the art] . .. would have
`had a degree in computer engineering, computerscience, or a
`similar discipline, along with two years of professional
`experience developing wireless sensor systemsor an equivalent
`level of skill, knowledge, and experience. ... This POSITA
`would be aware of and generally knowledgeable aboutthe types
`of components foundin wireless networks, communication
`protocols, packet structure, and industry standards and best
`practices that were known andavailable at the time the 586
`patent was filed.
`Pet. 33 (citing Ex. 1003 fj 39-41).
`
`Patent Ownerdoesnot addressthe level of skill in the art at this stage.
`
`See generally Prelim. Resp. We are persuaded, on the present record,that
`Petitioner’s proposal is consistent with the problemsandsolutionsin the
`°586 patent andpriorart of record. We adopt Petitioner’s definition of the
`
`level of skill for the purposes of this Decision.
`
`D. Claim Construction
`
`In interpartes review, we construe claims using the same claim
`construction standard that would be used to construe the claim inacivil
`
`action under 35 U.S.C. § 282(b), including construing the claim in
`
`accordance with the ordinary and customary meaning of such claim as
`
`understood by oneof ordinary skill in the art and the prosecution history
`
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2020).
`
`Petitioner argues that the independent claim preamblesare not
`
`limiting and proposesconstructions for two terms: “reset element” and
`
`11
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`IPR2021-00964
`Patent 10,229,586 B2
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`“preamble portion.” Pet. 18-22. Patent Ownerassertsthat, at least at this
`
`stage, no claim construction is necessary. Prelim. Resp. 2 fn.1 (“Noneofthe
`
`arguments in the present response depend on anyofthe claim constructions
`
`proposed by Petitioner.’’).
`
`Weaddressthe term “preamble portion” in our merits analysis below.
`
`Noother terms require construction at this stage. See Nidec Motor Corp.v.
`
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`
`(“[W]e need only construe terms that are in controversy, and only to the
`
`extent necessary to resolve the controversy.”) (internal quotation omitted).
`
`E. Asserted Obviousness over Baker and Bruckert
`
`Petitioner contends that claims 1, 5, 8-9, 14-15 are obvious over
`
`Bakeralone or over Baker and Bruckert. Pet. 33-52. Patent Owner
`
`contends that Baker does not disclose the packet relaying functionality in the
`
`independent claims. Prelim. Resp. 9-14. For the reasonsthat follow,
`
`Petitioner has established a reasonable likelihood of prevailing on this
`
`ground.
`
`1. Overview ofBaker
`
`Bakerdescribes a wireless home networkincluding consumer
`
`electronic deviceslike televisions, cable boxes, and audio systems, as shown
`
`below in Figure 3a. Ex. 1004 9 60. Figure 3b, also shownbelow,depicts a
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`“simplified schematic”of this network with four nodes 350, 352, 354, 356.
`
`Id. 461.
`
`12
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`IPR2021-00964
`Patent 10,229,586 B2
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` Figure 3b
`
`mm
`
`Figure 3a
`
`In Figure 3a above, example nodesin the network include laptop computer
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`302, printer 304,televisions 306, 308, and set top box 310, among others.
`
`Id. | 60. Each node, as represented in Figure 3b, is in communication with
`
`each other node, except nodes 350 and 356, which are out of range of one
`
`another(as indicated by the dashed line). /d. § 61. If nodes 350, 356 wish
`
`to communicate, the communication must be routed via either node 352 or
`
`node 354. Id.
`
`This routing may be performed as follows. A node may receive a data
`
`packet from another node and determine whetherthe nodeis the final
`
`intended destination of the packet. Jd. 84. If the nodeis not the final
`
`intended destination, an incoming channel numberand destination address
`
`of the packet are used to look up an outgoing port and channel numberin a
`
`locally stored connection table. Jd. J 85. Ifa table entry specifies a valid
`port and channel number, the node updates the packet channel numberfield
`and retransmits the packet, thus forwarding the packet. Id.
`
`2. Overview ofBruckert
`
`Bruckert describes a method and system ofresetting a data processing
`
`system withoutaltering the sequence ofinstructions of the steps executed by
`13
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`the data processing system. Ex. 1009, 2:11—14. This system includes a
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`“single reset” that always sets the processor back to some predetermined or
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`initial state. Jd. at 35:21-23. The reset can be used for standard functions,
`
`such as when powerisinitially applied to the system. Jd. at 35:17—21.
`
`3. Independent Claim 1
`
`Petitioner contends that Baker alone or Baker and Bruckert teach or
`
`suggest all the limitations of claim 1. Pet. 34-47. Patent Owner contends
`
`that Baker fails to teach or suggest the packet relaying functionality in
`
`limitation 1-6. Prelim. Resp. 9-14. For the reasonsset forth below, we
`
`determine that Petitioner has shown a reasonable likelihood that Baker alone
`
`or Baker and Bruckert render claim 1 obvious.
`
`a. Preamble [1-p] and limitations 1-1 through 1-5
`
`Petitioner contends that Baker alone or Baker and Bruckert disclose
`
`the preamble 1-p and limitations 1-1 through 1-5. Pet. 34-44. Patent Owner
`
`does not dispute these contentionsat this stage. See generally Prelim. Resp.
`
`_
`
`Petitioner supports its arguments with specific citations to Baker and
`
`Bruckert and Dr. Wicker’s declaration. Pet. 34-44 (citing, e.g., Ex. 1004,
`
`passim; Ex. 1009, 35:17—28; Ex. 1003 {J 234-302). On this record, we
`
`agree with Petitioner that there is a reasonable likelihood that Baker alone or
`
`Baker and Bruckert disclose the preamble 1-p and limitations 1-1 through 1-
`
`5. We thus need not discuss Petitioner’s arguments on these limitations in
`
`detail. See LG Elecs., Inc. v. Conversant Wireless Licensing S.A.R.L.,
`
`759 F. App’x 917, 925 (Fed. Cir. 2019) (nonprecedential) (“The Board is
`
`‘not required to address undisputed matters’ or arguments aboutlimitations
`
`with which it was never presented.”) (quoting Jn re NuVasive, Inc., 841 F.3d
`
`966, 974 (Fed. Cir. 2016)). We also need not determine whether the
`
`14
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`preambleis limiting because even if it were, we determine that Petitioner has
`
`shownthat Bakerlikely disclosesit.
`
`b. [1-6] compare at least the identification code portion
`ofthe received communication packet to a table of
`identifiers stored in the audio-enabled wireless
`device; based on the comparison ofthe identification
`code portion ofthe received communication packet
`matching an entry in the table ofidentifiers 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
`
`Petitioner contends that Baker discloses limitations 1-6 of claim 1.
`
`Pet. 44-47. According to Petitioner, Baker’s communication packets are
`
`relayed from one audio-enabled device to another. /d. at 45 (citing Ex. 1003
`
`{] 303-309). To perform this relaying, Petitioner asserts, Baker’s approach
`
`is to employ “local routing tables.” Id. at 45—46 (citing, e.g., Ex. 1004 { 30).
`
`Petitioner contends that a packet’s incoming channel numberanddestination
`
`address are used to look up an outgoing port and channel numberin a table.
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`Id. at 46 (citing Ex. 1004 § 85). Ifa destinationis identified, Petitioner
`
`asserts, the node relays the packet by retransmitting the packet.
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`/d. (citing
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`Ex. 1004 { 85); see also Ex. 1003 Ff 310-317.
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`Notwithstanding Patent Owner’s arguments, discussed below,
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`Petitioner persuades us that Baker discloses limitations 1-6 of the claim.
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`Patent Ownerraises four main arguments. First, Patent Owner argues
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`that Petitioner’s analysis is perfunctory because Petitioner does notallege
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`that Baker affirmatively discloses “‘determin[ing] to relay’ the
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`communication packet ‘based on the comparison ofthe identification code
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`portion .
`
`.
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`. matching an entry in the table of identifiers.’” Prelim. Resp. 10.
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`15
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`IPR2021-00964
`Patent 10,229,586 B2
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`Wedisagree because, as we noted above,Petitioner argues that in Baker, a
`packet’s incoming channel numberand destination address are used to look
`up an outgoing port and channel numberinatable, whichif identified,
`
`causes the packetto be retransmitted. Pet. 46 (citing Ex. 1004 { 85).
`
`AlthoughPetitioner does not use the word “comparison”in this argument,
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`weview Petitioner’s reference to Baker’s table lookup as sufficiently
`
`establishing that Baker discloses the disputed limitation at this stage.
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`Second, Patent Ownerargues that Baker’s teachings do not support
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`Petitioner’s arguments. Prelim. Resp. 11-12. Patent Owner contendsthat
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`Bakerconditions packet retransmission on a different basis than the claim,
`
`namely, “[w]here the table entry specifies a valid port and channel number.”
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`Id. at 11 (citing Ex. 1004 7 85). Thus, Patent Owner views Bakeras basing
`
`retransmission on the “existence of valid routing information,” not “based on
`
`the comparison ofthe identification code portion .
`
`.
`
`. matching an entry in
`
`the table of identifiers,” as claimed. Jd. But this argumentis also unavailing
`
`because Baker does not base retransmission on the mere existence of valid
`
`routing information. Rather, Baker teaches that “the incoming channel
`
`numberanddestination address are used to Jook up an outgoing port and
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`channel number”andthat “[w]here the table entry specifies a valid port and
`
`channel numberthe node.. . retransmits the packet.” Ex. 1004 { 85
`
`(emphasis added). Thus, Baker not only determines that the table specifies a
`
`valid port and channel number, but also performs a lookup operation, which
`
`Patent Owneroverlooks. See id. In our view at this stage, Baker’s lookup
`
`operation discloses the claimed comparison.
`
`Third, Patent Owner contends that Baker contemplates that port and
`
`channel numberscould exist in the routing table without any accompanying
`
`16
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`IPR2021-00964
`Patent 10,229,586 B2
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`identifiers. Prelim. Resp. 11-12. Patent Owner references Baker’s
`
`disclosure that “[o]ptionally the routing table may further include, for each
`
`link defined by a pair of channels for incoming and outgoing data, an
`
`identifier for the intended end recipient, although in embodimentsthis is not
`
`necessary.” Jd. at 12 (citing Ex. 1004 § 30). But Baker’s disclosure of an
`
`embodimentthat does not include an identifier in the routing table does not
`
`negate Baker’s disclosure of embodiments that do contain identifiers. Patent
`
`Ownersimilarly argues that in some embodiments, Baker forwards packets
`
`without determining to relay because, in those embodiments, the message is
`
`always forwarded unless the nodeis the recipient. Jd. at 13 (citing Ex. 1004
`
`{ 30). These embodiments also do not negate Baker’s more relevant
`disclosure relied upon by Petitioner.
`|
`Finally, Patent Ownerfaults the Petitioner’s declarant for conclusory
`
`explanationsthat are “nearly identical” to the Petition. Jd. at 12-13. We do
`
`not view Dr. Wicker’s testimony as defective. While it is often helpful for
`
`an expert declaration to further explain or support a party’s assertions, we
`find no requirementthat it do so. On this record, Petitioner’s arguments, as
`supported by Dr. Wicker’s testimony and the teachings of Baker,sufficiently
`
`persuadeus that Bakerlikely discloses limitations 1-6 of claim 1.
`
`c. Summary as to Claim 1]
`
`Based onthe preliminary record before us, we find that Petitioner has
`
`shown a reasonable likelihood that claim 1 would have been obvious over
`
`Baker alone or Baker and Bruckert.
`
`4. Independent Claims 9 and 15
`
`Petitioner asserts that independentclaims 9 and 15 are similar to claim
`
`1. Pet. 49-52. Petitioner’s detailed analysis explaining where Bakeralone
`
`17
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`IPR2021-00964
`Patent 10,229,586 B2
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`or Baker and Bruckert teaches the limitations in these claimsis similarto the
`
`analysis discussed above with respect to claim 1. Jd. Patent Ownerrelies on
`the same arguments for claims 9 and 15 as it does for claim 1. See Prelim.
`
`Resp. 14. For the reasons discussed above, based on the current record, we
`
`determine that Petitioner has demonstrated a reasonable likelihood that
`
`claims 9 and 15 are unpatentable as obvious over Baker alone or Baker and
`
`Bruckert.
`
`5. Dependent Claims 5, 8, and 14
`
`Petitioner contends that dependentclaims 5, 8, and 14 are
`
`unpatentable as obvious over Baker alone (for claim 5) or Baker and
`
`Bruckert (for claims 5, 8, and 14). Pet. 47-51 (arguing claim 5 over Baker
`
`and arguing claims 8 and 14 are taught by “Baker and Bruckert together”).
`Petitioner provides a detailed analysis explaining where Baker or Baker and
`Bruckert disclose the limitations in dependent claims5, 8, and 14. Jd.
`
`Patent Ownerdoesnot offer separate arguments for these claims or contest
`
`Petitioner’s analysis at this preliminary stage. See generally Prelim. Resp.
`
`Based on the current record, we determine that Petitioner has demonstrated a
`
`reasonable likelihood that claims 5, 8, and 14 are unpatentable as obvious
`
`over Bakeralone (for claim 5) or Baker and Bruckert (for claims 5, 8, and
`
`14).
`
`F. Asserted Obviousness over Baker, Bruckert, and McMillin
`
`Petitioner contends that claims 2-4, 7, 10-12, 16, 18, and 20 would
`
`have been obvious over the combination of Baker, Bruckert, and McMillin.
`Pet. 52-58. Patent Owner does notaddress Petitioner’s assertions. See
`
`generally Prelim. Resp.
`
`18
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`IPR2021-00964
`Patent 10,229,586 B2
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`McMillin generally discloses delaying transmission of a message to
`
`avoid a collision with another message. Ex. 1018, 16:44—17:7.
`
`Petitioner supports its arguments with specific citations to Baker and
`
`McMillin!! and Dr. Wicker’s declaration. Pet. 52—58 (citing, e.g., Ex. 1018,
`
`16:53-60; Ex. 1004 9] 41, 60, 62, 67; Ex. 1003 {| 350-370). Onthis
`
`record, we agree with Petitioner that there is a reasonable likelihood that
`
`Baker, Bruckert, and McMillin render obvious claims 2-4, 7, 10-12, 16, 18,
`
`and 20. Accordingly, Petitioner has established a reasonable likelihood of
`
`prevailing on this ground.
`
`G. Asserted Obviousness over Marman and Shoemake
`
`Petitioner contends that claims 1-5, 7-12, 14-16, 18, and 20 are
`
`obvious over Marman and Shoemake. Pet. 58-73. Patent Ownerraises
`
`three main arguments: (1) this groundlacks particularity; (2) Marman alone
`
`does not disclose the communication packet of element 1-5 of claim 1; and
`
`(3) Petitioner does not articulate a proper motivation to combine Marman
`
`and Shoemake. Prelim. Resp. 24-35. For the reasons that follow, Petitioner
`
`has established a reasonable likelihood of prevailing on this ground.
`
`1. Overview ofMarman
`
`Marmandescribes a wireless residential fire and security alarm
`
`system. Ex. 1006, 1:13-14. The system includes two-waytransceivers in
`
`smoke detectors, other sensors, and basestations. Jd. at 3:15—16. Figure 1
`
`depicts an example of this system:
`
`'! Petitioner does not apply Bruckert directly to these dependent claims, only
`to the underlying independent claims. See Pet. 52-58.
`19
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`IPR2021-00964
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`FIG.4
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`Bass unk
`next
`to telephane
`
`
`
`
`2 oN
`
`fe
`
`Gas
`a
`
`
`
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`Id. at 12:10-12. The system includes smoke detectors 16, other sensors, and
`
`base station 12. /d. at 12:11-13. The system routes messagesby relaying
`
`messages from a transmitting device, through at least one intervening
`
`device, to a receiving device. Jd. at 43:15—18. The system performsthis
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`relaying by using routing tables in each sensor. Jd. at 44:11-13.
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`Communications in Marman’s system are packet-based, which
`
`includes packet routing and packeterror control. [d. at 37:28-38:10, 40:2-7.
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`Packets include a start synch word, data message, and end sync word. Jd. at
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`40:4—5, 40:20—-21. Both a source address and destination addressare also
`
`included. Jd. at 44:15—17.
`
`2. Overview ofShoemake
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`Shoemake describes wireless transmission of data packets in an
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`environmentcontaining possible interfering communications. Ex. 1010 { 3.
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`Shoemake describes existing packet-based standards. Id. 95. According to
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`20
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`IPR2021-00964
`Patent 10,229,586 B2
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`one standard, IEEE 802.11b, each message packet typically includes a
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`preamble and headerportion that includes identifying information, as well as
`
`a payload portion and a checksum. Jd.
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`3. Particularity
`
`Before we addressthe parties’ merits arguments, wefirst address
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`Patent Owner’s contention that this ground fails to comply with the
`
`particularity requirement. Prelim. Resp. 25 (citing 35 U.S.C § 312(a)(3)).
`
`Patent Ownerpoints to the Petition’s identification of this ground as
`
`“obvious over Marman and Shoemake”andfaults the Petition for then
`
`arguing “obviousness and anticipation based on Marmanalone,” with or
`
`without the knowledge ofone of ordinary skill in the art. Jd. at 26 (citing
`
`Pet. 7, 58-61, 64-66). Thus, Patent Owner concludes, “Petitioner never
`
`identifies the substance of Ground 3 with any particularity, instead sowing
`
`confusion as to whatits particular groundactually is.” Jd. at 27.
`
`A petition for inter partes review (“IPR”) must identify “with
`
`particularity, each claim challenged, the grounds on whichthe challenge to
`
`each claim is based, and the evidence that supports the groundsfor the
`
`challenge to each claim.” 35 U.S.C. § 312(a)(3); see also 37 C.F.R.
`
`§ 42.104(b) (specifying necessary elements of a petition). The Federal
`
`Circuit has explained,“[iJn an IPR,the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3)). The Board has previously denied
`
`petitions suffering from “a lack of particularity that results in voluminous
`
`and excessive grounds.” Adaptics Ltd. v. Perfect Co., [PR2018-01596,
`
`Pape
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