Trials@uspto. gov
`571-272-7822
`
`Paper 22
`Entered: October 6, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONOS, INC.,
`Petitioner,
`
`V.
`
`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.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`Paper 22
`Entered: October 6, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONOS, INC.,
`Petitioner,
`
`V.
`
`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.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`IPR2021-00964
`Patent 10,229,586 B2
`
`I.
`
`INTRODUCTION
`
`Sonos,Inc. (“Petitioner”) filed a Petition (Paper1, “Pet.”) requesting
`
`interpartes review of clams 1—5, 7—12, 14-16, 18, and 20 of U.S. Patent
`
`No. 10,229,586 B2 (Ex. 1001, “the *586 patent’). Pet. 1. Google LLC
`
`(“Patent Owner’) filed a Preliminary Response (Paper 6). Based on these
`
`and other preliminary submissions, weinstituted an interpartes review of
`
`claims 1-5, 7-12, 14-16, 18, and 20 (Paper7, “Decision”or “Dec.”).
`
`Subsequent filings include a Patent Owner Response (Paper 11, “PO
`
`Resp.”), a Petitioner Reply (Paper 14, “Reply”’), anda Patent Owner Sur-
`
`reply (Paper 17, “Sur-reply”). An oral hearing was held on July 18, 2022,
`
`and a copy ofthe transcript was entered into the record. Paper 21 (“Tr.”).
`
`Wehavejurisdiction over this proceeding under 35 U.S.C. § 6(b).
`
`After considering the evidence and arguments ofthe parties, we determine
`
`that Petitioner has proven by a preponderanceofthe evidencethat claims 1—
`
`5, 7-12, 14-16, 18, and 20 ofthe *586 patent are unpatentable. See 35
`
`U.S.C. §316(e). We issue this Final Written Decision pursuant to 35 U.S.C.
`
`§ 318(a).
`
`A, RelatedMatters
`
`I. BACKGROUND
`
`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 ’586patent
`
`The ’586 patent describes “a wireless sensor system.” Ex. 1001, 2:8—
`
`10. Figure 1, reproduced below,depicts an example of this system:
`
`
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`IPR2021-00964
`Patent 10,229,586 B2
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`GneeneTEeeineoeineEeeSOSEebineeeteceSii
`
` aa Fic. 4
`
` JParmeiaei
`
`Id. at 4:13-15. Figure 1 shows a system that includes sensorunits that
`
`communicate with a base unit through repeater units.
`
`/d. Sensors 102—106
`
`measure conditionslike smoke, temperature, moisture, and carbon
`
`monoxide.
`
`/d. at4:60—65. The sensors wirelessly communicate with
`
`repeaters 110,111.
`
`/d. at4:37—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 forwardsdata to base unit 112
`
`and computer 113.
`
`/d. at 5:26—32.
`
`Figure 5 depicts an example communication packet used by sensors
`
`102-106, repeaters 110-111, and base unit 112:
`
`
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`IPR2021-00964
`Patent 10,229,586 B2
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`
`
`FIG. 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 of the 7586
`
`patent. Pet. 1. Claim1is 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 codeportion, 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
`
`
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`IPR2021-00964
`Patent 10,229,586 B2
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`based on the comparisonofthe identification code portion of
`the recerved communication packet matching an entry in the
`table of identifiers stored in the audio-enabled wireless device,
`determineto relay the communication packet to another audio-
`enabled wireless device; and
`
`relay the communication packetto the other audio-enabled
`wireless device.
`
`D. Asserted Grounds ofUnpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 7):
`
`_
`
`103(a)
`
`3
`
`Baker‘ alone? or Baker and
`Brockert®
`
`Baker, Bruckert, andMcMillin’
`
`|
`
`1,5, 8-9, 14-15
`
`O 7, 10-12, 16, 18,
`
`103(a)
`
`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 claims priority to applicationsfiled
`before March 16, 2013, we refer to the pre-AIA version of §§ 102, 103. The
`parties do not dispute that the pre-AIA versionsof these statutes apply. Our
`opinions on this record would not changeif the AIA versions of §§ 102, 103
`wereto 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.
`° 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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`20
`
` 1-5, 7-12, 14-16, 18,
`
`103(a)
`a
`
`Marman®alone’ or Marman and
`Shoemake!®
`
`Petitionerrelies on the declarations of Dr. Stephen B. Wicker (Exs. 1003,
`
`1028), and Patent Ownerrelies on the declaration of Dr. Vyay K. Madisetti
`
`(Ex. 2006).
`
`A. Principles ofLaw
`
`II. ANALYSIS
`
`Petitioner bears the burden to demonstrate unpatentability, and that
`
`burden nevershifts to the patentee. Dynamic Drinkware, LLC v. Nat’l
`
`Graphics, Inc. , 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`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 madeto a person having ordinary skill in the art to which said subject
`
`matter pertams.” 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 betweenthe prior art and the claims; (3) the
`
`level of skill mn the art; and (4) any secondary considerations or objective
`
`® 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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`Patent 10,229,586 B2
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`evidence of nonobviousness.!! See Graham v. John Deere Co. , 383 U.S. 1,
`
`17-18 (1966).
`
`Weapply these principles to the Petition’s challenges.
`
`B. Level ofOrdinary Skill in the Art
`
`Wereview the groundsof unpatentability in view of the
`
`understanding of a person of ordinary skill in the art at the time of the
`
`invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that
`
`[a] POSITA [person of ordinary skill in the art]... would have
`had a degree in computer engineering, computerscience, ora
`similar discipline, along with twoyears 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 knownandavailable at the time the *586
`patent wasfiled.
`Pet. 33 (citing Ex. 1003 44 39-41).
`
`Patent Ownerargues that some aspects of Petitioner’s definition are
`
`unclear:
`
`It is unclear from Petitioner’s definition whether a
`POSITA could obtain the requisite qualifications through
`education or experience becauseit is unclear whatpart of the
`phrase “or an equivalent level of skill, knowledge, and
`experience” modifies. Ex. 2006, §] 29-31. It is also unclear why
`the POSITA would have had to have worked “developing
`wireless sensor systems” when knowledge of such systems
`could be acquired in other ways.
`
`'T Patent Ownerhas not submitted any objective evidence of
`nonobviousness.
`
`
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`IPR2021-00964
`Patent 10,229,586 B2
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`POResp. 7. Patent Ownertherefore proposesan alternative definition of the
`
`level of ordinary skill:
`
`Accordingly, a POSITA at the time of invention of the ’586
`patent would have held a bachelor’s degree in electrical
`engineering, computerscience,or a similar discipline, or at
`least two years of professional or research experience in the
`fields of computer hardware and software, wireless networking,
`or an equivalent subject matter.
`
`Id. (citing Ex. 2006 7 29-31).
`
`Weare persuaded, on the present record, that Petitioner’s proposalis
`
`consistent with the problemsandsolutions in the 586 patent and prior art of
`
`record. Patent Owner’s level of skill definition states that two years of
`
`experience can replace a four-year degree, but Patent Owner doesnot
`
`explain how twoyears of experience could replace a college degree in
`
`electrical engineering, computerscience, ora similar discipline. We
`
`therefore adopt Petitioner’s definition of the level of skill However, had we
`
`adopted Patent Owner’s level of skill, we would not have reacheda different
`
`result as to the overall issue of patentability in this case.
`
`C. Claim Construction
`
`In interpartes review, we construe claims using the same claim
`
`construction standard that would be used to construe the claim in a civil
`
`action under 35 U.S.C. § 282(b), including construing the claim in
`
`accordancewith the ordinary and customary meaning of such claim as
`
`understood by one ofordinary skill in the art and the prosecution history
`
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2020).
`
`In the Petition, Petitioner argues that the independent claim preambles
`
`are not limiting and proposes constructions for two terms: “reset element”
`
`and “preamble portion.” Pet. 18—22. At institution, we discussed the
`
`
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`IPR2021-00964
`Patent 10,229,586 B2
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`meaning of the term “preamble portion.” Dec. 12,27. Post-institution,
`
`neither party disputes the meaning of any claim terms. PO Resp.7; see
`
`generally Reply.
`
`Based on our review of the record, no terms need to be construed. See
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`
`1017 (Fed. Cir. 2017) (“[W]e need only construe termsthat are in
`
`controversy, and only to the extent necessary to resolve the controversy.”’)
`
`(internal quotation omitted).
`
`D. Asserted Obviousness over Baker alone or Baker and Bruckert
`
`Petitioner contends that claims 1, 5, 8-9, and 14-15 would have been
`
`obvious over Bakeralone or over Baker and Bruckert. Pet. 33-52.
`
`1. Overview ofBaker
`
`Baker describes a wireless home networkincluding consumer
`
`electronic deviceslike televisions, cable boxes, and audio systems, as shown
`
`below in Figure 3a. Ex. 10044] 60. Figure 3b, also shown below,depicts a
`
`“simplified schematic”of this network with four nodes 350, 352, 354, 356.
`
`Id. 61.
`
`Figure 3h
`
`38
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`1363
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`{4 he an nf a
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`N waeree
`xwath
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`an
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`a 382
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`x.
`N.
`s
`é
`a Yeo,
`‘Ne!
`aay!
`\
`5
`FB aterttyeh 4
`A
`Nal
`Le Nags
`‘, Sa
`
`36
`
`\,
`
`
`
`IPR2021-00964
`Patent 10,229,586 B2
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`In Figure 3a above, example nodesin the network include laptop computer
`
`302, printer 304, televisions 306, 308, and set top box 310, amongothers.
`
`Id. 4 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. 4 61. Ifnodes 350, 356 wish
`
`to communicate, the communication must be routed via either node 352 or
`
`node 354.
`
`/d.
`
`This routing may be performed as follows. A node mayreceiveadata
`
`packet from another node and determine whetherthe node1s thefinal
`
`intended destination of the packet.
`
`/d. 484. Ifthe node is notthe final
`
`intended destination, an incoming channel numberanddestination address
`
`of the packet are used to look up an outgoing port and channel numberin a
`
`locally stored connection table.
`
`/d. 4 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.
`
`/d.
`
`2. Overview ofBruckert
`
`Bruckert describes a method and system ofresetting a data processing
`
`system withoutaltering the sequenceofinstructions of the steps executed by
`
`the data processing system. Ex. 1009, 2:11—-14. This system includes a
`
`“single reset” that always sets the processor back to some predetermined or
`
`initial state.
`
`/d. at 35:21—23. The reset can be used for standard functions,
`
`such as when poweris initially applied to the system.
`
`/d. at35:17—21.
`
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`IPR2021-00964
`Patent 10,229,586 B2
`
`3. Independent Claim I
`
`a. UndisputedLimitations
`
`Petitioner contends that Baker alone or Baker and Bruckert disclose
`
`the preamble 1-p andlimitations 1-1 through 1-3 and 1-5. Pet. 34—40, 42—
`
`44. Patent Ownerdoesnot dispute these contentions.
`
`Petitioner supports its arguments with specific citations to Baker and
`
`Bruckert and Dr. Wicker’s declaration.
`
`/d. (citing, e.g., Ex. 1004, passim;
`
`Ex. 1003 {J 234-276, 285-302). We agree with Petitioner that Baker alone
`
`or Baker and Bruckert disclose the preamble 1-p andlimitations 1-1 through
`
`1-3 and 1-5. We thus need notdiscuss Petitioner’s arguments on these
`
`limitations in detail. See LG Elecs., Inc. v. Conversant Wireless Licensing
`
`SARL, 759 F. App’x 917, 925 (Fed. Cir. 2019) (nonprecedential) (“The
`
`Boardis ‘not required to address undisputed matters’ or arguments about
`
`limitations with which it was never presented.”) (quoting /n re NuVasive,
`
`Inc., 841 F.3d 966, 974 (Fed. Cir. 2016)). Wealso need not determine
`
`whetherthe preambleis limiting because evenif it were, we determinethat
`
`Petitioner has shownthat Baker discloses it.
`
`b. [1-4] acontroller operatively coupledto.. . the reset
`element
`
`Petitioner contends that Baker’s devices include a “device controller.”
`
`Pet. 40 (citing Ex. 1004 4] 38-40). This controller is “operatively coupled”
`
`to a “wireless transceiver” and “audio output element,” Petitioner asserts.
`
`Id. at 41 (citing Ex. 1003 4 277-282). Petitioner further contendsthat
`
`“Tw]hile Baker does not expressly reference a ‘reset element,’ it would have
`
`been obviousto include this element.” /d. (citing Pet. § VII.C.1.[1-3]; Ex.
`
`1003 4] 283-84). According to Petitioner, Baker’s network includes devices
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`Patent 10,229,586 B2
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`that can be “switch[ed] on and off.” /d. at 37 (citing Ex. 1004 4 24, 61).
`
`Thus, Petitioner contends, “a POSITA would have understood that Baker’s
`
`networkdevices include a ‘reset element’ that returns the devices to a
`
`‘predetermined’ state: each device includes a hardware switch/button
`
`allowing the device to powercycle.” /d. (citing Ex. 1003 ff] 251-56).
`
`Petitioneralso relies on Bruckert’s disclosure of a reset, contending
`
`that “[a] POSITA would have consideredit highly obvious to include similar
`
`functionality in each of Baker’s UWBdevices.” /d. at 38—40(citing, e.g.,
`
`Ex. 1009, 1:7—10 (“[a]ll data processing systems need the capability of
`
`resetting undercertain conditions’’), 35:21—23 (““‘[m]ost systems’ also have
`
`[a] “single reset which alwayssets the processor back to some predetermined
`
`or initial state’”); Ex. 1003 4 259-76). And “[b]ecause Baker’s devices can
`
`be turned on/off,” Petitioner argues, “a POSITA would have understoodthat
`
`they already include this samereset functionality.” /d. (citing Ex. 1003
`
`4] 270-71). Finally, Petitioner contendsthat “a POSITA would understand
`
`that it would be beneficial to incorporate the reset functionality of Brucker|t]
`
`to return Baker’s devices to an initial state to facilitate either addition to the
`
`network, or removal from the network and later use elsewhere.” /d. at 40
`
`(citing Ex. 1003 J 274-75).
`
`Patent Ownerdisputesthat the combination of Baker and Bruckert
`
`discloses “a controller operatively coupled to .. . the reset element.” PO
`
`Resp. 15. In Patent Owner’s view,“Petitioner neveridentifies where Baker
`
`or Bruckert discloses the controller operatively coupledto the reset element,
`
`nor doesPetitioner explain why this feature would have been obviousin
`
`view ofthe priorart.” /d. (citing Pet. 40-41). Patent Ownerasserts that
`
`Petitioner “only alleges that tt would have been obviousto ‘include’ the
`
`12
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`reset element” but says nothing about where Baker or Bruckert teaches that
`
`the “controller [is] operatively coupled to. .
`
`. the reset element.” /d. at 16
`
`(citing Pet. 37-41; Ex. 2006 44 52-53).
`
`In Reply, Petitionerfirst notes that “Patent Ownerdoesnotdispute
`299
`
`that the art teaches devices that include the claimed ‘reset element.’”
`
`Reply
`
`8. Petitioner argues that Patent Ownerhastaken the position that the prior
`
`art’s reset element, “while present, could be floating, unconnected, and
`
`purposeless.” /d. To the contrary, Petitioner contends, “[t]he art makes
`
`clear that a ‘reset element’ is connectedso asto allow the entire device,
`
`including the device’s controller, to be reset.” /d. For example, Petitioner
`
`asserts, “Baker teachesthat each of its devices can be powercycledin their
`eee
`
`entirety,” and Bruckert teachesthat a reset
`
`“‘set[s] a device’s “processor
`
`back to some predeterminedorinitial state.” /d. (citing Ex. 1004 {¥ 24, 61;
`
`Ex. 1009, 35:21—23). Thus, Petitioner argues, “the reset elementis not only
`
`present, but is connected to and impacts the operation of a device’s
`
`processor/controller.” /d. Finally, Petitioner points to two instances in
`
`whichthe Petition argues for “a controller operatively coupled to. .
`
`. the
`
`reset element,” namely describing (1) Baker’s “reset element” that “causes
`
`the device’s controllerto reset its configuration,” and (2) Bruckert’s
`
`teaching that “a controller can be reset in numerous ways.” /d. (citing Pet.
`
`37,39). Patent Owner’s Sur-reply does not respond to these arguments.
`
`Weagree with Petitioner that the Petition establishes not only that
`
`Baker alone or Baker and Bruckert “include”a reset element, but also that
`
`Baker alone or Baker and Bruckert disclose “a controller operatively
`
`coupled to... the reset element,” alone and in combination. See Pet. 37, 39.
`
`Wedetermine that Baker’s disclosure of “switching on and off’ network
`
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`devices would have been understood by a POSITAto beareset operatively
`
`coupled to a controller of such devices because (1) switching on or offa
`
`device constitutes resetting, and (2) the device that resets would be in
`
`communication with, 1.e., coupled with, a controller of that device. See Ex.
`
`1004 ¥ 24; Ex. 1003 4] 251-58. Welikewise determine that Bruckert’s
`
`“single reset which alwayssets the processor back to some predetermined or
`
`initial state” also discloses “a controller operatively coupled to .
`
`.
`
`. the reset
`
`element” because the reset must be in communication with, 1.e., coupled
`
`with, the processorin orderto reset the processor. See Ex. 1009, 35:21-23.
`
`Finally, we agree with Petitioner that a POSITAwould have understood that
`
`“it would be beneficial to incorporate the reset functionality of Brucker|t] to
`
`return Baker’s devices to an initial state to facilitate either addition to the
`
`network, or removal from the network and later use elsewhere.” Pet. 40
`
`(citing Ex. 1003 {| 274-75).
`
`Thus, Baker alone and the combination of Baker and Bruckert
`
`disclose this limitation.
`
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`c.
`
`[1-6] compareat least the identification codeportion
`ofthe received communicationpacketto a table of
`identifiers stored in the audio-enabledwireless
`device,
`
`based on the comparison ofthe identification code
`portion ofthe received communicationpacket
`matching an entry in the table ofidentifiers stored in
`the audio-enabled wireless device, determineto relay
`the communicationpacket to another audio-enabled
`wireless device; and
`
`relay the communicationpacketto the other audio-
`enabled wireless device
`
`Petitioner contendsthat Bakerdiscloses 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
`
`4] 303-309). To perform this relaying, Petitioner asserts, Baker’s approach
`
`is to employ “local routing tables.” /d. at 45—46 (citing Ex. 1004 4 30, 27,
`
`31,34). These tables include “an identifier that uniquely identifies the (bi-
`
`directional) path through the network,” namely, “a paired source-destination
`
`MACaddress.” /d. at 46 (citing Ex. 10044 76, Fig. 11d). Petitioner
`
`contendsthat a packet’s incoming channel numberand destination address
`
`are used to look up an outgoing port and channel numberin a table.
`
`/d.
`
`(citing Ex. 1004 § 85). Ifa destination is identified, Petitioner asserts, the
`
`noderelays the packet and subsequently “retransmits the packet. .
`
`. thus
`
`forwarding the packet along the next link in the chain.” /d. (citing Ex. 1004
`
`4] 85); see also Ex. 1003 4 310-317.
`
`Patent Ownercontendsthat “Baker’s lookup operation is only
`
`concemed with howto relay a packet, not determiningto relayit in thefirst
`
`place.” POResp.10 (citing Ex. 2006 4 44). According to Patent Owner,
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`15
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`IPR2021-00964
`Patent 10,229,586 B2
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`Baker’s lookup operation “does not compare the specific information recited
`
`in the clatm—the ID codeportion of the packet—to anidentifier in the table
`
`and use a match between themasa basis for determiningto relay the
`
`packet.” /d. at 10-11 (citing Ex. 2006 445).
`
`In Patent Owner’s view,
`
`except in two instances in Baker, the “compareatleast the identification
`
`portion”as claimed “could not even occur.” /d. at 11 (citing Ex. 2006 47).
`
`“This is because in these embodiments, device addressesare not stored in
`
`the routing table.” /d. (citing Ex. 1004 430). Addressesare not stored in
`
`the table in these embodiments “becausethe intermediary devices(e.g.,
`
`repeaters) in Baker ‘needonly belocally aware,’” Patent Owner contends.
`
`Id. at 12 (citing Ex. 1004 4 27).
`
`Patent Owner acknowledges that Baker refers twice to the local
`
`routing table including a destination address, but arguesthat “tn neither of
`
`those instances does a match betweenthe ID codeportion of the incoming
`
`packet and the stored destination media access control (“*MAC’) address
`
`form the basis fora determination to relay the incoming packet.” /d. at
`
`12-13 (citing Ex. 1004 4§ 30, 76; Ex. 2006 7 48). Specifically, Patent
`
`Ownerasserts, “[i]n the first instance, Baker explains that although ‘an
`
`identifier for the intended end recipient’ may be stored in the table, ‘in
`
`embodimentsthis is not necessary because a message containing an
`
`identifier for the intended recipient is always forwarded.” /d. at 13 (Ex.
`
`1004 4 30). Inthe second instance, Patent Ownerargues, “Baker explains
`
`that the destination MACaddress instead informs the determination of
`
`which outgoing channelshould be used—notdetermining that the packet
`
`should be relayedat all.” /d. 14 (citing Ex. 1004 4 76 (“a destination MAC
`
`address may be included in the connection table so that an incoming channel
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`16
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`IPR2021-00964
`Patent 10,229,586 B2
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`and destination determine an outgoing channelfor retransmission of a
`
`packet’); Ex. 2006 4 50). Finally, Patent Owner contends, there is no
`
`determination in Baker made to relay based ona match.
`
`/d. at 14-15.
`
`According to Patent Owner,“[t]his is because Bakeris focused on how to
`
`relay the packet (i.e., which channel and/orport to use)—not determining
`
`to relay the packet—because Baker does not employthe type of selective
`
`relay disclosed and claimed in the *586 patent.” /d. at 14—15 (citing Ex.
`
`2006 ¥ 50).
`
`In the Reply, Petitioner argues that it does not matter if some
`
`embodiments of Baker’s table do not include identifiers. Reply 3. Instead,
`
`“all that matters 1s that there are embodiments wherea table of identifiers is
`
`used to make a packet forwarding determination.” /d. (citing /n re Mouttet,
`
`686 F.3d 1322, 1332-33 (Fed. Cir. 2012) (Obviousnessis assessed by
`
`consideringall that a reference teaches. )). Petitioner asserts that “Patent
`
`Ownerconcedesthat in at least some embodiments, Baker employs a lookup
`
`table that it uses to determine how to handle an incoming packet.” /d.
`
`(citing PO Resp. 12).
`
`Petitioner also disputes that Baker teachesthatit is “predetermined
`
`that the packet is always going to be relayed if possible.” /d. In Petitioner’s
`
`view, Baker’s statementthat a packet “is always forwarded(if it can be)”
`
`admits the possibility that a packet may not be forwarded, thus foreclosing
`
`Patent Owner’s interpretation that packet forwarding is predetermined.
`
`/d.
`
`at 4 (quoting Ex. 1004 4 30). Instead, Petitioner argues, Baker discloses
`
`tables that store channel numbersor “a paired source-destination MAC
`
`address,” whichit uses to determine how to handle incoming packets.
`
`/d.
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`17
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`IPR2021-00964
`Patent 10,229,586 B2
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`(citing Ex. 1004 §[§| 76, 84-85). To explain this process, Petitioner submits
`
`the following annotated version of Baker Figure 13:
`
`Pees
`
`Negus
`
`
`:
`READ CHANNED HUMBER FROM BACKE
`HUMBER
`LODY OS OUT GOING PORT ANE CHONREL |
`
` ENTRYBEVICE
`VALI PORT ANT.
`awe
`REC
`NOTFOUND 7
`™
`CHANNEL NO
`aa
`$304
`o
`Sohaewerentlttnnrnennennnentinng
`
`
`SEND GISCONREDT
`MESSAGE TO OFGINATOR:
`
`pennenceeennnntenneee}
`S30
`
`:
`|
`
`ieneneowrennin
`
`i
`1 BATA TO RECNRENT CEVE
`
`SEPACKETISEANDFASS
`
`i
`
`i
`
`|{
`
`Figure 13
`
`Id. at 5.
`
`According to Petitioner, Figure 13 above showsthe “procedure. . .
`
`implemented at a store and forward node. . . and at a packet destination
`
`node of the network.” /d. (citing Ex. 1004 4 84). Petitioner contendsthat in
`
`this Figure, “Baker teachesthat its network nodesdo in fact make a
`
`determination regarding whether to forward a packet.” /d. at 6.
`
`Specifically, Petitioner contends, if a match 1s found in the table, the packet
`
`is relayed (step S1308), but if no match is found, the packetis not relayed
`
`(step S1304).
`
`/d. In Petitioner’s view, “Patent Owner completely ignores
`
`this operation and appears to assumethat Bakerwill always, andin all cases,
`
`proceed to packet forward option $1308 and neverproceedto option
`
`$1304.” /d.
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`18
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`IPR2021-00964
`Patent 10,229,586 B2
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`In addition, Petitioner asserts that “Baker also teachesthat “paired
`
`MACaddresses’ can be usedin place of ‘a channel number.’” /d. at 7
`
`(citing Ex. 1004 {| 76, 84-85). And Petitioner contends, “Bakeralso
`
`explains that the lookup procedure in Figure 13 can employ ‘destination
`
`address’ information in an incoming packet.” /d. Petitionerasserts, “i]t is
`
`these combined teachings—whichDr. Madisetti apparently ignored—and
`
`not Figure 13 standing alone andin isolation that render[] the claims
`
`obvious.” Jd.
`
`In the Sur-reply, Patent Owner respondsthat Figure 13 of Baker“‘is
`
`dedicated to finding the appropriate channel upon which to forwardall the
`
`incoming data it can,” and thus Bakerhas “no reason to condition a packet
`
`relay determination on a match”betweenan address and a routing table
`
`entry. Sur-reply 3 (citing Ex. 1004 4] 27—29). Patent Owner charges
`
`Petitioner with manufacturing the claimed determination “from the mere fact
`
`that in some embodiments a comparison occurs between a MAC addressin
`
`the packet and a destination addressin the routing table.” /d. at 4 (citing
`
`Reply 5-6). This isn’t enough, Patent Ownerurges, because“the claim
`
`requires more than just this comparison; it requires both a match andthat
`
`the determination to relay is based on that match.” /d. Baker, Patent
`
`Ownerargues, conditions packet retransmission on a different basis—
`
`“[w]here the table entry specifies a valid port and channel number.” /d. at
`
`4—5 (citing Ex. 1004 § 85). And according to Patent Owner,“[b]asing
`
`retransmission on the existence of valid routing information” does not
`
`disclose the disputed relaying limitation.
`
`/d. at 5.
`
`Turning to our analysis, we agree with Petitioner, whose arguments
`
`are supported by evidence anda rationale underpinning. Patent Owner, on
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`19
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`IPR2021-00964
`Patent 10,229,586 B2
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`the other hand, downplays the most relevant disclosure in Baker. But
`
`obviousnessis assessed by consideringall that a reference teaches. See Inre
`
`Mouttet, 686 F.3d 1322, 1332-33 (Fed. Cir. 2012). Itis not the case that
`
`Baker always forwards packets, and it is not the case that Baker’s disclosure
`
`of identifiers in its lookuptablesis irrelevant. Petitioner’s argument, as
`
`supported by Dr. Wicker’s testimony and the teachings of Baker, persuades
`
`us that Baker does indeed disclose the disputedlimitation.
`
`To begin with, we find the following disclosures of Baker, relied on
`
`by Petitioner, to be relevant. First, Baker teachesthat “[o]ptionally the
`
`routing table may further include, for each link defined by a pair of channels
`
`for incoming and outgoing data, an identifierfor the intended end recipient.”
`
`Ex. 1004 4 30 (emphasis added); Pet. 45—46 (citing same); Reply 4 (citing
`
`same). Patent Ownerdrawsourattention to the rest of this passage, which
`
`states, “in embodiments this is not necessary because a message containing
`
`an identifier for the intended recipient is always forwarded.” Id., quoted in
`
`POResp. 13. But Patent Owner’s suggestion that the latter half of this
`
`passage underminesthe formeris simply wrong. See PO Resp. 13. We
`
`cannot ignore Baker’s teachingthatits routing table includes “an identifier
`
`for the intended end recipient” in some embodiments just because in other
`
`embodiments, it doesn’t. See Mouttet, 686 at 1332-33.
`
`Second, Baker discloses comparing source and destination addresses
`
`to determine whetherto retransmit a packet:
`
`Since packets intended for more than one destination may
`arrive at a node on the same incoming channel. .
`. 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 channelfor
`retransmission ofa packet. In embodiments the condition is
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`20
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`IPR2021-00964
`Patent 10,229,586 B2
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`that the routing tables must hold an identifier that uniquely
`identifies the (bi-directional) path through the network. This
`may .. . be a paired source-destination MAC address... .
`Ex. 1004 4 76 (emphasis added); Pet. 46 (citing same); Reply 4 (citing
`
`same). In other words, Baker’s table includes a destination MACaddress so
`
`that an incoming packet’s destination address determines on which outgoing
`
`channel the packet should be relayed. See Ex. 1003 4 310-317. Patent
`
`Ownerconcedesthat in Baker, “a comparison occurs between a MAC
`
`address in the packet and a destination addressin the routing table.” Sur-
`
`reply 4. But Patent Owner would haveusbelieve that even though Baker
`
`comparestwo addresses, Baker never determines a match between those
`
`addresses. /d.;PO Resp. 10. This argumentstretches credulity, as without
`
`the possibility of a match, there would be no purpose in Baker performing a
`
`comparison. Itis plain to us that one of ordinary skill in the art would have
`
`understood that Baker’s system determines whetherthe incoming packet’s
`
`destination address matchesa destination address in the table, and on that
`
`basis, determines whetherto relay the packet. See Ex. 1004 4 76; Ex. 1003
`
`44 310-317.
`
`Patent Owner’s contention that the determination to relay a packet in
`
`Bakeris not based on any match doesnot withstand scrutiny. See Sur-reply
`
`4. Baker teachesthat “a destination MAC address may be includedin the
`
`connection table so that an incoming channeland destination determine an
`
`outgoing channelfor retransmission of a packet.” Ex. 1004 § 76 (emphasis
`
`added). But as we noted above, Patent Owner concedesthat “a comparison
`
`occurs between a MACaddressin the packet and a destination address in the
`
`routing table.” Sur-reply 4. And the preceding passage explains thatthis
`
`comparison “determine[s] an outgoing channel for retransmission of a
`
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`IPR2021-00964
`Patent 10,229,586 B2
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`packet.” Ex. 1004476. In other words, the result of this comparison (a
`
`match) determines an address whereto retransmit (1.e., relay) the packet.
`
`See Ex. 1003 7 310-317.
`
`d. Summary as to Claim 1
`
`Ba
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