IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`EMERSON ELECTRIC CO.,
`Petitioner,
`v.
`SIPCO, LLC,
`Patent Owner.
`______________________
`Case IPR2017-00216
`Patent 8,013,732
`______________________
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`U.S. Patent No. 8,013,732
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`EMERSON ELECTRIC CO.,
`Petitioner,
`v.
`SIPCO, LLC,
`Patent Owner.
`______________________
`Case IPR2017-00216
`Patent 8,013,732
`______________________
`Before LYNNE E. PETTIGREW, STACEY G. WHITE, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`
`
`TABLE OF CONTENTS
`I. CLAIM CONSTRUCTION ................................................................................ 1
`A. “sensor” ..................................................................................................... 1
`B. “actuator” .................................................................................................. 2
` PRIOR ART ......................................................................................................... 3
` Kahn discloses a plurality of transceivers “configured to wirelessly
`retransmit…the select information, the identification information
`associated with the nearby wireless transceiver, and transceiver
`identification information associated with the transceiver making
`retransmission” .......................................................................................... 3
`B. Kahn alone, or alternatively, Kahn in view of Cerf and/or
`Cunningham discloses a “gateway…configured to receive and
`translate the select information, the identification information
`associated with the nearby wireless transceiver, and transceiver
`identification information associated with one or more retransmitting
`transceivers, said gateway further configured to further transmit the
`translated information to the computer over the WAN” ........................... 7
`C. Motivation to combine Kahn with APA ................................................. 15
`D. Motivation to combine Cunningham with Kahn and APA ..................... 21
`E. Motivation to combine Ehlers with APA and Kahn ............................... 23
` THE PETITION COMPLIES WITH GRAHAM ............................................. 25
` IPRS ARE CONSTITUTIONAL ...................................................................... 26
`
`
`
`
`
`
`
`
`
`i
`
`
`
`Exhibit
`1001
`
`1002
`
`1003
`1004
`1005
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`1016
`1017
`1018
`1019
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
` LIST OF EXHIBITS
`Description
`U.S. Patent No. 8,013,732 to Petite et al. (“the ’732 patent” or
`“Petite”)
`Kahn, Robert E., “Advances in Packet Radio Network
`Protocols,” Proceedings of the IEEE, Vol. 66, No. 11,
`November 1978 (“Kahn”)
`Reserved
`Expert Declaration of Stephen Heppe, Ph.D. (“Heppe Decl.”)
`Curriculum Vitae of Stephen Heppe, Ph.D.
`Claim Construction Opinion Filed July 30, 2012 in the case of
`SIPCO, LLC v. ABB, Inc., et al, Civil Action No. 6:11-CV-
`0048 LED-JDL
`Claim Construction Opinion filed October 19, 2012 in the
`case of SIPCO, LLC v. Amazon.com, Inc., et al., Civil Action
`No. 2:08-CV-359-JRG
`PLAINTIFF SIPCO, LLC’S DISCLOSURE OF ASSERTED
`CLAIMS in Civil Action No. 6:15-cv-907, February 29, 2016
`PLAINTIFFS SIPCO, LLC AND IP CO, LLC’S
`PRELIMINARY ELECTION OF ASSERTED CLAIMS in
`Civil Action No. 1:16-cv-02690-AT, dated July 28, 2016
`Reserved
`Vinton G. Cerf, et al., “Issues in Packet-Network
`Interconnection, Proceedings of the IEEE, Vo. 66, No. 11,
`November 1978 (“Cerf”).
`U.S. Patent No. 5,924,486 (issued July 20, 1999),
`Environmental Condition Control and Energy Management
`System and Method (“Ehlers”)
`U.S. Patent No. 8,000,314 (issued August 16, 2011), Wireless
`Network System and Method for Providing Same
`(“Brownrigg”)
`U.S. Patent No. 6,124,806 to Cunningham et al.
`(“Cunningham”)
`Declaration of Gerard Grenier
`U.S. App. Ser. No 09/271,517 to Petite
`Decision Granting Institution in IPR2015-01973
`Patent Owner’s Preliminary Response in IPR2015-01973
`PO’s Request for Rehearing in IPR2016-984
`
`ii
`
`
`
`Exhibit
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`
`1034
`
`1035
`
`1036
`1037
`1038
`1039
`1040
`1041
`1042
`1043
`1044
`1045
`
`1046
`
`1047
`
`1048
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`Description
`U.S. Patent No. 5,971,582
`U.S. Patent No. 8,754,780
`U.S. Patent No. 7,697,492
`Decision on Petition in ’582 patent
`U.S. Patent No. 6,218,953
`U.S. Patent No. 8,193,930
`U.S. Patent No. 8,223,010
`Bibliographic Data Sheet from ’692 patent
`U.S. Patent No. 6,914,533
`U.S. Patent No. 7,295,128
`U.S. Patent No. 8,964,708
`Order in IPR2016-984 (Apr. 20, 2017)
`Order in IPR2016-984 (May 19, 2017)
`Petitioner’s email to the Board in IPR2016-984 opposing
`SIPCO’s request to file a third petition to modify the ’780
`patent's priority
`Troutman’s Pre-Filing Attorney Checklist for the ’780 Patent
`(Ex.1045 in IPR2016-984)
`Troutman’s Cover Page for the ’780 Patent Application
`(Ex.1046 in IPR2016-984)
`Petitioner’s Motion to Deny PO’s Request for a Certificate
`Decision on Petition in ’780 patent
`PTO Pair Printout for ’582 Patent
`Excerpt from File History of the ’692 patent
`Response to Office Action in ’732 patent (May 28, 2010)
`Application Data Sheets from the ’582 patent
`Reserved
`U.S. Patent No. 7,468,661
`June 19, 2017 Hearing Transcript in IPR2017-00001
`Declaration of James R. Batchelder in Support of Motion for
`Pro Hac Vice Admission
`Rebuttal Declaration of Dr. Stephen Heppe In Support of the
`Petition for Inter Partes Review of United States Patent No.
`8,013,732
`Webster’s Third New International Dictionary of the English
`Language Unabridged, United States of America (1993)
`“On measurement facilities in packet radio systems,” Fouad
`
`iii
`
`
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`Description
`A. Tobagi et al., National Computer Conference Proceedings
`(New York), AFIPS Press, June 1976.
`Final Written Decision (Paper 43) in IPR2016-00984 (PTAB
`Oct. 25, 2017)
`Declaration of Dan Braun In Support of the Petition for Inter
`Partes Review of United States Patent No. 8,013,732
`
`Exhibit
`
`1049
`
`1050
`
`
`
`iv
`
`
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`The Board correctly found that Petitioner established a reasonable likelihood
`
`of prevailing in proving Claims 1-7 (“Claims”) of U.S. Patent No. 8,013,732
`
`(“’732”) unpatentable. IPR2017-00216, Pap. 8 (“ID”), 2-3. Unable to avoid their
`
`unpatentability, Patent Owner’s (“PO”) Response (“POR,” Pap. 21) improperly
`
`injects limitations into the Claims, and ignores the references’ disclosures and
`
`combinations presented in the Petition. The Claims are invalid.1 Ex. 1046 ¶¶ 1-75.
`
`I.
`
`CLAIM CONSTRUCTION
`The Board correctly determined at institution that “no express construction”
`
`is required. ID 6; Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999); POR 15-20; POPR, Pap. 7, 13-18. Indeed, PO does not tie its
`
`constructions to any issue here. ID 6; Ex. 1046 ¶ 10.
`
`A.
`“sensor”
`If construed, “sensor” means “equipment, program or device that monitors
`
`or measures the state or status of a parameter or condition and provides
`
`information concerning the parameter or condition.” Pet. 11-12; Ex. 1001, 10:7-
`
`16, 9:27-38, 9:46-50, 12:40-46, 11:1-7, 3:6-8, Abstract; Ex. 1004 ¶ 11; Ex. 1046 ¶¶
`
`11-13. This is the same construction PO asserted and the court adopted in SIPCO,
`
`1 Emphasis added, internal quotations/citations omitted, unless noted. Arguments
`
`from Dr. Almeroth’s declaration not cited/made in the POR are waived. Pap. 9, 6;
`
`37 C.F.R. §42.6(a)(3).
`
`1
`
`
`
`
`LLC v. ABB, Inc. concerning a related patent, 6:11-cv-00048-JDL (E.D. Tex.) (Ex.
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`1006, 25-29).2
`
`B.
`“actuator”
`If construed, “actuator” means “equipment, program or device that controls
`
`or affects the state or status of a parameter or condition” consistent with the
`
`specification, which generally describes applying a control signal to an “actuator”
`
`to control the state or status of a parameter or condition (Pet. 12-13; Ex. 1001,
`
`6:11-14, 10:19-25; 10:62-65; 13:28-33, 3:6-8, 1:54-61; Ex. 1004 ¶ 12) and the
`
`plain and ordinary meaning (Ex. 1047, 22 (“actuator…one that actuates; …any of
`
`various electric, hydraulic, or pneumatic mechanisms by means of which
`
`something is moved or controlled indirectly”); Ex. 1046 ¶ 15).
`
`PO (POR 16-20) improperly limits “actuator” to “a transducer”—
`
`inconsistent with ’732, which distinguishes “actuators” from “transducers.” Ex.
`
`1001, 3:21-23. Furthermore, an “actuator” is not limited to converting to
`
`“mechanical motion,” but includes controlling the state or status without
`
`mechanical motion. Ex. 1001, 3:21-26, 10:19-25, 6:11-14, 3:6-8; Ex. 1047, 22;
`
`Ex. 1046 ¶ 14. Nor does ’732’s discussion of a “controller” or the claims’
`
`2 Contrary to PO, this construction was not “overridden” by SIPCO, LLC v.
`
`Amazon.com, Inc., 2:08-cv-00359-JRG (Ex. 1007), which concerned a related
`
`patent.
`
`2
`
`
`
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`recitation of a “computer” preclude an actuator from encompassing an “equipment,
`
`program or device.” POR 16-20; Ex. 1046 ¶ 16.
`
`
`
`PRIOR ART3, 4
` Kahn discloses a plurality of transceivers “configured to
`wirelessly retransmit…the select information, the identification
`information associated with the nearby wireless transceiver, and
`transceiver identification information associated with the
`transceiver making retransmission”
`Contrary to PO (POR 41-46, 2, 21), Kahn discloses a plurality of
`
`transceivers in a wireless packet radio network (PRNET), wherein a repeater
`
`packet radio wirelessly retransmits both payload data and identification
`
`information of a nearby transceiver (such as an originating transceiver or another
`
`repeater transceiver) and itself (as the transceiver making retransmission) to a
`
`station. Ex. 1002 (Kahn), 1477, col. 2, 1479-1480, 1494-1495; Pet. 38-39, 31-37,
`
`16-19; ID 14-15.
`
`Figure 8 (below) shows payload data (“select information”) transmitted in
`
`3 PO does not dispute the Claims are not entitled to a priority date before
`
`March 18, 1999 and that Petitioner’s references are prior art. Pet. 13-15.
`
`4 PO’s arguments regarding Claim 2 (POR 55-57, 3, 22-23) are irrelevant, as the
`
`Petition does not rely on Cunningham for Claim 2. PO does not otherwise dispute
`
`that APA (Ground 1) and Ehlers (Ground 2) each disclose Claim 2’s limitation.
`
`Pet. 46-47, 62-65.
`
`3
`
`
`
`
`the “text” of the packet. Ex. 1002, 1477-1479, Figs. 8, 15; Pet. 35-36, 31; Ex.
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`1004 ¶ 59. Kahn states “[e]ach radio has an identifier which we shall call its
`
`selector” used for, e.g., “network routing and control procedures.” Ex. 1002,
`
`1479, col. 1; ID 7, 14; Pet. 31; Ex. 1004 ¶ 51. Kahn further discloses a routing
`
`technique where “each packet originating at [a] radio” “contain[s] the entire set of
`
`selectors in its header.” Ex. 1002, 1479, col. 2; Pet. 39; Ex. 1004 ¶¶ 60-62. Thus,
`
`Kahn teaches that a repeater packet radio will retransmit payload data (“select
`
`information”) and “the entire set of selectors” (“identification information
`
`associated with the nearby wireless transceiver, and transceiver identification
`
`information associated with the transceiver making retransmission”) to a station.
`
`Id.; ID 7-8; Ex. 1004 ¶¶ 59-62; Ex. 1046 ¶¶ 17-19.
`
`
`
`Ex. 1002, Fig. 8.
`
`4
`
`
`
`
`Although Kahn discloses that “the entire set of selectors”—including
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`identification information of each packet radio in the route—is contained in each
`
`packet, PO argues that identification information of the retransmitting transceiver
`
`is not included.5 POR 42. But the retransmitting transceiver identification
`
`information is in the packet transmission, because the retransmitting transceiver is
`
`part of the route—thus, its “selector” is in “the entire set of selectors.” Ex. 1002,
`
`1479, col. 1, 1477, col. 2; Ex. 1004 ¶¶ 60-62; Ex. 1046 ¶ 19. For example, Kahn
`
`discloses that the retransmitting transceiver (a repeater), upon receiving a packet,
`
`“processes the header to determine if it should relay the packet, deliver it…, or
`
`discard it.” Ex. 1002, 1477, col. 2; Pet. 38. The packet is “relayed from repeater
`
`to repeater” until it reaches its destination. Id.
`
`Furthermore, contrary to PO (POR 42-43), the Claims do not require that
`
`the retransmitting transceiver itself insert the identification information. Thus,
`
`Kahn’s disclosure that the retransmitting transceiver’s identification is in the
`
`routing information (“the entire set of selectors”) teaches this limitation. Ex. 1002,
`
`1479, col. 2; Pet. 38-39. But even under PO’s narrow interpretation, Kahn
`
`
`5 To the extent PO (POR 42) argues that the transceiver identification information
`
`must be in the “header,” this is not required by the Claims, and nonetheless is
`
`disclosed by Kahn. Ex. 1002, 1477, col. 2, 1479, col. 1; Ex. 1046 ¶ 21.
`
`5
`
`
`
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`discloses this. Kahn teaches that a pickup packet “start[s] out empty” and “at each
`
`node” “traverse[d] enroute to [the] destination,” picks up identification information
`
`of that transceiver to “provid[e] a trace of [its] history.” Ex. 1002, 1495, col. 1;
`
`Ex. 1004 ¶ 67; Ex. 1046 ¶¶ 20, 24; Ex. 1048, 594, col. 2, 596, col. 1; POR 27; ID
`
`15. Accordingly, a retransmitting transceiver in the pickup packet route inserts its
`
`identification information into the pickup packet. Id.
`
`PO argues that in Kahn “only a small number of identifiers” are included,
`
`ignoring that “the entire set of selectors” is included. POR 43; Ex. 1002, 1479, col.
`
`2. Kahn merely explains that including “the entire set of selectors” adds overhead,
`
`such that there is a limit on the number of transceivers comprising the overall
`
`route. Ex. 1002, 1479, col. 2; Ex. 1046 ¶ 22. Dr. Almeroth’s testimony (POR 43-
`
`46) that a POSITA “would have not included the retransmitting transceiver’s own
`
`identifier” is irrelevant in view of Kahn’s disclosure of including “the entire set of
`
`selectors.” Ex. 1002, 1479, col. 2; Ex. 1046 ¶ 25.
`
`And Kahn does not “teach[] away” (POR 45-46) from including “the entire
`
`set of selectors.” ID 16-17; Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
`
`(Fed. Cir. 2006). Kahn discloses various options for implementing point-to-point
`
`routing—one “alternative[]” of which is including “the entire set of selectors.” Ex.
`
`1002, 1479, col. 2. Kahn explains that carrying more selectors identifying the
`
`route may be “desirable” and “have significant operational…[and] performance
`
`6
`
`
`
`
`advantages.” Id. For example, including “more than just the next repeater in the
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`header” allows for “a detour…in the event of failures.” Id. 1482, col. 2. Kahn’s
`
`disclosure of a known routing technique with certain advantages, while also having
`
`other disadvantages, does not teach away. Nor does Kahn’s discussion of a “more
`
`attractive choice” eliminate Kahn’s teaching of including the entire set of selectors
`
`in each packet so as to discourage the combination. In re Gurley, 27 F.3d 551, 553
`
`(Fed. Cir. 1994) (“A known or obvious composition does not become patentable
`
`simply because it has been described as somewhat inferior to some other product
`
`for the same use.”). Additionally, Kahn describes sending a “route setup packet”
`
`used “to initialize or refresh the renewal table entries in each repeater,” where the
`
`packet text includes the “entire path of route selectors” and “data.” Id.; Ex. 1046 ¶
`
`22-23, 26.
`
`B. Kahn alone, or alternatively, Kahn in view of Cerf and/or
`Cunningham discloses a “gateway…configured to receive and
`translate the select information, the identification information
`associated with the nearby wireless transceiver, and transceiver
`identification information associated with one or more
`retransmitting transceivers, said gateway further configured to
`further transmit the translated information to the computer over
`the WAN”6
`Contrary to PO (POR 24-41, 2-3, 21), Kahn discloses a station (“gateway”)
`
`
`6 Contrary to PO (POR 39-40), Petitioner’s position is fully supported by the
`
`evidence.
`
`7
`
`
`
`
`that receives select information and identification information associated with a
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`nearby transceiver and a retransmitting transceiver, and further translates that
`
`information for transmission to a computer over a WAN. Pet. 39-42; ID 14-17.
`
`Kahn discloses that a repeater packet radio retransmits payload data and
`
`identification information of a nearby transceiver (e.g., an originating packet radio
`
`or another repeater packet radio) and itself (as the transceiver making
`
`retransmission) through the PRNET to a station. See § II.A, Ex. 1002, 1479-1480,
`
`1494-1495; Pet. 39, 16-19; ID 14-15. Kahn further discloses that the station
`
`operates as a “gateway” and transmits this information to a computer over the
`
`ARPANET (“WAN”). Ex. 1002, 1494-1495; Ex. 1004 ¶ 63; Pet. 39-40, 16-19.
`
`In particular, Kahn discloses performing a “variety of debugging and
`
`performance measurement operations” on the network and collection of
`
`measurement data to perform such operations. Ex. 1002, 1489, col. 1, 1494-1495;
`
`Pet. 41-42; Ex. 1004 ¶¶ 66-68; Ex. 1046 ¶¶ 27-28. For example, Kahn discloses
`
`using measurement tools (i.e., “(CUMSTATS), snapshots, pickup packets, and
`
`neighbor tables”) to collect and transmit “measurement data” from the packet
`
`radios in the PRNET to the station, which uses “a gateway [34]” to transfer that
`
`“PRNET measurement data” over the ARPANET to a “UCLA 360/91 computer.”
`
`Ex. 1002, 1494-1495, 1488; Ex. 1004 ¶¶ 63-64, 41; Pet. 39-40, 42; Ex. 2016,
`
`39:18-44:20. “[T]o deliver the contents of a ‘pickup packet’ to a remote site on
`
`8
`
`
`
`
`the ARPANET, the gateway process receives and translates the identification
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`information (‘selectors’) and measurement data.” Ex. 1004 ¶ 67.
`
`PO argues that Kahn discusses transmitting only “PRNET measurement
`
`data” to the UCLA computer—and does not teach that the “measurement data”
`
`includes “an entire set of PR selectors.” POR 27, 29-31, 2, 22. But Kahn discloses
`
`that PRNET measurement data transmitted to the UCLA computer includes pickup
`
`packet contents containing data and transceiver identification information for every
`
`packet radio in the route. Ex. 1002, 1495, col. 1; Ex. 1004 ¶ 67; Ex. 1046 ¶¶ 28-
`
`32. For example, Kahn discloses that “[o]perating software in the PRU’s, TIU’s,
`
`and station performs the collection of measurement data and uses the system
`
`protocols for delivery of this data to a measurement file located at the station.” Id.
`
`Kahn’s measurement tools for collecting measurement data includes “pickup
`
`packets.” Id.; Pet. 42. The pickup packets, “pick up information at each node
`
`they traverse enroute to their destination” and “provid[e] a trace of their
`
`history”—and thus contain data from the packet radios and the full set of
`
`“selectors” identifying every packet radio along the route to the station. Id.; Ex.
`
`1046 ¶ 32; Ex. 1048, 594, col. 2, 595, col. 2–596, col. 1 (confirming a POSITA
`
`would have understood that pickup packets “contain[] the actual and complete
`
`route taken by the packet” and include the “PRU ID” collected “at each PRU” in
`
`addition to other information). “[T]he final destination of the PRNET
`
`9
`
`
`
`
`measurement data is the UCLA 360/91 computer. The data are sent from the
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`station over the ARPANET and are stored at UCLA, for use by several analysis
`
`programs.” Ex. 1002, 1495, col. 1; Ex. 1046 ¶¶ 27-32.
`
`PO’s assertion that there is “no reason” to transmit the entire set of selectors
`
`over the ARPANET (POR 31-32), and that because data in the measurement file is
`
`“cumulative” or “aggregated” at the station, “it would not be important to know
`
`which Packet Radios sent the data in its original form” (POR 30) contradicts
`
`Kahn’s disclosure that the pickup packets “provid[e] a trace of their history” to be
`
`used “by several analysis programs” at the UCLA computer. Ex. 1002, 1495, col.
`
`1. Because the point of collecting the information is for the “development and
`
`evaluation of efficient network protocols,” it makes no sense to remove routing
`
`“history” information before transmitting to UCLA for analysis. Id., 1489, 1495;
`
`Ex. 1046 ¶¶ 30-35; POR 29-30. Indeed, a POSITA would have understood that
`
`transmitting the full set of selectors to the UCLA computer would beneficially
`
`provide additional details about the network performance at specific nodes, useful
`
`for analyzing debugging/network performance issues. Ex. 1002, 1489, col. 1; Pet.
`
`41-42; Ex. 1004 ¶¶ 66-68; Ex. 1046 ¶ 33; POR 31-33. The Tobagi article confirms
`
`this, explaining that pickup packet contents include “the current PRU ID” as a
`
`“data item[] required to support” the “measurement functions required to gain
`
`insight into the behavior of [the] broadcast network.” Ex. 1048, 595, col. 2–596,
`
`10
`
`
`
`
`col. 1, 589, col. 2, 594, col. 2; Genzyme Therapeutic Prods. Ltd. P’ship v.
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016). Further, while
`
`minimizing “impact on PRNET performance” is one goal, eliminating routing
`
`history at the station before transmitting over the WAN (see POR 33-34) negates
`
`Kahn’s other goal of collecting measurement data to analyze network performance,
`
`by using, e.g., pickup packets that provide a trace of their history. Ex. 1002, 1495,
`
`col. 1. Nor is Kahn limited to “aggregating” information in a measurement file, as
`
`discussed below.
`
`PO asserts that Kahn’s station “creates new packets with the measurement
`
`file” and “does not perform any protocol conversion/translation” of each received
`
`pickup packet. POR 27-29, 21. But the Claims do not require that the gateway
`
`“directly” transmit received data to the computer over the WAN, so as to preclude
`
`aggregating at the gateway data received over multiple transmissions before
`
`transmitting over the WAN. The Claims merely recite that the gateway “receive[s]
`
`and translate[s]” the information. Thus, Kahn’s disclosure of collecting data from
`
`the transceivers in the PRNET and writing that data into a measurement file for
`
`translation and transmission over the WAN meets this limitation. Ex. 1002, 1494-
`
`1495; Ex. 1004 ¶ 67; Ex. 1046 ¶ 36. Nor is Kahn limited to collecting data at the
`
`station, and a POSITA would have understood that Kahn’s disclosure encompasses
`
`the scenario where the station receives a pickup packet, writes it into a single
`
`11
`
`
`
`
`measurement file, and transmits it to a computer over the WAN. Id.
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`Additionally, PO asserts that Kahn does not disclose “translating” the select
`
`information and identification information for the retransmitting and nearby
`
`transceiver. POR 34, 2-3, 21. But Kahn discloses that the station receives the
`
`claimed information from transceivers over the PRNET (using “system protocols”)
`
`and transmits it to UCLA “over the ARPANET” (using “internet protocols”). Ex.
`
`1002, 1494-1495; Pet. 39-42. Thus, Kahn’s station performs a translation of
`
`information (including select information and identification information for a
`
`nearby transceiver and a retransmitting transceiver) by converting the information
`
`from one protocol for the PRNET to a different protocol for the ARPANET. Id.;
`
`Ex. 1004 ¶ 67; Ex. 1046 ¶¶ 36-39.
`
`Alternatively, Cerf discloses a gateway that translates. While Kahn
`
`discloses “translat[ing],” Cerf alternatively discloses a gateway that serves as
`
`network protocol translator (e.g., using encapsulation of datagrams, and mapping
`
`of addresses from one network into local network addresses). Pet. 40; Ex. 1011,
`
`1397, col. 2–1399, col. 1; Ex. 1004 ¶¶ 69-72. PO does not dispute that a POSITA
`
`would have been motivated to combine Cerf with Kahn (and APA), as Kahn
`
`expressly references Cerf as providing details of Kahn’s “gateway,” and as Dr.
`
`Heppe explained, “[s]ince the ARPANET does not support the linklayer protocols
`
`employed by the PRNET, networking protocols must be converted or translated.”
`
`12
`
`
`
`
`Pet. 40; Ex. 1002, 1494, col. 2; Ex. 1004 ¶ 33; ID 22-23; POR 34-36. Despite
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`Cerf’s disclosure of “Protocol Translation Gateways,” PO argues Cerf does not
`
`teach a gateway that translates, asserting that the PRNET and ARPANET in Cerf
`
`“share the same end-to-end protocols.” Ex. 1011, 1398, col. 2–1399, col. 1; Pet.
`
`40; POR 34-36, 41. But PO (POR 34-36) ignores Cerf’s disclosures in the Petition
`
`(e.g., Ex. 1011, 1397, col. 2–1399, col. 1) that teach gateways that translate. Pet.
`
`40. Cerf explains that gateways perform translations through “encapsulation and
`
`decapsulation of datagrams” and “mapping of internet source/destination addresses
`
`into local network addresses.” Ex. 1011, 1398, col. 1, 1399, col. 1; Ex. 1004 ¶¶ 21,
`
`70. Additionally, as explained, Kahn discloses transmitting over the PRNET and
`
`ARPANET with different protocols, thus requiring a translation. Ex. 1002, 1494-
`
`1495; Ex. 1004 ¶ 33. Furthermore, while Cerf describes using a “host-host
`
`protocol” where “each packet includes an ‘Internet Header,’” the ARPANET and
`
`PRNET utilize different link-layer protocols, which require translation by the
`
`gateway. Ex. 1011, 1404, col. 1, 1398, Figs. 12-13, 1, 3; Ex. 1004 ¶ 33; Ex. 1046 ¶
`
`40; Ex. 2016, 50:7-54:4. Thus, PO’s assertion (POR 36) that the measurement file
`
`in Kahn “would not undergo any protocol translation, as taught by Cerf,” is
`
`incorrect. Ex. 1046 ¶¶ 40-43.
`
`Alternatively, Cunningham discloses a gateway connected to the wide area
`
`network. The Petition explained that, alternatively, Cunningham discloses a data
`
`13
`
`
`
`
`collection module (gateway) that receives and transmits information to a host
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`module (computer) over the internet (WAN).7 Pet. 24-26, 41; Ex. 1014, 7:19-27,
`
`44:12-41, 44:53-64, 47:44-54, 32:42-46, Fig. 49; Ex. 1004 ¶ 32. PO (POR 41, 36-
`
`39) asserts Cunningham does not teach “protocol conversion/translation of each
`
`meter reading.” This is irrelevant because for this, the Petition relies on Kahn, or
`
`alternatively, Cerf—not Cunningham.8 PO (POR 37, 3) further asserts that
`
`Cunningham’s data collection module (gateway) does not “directly
`
`forward[]/route[]” signals to the host module (computer), but as explained, the
`
`Claims do not require this or preclude collecting/aggregating data before
`
`transmitting to the computer over the WAN. And Cunningham is not limited to
`
`collecting data at the gateway before transmitting to the computer—the data
`
`collection module receives information from a sensor interface module and
`
`“forwards the transmitted information” to a host module over a WAN. Ex. 1014,
`
`7:19-27, 44:12-41, 44:53-64, 47:44-54, 32:42-46, 14:12-61, 32:6-9, Figs. 49, 21;
`
`Pet. 41. Where the sensor interface module takes only a single reading, it is
`
`
`7 PO does not dispute that a POSITA would have been motivated to implement
`
`Cunningham’s teaching of a gateway connected to the WAN in Kahn’s system.
`
`Pet. 41.
`
`8 Cunningham nonetheless discloses “translat[ing].” Ex. 1014, 45:60-46:2.
`
`14
`
`
`
`
`transmitted to the data collection module and directly forwarded to the host
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`module. Ex. 1014, 7:19-27, 12:52-59, 14:12-61, 32:6-9, Fig. 21, 13:44-56, 31:6-
`
`27; Ex. 1046 ¶¶ 44-45.
`
`C. Motivation to combine Kahn with APA
`A POSITA would have been motivated to combine Kahn with APA as
`
`supported by Kahn’s express teachings, Dr. Heppe’s testimony, and ’732’s
`
`admissions about the known state of the art. Pet. 20-22. There is no “hindsight.”9
`
`POR 57-61; ID 19-21.
`
`A POSITA would have been motivated to use Kahn’s wireless network as a
`
`network for the APA’s monitoring and control systems having sensors and
`
`actuators to achieve flexibility, rapid deployment, and ease of reconfiguration
`
`offered by a wireless system and to save costs (by, e.g., avoiding the expense
`
`associated with wired systems, such as having to install physical cables and
`
`wiring). Pet. 20-22, 31-35, 43-48; Ex. 1004 ¶¶ 29-31, 58, 74, 77, 85; Ex. 1002,
`
`1469, col. 1, 1468-1470, col. 2, 1477, col. 1, 1495, col. 2; Ex. 1046 ¶¶ 46-64.
`
`Kahn’s teaching that wireless radio “provid[es] a degree of flexibility in
`
`9 The findings in IPR2015-01973 (currently on appeal) are not binding here. See
`
`POR 58-59, 4-5. Moreover, the Board found there was no “hindsight” in
`
`combining Kahn and APA in IPR2016-00984, involving a related patent with
`
`similar claims. Pap. 43, pp. 35-55 (Ex. 1049).
`
`15
`
`
`
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`rapid deployment and reconfiguration not currently possible with most fixed [i.e.,
`
`wired] plant installations” would have motivated a POSITA to implement Kahn’s
`
`wireless teachings in APA’s wired monitoring and control system. Ex. 1002,
`
`1469, col. 1; Pet. 21; Ex. 1004 ¶ 31. As Dr. Heppe explained, implementing
`
`Kahn’s wireless teachings in the APA system would have saved costs by, e.g.,
`
`“avoid[ing] the expense associated with installation of wiring.” Ex. 1004 ¶ 31;
`
`Pet. 20-22. Kahn further confirms its wireless system “requir[es] little more than
`
`mounting the equipment at the desired location,” as there is no need to install
`
`physical wires. Ex. 1002, 1470, col. 2. The advantages of wireless technology,
`
`including flexibility, rapid deployment, reconfiguration, mobile user support, and
`
`cost savings would have motivated a POSITA to combine Kahn with APA. Ex.
`
`1004 ¶ 31; Ex. 1002, 1469, col. 1, 1495, col. 2; Ex. 1046 ¶¶ 53-55.
`
`Furthermore, the cost problems of wired systems were well-known (as Dr.
`
`Heppe explained) and not uniquely identified by the ’732 Applicants. Ex. 1004 ¶¶
`
`30-31; Ex. 1046 ¶¶ 55-57; POR 5, 57-60. Greeves (discussed by Dr. Almeroth)
`
`confirms that wireless radio “is relatively cost-effective when compared with other
`
`physical links” and has higher integrity and incorruptibility, ease of set-up and
`
`operation, and greater cost-effectiveness. Ex. 2018, 31-33; Ex. 2014 ¶ 176. Nor is
`
`it improper hindsight to rely on ’732’s statements that confirm the known cost
`
`problems of the prior art wired systems. Under KSR, “any need or problem known
`
`16
`
`
`
`
`in the field of endeavor at the time of invention and addressed by the patent can
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`
`provide a reason for combining.” 550 U.S. 398, 420 (2007). The ’732 Applicants
`
`admitted that the problems with the cost of wiring were known—and described
`
`these problems alongside the APA. Ex. 1001, 2:34-43, 5:48-61; Ex. 1004 ¶¶ 30-
`
`31.
`
`Moreover, contrary to PO (POR 60, 4-6), a POSITA would have had “a
`
`reasonable expectation of success.”10 Dr. Heppe explained that prior art sensors
`
`and actuators, intended for “third-party” integration into control systems, have
`
`“well-defined behaviors and interface specifications to enable…integration with
`
`relative ease…, and with predictable results.” Ex. 1004 ¶ 31. ’732 admits “[a]s is
`
`known, there are a variety of systems for monitoring and controlling,”
`
`confirming their well-defined behaviors and interface specifications. Ex. 1001,
`
`1:54-61. Additionally, Kahn discloses that its packet radio technology is
`
`applicable in “an extremely wide range” of applications, including the applications
`
`described in APA. Ex. 1002, 1468-1469, col. 1; Pet. 21-22; Ex. 1004 ¶¶ 31, 74;
`
`
`10 As discussed (§§ II.C-E), Petitioner provided objective evidence supporting the
`
`motivation to combine. “[E]xperimental data” is not required; “all that is required
`
`is a reasonable expectation of
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
