Filed: March 6, 2019
`
`Doug G. Muehlhauser (Reg. No. 42,018)
`William H. Shreve (Reg. No. 35,678)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.:
`(949) 760-0404
`Fax:
`(949) 760-9502
`E-mail: BoxNomadix@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2019-00211
`Patent 7,953,857
`
`
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`Doug G. Muehlhauser (Reg. No. 42,018)
`William H. Shreve (Reg. No. 35,678)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.:
`(949) 760-0404
`Fax:
`(949) 760-9502
`E-mail: BoxNomadix@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2019-00211
`Patent 7,953,857
`
`
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`IPR2019-00211
`Patent 7,953,857
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`FACTUAL AND PROCEDURAL BACKGROUND .................................... 2
`
`A. Nomadix sues Petitioner ........................................................................ 2
`
`B.
`
`Over the next two years, Petitioner files six IPR
`petitions ................................................................................................. 2
`
`III. OVERVIEW OF THE ’857 PATENT ............................................................ 4
`
`A.
`
`B.
`
`Sample embodiments described in the specification ............................ 4
`
`Claims 1 and 9 ....................................................................................... 6
`
`IV. PRELIMINARY CLAIM-CONSTRUCTION REMARKS ........................... 7
`
`V.
`
`PETITIONER’S ASSERTED GROUNDS ..................................................... 8
`
`VI. THE BOARD SHOULD DENY THE PETITION ......................................... 9
`
`A.
`
`Since it was not sworn or made under penalty of
`perjury, the Board should not accord Dr. Dordal’s
`testimony any weight ............................................................................ 9
`
`B.
`
`Petitioner fails to carry its burden for Grounds 1 and 3 ......................10
`
`1.
`
`2.
`
`Bonomi’s comparison of arrival times is not a
`calculation of a delay period .....................................................11
`
`Petitioner has failed to demonstrate that one of
`ordinary skill in the art would be motivated to
`combine Bonomi and Borella with a reasonable
`expectation of success ...............................................................14
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`IPR2019-00211
`Patent 7,953,857
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`a.
`
`b.
`
`c.
`
`Bonomi’s traffic-shaping technology is
`completely reliant on underlying
`technologies unique to ATM networking .......................14
`
`Borella’s technology is completely
`reliant on the specific packet format that
`the IP protocol dictates ...................................................18
`
`The IP-rooted technology of Borella
`cannot be incorporated into Bonomi,
`which relies on unique aspects of ATM
`networks ..........................................................................21
`
`3.
`
`Petitioner has failed to demonstrate that one of
`ordinary skill in the art would be motivated to
`combine Bonomi and Teraslinna with a
`reasonable expectation of success .............................................25
`
`C.
`
`Petitioner fails to carry its burden for Ground 2
`because it fails to show that Rupp is prior art, let alone
`prior art that renders the claims obvious .............................................28
`
`1.
`
`Petitioner has failed to offer evidence that Rupp
`constitutes a prior-art printed publication .................................29
`
`a.
`
`Petitioner mischaracterizes Mr. Grenier’s
`testimony—he never states that Rupp
`was published by May 20, 1998 .....................................30
`
`b. Mr. Grenier offers no competent
`evidence of public accessibility early
`enough to make his Exhibit A prior art,
`and his Exhibit A is not even the same as
`Rupp ................................................................................30
`
`c. Mr. Grenier’s statements about a 1998
`conference are not competent evidence
`that Rupp qualifies as a printed
`publication ......................................................................32
`
`- ii -
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`IPR2019-00211
`Patent 7,953,857
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`2.
`
`3.
`
`Petitioner fails to carry its burden of
`demonstrating Rupp is analogous art ........................................35
`
`Even if Rupp were analogous art, one of
`ordinary skill in the art would neither be
`motivated to combine Chandran and Rupp nor
`have a reasonable expectation of succeeding in
`combining the two to arrive at the claimed
`inventions ..................................................................................39
`
`VII. CONCLUSION ..............................................................................................44
`
`
`
`
`
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`- iii -
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`TABLE OF AUTHORITIES
`
`
`
`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`908 F.3d 765 (Fed. Cir. 2018) ....................................................................... 29
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) ............................................................... 34, 35
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) ............................................................... 25, 28
` FedEx Corp. v. Ronald A. Katz Tech. Licensing, L.P.,
`Case CBM2015-00053 (PTAB June 29, 2015) (Paper 9) ......................... 9, 10
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ................................................................. 37, 38
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ..................................................................... 29
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ................................................................. 25, 28
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ....................................................................... 35
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) ..................................................................... 38
`In re Sponnoble,
`405 F.2d 578 (C.C.P.A. 1969) ....................................................................... 25
`Intel Corp. v. Alacritech, Inc.,
`Case IPR2017-01402 (PTAB Nov. 6, 2017) (Paper 8) ................................. 10
`K-TEC, Inc. v. Vita-Mix Corp.,
`696 F.3d 1364 (Fed. Cir. 2012) ............................................................... 35, 36
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) ..................................................................... 25
`
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`SRI Int’l, Inc. v. Internet Sec. Sys.,
`511 F.3d 1186 (Fed. Cir. 2008) ..................................................................... 29
`Wang Labs., Inc. v. Toshiba Corp,
`993 F.2d 858 (Fed. Cir. 1993) ................................................................. 37, 38
`
`
`Statutes, Regulations, and Rules
`
`28 U.S.C. § 1746 ........................................................................................................ 9
`35 U.S.C. § 316(e) ............................................................................................. 35, 36
`37 C.F.R. § 1.68 ......................................................................................................... 9
`37 C.F.R. § 42.2 ......................................................................................................... 9
`37 C.F.R. § 42.53(a) ................................................................................................... 9
`Fed. R. Evid. 803(6)(A) ........................................................................................... 32
`
`
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`IPR2019-00211
`Patent 7,953,857
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`
`Exhibit No. Description
`
`EXHIBIT LIST
`
`2001
`
`Declaration of Dean Sirovica, Ph.D.
`
`
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`- vi -
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`IPR2019-00211
`Patent 7,953,857
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`I. INTRODUCTION
`The Board should deny the petition because Petitioner fails to carry its
`
`burden of establishing a reasonable likelihood of unpatentability of either of the
`
`two challenged claims. Petitioner argues three grounds, each setting forth a two-
`
`reference obviousness theory. In each ground, Petitioner concedes that the primary
`
`reference fails to disclose all claim limitations and relies on its secondary reference
`
`for the missing limitations.
`
`Petitioner’s analysis on all three grounds is deeply flawed. As an initial
`
`matter, Petitioner offers the declaration of Dr. Peter Dordal as expert testimony,
`
`but Dr. Dordal’s unsworn statements are not made under penalty of perjury and are
`
`therefore not entitled to any weight. Substantively, Petitioner badly misunderstands
`
`the cited references, relies on at least one reference that it fails to show is prior art,
`
`and fails to account for incompatibilities between the technologies disclosed in the
`
`references that would prevent one of ordinary skill in the art from combining the
`
`references. In contrast, Patent Owner offers the expert testimony of Dr. Dean
`
`Sirovica, who carefully walks through the technologies disclosed in the cited
`
`references and explains why they are incompatible or teach away from one
`
`another. Since one of ordinary skill in the art would neither have been motivated to
`
`combine the references as Petitioner proposes nor had a reasonable expectation of
`
`producing the claimed inventions, the Board should deny the petition.
`
`- 1 -
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`IPR2019-00211
`Patent 7,953,857
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`II. FACTUAL AND PROCEDURAL BACKGROUND
`A. Nomadix sues Petitioner
`Founded by National Medal of Science recipient Dr. Leonard Kleinrock and
`
`his colleague Dr. Joel Short, Patent Owner Nomadix is a pioneer and leader in the
`
`worldwide market for Internet access gateways. Network operators across the
`
`globe rely on Nomadix’s gateway devices every day to manage over 5 million
`
`Internet connections, everywhere from landmark hotels like The Jefferson in
`
`Washington, D.C., to the Perth Convention and Exhibition Centre in Australia, to
`
`sporting venues like those for the FIFA World Cup.
`
`Nomadix sued Petitioner Guest Tek Interactive Entertainment in 2009 for
`
`patent infringement. The parties settled in 2010, entering into a license agreement.
`
`Petitioner chose to license Nomadix patents so that it could incorporate Nomadix’s
`
`patented technology into its competing gateways. But Petitioner also chose to
`
`largely stop paying royalties under the license agreement. To recover millions of
`
`dollars in royalties owed, Nomadix sued Petitioner for breach of the license
`
`agreement in October 2016.
`
`B. Over the next two years, Petitioner files six IPR petitions
`Petitioner waited over a year after the litigation began to start filing petitions
`
`with the Board. In December 2017, Petitioner filed its first round of petitions
`
`challenging two of Nomadix’s patents. In June 2018, the Board denied those
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`petitions on the merits. Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.,
`
`Case IPR2018-00376 (PTAB June 29, 2018) (Paper 9); Guest-Tek Interactive
`
`Entertainment Ltd. v. Nomadix, Inc., Case IPR2018-00392 (PTAB June 29, 2018)
`
`(Paper 9). Petitioner then waited more than two months to file its second round of
`
`petitions, challenging the same two patents as in the first round. Cases IPR2018-
`
`01660, IPR2018-01668. Those petitions are still pending in the pre-institution
`
`phase.
`
`Petitioner then waited another two months to file the present petition and its
`
`companion in IPR2019-00253. Petitioner thus waited until November 2018 to file
`
`the present petition, or more than two years after Patent Owner commenced its suit
`
`against Petitioner for breach of the license agreement.
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`- 3 -
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`IPR2019-00211
`Patent 7,953,857
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`A.
`
`III. OVERVIEW OF THE ’857 PATENT
`Sample embodiments described in the specification
`The ’857 patent describes several embodiments of systems and methods for
`
`dynamically managing bandwidth on a user-by-user basis. In some embodiments, a
`
`gateway manages a user computer’s access to network services as depicted in
`
`figure 1:
`
`
`
`In some embodiments described in the ’857 patent, the gateway intercepts
`
`the initial traffic of a user and, before allowing the user to access the Internet,
`
`presents the user with a login portal through which the user selects a bandwidth
`
`setting. (E.g., Ex. 1001 (’857 patent) col. 5 ll. 45–58.) When the gateway
`
`subsequently receives a packet, it may identify the user that sent the packet and
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`IPR2019-00211
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`retrieve an authorization file with an indication of the user-selected bandwidth.
`
`(See, e.g., id. col. 11 ll. 55–64.) The gateway may then examine the user’s
`
`bandwidth usage and specifically calculate a period of time for which to delay
`
`transmission of the packet that is designed to prevent the user from exceeding the
`
`selected bandwidth setting. (See, e.g., id. col. 11 l. 63 – col. 12 l. 6.)
`
`
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`- 5 -
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`IPR2019-00211
`Patent 7,953,857
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`B. Claims 1 and 9
`Petitioner challenges claims 1 and 9 of the ’857 patent. Claim 1 is
`
`reproduced below.
`
`1. A system for allowing a user to dynamically control an amount
`of bandwidth available to the user in a network, the system
`comprising:
`
`a first network interface for communicating over a communication
`link with a user device during a network session;
`
` a second network interface for communicating with one or more
`computer networks;
`
`a data storage system including an indication of a network
`communication bandwidth associated with the user device and
`selected by the user; and
`
`a processor configured to calculate a delay period associated with a
`received packet based on
`the network communication
`bandwidth associated with the user, and the processor further
`configured to delay transmission of the packet based on the
`delay period to prevent the user device from achieving a
`bandwidth greater than the network communication bandwidth
`associated with the user device and selected by the user.
`
`- 6 -
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`IPR2019-00211
`Patent 7,953,857
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`Claim 9 is reproduced below:
`
`9. A method of dynamically managing transmission of packets, the
`method comprising:
`
`establishing a network session over a communication link between
`a network and a user device of a user;
`
`associating a data transmission parameter selected by the user with
`the user device;
`
`receiving a packet and calculating a delay period associated with
`the packet based on the data transmission parameter; and
`
`delaying transmission of the packet based on the delay period to
`prevent the user device from achieving a data transmission
`greater than the data transmission parameter associated with the
`user device and selected by the user.
`
`IV. PRELIMINARY CLAIM-CONSTRUCTION REMARKS
`Petitioner urges the Board to adopt certain constructions for “processor” and
`
`“data storage system” in claim 1. (Pet. 9.) Since Patent Owner’s arguments in this
`
`Preliminary Response do not depend on the construction of these terms, at this pre-
`
`institution stage Patent Owner will not comment on Petitioner’s proposed
`
`constructions or Petitioner’s supporting arguments. At this stage, the Board need
`
`not adopt any explicit constructions to deny the petition.
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`- 7 -
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`Patent 7,953,857
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`V. PETITIONER’S ASSERTED GROUNDS
`Petitioner presents three grounds for inter partes review based on the
`
`following five references:
`
`Exhibit No. Reference
`1004
`U.S. Patent No. 5,864,540
`1005
`U.S. Patent No. 7,392,279
`1006
`U.S. Patent No. 6,587,433
`INDEX: A Platform for
`Determining how People Value the
`Quality of their Internet Access
`U.S. Patent No. 5,623,492
`
`1007
`
`1008
`
`Shorthand Name
`Bonomi
`Chandran
`Borella
`
`Rupp
`
`Teraslinna
`
`
`
`Petitioner contends claims 1 and 9 are obvious based on these three grounds:
`
`Ground References
`1
`Bonomi in view of Borella
`2
`Chandran in view of Rupp
`3
`Teraslinna in view of Bonomi
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`1 and 9
`1 and 9
`1 and 9
`
`
`
`
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`IPR2019-00211
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`A.
`
`VI. THE BOARD SHOULD DENY THE PETITION
`Since it was not sworn or made under penalty of perjury, the Board
`should not accord Dr. Dordal’s testimony any weight
`Petitioner offers the declaration of Dr. Peter Dordal as expert testimony in
`
`support of its arguments. (Ex. 1002.) But Dr. Dordal’s declaration is unsworn and
`
`was not made under penalty of perjury.
`
`“Uncompelled direct testimony must be submitted in the form of an
`
`affidavit.” 37 C.F.R. § 42.53(a). As used here, affidavit “means affidavit or
`
`declaration under [37 C.F.R. § 1.68].” 37 C.F.R. § 42.2. Section 1.68 permits a
`
`declaration to substitute for a sworn statement “only if . . . the declarant is on the
`
`same document, warned that willful false statements and the like are punishable by
`
`fine or imprisonment, or both (18 U.S.C. 1001) . . . .” 37 C.F.R. § 1.68.
`
`Additionally, “[t]he declarant must set forth in the body of the declaration that all
`
`statements made of the declarant’s own knowledge are true and that all statements
`
`made on information and belief are believed to be true.” Id. Similarly, “a
`
`declaration under 28 U.S.C. 1746 may be used as an affidavit.” 37 C.F.R. § 42.2.
`
`But that statute grants an unsworn declaration the same effect as a sworn statement
`
`only if the declaration is subscribed by the declarant as made under penalty of
`
`perjury. 28 U.S.C. § 1746.
`
`Dr. Dordal’s declaration fails to satisfy any of these requirements. His
`
`declaration is therefore entitled to no weight. FedEx Corp. v. Ronald A. Katz Tech.
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`- 9 -
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`Licensing, L.P., Case CBM2015-00053, slip op. at 7–8 (PTAB June 29, 2015)
`
`(Paper 9) (giving no weight to expert declaration and denying institution); Intel
`
`Corp. v. Alacritech, Inc., Case IPR2017-01402, slip op. at 5–6 (PTAB Nov. 6,
`
`2017) (Paper 8) (disregarding noncompliant unsworn statement and denying
`
`institution).
`
`B.
`
`Petitioner fails to carry its burden for Grounds 1 and 3
`Grounds 1 and 3 involve a common reference: Bonomi. In Ground 1,
`
`Petitioner argues obviousness based on the combination of Bonomi and Borella,
`
`while in Ground 3 Petitioner relies on combining Bonomi with Teraslinna.
`
`In both cases, Petitioner relies exclusively on Bonomi for disclosure of the
`
`claim limitations involving calculating a delay period for a packet. But Petitioner
`
`fundamentally misunderstands Bonomi and fails to identify any calculation of a
`
`delay period. The proposed combinations for Grounds 1 and 3 therefore both fail to
`
`produce the claimed inventions.
`
`Petitioner also fails to take into account the degree to which Bonomi’s
`
`technology is designed to shape traffic on a per-connection basis, relying on unique
`
`aspects of Asynchronous Transfer Mode (ATM) networking. This makes Bonomi
`
`incompatible with Borella and Teraslinna and one of ordinary skill in the art would
`
`therefore neither be motivated to combine Bonomi with Borella or Teraslinna nor
`
`have a reasonable expectation of succeeding in producing the claimed inventions.
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`IPR2019-00211
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`1.
`
`Bonomi’s comparison of arrival times is not a calculation of a
`delay period
`Both claims 1 and 9 recite limitations involving calculating a delay period
`
`for a packet, where transmission of the packet is delayed based on the delay period.
`
`For example, claim 1 recites: “a processor configured to calculate a delay period
`
`associated with a received packet based on the network communication bandwidth
`
`associated with the user,” where the processor is further configured to delay
`
`transmission of the packet based on the delay period to prevent the user device
`
`from achieving a bandwidth greater than the network communication bandwidth
`
`associated with the user device and selected by the user. Claim 9 is a method claim
`
`that similarly recites: “receiving a packet and calculating a delay period
`
`associated with the packet based on the data transmission parameter,” as well as
`
`delaying transmission of the packet based on the delay period to prevent the user
`
`device from achieving a data transmission greater than the data transmission
`
`parameter associated with the user device and selected by the user.
`
`Petitioner refers to the limitations involving calculating a delay period as
`
`“[1.D]” and “[9.C].” (E.g., Pet. 8, 29.) In both Grounds 1 and 3, Petitioner relies
`
`solely on Bonomi for these limitations. (Id. at 29, 55, 63.) Specifically, Petitioner
`
`contends that, when an arithmetic
`
`logic unit in Bonomi “performs
`
`the
`
`‘comparison’ operation,” that operation “involves calculating the delay period for
`
`an arriving packet.” (Id. at 29–30 (emphasis added); Ex. 1002 (Dordal Decl.)
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`App’x I p. 7 (“‘comparison’ operation . . . involves calculating the delay period for
`
`an arriving packet”).)
`
`Petitioner badly misunderstands the technology. The comparison operation
`
`Petitioner refers to appears in the following language from Bonomi that Petitioner
`
`quotes and underlines:
`
`“Whether the estimated arrival time X complies with the traffic
`
`contract is determined at step 33 where X is compared to t+1/ρ. . . [I]f
`
`X is greater than t+σ/ρ the cell is non-conforming and the conformance
`
`time is set to comply with the contracted traffic parameters, c=X-σ/ρ.”
`
`
`
`(Pet. 30 (quoting Bonomi col. 8 ll. 30–38 and adding emphasis).) In other words,
`
`Petitioner contends that the act of determining whether X is less than, equal to, or
`
`greater than a threshold value constitutes calculation of a period of time by which a
`
`packet will be delayed.
`
`That makes no sense. Deciding which of two values is greater is not a
`
`calculation of a length of time. (Sirovica Decl. ¶ 29.) Nothing in Bonomi suggests
`
`otherwise. The variable X is an estimate of the arrival time of a data cell.
`
`(Ex. 1004 (Bonomi) col. 8 ll. 28-30.) Thus, X itself is not a delay period or any
`
`other period of time, but rather an estimated point in time the cell arrives at
`
`Bonomi’s traffic shaper. (Sirovica Decl. ¶ 30.) The estimated arrival time X is
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`compared to a value, either t + 1 / ρ or t + σ / ρ—Bonomi’s disclosure is inconsistent.
`
`Either way, since t represents the current time, the comparison value is greater than
`
`t and thus represents a point in the future. (Sirovica Decl. ¶ 30; Ex. 1004 (Bonomi)
`
`col. 8 l. 29 (“current time, t”).) Deciding whether a cell’s estimated arrival time
`
`occurs before or after a point in the future is not a calculation of a delay period.
`
`(Sirovica Decl. ¶ 30.)
`
`Compounding the non sequiturs of its argument, Petitioner contends that the
`
`delay period supposedly calculated in this comparison operation is “based on”
`
`another point in time, c, which is equal to X – σ / ρ. (Pet. 64.) But Petitioner does
`
`not explain what the supposed calculated delay period actually is, much less
`
`identify any calculations based on c. Like X, c itself is not a delay period or any
`
`other period of time, but rather a single point in time. (Sirovica Decl. ¶ 31.)
`
`Moreover, c is less than X, and is thus earlier than the estimated arrival time of the
`
`cell. (Id.) Petitioner fails to identify anything in Bonomi teaching delaying a packet
`
`based on a point in time earlier than the estimated arrival time.
`
`In short, Petitioner has failed to demonstrate that Bonomi discloses
`
`calculating a delay period for a packet. Petitioner does not cite Borella or
`
`Teraslinna for these limitations, and Petitioner expressly concedes that Teraslinna
`
`fails to disclose calculating a delay period for delaying packet transmission. (Pet.
`
`29, 55.) As a result, a person of ordinary skill in the art would not reasonably
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`expect the proposed combination of Bonomi and Borella or Bonomi and Teraslinna
`
`to result in the inventions claimed in either claim 1 or claim 9 of the ’857 patent.
`
`Grounds 1 and 3 therefore both fail.
`
`2.
`
`Petitioner has failed to demonstrate that one of ordinary skill in
`the art would be motivated to combine Bonomi and Borella with a
`reasonable expectation of success
`Not only does Petitioner’s proposed Ground 1 combination of Bonomi and
`
`Borella fail to satisfy the delay-period-calculation limitations, Petitioner’s
`
`arguments on motivation to combine Borella and Bonomi fall short. Petitioner
`
`offers a laundry list of KSR rationales, reciting superficial, generic arguments that
`
`are completely disconnected from the technology described in each reference.
`
`Petitioner fails to account for deep disparities between the technologies of Bonomi
`
`and Borella that make the references incompatible with one another.
`
`a.
`
`Bonomi’s traffic-shaping technology is completely reliant on
`underlying technologies unique to ATM networking
`Bonomi is directed to traffic shaping in an Asynchronous Transfer Mode
`
`(ATM) network. (Bonomi col. 1 ll. 7–10.) ATM is a specific type of network
`
`technology with its own protocols that differs substantially from the Internet
`
`Protocol (IP) networks that dominate today. (Sirovica Decl. ¶ 46.) In the 1990s, IP
`
`and ATM were competing networking alternatives that evolved from two distinct
`
`sources for different purposes. (Id.) The IP protocol evolved from work funded by
`
`the Defense Advanced Research Projects Agency (DARPA) to interconnect
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`computers to facilitate the exchange of data, such as files. (Id.) In contrast, ATM
`
`evolved within the telephony industry as a way to move telephony from analog
`
`signals to digital signals, eventually including digital signals across packet-based
`
`networks. (Id.)
`
`Telephony protocols have historically been “connection oriented,” meaning
`
`that a connection between endpoints must be established before the intended
`
`communication takes place. (Id.) ATM is a connection-oriented networking
`
`technology and ensures that its units of data—cells—are delivered to the recipient
`
`in the sequence they were sent over the connection. (Id.; Bonomi col. 1 ll. 36–37.)
`
`The connection-oriented nature of ATM facilitates networked telephony and voice
`
`applications, which require low latency and low jitter (variation in packet delay).
`
`(Sirovica Decl. ¶ 46.)
`
`In contrast, IP is a connectionless network technology. (Id. ¶ 47.) IP packets
`
`have a full destination address and can travel to their destination via multiple
`
`routes. (Id.) As packets belonging to the same data stream do not necessarily take
`
`the same route as one another, the data-stream packets can arrive at their
`
`destination out of order and may need to be reordered in IP networks. (Id.) This
`
`can cause delay and jitter that telephony applications do not handle well. (Id.)
`
`ATM networks thus differ greatly from IP networks.
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`Bonomi is directed to addressing a problem in ATM networks arising from
`
`supporting multiple types of applications. Since ATM is connection-oriented, two
`
`endpoints that wish to communicate with another must first establish a connection,
`
`and that connection will not be taken down until their communication is finished.
`
`(Bonomi col. 1 ll. 42–44; Sirovica Decl. ¶ 39.) Established connections must be
`
`regulated to prevent network congestion. (Bonomi col. 2 ll. 21–22.) Different types
`
`of applications (e.g., voice communication versus file transfer) “require different
`
`levels of [quality of service] and have different traffic parameters.” (Id. col. 1
`
`ll. 62–63.) For example, Bonomi states, “voice communications are typically
`
`transmitted at a continuous bit rate (CBR) of 64 Kbit/second with no burstiness
`
`[i.e., no variation in bit rate] and can tolerate some cell loss but little delay.” (Id.
`
`col. 1 ll. 64–66.) “Computer file transfer and data network applications, on the
`
`other hand, will generate data at widely varying rates without stringent
`
`requirements regarding cell delay and may be readily transmitted whenever
`
`bandwidth is available in the channel at the available bit rate . . . .” (Id. col. 2 ll. 4–
`
`8.) As a result, Bonomi sought to provide a traffic-shaping solution that “fairly
`
`distributes network resources between widely variant connections without
`
`incurring excessive costs.” (Id. col. 4 ll. 11–14.)
`
`Bonomi’s solution shapes traffic on a connection-by-connection basis. (E.g.,
`
`id. col. 4 ll. 25–27.) The solution relies on the connection-oriented nature of ATM,
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`as well as quality-of-service parameters negotiated during the establishment of
`
`each connection, such as the cell-transmission rate, ρ, and burstiness, σ , of the
`
`connection. (Id. col. 8 ll. 9–38.) The negotiation of these parameters is a built-in
`
`feature of the connection-establishment process in ATM. (Id. col. 2 ll. 11–17
`
`(discussing ATM’s proprietary “connection admission control (CAC)” process);
`
`Sirovica Decl. ¶¶ 38–40, 50.) Moreover, within an ATM network, these parameters
`
`have very specific consequences because all ATM cells have a fixed length of 53
`
`bytes, and the connection-oriented nature of ATM means that cells in a data stream
`
`will be delivered in the order they are sent over the connection. (Sirovica Decl.
`
`¶ 38.)
`
`These features are unique to ATM networks, at least relative to IP networks.
`
`(Id. ¶¶ 38–40, 50.) The IP protocol is connectionless; does not have a built-in
`
`mechanism for end-to-end, per-connection negotiation of transmission rate or
`
`burstiness; does not guarantee delivery of IP datagrams in the order they were sent;
`
`and allows for packets of variable length. (Id. ¶ 50.) In other words, Bonomi’s
`
`solution relies on technologies that are not just standard on ATM networks but
`
`peculiar to ATM networks. (Id.) The negotiation of traffic parameters is initiated at
`
`the application layer of ATM networks, which passes the parameters down to the
`
`ATM layer, which is responsible for connection establishment. (Id.) Bonomi’s
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`solution is thus built on a fully implemented ATM network that includes all layers
`
`of the ATM reference model. (Id.)
`
`1 QoS level
`selection
`
`2
`
`Connection
`setup/
`negotiation
`
`3 Data
`transmission
`
`Bonomi relies on all ATM
`layers
`
`
`
`ATM Reference Model
`
`Application layer
`
`Connection
`
`ATM Adaptation layer
`
`ATM layer
`
`ATM Physical layer
`
`(Id. ¶ 40.)
`
`b.
`
`Borella’s technology is completely reliant on the specific
`packet format that the IP protocol dictates
`In contrast to Bonomi, Borella proposes technology rooted in IP networks.
`
`Borella proposes a way of “marking” or “stamping” IP packets with traffic-
`
`classification information to allow for different packet-delivery behavior based on
`
`the classification. (Ex. 1006 (Borella) col. 8 l. 45 – col. 9 l. 55.) Specifically,
`
`Borella proposes reinterpreting a specific byte in the header of an IP packet. The
`
`Internet Protocol mandates that all IP packets begin with a specifically formatted
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`IPR2019-00211
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`header illustrated in figure 3 of Borella, which is reproduced below with
`
`annotations to show the byte boundaries:
`
`4 bytes (32 bits)
`2
`3
`
`1
`
`4
`
`
`
`The second byte of the original IP header specification corresponded to the
`
`Type of Service (TOS) field. The first three bits of the TOS field could be used to
`
`specify a priority level, and the next four or five bits (depending on
`
`implementation) could be used to specify a type of service. (See Borella col. 8 l. 45
`
`– col. 9 l. 16.)
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`Citing limitations with the interpretation that the Internet Protocol required
`
`of the values stored in the TOS byte, Borella proposes reinterpreting the TOS byte
`
`as a Differentiated Services (DS) byte, where the first six bits could be used to
`
`specify 64 (26) different codes identifying up to 64 different classes of traffic:
`
`DS
`
`6 bits used for
`64 codes
`
`2 bits unused
`
`
`
`(See id. col. 9 ll. 17–38 (see Table C).)
`
`Borella’s solution revolves around reinterpreting the second byte of the IP
`
`header in this manner to leverage the 64 possible codes for greater flexibility in
`
`classifying traffic. As Borella notes, most implementations ignored the TOS field
`
`in the original IP header specification, so it was feasible to reinterpret this field.
`
`(Id. col. 9 l. 11.) Borella’s technology is thus inextricably rooted in the specific
`
`format of packets that the Internet Protocol dictates. (Sirovica Decl. ¶¶ 42–44.)
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`c.
`
`Th
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