throbber
Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 6
`Entered: May 30, 2019
`
`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 B2
`____________
`
`
`Before SALLY C. MEDLEY, DANIEL J. GALLIGAN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
`
`
`
`

`

`Case IPR2019-00211
`Patent 7,953,857 B2
`
`
`I.
`
`INTRODUCTION
`
`Guest Tek Interactive Entertainment Ltd. (“Petitioner”) filed a
`
`Petition for inter partes review of claims 1 and 9 of U.S. Patent No.
`
`7,953,857 B2 (Ex. 1001, “the ’857 patent”). Paper 1 (“Pet.”). Nomadix, Inc.
`
`(“Patent Owner”) filed a Preliminary Response. Paper 5 (“Prelim. Resp.”).
`
`Institution of an inter partes review is authorized by statute when “the
`
`information presented in the petition . . . and any response . . . shows that
`
`there is a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`Upon consideration of the Petition and Preliminary Response, we conclude
`
`the information presented shows that there is a reasonable likelihood that
`
`Petitioner would prevail in establishing the unpatentability of claims 1 and 9
`
`of the ’857 patent. We, therefore, institute inter partes review of the
`
`challenged claims of the ’857 patent in this proceeding.
`
`A. RELATED MATTERS
`
`Petitioner indicates that Patent Owner is asserting the ’857 patent
`
`against Petitioner in claims for a breach of a license agreement in Nomadix,
`
`Inc. v. Guest Tek Interactive Entertainment Ltd., Case No. 2:16-cv-08033-
`
`AB-FFM, pending in the United States District Court for the Central District
`
`of California. Pet. 2; see also Paper 3, 1.
`
`B. THE ’857 PATENT
`
`The specification of the ’857 patent describes a “method and device
`
`for dynamic bandwidth management on a per subscriber basis.” Ex. 1001,
`
`3:30–31. A user/subscriber may set and adjust uplink and downlink
`
`bandwidths of their network access service. Id. at 3:32–34. “[T]he
`
`
`
`2
`
`

`

`Case IPR2019-00211
`Patent 7,953,857 B2
`
`user/subscriber can increase or decrease the bandwidth of the uplink
`
`connection so the user/subscriber only purchases the amount of bandwidth
`
`appropriate for their network activity.” Id. at 3:45–48. Figures 2 and 3 of the
`
`’857 patent are reproduced below.
`
`
`
`Figure 2 of the ’857 patent is a block diagram of a communications network
`
`implementing subscriber bandwidth management within a gateway device.
`
`Ex. 1001, 4:20–23.
`
`
`
`
`
`3
`
`

`

`Case IPR2019-00211
`Patent 7,953,857 B2
`
`
`
`
`Figure 3 of the ’857 patent is a block diagram of a communications network
`
`implementing uplink and downlink virtual queues in a gateway device. Ex.
`
`1001, 4:24–27.
`
`As seen from the above figures, a plurality of hosts 14, 14n
`
`communicate data packets through communication network 10. Id. at 8:56–
`
`58. Data packets are routed through an access concentrator 16 that
`
`multiplexes data packets received from the plurality of hosts. Id. at 8:58–64.
`
`Gateway 12 receives data packets at port 80 and communicates to uplink
`
`queue 60 via uplink path 64. Id. at 8:60–63. Gateway 12 includes bandwidth
`
`manager 30, which comprises subscriber selectable bandwidth module
`
`(“SSB module”) 32 and traffic shaping module 34. Id. at 7:63–8:22. SSB
`
`module 32 “limits the upstream and downstream bandwidths on each virtual
`
`channel through the gateway device 10 to that which the respective
`
`user/subscribers selected.” Id. at 8:22–26. SSB module 32 communicates
`
`with subscriber management interface 50 to retrieve subscriber profiles 52,
`
`
`
`4
`
`

`

`Case IPR2019-00211
`Patent 7,953,857 B2
`
`which include user/subscriber selected bandwidth for uplink and downlink
`
`data transfer. Id. at 8:29–34. SSB module 32 determines whether to
`
`reschedule delivery of a packet at a later point in time to prevent the
`
`user/subscriber from achieving a bandwidth greater than that which the
`
`user/subscriber selected. Id. at 8:34–38. SSB module 32 calculates “the
`
`appropriate delay, if any, using the size (in bytes) of the current data packet,
`
`and the size and time of the previous packet delivered from the subscriber.”
`
`Id. at 8:39–42. If it is determined that a packet should be delayed, SSB
`
`module 32 places the packet in memory in a virtual queue for later delivery.
`
`Id. at 8:49–51.
`
`C. CHALLENGED CLAIMS
`
`Challenged claims 1 and 9 are independent. Claim 1 is illustrative and
`
`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
`
`
`
`5
`
`

`

`Case IPR2019-00211
`Patent 7,953,857 B2
`
`
`network communication bandwidth associated with the
`user device and selected by the user.
`
`Id. at 14:31–49. Claim 9 recites similar limitations, in method form. Id. at
`
`15:1–14.
`
`D. PROPOSED GROUNDS OF UNPATENTABILITY
`
`Petitioner asserts the following grounds of unpatentability, each based
`
`on 35 U.S.C. § 103:
`
`References
`
`Claims
`
`Bonomi1 and Borella2
`
`1 and 9
`
`Chandran3 and Rupp4
`
`1 and 9
`
`Teraslinna5 and Bonomi 1 and 9
`
`Pet. 4, 23–67. Petitioner also relies on the Declaration of Dr. Peter Dordal
`
`(Ex. 1002). See generally Pet.
`
`II. DISCUSSION
`
`A. CLAIM CONSTRUCTION
`
`In an inter partes review for a petition filed before November 13,
`
`2018, we construe claim terms in an unexpired patent according to their
`
`broadest-reasonable construction in light of the specification of the patent in
`
`which they appear. 37 C.F.R. § 42.100(b) (2018); see Changes to the Claim
`
`
`1 U.S. Patent No. 5,864,540, issued Jan. 26, 1999 (Ex. 1004).
`2 U.S. Patent No. 6,587,433 B1, issued July 1, 2003 (Ex. 1006).
`3 U.S. Patent No. 7,392,279 B1, issued June 24, 2008 (Ex. 1005).
`4 Björn Rupp et al., INDEX: A Platform for Determining How People Value
`the Quality of Their Internet Access, in Proceedings of the Sixth IEEE/IFIP
`International Workshop on Quality of Service 85 (IEEE 1998) (Ex. 1007).
`5 U.S. Patent No. 5,623,492, issued Apr. 22, 1997 (Ex. 1008).
`
`
`
`6
`
`

`

`Case IPR2019-00211
`Patent 7,953,857 B2
`
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
`
`Petitioner proposes constructions for “processor” and “data storage
`
`system.” Pet. 9. Patent Owner does not oppose Petitioner’s proposed
`
`constructions and contends that no express construction is required at this
`
`stage. Prelim. Resp. 7.
`
`To resolve the disputes regarding institution, we need not expressly
`
`construe any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be
`
`construed that are in controversy, and only to the extent necessary to resolve
`
`the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the
`
`context of an inter partes review).
`
`B. UNPATENTABILITY
`
`In Case IPR2019-00253 (“the ’253 IPR”), Petitioner challenges the
`
`patentability of U.S. Patent No. 8,626,922 B2 (“the ’922 patent”). The ’922
`
`patent, also owned by Patent Owner, issued from a continuation of the
`
`application that issued as the ’857 patent; thus, the two specifications have
`
`no material differences. Compare Ex. 1001, 1:9–13, with ’253 IPR,
`
`Ex. 1001, 1:9–15. The claims at issue in the ’253 IPR differ minimally from
`
`the claims at issue here. Where the ’857 patent’s claim 1 recites “a data
`
`storage system including an indication of a network communication
`
`bandwidth associated with the user device and selected by the user”
`
`(Ex. 1001, 14:39–41 (emphasis added)), the ’922 patent’s claim 1 recites “a
`
`data storage system including a user profile record associated with a user,
`
`
`
`7
`
`

`

`Case IPR2019-00211
`Patent 7,953,857 B2
`
`the user profile record comprising an indication of a network
`
`communication bandwidth associated with the user device” (’253 IPR,
`
`Ex. 1001, 14:38–41 (emphasis added)). The two patents’ recitations of
`
`claim 9 include similar distinctions. Compare Ex. 1001, 15:1–13, with
`
`’253 IPR, Ex. 1001, 15:1–14.
`
`In the ’253 IPR, Petitioner raises the same grounds of unpatentability
`
`as it raises here. Compare Pet. 4, with ’253 IPR, Paper 1, 4. Moreover,
`
`Petitioner’s assertions regarding the prior art are, for all practical purposes,
`
`identical in the two proceedings. Compare Pet. 23–67, with ’253 IPR,
`
`Paper 1, 24–66. Where, in the ’253 IPR, Petitioner asserts that skilled
`
`artisans considering Chandran’s disclosures would have had reason “to
`
`implement [Rupp]’s technique of storing dynamically selected service
`
`classes with desired bandwidths for user devices in user profiles so they can
`
`be retrieved later for traffic management,” it asserts in the present Petition
`
`that there would have been reason “to implement [Rupp]’s technique of
`
`allowing the user to dynamically select the bandwidth limits, associating the
`
`bandwidth limits with user devices, and storing the bandwidth limits in a
`
`data storage system.” Compare Pet. 51, with ’253 IPR, Paper 1, 50.
`
`Importantly, however, Petitioner asserts in the ’253 IPR that the asserted
`
`change would function “by allowing the user to select a specific amount of
`
`bandwidth to be allotted to the user based on the type of application the user
`
`plans on running.” ’253 IPR, Paper 1, 50. Thus, Petitioner’s assertions
`
`regarding that combination are substantively the same in both proceedings.6
`
`
`6 To be sure, there are some differences between the petitions in the two
`proceedings. Some are minor phrasing changes or formatting changes (e.g.,
`to spaces around ellipses). Petitioner also accounts for the limitation
`
`
`
`8
`
`

`

`Case IPR2019-00211
`Patent 7,953,857 B2
`
`
`Similarly, Patent Owner’s arguments against institution are the same
`
`in the two proceedings. Compare Prelim. Resp. 9–44, with ’253 IPR,
`
`Paper 5, 9–43. Indeed, we can identify no difference in Patent Owner’s
`
`arguments other than as relates to the difference in Petitioner’s phrasing for
`
`the combination of Chandran and Rupp, discussed above. Compare Prelim.
`
`Resp. 28–29, with ’253 IPR, Paper 5, 28.
`
`We recognize that this proceeding involves a different record than the
`
`’253 IPR. Other than the petitions and preliminary responses as discussed
`
`above, however, the differences are minor at best. For example, the
`
`substantive content of Dr. Dordal’s declaration in this proceeding appears to
`
`be the same as his declaration in the ’253 IPR, with some differences in
`
`paragraph numbering. Compare Ex. 1002, with ’253 IPR, Ex. 1002. While
`
`the citations to Dr. Dordal’s declaration in our institution decision from the
`
`’253 IPR do not match the corresponding citations to his declaration here,
`
`the content is the same. The asserted prior art and other supporting
`
`references are the same. Thus, for the reasons discussed in our ’253 IPR
`
`institution decision (see ’253 IPR, Paper 6), we determine that the record at
`
`this stage of the proceeding shows a reasonable likelihood that Petitioner
`
`will prevail with respect to its asserted grounds. Accordingly, we institute
`
`review.
`
`
`present in the claims of the patent at issue in the ’253 IPR but not present
`in this proceeding. Compare Pet. 33–34, with ’253 IPR, Paper 1, 33–34.
`None of the differences affects Patent Owner’s arguments in the
`corresponding preliminary response. See infra. We have reviewed
`Petitioner’s contentions and evidence regarding the minor differences
`between the claims here and those at issue in the ’253 IPR. On this record,
`we are persuaded that the differences do not affect our analysis or
`conclusions as explained in that case. See ’253 IPR, Paper 6.
`
`
`
`9
`
`

`

`Case IPR2019-00211
`Patent 7,953,857 B2
`
`
`C. DR. DORDAL’S DECLARATION
`
`As in the ’253 IPR, Patent Owner argues that because Dr. Dordal’s
`
`declaration is unsworn and not made under penalty of perjury, it is entitled
`
`to no weight. Prelim. Resp. 9–10. We determine the better course is to
`
`consider the declaration for purposes of institution and permit Petitioner to
`
`remedy the deficiency. We authorize Petitioner to file, within ten days of
`
`this Decision, a corrected Exhibit 1002 that complies with our rules.
`
`37 C.F.R. §§ 1.68, 42.2, 42.53(a).
`
`Accordingly, it is
`
`III. ORDER
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review
`
`of the ’857 patent is instituted for claims 1 and 9 on the grounds identified in
`
`the Petition;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`
`commencing on the entry date of this decision; and
`
`FURTHER ORDERED that Petitioner is authorized to file, within ten
`
`days of this decision, a corrected Exhibit 1002 that complies with our rules
`
`(37 C.F.R. §§ 1.68, 42.2, 42.53(a)).
`
`
`
`
`
`10
`
`

`

`Case IPR2019-00211
`Patent 7,953,857 B2
`
`PETITIONER:
`
`Jeffrey W. Lesovitz
`Steven J. Rocci
`Daniel J. Goettle
`BAKER & HOSTETLER LLP
`jlesovitz@bakerlaw.com
`srocci@bakerlaw.com
`dgoettle@bakerlaw.com
`
`
`PATENT OWNER:
`
`Douglas G. Muehlhauser
`William H. Shreve
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2dgm@knobbe.com
`2whs@knobbe.com
`BoxNomadix@knobbe.com
`
`
`
`11
`
`

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