Filed: September 20, 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 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 RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION ....................................................................................... 1
`
`II.
`
`FACTUAL AND PROCEDURAL BACKGROUND ................................ 4
`
`A. Nomadix sues Petitioner .................................................................... 4
`
`B. Over the next two years, Petitioner files six IPR petitions ............... 5
`
`III. OVERVIEW OF THE ‘857 PATENT ........................................................ 6
`
`A.
`
`B.
`
`Sample embodiments described in the specification ........................ 6
`
`Claims 1 and 9 ................................................................................... 8
`
`IV. NOTICE OF WITHDRAWAL OF TESTIMONY OF DR.
`SIROVICA .................................................................................................. 9
`
`V. CLAIM-CONSTRUCTION REMARKS .................................................. 10
`
`A.
`
`“calculate a delay period” ............................................................... 10
`
`VI. PETITIONER’S ASSERTED GROUNDS ............................................... 13
`
`VII. THE BOARD SHOULD CONFIRM THE PATENTABILITY
`OF THE ‘857 PATENT ............................................................................. 14
`
`A.
`
`Petitioner fails to carry its burden for Grounds 1 and 3 .................. 14
`
`1.
`
`2.
`
`Bonomi does not calculate a delay period ............................ 15
`
`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 ........................................................... 21
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`a.
`
`b.
`
`c.
`
`Bonomi’s traffic-shaping technology is
`completely reliant on underlying technologies
`unique to ATM networking ........................................ 22
`
`Borella’s technology is completely reliant on
`the specific packet format that the IP protocol
`dictates ........................................................................ 27
`
`The IP-rooted technology of Borella cannot be
`incorporated into Bonomi, which relies on
`unique aspects of ATM networks ............................... 30
`
`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 ........................................................... 36
`
`B.
`
`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 .............................................................. 41
`
`1.
`
`Petitioner has failed to offer evidence that Rupp
`constitutes a prior-art printed publication ............................. 42
`
`a.
`
`Petitioner mischaracterizes Mr. Grenier’s
`testimony—he never states that Rupp was
`published by May 20, 1998 ........................................ 43
`
`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 ................................................ 44
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(Cont’d)
`
`Page No.
`
`c. Mr. Grenier’s statements about a 1998
`conference are not competent evidence that
`Rupp qualifies as a printed publication ...................... 46
`
`Rupp does not disclose a user profile record
`comprising an indication of a network
`communication bandwidth or data transmission
`parameter within the constraints of claims 1 and 9 .............. 48
`
`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 ........................... 52
`
`Petitioner fails to carry its burden of demonstrating
`Rupp is analogous art ............................................................ 58
`
`2.
`
`3.
`
`4.
`
`VIII. CONCLUSION .......................................................................................... 61
`
`
`
`
`
`-iii-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Acceleration Bay, LLC v. Activision Blizzard Inc.,
`908 F.3d 765 (Fed. Cir. 2018) ........................................................................ 44
`
`Apple Inc. v. Samsung Elecs. Co.,
`839 F.3d 1034 (Fed. Cir. 2016) (en banc) ...................................................... 42
`
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) ...................................................................... 51
`
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ........................................................................ 63
`
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ...................................................................... 44
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) ............................................................... 36, 41
`
`General Plastic. Guest-Tek Interactive Entertainment Ltd. v.
`Nomadix, Inc.,
`Case IPR2018-01660 (PTAB Apr. 16, 2019) rehearing denied
`(PTAB Aug. 8, 2019) ........................................................................................ 5
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ................................................................. 36, 41
`
`K-TEC, Inc. v. Vita-Mix Corp.,
`696 F.3d 1364 (Fed. Cir. 2012) ...................................................................... 61
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ........................................................................ 61
`
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) ...................................................................... 64
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`(Cont’d)
`
`Page No(s).
`
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) ...................................................................... 36
`
`Merck Sharp & Dohme B.V. v. Warner Chilcott Co., LLC,
`711 F. App’x 633 (Fed. Cir. 2017) ................................................................. 42
`
`Nomadix, Inc. v. Guest Tek Interactive Entertainment Ltd.,
`Case No. 2:16-CV-08033-AB-FFM ............................................................... 14
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ...................................................................... 37
`
`Orexo AB v. Actavis Elizabeth LLC,
`903 F.3d 1265 (Fed. Cir. 2018) ...................................................................... 38
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) ...................................................................... 37
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`711 F.3d 1348 (Fed. Cir. 2013) ...................................................................... 37
`
`Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC,
`925 F.3d 1373 (Fed. Cir. 2019) ...................................................................... 36
`
`Smart Microwave Sensors Gmbh v. Wavetronix LLC,
`IPR2016-00488, Paper 57 (PTAB Jul. 17, 2017) .................................... 49, 50
`
`In re Smith Int’l, Inc.,
`871 F.3d 1375 (Fed. Cir. 2017) ...................................................................... 10
`
`SRI Int’l, Inc. v. Internet Sec. Sys.,
`511 F.3d 1186 (Fed. Cir. 2008) ...................................................................... 44
`
`Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) ...................................................................... 37
`
`-v-
`
`
`
`TABLE OF AUTHORITIES
`(Cont’d)
`
`Page No(s).
`
`Wang Labs., Inc. v. Toshiba Corp.,
`993 F.2d 858 (Fed. Cir. 1993) ................................................................. 63, 64
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 314 ...................................................................................................... 5
`
`35 U.S.C. § 316 .................................................................................................... 61
`
`Fed. R. Evid. 803 ................................................................................................. 48
`
`
`
`
`
`-vi-
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`IPR2019-00211
`Patent 7,953,857
`
`Exhibit No. Description
`
`EXHIBIT LIST
`
`(Withdrawn) Declaration of Dean Sirovica, Ph.D.
`
`Declaration of Payson LeMeilleur in Support of Motion to Appear Pro
`Hac Vice on Behalf of Patent Owner Nomadix
`
`Declaration of Kendall M. Loebbaka in Support of Motion to Appear
`Pro Hac Vice on Behalf of Patent Owner Nomadix
`
`Declaration of Stuart G. Stubblebine, Ph.D.
`
`Deposition Transcript of Dr. Peter Dordal, dated September 13, 2019
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`
`
`-iv-
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`IPR2019-00211
`Patent 7,953,857
`
`I. INTRODUCTION
`
`Petitioner fails to carry its burden of establishing the 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.
`
`In Grounds 1 and 3, Petitioner relies exclusively on Bonomi for disclosure of
`
`calculating a delay period for a packet. But Bonomi never calculates a delay period.
`
`Petitioner identifies two pieces of evidence in Bonomi that allegedly teach
`
`calculation of a delay period: (1) a comparison operation that only compares an
`
`estimated arrival time of a cell to another point in time and (2) the predetermined
`
`sorting bins’ representation of a time period. Neither record citation is a calculation
`
`of a delay period based on a received packet. With respect to the first piece of
`
`evidence, Petitioner’s expert admits that the comparison operation is not a
`
`calculation of a delay period. With respect to the second piece of evidence, the
`
`Institution Decision did not address that Bonomi arranges the structure of the sorting
`
`bins before any packets arrive in the network. Petitioner’s expert admits that the
`
`sorting bins are arranged ahead of time. Thus, Bonomi does not calculate a delay
`
`period based on a received packet. On this record, the claims should be confirmed
`
`-1-
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`
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`IPR2019-00211
`Patent 7,953,857
`
`as patentable because Petitioner fails to identify any calculation of a period of time,
`
`much less a calculation of a delay period for delaying transmission of a packet.
`
`In addition to not disclosing the limitations of claims 1 and 9, Grounds 1 and
`
`3 also fail because the references are not combinable as proposed by the Petitioner.
`
`The design of Bonomi’s traffic-shaper is rooted in features unique to connection-
`
`oriented asynchronous transfer mode (ATM) networks. Bonomi touts its ability to
`
`traffic shape per-connection in order to accommodate the differing traffic parameters
`
`for different classes of data, such as video, voice, and text. Petitioner proposes
`
`combining Bonomi with Borella—a network management system tied to the Internet
`
`Protocol (IP), a different standard from ATM. Borella’s implementation is rooted in
`
`changes specific to the IP packet header, which is not present in ATM networks.
`
`Similarly, Teraslinna disparages the per-connection approach of Bonomi, which it
`
`describes as cost prohibitive for its network. In fact, Teraslinna’s objective is to
`
`address the cost disadvantages of Bonomi’s approach precisely by avoiding
`
`regulating traffic on a per-connection basis. Teraslinna thus expressly teaches away
`
`from Bonomi. For these reasons, the combinations in Grounds 1 and 3 fail.
`
`In Ground 2, Petitioner relies on Rupp to supply claim limitations that
`
`Petitioner acknowledges are missing from Chandran. But Petitioner fails to establish
`
`that Rupp qualifies as a prior-art printed publication. Moreover, Rupp fails to
`
`disclose a network communication bandwidth as claimed in the ‘857 patent. The
`
`-2-
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`
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`IPR2019-00211
`Patent 7,953,857
`
`‘857 patent requires delaying packets to prevent the user from achieving a bandwidth
`
`greater than the user’s network communication bandwidth. Rather than a network
`
`communication bandwidth, Rupp’s system presents users with a variety of quality
`
`of services. As admitted by the Petitioner’s expert and not considered by the Board
`
`for the Institution Decision, the quality of service in Rupp is a guarantee of a level
`
`of service the user will experience on the network. Thus, Rupp does not disclose a
`
`network communication bandwidth wherein a processor is further configured to
`
`delay transmission of the packet based on a delay period to prevent the user device
`
`from achieving a bandwidth greater than the network communication bandwidth
`
`associated with the user device.
`
`Moreover, a person of skill in the art would not be motivated to combine
`
`Chandran with Rupp. Rupp is an experiment to analyze user demand in a network
`
`with respect to pricing the quality of service. A person of skill in the art designing
`
`Chandran’s system to limit bandwidth would not look to Rupp, which in contrast
`
`guarantees a quality of service. Furthermore, the minimal description of Rupp’s
`
`experimental network shows that the Rupp system relied on a complex and
`
`inefficient network topology that involved multiple layers of tunneling focused on
`
`providing the guaranteed level of quality of service. Modifying Chandran with Rupp
`
`in the manner Petitioner proposes would render Chandran unsatisfactory for its
`
`intended objective of efficient, scalable traffic shaping.
`
`-3-
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`
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`IPR2019-00211
`Patent 7,953,857
`
`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 confirm the patentability of the
`
`‘857 patent.
`
`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
`
`-4-
`
`
`
`IPR2019-00211
`Patent 7,953,857
`
`October 2016. Nomadix, Inc. v. Guest-Tek Interactive Entertainment Ltd.,
`
`No. CV16-08033 AB (FFMx) (C.D. Cal. filed Oct. 28, 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
`
`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. The Board declined
`
`to institute the petition under 35 U.S.C. § 314(a), applying the General Plastic
`
`factors. Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc., Case IPR2018-
`
`01660 (PTAB Apr. 16, 2019) (Paper 8) rehearing denied (PTAB Aug. 8, 2019)
`
`(Paper 10); Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc., Case
`
`IPR2018-01668 (PTAB Apr. 16, 2019) (Paper 6) rehearing denied (PTAB Aug. 8,
`
`2019) (Paper 8).
`
`Petitioner then waited another two months to file the present petition and its
`
`companion in IPR2019-00211. Petitioner thus waited until November 2018 to file
`
`-5-
`
`
`
`IPR2019-00211
`Patent 7,953,857
`
`the present petition, or more than two years after Patent Owner commenced its suit
`
`against Petitioner for breach of the license agreement.
`
`III. OVERVIEW OF THE ‘857 PATENT
`
`A.
`
`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
`
`-6-
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`IPR2019-00211
`Patent 7,953,857
`
`packet, it may identify the user that sent the packet and 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.)
`
`
`
`-7-
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`IPR2019-00211
`Patent 7,953,857
`
`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.
`
`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;
`
`-8-
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`
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`IPR2019-00211
`Patent 7,953,857
`
`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. NOTICE OF WITHDRAWAL OF TESTIMONY OF DR. SIROVICA
`
`Per the Trial Practice Guide Update (July 2019), Patent Owner hereby notifies
`
`the Board that it is withdrawing the testimony of Dr. Dean Sirovica, submitted in
`
`support of its Patent Owner Preliminary Response as Ex. 2001, from consideration
`
`in this proceeding. Trial Practice Guide Update at 20 (July 2019) (“If a trial is
`
`instituted, a patent owner may choose not to rely on testimony submitted with the
`
`preliminary response. In that case, the patent owner should advise the Board of its
`
`decision, which can be done by affirmatively withdrawing the testimony in the
`
`patent owner response.”). Petitioner does not oppose Patent Owner offering the
`
`testimony of Dr. Stuart Stubblebine in support of the present Patent Owner Response
`
`and does not oppose the withdrawal of the testimony of Dr. Sirovica.
`
`-9-
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`IPR2019-00211
`Patent 7,953,857
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`V. CLAIM-CONSTRUCTION
`
`Petitioner urges the Board to adopt certain constructions for “processor,”
`
`“data storage system,” and “user profile record” in claim 1. (Pet. 9.) Since Patent
`
`Owner’s arguments in this Response do not depend on the construction of these
`
`terms, Patent Owner will not comment on Petitioner’s proposed constructions or
`
`Petitioner’s supporting arguments.
`
`A.
`
`“calculate a delay period”/“calculating a delay period”
`
`In this proceeding, the ‘857 patent’s claims are given their broadest
`
`reasonable interpretation consistent with the specification. The broadest reasonable
`
`interpretation does not mean the broadest interpretation possible. See In re Smith
`
`Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). “[T]he protocol of giving claims
`
`their broadest reasonable interpretation . . . does not include giving claims a legally
`
`incorrect interpretation divorced from the specification and the record evidence.” Id.
`
`at 1382 (citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1298 (Fed. Cir. 2015)
`
`(quotations omitted)). The broadest reasonable interpretation “is an interpretation
`
`that corresponds with what and how the inventor describes his invention in the
`
`specification, i.e., an interpretation that is consistent with the specification.” In re
`
`Smith, 871 F.3d at 1382 (citation and quotation omitted).
`
`The ‘857 patent explains that its bandwidth management system calculates a
`
`delay and then places the packet in a buffer for delayed transmission:
`
`-10-
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`IPR2019-00211
`Patent 7,953,857
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`Based upon (a) the predetermined bandwidth chosen by the subscriber
`as determined from the authorization file; (b) the size of the current data
`packet; and/or (c) the size and time of the previous packet sent by the
`subscriber and processed at the bandwidth manager, it is determined if
`the packet needs to be queued for a period of time to ensure that the
`subscriber does not receive a bandwidth greater than that which the
`subscriber selected, as determined at decision block 320. If the packet
`should be delayed, then at block 330, the appropriate delay is
`calculated and the packet is placed in the appropriate timeslot of a
`ring buffer.
`(‘857 patent col. 11 l. 59 – col. 12 l. 4 (emphasis added).) The ‘857 patent illustrates
`
`a flowchart of its bandwidth management system in Figure 4B, reproduced below.
`
`As shown at block 330, the ‘857 patent further describes calculating the delay as
`
`“determining length of delay.” Afterwards, indicated by the “and”, the ‘857 patent
`
`reschedules the packet transmission accordingly.
`
`-11-
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`IPR2019-00211
`Patent 7,953,857
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`(‘857 patent Fig. 4B (annotated); see also Stubblebine Decl. ¶30.)
`
`The ‘857 patent also provides an example of calculating a delay that
`
`determines the delay as a length of time:
`
`
`
`The subscriber selectable bandwidth 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. For example, if the user/subscriber has paid for a downlink:
`bandwidth of 100 kilobits per second (kbps), and the gateway device
`12 receives a data packet with the size of 1,500 bytes (12,000 bits), it
`would schedule a delay between packets of 0.12 seconds (12,000 bits
`in a packet/100,000 bits per second bandwidth limit).
`
`-12-
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`IPR2019-00211
`Patent 7,953,857
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`(‘857 patent col. 8 ll. 39–48.)
`
`A person of skill in the art viewing claims 1 and 9 would understand that
`
`“period” refers to a length of time, and that the broadest reasonable interpretation of
`
`“calculating a delay period” consistent with the specification and drawings therefore
`
`involves calculating a length of time. (Stubblebine Decl. ¶32.)
`
`VI. 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
`
`1008
`
`1007
`
`Shorthand Name
`Bonomi
`Chandran
`Borella
`
`Rupp
`
`Teraslinna
`
`
`
`-13-
`
`
`
`IPR2019-00211
`Patent 7,953,857
`
`Petitioner contends claims 1 and 9 are obvious based on these three grounds:
`
`Ground References
`
`1
`2
`3
`
`Bonomi in view of Borella
`Chandran in view of Rupp
`Teraslinna in view of Bonomi
`
`Basis
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claims
`Challenged
`1 and 9
`1 and 9
`1 and 9
`
`
`
`VII. THE BOARD SHOULD CONFIRM THE
`PATENTABILITY OF THE ‘857 PATENT
`
`A.
`
`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
`
`render the claimed inventions obvious.
`
`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. Thus, one of ordinary skill in the art
`
`-14-
`
`
`
`IPR2019-00211
`Patent 7,953,857
`
`would neither be motivated to combine Bonomi with Borella or Teraslinna, nor have
`
`a reasonable expectation of succeeding in producing the claimed inventions.
`
`1.
`
`Bonomi does not calculate 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. 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. 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. (Pet. at 29–30, 60–61, 63–64.) Specifically, Petitioner contends that,
`
`when an arithmetic logic unit in Bonomi “performs the ‘comparison’ operation,”
`
`-15-
`
`
`
`IPR2019-00211
`Patent 7,953,857
`
`that operation “involves calculating the delay period for an arriving packet.” (Id. at
`
`29–30 (emphasis added); Ex. 1002 (Dordal Decl.) App’x I p. 8 (“‘comparison’
`
`operation . . . involves calculating the delay period for an arriving packet”).)
`
`Petitioner mischaracterizes the technology. The comparison operation
`
`Petitioner refers to appears in the following language from Bonomi that Petitioner
`
`quotes:
`
`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).) 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 time delay period. (Stubblebine Decl. ¶¶ 36–37.) 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. (Stubblebine Decl. ¶ 37.) The estimated arrival time X is 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
`
`-16-
`
`
`
`IPR2019-00211
`Patent 7,953,857
`
`represents a point in the future. (Stubblebine Decl. ¶ 37; 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. (Stubblebine
`
`Decl. ¶ 37.)
`
`Petitioner’s expert admits that this comparison is not a calculation of a delay
`
`period:
`
`Q. So this comparison, do you agree that that is not a calculation
`of a delay period?
`. . .
`THE WITNESS: At that point this is an abstract calculation that
`is determining whether the packet is conformant, yes. That’s not the
`end of the process, but yes, at that point we are not calculating a delay
`period.
`
`(Ex. 2005 (Dordal Tr.) at 85:3–85:10.)
`
`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. 63–64.) 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. (Stubblebine Decl. ¶ 38. The Petitioner’s expert admits that the calculation of
`
`the conformance time is “not a delay interval.” Dordal Tr. at 94:22–95:6 (“The
`
`-17-
`
`
`
`IPR2019-00211
`Patent 7,953,857
`
`calculation of a conformance time is a time typically in the future. So it’s a specific
`
`clock time. It’s not a delay interval as such.”) (emphasis added).) 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.
`
`With respect to Ground 1 (Bonomi and Borella), Petitioner cites only the
`
`estimated arrival time comparison as allegedly teaching calculating a delay period.
`
`(See Pet. at 29–30; see also Dordal Decl., App’x I at 7–8, 16.) As admitted by its
`
`own expert (Dordal Tr. at 85:3–85:10; 94:94:22–95:6), that comparison does not
`
`constitute calculating a delay period. Petitioner has therefore failed to meet its
`
`burden of proof to show that claims 1 and 9 are obvious in view of Bonomi and
`
`Borella.
`
`In contrast to Ground 1 (Bonomi and Borella), Petitioner relies on Bonomi’s
`
`dependent claim 13 for Ground 3 (Teraslinna and Bonomi). That is, for Ground 3
`
`only, in addition to the Bonomi citations used with respect to Ground 1, Petitioner
`
`also cites to Bonomi’s claim 13 in as allegedly teaching calculating a delay perio
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