`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`
`Patent Owner.
`
`U.S. Patent No. 7,953,857 to Short et al.
`Issued: May 31, 2011
`Filed: April 30, 2010
`
`Title: SYSTEMS AND METHODS FOR DYNAMIC DATA TRANSFER
`MANAGEMENT ON A PER SUBSCRIBER BASIS IN A COMMUNICATIONS
`NETWORK
`
`____________
`
`
`IPR2019-00211
`
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 1
`II.
`III. ARGUMENT ................................................................................................... 2
`A. Ground 1: Bonomi In View of Borella ................................................. 2
`1. Bonomi discloses calculating a delay period. ................................ 2
`2. Patent Owner’s motivation to combine argument is incorrectly
`premised on bodily incorporating Borella. ............................................ 6
`Ground 2: Chandran In View of Rupp .................................................. 9
`1. Rupp qualifies as prior art. ............................................................. 9
`2. Rupp discloses a data storage system for associating a user-
`selected bandwidth with a user device. ............................................... 13
`3. Patent Owner’s motivation to combine arguments are incorrectly
`premised on bodily incorporating Rupp. ............................................. 16
`4. Rupp is analogous art. .................................................................. 20
`Ground 3: Teraslinna in view of Bonomi ........................................... 22
`C.
`IV. CONCLUSION .............................................................................................. 26
`
`
`
`B.
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Activision Blizzard, Inc. V. Acceleration Bay, LLC,
`IPR2015-01996, Paper 101 ................................................................................. 13
`Idemitsu Kosan Co. v. SFC Co.,
`870 F.3d 1376 (Fed. Cir. 2017) .................................................................... 23, 24
`Intel Corporation v. R2 Semiconductor, Inc.,
`IPR2017-00707, Paper 81 ................................................................................... 13
`In re Keller,
`642 F.2d 413 (CCPA 1981) ............................................................................ 7, 17
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 8
`Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd.,
`357 F.3d 1319 (Fed. Cir. 2004) .......................................................................... 16
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`IPR2015-01974, Paper 49 ................................................................................... 13
`Sierra Wireless, Inc. v. Koninklijke KPN N.V.,
`IPR2018-00320, Paper 42 ................................................................................... 12
`State Contracting & Eng’g Corp. v. Condotte Am., Inc.,
`346 F.3d 1057 (Fed. Cir. 2003) .................................................................... 20, 21
`Valeo North America, Inc. V. Magna Electronics, Inc.,
`IPR2014-01208, Paper 49 ................................................................................... 12
`Verlander v. Garner,
`348 F.3d 1335 (Fed. Cir. 2003) .......................................................................... 16
`In re Zhang,
`654 Fed. Appx. 488 (Fed. Cir. 2016) .................................................................. 24
`
`
`
`
`ii
`
`
`
`
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`LISTING OF EXHIBITS
`
`Description
`U.S. Patent No. 7,953,857
`Declaration of Dr. Peter Dordal
`Excerpts from Prosecution History for Parent U.S. Patent
`No. 7,953,857
`U.S. Patent No. 5,864,540
`U.S. Patent No. 7,392,279
`U.S. Patent No. 6,587,433
`IEEE, INDEX Project Report #98-010P (May 1998)
`U.S. Patent No. 5,623,492
`IEEE, INDEX Project Report #99-010W (April 16, 1999)
`U.S. Patent No. 6,496,504
`Blake et al., Request for Comments 2475: An Architecture
`for Differentiated Services, IETF (Dec. 1998)
`Declaration of Gerard P. Grenier of IEEE
`Printout from IEEE website regarding INDEX Project
`Report #98-010P
`IETF, Request for Comment 2597: Assured Forwarding
`PHB Group (June 1999)
`Andrew M Odlyzko, The economics of the Internet: Utility,
`utilization, pricing, and Quality of Service, AT&T Labs,
`July 7, 1998
`The ATM Forum, Traffic Management Specification
`Version 4.0, af-tm-0056.000 (April 1996)
`Jeffrey MacKie-Mason, Pricing the Internet, February 10,
`1994
`Mitrabarun Sarkar, An Assessment of Pricing Mechanisms
`for the Internet—A Regulatory Imperative, Journal of
`Electronic Publishing, Volume 1, Issue 1&2, January-
`February 1995
`Andrew M Odlyzko, The economics of the Internet: Utility,
`utilization, pricing, and Quality of Service, AT&T Labs,
`July 7, 1998
`
`iii
`
`
`
`
`
`
`
`1020
`
`1021
`
`1022
`1023
`1024
`1025
`1026
`1027
`1028
`1029
`
`1030
`
`Pages from Electronics Dictionary, McGraw-Hill, 6th ed.
`(1997)
`Eugen Wallmeier and Tom Worster, “The Spacing Policer,
`an algorithm for efficient peak bit rate control in ATM
`networks,” Proc. International Switching Symposium 14,
`October 1992
`Supplemental Declaration of Gerard P. Grenier of IEEE
`Dictionary Definitions
`Reply Declaration of Dr. Peter Dordal
`Excerpts from District Court Claim Construction Order
`Print out from
`https://www.ece.rice.edu/conf/iwqos98/CFP.html
`Declaration from Edward Knightly
`Declaration from Bjorn Rupp
`Print out from
`https://www.ece.rice.edu/conf/iwqos98/paper3.html
`Deposition Transcript of Dr. Stubblebine, dated November
`14, 2019
`
`
`
`iv
`
`
`
`
`
`I.
`
`INTRODUCTION
`Petitioner submits this Reply to Patent Owner’s Response (Paper 16). In its
`
`Response, Patent Owner presented the same arguments as in its Preliminary
`
`Response, submitted substantially the same expert declaration, and even chose not
`
`to depose Petitioner’s single fact witness. Because the arguments and evidence
`
`remain the same, the Board should affirm its Institution Decision.
`
`II. CLAIM CONSTRUCTION
`
`While Patent Owner’s construction of “period” as a “length of time” is not
`
`determinative of any invalidity ground, it is nonetheless incorrect. First, it is
`
`inconsistent with Patent Owner’s district court position. Ex. 1025 at 26-28. In
`
`fact, in the district court, Patent Owner disagreed with the very construction it
`
`proposes here, and instead argued for a broader construction of (1) a “period of
`
`time” (2) “based on which” a packet will be delayed. Id. Its present construction
`
`is therefore narrower than in district court, even though a broader standard applies.
`
`Second, calculating a period does not necessarily require determining a
`
`specific length of time under the broader standard. Indeed, the claims do not refer
`
`to calculating a “length” of time. They refer to calculating a “period,” which
`
`means an “interval” (i.e., “set”) of time. Ex. 1023. Moreover, as Patent Owner
`
`notes, the ’857 patent refers to determining an amount of “delay” (such as 0.12
`
`seconds). However, the claims broadly refer to a delay “period.” While 0.12
`
`1
`
`
`
`
`
`seconds arguably qualifies as a period, the specification also refers to placing
`
`packets in “timeslots,” which are also intervals or sets of time for delaying packets.
`
`Ex. 1001 at 9:47-54; 12:11-16. So, calculating a delay period also includes
`
`calculating a specific timeslot or other interval for delaying packets.
`
`Third, Patent Owner wrongly suggests the delay period must be the actual
`
`amount of time an associated packet is delayed. Resp. 20. The claim language
`
`says only that the packet delay is “based on” the calculated delay period. See also
`
`’922 at 9:38 (calculated amount of delay is 0.12 s, while timeslots are 1/60 s
`
`intervals); Dordal Reply ¶¶ 6-9.
`
`III. ARGUMENT
`A. Ground 1: Bonomi In View of Borella
`For Ground 1, Patent Owner repeats the same arguments from its
`
`preliminary response: (1) Bonomi does not disclose calculating a delay period and
`
`(2) a skilled artisan would not be motivated to combine the references. Resp.
`
`§ VII.A.1-2. Both arguments fail for multiple reasons.
`
`1.
`Bonomi discloses calculating a delay period.
`As to its first argument, Patent Owner merely regurgitates its prior
`
`arguments, first contending the “comparison operation” disclosed in Bonomi is not
`
`a delay period calculation. Resp. 15-17. However, Petitioner does not rely on that
`
`comparison operation by itself as the recited calculation. See Pet. 29-31 (also
`
`relying on conformance time and bin calculations).
`2
`
`
`
`
`
`Patent Owner further argues “Petitioner does not explain what the supposed
`
`calculated delay period actually is….” Resp. 17. That too is wrong. As the Board
`
`noted in IPR2019-253, Petitioner relies on Bonomi’s description that a
`
`determination of whether a cell is conforming is made, and if it is nonconforming,
`
`the cell is “enqueued on a sorting bin.” E.g., Pet. 30-31 (citing Ex. 1004, 8:30-38;
`
`8:49-52). As Petitioner further pointed out, Bonomi describes that a “sorting bin
`
`corresponds to a single delay period between” conformance time and current time.
`
`Id. (citing Ex. 1004, claim 13).
`
`Nor did Petitioner only cite “the estimated arrival time comparison” for
`
`Ground 1 (Resp. 18). While the comparison is certainly part of the calculation,
`
`Petitioner also cited the conformance time and sorting bin calculations. Pet. 30-31,
`
`29-30. Patent Owner also mistakenly claims that “Petitioner never cites to Claim
`
`13 when discussing the combination of Bonomi and Borella in Ground 1” (Resp.
`
`20). But see Pet. 31; Ex. 2002, App. I at 17 (citing claim 13).
`
`Next, Patent Owner insists “[w]hile Bonomi uses the phrase ‘delay period,’”
`
`Bonomi does not teach calculating a delay period as recited. Resp. 18-19. Patent
`
`Owner apparently misunderstands Bonomi. After a packet arrives, Bonomi
`
`calculates the delay interval (bin) to use for the packet. Ex. 1004 at 8:49-52.
`
`Specifically, it presets a grain size (e.g., 0.1 seconds, or 100 milliseconds (ms) per
`
`bin) and a total number of bins for its sorting bin structure. As Dr. Dordal
`
`3
`
`
`
`
`
`explains, a bin structure having 18 bins could be illustrated as a “clock face”:
`
`
`
`Dordal Reply ¶¶ 13. Each bin would represent 0.1 seconds delay (bin 1 would be
`
`0.1 s delay, bin 2 would be 0.2 s delay, etc.). For each packet, Bonomi calculates
`
`the bin to place it in ((c mod b(cid:3400)g)/g). Ex. 1004 at 8:49-52. In this calculation, b
`(total bins)(cid:3400)g (grain) is the total potential delay period, i.e., 18 bins(cid:3400)100ms, or
`
`1800ms. Each bin then corresponds to a single delay period between “said
`
`conformance time and said current time.” Id. at 14:18-20. Thus, a calculated bin
`
`represents an interval of time to delay packets. Dordal Reply ¶¶ 12-15.
`
`Patent Owner disputes that the sorting bin’s correspondence to a delay
`
`period is the same as the ’857 patent’s delay period, insisting the patent refers
`
`solely to “determining [the] length of delay” in a “unit of time.” Resp. 20. But
`
`Figure 4B and col. 8, lines 46–52 of the ’857 patent, which Patent Owner relies on,
`
`refer to a “delay.” The claims more broadly refer to a “delay period,” which also
`
`4
`
`
`
`
`
`encompasses an interval of time, such as the timeslots in the ’857 patent and
`
`Bonomi’s delay intervals (i.e., bins).
`
`Bonomi also discloses other delay periods under Patent Owner’s proposed
`
`construction. First, for non-conforming packets, Bonomi sets the conformance
`
`time to comply with the contracted traffic parameters, c=X-σ/ρ. Ex. 1004 at 8:18-
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`21, 30-38; 12:38-40. That future time, used to determine which bin to place a
`
`packet in, is a delay period. It is a calculated length of time (e.g., 1370 ms from
`
`clock initialization) used to delay incoming packets. Dordal Reply ¶¶ 16-19.
`
`Patent Owner mischaracterizes Dr. Dordal’s testimony in suggesting he
`
`admitted future conformance time cannot be a delay period. Resp. 17. It confuses
`
`a delay interval that is the actual amount of delay time with the recited “delay
`
`period.” While Dr. Dordal explained that future conformance time is not a “delay
`
`interval” in terms of the actual delay amount (id.), the claims do not require that
`
`the “delay period” be the actual delay amount. Thus, in the very next question, Dr.
`
`Dordal explained that future conformance time is the equivalent of the recited
`
`“delay period.” Dordal Tr. 95:7-18 (“Q. So you would agree that setting the
`
`conformance time is not a calculation of a delay period? A. I think that the
`
`calculation of a delay, of a period to a future time or calculation of a future time
`
`itself are fundamentally indistinguishable and equivalent….”); Dordal Reply ¶ 20.
`
`Second, the total potential delay referenced above (b(cid:3400)g) also qualifies as a
`
`5
`
`
`
`
`
`“delay period” under Patent Owner’s proposed construction. Dordal Reply ¶ 21. It
`
`is calculated (b times g), based on a selected bandwidth (Ex. 1004 at 7:47: “highest
`
`shaping rate determines the grain”), and results in a packet’s delay since it is used
`
`to calculate a bin (id. at 8:49-52). Accordingly, Bonomi teaches a delay period as
`
`recited in the claims under either parties’ construction.
`
`2.
`
`Patent Owner’s motivation to combine argument is
`incorrectly premised on bodily incorporating Borella.
`Patent Owner first argues Bonomi is “completely reliant on underlying
`
`
`
`technologies unique to ATM networking.” Id. § VII.A.2.a. However, Petitioner is
`
`not arguing Bonomi would be reconfigured to implement another network type
`
`besides ATM. Patent Owner therefore misses the point in concluding “Bonomi
`
`teaches away from implementing its solution in IP networks” and “[i]f Bonomi
`
`were switched to the connection-less IP network, the benefits of Bonomi’s per-
`
`connection traffic shaper would be lost” (Resp. 26-27). Moreover, Bonomi is not
`
`limited to ATM networks, and does not teach away from implementing its system
`
`in IP networks. Ex. 1004 at 6:36-38; Dordal Reply ¶ 35; Stubblebine Tr. at
`
`180:16-181:6.
`
`Second, Patent Owner argues that “Borella’s technology is completely
`
`reliant on the specific packet format that the IP protocol dictates.” Resp.
`
`§ VII.A.2.b. It states that Borella’s “marking” or “stamping” packets with traffic
`
`classification information is rooted in IP technology. Id. However, Borella is
`6
`
`
`
`
`
`neither limited to IP networks, nor teaches away from ATM networks. Ex. 1006 at
`
`3:18-20; Dordal Reply ¶ 42.
`
`Regardless, Petitioner does not propose incorporating all of Borella’s IP
`
`technology into Bonomi. ATM networks like Bonomi’s can and typically do
`
`involve user devices at endpoints. Ex. 1002 ¶ 76; Stubblebine Tr. 117:10-18.
`
`However, Bonomi does not expressly state that the endpoint devices are user
`
`devices. Pet. 36. So Petitioner relies on Borella for the limited purpose of
`
`teaching a user device and a user-selected bandwidth. Id. at 24. It does not
`
`propose incorporating Borella’s “marking” or “stamping” packets.
`
`Third, Patent Owner insists the “IP-rooted technology of Borella cannot be
`
`incorporated into Bonomi.” Resp. § VII.A.2.c. But its arguments are directed to
`
`modifications not proposed by Petitioner and bodily incorporating aspects of
`
`Borella into Bonomi. For example, Patent Owner argues that Borella’s
`
`differentiated services architecture is incompatible with Bonomi’s ATM-based
`
`technology and would make Bonomi inoperable for its intended purpose. Id. at 34.
`
`However, the test for obviousness is what the references’ combined teachings
`
`would have suggested to a skilled artisan, not whether one reference may be bodily
`
`incorporated into another. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
`
`Here, Petitioner does not propose incorporating Borella’s entire
`
`differentiated services architecture. Nor does it propose incorporating its
`
`7
`
`
`
`
`
`“reinterpreting the second byte of the IP header,” the layers of the IP protocol
`
`stack, or “the specific format of packets that the Internet Protocol dictates” (Resp.
`
`31-33). Petitioner is relying on Borella merely for teaching a user device and user-
`
`selected bandwidth in general, which do not implicate any of those additional
`
`features. Dordal Reply ¶¶ 32-42.
`
`Further, Patent Owner alleges that Petitioner failed to explain how Borella’s
`
`“user profile” can be combined with Bonomi’s ATM network. Resp. 34.
`
`Petitioner does not propose incorporating Borella’s user profile for the ’857 patent,
`
`and Petitioner and its expert provided an in-depth explanation as to how Borella’s
`
`user device and user-selected bandwidth features would be incorporated into
`
`Bonomis. E.g., Pet. 40; Ex. 1002 ¶ 86. Patent Owner also incorrectly focuses on
`
`Petitioner’s contention that Bonomi and Borella are combinable because they both
`
`involve ATM networks. Resp. 31. Although Borella may disclose using ATM in
`
`the physical layer, Petitioner’s point is that the references both use similar
`
`technology, including ATM networks. Pet. 37. Patent Owner also ignores all of
`
`Petitioner’s other rationales for combining the prior art. Id. at 37-40.
`
`Nor is Petitioner’s proposed combination based on impermissible hindsight.
`
`Resp. 36. Likewise, Patent Owner’s suggestion that a “teaching or suggestion of
`
`jettisoning the per-connection architecture to instead manage the bandwidth by
`
`user” is required in the prior art is incorrect. See KSR Int’l Co. v. Teleflex Inc., 550
`
`8
`
`
`
`
`
`U.S. 398, 401 (2007) (an obviousness analysis “need not seek out precise
`
`teachings….”). Indeed, Petitioner’s expert identified various reasons why a skilled
`
`artisan would have combined Bonomi and Borella to achieve the claimed
`
`inventions. Ex. 1002 ¶¶ 79-85. That testimony is unrebutted.
`
`B. Ground 2: Chandran In View of Rupp
`Patent Owner alleges (1) Petitioner failed to demonstrate that Rupp is prior
`
`art; (2) Rupp does not disclose a user profile record; (3) there would be no
`
`motivation to combine or reasonable expectation of success; and (4) Petitioner
`
`failed to show Rupp is analogous art. Resp. § VII.B. Each argument is easily
`
`rebutted.
`
`1.
`Rupp qualifies as prior art.
`Petitioner presented substantial evidence demonstrating Rupp was publicly
`
`
`
`disseminated at an IEEE conference on or before May 20, 1998, including a 1998
`
`publication year from the IEEE database (Ex. 1013), 1998 copyright and May 1998
`
`publication dates (Ex. 1007 at 1), testimony from Dr. Dordal (Ex. 1002 ¶ 89), and
`
`two declarations from IEEE’s custodian of records, Mr. Grenier (Exs. 1012,
`
`9
`
`
`
`
`
`1022).1 Ignoring the other evidence, Patent Owner focuses solely on Mr. Grenier’s
`
`declarations, first claiming that he “never states that Rupp was published by May
`
`20, 1998.” Resp. § VII.B.1.a. But the actual words of the declarations show
`
`otherwise. Mr. Grenier states that Rupp was “published as part of the 1998 Sixth
`
`International Workshop on Quality of Service”; the conference was held “from
`
`May 18-20, 1998”; and “[c]opies of the conference proceedings were made
`
`available no later than the last day of the conference.” Exs. 1012 ¶ 11; 1022.
`
`
`
`As the Board previously noted, Mr. Grenier’s testimony “stands unrebutted
`
`that copies of conference proceedings, of which Rupp was part, were made
`
`available no later than the last day of the conference.” IPR2019-253, Paper 6 at
`
`28. His testimony still stands unrebutted. Despite telling the Board during the July
`
`10, 2019 conference call that Patent Owner would likely depose Mr. Grenier on his
`
`first declaration, Patent Owner never did.
`
`
`
`Patent Owner claims that Exhibit A to Mr. Grenier’s declarations is not the
`
`same document as Rupp because “Exhibit A lacks the cover page of Rupp, is
`
`formatted differently, and lacks the ‘May 1998’ date appearing in Rupp.” Resp.
`
`
`1 Patent Owner claims that the Board denied entry of this second declaration, Resp.
`
`43, but the Board said Petitioner could submit it, along with other evidence, in its
`
`Reply. Paper 9 at 3.
`
`10
`
`
`
`
`
`44. Petitioner, however, is not relying on Rupp’s cover page, its format, or the
`
`May 1998 date as part of Rupp’s technical disclosures that teach the relevant claim
`
`limitations. The actual portions Petitioner relies on are found in Exhibit A. See,
`
`e.g., Ex. 1012, Ex. A § 2, Fig. 2; Ex. 1002, App. II at 4-7, 12-14.
`
`
`
`Patent Owner’s suggestion there is no evidence Rupp was available for
`
`download from IEEE Xplore early enough to qualify as prior art is irrelevant.
`
`Resp. 44-45. Petitioner does not rely on when Rupp was downloadable. Pet. 10.
`
`
`
`Nor are the IEEE Xplore publication dates hearsay. Resp. 46. As the Board
`
`recognized, page 1 of Exhibit A of Mr. Grenier’s declarations, which is an “article
`
`abstract” that Mr. Griener references, states that Rupp had a “Published in” date of
`
`1998. The article abstracts also refer to a “publication year” of 1998. Ex. 1013.
`
`Mr. Grenier explained, based on his own personal knowledge, that the dates come
`
`from metadata associated with the publication. Exs. 1012, 1022 ¶ 10. The dates
`
`are therefore not hearsay. And even if they were, they are subject to at least the
`
`business record and residual exceptions.2
`
`
`
`Patent Owner also erroneously states that Mr. Grenier did not offer any
`
`“foundation for personal knowledge.” Resp. 47. Mr. Grenier testified that his
`
`
`2 Petitioner will provide the basis for these exceptions, if needed, should Patent
`
`Owner maintain its evidentiary objections.
`
`11
`
`
`
`
`
`statements were made based on his own “personal knowledge,” “information
`
`contained in the business records of IEEE,” “the ordinary course of [IEEE’s]
`
`business,” and “the regular practice of IEEE.” E.g., Ex. 1012 ¶¶ 1, 4, 7, 12. If
`
`Patent Owner wanted to investigate Mr. Grenier’s personal knowledge, it could
`
`have deposed him, but chose not to.
`
`
`
`Patent Owner further claims that Mr. Grenier “distinguished between” (1)
`
`publishing Rupp “as part of” the 1998 conference, and (2) making copies of the
`
`conference proceedings available by the last day. Resp. 47. He did not. Mr.
`
`Grenier stated that Rupp was part of the conference proceedings, and that the
`
`conference proceedings were made available by May 20, 1998. Ex. 1012 ¶ 11.
`
`Likewise, Patent Owner’s unsupported statement that “publication is not
`
`necessarily immediate in view of editing and related tasks required for publication”
`
`is merely attorney argument and is negated by Mr. Grenier’s testimony.
`
`
`
`Finally, Patent Owner misunderstands the purpose of Mr. Grenier’s
`
`testimony in claiming it does not establish that “an interested party exercising
`
`reasonable diligence would have located Rupp by May 20, 1998.” Resp. 48. Mr.
`
`Grenier established that Rupp was made available by the requisite date at the
`
`conference. Meanwhile, Dr. Dordal’s (unrebutted) testimony confirmed a POSITA
`
`would have known to attend the conference and look to publications like Rupp.
`
`Ex. 1002 ¶ 89; see also Ex. 1026 (conference was for “researchers, developers, and
`
`12
`
`
`
`
`
`practitioners working in all facets of QoS research addressing….networking….”);
`
`Ex. 1027 ¶ 2.
`
`
`
`Not surprisingly, the Board has found similar declarations from Mr. Grenier
`
`sufficient to show public availability of IEEE articles. See Valeo North America,
`
`Inc. V. Magna Electronics, Inc., IPR2014-01208, Paper 49 at 30-32 (“although Mr.
`
`Grenier did not observe that copies of the article were available to attendees at the
`
`conference, he knows that such availability is indicated by IEEE records”); Sierra
`
`Wireless, Inc. v. Koninklijke KPN N.V., IPR2018-00320, Paper 42 at 14-15; Intel
`
`Corporation v. R2 Semiconductor, Inc., IPR2017-00707, Paper 81 at 22; Activision
`
`Blizzard, Inc. V. Acceleration Bay, LLC, IPR2015-01996, Paper 101 at 68-69; Palo
`
`Alto Networks, Inc. v. Finjan, Inc., IPR2015-01974, Paper 49 at 20.
`
`
`
`Should the Board find that unrebutted evidence insufficient, Petitioner has
`
`also obtained declarations from Edward Knightly, the organizer of the Sixth
`
`International Workshop on Quality of Service, and Bjoern Rupp, the author of
`
`Rupp. Exs. 1027, 1028; Ex. 1029 (noting that “[a]ccepted papers will be published
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`by IEEE in conference proceedings.”).
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`2.
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`Rupp discloses a data storage system for associating a user-
`selected bandwidth with a user device.
`Petitioner demonstrated Rupp discloses limitations 1.C and 9.B. Pet. 44 &
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`
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`§ IX.B. Specifically, Rupp discloses a data storage system for storing a selected
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`quality of service. And that selected quality of service is a bandwidth selected by
`13
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`the user and associated with the user device. Both parties’ experts agree. Ex. 1002
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`¶ 88 & App. II (limitations 1.c and 9.b); Stubblebine Tr. 213:21-24.
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`
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`Patent Owner argues Rupp supposedly fails to disclose a network
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`communication bandwidth/data transmission parameter “within the constraints of
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`claims 1 and 9.” Resp. § VII.B.2. It argues Rupp fails to disclose a network
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`communication bandwidth, for instance, because the claims subsequently recite, in
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`limitation 1.E (and 9.D), preventing the user device from achieving a bandwidth
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`greater than the network communication bandwidth. But that requirement is
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`separate from limitation 1.C (and 9.B), and Petitioner is not relying on Rupp to
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`satisfy it. Petitioner instead relies on Chandran, which also discloses a bandwidth
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`associated with a user device, to satisfy that requirement. Pet. 46-47.
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`
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`Therefore, even if Rupp disclosed a “minimal” level of service as Patent
`
`Owner suggests, Resp. 50, Patent Owner’s argument is irrelevant because
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`Chandran discloses the requirement of preventing a user from achieving a
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`bandwidth greater than the network communication bandwidth. Indeed, when
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`Rupp’s data storage system is implemented in Chandran, the bandwidth would, by
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`virtue of Chandran’s underlying functionality, necessarily be a user-selected
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`network communication bandwidth that the user device is prevented from
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`exceeding. Dordal Reply ¶ 44; see also Stubblebine Tr. at 218:20-219:15
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`(indicating he had no opinion on what determined if Rupp’s bandwidth is a
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`14
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`
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`maximum or minimum).
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`
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`Moreover, Patent Owner’s argument that Rupp is a “minimal” level of
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`service is wrong. Patent Owner relies on a single sentence from Rupp, but that
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`sentence merely refers to a network being “overprovisioned” in a different context.
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`Resp. at 55; Dordal Reply ¶ 54. Rupp never suggests that users can exceed their
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`selected bandwidths. Rather, it states a user’s actual bandwidth is “degraded” to be
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`consistent with the selected quality of service. Ex. 1007 § 2.3. As a result, Rupp’s
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`quality of service is a maximum bandwidth that is not exceeded. Otherwise, the
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`network would not degrade a user’s bandwidth according to the desired
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`bandwidth. Dordal Reply ¶ 45-46.3 Id. Again, however, whether Rupp’s quality
`
`of service is a minimum or maximum is irrelevant.
`
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`3 Patent Owner misstates Dr. Dordal’s testimony in suggesting he agreed Rupp
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`discloses bandwidths that users can exceed. Resp. 50. He testified Rupp focuses
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`on “guarantees of the minimum bandwidth,” but also testified the bandwidths
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`cannot be exceeded: “Figure 2 is showing the maximum bandwidth that a user is
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`allowed....But also presumptively the user, when the user is using that bandwidth,
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`is allowed to achieve that level. So it’s not really a minimum, no….” Dordal Tr.
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`107:10-22 (emphasis added).
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`15
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`3.
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`Patent Owner’s motivation to combine arguments are
`incorrectly premised on bodily incorporating Rupp.
`Petitioner presented various reasons and motivations to combine Rupp and
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`Chandran to arrive at the challenged claims. E.g., Pet. § IX.C; Ex. 1002 ¶¶ 92-96.
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`Patent Owner does not challenge the merits of any of those rationales. It merely
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`concludes, without explanation, that Petitioner supposedly “divorces its arguments
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`from the technical content of the references it proposes combining.” Resp. 52.
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`That conclusion is false. Patent Owner and its expert explain, in detail, which
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`technical content of Chandran and Rupp would be combined, how it would be
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`combined, and how the technical content applies to the stated motivations to
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`combine. E.g., Ex. 1002 ¶¶ 92-97.
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`
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` Next, Patent Owner argues Chandran’s objective is “a scalable technique
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`for traffic shaping,” whereas Rupp supposedly “relied on a complex and inefficient
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`network topology” and “designed an overprovisioned network because its concerns
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`were guaranteeing the user with the selected quality of service, not enforcing
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`bandwidth management constraints.” Resp. 53-55. Patent Owner fails to explain
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`how those differences relate to a motivation to combine, however, other than
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`concluding “Rupp is directed to a different problem than Chandran.” Id. at 55.
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`
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`Similarly, its expert explains how, in his view, Rupp focuses on
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`“guaranteeing a selected quality of service,” and then concludes that a skilled
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`artisan “would not have been motivated to modify Chandran in view of Rupp, a
`16
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`paper directed to a guarantee of service, not bandwidth constraints.” Ex. 2004
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`§ IV.C.2. But he provides no explanation as to why Rupp’s supposed focus on a
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`guaranteed service quality precludes a motivation to combine. Id.; Verlander v.
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`Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board can accord little to no weight
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`to expert’s broad conclusory statements).
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`
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`In any event, that references are supposedly directed to different problems or
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`objectives, which appears to be Patent Owner’s argument, does not negate a
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`motivation to combine. E.g., Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357
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`F.3d 1319, 1339 (Fed. Cir. 2004) (“A finding that two inventions were designed to
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`resolve different problems…is insufficient to demonstrate that one invention
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`teaches away from another.”). Dr. Dordal further confirmed that the references’
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`network topology, purported objectives, and supposed focus on a guaranteed
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`service quality would not have deterred a skilled artisan from combining them.
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`Dordal Reply ¶ 55.
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`
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`Finally, Patent Owner argues a skilled artisan would not have had a
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`reasonable expectation of success. Resp. 55-58. But its argument is premised on
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`bodily incorporating most (if not all) of Rupp’s network, rather than the limited
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`functionality on which Petitioner relies. The test for obviousness is what the
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`references’ combined teachings would have suggested to a skilled artisan, not
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`whether one reference may be bodily incorporated into the structure of another
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`17
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`reference. Keller, 642 F.2d at 425.
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`Here, Petitioner only relies on Rupp’s data storage system for associating a
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`user-selected bandwidth with a user device as in limitations 1.C and 9.B. Dr.
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`Dordal detailed the very limited modifications needed to implement that
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`functionality in Chandran’s memory 10. Ex. 1002 ¶ 97. Moreover, Patent
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`Owner’s expert admitted programming basic user profiles (as in Rupp) would have
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`been “an easy task.” Stubblebine Tr. at 98:1-99:6. And, unlike Dr. Dordal, he did
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`not analyze whether programming a user interface to select a bandwidth was easy
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`or difficult. Id. at 105:2-16.
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`Patent Owner nonetheless argues the combination would require
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`incorporating “the complex and inefficient network topology and communication
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`flowpaths of Rupp’s figure 1.” Resp. 56. For example, it argues the combination
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`would include incorporating Rupp’s “encapsulation and de-encapsulation
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`operations.” Id. However, as Patent Owner admits (Resp. 54-55), those operations
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`deal with the transmission of IP packets through the network. They have
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