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 IPR2019-00253
`Patent 8,626,922
`
`
`
`
`
`
`
`
`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 IPR2019-00253
`Patent 8,626,922
`
`
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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 ’922 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
`
`- i -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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 ..................................................................................38
`
`VII. CONCLUSION ..............................................................................................43
`
`
`
`
`
`
`
`- iii -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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, 27, 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) ........................................................... 36, 37, 38
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ..................................................................... 29
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ........................................................... 25, 27, 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
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) ..................................................................... 25
`
`- iv -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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
`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
`
`
`
`
`
`
`- v -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`EXHIBIT LIST
`
`Exhibit No. Description
`
`2001
`
`Declaration of Dean Sirovica, Ph.D.
`
`
`
`
`
`- vi -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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
`
`- 2 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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 IPR2019-00211. 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.
`
`- 3 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`A.
`
`III. OVERVIEW OF THE ’922 PATENT
`Sample embodiments described in the specification
`The ’922 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 ’922 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 (’922 patent) col. 5 ll. 47–60.) When the gateway subsequently receives a
`
`packet, it may identify the user that sent the packet and retrieve an authorization file
`
`- 4 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`with an indication of the user-selected bandwidth. (See, e.g., id. col. 11 ll. 57–66.)
`
`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. 65 – col. 12 l. 8.)
`
`
`
`- 5 -
`
`
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`B. Claims 1 and 9
`Petitioner challenges claims 1 and 9 of the ’922 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 a user profile record associated with
`a user, the user profile record comprising an indication of a
`network communication bandwidth associated with the user
`device; 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.
`
`- 6 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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 with the user device, the
`data transmission parameter being retrieved from a user profile
`associated with the user;
`
`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 retrieved from the user profile associated with
`the user.
`
`IV. PRELIMINARY CLAIM-CONSTRUCTION REMARKS
`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 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.
`
`- 7 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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
`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
`
`
`
`
`
`
`
`- 8 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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.
`
`Licensing, L.P., Case CBM2015-00053, slip op. at 7–8 (PTAB June 29, 2015) (Paper
`
`- 9 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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.
`
`- 10 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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. 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. 8–9, 29.) In both Grounds 1 and 3, Petitioner relies
`
`solely on Bonomi for these limitations. (Id. at 29, 54, 62.) 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 (emphasis added); Ex. 1002 (Dordal Decl.) App’x I p. 8
`
`- 11 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`(“‘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:
`
`“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 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 compared to a
`
`value, either t + 1 / ρ or t + σ / ρ—Bonomi’s disclosure is inconsistent. Either way,
`
`- 12 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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. 62–63.) 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, 54.) As a result,
`
`a person of ordinary skill in the art would not reasonably expect the proposed
`
`combination of Bonomi and Borella or Bonomi and Teraslinna to result in the
`
`- 13 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`inventions claimed in either claim 1 or claim 9 of the ’922 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
`
`computers to facilitate the exchange of data, such as files. (Id.) In contrast, ATM
`
`- 14 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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.
`
`Bonomi is directed to addressing a problem in ATM networks arising from
`
`supporting multiple types of applications. Since ATM is connection-oriented, two
`
`- 15 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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,
`
`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
`
`- 16 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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
`
`
`
`
`
`
`
`
`
`- 17 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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 header
`
`- 18 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`illustrated in figure 3 of Borella, which is reproduced below with annotations to
`
`show the byte boundaries:
`
`1
`
`4 bytes (32 bits)
`2
`3
`
`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.)
`
`- 19 -
`
`
`
`IPR2019-00253
`Patent 8,626,922
`
`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. (S
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
