UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`MICROSOFT CORP., DELL TECHNOLOGIES INC., and DELL INC.,
`Petitioners,
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`v.
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`
`
`
`
`OZMO LICENSING LLC,
`Patent Owner.
`
`
`
`
`
`
`
`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`PATENT OWNER PRELIMINARY RESPONSE
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`3850679.v1
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`Table of Contents
`
`
`I.
`INTRODUCTION ......................................................................................... 6
`THE ’814 PATENT, THE REFERENCES RELIED UPON IN THE
`II.
`PETITION, AND THE PROPOSED GROUNDS FOR INSTITUTION ........... 6
`A. U.S. Patent No. 8,599,814 .................................................................... 6
`B.
`References Relied Upon in the Petition and Proposed
`Grounds for Institution ..................................................................... 11
`1.
`Sugar (Ex. 1004) ....................................................................... 11
`2.
`Shin (Ex. 1005) ......................................................................... 12
`3.
`Specification of the Bluetooth System (“Bluetooth
`Spec.”) (Ex. 1006) ..................................................................... 13
`Cromer (Ex. 1022) .................................................................... 13
`4.
`Sinivaara (Ex. 1007) ................................................................. 14
`5.
`Giaimo (Ex. 1008)..................................................................... 14
`6.
`Hansen (Ex. 1009)..................................................................... 15
`7.
`Gurevich (Ex. 1010) .................................................................. 17
`8.
`802.11b/g Specifications (Exs. 1018-19) .................................. 17
`9.
`Proposed grounds of institution ....................................................... 17
`C.
`III. THE CHALLENGED INDEPENDENT CLAIM .................................... 18
`IV. CLAIM CONSTRUCTION ........................................................................ 19
`A. Claim Construction Standard .......................................................... 19
`B.
`“overlay protocol” ............................................................................. 19
`THE PETITION DOES NOT ESTABLISH A REASONABLE
`V.
`LIKELIHOOD THAT ANY OF CLAIMS 1-13 OF THE ’814 PATENT IS
`UNPATENTABLE ................................................................................................. 22
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`2.
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`U.S. Patent No. 8,599,814
`A. Ground 1 should be denied for failure to establish a
`reasonable likelihood that the alleged combination of Sugar,
`Shin, and Bluetooth renders Claims 1, 3, 5-7, or 9-13
`unpatentable. ...................................................................................... 22
`1.
`The alleged combination fails to disclose or render
`obvious the Claim 1 limitation of: “wherein the second
`wireless network protocol is an overlay protocol with
`respect to the first wireless network protocol” ......................... 22
`Dependent Claims 3, 5-7, and 9-13: the Petition fails to
`establish that the alleged combination discloses or
`renders obvious all recited claim limitations of any
`dependent claim. ....................................................................... 31
`B. Ground 2 should be denied for failure to establish a
`reasonable likelihood that the alleged combination of Sugar,
`Bluetooth, Shin, and Cromer renders Claim 2 unpatentable. ...... 32
`C. Ground 3 should be denied for failure to establish a
`reasonable likelihood that the alleged combination of
`Giaimo and Sinivaara renders any of Claims 1, 4, 7, or 8
`unpatentable. ...................................................................................... 32
`1.
`The alleged combination fails to disclose or render
`obvious the Claim 1 limitation of: “wherein the second
`wireless network protocol is an overlay protocol with
`respect to the first wireless network protocol” ......................... 32
`The alleged combination fails to disclose or render
`obvious the Claim 1 limitation of: “initiating and
`maintaining wireless network connections with nodes of
`a wireless network external to the network-enabled hub,
`maintaining at least a first wireless network connection
`using a first wireless network protocol and a second
`wireless network connection using a second wireless
`network protocol, that can be maintained, at times,
`simultaneously with each other” ............................................... 35
`A person of ordinary skill in the art would not have been
`motivated to combine Giaimo and Sinivaara. ........................... 37
`
`2.
`
`3.
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`4.
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`Dependent Claims 4, 7, and 8: the Petition fails to
`establish that the alleged combination discloses or
`renders obvious all recited claim limitations of any
`dependent claim. ....................................................................... 40
`D. Ground 4 should be denied for failure to establish a
`reasonable likelihood that the alleged combination of
`Gurevich, Hansen, and 802.11b/g render Claim 1
`unpatentable. ...................................................................................... 40
`1.
`The alleged combination fails to disclose or render
`obvious the Claim 1 limitation of: “wherein the second
`wireless network protocol is an overlay protocol with
`respect to the first wireless network protocol” ......................... 40
`The alleged combination fails to disclose or render
`obvious the Claim 1 limitation of: “initiating and
`maintaining wireless network connections with nodes of
`a wireless network external to the network-enabled hub,
`maintaining at least a first wireless network connection
`using a first wireless network protocol and a second
`wireless network connection using a second wireless
`network protocol, that can be maintained, at times,
`simultaneously with each other” ............................................... 42
`VI. CONCLUSION ............................................................................................ 44
`CERTIFICATE OF COMPLIANCE ....................................................................... 46
`CERTIFICATE OF SERVICE ................................................................................ 47
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`Cases
`
`Table of Authorities
`
`Choon’s Design, LLC v. Idea Vill. Prod. Corp., 776 F. App’x 691 (Fed. Cir. 2019)
` .............................................................................................................................. 42
`
`Comaper Corp. v. Antec, Inc., 596 F.3d 1343 (Fed. Cir. 2010) ....................... 31, 40
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) ........................ 22
`
`In re Lemay, 660 F. App’x 919 (Fed. Cir. 2016) ..................................................... 32
`
`Kiosoft Techs., LLC v. PayRange, Inc., IPR2021-00086, Paper 12 (PTAB Mar. 22,
`2021) ............................................................................................................. 21, 41
`
`Ozmo Licensing LLC v. Acer Inc. and Acer America Corp. (No. 6:21-cv-1225-
`ADA) .................................................................................................................... 21
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 19
`Statutes
`
`35 U.S.C. § 312(a)(3) ............................................................................................... 22
`
`35 U.S.C. § 313 .......................................................................................................... 6
`Rules
`37 C.F.R. § 42.107 ..................................................................................................... 6
`
`37 C.F.R. § 42.24 ..................................................................................................... 46
`
`37 C.F.R. § 42.24(b)(1) ............................................................................................ 46
`
`37 C.F.R. § 42.6(e) ................................................................................................... 47
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
`
`I.
`
`INTRODUCTION
`Patent Owner Ozmo Licensing LLC (“Patent Owner”) respectfully submits
`
`this Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R.
`
`§ 42.107, responding to the Petition for Inter Partes Review (the “Petition”) filed
`
`by Microsoft Corporation, Dell Technologies Inc., and Dell Inc. (collectively,
`
`“Petitioners”) challenging Claims 1-13 (“the challenged claims”) of U.S. Patent
`
`No. 8,599,814 (the “’814 Patent”).
`
`This Preliminary Response focuses on two claim elements that simply are
`
`not met by any of the proposed grounds for unpatentability. Patent Owner does not
`
`address the numerous other arguments that Petitioners make for institution, but
`
`Patent Owner also disagrees with those arguments. However, it is unnecessary to
`
`address all of Petitioners’ arguments because the evidence set forth below clearly
`
`demonstrates that Petitioners fail to establish a reasonable likelihood that any of
`
`Claims 1-13 of the ’814 Patent is unpatentable.
`
`For the reasons set forth more fully below, Institution should be denied.
`
`II. THE ’814 PATENT, THE REFERENCES RELIED UPON IN THE
`PETITION, AND THE PROPOSED GROUNDS FOR INSTITUTION
`A. U.S. Patent No. 8,599,814
`The ’814 Patent discloses a method and system for integrating short-range
`
`wireless personal area networks (“WPANs”) into longer-range wireless local area
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`networks (“WLANs”) using a hub, such that WPAN devices can become part of
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`the larger WLAN infrastructure by being able to send and receive data to and from
`
`the larger WLAN infrastructure via the hub. See Ex. 1001 at 1:25-29, 4:1-15,
`
`5:36-64, 14:45-15:10. The hub initiates and maintains connections with both a
`
`device in the WLAN and a device in the WPAN, and then forwards data between a
`
`node on the WLAN and a node on the WPAN across the created and maintained
`
`connections using a wireless radio circuit. See Ex. 1001 at 1:25-29, 4:1-15, 5:36-
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`64, 14:45-15:10.
`
`An example of a WLAN is an 802.11-1999 (802.11x) network. The 802.11x
`
`standard, commonly known as “Wi-Fi,” has been widely deployed for wireless
`
`connectivity since its adoption in a variety of settings including in homes, offices,
`
`and public establishments. See Ex. 1001 at 1:49-52. The 802.11x protocol has two
`
`modes: ad hoc mode and infrastructure mode. See Ex. 1001 at 1:40-53, 2:2-4.
`
`The 802.11x standard includes 802.11b-1999 and 802.11g-2003, which are both
`
`amendments to the same 802.11-1999 standard. See Ex. 1019 at p. 1.
`
`In ad hoc mode, 802.11x-compliant wireless circuits (“stations” or “STAs”),
`
`such as laptop computers, desktop computers, tablet computers, mobile phones,
`
`printers, and smart televisions, can only communicate with each other on an ad hoc
`
`basis. Devices communicating on an ad hoc basis cannot associate with each
`
`other, which in turn means they cannot create and maintain connections with one
`
`another that persist if the device falls out of ad hoc mode (for example, by entering
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`sleep mode, or going into the infrastructure mode described just below).
`
`In infrastructure mode, a dedicated access point (“AP”) manages
`
`connections to and from associated 802.11x STAs (which are each also in
`
`infrastructure mode) in that WLAN. Specifically, the AP of such an 802.11x
`
`WLAN (in infrastructure mode) manages connections between the STAs in that
`
`WLAN, between those STAs and other STAs on other WLANs, and between those
`
`STAs and other STAs located elsewhere on the Internet. 802.11x-compliant STAs
`
`in infrastructure mode on that WLAN can communicate with each other or with
`
`STAs of other WLANs, with all such communications being routed through APs.
`
`See Ex. 1001 at 2:4-21.
`
`Devices in a conventional WPAN may communicate directly without the
`
`need for an intermediary device such as an AP to manage connections. The most
`
`common example of a WPAN is a Bluetooth connection/network formed between
`
`two Bluetooth-equipped devices. See Ex. 1001 at 2:22-30.
`
`Bluetooth (and other) WPAN devices operate in the same 2.4 GHz
`
`frequency band in which WLAN devices frequently operate. The coexistence of
`
`WPAN and WLAN communication protocols in a single frequency band often
`
`results in severe interference due to their varying methods of accessing the wireless
`
`medium and a lack of synchronization between them. See Ex. 1001 at 2:39-44.
`
`Furthermore, a device’s ability to operate in a WLAN or a WPAN may be limited
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`by the hardware and software it includes, as the WPAN and 802.11 WLAN require
`
`different transceiver integrated circuits and may also require different antennas.
`
`While the disharmonious coexistence of WPANs and 802.11 WLANs had long
`
`been tolerated, there remained a need for a solution that could seamlessly integrate
`
`WPAN and WLAN communication protocols. See Ex. 1001 at 2:37-44, 3:29-33.
`
`The foregoing issues made it difficult to integrate WPAN devices into
`
`WLANs, such that WPAN devices could become part of the larger WLAN
`
`infrastructure and be able to send and receive data to and from the larger WLAN
`
`infrastructure. The ’814 Patent notes that the prior art efforts to address these
`
`issues were insufficient. For example, one existing approach was to use WLAN
`
`protocols in WPAN devices. But this led to power dissipation and/or low
`
`transmission rate problems, and could introduce undesirable amounts of latency in
`
`communications involving the WPAN devices. See Ex. 1001 at 2:45-3:14.
`
`The ’814 Patent further describes noise, linearity, and/or overhead protocol
`
`problems with integrating then-existing WPAN and WLAN networks. See Ex.
`
`1001 at 3:14-28. WLANs typically operated at relatively high data rates compared
`
`to WPANs. See Ex. 1001 at 3:7-8. Given the difference in these rates, it was
`
`undesirable to have a STA that was associated with a slower WPAN also
`
`associated with a WLAN as a WLAN STA, because management communications
`
`between an AP and its associated STAs occur at the lowest common data rate
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`supported by all STAs connected to that AP, and because STAs that are also
`
`associated with WPANs only support low data rates. See Ex. 1001 at 3:8-14. This
`
`means such STAs impose a very low rate on the management communications
`
`flowing through the rest of the WLAN. See Ex. 1001 at 3:14-28. In addition, the
`
`total WLAN capacity would be significantly reduced when such slow WPAN
`
`devices are included in a WLAN because WPAN devices will occupy a
`
`disproportionate amount of transmission (and reception) time.
`
`Furthermore, although the 802.11x standard specifies power save modes that
`
`allow forms of power savings, there was still a need to enable power save modes
`
`that were better optimized to meet the needs of WPAN devices. See Ex. 1001 at
`
`3:24-28.
`
`The ’814 Patent discloses an apparatus that provides a technical solution to
`
`these unsolved technological problems by integrating a WPAN into a WLAN
`
`infrastructure using a network-enabled hub, such that WPAN devices can become
`
`part of the larger WLAN infrastructure by being able to send and receive data to
`
`and from the larger WLAN infrastructure via the hub. See Ex. 1001 at 3:20-33.
`
`The ’814 Patent claims and teaches, inter alia, an improved way to facilitate
`
`communications between wireless devices that are configured to communicate
`
`indirectly via the claimed hub. The ’814 Patent invention also improves upon
`
`existing wireless communications techniques, which were unable to integrate a
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`WPAN into a WLAN infrastructure without suffering from one or more of the
`
`aforementioned problems, by allowing the hub to initiate and maintain connections
`
`with nodes of an external wireless network via a first network connection using a
`
`first network protocol and, a second network connection using a second network
`
`protocol that is an overlay protocol with respect to the first network protocol, and
`
`that is partially consistent with the first network protocol, and by allowing the
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`network-enabled hub to forward data between the WPAN devices and to devices
`
`connected to the WLAN. See Ex. 1001 at 14:45-15:10.
`
`B. References Relied Upon in the Petition and Proposed Grounds for
`Institution
`The Petition asserts four grounds including nine separate references: U.S.
`
`Patent Pub. No. 2002/0061031 to “Sugar” (Ex. 1004); U.S. Patent Pub. No.
`
`2004/0071123 to “Shin” (Ex. 1005); the Bluetooth Specification (Ex. 1006);
`
`International Pub. No. WO 2005/006659 to “Sinivaara” (Ex. 1007); U.S. Patent
`
`Pub. No. 2004/0090924 to “Giaimo” (Ex. 1008); U.S. Patent Pub. No.
`
`2005/0180368 to “Hansen” (Ex. 1009); U.S. Patent Pub. No. 2005/0174962 to
`
`“Gurevich” (Ex. 1010); IEEE 802.11b-1999 (Ex. 1018); and IEEE 802.11g-2003
`
`(Ex. 1019).
`
`These references are briefly described below.
`
`1.
`Sugar (Ex. 1004)
`Sugar discloses interference mitigation or collision avoidance systems and
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`procedures to allow different WPAN and WLAN communication protocols, such
`
`as Bluetooth and 802.11x, to coexist in the same frequency band. See Ex. 1004 at
`
`Abstract. As background, Sugar noted the existence of several wireless network
`
`protocols sharing the same unlicensed frequency spectrum, which caused
`
`interference problems between different networks, such as IEEE 802.11b and
`
`Bluetooth. See Ex. 1004 at ¶¶ [0003]-[0006]. Sugar teaches different interference
`
`avoidance techniques for 802.11/Bluetooth Synchronous Connection Oriented
`
`(“SCO”) transmissions and 802.11/Bluetooth Asynchronous Connectionless
`
`(“ACL”) transmissions. See Ex. 1004 at ¶¶ [0084], [0093]. Sugar teaches yet
`
`other interference avoidance techniques for multi-protocol devices (“MPDs”)
`
`supporting Bluetooth, 802.11b DS (Direct Sequence), and HomeRF protocols. See
`
`Ex. 1004 at ¶¶ [0108]-[0147]. Sugar is silent about forwarding data between any
`
`networks, let alone between devices that are part of an IEEE 802.11b WLAN and
`
`devices that are part of a WPAN (e.g., Bluetooth, HomeRF).
`
`2.
`Shin (Ex. 1005)
`Shin discloses an apparatus and method for allowing Bluetooth and WLAN
`
`devices to communicate with each other. See Ex. 1005 at Abstract. The Shin
`
`apparatus creates a mixed protocol stack having distinct Bluetooth and WLAN
`
`lower level layers, with the WLAN lower level layer only communicating with the
`
`WLAN (i.e., 802.11x) terminals, and the Bluetooth lower level layer only
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`communicating with the WPAN (i.e., Bluetooth) terminals. See, e.g., Ex. 1005 at
`
`¶¶ [0054]-[0055], [0064]-[0065]. Both the WLAN lower level layer and the
`
`Bluetooth lower level layer share a common higher level layer that implements an
`
`Internet Protocol Control Protocol (“IPCP”). See Ex. 1005 at ¶¶ [0040]-[0051].
`
`Specifically, Shin teaches the creation of a single, undifferentiated ad hoc network
`
`(i.e., no association, as defined above, between the devices) by using a function of
`
`the IPCP to allow WLAN nodes and WPAN nodes to communicate by exchanging
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`higher-level IP packets via the shared higher IPCP layer. See Ex. 1005 at ¶ [0045];
`
`see also Ex. 1005 at ¶ [0060] (“establishing an ad-hoc network of Bluetooth and
`
`wireless LAN [terminals] of the present invention.”). Shin is silent as to, among
`
`other things, (i) there being a WLAN and a WPAN (only one network is
`
`disclosed), (ii) interoperability techniques, including data forwarding, to move data
`
`between a device that is part of a WPAN and a device that is part of a WLAN, and
`
`(iii) interference and coexistence between two distinct networks.
`
`3.
`
`Specification of the Bluetooth System (“Bluetooth Spec.”)
`(Ex. 1006)
`Exhibit 1006 is volume 1 of the Bluetooth Specification. See Ex. 1006.
`
`4.
`Cromer (Ex. 1022)
`Cromer is directed to the “need [] for a data processing system and method
`
`that permits a server to remotely access a wireless client computer system’s asset
`
`information.” See Ex. 1022 at ¶ [0009]. Because of the known power
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`management issues involved with wireless devices at the time, Cromer introduces
`
`a method and implementation for remotely accessing data stored in a mobile data
`
`processing system when the mobile system is powered down. See Ex. 1022 at
`
`¶ [0018].
`
`5.
`Sinivaara (Ex. 1007)
`Sinivaara is directed to a mechanism for decreasing power consumption in
`
`wireless terminals engaged in short-range, beacon-based communication. See Ex.
`
`1007 at 1:4-7. Sinivaara purports to decrease power consumption by, inter alia,
`
`increasing the transmission rate of the header portion of wireless packets. See Ex.
`
`1007 at 3:27-4:22. “By accelerating the transmission of the header contrary to the
`
`WLAN (i.e., 802.11) specifications, the processing time of the data packets can be
`
`made shorter than in the standard MAC layer.” Ex. 1007 at 7:36-8:2. “The shorter
`
`transmission intervals (i.e. shorter packet transaction intervals) obtained in this
`
`way translate to lower battery consumption, while also allowing the terminal more
`
`time for the sleep mode.” Ex. 1007 at 8:2-5. This comes at the cost of a
`
`compromise between network range and power consumption, however. See Ex.
`
`1007 at 7:31-34.
`
`6. Giaimo (Ex. 1008)
`Giaimo teaches systems and methods for “Smart Wireless Routing.” See,
`
`
`
`e.g., Ex. 1008 at ¶ [0015]. Using existing wireless hardware, 802.11 STAs in a
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`single network can form simultaneous wireless connections with an AP on a first
`
`channel in infrastructure mode, and with another STA on a different channel in ad
`
`hoc mode. See Ex. 1008 at ¶ [0015] (“This aspect of the present invention is
`
`clearly illustrated in a wireless network …”). Transmissions that require higher
`
`quality of service (QoS) may be made on a channel with lower latency and higher
`
`throughput using a protocol like 802.11a or 802.11g, while transmissions that
`
`require lower QoS can be made on channels with higher latency and lower
`
`throughput using a protocol like 802.11b. See Ex. 1008 at ¶ [0016]. STAs in the
`
`single network of Giaimo also can serve as “surrogate” APs for other STAs,
`
`fetching data from APs to serve to the other STAs, and vice versa using two
`
`different connections non-simultaneously on two different channels. See Ex. 1008
`
`at ¶ [0017]. Giaimo is silent as to, among other things, (i) there being a WLAN
`
`and a WPAN (only one network is disclosed), (ii) interoperability techniques,
`
`including data forwarding, to move data between a device that is part of a WPAN
`
`and a device that is part of a WLAN, and (iii) interference and coexistence between
`
`two distinct networks.
`
`7. Hansen (Ex. 1009)
`Hansen teaches methods and apparatuses that enable multiple wireless
`
`
`
`protocols to be supported within a single wireless communication network (so as to
`
`alleviate performance losses caused by devices ensuring backwards compatibility,
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`for example). See Ex. 1009 at ¶¶ [0012]-[0013]; see also Ex. 1009 at ¶ [0003]
`
`(“This invention relates … more particularly to supporting multiple wireless
`
`communication protocols within a wireless local area network.”). In the single
`
`network of Hansen, devices on that network first determine the 802.11x protocols
`
`(e.g., 802.11b, 802.11a, 802.11g, or 802.11n) with which they are compatible. See
`
`Ex. 1009 at ¶¶ [0014]-[0017], [0050]-[0054]. If the protocols are different (e.g.,
`
`one or more devices is using a legacy protocol such as 802.11b or 802.11a, and
`
`another device is using a newer protocol such as 802.11g or 802.11n), devices that
`
`wish to transmit a MAC frame will use a legacy protocol to create a “legacy
`
`portion” of a set-up PHY preamble in the MAC frame. See Ex. 1009 at ¶¶ [0014]-
`
`[0017], [0050]-[0054]. In this way, the other legacy devices in the vicinity that are
`
`not designated recipients of that frame will not see it as interference but rather as a
`
`frame that should be ignored. See Ex. 1009 at ¶¶ [0014]-[0017], [0050]-[0054].
`
`The device will then construct the remainder of the MAC frame using its
`
`native/default protocol. See Ex. 1009 at ¶ [0016]. Using the legacy set-up portions
`
`ensures that legacy devices do not interfere with devices that are using newer
`
`versions of 802.11, by forcing the newer devices to use legacy protocols. See Ex.
`
`1009 at ¶¶ [0012]-[0014]. Like the other references, Hansen is silent as to, among
`
`other things, (i) there being a WLAN and a WPAN (only one network is
`
`disclosed), (ii) interoperability techniques, including data forwarding, to move data
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`between a device that is part of a WPAN and a device that is part of a WLAN, and
`
`(iii) interference and coexistence between two distinct networks.
`
`8. Gurevich (Ex. 1010)
`Gurevich teaches a “generic client” (“GC”) device capable of
`
`
`
`communicating over different networks that each follow the same protocol, such as
`
`an 802.11 infrastructure network and an 802.11 ad hoc network, using virtual
`
`network interfaces. See Ex. 1010 at ¶ [0013]. In one implementation, the GC
`
`provides simultaneous communication with both 802.11 infrastructure and 802.11
`
`ad hoc networks in compliance with the IEEE 802.11 protocol. See Ex. 1010 at ¶
`
`[0013]. Gurevich is silent as to, among other things, interference and coexistence
`
`between 802.11 infrastructure and 802.11 ad hoc networks.
`
`9.
`802.11b/g Specifications (Exs. 1018-19)
`802.11b is an amendment to the 802.11-1999 standard titled “802.11 Higher-
`
`
`
`Speed Physical Layer Extension in the 2.4 GHz Band.” 802.11g is an amendment
`
`to the 802.11-1999 standard titled “Further Higher Data Rate Extension in the 2.4
`
`GHz Band.” See Ex. 1018 at p. 1; Ex. 1019 at p. 1.
`
`C.
`Proposed grounds of institution
`The proposed grounds are summarized in the table below:
`
`
`
`
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
`
`GROUND
`1
`
`CLAIM(S)
`1, 3, 5-7, 9-13
`
`BASIS
`35 U.S.C. § 103
`
`2
`
`3
`
`4
`
`2
`
`35 U.S.C. § 103
`
`1, 4, 7-8
`
`35 U.S.C. § 103
`
`1
`
`35 U.S.C. § 103
`
`REFERENCES
`Sugar, Shin, and
`Bluetooth
`Sugar, Bluetooth,
`Shin, and Cromer
`Giaimo and
`Sinivaara
`Gurevich, Hansen,
`802.11-1999,
`802.11b, and
`802.11g
`
`
`III. THE CHALLENGED INDEPENDENT CLAIM
`Claims 1-13 are being challenged. Claim 1, the only independent claim
`
`being challenged, reads as follows:
`
`1. A network-enabled hub, usable for facilitating data communications
`between two or more wireless devices that are configured to
`communicate indirectly with each other via the network-enabled hub,
`comprising:
`an interface to a wireless radio circuit that can send and receive data
`wirelessly, providing the hub with bi-directional wireless data
`communication capability;
`logic for processing data received via the wireless radio circuit;
`logic for generating data to be transmitted by the wireless radio circuit;
`logic for initiating and maintaining wireless network connections with nodes
`of a wireless network external to the network-enabled hub, maintaining at
`least a first wireless network connection using a first wireless network
`protocol and a second wireless network connection using a second
`wireless network protocol, that can be maintained, at times,
`simultaneously with each other in a common wireless space, wherein the
`second wireless network protocol is an overlay protocol with respect to
`the first wireless network protocol in that communications using the
`second wireless network protocol are partially consistent with the first
`wireless network protocol and at least some of the communications using
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`the second wireless network protocol impinge on at least some antennae
`used for the first wireless network; and
`data forwarding logic, implemented in the network-enabled hub using
`hardware and/or software, that forwards data between an originating node
`and a destination node, wherein the originating node is a node in one of
`the first and second wireless networks and the destination node is a node
`in the other of the first and second wireless networks.
`
`IV. CLAIM CONSTRUCTION
`A. Claim Construction Standard
`In an inter partes review proceeding, claim terms are construed according to
`
`the same claim construction standard used in district courts as articulated in
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`B.
`“overlay protocol”
`While Petitioners disingenuously assert that the “Court in the Dell litigation
`
`
`
`construed certain terms, which constructions are also applied” (Pet. at 8 (emphasis
`
`added)), Petitioners in fact implicitly propose a construction of “overlay protocol”
`
`that was explicitly rejected by the Court. For example, in the course of arguing the
`
`Ground 1 combination of Sugar, Shin, and Bluetooth, Petitioners aver that “[t]he
`
`Bluetooth protocol in the combination is an overlay protocol with respect to 802.11
`
`in that communications using the Bluetooth protocol are partially consistent, but
`
`not entirely consistent, with the 802.11 protocol.” Pet. at 23. This is without
`
`merit. That two different protocols may be “partially consistent” in some way does
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`not in itself make one an overlay of the other under the Court’s claim
`
`construction—which Petitioners purport to follow. The Court in the Dell litigation
`
`construed “overlay protocol” as “a protocol governing a second network, which
`
`protocol has aspects in common with a first network protocol to reduce
`
`interference such that the second and first networks can co-exist.” See Ex. 1035 at
`
`p. 1 (emphasis added).
`
`Bluetooth simply cannot be such an overlay protocol of 802.11 because of
`
`the well-known interference problems caused when a Bluetooth WPAN occupies
`
`the same physical medium as an 802.11 network, as documented in the section
`
`describing previous known systems of the ’814 Patent itself. Not only is Bluetooth
`
`not an overlay protocol of 802.11; it is the very antithesis of an overlay protocol
`
`because its presence increases interference between the Bluetooth and 802.11
`
`networks. See Ex. 1001 at 2:39-43. In no way does Bluetooth have any aspect in
`
`common with Wi-Fi, which aspect reduces interference when they are made to co-
`
`exist. As explained further infra, Petitioners’ reasons in support of their contention
`
`to the contrary are false.
`
`Moving to another argument Petitioners make about Sugar’s alleged overlay
`
`protocol, the fact that both 802.11 and Bluetooth use a common IEEE 48 address
`
`space and may operate in the same 2.4 GHz band does not make one an overlay
`
`protocol of the other as construed by the Court because an address has nothing to
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`do with interference or co-existence. The Court set forth its reasoning for the
`
`above construction in the case of Ozmo Licensing LLC v. Acer Inc. and Acer
`
`America Corp. (No. 6:21-cv-1225-ADA), where it had previously construed the
`
`term. See Ex. 1015 at pp. 23-26. As can be seen therein, the Court’s reasoning in
`
`support of its construction was rigorous and thoughtful, and also cut against a
`
`position advanced by Dell that would have let it place Bluetooth within the scope
`
`of the “overlay protocol”—for example, when Dell argued an overlay protocol is,
`
`inter alia, simply “a second protocol that has elements that are reuses of a first
`
`protocol.” See, e.g., Ex. 1036 at p. 6. The Board should therefore adopt the
`
`Court’s actual cons