First, the Board improperly disregarded ViaSat’s explanation that a POSITA would find motivation to combine Norand and Eng because they employ similar Case IPR2016-00629 U.S. Patent No. 5,960,074 architectures to achieve a common goal of connecting mobile devices in an overall network.
Alternatively, ViaSat contends that even under the heightened obviousness standard set forth by the Board, the record clearly establishes that an express moti- vation to specifically incorporate TCP/IP into Norand is provided by the Petition, the prior art references, and the knowledge of a POSITA.
Norand’s Express Discussion of Using Packet-Based Com- munications Suggests the Use of TCP/IP Providing further TCP/IP-specific motivation to combine, ViaSat explained Case IPR2016-00629 U.S. Patent No. 5,960,074 how Norand expressly discloses transmission of data in “packets” across its net- works.
Such a requirement would effective- ly eviscerate obviousness as a separate ground for invalidity.4 The conclusion that Norand’s teaching of “data packets” would have sug- gested TCP/IP at the relevant time is further bolstered by the ’074 patent itself, which, as ViaSat argued in the Petition, draws a direct connection between the “ethernet packet switching protocol” of the “present invention” and what is de- scribed as the pre-existing TCP/IP protocol.
Given that, as ViaSat repeatedly ex- plained in the Petition, Norand and Eng share the common goal of linking together mobile users, e.g., Pet. at 25, Eng’s teaching that TCP/IP is particularly well-suited to “mobility management” answers the Board’s “why” question.