Motorola Mobility LLCv.Intellectual Ventures I LLC

Patent Trial and Appeal Board

Sep 9, 2015

09943803 (P.T.A.B. Sep. 9, 2015)

Trials@uspto.gov Paper 48
571-272-7822 Entered: September 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MOTOROLA MOBILITY LLC,
Petitioner,

v.

INTELLECTUAL VENTURES I LLC,
Patent Owner.
____________

Case IPR2014-00501
Patent 7,136,392 B2
____________

Before MICHAEL W. KIM, PATRICK R. SCANLON, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Motorola Mobility LLC (“Petitioner”) filed a Petition to institute an
inter partes review of claims 1–21 of U.S. Patent No. 7,136,392 B2 (“the
’392 patent”) pursuant to 35 U.S.C. § 311–319. Paper 4 (“Pet.”).
Intellectual Ventures I LLC (“Patent Owner”) filed a Preliminary Response.
Paper 8 (“Prelim. Resp.”). We instituted trial on all challenged claims.
Paper 13 (“Dec.”).
During trial, Patent Owner filed a Patent Owner Response (Paper 22,
“PO Resp.”), which was accompanied by a Declaration from Ahmed
Tewfik, Ph.D. Ex. 2004 (the “Tewfik Declaration”). Petitioner filed a
Reply to the Patent Owner Response. Paper 28 (“Pet. Reply”). A hearing
for this proceeding was held on May 5, 2015. A transcript of the hearing has
been entered into the record. Paper 47 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
We determine that Petitioner has shown by a preponderance of the evidence
that claims 1–3, 7, 9–12, and 16–18 of the ’392 patent are unpatentable.
Patent Owner’s Motion to Exclude (Paper 35) is dismissed-in-part and
denied-in-part.
A. Related Proceedings
Petitioner represents that the ’392 patent has been asserted against it
by Intellectual Ventures I LLC and Intellectual Ventures II LLC in
Intellectual Ventures I LLC v. Motorola Mobility LLC, No. 0:13-cv-61358-
RSR (S.D. Fla.) (“the district court case”). Pet. 1–2; Ex. 1007.
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B. The ’392 Patent
The ’392 patent relates to a communication network having a plurality
of stations that share a communication channel. Ex. 1001, 1:65–67. Each
internal queue of a station accumulates and releases, for transmission during
an appropriate transmission opportunity, data messages that have a specific
traffic classification, and thus, a different level of priority than those
accumulated and released by other internal queues of that station. Id.
at 2:1–7. “[P]referential access to the shared communication channel is
given to data messages having higher levels of priority.” Id. at 2:9–11. The
release of data messages having the same level of priority, however, is
governed by a set of parameters that is common for all stations of the
network. Id. at 2:13–16. Thus, the ’392 patent states, transmission
opportunities are fairly allocated between all queues containing data
messages of the same priority level. Id. at Abstract.
C. Illustrative Claims
Of the challenged claims, claims 1, 7, 9, and 16 are independent.
Claim 1 is illustrative of the claims at issue:
1. A method comprising:
directing to a first output queue at a first station of a
communication network, message data units to be transmitted
over a communication medium and having a first traffic
classification;
directing to a second output queue at the first station,
message data units to be transmitted over the communication
medium and having a second traffic classification; and
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sensing the communication medium for an opportunity to
transmit message data units without interference from message
data units transmitted by a second station, according to sets of
rules that vary by traffic classification yet are common to the
first station and the second station.
Ex. 1001, 11:45–59.
D. Prior Art Supporting Instituted Unpatentability Grounds
Ayyagari ’508, U.S. 7,079,508 B2, issued July 18, 2006 (Ex. 1003).

Arun Ayyagari et al., IEEE 802.11 Quality of Service — White Paper,
IEEE 802.11-00/028, Feb. 15, 2000 (“Ayyagari White Paper”)
(Ex. 1005).

IEEE Standard for Information technology — Telecommunications
and information exchange between systems — Local and metropolitan
area networks — Specific requirements; Part 11: Wireless LAN
Medium Access Control (MAC) and Physical Layer (PHY)
Specifications, ANS/IEEE Std. 802.11 (1999) (“IEEE 802.11 1999”)
(Ex. 1009).

E. Instituted Unpatentability Grounds
We instituted an inter partes review of claims 1–21 of the ’392 patent
on the following grounds. Dec. 23.
References Basis Claim(s)
Challenged
Ayyagari ’508 § 102(e) 1–21
Ayyagari White Paper § 102(b) 1–9 and 11–21
Ayyagari White Paper and IEEE 802.11 1999 § 103(a) 10

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II. ANALYSIS
We have reviewed the Petition, the Patent Owner Response, and
Petitioner’s Reply, as well as the relevant evidence discussed in those
papers. The parties focus their arguments on whether the Ayyagari
references are prior art, and also on several terms or common limitations
present in certain claims of the ’392 patent, namely:
(A) attempting to initially transmit/as if (claims 4–6, 8, 13–15, and
19–21);
(B) “means for sensing” (claims 16–21);
(C) sensing a transmission opportunity (claims 9–15); and
(D) transmission at a particular opportunity (claims 2, 7, 11, and 17).
A. Claim Construction
The Board interprets claims in an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1277–79 (Fed. Cir. 2015), reh’g en banc denied, 2015 WL
4100060 (Fed. Cir. July 8, 2015); see also Office Patent Trial Practice
Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). Under that
construction, claim terms are given their ordinary and customary meaning,
as would be understood by one of ordinary skill in the art in the context of
the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
In the Decision to Institute, we construed various terms reciting
“means,” in claims 16–20: “means for directing to a first output queue,”
“means for directing to a second output queue,” “means for sensing,”
“means for allowing,” “means for attempting to retransmit,” “means for
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attempting to initially transmit,” and “means for attempting to transmit.”
Dec. 7–11. Patent Owner indicates that it does not contest the Board’s
constructions of the construed claim terms. PO Resp. 6. Petitioner relies on
these constructions in its Reply. Pet. Reply 9–13. Based on considering
anew the complete record now before us, we see no reason to alter our
earlier constructions, and maintain the constructions for this Final Written
Decision. We see no need to construe expressly any other claim limitations.
B. Summary of Prior Art
1. Ayyagari ’508 (Ex. 1003)
Ayyagari ’508 discloses providing “Quality of Service assurances in a
manner expected in other media to communications over paths that include
one or more wireless links.” Ex. 1003, Abstract. Ayyagari ’508 combines a
subnet bandwidth manager at an access point to track allocations of wireless
bandwidth, and “incorporates multiple priority levels for packet transmission
in a two-prong stochastic scheme.” Id. This scheme assures that data
packets are transmitted based on priority and prior failure to transmit due to
a collision. Id. at 3:56–57. Specifically, Ayyagari ’508 discloses that
“packets with a similar priority level are queued together to ensure earlier
transmission of higher priority packets than packets having lower priority.”
Id. at 5:30–33.
2. Ayyagari White Paper (Ex. 1005)
The Ayyagari White Paper notes “[w]hile IEEE 802.11 provides high
bandwidth connectivity in a LAN environment that is suitable for most data
applications, it does not meet Quality of Service (QoS) requirements for
real-time data traffic applications such as voice and video transmissions.”
Ex. 1005, 2. The Ayyagari White Paper proposes “the combined use of
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resource based admission and traffic flow control and expedited
transmission of higher priority data over the shared wireless network as the
mechanisms to provide QoS guarantee for real-time application data traffic
in IEEE 802.11.” Id. at Abstract. The Ayyagari White Paper depicts one
version of its proposed system of utilizing a tag that “carries one of eight
priority values that correspond to one of eight possible service levels” in
Figure 1. Id. at 5. In the Ayyagari White Paper, the network devices
“transmit the frames based on the non-gated head-of-line priority scheme
where transmission of the frame with the highest priority in the simple first
in first out (FIFO) priority queue is scheduled ahead of the rest of the queued
frames.” Id.
C. Priority Arguments
1. Prior Art Status of Ayyagari ’508
Certain dates relevant to this discussion are as follows, in reverse
chronological order:
’392 patent filing date August 31, 2001
Ayyagari ’508 filing date February 22, 2001
Wentink Declaration alleged reduction to practice by
January 2001
alleged conception date prior to
November 3, 2000
Ayyagari Provisional filing date February 23, 2000

a. Ayyagari Provisional
Petitioner states that “Ayyagari ’508 claims priority to U.S.
Provisional Application No. 60/184,290 (Ex. 1005), filed on February 23,
2000, which is also prior to the August 31, 2001 filing date of the ’392
patent, and thus is prior art under 35 U.S.C. §102(e).” Pet. 15–16. On its
face, Ayyagari ’508 discloses, under “Related U.S. Application Data,”
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“Provisional application No. 60/184,290, filed on Feb. 23, 2000.” Ex. 1003,
Cover Page. The Petition further states: “Analysis of the disclosure of
Provisional Application No. 60/184,290 (Exhibit 1005) with respect to the
claims of the ’392 patent, and thus the priority of the Ayyagari ’508 patent,
is included in the analysis of Ayyagari White Paper (Exhibit 1006), below.”
Pet. 16 n.2.
Patent Owner argues that “the Petition does not establish that the
portions of Ayyagari ’508 relevant to this IPR are entitled to the provisional
filing date.” PO Resp. 51. Patent Owner argues that, because Petitioner has
the burden of establishing the Ayyagari ’508 102(e) date, and because the
Petition does not set forth any evidence that Ayyagari ’508 is entitled to the
provisional filing date, Ayyagari ’508’s 102(e) date should be February 22,
2001 rather than February 23, 2000. Id. at 51–52.
The Petition provides one claim chart comparing the claims of the
’392 patent to Ayyagari ’508 (Pet. 17–36), and a separate claim chart
comparing the claims of the ’392 patent to the Ayyagari White Paper and
Ayyagari Provisional (Pet. 38–59). Petitioner also states that the “Ayyagari
White Paper is also substantively identical to Provisional Application
60/184,290 [the Ayyagari Provisional].” Pet. 37. In question, however, is
not the relationship of the Ayyagari Provisional to the Ayyagari White
Paper, but the relationship of Ayyagari ’508 to the Ayyagari Provisional.
With respect to entitlement to any earlier effective priority date, a
party must identify, specifically, the disclosure in ancestral applications
“which do not share the same disclosure,” and which allegedly show § 112
support for the relied-upon priority date. See, e.g., Polaris Wireless, Inc. v.
TruePosition, Inc., Case IPR2013-00323, slip. op. at 29 (PTAB Nov. 15,
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2013) (Paper 9). To link the Ayyagari Provisional with Ayyagari ’508,
Petitioner relates the claims of the ’392 patent to Ayyagari ’508, and then,
separately, relates the claims of the ’392 patent to the Ayyagari Provisional.
This triangulation does not meet Petitioner’s burden of showing that
Ayyagari ’508 is entitled to the earlier filing date of the Ayyagari
Provisional. Specifically, while the cited portions of the Ayyagari
Provisional and Ayyagari ’508 may each disclose a certain claim limitation,
the disclosures may be in different embodiments or contexts such that the
cited portion of the Ayyagari Provisional does not provide an adequate
ancestral basis for the cited portion of Ayyagari ’508. Petitioner should not
expect the Board to search the record and cull the evidence necessary to
support Petitioner’s arguments. Amazon.com, Inc. v. Personalized Media
Comm., LLC, Case IPR2014-01533, slip op. at 6 (PTAB April 20, 2015)
(Paper 16); cf., DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999)
(“A brief must make all arguments accessible to the judges, rather than ask
them to play archeologist with the record.”). Petitioner has not, in its case-
in-chief, linked the Ayyagari Provisional disclosure with the Ayyagari ’508
disclosure in a sufficient manner to meet its burden. Petitioner has not
shown that Ayyagari ’508 is entitled to a priority date any earlier than its
actual filing date of February 22, 2001.
b. Wentink Declaration
Petitioner also alleges that the Wentink Declaration and Exhibits,
submitted during prosecution of the ’392 patent, are insufficient to establish
any date of invention prior to the August 31, 2001, filing date of the ’392
patent. Pet. 4–5. The Wentink Declaration states that the date of conception
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was “[s]ome time before . . . November 3, 2000,” and alleges diligence until
its “eventual reduction to practice in January 2001.” Ex. 1002, 132, 134.
1

Patent Owner argues that the Wentink Declaration and supporting
evidence establish a conception and reduction to practice of the claimed
invention prior to the February 22, 2001 filing date of Ayyagari ’508.
PO Resp. 28. Narrowing the focus of its argument and relying on 37 C.F.R.
§ 1.131(b) and MPEP § 715.07(III)(A), which requires “(actual) reduction to
practice of the invention prior to the effective date of the reference,” Patent
Owner argues that the Wentink Declaration and evidence show an actual
reduction to practice by January 2001. Id. at 28–29, 47–51. Patent Owner
provides a claim chart comparing the ’392 patent claims to “Wentink’s Facts
and Evidence” to corroborate that Wentink had possession of each element
of the claimed invention prior to February 2001. Id. at 34–47. Notably,
however, apart from the Section 131 declaration, no declaration by or
deposition of Mr. Wentink are in the record. Petitioner’s argument in the
Patent Owner Response, and its claim chart, rely on the Tewfik Declaration
as support. Ex. 2004.
Petitioner responds that the Tewfik Declaration is “[t]he only possibly
relevant addition to the record” since the Decision to Institute, and that the
claim chart linking the claims to the Exhibits to the Wentink Declaration is
“facially deficient.” Pet. Reply 2. Petitioner argues that (1) Dr. Tewfik’s
stated understanding of the relevant legal standards is incorrect, in that one
cannot show alleged reduction to practice by showing possession of the

1
For the purposes of this Decision, we refer to Petitioner’s inserted page
numbers in Exhibit 1002, rather than the original page numbers of the
relevant documents.
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“heart of the invention” (id. at 3); (2) the Tewfik Declaration fails to discuss
the Board’s claim constructions with regard to the Wentink Declaration and
supporting exhibits (id.); (3) nothing in the Response “supplements, or
corroborates, the Wentink Declaration’s inadequate evidence of diligence,”
(id. at 4); (4) the only evidence suggesting Exhibit F represents a reduction
to practice of the claimed invention consists of the uncorroborated
statements in the Wentink Declaration (id.); and (5) Patent Owner takes the
position that Mr. Wentink need not be produced for cross-examination (id. at
4–5).
As we noted in our Decision to Institute, we are not bound by the
implicit determinations of the Examiner regarding the Wentink Declaration.
Dec. 12. Nevertheless, upon review of the complete record, we remain
unpersuaded by Patent Owner’s arguments that the reduction to practice date
is prior to the filing date of Ayyagari ’508.
Establishing an actual reduction to practice requires three things:
(1) construction of an embodiment or performance of a process that met all
the limitations of the claims; (2) determination that the invention would
work for its intended purpose; and (3) the existence of sufficient evidence to
corroborate inventor testimony regarding these events. Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006) (quoting Cooper v.
Goldfarb, 154 F.3d 1321, 1327, 1330 (Fed. Cir. 1998)); see Mahurkar v.
C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996). A rule of reason
applies to determine whether the inventor’s testimony has been
corroborated. Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993).
The Wentink Declaration provides exhibits showing activity at
specific times from October 2000 to January 2001, including Exhibit F, a
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presentation given in January 2001. Ex. 1002, 133–134. As is relevant to
Patent Owner’s actual reduction to practice argument, the inventor declares:
In January 2001, Greg Chesson did complete a simulator that
embodied the VDCF concepts within the D-QoS standard,
thereby actually reducing the invention to practice as reflected
in Exhibit F. Exhibit F, labeled “Simulation Results for QoS,
pDCF, VDCF, Backoff/Retry” and presented to the 802.11
Task Group E in January 2001, provides a number of test
results generated from the simulator. See slides 11, 20–23, and
27–34, for example.

Id. at 134. This alleged reduction to practice date of January 2001 would
have been prior to the filing date of Ayyagari ’508.
Patent Owner must establish reduction to practice of the subject
matter of each of the challenged claims. In our Decision to Institute, we
stated that the Wentink Declaration “does not appear to provide sufficient
detail relating VDCF as described in the Exhibits to the subject matter of
each of the challenged claims.” Dec. 14. In response, Patent Owner
provides the claim chart in its Response. PO Resp. 34–47.
We are concerned, primarily, at the unavailability of Mr. Wentink to
explain the alleged reduction to practice embodied in Exhibit F. In
evaluating a Patent Owner’s reliance on a declaration, we take into
consideration whether Petitioner has had an opportunity to cross-examine
the declarant. Amneal Pharms., LLC v. Endo Pharms. Inc., Case IPR2014-
00360, slip op. at 4 (PTAB December 3, 2014) (Paper 39). If Patent Owner
does not produce a declarant for cross-examination, we will give that
declaration little to no weight. See Mexichem Amanco Holdings S.A. de C.V.
v. Honeywell Int’l, Inc., Case IPR2013-00576, slip op. at 3 (PTAB Sept. 5,
2014) (Paper 36). Petitioner, upon requesting deposition availability for Mr.
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Wentink, was informed by Patent Owner that “[w]ith respect to Mr.
Wentink, Patent Owner does not believe it is required, under the rules, to
produce Mr. Wentink for deposition.” Ex. 1017 (corrected), 1. No further
explanation of Patent Owner’s interpretation of the rules, or regarding
availability of Mr. Wentink for deposition, is before us. Although we have
no reason to question Dr. Tewfik’s credentials, his value as a witness is
compromised heavily by his distance from and post hoc evaluation of the
circumstances of the alleged reduction to practice of the invention. Patent
Owner is correct that it was not required, under the rules, to make Mr.
Wentink available for cross-examination. Under these circumstances,
however, we accord Mr. Wentink’s declaration little weight.
The Wentink Declaration states that Exhibit E, a presentation given to
the IEEE 802.11 Task Group E in November 2000, set forth a baseline
proposal for the D-QoS mechanism. Id. at 133. The Wentink Declaration
further states that “[a]s part of the Task Group E efforts, Greg Chesson
prepared a simulator that embodied concepts proposed to be incorporated
within the D-QoS standard.” Id. The statement that the simulator
“embodied concepts proposed to be incorporated” is insufficient to
demonstrate that all the limitations of the ultimately claimed invention were
to be tested. With no further testimony from Mr. Wentink, the relationships
among the Exhibit E proposal, the Exhibit F results, and the ultimately
claimed invention remain unclear. Thus, we are not persuaded that Mr.
Wentink’s testimony supports sufficiently an actual reduction to practice, as
it does not persuasively support construction of an embodiment or
performance of a process that met all the limitations of the claims, or a
determination that the invention would work for its intended purpose.
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Furthermore, we are not persuaded that the testimony of Dr. Tewfik
corroborates sufficiently the Wentink Declaration, or in and of itself meets
the first and second requirements of proof of actual reduction to practice.
See Medichem, S.A., 437 F.3d at 1169. As we noted, Dr. Tewfik’s value as a
witness is limited by his post hoc evaluation of the circumstances and the
content of the invention. Dr. Tewfik takes the various Exhibits proffered in
the Wentink Declaration and applies them to the subject claims. Although
the various Exhibits, as marshalled by Dr. Tewfik, may provide bits and
pieces of the ultimately claimed invention, we do not, without further
information about the links between the Exhibits, place much weight on the
claim chart provided in the Response. We agree with Petitioner that Patent
Owner has provided “no additional information regarding what simulation
was performed, whether the simulation included all the claim limitations, or
even whether any physical embodiment that incorporated or could perform
the claim limitations existed prior to the filing of the application for either
Ayyagari [’]508 or the [’]392 Patent itself.” Pet. Reply 4. Dr. Tewfik could
not determine the technical content of the simulation, which is discussed
broadly in Exhibit F, and did not examine any code for the simulation to
determine what it actually did. Id. (citing Ex. 1018, 13:12–21, 24:17–25:5).
We have considered all of Patent Owner’s arguments and evidence in
support of the effort to antedate Ayyagari ’508. We find that Patent Owner
has not carried its burden of producing sufficient evidence and corroboration
to demonstrate a reduction to practice date prior to February 2001.
Therefore, because the Ayyagari ’508 filing date is prior to the ’392 patent
filing date, Ayyagari ’508 constitutes prior art in this proceeding.
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2. Prior Art Status of the Ayyagari White Paper
Petitioner alleges that the Ayyagari White Paper “was published to the
IEEE database of 802.11 WG documents on January 25, 2000.” Pet. 36.
With its Petition, Petitioner submitted Exhibit 1005 (Ayyagari White Paper)
that on its face indicates “Date: February 15, 2000,” and Exhibit 1006 (IEEE
802.11 Documents) identifying the Ayyagari paper as “Uploaded” on
February 25, 2000. Ex. 1006, 7. We noted in the Decision to Institute that
none of these alleged publication dates removes the Ayyagari White Paper
as a reference under § 102. Dec. 17.
Patent Owner alleges that the Petition fails to establish that the
Ayyagari White Paper is prior art, as the Petition and the expert’s
“conclusory statements, unsubstantiated by any documentary evidence or
testimonial evidence of anyone with knowledge of the alleged publication of
Ayyagari White Paper, are entitled to no weight.” PO Resp. 54. Patent
Owner argues that Petitioner has not met its burden to show that Ayyagari
White Paper is a “printed publication” and cannot rely upon evidence raised
in its Reply to establish that Ayyagari White Paper is prior art. Id.
Petitioner responds that the Ayyagari White Paper (i) on its face,
demonstrates that it was submitted as of February 15, 2000; (ii) was
published to the IEEE 802.11 Working Group database at least as of
February 25, 2000, as shown in Exhibit 1006, and (iii) that Patent Owner has
failed to provide additional evidence to change the Board’s initial
determination that the Ayyagari White Paper is prior art. Pet. Reply 5.
Petitioner submits testimony that “all submissions (as opposed to draft
standards) uploaded to the IEEE’s database were publicly available via an
IEEE-maintained FTP site or website, and any member of the public
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interested in submissions to any task group could access those submissions
at the FTP site or website.” Id. at 5–6 (citing Declaration of Harry Worstell,
Vice Chair of the IEEE 802.11 Working Group from 2000 to 2008, Ex.
1010, 4); see also Exs. 1013, 1014. The Ayyagari White Paper itself,
according to the testimony of Mr. Worstell, “would have been publicly
available as of the upload date and time February 25, 2000 at 7:56:48 AM
(Eastern Time) or within a few days thereafter.” Id. at 6 (citing Ex. 1010, 6).
Although the ultimate determination of whether a document is a
printed publication is a question of law, it is a question that is closely based
on the underlying facts and circumstances surrounding the disclosure of a
document to members of the public. Suffolk Techs., LLC v. AOL Inc., 752
F.3d 1358, 1364 (Fed. Cir. 2014); SRI Int’l, Inc. v. Internet Sec. Sys., Inc.,
511 F.3d 1186, 1192 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345,
1350 (Fed. Cir. 2004). Public accessibility is a key question in determining
whether a document is a printed publication and is determined on a case-by-
case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed
publication, a document “must have been sufficiently accessible to the
public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
2009).
“A given reference is ‘publicly accessible’ upon a satisfactory
showing that such document has been disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence, can locate it.” SRI
Int’l, 511 F.3d at 1194 (quoting Bruckelmyer v. Ground Heaters, Inc., 445
F.3d 1374, 1378 (Fed. Cir. 2006)).
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The Ayyagari White Paper, on its face, has a date of February 15,
2000. Ex. 1005, 1. The IEEE 802.11 Documents webpage indicates that the
Ayyagari White Paper was uploaded on February 25, 2000. Ex. 1006, 7.
The question of whether the upload rendered the Ayyagari White Paper
publicly accessible was addressed persuasively by Petitioner’s deponent
Harry Worstell, and not challenged by Patent Owner. To that end, we
determine that evidence submitted with Petitioner’s Reply is properly before
us because (1) the Petition provided sufficient evidence to make at least an
initial determination that the Ayyagari White Paper was publicly accessible;
(2) the evidence was submitted in reply to Patent Owner’s arguments; and
(3) Patent Owner had an opportunity to challenge the evidence, in particular,
the opportunity to cross-examine Mr. Worstell.
The evidence submitted with the Petition, and supplemented with
properly submitted evidence, supports that the Ayyagari White Paper was
publicly available as of at least February 25, 2000. The IEEE reference, as
explained by Mr. Worstell, illustrates that the linked document was
disseminated or otherwise made available to the extent that persons
interested and ordinarily skilled in the subject matter or art exercising
reasonable diligence could locate it. Ex. 1010, 4. We conclude that the
Ayyagari White Paper was published at least as early as February 25, 2000,
for the same reasons explained in the Decision to Institute. Patent Owner on
this complete record does not show persuasively that the sources Petitioner
relies upon to show a publication date are incorrect. Accordingly, we
determine that Petitioner has met its burden of showing that the Ayyagari
White Paper is prior art to the ’392 patent.
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D. Analysis of Unpatentability Challenges
Group A: Claims 4–6, 8, 13–15, and 19–21:
Attempting to Transmit/As If
Claims 4–6, 13–15, and 19–21 of the ’392 patent each require
attempting to “initially transmit a first message data unit . . . as if an
unsuccessful attempt to transmit the first message data unit had already been
made during a previous transmission opportunity.” PO Resp. 7 (citing Ex.
2004 ¶ 31). Patent Owner argues that neither Ayyagari reference discloses
this limitation, as the Ayyagari system is not concerned with “internal
collisions” or pre-emption. Id. at 8.
Patent Owner characterizes “internal collision” or pre-emption as a
situation in which a “single station with multiple schedulers could possibly
attempt to transmit messages from multiple queues within that station at the
same time.” Id. at 2. Patent Owner calls this scenario an “internal collision”
because “it is similar to an ‘external collision’ in which multiple stations in
the network attempt to transmit messages at the same time.” Id. Petitioner
characterizes an “internal collision” as the situation in which, “when two
queues within a station have data that are ready to transmit at the same time,
the scheduling coordination function in the station will pick one packet from
one queue (the higher priority queue) and identify it as the packet to be
transmitted.” Pet. Reply 7.
Patent Owner states that, in relation to this limitation, “this message
that’s being preempted, is going to be treated as if it’s already tried to go out
and access the medium, and it’s been backed off.” Tr. 29:16–18. Patent
Owner emphasizes that the “initially transmit” language is important, in that
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before the message that is being preempted has even “gone out and been
interfered with” it is given the backoff treatment. Id. at 35:10–12.
1. Ayyagari ’508
Petitioner relies on the following language in Ayyagari ’508 to
disclose the disputed limitation: “a packet with higher priority than a packet
waiting during step 640 may be transmitted if the higher priority packet has
a shorter wait time even if it results in the superseded packet being forced
into another backoff state.” Pet. 22 (citing Ex. 1003, 13:61–65).
Patent Owner argues that Petitioner’s claim charts fail to show where
in Ayyagari ’508 the “attempting to initially transmit” limitation is found.
PO Resp. 8–9. Patent Owner alleges that Ayyagari ’508 merely describes
successful transmissions and unsuccessful transmissions, which does not
teach or suggest “attempting to initially transmit.” Id. at 10. Patent Owner
criticizes the portion of Ayyagari ’508 cited by Petitioner above (Ex. 1003,
13:61–65) as merely reciting “a characteristic of a communication system
that prioritizes packets.” Id. at 11. According to Dr. Tewfik, this passage
indicates that the transmission of a higher priority packet before a lower
priority packet “sometimes causes the lower priority packet to enter another
backoff state and that a lower priority packet with a short time to live may be
transmitted before a higher priority packet to save the lower priority packet
from being discarded.” Ex. 2004 ¶ 36.
Petitioner maintains that the above-quoted sentence of Ayyagari ’508
discloses the “attempting to initially transmit” limitation. Pet. Reply 8
(citing Ex. 1003, 13:61–65; Ex. 1019 ¶¶ 7–15, 20–21). Dr. Roy opines that
a person of ordinary skill in the art “would understand this passage to plainly
disclose that when two packets are ready for transmission at the same time,
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the higher priority packet will be transmitted and the lower priority packet
will be forced into another backoff state.” Ex. 1019 ¶ 21. In Ayyagari ’508
the “internal” and “external” collisions are treated similarly, according to
Petitioner. Pet. Reply 8.
We credit Dr. Tewfik’s testimony that the quoted sentence of
Ayyagari ’508 simply “describes a buffer management strategy that
transmits a higher priority packet before a lower priority packet, without
regard to the potential consequence that the lower priority packet may be
forced into another backoff state because it was not transmitted first.”
Ex. 2004 ¶ 38. The sentence focuses on the transmission of the higher
priority packet, without much concern for the consequences to the lower
priority packet. We are not persuaded by Petitioner’s contentions that the
“even if” language means that Ayyagari ’508 “clearly describes superseding
the lower priority queue and backing it off.” Tr. 7:16–18. We agree with
Patent Owner that the “even if” language demonstrates that the result of a
superseded packet being forced into another backoff state is simply a
possibility, not an automatic occurrence. PO Resp. 12.
We also do not discern any persuasive evidence that the feature of
“attempting to initially transmit a first message data unit from the second
output queue” as if an unsuccessful attempt to transmit the first message data
unit had already been made is disclosed in Ayyagari ’508 in a manner
sufficient to support an anticipation position. A plain reading of the portions
of Ayyagari ’508 quoted by Petitioner does not yield an answer to the
“initially transmit” question. Reading an “attempting to initially transmit”
limitation into the sentence quoted by Petitioner (Ex. 1003, 13:61–65) would
credit Ayyagari ’508 with more complexity than that sentence actually
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provides. The quoted sentence of Ayyagari ’508 does not indicate whether
the superseded packet is being initially transmitted; it would appear that it is
not, because it is being forced into “another backoff state.” Altogether,
Petitioner’s evidence is insufficient to support Petitioner’s anticipation
argument concerning the aforementioned claim limitation.
2. Ayyagari White Paper
Patent Owner argues that the portions of the Ayyagari White Paper
relied upon by Petitioner do not support Petitioner’s allegation that the
Ayyagari White Paper discloses the attempting to initially transmit claim
limitations. PO Resp. 13. The statements on which Petitioner relies,
according to Patent Owner, do not explicitly state that any attempt is made
to initially transmit a message as if it had already had an unsuccessful
transmission attempt. Id. at 14. In fact, Patent Owner argues, certain
language relied upon by Petitioner regarding incrementation of initial value
of aCWmin undermines Petitioner’s assertions. Id. at 16.
Petitioner argues that the Ayyagari White Paper includes the same
treatment of “external collisions” as the existing 802.11 MAC protocol. Pet.
Reply 8. Regarding “internal collisions,” Petitioner argues that the Ayyagari
White Paper’s explanation that transmission of a frame with the highest
priority is scheduled ahead of the rest of the queue frames informs one of
skill in the art that, when two packets simultaneously are ready for
transmission, the scheduling coordination function forces the lower priority
packet to defer to the higher priority packet, such that the lower priority
packet enters a backoff state. Id.
We are unpersuaded by Petitioner’s arguments, for reasons similar to
those discussed supra relative to Ayyagari ’508. There is no persuasive
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evidence that “attempting to initially transmit a first message data unit from
the second output queue,” as if an unsuccessful attempt to transmit the first
message data unit had already been made, is disclosed expressly in the
Ayyagari White Paper in a manner sufficient to support an anticipation
position. Even if we were to read the Petitioner’s quoted FIFO transmission
situation (Ex. 1005, 5) as an attempt at initial transmission of a lower
priority message, there is no indication that the lower priority packet in the
Ayyagari White Paper scenario is being treated as if an unsuccessful attempt
to transmit it had already been made.
Petitioner’s citation to the portion of the Ayyagari White Paper
explaining determination of the backoff period and CW parameters also fails
to address the “attempting to initially transmit” limitation. Pet. 44–46; Ex.
2004 ¶¶ 45–46. We agree with Dr. Tewfik that the quoted sentence, “[t]he
CW parameter takes an initial value of aCWmin that is incremented upon
each consecutive unsuccessful transmission attempt by a STA,” discusses
unsuccessful transmission attempts, rather than an attempt to initially
transmit. Ex. 2004 ¶ 46; Ex. 1005, 7.
3. Claim 8
Patent Owner argues that the “attempting to transmit limitation of
Claim 8 essentially states that a message preempted by an internal collision
is backed off as if it had suffered an external collision.” PO Resp. 18.
Patent Owner further argues that Petitioner agrees that “the attempting to
transmit limitation of Claim 8 is, for purposes of this IPR, essentially the
same as the attempting to initially transmit limitation of Claim 4.” Id (citing
Pet. 12; Ex. 2004 ¶ 49). Petitioner does not specifically address claim 8 in
its Reply.
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Claim 8 is unlike the remainder of the Group A claims in that its
language, “attempting to transmit a message data unit from the second
output queue, over which a message data unit from the first output queue
was preferentially transmitted, after an interval of random duration
applicable to retransmission of an externally colliding message data unit at
the second level of priority” (Ex. 1001, 47–52) does not mention “attempting
to initially transmit.” However, our discussion of the “even if” language of
Ayyagari ’508 applies to claim 8, in that Petitioner has not established that
the “even if” language clearly describes forcing the lower priority packet
into a backoff state. Pet. 27 (referring to claim 4 analysis). Similarly, our
foregoing analysis of the backoff state outlined in the Ayyagari White Paper
applies to claim 8, in that the Ayyagari White Paper discusses actual
unsuccessful transmission attempts, rather than imposing an interval of
random duration applicable to retransmission of an externally colliding
message data unit. Pet. 50 (referring to claim 4 analysis).
On this record, we are not persuaded that Petitioner has shown, by a
preponderance of the evidence, that Ayyagari ’508 or the Ayyagari White
Paper anticipate claims 4–6, 8, 13–15, and 19–21of the ’392 patent.
Group B: Claims 16–21: “Means for Sensing”
Regarding the “means for sensing” limitation, Patent Owner argues
that Figure 3 of the ’392 patent illustrates that “one fundamental aspect of
the invention of Claims 16–21 is that each queue has its own scheduler.”
PO Resp. 19. Conversely, Patent Owner argues, the Ayyagari references
“imply that each station employs a single scheduler that schedules all of the
queues of the station.” Id. at 20. Patent Owner argues that Ayyagari ’508’s
scheme schedules just one queue for transmission during a particular
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transmission opportunity. Id. Patent Owner argues that the Ayyagari White
Paper discloses a “head-of-line priority scheme to schedule which queue will
transmit a message.” Id.
Petitioner argues that, contrary to Patent Owner’s position that the
“means for sensing” limitation requires separate schedulers for each queue,
as allegedly shown in Figure 3, the ’392 patent allows that a single scheduler
can be used to coordinate all queues. Pet. Reply 11–12 (citing Ex. 1001,
6:14–19). Petitioner argues that both Ayyagari ’508 and the Ayyagari White
Paper disclose each part of the algorithms, as adopted by the Board, for the
“means” limitations, as shown by Petitioner’s chart. Pet. Reply 9–11.
We have reviewed the evidence presented by the parties and are not
persuaded that the ’392 patent requires a separate scheduler for each queue.
In our construction of the “means for sensing” limitation, we included the
step that “each output queue competes for transmission opportunities using a
coordinated scheduling function.” Dec. 10 (citing Ex. 1001, 6:46–7:1).
According to Patent Owner, “CF Schedulers” 52[0], 52[1], through 52[n],
shown in Figure 3, are part of this structure. PO Resp. 19 (citing Ex. 2004
¶ 50). Although Figure 3 shows these CF Schedulers as separate boxes, they
all are located within a bigger box identified as Media Access and
Scheduling Coordination Function. Located adjacent the Media Access and
Scheduling Coordination Function box is another box, within which are
separate boxes identified as Queue[0], Queue[1] . . . Queue[n]. Nothing
diagrammatically connects the Media Access and Scheduling Coordination
Function box with the box containing the Queues.
We are persuaded that a person of ordinary skill in the art would
understand Figure 3 to mean that “a single software function coordinates
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scheduling operations for all of the queues,” because “within a single station,
there necessarily must be coordination and sharing of information between
the separate queues.” Ex. 1019 ¶ 10 (cited in Pet. Reply 12). Dr. Roy
further testifies that the boxes 52[0], 52[1], through 52[n] are “components
that perform the scheduling function” but that that the “entire box . . . is
more appropriately identified as the complete scheduler for ’392.” Ex. 2007,
11:10–19. We do not agree with Patent Owner that Figure 3 shows “that
each queue has its own scheduler.” PO Resp. 18–19 (citing Ex. 2004 ¶ 50).
As set forth in the Specification, scheduler 52, which is not specifically
identified in Figure 3, “prioritizes the transmission of data message units
from each queue in accordance with a defined access control algorithm.”
Ex. 1001, 6:14–19 (emphasis added). This disclosure, read together with the
other disclosures, provides for separate treatment for each queue, but with a
single scheduler.
We are persuaded by Petitioner’s evidence that both Ayyagari ’508
and the Ayyagari White Paper disclose each part of the algorithms for the
“means for sensing” limitation.
Group C: Claims 9–15: Sensing a Transmission Opportunity
Patent Owner argues that plain meaning of the limitation “a
transceiver operative to . . . sense the communication medium for an
opportunity to transmit the message data units from each of the first and
second output queues” of claims 9–15 is that the system must sense the
medium for a transmission opportunity for each output queue, not just one of
the queues. PO Resp. 21. Patent Owner relies on Figure 7 of the ’392 patent
to illustrate its contention that algorithm step 102 tests each queue prior to
determining which queue has the highest priority and will transmit. Id. at
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22–23. Patent Owner further argues that the Specification makes clear that
“sensing the medium is done before checking whether higher priority queues
have a message scheduled for transmission, meaning that the medium is
sensed for a transmission opportunity for each queue—even queues that are
preempted by a higher priority queue.” Id. at 23–24.
Regarding the two asserted references, Patent Owner argues that both
Ayyagari ’508 and the Ayyagari White Paper “implicitly disclose[ ] a system
that schedules only one queue to transmit a message at a time and senses the
medium for a transmission opportunity only for the scheduled queue.”
PO Resp. 24–25, 26. Each situation disclosed in Ayyagari ’508, according
to Patent Owner, “share[s] the common attribute that they all ensure that just
one queue is scheduled for transmission during each transmission
opportunity.” Id. at 25. The Ayyagari White Paper, according to Patent
Owner, discloses a “head-of-line priority scheme,” which is a simple FIFO
queue that schedules one queue to transmit a frame during a particular
transmission opportunity. Id. at 26.
Petitioner argues that “Patent Owner misreads the claim language as
requiring a separate scheduler for each queue, and contends that the
transceiver must sense the communication medium separately for each
queue.” Pet. Reply 13. Petitioner interprets the ’392 patent as requiring a
single transceiver that listens to (“senses”) the communications medium for
opportunities to transmit messages from the station. Id. at 13. Petitioner
argues that “Patent Owner’s reliance on internal functions performed at the
separate queues, after the transceiver has sensed a transmission opportunity,
is simply misplaced.” Id. at 14. In this light, Petitioner maintains that both
Ayyagari references disclose a transceiver operative to determine whether
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the communication medium is busy or idle, and the various operations for
evaluating which queue ultimately attempts to transmit data. Id.
We are unpersuaded that the language of the claims requires a
transceiver that acts as Patent Owner urges. The transceiver is operative to
sense the communication medium for an opportunity to transmit. Ex. 1001,
13:1–3. Patent Owner argues that the transceiver senses the communication
medium for an opportunity to transmit the message data units from each of
the first and second output queues, but we can find no requirement that it
must do so separately for the first and second output queues. The
transceiver simply senses the communication medium for an opportunity to
transmit message data units, regardless of where they originate, that are
available for transmission. As described in the ’392 patent, “[o]nly when a
station has determined [via the transceiver] that the medium has been idle
for this required duration may it attempt to transmit any of the data messages
within its data buffers (queues) 34.” Ex. 1001, 6:31–34, Fig. 2 (showing
Data Buffers (Queues) 34 and Transceiver 40). The Specification does not
require sensing an opportunity to transmit from each of the first and second
output queues, but rather from “any of the data messages within its data
buffers.”
We credit Dr. Roy’s testimony that “both Ayyagari references
disclose a transceiver operative to determine whether the communication
medium is busy or idle.” Ex. 1019 ¶ 35. Ayyagari ’508 discloses a node
that listens to the communication medium for a predetermined interval.
Ex. 1003, 12:25–29. The Ayyagari White Paper discloses a CSMA/CA
protocol, in which a transceiver senses the medium to determine whether the
medium is busy. Pet. 53 (citing Ex. 1005, 2). This alone would meet the
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limitation of the claim language, as we understand it. Even taking it a step
further, as Patent Owner urges, and requiring that that each queue effectively
be informed of a transmission opportunity by the transceiver, the
transceivers of Ayyagari ’508 and the Ayyagari White Paper coordinate the
input from the transceiver with the internal scheduling functions to queue up
a packet for transmission. Ayyagari ’508 discloses a contention resolution
scheme, coupled with a scheme for queueing packets, to transmit a packet
based on information from the transceiver. Ex. 1003, 13:57–59. The
Ayyagari White Paper discloses a non-gated, head of line priority scheme to
schedule frame transmissions. Ex. 1005, 5–7.
Thus, we are persuaded that Petitioner has shown, by a preponderance
of the evidence, that the “transceiver operative to sense the communication
medium for an opportunity to transmit the message data units” claim
limitation is met both by Ayyagari ’508 and the Ayyagari White Paper.
Group D: Claims 2, 7, 11, and 17:
Transmission at a Particular Opportunity
Claims 2, 7, 11, and 17 each require that messages “be transmitted
during a particular opportunity to transmit,” according to certain sets of
rules.
Patent Owner argues that the Ayyagari systems always avoid the
situation in which “the first and second output queues each contain message
data units scheduled to be transmitted during a particular opportunity to
transmit,” because both Ayyagari references disclose a system that schedules
only one message in one queue to be transmitted during a particular
transmission opportunity. PO Resp. 27.
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Petitioner responds that both Ayyagari references disclose procedures
for handling Patent Owner’s so-called “internal collisions.” Pet. Reply 15.
Specifically, Petitioner argues that in both references, higher priority packets
are scheduled to transmit, while lower priority messages are forced into a
backoff state. Id.
In this instance, we agree with Petitioner that both Ayyagari
references specifically contemplate and disclose the scenario in which two
queues have data that is ready to be transmitted at the same time. See
Ex. 1019 ¶¶ 21–22, 39 (citing Ex. 1003, 13:61–65; Ex. 1005, 5).
On this record, we are persuaded by Petitioner’s arguments that
Ayyagari ’508 and the Ayyagari White Paper, by a preponderance of the
evidence, anticipate claims 2, 7, 11, and 17 of the ’392 patent.
E. Remaining Claim Elements; Claims 1, 3 and 10
We have reviewed the arguments presented in the Petition and the
supporting evidence regarding the anticipation of claims 1, 3, and 10, and
obviousness of claim 10, which were not disputed by Patent Owner in its
Response. Pet. 15–21, 29, 36–43, 52–53. Patent Owner, in its Response,
relies solely on its arguments and evidence concerning claims 2, 4–9,
and 11–21. See generally PO Resp. In the Scheduling Order, we cautioned
Patent Owner that any arguments for patentability not raised in the Response
would be deemed waived. Paper 14, 3. After reviewing of the arguments
and evidence presented concerning the remaining claims 1, 3, and 10, we
determine, by a preponderance of the evidence, that Ayyagari ’508 expressly
discloses the elements of claims 1, 3, and 10; the Ayyagari White Paper
expressly discloses the elements of claims 1 and 3; both references each
disclose the remaining claim elements of disputed independent claim 9, from
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which claim 10 depends; and that the combination of the Ayyagari White
Paper and IEEE 802.11 1999 renders obvious each and every limitation of
claim 10. We conclude that claims 1, 3, and 10 are anticipated by Ayyagari
’508, claims 1 and 3 are anticipated by the Ayyagari White Paper, and claim
10 is obvious in view of Ayyagari White Paper and IEEE 802.11 1999.
F. Real Parties in Interest
The Petition, in its real-party-in-interest section, identified Google as
a party that holds more than a 10% interest of Petitioner. Dec. 6. In the
Decision to Institute, we determined that the Petition sufficiently identified
all real parties-in-interest pursuant to 35 U.S.C. § 312(a)(2). Id. at 7. Patent
Owner argues that the Decision to Institute relies on a legally incorrect
interpretation of the statute. PO Resp. 59. In its Response, Patent Owner
presents no substantially new arguments that require revisiting our
determination regarding identification of real parties-in-interest. We,
therefore, decline to dismiss the Petition for the same reasons given in the
Decision to Institute.
G. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude (Paper 35, “Mot. to Excl.”),
to which Petitioner responded (Paper 41, “Resp. to Mot. to Excl.”) and on
which Patent Owner filed a Reply (Paper 43, “Reply on Mot. to Excl.”).
Patent Owner’s motion seeks to exclude (i) Exhibit 1005 (Ayyagari White
Paper) as lacking foundation, irrelevant and hearsay; (ii) Exhibit 1006 (IEEE
Standards Association Website Printout) as irrelevant and confusing; (iii)
paragraphs 23 and 59 of Exhibit 1008 and paragraph 6 of Exhibit 1019 (Dr.
Roy’s Declarations) as deficient for lack of personal knowledge; (iv) Exhibit
1010 as untimely, and paragraphs 13–15 for lack of personal knowledge; (v)
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Exhibits 1013 and 1014 as untimely and hearsay; and (vi) Exhibits 1016 and
1017 as irrelevant and likely to confuse issues. Mot. to Excl. 1–15.
Petitioner argues that none of the evidence objected to by Patent Owner
should be excluded. Resp. to Mot. to Excl. 1–15.
We do not rely upon paragraphs 23 and 59 of Exhibit 1008, paragraph
6 of Exhibit 1019, or Exhibit 1016 in our present determination. We
therefore need not decide the Motion to Exclude as to those Exhibits; it is
dismissed as moot.
The moving party has the burden of proof to establish that it is entitled
to the requested relief. 37 C.F.R. § 42.20(c). A motion to exclude is neither
a substantive sur-reply, nor a proper vehicle for arguing whether a reply or
supporting evidence is of appropriate scope. Zynga Inc. v. Personalized
Media Commc’ns, LLC, IPR2013-00162, slip op. at 3 (PTAB Aug. 28,
2013) (Paper 15); Berk-Tek LLC v. Belden Tech., Inc., IPR2013-00057, slip
op. at 3 (PTAB Oct. 31, 2013) (Paper 39).
Patent Owner’s objections to Exhibits 1005, 1006, 1010, 1013, 1014,
and 1017 go more to the weight that the information disclosed therein should
be afforded, rather than to its admissibility. It is within our discretion to
assign the appropriate weight to be accorded to the information in Exhibits
1005, 1006, 1010, 1013, 1014, and 1017. The Board, sitting as a non-jury
tribunal with administrative expertise, is well-positioned to determine and
assign appropriate weight to evidence presented. Gnosis S.P.A. v. S. Ala.
Med. Sci. Found., IPR2013-00118, slip op. at 43 (PTAB June 20, 2014)
(Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th
Cir. 1941) (“One who is capable of ruling accurately upon the admissibility
of evidence is equally capable of sifting it accurately after it has been
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received.”). We, thus, decline to exclude Exhibits 1005, 1006, 1010, 1013,
1014, and 1017. Moreover, we agree with Petitioner that Exhibits 1010,
1013, and 1014 are evidence that properly responds to arguments made by
Patent Owner in its Response. Resp. to Mot. to Excl. 11, 12–14; 37 C.F.R.
§ 42.23.
Regarding Exhibit 1006, we are persuaded by Petitioner’s arguments
that the testimony of Mr. Worstell (Ex. 1010) authenticates Exhibit 1006.
Resp. to Mot. to Excl. 7–8. Similarly, we are persuaded that Exhibit 1010,
paragraphs 13–15, reflect testimony based on Mr. Worstell’s personal
knowledge and should not be excluded.
Accordingly, the Motion to Exclude is dismissed as to paragraphs 23
and 59 of Exhibit 1008, paragraph 6 of Exhibit 1019, and Exhibit 1016, and
denied as to Exhibits 1005, 1006, 1010, 1013, 1014, and 1017.
SUMMARY
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1–3, 7, 9–12, and 16–18 of the ’392 patent are unpatentable under 35
U.S.C. § 102(e) as anticipated by Ayyagari ’508, that claims 1–3, 7, 9, 11–
12, and 16–18 are unpatentable under 35 U.S.C. § 102(b) as anticipated by
the Ayyagari White Paper, and that claim 10 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over the Ayyagari White Paper and IEEE 802.11 1999.
Petitioner has not demonstrated, by a preponderance of the evidence, that
claims 4–6, 8, 13–15, and 19–21 of the ’392 patent are unpatentable under
35 U.S.C. § 102(e) as anticipated by Ayyagari ’508 or unpatentable under 35
U.S.C. § 102(b) as anticipated by the Ayyagari White Paper. This is a Final
Written Decision of the Board under 35 U.S.C. § 318(a).
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ORDER
For the reasons given, it is
ORDERED that Patent Owner’s Motion to Exclude is dismissed as to
Paragraphs 23 and 59 of Exhibit 1008, Paragraph 6 of Exhibit 1019, and
Exhibit 1016, and denied as to Exhibits 1005, 1006, 1010, 1013, 1014, and
1017;
FURTHER ORDERED that claims 1–3, 7, 9–12, and 16–18 of the
’392 patent are unpatentable;
FURTHER ORDERED that claims 4–6, 8, 13–15, and 19–21 of the
’392 patent are patentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this final written decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

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FOR PETITIONER:

Mitchell Stockwell
Theodore G. Brown III
Christopher Schenck
John Alemanni
KILPATRICK TOWNSEND & STOCKTON LLP
mstockwell@kilpatricktownsend.com
tbrown@kilpatricktownsend.com
cschenck@kilpatricktownsend.com
jalemanni@kilpatricktownsend.com

FOR PATENT OWNER:

Brenton R. Babcock
Ted M. Cannon
KNOBBE, MARTENS, OLSON & BEAR, LLP
2BRB@knobbe.com
2tmc@knobbe.com