EMC Corporationv.ACQIS LLC

Patent Trial and Appeal Board

Mar 4, 2015

11545056 (P.T.A.B. Mar. 4, 2015)

Trials@uspto.gov Paper 12
571–272–7822 Entered: March 4, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

EMC CORPORATION,
Petitioner,

v.

ACQIS LLC,
Patent Owner.
_______________

Case IPR2014-01452
Patent RE43,171 E
_______________

Before MICHAEL P. TIERNEY, MICHAEL J. FITZPATRICK, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
EMC Corporation (“Petitioner”) filed a Petition
1
(Paper 2; “Pet.” or
“Petition”) requesting inter partes review of claims 24, 29–32, 34, and 35 of
U.S. Patent No. RE43,171 E (Ex. 1001; “the ’171 patent”). ACQIS LLC
(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 9
(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which
provides that an inter partes review may not be instituted “unless . . . there is
a reasonable likelihood that the petitioner would prevail with respect to at
least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
For the reasons set forth below, Petitioner does not demonstrate a
reasonable likelihood of prevailing in showing the unpatentability of claims
24, 29–32, 34, and 35 of the ’171 patent. Accordingly, the Petition is
denied, and no trial is instituted.
A. Related Proceedings
The parties indicate that the ’171 patent is at issue in the following
district court cases: ACQIS LLC v. Alcatel-Lucent USA, Inc., No. 6:13-cv-
00638 (E.D. Tex.); ACQIS LLC v. EMC Corp., No. 6:13-cv-00639 (E.D.
Tex.); ACQIS LLC v. Ericsson, Inc., No. 6:13-cv-00640 (E.D. Tex.); and
ACQIS LLC v. Huawei Technologies Co., No. 6:13-cv-00641 (E.D. Tex.).
Pet. 57; Paper 7, 2.
B. The ’171 Patent
The ’171 patent is a reissue of U.S. Patent No. 6,643,777 (“the ’777
patent”). See Ex. 1001. The ’777 patent relates to computer systems that

1
Petitioner filed a corrected petition (Paper 5) without a motion or
authorization. See 37 C.F.R. § 42.104(c). For purposes of this decision, we
rely on the first filed petition (Paper 2).
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provide improved security features to prevent illegal or unauthorized access
to information. Id. at col. 3, ll. 30–46. The reissue application that issued as
the ’171 patent added Figures 9–14, the written description at column 13,
line 41 to column 17, line 62, and claims 14–66. Id. at col. 4, l. 64–col. 5, l.
10, col. 13, l. 41–col. 24, l. 43. The figures, written description, and claims
added during reissue relate to interfacing two Peripheral Component
Interconnect (“PCI”) buses using a non-PCI channel. Id. at col. 13, ll. 41–
43, Fig. 9. More specifically, PCI address and data bits are encoded and
then converted from a parallel format to a serial format. Id. at col. 15, ll. 12–
15, Fig. 10. The information is transmitted in a serial format over a non-PCI
channel, and, when received, the information is converted back into a
parallel format and decoded so it is suitable for transmission on a PCI bus.
Id. at col. 15, ll. 15–17, Fig. 12.
C. Illustrative Claim
Claims 24 and 29 are independent. Claim 24 is illustrative and is
reproduced below.
24. A method comprising:
providing a computer module, the module comprising
a central processing unit,
a connection program,
an integrated interface controller and bridge unit to
output an encoded serial bit stream of address and data
bits of Peripheral Component Interconnect (PCI) bus
transaction, the integrated interface controller and bridge
unit coupled to the central processing unit without any
intervening PCI bus, and
a low voltage differential signal channel coupled to
the integrated interface controller and bridge unit to
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convey the encoded serial bit stream of PCI bus
transaction;
inserting the computer module into a computer console,
the computer console having access to a network;
receiving connection information from the computer
console;
configuring the connection program to adapt to the
connection information; and
establishing a connection between the computer module
and a server coupled to the network,
wherein the low voltage differential signal channel
further comprises two sets of unidirectional serial bit channels
which transmit data in opposite directions.
Id. at col. 20, ll. 3–27.
D. References
Petitioner relies on the following references and declaration (see Pet.
59–60):
Reference or Declaration Exhibit No.
U.S. Patent No. 5,608,608 (“Flint”) Ex. 1002
Declaration of Bruce Young
2
Ex. 1003
Robert W. Horst, TNet: A Reliable System Area
Network (“Horst”)
Ex. 1010
U.S. Patent No. 6,148,357 (“Gulick”) Ex. 1011
A. Bogaerts et al., RD24 Status Report: Application of
the Scalable Coherent Interface to Data Acquisition at
LHC (“Bogaerts”)
Ex. 1012
U.S. Patent No. 5,961,623 (“James”) Ex. 1015
U.S. Patent No. 4,486,739 (“Franaszek”) Ex. 1016
U.S. Patent No. 5,408,618 (“Aho”) Ex. 1017

2
Petitioner filed a corrected Declaration of Bruce Young without a motion
or other authorization. For purposes of this decision, we rely on the first
filed declaration.
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Reference or Declaration Exhibit No.
National Semiconductor, LVDS Owner’s Manual:
Design Guide (“LVDS Owner’s Manual”)
Ex. 1018
E. Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following grounds
3
(see Pet. 59–60):
Claims Challenged Basis References
24, 29–32, 34, 35 35 U.S.C. § 102(b) Flint
24, 29, 31, 32, 34, 35 35 U.S.C. § 102(b) Horst
24, 29–32, 34, 35 35 U.S.C. § 103(a) Bogaerts and James or
Gulick
30 35 U.S.C. § 103(a) Franaszek and Flint,
Horst, or Bogaerts
24, 29–32, 34, 35 35 U.S.C. § 103(a) Any of the grounds
above and Aho
24, 29–32, 34, 35 35 U.S.C. § 103(a) Any of the grounds
above and LVDS
Owner’s Manual
II. ANALYSIS
A. Claim Construction
The claims of an unexpired patent are interpreted using the broadest
reasonable interpretation in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide,
77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). On this record and for
purposes of this decision, the only claim terms requiring express

3
Patent Owner argues that the obviousness combinations are asserted in the
alternative, and, thus, should be denied. Prelim. Resp. 24–33. The decisions
cited by Patent Owner in support of that argument are not binding precedent
and do not require that alternative combinations be denied, and we do not
deny any grounds asserted in the Petition on that basis.
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construction are the terms “Peripheral Component Interconnect (PCI) bus
transaction” and “PCI bus transaction.”
Petitioner proposes construing the term “Peripheral Component
Interconnect (PCI) bus transaction” in the challenged claims to mean “a data
signal communication with an interconnected peripheral component.” Pet.
14. Petitioner argues that its proposed construction is supported by a
decision of the U.S. District Court for the Eastern District of Texas
construing a similar term in related, but different, patents. Id. at 13–14.
Patent Owner proposes construing the term “Peripheral Component
Interconnect (PCI) bus transaction” in the challenged claims to mean
“command, address, and data information, in accordance with the PCI
standard, for communication with an interconnected peripheral component.”
Prelim. Resp. 5. Patent Owner argues that its proposed construction is
supported by the claim language, the specification of the ’171 patent, and
certain extrinsic evidence. Id. at 5–13. The dispute between the parties
focuses on whether the term “Peripheral Component Interconnect (PCI)”
refers to the PCI industry standard.
On this record and for purposes of this decision, we agree with Patent
Owner that the term “Peripheral Component Interconnect (PCI)” refers to
the PCI industry standard. Industry literature and dictionaries use the proper
noun “Peripheral Component Interconnect” and the abbreviation “PCI” to
refer to a particular industry specification for a local bus. See, e.g., Ex.
2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims also recite
“Peripheral Component Interconnect” as a proper noun and abbreviate it as
“PCI” (Ex. 1001, col. 20, ll. 9–10, col. 20, ll. 47–48), indicating that the
challenged claims use those terms consistent with the understood industry
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meaning. See Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed.
Cir. 2014). The specification of the ’171 patent also supports Patent
Owner’s proposed construction. For example, the specification uses the
common noun “peripheral bus” when referring generally to a peripheral bus.
See, e.g., Ex. 1001, col. 6, ll. 36–38 (“Additionally, the host interface
controller is coupled to a clock control logic, a configuration signal, and a
peripheral bus.”) (emphasis added). Thus, the challenged claims could have
used the term “peripheral component bus transaction,” but instead recite a
“Peripheral Component Interconnect (PCI) bus transaction.” Further,
Petitioner’s declarant in this proceeding, Mr. Bruce Young, admits that the
term “Peripheral Component Interconnect (PCI)” refers to an industry
standard (Ex. 1003 ¶ 58), and Petitioner admits the same in the related
district court case (Ex. 2006, 1, 3).
The only evidence Petitioner offers in support of its proposed
construction is the claim construction order issued in ACQIS LLC v. Appro
International, Inc., No. 6:09-cv-00148 (E.D. Tex. Feb. 3, 2011). Pet. 13–14;
Ex. 1014. In that case, the district court considered related, but different,
patents. Pet. 13. Also, the parties in that case did not appear to dispute that
the term “Peripheral Component Interconnect (PCI)” refers to an industry
standard. Rather, the dispute before the district court focused on which
particular bus architectures of the PCI industry standard were covered by the
term “PCI bus transaction.” Ex. 1014, 7 (“The parties’ primary dispute is
whether the term is limited to the conventional, parallel PCI Local Bus, and,
therefore excludes PCI Express bus architecture and bus transaction
protocol.”).
Therefore, on this record and for purposes of this decision, the
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broadest reasonable interpretation of the claim terms “Peripheral Component
Interconnect (PCI) bus transaction” and “PCI bus transaction” is “Peripheral
Component Interconnect (PCI) industry standard bus transaction.”
B. Asserted Grounds of Unpatentability
1. Anticipation of Claims 24, 29–32, 34, and 35 by Flint
Petitioner argues that claims 24, 29–32, 34, and 35 are anticipated by
Flint. Pet. 60. Flint relates to a cartridge-based design for computers. Ex.
1002, col. 2, ll. 18–21. We have reviewed Petitioner’s assertions and
supporting evidence, and, for the reasons discussed below, Petitioner does
not demonstrate a reasonable likelihood of prevailing in showing that Flint
anticipates claims 24, 29–32, 34, and 35.
Each independent claim challenged by Petitioner recites an encoded
serial bit stream of address and data bits of Peripheral Component
Interconnect (PCI) bus transaction. Ex. 1001, col. 20, ll. 7–10, col. 20, ll.
46–51. Petitioner argues that Flint discloses this limitation because the local
bus interface 218 communicates “with a number of peripheral components
in the chassis and cartridge through the I/O interface, an expansion bus
interface, and PCMCIA interfaces via the common bus (220, 300, 102).”
Pet. 22. Petitioner does not argue that Flint discloses an encoded serial bit
stream of address and data bits of a PCI industry standard bus transaction.
Id. at 22–23. Petitioner’s argument instead is premised on the claim term
“Peripheral Component Interconnect (PCI) bus transaction” being construed
to refer to a communication with any interconnected peripheral component.
Id.; Prelim. Resp. 10. For the reasons discussed above, the claim term
“Peripheral Component Interconnect (PCI) bus transaction” refers to the PCI
industry standard. See Section II.A. Therefore, on this record, Petitioner
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does not demonstrate a reasonable likelihood of prevailing in showing that
Flint anticipates claims 24, 29–32, 34, and 35.
2. Obviousness of Claims 24, 29–32, 34, and 35 over Flint,
Franaszek, Aho, and/or LVDS Owner’s Manual
Petitioner argues that claims 24, 29–32, 34, and 35 would have been
obvious over Flint, Franaszek, Aho, and/or the LVDS Owner’s Manual. Pet.
60. Petitioner does not argue, however, that the limitation discussed above
in Section II.B.1 (i.e., an encoded serial bit stream of address and data bits of
Peripheral Component Interconnect (PCI) bus transaction) would have been
obvious over Flint or that any of Franaszek, Aho, or the LVDS Owner’s
Manual teach or suggest that limitation. Pet. 22–23, 45–49. Petitioner
instead relies on Flint as teaching that limitation. Therefore, for the same
reasons discussed above in Section II.B.1, on this record, Petitioner does not
demonstrate a reasonable likelihood of prevailing in showing that claims 24,
29–32, 34, and 35 would have been obvious over Flint, Franaszek, Aho,
and/or the LVDS Owner’s Manual.
3. Anticipation of Claims 24, 29, 31, 32, 34, and 35 by
Horst
Petitioner argues that claims 24, 29, 31, 32, 34, and 35 are anticipated
by Horst. Pet. 60. Horst relates to a system area network called TNet that is
designed for reliable, efficient communications among processors and
peripherals. Ex. 1010, 1. We have reviewed Petitioner’s assertions and
supporting evidence, and, for the reasons discussed below, Petitioner does
not demonstrate a reasonable likelihood of prevailing in showing that Horst
anticipates claims 24, 29, 31, 32, 34, and 35.
Each independent claim challenged by Petitioner recites a computer
module comprising a connection program and a console having access to a
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network. Ex. 1001, col. 20, ll. 4–6, col. 20, ll. 17–18, col. 20, ll. 42–44, col.
20, ll. 55–59. Petitioner cites to Figure 2 of Horst, inter alia, as disclosing
the computer module and console recited in the challenged independent
claims. Pet. 27, 29, 32. Figure 2 of Horst is reproduced below.

Figure 2 of Horst shows the TNet system. Petitioner argues that each CPU
and memory cluster at the top of Figure 2 is a processor node that
corresponds to the recited computer module. Pet. 27, 29; Ex. 1003
¶ 129[24A]. Petitioner argues that the components located below the TNet
in Figure 2 are part of the cabinet that corresponds to the recited console.
Pet. 27, 29, 32; Ex. 1003 ¶ 129[24C].
Petitioner does not identify with specificity any portion of Horst that
expressly discloses that the computer module comprises a connection
program. Petitioner instead argues that the cabinet in Horst has “access to a
network via peripherals in the cabinet, such as via an Ethernet controller or
other I/O controller.” Pet. 32. Petitioner further argues that Horst inherently
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discloses the recited connection program, because, in order to operate the
aforementioned peripherals in the cabinet, “one skilled in the art at the time
would understand that a connection program that works with those
networking peripherals would be required to operate those disclosed
peripherals.” Id.
The challenged independent claims, however, do not recite just a
connection program. Those claims recite that the computer module
comprises a connection program. Ex. 1001, col. 20, ll. 4–6, col. 20, l. 44,
col. 20, l. 55. Even assuming, as Petitioner argues, that Horst inherently
discloses a connection program, Petitioner does not argue specifically or
identify any credible evidence indicating that Horst expressly or inherently
discloses that the processor node (which allegedly corresponds to the recited
computer module) comprises that connection program. Pet. 32; Ex. 1003 ¶¶
128, 129[24A(ii)]. In other words, Petitioner only argues specifically that
Horst inherently discloses a connection program, not that Horst inherently
discloses a connection program in the computer module. Therefore, on this
record, Petitioner does not demonstrate a reasonable likelihood of prevailing
in showing that Horst anticipates claims 24, 29, 31, 32, 34, and 35.
Each independent claim challenged by Petitioner also recites receiving
connection information from the console (“the receiving limitation”),
configuring the connection program to adapt to the connection information
(“the configuring limitation”), and establishing a connection between the
computer module and a server coupled to the network (“the establishing
limitation”). Ex. 1001, col. 20, ll. 19–24, col. 20, ll. 55–59. Petitioner does
not address with specificity the configuring and establishing limitations.
Pet. 32. Petitioner argues that Horst inherently discloses the receiving
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limitation, but does not provide a sufficient explanation to support that
argument. Id. (“That program would necessarily have to receive some
connection information to operate.”). Petitioner cites to Mr. Young’s
declaration, but Mr. Young also fails to provide a sufficient explanation or
credible evidence to support his conclusion that Horst inherently discloses
the receiving limitation. Ex. 1003 ¶¶ 128, 129[24D]. Therefore, for these
additional reasons, on this record, Petitioner does not demonstrate a
reasonable likelihood of prevailing in showing that Horst anticipates claims
24, 29, 31, 32, 34, and 35.
4. Obviousness of Claims 24, 29–32, 34, and 35 over Horst,
Franaszek, Aho, and/or LVDS Owner’s Manual
Petitioner argues that claims 24, 29–32, 34, and 35 would have been
obvious over Horst, Franaszek, Aho, and/or the LVDS Owner’s Manual.
Pet. 60. Petitioner argues that Aho teaches the limitations discussed above
in Section II.B.3 (i.e., a connection program and the receiving, configuring,
and establishing limitations).
4
Pet. 46–47. In particular, Petitioner argues
that the automatic configuration mechanism in Aho includes a connection
program and that “[i]t would have been obvious to a skilled artisan at the
time to employ the automatic configuration mechanism in Aho with the
references identified in Grounds 1-4 to enable a node to automatically
configure itself to connect to the network, providing easier configuration
when compared to the conventional, time consuming process in the prior
art.” Id. at 47 (emphasis added). However, Petitioner does not address
specifically the proposed combination of Horst and Aho. Id.; Prelim. Resp.

4
Petitioner does not argue that Franaszek or the LVDS Owner’s Manual
teach or suggest these limitations. Pet. 45–46, 47–49.
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39. For example, Petitioner does not explain sufficiently why the
configuration taught by Aho would have been easier or less time consuming
than in Horst. As discussed above, Petitioner does not address configuration
specifically with respect to Horst. See Section II.B.3. Thus, Petitioner does
not provide a sufficient reason why one of ordinary skill in the art would
have combined the cited teachings of Aho with Horst. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
Further, as discussed above, the challenged independent claims do not
recite just a connection program. Those claims recite that the computer
module comprises a connection program. Ex. 1001, col. 20, ll. 4–6, col. 20,
l. 44, col. 20, l. 55. Even assuming, as Petitioner argues, that it would have
been obvious to employ the automatic configuration mechanism in Aho with
the system in Horst, Petitioner does not argue specifically or identify any
credible evidence indicating that it would have been obvious to employ the
automatic configuration mechanism in Aho in the computer module in Horst.
Pet. 47; Ex. 1003 ¶¶ 167–170. Therefore, on this record, Petitioner does not
demonstrate a reasonable likelihood of prevailing in showing that claims 24,
29–32, 34, and 35 would have been obvious over Horst, Franaszek, Aho,
and/or the LVDS Owner’s Manual.
5. Obviousness of Claims 24, 29–32, 34, and 35 over
Bogaerts and James or Gulick
Petitioner argues that claims 24, 29–32, 34, and 35 would have been
obvious over Bogaerts and James or Gulick. Pet. 60. Bogaerts relates to a
scalable coherent interface for data acquisition. Ex. 1012, 1. We have
reviewed Petitioner’s assertions and supporting evidence, and, for the
reasons discussed below, Petitioner does not demonstrate a reasonable
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likelihood of prevailing in showing that claims 24, 29–32, 34, and 35 would
have been obvious over Bogaerts and James or Gulick.
Each independent claim challenged by Petitioner recites a computer
module comprising a connection program and a console having access to a
network. Ex. 1001, col. 20, ll. 4–6, col. 20, ll. 17–18, col. 20, ll. 42–44, col.
20, ll. 55–59. Petitioner cites to Figure 13 in Bogaerts, inter alia, as
teaching the computer module and console recited in the challenged
independent claims. Pet. 34–35, 43. Figure 13 of Bogaerts is reproduced
below.

Figure 13 of Bogaerts shows the Scalable Coherent Interface (“SCI”)
architecture. Petitioner argues that each SMP node at the top of Figure 13
corresponds to the recited computer module, and the SCI switch, disk
subsystem, and I/O expansion at the bottom of Figure 13 correspond to the
recited console. Pet. 34–35, 43; Ex. 1003 ¶¶ 157[24A], 157[24C].
Petitioner also cites to Figure 15 in Bogaerts as teaching the computer
module and console recited in the challenged independent claims. Pet. 33–
35, 43. Figure 15 of Bogaerts is reproduced below.
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Figure 15 of Bogaerts shows a PCI-SCI adapter. Petitioner identifies the
VME module in Figure 15 as being the recited computer module, and a
VME crate as being the recited console. Pet. 33–35, 43; Ex. 1003 ¶¶
157[24A], 157[24C].
Petitioner does not identify with specificity any portion of Bogaerts
that expressly teaches that the computer module comprises a connection
program. Pet. 43–44. Petitioner instead argues that Bogaerts teaches a
connection program because, “[i]n order for the console to communicate
with the network over the various communication channels taught by
Bogaerts, one skilled in the art at the time would understand that a
connection program would be required to connect the module with the
network, and that the connection program would necessarily receive some
connection information to operate.” Id. at 44. The challenged independent
claims, however, do not recite just a connection program. Those claims
recite that the computer module comprises a connection program. Ex. 1001,
col. 20, ll. 4–6, col. 20, l. 44, col. 20, l. 55. Even assuming, as Petitioner
argues, that a connection program is required for the console to
communicate with a network, Petitioner does not argue specifically or
identify any credible evidence indicating that Bogaerts teaches (or that it
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would have been obvious from Bogaerts) that the SMP node or the VME
module comprises that connection program. Pet. 43–44; Ex. 1003 ¶¶ 143,
157[24A(ii)]. In other words, Petitioner only argues specifically that a
connection program would have been obvious, not that a connection
program in the computer module would have been obvious. Therefore, on
this record, Petitioner does not demonstrate a reasonable likelihood of
prevailing in showing that claims 24, 29–32, 34, and 35 would have been
obvious over Bogaerts and James or Gulick.
5

As discussed above, each independent claim challenged by Petitioner
also recites receiving, configuring, and establishing limitations. Ex. 1001,
col. 20, ll. 19–24, col. 20, ll. 55–59. Petitioner does not address with
specificity the configuring limitation. Pet. 43–44. Petitioner argues that
Bogaerts teaches the receiving limitation, but does not provide a sufficient
explanation to support that argument. Id. at 44. Petitioner cites to Mr.
Young’s declaration, but Mr. Young also fails to provide a sufficient
explanation or credible evidence to support his conclusion that Bogaerts
teaches the receiving limitation. Ex. 1003 ¶¶ 143, 157[24D]. Therefore, for
these additional reasons, on this record, Petitioner does not demonstrate a
reasonable likelihood of prevailing in showing that claims 24, 29–32, 34,
and 35 would have been obvious over Bogaerts and James or Gulick.
6

Each independent claim challenged by Petitioner also recites an
encoded serial bit stream of Peripheral Component Interconnect (PCI) bus

5
Petitioner does not argue that James or Gulick teach or suggest a computer
module comprising a connection program. Pet. 37–42.
6
Petitioner does not argue that James or Gulick teach or suggest the
receiving, configuring, or establishing limitations. Pet. 37–42.
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transaction. Ex. 1001, col. 20, ll. 8–10, col. 20, ll. 47–51. Petitioner argues
that Bogaerts teaches this limitation because the PCI-SCI adapter cards
“allow ‘transparent access of PCI memory space via SCI’ and allow ‘PCI
Memory space [to be] transferred over distance via SCI.’” Pet. 38.
Petitioner does not identify with specificity anything in Bogaerts that teaches
or suggests that the aforementioned transfer of PCI memory space is
encoded. Id. Further, the parts of Mr. Young’s declaration cited by
Petitioner do not persuade us that Bogaerts teaches or suggests that the PCI
memory transfer is encoded. Ex. 1003 ¶¶ 137, 138, 157[24A(iii)(1)]. One
paragraph of Mr. Young’s declaration, which was not cited by Petitioner,
states that a person of ordinary skill in the art at the time “would also
understand that, for the system to be able to interface with those peripheral
components over a serial bus, the addressing and data would need to be
encoded.” Id. ¶ 139. However, Mr. Young does not provide a sufficient
explanation or credible evidence to support that conclusory statement. Id.
Therefore, for these additional reasons, on this record, Petitioner does not
demonstrate a reasonable likelihood of prevailing in showing that claims 24,
29–32, 34, and 35 would have been obvious over Bogaerts and James or
Gulick.
7

6. Obviousness of Claims 24, 29–32, 34, and 35 over
Bogaerts, James, Gulick, Franaszek, Aho, and/or LVDS
Owner’s Manual
Petitioner argues that claims 24, 29–32, 34, and 35 would have been
obvious over Bogaerts, James, Gulick, Franaszek, Aho, and/or the LVDS
Owner’s Manual. Pet. 60. Petitioner argues that Aho teaches some of the

7
Petitioner does not argue that it would have been obvious to combine an
encoding feature from James or Gulick with Bogaerts. Pet. 38.
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limitations discussed above in Section II.B.5 (i.e., a connection program and
the receiving, configuring, and establishing limitations).
8
Pet. 46–47. In
particular, Petitioner argues that the automatic configuration mechanism in
Aho includes a connection program and that “[i]t would have been obvious
to a skilled artisan at the time to employ the automatic configuration
mechanism in Aho with the references identified in Grounds 1-4 to enable a
node to automatically configure itself to connect to the network, providing
easier configuration when compared to the conventional, time consuming
process in the prior art.” Id. at 47 (emphasis added). However, Petitioner
does not address specifically the proposed combination of Horst and
Bogaerts. Id.; Prelim. Resp. 39. For example, Petitioner does not explain
sufficiently why the configuration taught by Aho would have been easier or
less time consuming than in Bogaerts. As discussed above, Petitioner does
not address configuration specifically with respect to Bogaerts. See Section
II.B.5. Thus, Petitioner does not provide a sufficient reason why one of
ordinary skill in the art would have combined the cited teachings of Aho
with Bogaerts. KSR, 550 U.S. at 418.
Further, as discussed above, the challenged independent claims do not
recite just a connection program. Those claims recite that the computer
module comprises a connection program. Ex. 1001, col. 20, ll. 4–6, col. 20,
l. 44, col. 20, l. 55. Even assuming, as Petitioner argues, that it would have
been obvious to employ the automatic configuration mechanism in Aho with
the system in Bogaerts, Petitioner does not argue specifically or identify any
credible evidence indicating that it would have been obvious to employ the

8
Petitioner does not argue that Franaszek or the LVDS Owner’s Manual
teach or suggest these limitations. Pet. 45–46, 47–49.
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automatic configuration mechanism in Aho in the computer module in
Bogaerts. Pet. 47; Ex. 1003 ¶¶ 167–170. Therefore, on this record,
Petitioner does not demonstrate a reasonable likelihood of prevailing in
showing that claims 24, 29–32, 34, and 35 would have been obvious over
Bogaerts, James, Gulick, Franaszek, Aho, and/or the LVDS Owner’s
Manual.
III. CONCLUSION
Petitioner does not demonstrate a reasonable likelihood of prevailing
on its challenge to the patentability of claims 24, 29–32, 34, and 35 of the
’171 patent.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied, and no trial is instituted.

Case IPR2014-01452
Patent RE43,171 E

20
PETITIONER:

Brian Buroker
Blair Silver
GIBSON, DUNN & CRUTCHER LLP
BBuroker@gibsondunn.com
BBuroker@gibsondunn.com

PATENT OWNER:

Wayne Stacy
Mark R. Schafer
COOLEY LLP
wstacy@cooley.com
mschafer@cooley.com