Iron Oak Technologies, LLC

Patent Trials and Appeals Board

May 7, 2020

IPR2019-00107 (P.T.A.B. May. 7, 2020)

Trials@uspto.gov Paper 24
571-272-7822 Date: May 7, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________________
MICROSOFT CORPORATION,
Petitioner,
v.
IRON OAK TECHNOLOGIES, LLC,
Patent Owner.
____________________

IPR2019-00107
Patent 5,966,658
____________________

Before PATRICK R. SCANLON, KEVIN W. CHERRY, and
ARTHUR M. PESLAK, Administrative Patent Judges.

PESLAK, Administrative Patent Judge

JUDGMENT
Final Written Decision
Determining the Sole Challenged Claim Unpatentable
35 U.S.C. § 318(a)
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I. INTRODUCTION
Petitioner, Microsoft Corporation (“Petitioner”), filed a Petition
(Paper 1, “Pet.”) requesting an inter partes review of claim 1 (the
“challenged claim”) of U.S. Patent No. 5,966,658 (Ex. 1001, “the ’658
patent”). Petitioner submitted a Declaration of Dr. Steve R. White (Ex.
1003, “White Decl.”) in support of the Petition. Patent Owner, Iron Oak
Technologies, LLC (“Patent Owner”), timely filed a Preliminary Response
(Paper 6, “Prelim. Resp.”). Taking into account the arguments presented in
Patent Owner’s Preliminary Response, we determined that the information
presented in the Petition established that there was a reasonable likelihood
that Petitioner would prevail in challenging claim 1 of the ’658 patent as
unpatentable under 35 U.S.C. § 102.1 On May 15, 2019, we instituted this
inter partes review, as to the challenged claim and all grounds presented in
the Petition. Paper 8 (“Dec.”).
During the course of trial, Patent Owner timely filed a Patent Owner
Response (Paper 10, “PO Resp.”). Petitioner timely filed a Reply to Patent
Owner’s Response (Paper 14, “Pet. Reply”). Patent Owner timely filed a
Sur-reply (Paper 15, “Sur-reply”). An oral hearing was held on February 13,
2020 and a transcript of the hearing has been entered into the record
(Paper 22, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This is a Final Written
Decision under 35 U.S.C. § 318(a) as to the patentability of claim 1 of the

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 102. Because the ’658
patent was filed before March 16, 2013 (the effective date of the relevant
amendment), the pre-AIA version of § 102 applies.

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’658 patent. For the reasons discussed below, we determine that Petitioner
has demonstrated by a preponderance of the evidence that claim 1 is
unpatentable under 35 U.S.C. § 102 and/or § 103(a).
A. Related Matters
The parties state that the ’658 patent is the subject of the following
civil actions:
1) Iron Oak Techs. LLC v. Dell Inc., No. 3:18-cv-1542 (N.D.
Tex.);
2) Iron Oak Techs. LLC v. Sharp Elecs. Corp. and Sharp
Corp., No. 3:17-cv-02699 (N.D. Tex.);
3) Iron Oak Techs. LLC v. Lenovo (United States) Inc. and
Lenovo Holding Co., Inc., No. 3:18-cv-1539 (N.D. Tex.);
4) Iron Oak Techs. LLC v. Acer Am. Corp., No. 3:18-cv-1543
(N.D. Tex.);
5) Iron Oak Techs. LLC v. Fujitsu Am. Inc., No. 3:16-cv-03319
(N.D. Tex.);
6) Iron Oak Techs. LLC v. Toshiba Am. Info. Sys. Inc. and
Toshiba Corp., No. 3:16-cv-03320 (N.D. Tex.);
7) Iron Oak Techs. LLC v. Asustek Computer Inc., No. 3:16-cv-
03322 (N.D. Tex.);
8) Iron Oak Techs. LLC v. Samsung Elecs. America, Inc., 3:16-
cv-3319 (N.D. Tex.); and
9) Iron Oaks Techs. LLC v. Microsoft Corp., No. 3:18-cv-0222
(N.D. Tex.).
Pet. 3–4; Paper 7, 3–4.
The ’658 patent is subject to review in:
1) Unified Patents Inc. v. Iron Oak Techs., LLC, IPR2018-00486.
Pet. 3, Paper 7, 4; and
2) Samsung Elecs. Co., Ltd. v. Iron Oak Techs. LLC, IPR2018-01554.
Pet. 3, Paper 7, 4.
B. The ’658 Patent (Ex. 1001)
The ’658 patent issued on October 12, 1999, and is entitled
“Automated Selection of a Communication Path.” Ex. 1001, codes (45),
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(54). The ’658 patent issued from U.S. Patent Application 08/718,951, filed
on September 26, 1996. Id. at codes (21), (22).
The ’658 patent generally “relates to mobile communications, and
more particularly to the automated selection of a communication path.”
Ex. 1001, 1:6–8. The ’658 patent describes that “a plurality of alternate
communication paths may be available to a mobile communications device.”
Id. at 1:18–19. Among the types of communication paths disclosed are “a
network of satellite-based or land-based transceivers, a public switched
telephone network (PSTN), a mobile telecommunications switching office
(MTSO), or any other suitable element for communications.” Id. at 1:21–25,
2:44–63, Fig. 1.
Figure 1, reproduced below, illustrates a system for selecting an
alternate communication path for transmitting a message between vehicle 12
and remote location 14 over alternate communication paths. Id. at 3:23–25.

Figure 1 illustrates a system 10 for selecting
one of a plurality of communication paths.

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The ’658 patent provides that “[c]ommunication over a
communication path 16 may be implemented in a voice channel, control
channel, paging channel, part of a seized voice or data channel.” Id. at 4:28–
31.
The ’658 patent describes that
[w]hen selecting a communication path 16, processor 72 may
consider the functional characteristics of each communication
path 16 (e.g., cost of communication, ability to deliver voice
and/or data, ability to confirm receipt, propagation delay, speed,
current load, or capacity). Processor 72 may also consider the
various parameters for the communication (e.g., priority,
preferred cost, preferred transmission time, amount of
information to be communicated, type of communication, or
confirmation of receipt).
Id. at 5:55–64.
The functional characteristics of the communication path and the
various parameters for the communication are deemed “communication
attributes.” Id. at 5:65. In one disclosed embodiment, processor 72 selects a
communication path based on “the geographical position of the vehicle 12
and the priority of the communication” as the communication attribute. Id.
at 5:66–6:3, Figs. 4, 5. In a second disclosed embodiment, “each
communication attribute corresponds to a characteristic of a communication
path 16.” Id. at 6:4–6, Figs. 6, 7.
The ’658 patent describes
In operation, mobile unit 32 may receive a request for
communication from either a user . . . or a sensor 82. Such a
request for communication may specify various parameters for
the communication, including priority, preferred cost, preferred
transmission time, amount of information to be communicated,
type of communication (e.g., data and/or voice), confirmation
of receipt, and the like. This information may be conveyed in
the form of one or more communication attributes. . . .
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Furthermore, processor 72 may retrieve data, such as table 104
[Fig. 4] or table 120 [Fig. 6], relating to various alternate
communication paths 16 from memory 74. Using this
information, processor 72 selects the most appropriate
communication path 16 for communication.
Id. at 9:52–66, 10:1.
C. Challenged Claim
Petitioner challenges independent claim 1, reproduced below.
1. An apparatus for automatically selecting one of a
plurality of communication paths, the apparatus comprising:
a memory operable to store a plurality of ordered lists of
communication paths, each ordered list associated with one
of a plurality of communication attributes, each
communication attribute representing a separate priority for
communication; and
a processor operable to receive a request for
communication, the request indicating a communication
attribute, the processor further operable to automatically
select a communication path from an ordered list associated
with the indicated communication attribute.
Ex. 1001, 16:31–43.
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D. Asserted Grounds of Unpatentability
Petitioner challenges claim 1 of the ’658 patent based on the asserted
grounds of unpatentability set forth in the following table (Pet. 5–6, 14–81):
Claim Challenged 35 U.S.C. § Reference(s)/Basis
1 102 Oberlander2
1 103 Oberlander
1 103 Oberlander
Bamburak3
1 103 Oberlander
Eriksson4
1 103 Oberlander, Burke5
with or without
Bamburak or
Eriksson
1 103 Dutta6, Oberlander
1 103 Dutta,
Oberlander,
Eriksson

II. ANALYSIS
A. Overview
Petitioner bears the burden of establishing the unpatentability of any
claim by a preponderance of the evidence. 35 U.S.C. § 316 (e) (2012); 37
C.F.R. § 42.1(d) (2018). This burden of persuasion never shifts to the patent

2 U.S. Patent No. 5,509,000, issued April 16, 1996 (Ex. 1005, “Oberlander”).
3 U.S. Patent No. 5,832,367, issued Nov. 3, 1998 (Ex. 1006, “Bamburak”).
4 U.S. Patent No. 5,448,750, issued Sept. 5, 1995 (Ex. 1009, “Eriksson”).
5 U.S. Patent No. 5,406,642, issued April 11, 1995 (Ex. 1008, “Burke”).
6 U.S. Patent No. 5,953,319, issued Sept., 14, 1999 (Ex. 1007, “Dutta”).
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owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
1378 (Fed. Cir. 2015).
A claim is anticipated under 35 U.S.C. § 102 “only if each and every
element as set forth in the claims is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union
Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). However, this is not an
ipsissimis verbis test, i.e., identity of terminology is not required. See In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) when in evidence, objective indicia of non-obviousness
(i.e., secondary considerations).7 Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966).
We analyze the asserted grounds based on anticipation or obviousness
with these principles in mind.
B. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art in the field
of the ’658 patent would have a “Bachelor’s degree in computer

7 No evidence of objective indicia of non-obviousness is in the record.
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engineering, computer science, electrical engineering, physics or a similar
discipline” and “at least two years of relevant experience including, for
example, work related to computer and telecommunications networking.”
Pet. 8 (citing Ex. 1003 ¶ 32). Patent Owner does not address the level of
ordinary skill in the art. See generally PO Resp. Based on the foregoing, we
adopt Petitioner’s definition of the level of ordinary skill in the art because it
appears reasonable and consistent with the disclosure of the ’658 patent and
the prior art of record.
C. Claim Construction
The ’658 patent expired on September 26, 2016. See Pet. 12. Thus,
we construe the claims in accordance with the standard set forth in Phillips
v. AWH Corp., 415 F.3d 1309 (Fed. Cir. 2005) (en banc). See 37 C.F.R.
§ 42.5(b) (2018); see also Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853
F.3d 1272, 1279 (Fed. Cir. 2017) (“The Board construes claims of an expired
patent in accordance with Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005) (en banc).”).
Petitioner requests that we construe the limitation “plurality of
ordered lists of communication paths” as “multiple lists, each list containing
multiple communication paths stored in a specified order.” Pet. 12–13.
Petitioner contends that Patent Owner does not dispute this interpretation.
Id. (citing Ex. 1010, 19).
Petitioner next requests that the limitation “communication path” be
given its plain and ordinary meaning. Id. at 13. According to Petitioner, in
co-pending District Court litigation, Patent Owner proposed that
communication path be construed as “a path for communication uniquely
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identified by the elements over which communications are transmitted or
received.” Id. (citing Ex. 1010, 19).
Petitioner next requests that we construe “communication attribute” as
a “parameter included with the communication request that represents a
priority for communication.” Id. According to Petitioner, in co-pending
District Court litigation, Patent Owner alternately proposed that this term be
given its plain and ordinary meaning or be construed as “a characteristic
indicated by a communication request.” Id. at 14 (citing Ex. 1010, 22).
Patent Owner submits that no claim terms require construction. PO
Resp. 2–3.
Based on all the evidence of record and the parties’ respective
arguments, we determine that express construction of these claim terms is
not necessary for the purposes of this Decision. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
2017) (noting that “we need only construe terms ‘that are in controversy, and
only to the extent necessary to resolve the controversy’”). To the extent
necessary, claim terms will be construed below when addressing the parties’
arguments.
D. Anticipation by Oberlander
Petitioner contends that claim 1 is anticipated by Oberlander. Pet. 25–
42. In support thereof, Petitioner identifies the disclosures in Oberlander
alleged to describe the subject matter in the challenged claim. Id.
Additionally, Petitioner offers declaration testimony from Dr. Steve R.
White in support of its position. Ex. 1003 ¶¶ 71–92.
In the Patent Owner Response, Patent Owner contends that that
Oberlander does not disclose a plurality of ordered lists of communication
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paths “where ‘each ordered list is associated with one of a plurality of
communication attributes’ where each communication attribute
‘represent[s] a separate priority for communication.’” PO Resp. 4.
Having considered all of the evidence of record and each of the
parties’ arguments and for the reasons discussed below, we determine that
Petitioner has demonstrated by a preponderance of the evidence that claim 1
of the ’658 Patent is anticipated by Oberlander. We begin our analysis with
a brief overview of Oberlander. We then address the parties’ respective
contentions with respect to the challenged claim.
Overview of Oberlander
Oberlander is a United States Patent issued from an application filed
June 10, 1994. Ex. 1005, code (22). Oberlander is directed “to a method
and apparatus for routing information to a particular person (i.e., subscriber)
via a particular destination device and over a particular network within a
communication system.” Id. at 1:8–11. Oberlander notes that “the typical
business individual may . . . prefer to receive a particular type of information
at a particular one of her communicating devices.” Id. at 1:27–30. Figure 1
of Oberlander is reproduced below:

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“Figure 1 illustrates in block diagram form a communication
system.” Id. at 1:55–56.

Communication system 100, shown in Figure 1, “employs both
wireless and wireline communication networks comprising a server 110 and
a plurality of subscriber devices.” Id. at 2:30–32. Figure 3 of Oberlander is
reproduced below:

“Figure 3 depicts the structure of a message for use within the
communication system of Figure 1.” Id. at 1:59–60.

Message 300 includes attributes field 310. Id. at 3:48–53. The
attributes field 310 “maintains information specific to the message 300”
such as “message originator, message priority, message data format,
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message logical size, message security requirements, message transmitted
size, and message compressed size.” Id. at 3:66–4:5.
Figure 5 of Oberlander is reproduced below:

Figure 5 of Oberlander shown above depicts an embodiment of
Oberlander’s data base. Id. at 1:64–65.
Oberlander’s data base 500 shown in Figure 5 “comprises a plurality
of records 510, each record comprises a subscriber ID field 502, a device ID
field 504, a network ID list field 505 and a logic function field 506.” Id. at
4:43–46. Each record 510 represents “a rule that conditionally maps a
subscriber and a selected device 120-124 to a prioritized list of
communication networks.” Id. at 4:46–49. Oberlander discloses generating
a key “to determine which network to use for transmission of the
message . . . by applying the set of attribute 310 values of the message in
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question to the logic function within field 506 of each data base 500 record.”
Id. at 4:64–5:1.
Analysis of Claim 1
a. Preamble
Petitioner contends that Oberlander discloses “an apparatus for
automatically selecting one of a plurality of communication paths.” Pet. 25–
27 (citing Ex. 1003 ¶¶ 73–75; Ex. 1005, 2:23–39, 2:55–62, 3:12–15, 3:62–
66, 8:35–38). Specifically, Petitioner contends, inter alia, that Oberlander
discloses “subscriber devices 120-124” each of which Petitioner contends is
an apparatus. Id. at 25. According to Petitioner, each of Oberlander’s
subscription devices “uses a network mobility manager (NMM) . . . that
‘selects one of a plurality of communication networks for transmission of the
message.’” Id. at 26–27 (citing Ex. 1005, 3:12–15, 8:35–38). Petitioner
further contends that because Oberlander discloses that its communication
system may be wireless or wireline, Oberlander’s communication networks
correspond to “communication paths” as recited in claim 1. Id. at 27 (citing
Ex. 1003 ¶ 75; Ex. 1005, 2:29–32). Petitioner further contends that “[b]y
automatically selecting a communication network from several networks,
Oblerlander’s subscriber device automatically selects a respective
communication path from several paths” and therefore discloses “an
apparatus for automatically selecting one of a plurality of communication
paths.” Id. (citing Ex. 1003 ¶ 75).
Patent Owner does not dispute Petitioner’s contention that the subject
matter of the preamble of claim 1 is disclosed by Oberlander. See generally
PO Resp. 4–15.
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Based on the arguments and evidence presented by Petitioner,
Petitioner establishes that Oberlander discloses “[a]n apparatus for
automatically selecting one of a plurality of communication paths.” Patent
Owner does not argue that the preamble is not limiting. See generally PO
Resp. We do not address whether the preamble is limiting because there is
no dispute that Oberlander discloses the subject matter of the preamble.
b. a memory operable to store
Petitioner contends that Oberlander discloses this claim limitation.
Pet. 28–29 (citing Ex. 1003 ¶¶ 79–82; Ex. 1005, 3:11–18, 3:25–26, 3:37–41,
4:49–51, Figs. 2, 5). Petitioner contends that “Oberlander’s server and
subscriber device each include a RAM 240 . . . used ‘to control inbound and
outbound data traffic.’” Id. at 28 (citing Ex. 1005, 3:25–26, 3:38–40,
Fig. 2). Petitioner further contends that Oberlander’s “RAM maintains a
network mobility manager (NMM) database used to select ‘one of a plurality
of communication networks for transmission of a message,’” and thus,
“Oberlander’s RAM is a memory that stores the NMM database and thereby
stores network lists.” Id. (citing Ex. 1003 ¶ 79; Ex. 1005, 3:11–18, Fig. 1).
Based on the foregoing, Petitioner concludes that Oberlander discloses a
memory operable to store.
Patent Owner does not dispute Petitioner’s contention that Oberlander
discloses this limitation. PO Resp. 4–15.
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that Oberlander discloses “a memory
operable to store.”
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c. a plurality of ordered lists of communication paths
Petitioner contends that Oberlander discloses this claim limitation.
Pet. 29–33 (citing Ex. 1003 ¶¶ 86, 88, 90, 91; Ex. 1005, 3:64–66; 4:38–51,
4:49–61, 5:6–11, 5:26–31, Figs. 5, 6). Petitioner contends that Oberlander
discloses “‘a list of network ID’s identifying those communication networks
which may be used to communicate the message in question to the selected
destination device.’” Id. at 29 (citing Ex. 1005, 3:64–66). Petitioner further
contends that Oberlander discloses “communication paths” under its plain
and ordinary meaning because the “network ID lists have different
communication paths and each path has individual network elements that
comprise the path when in use.” Id. at 29–30 (citing Ex. 1003 ¶ 86).
Petitioner further contends that Oberlander’s Figure 5 discloses a database
with a plurality of records 510 “where ‘each record comprises . . . a network
ID list field 505’” and the “network ID lists 505 contain multiple networks
that each have their own assigned network ID.” Id. at 30–31 (citing
Ex. 1005, 4:43–44, 5:6–11, Figs. 5, 6). Petitioner further contends that
Oberlander’s “Figure 6 shows a network list stored in field 505 for the
corresponding record 510 (i.e., one subscriber ID to one selected device).”
Id. at 31 (citing Ex. 1005, Fig. 6). Petitioner further contends that one of
ordinary skill in the art would understand that “each record of Figure 5
identifies a list of network IDs shown in Figure 6.” Id. at 32 (citing Ex.
1003 ¶ 90). According to Petitioner, because “[e]ach network ID identifies a
different communication network, it is thereby identifying a different
communication path” and consequently “Figures 5 and 6 show ‘a plurality
of . . . lists of communication paths.’” Id.
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Petitioner next contends that in Oberlander’s Figure 5, “each record
510 represents a rule that conditionally maps a subscriber and a selected
device 120-124 to a prioritized list of communication networks,” “each
network ID list 505 is organized such that the most favored network appears
in the first network identified field” and “[t]here are multiple lists for each
subscriber ID.” Id. at 33 (citing Ex. 1003 ¶ 91; Ex. 1005, 4:44–49, 5:26–29,
Fig. 5). Petitioner further contends that because Oberlander “discloses
‘multiple lists’ for a subscriber ID, and each of which is organized . . . in a
specified order,” Oberlander “discloses ‘a memory operable to store a
plurality of ordered lists of communication paths.’” Id. (citing Ex. 1003
¶ 91).
Patent Owner does not dispute that Oberlander discloses “a plurality
of ordered lists of communication paths.” See PO Resp. 7 (stating that
Petitioner’s “contention could support a finding that each of Oberlander’s
network ID lists is an ordered list”); id. at 10 (“assuming that Oberlander’s
network ID lists are ordered lists of communication paths”); id. at 14 (“it is
not disputed that each network ID list 505 is organized such that the most
favored network appears first”).
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that Oberlander discloses “a plurality
of ordered lists of communication paths.”
d. each ordered list associated with one of a plurality of communication
attributes
Petitioner contends that Oberlander discloses this claim limitation.
Pet. 33–37 (citing Ex. 1003 ¶¶ 120–122, 124, 125; Ex. 1005, 2:28–31, 3:51–
55, 3:47–4:9, 5:26–39, 4:56–5:1, 6:1–14, Fig. 3). Petitioner contends that
the structure of Oberlander’s messages “include[s] an ‘attributes field’ which
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‘maintains information specific to the message’ such as priority (“a
communication attribute”) needed for transmission on a communication
network.” Id. at 34 (citing Ex. 1003 ¶ 120; Ex. 1005, 3:66–4:6, Fig. 3).
Petitioner further contends that Oberlander’s “message priority attribute
would indicate that some messages require a higher message priority” and
“some messages require a lower priority.” Id. at 35 (citing Ex. 1005, 6:1–
14). Based on this, Petitioner contends that the organized network lists in
Oberlander are “arranged according to these message attributes (i.e.,
priority).” Id. (citing Ex. 1003 ¶ 121). Petitioner further contends “that
messages with different priority values have different communication
attributes” and thus, the varying priority levels disclosed in Oberlander
correspond to the recited “plurality of communication attributes” as well as
the priority attributes disclosed in the ’658 patent. Id. at 35–36 (citing
Ex. 1001, 11:40–46; Ex. 1003 ¶ 124). Petitioner further contends that
Oberlander’s “priority attributes with a network message are ‘associated
with’ Oblerlander’s network ID lists” and that the “message represents a
‘communication request’ because Oberlander discloses that it includes
‘information to be communicated.’” Id. at 36 (citing Ex. 1003 ¶ 125;
Ex. 1005, 2:28–31, 3:47–4:9, Fig. 3). Petitioner also contends that
Oberlander’s “‘organized’ network lists rank the networks contained in the
list from ‘most favored network’ to ‘a lower priority . . . network.” Id.
(citing Ex. 1005, 4:46–61, 5:26–31). Petitioner further contends that
Oberlander’s priority attribute “is a ‘parameter’ that ‘represents the priority
for communication’ and is ‘included in the communication request’” and
thus discloses the limitation, “each ordered list associated with one of a
plurality of communication attributes.” Id. at 37 (citing Ex. 1003 ¶ 125).
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Patent Owner contends that Oberlander does not disclose this
limitation. PO Resp. 4–15. The crux of Patent Owner’s contention is that
Oberlander’s Network ID lists 505 are not associated with one of a plurality
of communication attributes as required by claim 1. See PO Resp. 5–6
(“[E]ven presuming that Oberlander’s network ID lists constitute the
‘plurality of ordered lists of communication’, the Petition fails to establish
that each of Oberlander’s network ID lists is associated with one of a
plurality of communication attributes.”). In support of this contention,
Patent Owner argues that the Networks ID lists 505 shown in Figure 5 of
Oberlander do not meet this claim limitation because neither the Subscriber
ID parameter 502 nor the Device ID parameter 504 represent a priority of
communication and thus do not “constitute the one or more communication
attributes.” Id. at 11. Patent Owner further argues that the conditioning
logic functions 506 are not communication attributes because they are not
communication parameters, “exist independently of Oberlander’s request for
communication,” and “are not included in, or indicated by, Oberlander’s
request for communication and cannot be determined or derived from those
requests.” Id. at 11–12. Patent Owner submits that “Oberlander’s logic
equations 506 are functions to which attributes contained in a request for
communication can be applied.” Id. at 13; see also Sur-reply 5 (explaining
that “attributes contained in Oberlander’s request for communication are
applied [to logic functions 506] for evaluation”).
Petitioner replies that Patent Owner does not dispute that Oberlander’s
message priority attribute in Oberlander’s attributes field 310 corresponds to
the claimed “communication attribute.” Pet. Reply 5 (citing PO Resp. 7–8).
Petitioner argues that Patent Owner “only contests whether such attribute is
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associated with each of the ‘ordered list[s]’ disclosed in Oberlander.” Id.
at 6. Petitioner argues that Patent Owner fails to address Petitioner’s
arguments regarding Figure 3 of Oberlander by restricting “its analysis to the
disclosures in Figure 5” based on an implicit claim construction “that an
association of the claimed ‘communication attributes’ with the ‘order[ed]
lists’ within the context of the 658 patent can only be achieved if such
‘attributes’ reside in the same database as the ordered lists.” Id. at 8
(citing PO Resp. 11). Petitioner then argues that “the claims only require the
communication attribute to be ‘associated with’ an ordered list; there is no
requirement that such attributes need to be confined to a specific structure.”
Id. at 9. Petitioner further contends that Patent Owner does not argue that
“associated with” in claim 1 “should be given any special meaning within
the context of the 658 patent, nor does it sufficiently explain or support that
implicit construction with evidence from the intrinsic record.” Id. Petitioner
further argues that the Petition showed how the communication attributes are
used with Oberlander’s logic functions for message routing. Id. at 9–10
(citing Pet. 36; Ex. 1005, 5:34–39). Petitioner further cites to Dr. White’s
Declaration testimony and contends that “the communication attributes 310
–– Oberlander’s message priority attribute (i.e., ‘communication attribute’)
–– are applied to the logic functions in field 506 to determine which network
. . . from the network ID list . . . the message will be routed on.” Id. at 10
(citing Ex. 1003 ¶ 125).
Patent Owner in the Sur-reply reiterates its contention that
Oberlander’s logic functions 506 shown in Oberlander’s Figure 5 “are
functions to which attributes contained in a request for communication can
be applied, they are not themselves communication attributes and they are
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not each associated with any particular communications attributes.” Sur-
reply 7; see also id. at 5 (“[A] conditioning logic function 506 that is a
function to which attributes contained in Oberlander’s request for
communication are applied for evaluation.”) (citing Ex. 1005, 4:52–5:5).
For the following reasons, we are not persuaded by Patent Owner’s
contention.
Patent Owner’s contention is based on an implicit construction of
“associated with” which requires that communication attributes be present in
the structure of the data base shown in Oberlander’s Figure 5. However,
Patent Owner does not provide any arguments or intrinsic evidence in
support of such a construction. See PO Resp. 2–3. Further, a plain and
ordinary meaning of the word “associated” is “related, connected, or
combined together.” See https://www.merriam-webster.com/dictionary/
associated. Consequently, the relevant inquiry is not whether
communication attributes are present in the same table as the Oberlander’s
network lists but rather whether the network lists are related to, connected
to, or combined with communication attributes.
Oberlander’s message 300 contains attributes field 310 that includes
various attributes of a message including “message priority,” as noted by
Petitioner, and “message logical size.” Ex. 1005, 3:66–4:9; see also
Ex. 1003 ¶ 125 (“attributes help determine which network . . . the message
will be routed on.”) (citing Ex. 1005 4:62–5:1). Figure 7b of Oberlander,
discloses “a graphical representation of a logic function that delimits
messages based upon size.” Id. at 5:58–59, Fig. 7b. Oberlander further
discloses in connection with Figure 9 that “the attribute 310 values of the
received message 300 are applied to the logic function of the retrieved
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record at block 912 by NMM 115. At block 914 a check is performed by
NMM 115 to determine whether the logic function is true or false” based on
the message attribute value. Id. at 8:47–51, Fig. 9. If the logic function is
true at step 914, “flow proceeds to block 918, where the network ID list
stored in field 505 of the retrieved record is written by NMM 115 into Null
field 308 of the message 300.” Id. at 8:61–64, Fig. 9. As discussed above,
message 300 includes attributes field 310. Id. at Fig. 9. Patent Owner
confirms that this is the process by which Oberlander’s logic functions are
used. See Sur-reply 6, 8–10. As a result, in the case of the logic function
shown in Figure 7b, the network ID list stored in field 505 is related to (i.e.,
“associated with”) the communication attribute of message size. See also
Ex. 1003 ¶ 125.
Based on the arguments and evidence presented by Petitioner
discussed above and after considering Patent Owner’s arguments, we
determine that Petitioner establishes that Oberlander discloses the limitation
“each ordered list associated with one of a plurality of communication
attributes.”
e. each communication attribute representing a separate priority for
communication
Petitioner contends that Oberlander discloses this limitation. Pet. 37–
38 (citing Ex. 1003 ¶ 139). Petitioner contends that Oberlander “organizes
network lists based on factors (such as message priority) used in the
‘selection of one of . . . potential communication networks’” and “messages
may contain a higher or lower priority requirement indicated by a message
attribute (e.g., a numerical value).” Id. at 37 (citing Ex. 1003 ¶ 139;
Ex. 1005, 2:23–25, 6:1–14). Petitioner further contends that Oberlander
discloses “two networks with different priority levels: a ‘most favored
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network’ and a ‘lower priority . . . network.”’ Id. (citing Ex. 1005, 5:26–31).
Based on this, Petitioner contends that one of ordinary skill in the art would
“recognize that Oberlander’s message priority attribute needs different
parameters (e.g., numerical values) . . . to request separate communication
networks with different priority rankings.” Id. at 37–38 (citing Ex. 1003
¶ 139).
Patent Owner does not dispute Petitioner’s contention that Oberlander
discloses this limitation. PO Resp. 4–15.
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that Oberlander discloses the
limitation “each attribute representing a separate priority of
communication.”
f. a processor operable to receive a request for communication
Petitioner contends that Oberlander discloses this limitation. Pet. 38–
39 (citing Ex. 1003 ¶¶ 144–145). Petitioner contends that Oberlander’s
“device has a processing unit that controls inbound and outbound data . . .
and may be ‘for example, a microprocessor.’” Id. at 38 (citing Ex. 1005,
3:36–41, Fig. 2). Petitioner further contends that, in Oberlander, a
“subscriber will transmit messages ‘locally within the individual’s
subscriber device’” and discloses that a “routing procedure begins ‘upon
receipt of a message 300 by NMM 115 [of the] subscriber device.’”
Id. (citing Ex. 1005, 5:49–55, 8:26–28). Petitioner further contends that
Oberlander discloses “that the user may define the priority of information by
specifying a certain destination device.” Id. (citing Ex. 1005, 1:34–40).
Based on the foregoing, Petitioner contends that the subscriber device in
Oberlander “along with its processor, receives a request from a user to send
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a message along with its priority (‘receive a request for communication’).”
Id. at 39 (citing Ex. 1004 ¶ 145).
Patent Owner does not dispute Petitioner’s contention that Oberlander
discloses this limitation. PO Resp. 4–15.
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that Oberlander discloses “a
processor operable to receive a request for communication.”
g. the request indicating a communication attribute
Petitioner contends that Oberlander discloses this limitation. Pet. 39–
40 (citing Ex. 1003 ¶ 154). Petitioner contends that the attributes field in
Oberlander is specific to each message and includes a priority value of the
message. Id. at 39 (citing Ex. 1005, 3:66–4:9, 6:9–15). Petitioner further
contends that “a priority value attribute is a communication attribute because
it represents the urgency with which a message is to be treated” and that
“‘urgency’ is factored in the ‘selection of one of a plurality of potential
communication networks.’” Id. (citing Ex. 1003 ¶ 154; Ex. 1005, 2:23–25).
Petitioner further contends that, “Oberlander’s messages have
communication attributes representing certain priorities (‘a request
indicating a communication attribute’) needed in the selection of a network
depending on the urgency of the message.” Id. at 39–40 (citing Ex. 1003
¶ 154).
Patent Owner does not dispute Petitioner’s contention that Oberlander
discloses this limitation. PO Resp. 4–15.
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that Oberlander discloses the
limitation “the request indicating a communication attribute.”
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h. the processor further operable to automatically select a
communication path from an ordered list associated with the
indicated communication attribute

Petitioner contends that Oberlander discloses this claim limitation.
Pet. 40–42 (citing Ex. 1003 ¶¶ 164–165). Petitioner contends that
Oberlander discloses a processor that, “automatically selects a
communication path because Oberlander discloses that the database
structure is used to select a communication network from a prioritized list
corresponding to a subscriber ID.” Id. at 41 (citing Ex. 1003 ¶ 165).
Patent Owner does not dispute Petitioner’s contention that Oberlander
discloses this limitation. PO Resp. 4–15.
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that Oberlander discloses the
limitation “the processor further operable to automatically select a
communication path from an ordered list associated with the indicated
communication attribute.”
i. Conclusion
Based on the present record and after considering all of Patent
Owner’s arguments, we determine Petitioner has established by a
preponderance of the evidence that claim 1 is anticipated by Oberlander.
E. Obviousness over Oberlander
Petitioner alternatively contends that claim 1 is unpatentable under 35
U.S.C. § 103(a) in light of Oberlander. Pet. 42–43. Petitioner contends that
to the extent Oberlander does not disclose “that the NMM database is
included in ‘a memory operable to store,” it would have been obvious to
store the database in such a memory, such as the RAM memory 240 of
Oberlander . . . in order to be accessed by, and therefore useful to, the
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system.” Id. at 42 (citing Ex. 1003 ¶ 83). Petitioner contends that one of
ordinary skill in the art “would have been motivated to store the NMM
database in the RAM memory 240 . . . because it was an available resource
already existing in the design of the system, and therefore provided a
convenient place to store the database without altering the design of the
system.” Id. (citing Ex. 1003 ¶ 83). Petitioner also contends that one of
ordinary skill in the art “would have been motivated to include in the device
of Oberlander a memory sufficient to store the databases of Oberlander so
that the functionality of Oberlander could be implemented and the benefits
of the invention obtained.” Id. at 43 (citing Ex. 1003 ¶ 84).
Patent Owner contends that claim 1 is not obvious in light of
Oberlander for the same reasons as stated in connection with the anticipation
ground based on Oberlander. See PO Resp. 15. Patent Owner further
contends that Petitioner’s “arguments concerning . . . the use of a memory
do not address this deficiency.” Id. This contention is not persuasive for the
same reasons discussed above.
Based on the arguments and evidence presented by Petitioner and
after considering all of Patent Owner’s arguments, we determine that
Petitioner has demonstrated by a preponderance of the evidence that claim 1
would have been obvious to one of ordinary skill in the art in light of
Oberlander if it were to be determined that the NMM database is not
included in a memory operable to store. In any event, we determine that
Oberlander anticipates claim 1 and it is well settled that “anticipation is the
epitome of obviousness.” In re McDaniel, 293 F3d. 1379, 1385 (Fed. Cir.
2002) (quoting Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed.
Cir. 1983)).
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F. Obviousness over Dutta and Oberlander
Petitioner contends that claim 1 is unpatentable in light of Dutta and
Oberlander. Pet. 64–78. In support thereof, Petitioner identifies the
disclosures in Dutta and Oberlander alleged to disclose the subject matter in
the challenged claim. Id. Additionally, Petitioner offers declaration
testimony from Dr. Steve R. White in support of its position. Ex. 1003
¶¶ 172, 173, 177–184, 196,199, 200, 203–206, 209, 212.
Patent Owner’s sole contention with respect to this challenge is that
Oberlander does not disclose “the storage of a plurality of ordered lists of
communication paths where each ordered list is associated with one of a
plurality of communication attributes representing a separate priority for
communication.” PO Resp. 25. Patent Owner relies on the arguments
discussed above in connection with the anticipation ground based on
Oberlander. Id.
Overview of Dutta
Dutta is a U.S. Patent issued from an application filed September 29,
1995. Ex. 1007, code (22). Dutta is directed to “Wide Area Mobile
Communication Networks with Multiple Routing Mode Options.” Id. at
code (54). Figure 1 of Dutta is reproduced below:
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Figure 1 of Dutta, “is a block diagram illustrating a wireless packet data
transmission network for communicating with mobile terrestrial vehicles.”
Id. at 3:21–23.

As shown in Figure 1, “[m]obile vehicle equipment 110 is a terrestrial
vehicle based device or system which facilitates communication between
mobile vehicle data terminal equipment 120 . . . and fixed user data terminal
equipment 140 through base station packet switch 130.” Id. at 4:50–55.
Dutta discloses that “[m]obile vehicle equipment 110 incorporates
‘intelligent’ routing and control mechanisms to determine which of the radio
frequency transmission paths a particular message data packet will be
delivered through.” Id. at 4:58–62.

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Analysis of Claim 1
a. Preamble
Petitioner contends that Dutta discloses an apparatus for automatically
selecting one of a plurality of communication paths. Pet. 65–67. In
particular, Petitioner contends that Dutta discloses “a data communication
network that has the mobile vehicle equipment 110 and data terminal
equipment 120 (together being ‘an apparatus’) to ‘determine which of the
radio frequency transmission paths a particular message data packet will be
delivered through.’” Id. at 65–66 (citing Ex. 1007, 4:55–63, Fig. 1).
Petitioner contends that the radio frequency transmission paths shown in
Figure 1 of Dutta correspond to the “communication paths” in claim 1.
Id. at 66 (citing Ex. 1003 ¶ 173). Petitioner further contends that Dutta’s
“communication paths may be part of two types of networks: a ‘terrestrial
based sub-network[s]’ . . . or ‘satellite-based subnetwork’” and that “[e]ach
network type has varying ‘advantages’ over the other network type.” Id.
(citing Ex. 1007, 5:33–34, 5:51–6:9). Petitioner further contends that Dutta
discloses “[a]n intelligent switching control node” that “select[s] the
transmission path as a function of the message characteristics of the packet
data message and as a function of the transmission path characteristics.”
Id. (citing Ex. 1007, 3:6–14, 3:49–55). Dutta’s “message characteristics
include ‘coverage [area], signal strength, data rates, message delivery times,
and data costs.’” Id. (citing Ex. 1007, 6:9–16). According to Petitioner, one
of ordinary skill in the art “would recognize that the intelligent switching
node selects a path (‘automatically selecting one of a plurality of
communication paths’) for use in communicating the data message to the
mobile vehicle equipment.” Id. (citing Ex. 1003 ¶ 172).
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Patent Owner does not dispute Petitioner’s contention that the subject
matter of the preamble of claim 1 is disclosed by Oberlander. See generally
PO Resp. 25.
Based on the arguments and evidence presented by Petitioner,
Petitioner establishes that Dutta discloses “[a]n apparatus for automatically
selecting one of a plurality of communication paths.” Patent Owner does not
argue that the preamble is not limiting. See generally PO Resp. We do not
address whether the preamble is limiting because there is no dispute that
Dutta discloses the subject matter of the preamble.
b. a memory operable to store
Petitioner contends that Dutta in combination with Oberlander teaches
or suggests the limitation, “a memory operable to store a plurality of ordered
lists of communication paths.” Pet. 67–71. Petitioner contends that Dutta’s
“mobile vehicle unit has a message storage device (‘memory operable’)
which is capable of ‘storing received or transmitted message data packets”
and “that this memory can be for example, a dynamic random access
memory (DRAM) device.” Id. at 68 (citing Ex. 1003 ¶ 177; Ex. 1007, 7:16–
23, 6:21–30, Fig. 2). Petitioner concedes that Dutta does not disclose storing
a plurality of ordered lists of communication paths in its memory but
contends that “it would have been obvious to include that limitation in the
system of Dutta in view of Oberlander.” Id. (citing Ex. 1003 ¶ 178).
Petitioner relies on the disclosure in Oberlander discussed above in Section
II.C. of a plurality of ordered lists of communication paths. Id. at 68–69.
According to Petitioner, “[i]n the combination of Oberlander’s prioritized
lists of communication networks with the mobile vehicle equipment of
Dutta, Dutta’s mobile vehicle would maintain ‘organized’ lists of
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communication networks and paths for use in selecting the appropriate
communication link,” thus, allowing the “mobile vehicle memory to aide
[sic] in the selection of the appropriate path.” Id. at 69 (citing Ex. 1003 ¶
180).
Petitioner further contends that one of ordinary skill in the art would
have been motivated to combine the teachings of Oberlander and Dutta in
this way for two reasons. Id. at 70. First, Petitioner contends that Dutta
discloses “an express reasoning to do so” because it discloses that “it is
‘preferable for a packet data network to take advantage of the best features
of multiple transmission paths.’” Id. (citing Ex. 1003 ¶ 183; Ex. 1007, 1:61–
63). Further, according to Petitioner, Dutta discloses “that there are
‘differentiating characteristic features of coverage, signal strength, data
rates, message delivery times, and data costs’ which are factors in selecting
the appropriate transmission path” which one of ordinary skill in the art
would recognize “are represented in Oberlander’s organized network lists.”
Id. (citing Ex. 1003 ¶ 183; Ex. 1007, 6:10–16). Petitioner further contends
that the combination allows Dutta’s mobile device to create distinguished
lists of communication paths to select the best one for each message.
Id. Petitioner also contends that because Oberlander discloses “that
‘urgency’ should be a factor in selecting the way a subscriber device selects
a network path,” one of ordinary skill in the art would have made “the
modification to Dutta’s mobile vehicle and messages . . . to include message
priority in the communication path selection as taught by Oberlander.” Id. at
71 (citing Ex. 1003 ¶ 184; Ex. 1005, 2:22–25).
Patent Owner does not dispute Petitioner’s contention that the
combination of Dutta and Oberlander discloses this limitation nor does
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Patent Owner challenge Petitioner’s stated reasons for combining the
teachings of Dutta and Oberlander. PO Resp. 25.
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that the combination of Dutta and
Oberlander teaches or suggests “a memory operable to store.”
c. a plurality of ordered lists of communication paths
Petitioner contends that Dutta in combination with Oberlander teaches
or suggests the limitation “each ordered list associated with one of a
plurality of communication attributes.” Pet. 71–73. Petitioner specifically
contends that Dutta’s system in combination with Oberlander “would use
Oberlander’s priority attribute in Dutta’s packet messages to select the
appropriate transmission path based on priorities.” Id. at 72 (citing Ex. 1003
¶ 196). Petitioner contends that Oberlander’s messages include an attributes
field “specific to each message” and the “attribute field represent[s]
‘message priority’ that may require a higher or lower priority
(‘communication attribute[s]’) over other messages.” Id. (citing Ex. 1003
¶ 196; Ex. 1005, 3:66–4:9, 6:1–14). According to Petitioner, one of ordinary
skill in the art “would recognize that Oberlander’s messages have
communication attributes representing certain priorities . . . needed in the
selection of a network depending on the urgency of the message” and
consequently, “these message priority attributes and corresponding
organized lists teach ‘each ordered list associated with one of a plurality of
communication attributes.’” Id. at 72–73 (citing Ex. 1003 ¶ 196).
Patent Owner does not dispute Petitioner’s contention that the
combination of Dutta and Oberlander discloses this limitation nor does
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Patent Owner challenge Petitioner’s stated reasons for combining the
teachings of Dutta and Oberlander. PO Resp. 25.
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that the combination of Dutta and
Oberlander teaches or suggests “a plurality of ordered lists of
communication paths.”
d. each ordered list associated with one of a plurality of
communication attributes
Petitioner contends that Dutta in combination with Oberlander teaches
or suggests the limitation “each communication attribute representing a
separate priority for communication.” Pet. 73–74. Petitioner specifically
contends that “Dutta’s messages would include Oberlander’s priority
message attribute . . . that would aide [sic] in selecting the appropriate
transmission path.” Id. at 73 (citing Ex. 1003 ¶ 200; Ex. 1005, 4:38–51,
5:26–61, Fig. 5, 6). Petitioner further contends that Dutta’s system
combined with Oberlander “would maintain this prioritized list of
transmission paths as well as includes Oberlander’s message priority
attribute in Dutta’a messages.” Id. at 74 (citing Ex. 1003 ¶ 200). According
to Petitioner, one of ordinary skill in the art “would recognize that Dutta’s
separate transmission paths would necessarily belong to different priority
lists, as shown in Oberlander.” Id. (citing Ex. 1003 ¶ 200).
Patent Owner disputes that Oberlander discloses this limitation for the
same reasons discussed above in connection with the anticipation ground
based on Oberlander. See PO Resp. 25. For the reasons discussed above,
we are not persuaded by this contention.
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that the combination of Dutta and
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Oberlander teaches or suggests the limitation “each ordered list associated
with one of a plurality of communication attributes.”
e. each communication attribute representing a separate
priority for communication
Petitioner contends that Dutta in combination with Oberlander teaches
or suggests this limitation. Pet. 73–74. Petitioner contends that Dutta
“selects a path based on message characteristics. ‘such as designation of
preferred transmission path, criticality of delivery timing, or other
constraints regarding the method of information delivery.’”
Id. at 73 (citing Ex. 1007, 6:58–62). Petitioner further contends that in the
combination of Dutta and Oberlander, Oberlander’s priority message
attributes would be included in Dutta’s messages and “that would aid[e] in
selecting the appropriate transmission path.” Id. (citing Ex. 1003 ¶ 199).
Petitioner also contends that when combined as proposed, Dutta would
maintain prioritized lists of transmission paths and that one of ordinary skill
in the art “would recognize that Dutta’s separate transmission paths would
necessarily belong to different priority lists” as in Oberlander. Id. at 74
(citing Ex. 1003 ¶ 200).
Patent Owner does not dispute Petitioner’s contention that the
combination of Dutta and Oberlander suggests this limitation nor does
Patent Owner challenge Petitioner’s stated reasons for combining the
teachings of Dutta and Oberlander. PO Resp. 25.
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that the combination of Dutta and
Oberlander teaches or suggests “each communication attribute representing
a separate priority for communication.”
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f. a processor operable to receive a request for
communication
Petitioner contends that Dutta in combination with Oberlander teaches
or suggests the limitation “a processor operable to receive a request for
communication.” Pet. 74–76. Petitioner contends that Dutta discloses a
processor operable to receive because it discloses an intelligent switching
node that “is preferably a microprocessor based device” that “routes
messages to the desired transmission path . . . by ‘[determining] which
transmission path to utilize for transmitting a particular message data packet
in order to obtain some desired result.’” Id. at 74 (citing Ex. 1003 ¶ 203, Ex.
1007, 8:24–35, Fig. 3). Petitioner further contends that “[b]oth Dutta’s
message processor and intelligent switching node processor together satisfy
the claimed ‘request for communication.’” Id. at 75 (citing Ex. 1003 ¶ 205).
Petitioner further contends that Dutta’s message processor “is capable of
receiving information by a terminal equipment interface,” “‘acts upon
information sent and received by fixed data terminal equipment interface
310’ . . . which includes information about the messages,” and “‘passes
information to be transmitted together with control information . . . to
intelligent switching node 230.’” Id. citing (Ex. 1003 ¶ 205; Ex.1007, 6:52–
62, 8:7–14, Figs. 2, 3). According to Petitioner, one of ordinary skill in the
art “would understand the combination of the message processor and the
intelligent switching node work together by having the two processors
together extract information from the message in order to determine its
destination and transmission requirements” and “recognize that both of
Dutta’s processors receive communication message requests from a user and
selects the appropriate path depending on the message’s transmission
requirements.” Id. at 75–76 (citing Ex. 1003 ¶ 206).
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Patent Owner does not dispute Petitioner’s contention that the
combination of Dutta and Oberlander discloses this limitation nor does
Patent Owner challenge Petitioner’s stated reasons for combining the
teachings of Dutta and Oberlander. PO Resp. 15.
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that Dutta in combination with
Oberlander teaches or suggests “a processor operable to receive a request for
communication.”
g. the request indicating a communication attribute
Petitioner contends that Dutta in combination with Oberlander teaches
or suggests the limitation “the request indicating a communication attribute.”
Pet. 76–77. Petitioner specifically contends that Dutta as combined with
Oberlander discloses that Dutta’s messages include the priority message
attribute” disclosed in Oberlander and “[a] priority value attribute . . .
represents the urgency with which a message is to be treated.” Id. at 76
(citing Ex. 1003 ¶ 209). According to Petitioner, one of ordinary skill in the
art “would recognize that Dutta’s messages, as modified by the Oberlander’s
priority attribute, have communication attributes representing certain
priorities . . . needed in the selection of a network depending on the urgency
of the message.” Id. at 77 (citing Ex. 1003 ¶ 209).
Patent Owner does not dispute Petitioner’s contention that the
combination of Dutta and Oberlander discloses this limitation nor does
Patent Owner challenge Petitioner’s stated reasons for combining the
teachings of Dutta and Oberlander. PO Resp. 25.
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that Dutta in combination with
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Oberlander teaches or suggests the limitation “the request indicating a
communication attribute.”
h. the processor further operable to automatically select a
communication path from an ordered list associated with the
indicated communication attribute
Petitioner contends that Dutta in combination with Oberlander teaches
or suggests the limitation “automatically select a communication path from
an ordered list associated with the indicated communication attribute.”
Pet. 77–78. Petitioner specifically contends that “the combined system of
Dutta and Oberlander would use Oberlander’s ordered list of transmission
paths . . . as stored in Dutta’s apparatus, to select a communication path from
a list corresponding to those characteristics’ which “include the message
priority attribute” disclosed by Oberlander. Id. at 78 (citing Ex. 1003 ¶ 212).
According to Petitioner, one of ordinary skill in the art “would recognize
that these message priority attributes would be used to select the list . . .
based on a specific priority attribute” and thus, “Dutta’s apparatus
necessarily automatically selects a communication network and
corresponding network path (‘communication path’).” Id. (citing Ex. 1003 ¶
212).
Patent Owner does not dispute Petitioner’s contention that the
combination of Dutta and Oberlander discloses this limitation nor does
Patent Owner challenge Petitioner’s stated reasons for combining the
teachings of Dutta and Oberlander. PO Resp. 25.
Based on the arguments and evidence presented by Petitioner
discussed above, Petitioner establishes that Dutta in combination with
Oberlander teaches or suggests the limitation “the processor further operable
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to automatically select a communication path from an ordered list associated
with the indicated communication attribute.”
i. Conclusion
Based on the present record and after considering all of Patent
Owner’s arguments, we determine Petitioner has established by a
preponderance of the evidence that claim 1 would have been obvious in light
of Dutta and Oberlander.
G. Remaining Grounds
Petitioner’s challenges based on Oberlander and Bamburak,
Oberlander and Eriksson, and Oberlander and Burke with or without
Bamburak or Eriksson are presented as alternative grounds in the event we
were to determine that one or more elements of the challenged claim were
not disclosed or suggested by Oberlander alone. See Pet. 43, 55, 58.
Likewise, the challenge based on Dutta, Oberlander, and Eriksson is also an
alternative ground to the challenge based on Dutta and Oberlander. See id.
at 79. Because we determine that Petitioner has shown by a preponderance
of the evidence that claim 1 is unpatentable as anticipated and/or obvious
over Oberlander alone and unpatentable as obvious over Dutta and
Oberlander, we need not and do not decide these additional grounds. See
SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2108) (holding that a
petitioner “is entitled to a final written decision addressing all of the claims
it has challenged”); see also 35 U.S.C. § 318(a); In re Gleave, 560 F.3d at
1338 (Fed. Cir. 2009) (not reaching other grounds of unpatentability after
affirming the anticipation ground); Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984) (holding that once a dispositive issue is decided,
there is no need to decide other issues).
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III. CONCLUSION
Based on the record before us, we determine that Petitioner
demonstrates by a preponderance of the evidence that claim 1 of the ’658
patent is anticipated under 35 U.S.C. § 102 or unpatentable under 35 U.S.C.
§ 103.
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that,

In summary:

8 For the reasons discussed above, this ground was not reached.
9 For the reasons discussed above, this ground was not reached.
10 For the reasons discussed above, this ground was not reached.
11 For the reasons discussed above, this ground was not reached.
Claim(s)

35 U.S.C.
§
Reference(s)/Basis Claim(s)
Shown
Unpatentable
Claim(s)
Not shown
Unpatentable
1 102 Oberlander 1
1 103 Oberlander 1
1 103 Dutta, Oberlander 1
1 1038 Oberlander,
Bamburak,

1 1039 Oberlander,
Eriksson

1 10310 Oberlander, Burke
with or without
Bamburak or
Eriksson

1 10311 Dutta, Oberlander,
Eriksson

Overall
Outcome
1
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PETITIONER:
Joseph A. Micallef
Scott M. Border
SIDLEY AUSTIN LLP
jmicallef@sidley.com
sborder@sidley.com

PATENT OWNER:
Robert J. McAughan, Jr.
Albert B. Deaver
Christopher M. Lonvick
McAUGHAN DEAVER PLLC
bmcaughan@md-iplaw.com
adeaver@md-iplaw.com
clonvick@md-iplaw.com

Jeffrey A. Andrews
YETTER COLEMAN LLP
jandrews@yettercoleman.com