PTAB

IPR2023-00806

Sonos Inc v. Google LLC

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1. Case Identification

2. Patent Overview

  • Title: Apparatus and Method for Seamless Commissioning of Wireless Devices
  • Brief Description: The ’615 patent discloses systems for commissioning a new "target device" onto a wireless local area network (WLAN). The system uses a "smart wireless device," already connected to the WLAN, to transmit network configuration data to the target device via a separate, short-range communication channel (a "side band") such as Bluetooth or Near Field Communication (NFC).

3. Grounds for Unpatentability

Ground 1: Obviousness over Roberts and Asokan - Claims 1-3, 5-12, and 15-19

  • Prior Art Relied Upon: Roberts (Patent 7,616,594) and Asokan (Application # 2006/0251256).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Roberts teaches the core concept of the ’615 patent: a "registrar" device already on a wireless network provides necessary configuration settings to a new "enrollee" device to allow it to join the network. Roberts explicitly discloses that this data transfer can occur over an "out of band" communication channel, such as a direct Bluetooth connection, which is independent of the primary wireless network. Asokan was presented as teaching the benefits of this out-of-band approach, describing it as simpler, more secure, and better for managing guest access compared to in-band methods. The combination of Roberts's system with Asokan's rationale for preferring an out-of-band channel allegedly renders the claimed method obvious. Dependent claims were argued to be obvious as they recite well-known features of such systems, like using smartphones (disclosed as "hand-held devices" in Roberts) or specific modulation techniques inherent to Bluetooth (FSK/PSK).
    • Motivation to Combine: A POSITA would combine Asokan's teachings with Roberts's system to improve its security and usability. While Roberts mentioned both in-band and out-of-band communication as options, Asokan provided a strong rationale for selecting the out-of-band method, teaching that it avoids problems like "man-in-the-middle" attacks and simplifies network setup. This desire for a more secure and user-friendly system, along with Roberts's own disclosure of Bluetooth as a viable channel, would have motivated a POSITA to implement Roberts using the out-of-band communication method emphasized by Asokan.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because both references address the same technical problem of device commissioning and disclose the use of common, compatible technologies like Bluetooth for out-of-band communication.

Ground 2: Obviousness over Suumäki - Claims 1-3, 5-12, and 15-19

  • Prior Art Relied Upon: Suumäki (Patent 9,288,228).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Suumäki alone teaches all limitations of the challenged claims. Suumäki describes a system where a device already on a WLAN ("device A") commissions a new device ("device B") onto the network. A user initiates the process by physically touching the two devices, which establishes a short-range, out-of-band NFC communication link. Device A then transmits network configuration data (including authentication information and the network MAC address) to device B over this NFC link. Petitioner argued that the transmitted message, formatted according to the NDEF standard referenced by Suumäki, constitutes the claimed "network configuration packets" with a "predetermined data format" and contains a "security passphrase" (e.g., an authentication key). Device B then uses this data to connect to the network's hub device via its primary wireless radio.
    • Motivation to Combine: This ground relied on a single primary reference. However, Petitioner argued that a POSITA would be motivated to consult and apply industry standards that Suumäki explicitly incorporates by reference, such as the NFC Data Exchange Format (NDEF) specification and the ISO/IEC 18092 standard. These standards provide details on packet structure and modulation techniques (e.g., on-off keying), confirming that Suumäki's system would operate as claimed. The motivation was to ensure compatibility and implement the protocol as designed.
    • Expectation of Success: A POSITA would have a high expectation of success because Suumäki's system is designed to operate using the NFC protocols and data formats detailed in the referenced standards.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate.
  • §314(a) (Fintiv): Petitioner contended that the Fintiv factors weigh against denial because they do not apply to the co-pending ITC proceeding, and the related district court case is stayed with no meaningful progress. Petitioner also asserted that the petition presented compelling evidence of unpatentability.
  • §325(d): Petitioner argued that denial under §325(d) would be improper because the primary prior art references asserted in the petition (Roberts, Asokan, and Suumäki) were never considered by the examiner during prosecution. Petitioner claimed this art is substantively different from the art of record and overcomes the deficiencies the examiner previously identified.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5-12, and 15-19 of the ’615 patent as unpatentable.