PTAB

IPR2024-01428

HP Inc v. Universal Connectivity Technologies Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and system for nesting of communications packets
  • Brief Description: The ’905 patent discloses systems and methods for packet preemption in serial communications. The technology allows transmission of a first, lower-priority data packet to be interrupted by a higher-priority packet, signaled by a "preempt indicator" containing out-of-band symbols, and later resumed upon transmission of a "continue indicator."

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Banes - Claims 1, 3, 5, 7-8, 10, 12, 14-15, 17, 20-21, 23, and 26 are anticipated or obvious over Banes.

  • Prior Art Relied Upon: Banes (United Kingdom Patent Application No. GB 2344029).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Banes, which was not cited during prosecution, teaches every limitation of the challenged claims. Banes describes a method to prevent smaller, important data packets from being delayed by larger, lower-priority packets. It discloses interrupting a first data packet upon arrival of a higher-priority packet, inserting an "interrupt code" (preempt indicator), transmitting the high-priority packet, and then sending a "resume code" (continue indicator) to signal the resumption of the first packet's transmission. Petitioner contended the key limitation of using "in-band symbols" for packets and "out-of-band symbols" for indicators is met because Banes teaches its method applies to Ethernet networks using 8b/10b encoding. In such schemes, data packets inherently contain in-band symbols, while the "interrupt" and "resume" codes are described as "spare" or "unused" codes, which a POSITA would understand to be out-of-band symbols not normally present in the data stream.
    • Motivation to Combine (for §103 grounds): For claims found obvious rather than anticipated, Petitioner argued a POSITA would have been motivated to implement Banes’s preemption scheme using the well-known 8b/10b encoding common in Ethernet. For dependent claim 3, a POSITA would be motivated to use non-transition-optimized out-of-band symbols (the "spare" codes) to ensure they are easily distinguishable from the transition-optimized in-band data symbols, a standard objective of 8b/10b encoding for maintaining synchronization and signaling control.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the approach utilizes conventional networking principles and standard encoding schemes to achieve a predictable result in packet preemption.

Ground 2: Anticipation and Obviousness over Calvignac - Claims 1-2, 5, 8-9, 12, 16, and 20-22 are anticipated or obvious over Calvignac.

  • Prior Art Relied Upon: Calvignac (Patent 5,557,608).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Calvignac, which was cited but not substantively discussed during prosecution, also teaches all claim limitations. Calvignac describes a method for preempting low-priority, "non-real-time" (NRT) traffic with high-priority, "real-time" (RT) traffic. It discloses stopping the transmission of an NRT packet, inserting a "trailer byte" and an "X'7E' flag" (together, the preempt indicator), transmitting the RT packet, and then inserting another trailer byte and flag (the continue indicator) to resume the NRT packet. Petitioner argued that the packets, which use the HDLC protocol, contain "in-band" symbols, while the inserted trailer bytes and flags are "out-of-band" symbols because they are control signals not normally part of the packet data. Petitioner further argued that the combination of a trailer byte and a flag constitutes a "primitive" as required by claim 2.
    • Motivation to Combine (for §103 grounds): To the extent any limitation was found not explicitly disclosed, Petitioner argued it would have been obvious to a POSITA. For example, if the first and second packets were not seen as explicitly transmitted on the same link, a POSITA would be motivated to do so because the entire purpose of preemption is to manage contention on a single communications link; using separate links would render preemption unnecessary.
    • Expectation of Success: A POSITA would have reasonably expected success in implementing the claimed method using Calvignac's teachings, as it describes a complete and functional packet preemption protocol.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate. The petition asserted that the primary reference, Banes, is new art that was never presented to the examiner. It further argued that while Calvignac was cited during prosecution, it was never substantively discussed or analyzed by the examiner, meaning the specific arguments and mappings presented in the petition are being considered for the first time. Therefore, Petitioner contended the art and arguments are not the "same or substantially the same" as those previously before the Office.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5, 7-10, 12, 14-17, 20-23, and 26 of the ’905 patent as unpatentable.