Paper No: 20
`
`Trials@uspto.gov
`571-272-7822
` Entered: December 9, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`PROXYCONN, INC.,
`Patent Owner.
`____________
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`____________
`
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION ON REMAND
`35 U.S.C. § 144 and 37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
` Entered: December 9, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`PROXYCONN, INC.,
`Patent Owner.
`____________
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`____________
`
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION ON REMAND
`35 U.S.C. § 144 and 37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`
`BACKGROUND
`
`
`
`On December 21, 2012, at the request of Microsoft Corporation
`
`(“Microsoft”) in a petition (Paper 6, “Pet.”) filed in this case, we instituted
`
`an inter partes review of claims 1, 3, 10, and 22–24 of U.S. Patent
`
`No. 6,757,717 (“the ’717 Patent”) under 35 U.S.C. §§ 311–319. Paper 17.
`
`On February 25, 2013, also at Microsoft’s request in a separate petition, we
`
`instituted an inter partes review of claims 6, 7, 9, 11, 12, and 14 of the ʼ717
`
`patent, and joined the two review proceedings under 35 U.S.C. § 315(c).
`
`IPR2013-00109, Papers 14, 15. Patent Owner, Proxyconn, Inc.
`
`(“Proxyconn”), did not file a Preliminary Response in either of the
`
`proceedings. After institution and joinder of the proceedings, however,
`
`Proxyconn filed a Corrected Patent Owner Response (Paper 45, “PO Resp.”)
`
`and a Motion to Amend (Paper 37). The trial proceeded and oral argument
`
`was held on November 18, 2013.
`
`
`
`
`
`On February 19, 2014, the Board issued a Final Written Decision in
`
`accordance with 37 C.F.R. § 42.73. Paper 73 (“Final Dec.”). The Board
`
`concluded that Microsoft had established, by a preponderance of evidence,
`
`that claims 1, 3, 6, 7, 9, 10, 11, 12, 14, 22, and 23 of the ʼ717 patent were
`
`unpatentable as anticipated and claims 1, 3, and 10 were unpatentable as
`
`being directed to obvious subject matter. The Board further concluded that
`
`Microsoft had not established, by a preponderance of evidence, that claim 24
`
`of the ʼ717 patent was unpatentable. Both parties appealed the decision to
`
`the United States Court of Appeals for the Federal Circuit.
`
`
`
`On June 19, 2015, the Federal Circuit issued a decision, affirming-in-
`
`part, reversing-in-part, and vacating-in-part the Board’s decision, and
`
`remanding the case to the Board. Microsoft Corp. v. Proxyconn, Inc., 789
`
`
`
`2
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`F.3d 1292 (Fed. Cir. 2015). The Federal Circuit decided that the Board had
`
`erred in its construction of certain terms appearing in the claims of the
`
`ʼ717 patent. As a result, the Federal Circuit vacated the Board’s
`
`determinations that claims 1, 3, 6, 7, 9, 10, 22, and 23 of the ʼ717 patent
`
`were not patentable and remanded the case to the Board “for proceedings
`
`consistent with this opinion.” 789 F.3d at 1299–1300. The court also
`
`affirmed the Board’s determination that claim 24 was patentable and the
`
`Board’s conclusion that claims 11, 12, and 14 were anticipated by the DRP
`
`reference.1 Id. at 1302–03. Finally, the court affirmed the Board’s denial of
`
`Proxyconn’s motion to amend. Id. at 1308. The Federal Circuit’s mandate
`
`issued on August 25, 2015. Paper 76.
`
`
`
`The parties were unable to reach agreement on post-remand
`
`procedures and, therefore, Microsoft sought the Board’s guidance. On
`
`September 1, 2015, following a telephone conference call with counsel, the
`
`Board entered an Order directing the parties to file briefs addressing the
`
`effect of the Federal Circuit’s decision on the Board’s Final Written
`
`Decision, specifically as to the patentability of claims 1, 3, 6, 7, 9, 10, 22,
`
`and 23 of the ʼ717 patent. Paper 77. The briefs, limited to fifteen pages,
`
`were to be filed simultaneously, and the parties were instructed that no new
`
`prior art references or other evidence beyond that considered in the Board’s
`
`Final Written Decision should be presented. No replies were authorized at
`
`the time, but the parties were instructed that should they wish to file a reply,
`
`
`1 THE HTTP DISTRIBUTION AND REPLICATION PROTOCOL, W3C Note
`(August 25, 1997), retrieved from http://www.www3.org/TR/NOTE-drp-
`19970825 (IPR2013-00109, Ex. 1003).
`
`
`
`3
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`they must contact the Board for authorization. Id. Neither party requested
`
`such authorization.
`
`
`
`In accordance with the Board’s Order, the parties filed their briefs on
`
`September 11, 2015. Papers 78 (“PO Remand Br.”), 79 (“Pet. Remand
`
`Br.”). On remand, Microsoft limits its patentability challenge to three
`
`grounds advanced in the Petition and upon which we instituted a trial:
`
`
`
`
`
`
`
`
`
`1. Obviousness of claims 6, 7, and 9 over Mattis2 and DRP;
`
`2. Obviousness of claims 1, 3, and 10 over Perlman3 and Yohe;4 and
`
`3. Anticipation of claims 22 and 23 by Santos.5
`
`
`
`The Board has reviewed the record in light of the Federal Circuit’s
`
`decision and the arguments of the parties. For the reasons that follow, we
`
`again conclude that claims 1, 3, 6, 7, 9, 10, 22, and 23 of the ʼ717 patent are
`
`not patentable.
`
`
`
`DISCUSSION
`
`
`
`The parties disagree on the effect of the Federal Circuit’s decision on
`
`remand. Proxyconn contends that the Board has “no other option” but to
`
`conclude that Microsoft failed to prove that the claims are unpatentable. PO
`
`Remand Br. 2. According to Proxyconn, “Microsoft has had a full and fair
`
`chance to present its chosen claim construction and arguments for
`
`unpatentability, and it has lost.” Id. In a footnote, Proxyconn argues that the
`
`
`2 U.S. Patent No. 6,292,880, issued Sept. 18, 2001 (IPR2013-00109,
`Ex. 1004)
`3 U.S. Patent No. 5,742,820, issued Apr. 21, 1998 (Ex. 1003).
`4 U.S. Patent No. 5,835,943, issued Nov. 10, 1998 (Ex. 1005).
`5 Santos and Wetherall, Increasing Effective Link Bandwidth by Suppressing
`Replicated Data, Proceedings of the USENIX Annual Technical Conference
`(NO 98) New Orleans, Louisiana, June 1998 (Ex. 1004).
`
`
`
`4
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`Board is “without authority to take further action” because the 18-month
`
`time period for the Board to make a final determination has expired. Id. at 3
`
`n.1 (citing 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c)). Alternatively,
`
`Proxyconn asserts that the claims are patentable over the art considered in
`
`our Final Written Decision. Id. at 3–15.
`
`
`
`We are not persuaded by Proxyconn’s argument that the Board is not
`
`permitted to consider the merits of Microsoft’s reasserted challenges on
`
`remand. First and foremost, the Federal Circuit remanded the case to the
`
`Board “for proceedings consistent with this opinion.” 789 F.3d at 1295.
`
`We do not interpret the Federal Circuit’s decision as requiring us to enter
`
`judgment for Proxyconn. Had this been the court’s intent, it could have
`
`done so. See 28 U.S.C. § 2106 (authorizing appellate courts to “affirm,
`
`modify, vacate, set aside or reverse” and remand). As the Federal Circuit
`
`recently stated regarding another remand to the Board: “The Board may
`
`control its own proceedings, consistent with its governing statutes,
`
`regulations, and practice. 37 C.F.R. § 42.5(a).” Ariosa Diagnostics v.
`
`Verinata Health, Inc., Nos. 2015-1215, 2015-1226, 2015 WL 7148267, at *8
`
`(Fed. Cir. Nov. 16, 2015).
`
`
`
`We also are not persuaded by Proxyconn’s argument that
`
`reconsidering the merits of the case in light of the Federal Circuit’s claim
`
`constructions results in unfairness or a “denial of due process.” PO Remand
`
`Br. 2. The guidance on claim construction provided by the Federal Circuit
`
`was based on claim constructions proposed by Proxyconn during the trial.
`
`See PO Resp. 11–16. For this reason, the suggestions that the claim
`
`constructions are “new,” or that Proxyconn was never permitted to address
`
`them, are unavailing. PO Remand Br. 2.
`
`
`
`5
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`
`
`Nor can Proxyconn claim it never had opportunity to respond to the
`
`arguments presented by Microsoft on remand, for they are not new, either.
`
`Rather, they are based on prior art of record that Microsoft relied upon in the
`
`petitions in these cases. For the arguments themselves, Microsoft has
`
`provided references to where they appear in the petitions and the supporting
`
`claim charts and expert testimony.
`
`
`
`Likewise, we are not persuaded that the Board is constrained by the
`
`18-month deadline for issuing a final written decision under 35 U.S.C.
`
`§ 316(a)(11). See supra. First, the 18-month deadline does not apply
`
`necessarily to joined cases, such as this one.6 Second, even if the 18-month
`
`deadline were applicable, the Board’s Final Written Decision was entered
`
`within 18 months of the institution of trial, whether that date is measured
`
`from the institution of trial in IPR2012-00026 or the joined proceeding in
`
`IPR2013-00109. The Federal Circuit’s partial vacatur does not negate the
`
`Board’s prior compliance with the deadline. If it did, that would essentially
`
`foreclose any further proceedings consistent with the Federal Circuit’s
`
`mandate in this case. Finally, we are not persuaded by Proxyconn’s
`
`unsupported assertion that this proceeding is “skewed in favor of Petitioner.”
`
`PO Remand Br. 2.
`
`
`
`
`
`The ʼ717 Patent
`
`The ʼ717 patent is described in the Final Written Decision. Here, we
`
`present a summary description.
`
`
`6 Under 35 U.S.C. § 316(a)(11), “the Director . . . may adjust the time
`periods [for issuing a final written decision] in the case of joinder under
`section 315(c).”
`
`
`
`6
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`
`
`The ʼ717 Patent describes a system for data access in a packet
`
`switched network. Ex. 1002, Abstract. The system has a sender/computer
`
`including an operating unit, a first memory, a permanent storage memory,
`
`and a processor. The system also has a remote receiver/computer including
`
`an operating unit, a first memory, a permanent storage memory, and a
`
`processor. The sender/computer and receiver/computer communicate
`
`through the network. Id.
`
`
`
`The sender/computer further includes a device for calculating digital
`
`digests on data; the receiver/computer further includes a network cache
`
`memory and a device for calculating digital digests on data in the network
`
`cache memory; and the receiver/computer and/or the sender/computer
`
`includes a device for comparison between digital digests. Id.
`
`
`
`The ʼ717 patent describes several embodiments of the claimed
`
`invention. The following figures (Figs. 4 and 11) from the patent illustrate
`
`two embodiments:
`
`
`
`
`
`7
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`
`
`
`Figure 4 depicts an embodiment of the invention in which a network
`
`computer system has at least two computers: sender/computer 42 and
`
`receiver/computer 46. Ex. 1002, col. 7, ll. 17–37. Figure 11 depicts an
`
`embodiment which adds gateway 60 and cacher 62 between
`
`sender/computer 46 and receiver/computer 42. Id. at col. 8, l. 57–col. 9, l. 9.
`
`
`
`
`
`The Federal Circuit Decision
`
`The Federal Circuit identified two erroneous claim constructions and
`
`one correct claim construction by the Board. First, the court considered the
`
`term “gateway . . . connected to said packet-switched network in such a way
`
`that network packets sent between at least two other computers pass through
`
`it” recited in claims 6, 7, and 9. 789 F.3d 1298. See Ex. 1002, Fig. 11
`
`(reproduced supra). The Federal Circuit decided that the Board erred in
`
`concluding that the “two other computers” through which network packets
`
`pass could include the caching computer. 789 F.3d at 1299. Referring to the
`
`ʼ717 patent specification, the Federal Circuit concluded that the phrase “two
`
`other computers” describes components that are “separate and distinct” from
`
`
`
`8
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`the gateway and caching computers. Id. Because the Board’s determination
`
`that claims 6, 7, and 9 were anticipated by the DRP reference was based on
`
`an erroneous construction, the Federal Circuit vacated the Board’s
`
`determination of unpatentability of claims 6, 7, and 9 and remanded to the
`
`Board. Id. at 1299.
`
`
`
`Next, the Federal Circuit considered the Board’s construction of the
`
`terms “sender/computer” and “receiver/computer” in connection with
`
`independent claims 1, 10, and 22, and dependent claims 3 and 23. Referring
`
`to the specification and figures, the Federal Circuit decided that the Board
`
`erred in concluding that the terms “sender/computer” and
`
`“receiver/computer” were broad enough to include intermediary gateway
`
`and caching computers. Id. at 1300. Because the Board’s determination that
`
`claims 1, 3, 10, 22, and 23 were not patentable was based on an erroneous
`
`construction, the Federal Circuit vacated the Board’s determination of
`
`unpatentability of claims 1, 3, 10, 22, and 23 and remanded to the Board. Id.
`
`
`
`Finally, the Federal Circuit considered Microsoft’s appeal of the
`
`Board’s decision that claim 24 was not rendered unpatentable by the Yohe
`
`and Perlman references. Microsoft challenged the Board’s construction of
`
`the phrase “searching for data with the same digital digest in said network
`
`cache memory” appearing in that claim. The Federal Circuit concluded that
`
`the Board correctly construed that phrase. Because Microsoft’s only
`
`argument for reversing the Board’s determination on claim 24 was that the
`
`construction of this limitation was wrong, the Federal Circuit affirmed the
`
`Board’s determination that claim 24 was patentable. Id. at 1301–02.
`
`
`
`9
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`
`Patentability of Claims 6, 7, and 9
`
`
`
`These claims are drawn to the Figure 11 embodiment of the invention
`
`depicted supra. In our Final Written Decision, we concluded that these
`
`claims were anticipated by DRP. Final Dec. 47. Consequently, we did not
`
`reach Microsoft’s separate challenge to those claims as obvious over the
`
`combination of Mattis and DRP. Id. at 53. In its brief on remand, Microsoft
`
`no longer challenges these claims as anticipated by DRP. Instead, Microsoft
`
`argues that the claims would have been obvious over Mattis and DRP. Pet.
`
`Remand Br. 1–6. This is not a new argument, as it was presented in the
`
`Petition in IPR2013-00109, and Microsoft continues to rely upon the claim
`
`charts and expert declaration it filed in that proceeding. Id. at 1–2. Further,
`
`our Order of September 1, 2015, specifically authorized the parties to
`
`address the combination of Mattis and DRP in their post-remand briefing.
`
`Paper 77, 3.
`
`
`
`Microsoft argues that the Federal Circuit’s decision does not affect the
`
`showing that claims 6, 7, and 9 would have been obvious over Mattis and
`
`DRP. Pet. Remand Br. 5–6. Microsoft’s Petition in IPR2013-00109
`
`identified Mattis’ proxy server as a gateway positioned as called for in the
`
`claims. IPR2013-00109, Ex. 1001, 3–4. This is illustrated in Figure 1 from
`
`Mattis, which follows:
`
`
`
`10
`
`
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`Figure 1 of Mattis shows proxy 30 positioned between client (10a, 10b) and
`
`server (40) computers. The proxy server in Mattis includes a cache. Mattis
`
`(at col 1, l. 65–col. 2, l. 4) describes this arrangement as follows:
`
`In one arrangement, as shown in FIG. 1, the cache is
`
`located in a proxy server 30 that is logically interposed between
`the clients 10a, 10b and the server 40. The proxy server
`provides a “middleman” gateway service, acting as a server to
`the client, and a client to the server. A proxy server equipped
`with a cache is called a caching proxy server, or commonly, a
`“proxy cache”.
`
`The integration of the proxy server and cache in Mattis is consistent with the
`
`disclosure of the ʼ717 patent. According to the description of Figure 11 in
`
`the ʼ717 patent, “gateway computer 60 may be integrally formed with the
`
`caching computer.” Ex. 1002, col. 9, ll. 6–8.
`
`
`
`Based on the foregoing, we are persuaded that consistent with the
`
`Federal Circuit’s guidance, Mattis discloses a gateway and caching
`
`computer connected between “two other computers” as recited in claims 6,
`
`7, and 9. Pet. Remand Br. 5 (identifying Mattis’ proxy server 30 and
`
`computer system 1100 as examples of the gateway, and citing IPR2013-
`
`00109, Ex. 1004, Figs. 1–2, and 11, col. 1, l. 14–col. 2, l. 14, col. 9, l. 65–
`
`col. 10, l. 10, col. 27, l. 50–col. 28, l. 2, col. 37, ll. 26–31, and col. 37, ll. 42–
`
`45). We are persuaded, therefore, that the Federal Circuit’s instruction that
`
`the gateway be separate from the “other” computers recited in the claims is
`
`met by the combination of Mattis and DRP.
`
`
`
`Microsoft argues that Proxyconn responded to this challenge in its
`
`Patent Owner Response by arguing that there was no motivation to combine
`
`Mattis and DRP. Id. at 3. Microsoft, therefore, asserts that Proxyconn has
`
`admitted that Mattis discloses a cache file system intermediate between a
`
`
`
`11
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`server and multiple clients, thus meeting the “gateway” claim element as
`
`construed by the Federal Circuit. Id. While not dispositive of this issue, we
`
`agree with Microsoft that Proxyconn has not challenged this assertion.
`
`
`
`Proxyconn argues that because Microsoft did not “raise” it on appeal,
`
`this obviousness challenge based on Mattis and DRP is waived and,
`
`therefore, “[t]here is nothing more for this Board to do.” PO Remand Br. 5.
`
`We disagree. The argument was presented in Microsoft’s second Petition
`
`and was addressed in Patent Owner’s Response. PO Resp. 42–43; IPR2013-
`
`00109, Pet. 18–26. The Board did not reach the merits of the argument in its
`
`Final Written Decision. Consequently, there was no final decision on that
`
`issue that Microsoft could appeal. See 35 U.S.C. § 141(c) (party “who is
`
`dissatisfied with the final written decision of the Patent Trial and Appeal
`
`Board” may appeal the Board’s decision to the Federal Circuit (emphasis
`
`added)). It would be unfair to preclude Microsoft from raising a ground that
`
`the Board previously determined to be “moot” in light of another challenge
`
`that was later reversed, especially when Proxyconn addressed the issue fully
`
`during the trial.
`
`
`
`Proxyconn further argues that because the Federal Circuit has
`
`determined that DRP no longer anticipates the correctly construed claims,
`
`“the combination of Mattis and DRP likewise does not make the claims
`
`obvious.” PO Remand Br. 5. This is a non sequitur. The Federal Circuit’s
`
`reversal was based on the absence in DRP of a gateway separate from the
`
`two “other” computers. See supra. It was not based on the absence in DRP
`
`of the “other” computers, namely, the client and server. In fact, such “other”
`
`computers are described by Proxyconn and shown as the “client” and
`
`“server” in Proxyconn’s own illustration of DRP. Id. at 4. In any event, as
`
`
`
`12
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`Microsoft points out, and as is illustrated supra, Mattis describes the proxy
`
`server as a gateway located between a client computer and a server
`
`computer. IPR2013-00109, Ex. 1004, Figs. 1–2, and 11, col. 1, l. 14–col. 2,
`
`l. 14, col. 9, l. 65–col. 10, l. 10, col. 27, l. 50–col. 28, l. 2, col. 37, ll. 26–31,
`
`and col. 37, ll. 42–45. For at least these reasons, we do not find Patent
`
`Owner’s argument persuasive.
`
`
`
`Nor are we persuaded by Proxyconn’s argument, based on the Board’s
`
`statement at page 17 of the Institution Decision in IPR2013-00109, that
`
`because Mattis lacks the comparison means recited in the claim there is a
`
`“deficiency” in the Mattis-DRP combination. PO Remand Br. 5–6. The
`
`argument is misplaced because that portion of the Institution Decision
`
`addressed Mattis as an anticipatory reference. In the Institution Decision,
`
`we also concluded that DRP met this element, as established by Microsoft’s
`
`claim charts and expert declaration. IPR2013-00109, Decision on Institution
`
`15–16; IPR2013-00109, Ex. 1001, 12–13; IPR2013-00109, Ex. 1013, 12.
`
`We conclude, therefore, that such a “deficiency” does not exist in the
`
`combination of Mattis and DRP.
`
`
`
`Finally, we note that persuasive evidence of a rationale to combine
`
`DRP and Mattis is found in the Long Declaration. IPR2013-00109, Ex.
`
`1013, 10–16. Proxyconn does not challenge this evidence. We, therefore,
`
`conclude that, taking into account the Federal Circuit’s decision, Microsoft
`
`has demonstrated that claims 6, 7, and 9 of the ʼ717 patent would have been
`
`obvious over DRP and Mattis and are not patentable.
`
`
`
`
`
`
`
`
`
`Patentability of Claims 1, 3, and 10
`
`These claims are directed to the Figure 4 embodiment of the ʼ717
`
`patent. See supra. Unlike the claims just discussed, they include recitation
`
`
`
`13
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`of the sender/computer and receiver/computer, but not the gateway. All
`
`three claims require the sender/computer and receiver/computer to have
`
`permanent storage memory.
`
`
`
`Microsoft contends that the Federal Circuit’s decision does not affect
`
`the Board’s decision that these claims are obvious over Perlman and Yohe.
`
`Pet. Remand Br. 6–11. Microsoft points to evidence presented in the
`
`Petition in this case and accompanying claim charts, as well as the Long
`
`Declaration (Ex. 1007). Id. at 7. In those submissions, Microsoft identifies
`
`certain “routers” shown in Perlman as corresponding to the
`
`“sender/computer” and “receiver/computer” identified in these claims. Id.
`
`(citing Ex. 1001, 3, 5). Microsoft asserts that Yohe provides the only feature
`
`of these claims arguably missing from Perlman, namely, storing of digital
`
`digests in permanent, rather than volatile, memory. Pet. Remand Br. 7
`
`(citing Pet. 36–38; Ex. 1007 11–15).
`
`
`
`In the Petition, Microsoft contended that Perlman anticipates claims 1,
`
`3, and 10. Pet. 9; Ex. 1001. Proxyconn responded that Perlman was not an
`
`“access system” and did not disclose “permanent storage memory.” PO
`
`Resp. 17–18. Proxyconn did not assert that Perlman’s routers failed to meet
`
`the “sender” and “receiver” requirements, even under Proxyconn’s proposed
`
`construction of those terms, namely: “Neither the sender/computer nor the
`
`receiver/computer includes separate intermediary computers, such as
`
`gateways, proxies, routers, and caching computers.” Id. at 16.
`
`
`
`As a consequence, Microsoft now asserts that Proxyconn has
`
`“conceded” that Perlman discloses a “sender” and “receiver,” even under
`
`Proxyconn’s narrower definition of those terms reflected in the Federal
`
`Circuit decision. Pet. Remand Br. 7. On remand, Proxyconn does not
`
`
`
`14
`
`
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`dispute this assertion. Instead, Proxyconn asserts that it should prevail
`
`simply because the Board’s decision was based on a “rejected claim
`
`construction.” PO Remand Br. 8. We are not persuaded by this argument.
`
`Instead, we are persuaded that Perlman meets the “receiver” and “sender”
`
`limitations of the claims, even under Proxyconn’s construction of
`
`“sender/computer” and “receiver/computer.”
`
`
`
`Perlman discusses an illustrative network embodiment using routers.
`
`See supra. A router is an intermediary device and, under Proxyconn’s
`
`construction, might not be considered a “sender” or “receiver.”7
`
`Nevertheless, we agree with Microsoft that the disclosure of Perlman is not
`
`confined to networks using routers, but expressly applies to “any type of
`
`distributed system requiring efficient synchronization of the contents of data
`
`bases stored on nodes of a computer network.” Pet. Remand Br. 8; Ex.
`
`1003, col. 8, ll. 57–60. Perlman’s express disclosure of nodes is referred to
`
`in Microsoft’s Petition at pages 32–33, 35, 37, and 39. And Proxyconn’s
`
`Patent Owner Response states, “Perlman discloses a sending node that
`
`broadcasts a database identifier to a plurality of receiver nodes, and updates
`
`the receiver nodes so that all of the nodes are synchronized.” PO Resp. 29.
`
`
`
`Although a router, like a gateway computer, may be considered an
`
`“intermediary” differentiated from the “sender” and “receiver” under
`
`Proxyconn’s construction (see infra), a node is not. A dictionary definition
`
`of “node” is as follows: “In networking, a device, such as a client computer,
`
`a server, or a shared printer, that is connected to the network and is capable
`
`of communicating with other network devices.” THE MICROSOFT COMPUTER
`
`
`7 The IBM DICTIONARY OF COMPUTING 588 (10th ed. 1993) defines “router”
`as “A computer that determines the path of network traffic flow.” Ex. 3001.
`
`
`
`15
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
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`DICTIONARY 312 (4th ed. 1997).8 Ex. 3002. We are persuaded that
`
`Perlman’s disclosure of using nodes meets the “sender/computer” and
`
`“receiver/computer” limitations of these claims consistent with the Federal
`
`Circuit’s decision.
`
`
`
`We are further persuaded that Microsoft and Dr. Long provide a
`
`compelling rationale for combining Perlman and Yohe. Pet. 12–14;
`
`Ex. 1007, 9–18. We, therefore, conclude that, taking into account the
`
`Federal Circuit’s decision, Microsoft has demonstrated that claims 1, 3, and
`
`10 of the ʼ717 patent are unpatentable for obviousness over Perlman and
`
`Yohe.
`
`
`
`
`
`Patentability of Claims 22 and 23
`
`These method claims are directed to the operation of the
`
`receiver/computer. The claims, therefore, recite the receiver/computer, but
`
`not the sender/computer.
`
`
`
`Santos is described in the Final Written Decision at pages 26–30.
`
`Santos describes a compression architecture that prevents transmission of
`
`replicated data to increase bandwidth in a packet switched environment such
`
`as the Internet. Final Dec. 26. In Santos, the messages are exchanged
`
`between a “compressor” and a “decompressor.” Ex. 1004, Fig. 4. In one
`
`embodiment, these elements are implemented as a pair of Pentium II
`
`computers directly connected to each other via a dedicated Ethernet
`
`connection. Final Dec. 27–28; Ex. 1004, 9.
`
`
`8 This is consistent with the definition for “node” in the IBM DICTIONARY OF
`COMPUTING 459 (10th ed. 1993): “In a network, a point at which one or
`more functional units connect channels or data circuits.” Ex. 3003.
`
`
`
`16
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`
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`
`
`Citing this Pentium II implementation, Microsoft contends that even
`
`under the Federal Circuit’s “narrower” interpretation of “receiver,” Santos
`
`discloses a “receiver” as recited in the claims. Pet. Remand Br. 13–14
`
`(citing Ex. 1004, 9–10, Fig. 3). Microsoft recognizes that Santos also
`
`discloses an embodiment in which the compressors and decompressors are
`
`described as routers. Pet. Remand Br. 14. A router is defined as an
`
`intermediary device. See supra. However, in the test implementation
`
`described in Santos, the Pentium II PCs were directly connected, with the
`
`“decompressor” PC as one endpoint of the communications channel. Id. at
`
`15.
`
`
`
`Proxyconn contends that Santos’ compressor and decompressor are
`
`“intermediate computers” as opposed to sender or receiver computers,
`
`because Santos says they are routers. PO Remand Br. 7. Proxyconn
`
`provides a diagram that it says is based on Figure 3 of Santos, showing the
`
`compressor and decompressor as separate from the server and clients,
`
`respectively. Id. Proxyconn contends that as a result, Santos fails to
`
`disclose the “receiver/computer” recited in claims 22 and 23. Id. at 13.
`
`
`
`We are not persuaded by this argument because it ignores the Pentium
`
`II implementation in Santos. We are, instead, persuaded that the use of a
`
`Pentium II computer to implement the decompressor as described in Santos
`
`meets Proxyconn’s construction of “receiver/computer,” and is consistent
`
`with the Federal Circuit’s guidance. For the reasons discussed supra, we
`
`determine that the decompressor machine in Santos’s Pentium II
`
`implementation is not an intermediary device.
`
`
`
`Proxyconn contends that “at no point” did Microsoft attempt to show
`
`that Santos had a “receiver/computer” without intermediaries. PO Remand
`
`
`
`17
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`
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`Br. 13. This argument is unavailing. Microsoft contended in its claim charts
`
`accompanying the Petition that Santos provided such a receiver/computer.
`
`As stated in the claim charts: “Receiver implementation is an ‘Intel-based
`
`PentiumII’ computer running Linux Operating system (Santos § 3.4, ¶ 1).”
`
`Ex. 1001, 6.
`
`
`
`We, therefore, conclude that taking into account the Federal Circuit’s
`
`decision, Microsoft has demonstrated that claims 22 and 23 of the ʼ717
`
`patent are anticipated by Santos.
`
`
`
`
`
`
`
`In view of the foregoing, it is
`
`ORDER
`
`ORDERED that claims 1, 3, 6, 7, 9, 10, 22, and 23 of U.S. Patent No.
`
`6,757,717 are not patentable; and
`
`
`
`FURTHER ORDERED that this is a final written decision of the
`
`Board under 35 U.S.C. § 318(a). Parties to the proceeding seeking judicial
`
`review of the decision must comply with the notice and service requirements
`
`of 37 C.F.R. § 90.2.
`
`
`
`
`
`18
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`For Patent Owner
`
`Matthew L. Cutler
`Harness, Dickey & Pierce, PLC
`mcutler@hdp.com
`
`Bryan K. Wheelock
`Harness, Dickey & Pierce, PLC
`bwheelock@hdp.com
`
`Douglas A. Robinson
`Harness, Dickey & Pierce, PLC
`drobinson@hdp.com
`
`
`
`For Petitioner
`
`John D. Vandenberg
`Klarquist Sparkman LLP
`john.vandenberg@klarquist.com
`
`Stephen J. Joncus
`Klarquist Sparkman LLP
`stephen.joncus@klarquist.com
`
`
`
`19
`
`
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