Trials@uspto.gov
`571-272-7822
`
`
`
`Paper: 35
`Entered: March 15, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TALARI NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS PRIVATE LIMITED1,
`Patent Owner.
`____________
`
`Case IPR2016-00976
`Patent 6,775,235 B2
`____________
`
`
`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`1 We note that Patent Owner’s Updated Mandatory Notice changed the name
`of the Patent Owner. Paper 30.
`
`

`

`IPR2016-00976
`Patent 6,775,235 B2
`
`
`I. INTRODUCTION
`FatPipe Networks Private Limited (“Patent Owner”) seeks rehearing
`(Paper 33, “Request” or “Req. Reh’g”) of our determination in the Final
`Written Decision (Paper 32, “Decision” or “Dec.”) that claims 4 and 92 of
`U.S. Patent No. 6,775,235 B2 (Ex. 1001, “the ’235 patent”) would have been
`obvious over Karol. Patent Owner argues that we erred in our determination
`that (1) it would have been obvious to modify Karol’s routing in the manner
`proposed by Petitioner; (2) we misapprehended the passages from the
`’235 patent describing path selection based on origin; and (3) we
`“overlooked and/or misapprehended that routing based on the source address
`will forward all packets from the same source to the same network.” Req.
`Reh’g 1–2.
`“The burden of showing a decision should be modified lies with the
`party challenging the decision.” 37 C.F.R. § 42.71(d). When requesting
`rehearing of a decision, the challenging party must identify specifically all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed in the record. Id. We
`have considered Patent Owner’s Request and for reasons that follow, we
`clarify our reasoning in the Decision regarding the unpatentability of claims
`4 and 9 and we maintain our determination that Petitioner established by a
`preponderance of the evidence the unpatentability of claims 4 and 9.
`
`
`2 We also found that Petitioner demonstrated by a preponderance of the
`evidence that claims 5, 7–8, and 10–15 of the ’235 patent are unpatentable.
`Patent Owner does not challenge these determinations in this Request for
`Rehearing.
`
`2
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`

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`IPR2016-00976
`Patent 6,775,235 B2
`
`
`II. DISCUSSION
`Patent Owner argues that we erred in our determinations regarding
`claim 4 and claim 9. Req. Reh’g 2–6. Petitioner asserted that these claims
`were anticipated by and would have been obvious over Karol. Pet. 10–17,
`24–25 (anticipation); id. at 42–47, 54 (obviousness).
`Claim 4 recites, in relevant part, “a packet path selector which selects
`between network interfaces on a per-packet basis according to at least: a
`destination of the packet, an optional presence of alternate paths to that
`destination, and at least one specified criterion for selecting between
`alternate paths when such alternate paths are present.” Claim 9 depends
`from claim 5 and recites, in relevant part, “the selecting step make[s]
`network path selections on a packet-by-packet basis.” In our Final Written
`Decision, we construed the phrase “selects between network interfaces on a
`per-packet basis” to mean “selecting a network path/interface for each
`packet.” Dec. 9. Based on the evidence and arguments presented, we found
`Petitioner’s anticipation argument to be insufficient because “we
`determine[d] that Karol’s routing decisions are made for a flow of packets
`and not for an individual packet.” Id. at 18.
`Petitioner also argued that claims 4 and 9 would have been obvious
`over Karol if we construed “per-packet basis” to require selection for each
`packet. Pet. 45, 54. We found Petitioner’s obviousness argument to be
`legally sufficient and held that Petitioner had meet its burden to establish the
`unpatentability of claims 4 and 9 as obvious over Karol. Dec. 19–22, 30–31.
`On rehearing, Patent Owner asserts that this determination was incorrect
`because the modified Karol system would not select packets based on
`destination address as recited in claims 4 and 9. Req. Reh’g 2–6.
`
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`IPR2016-00976
`Patent 6,775,235 B2
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`
`As an initial matter, we note that this argument is different from the
`argument presented during the trial. Patent Owner had argued that
`Karol does not disclose selecting a network on a per packet
`basis because (1) Karol does not “select” a network when a
`packet arrives but simply routes packets based on the
`forwarding database’s pre-computed route and (2) Karol’s
`forwarding database facilitates network path selection/changes
`only when updated with LSAs, which occurs only infrequently
`and not on a per-packet basis.
`Paper 22 (“PO Resp.”) 24. Thus, despite the fact that Patent Owner stated
`that “Karol does not disclose or render obvious the per-packet network path
`selection required by claim 4” the argument was directed to Petitioner’s
`anticipation argument and not the obviousness argument over Karol alone.
`id. (emphasis added); see also id. at 51 (“for the same reasons set forth
`above for independent claim 4, Karol also fails to anticipate or render
`obvious claim 9”). As such, we could not have overlooked or
`misapprehended an argument that was not made. See also Paper 8, 6 (“The
`patent owner is cautioned that any arguments for patentability not raised in
`the response will be deemed waived.”).
`Even if these arguments had been raised, however, they would not
`have been persuasive because they misconstrue Petitioner’s arguments. In
`its Request for Rehearing, Patent Owner points out that in the Decision, we
`stated “that it would have been obvious to modify Karol by limiting the
`routing decision to an analysis of the packet’s source address.” Req. Reh’g
`3 (quoting Dec. 19–20). According to Patent Owner, this would not meet
`the limitations of claim 4 because that claim recites selection criteria which
`include the destination of the packet. Specifically, claim 4 recites, in
`relevant part,
`
`4
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`

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`IPR2016-00976
`Patent 6,775,235 B2
`
`
`a packet path selector which selects between network
`interfaces on a per-packet basis according to at least:
`[1] a destination of the packet,
`[2] an optional presence of alternate paths to that
`destination, and
`[3] at least one specified criterion for selecting between
`alternate paths when such alternate paths are present;
`
`
`Ex. 1001, 17:46–51. Patent Owner argues that because claim 4 requires that
`the destination of the packet is used to select between network interfaces on
`a per-packet basis, the proposed modification to Karol is insufficient because
`it limits the routing decision to an analysis of the packet’s source address.
`Req. Reh’g 4. Patent Owner is correct in its assertion that claim 4 requires
`path selection based on criteria which includes the packet’s destination.
`Petitioner, however, addresses the selection criteria in its argument.
`Petitioner asserts that,
`To route the packets to a destination of the packet, Karol
`discloses a “forwarding database 432” within the gateway
`processor to determine if a particular packet matches a
`combination of “Destination IP address; Next hop router;
`Outgoing port (interface)” that would cause such a packet to be
`routed to the CL network or to be considered for routing over
`the CO network. (Ex. 1006 at 7:36-41; Ex. 1005 at ¶ 183.)
`For packets that are candidates for the CO network,
`Karol also discloses that each such packet is compared at the
`gateway processor with the “flow database 433” to determine if
`a particular packet matches a desired combination of “(a) an
`outgoing port field, which indicates the port on which a
`datagram whose entries match a particular record’s entries is
`forwarded; (b) if the outgoing port is ‘invalid,’ the next field
`‘forward or hold’[] entry indicates whether packet should be
`forwarded or held in packet buffer 440; (c) destination address;
`(d) source address; (e) source port; (f) destination port; (g) type
`
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`IPR2016-00976
`Patent 6,775,235 B2
`
`
`of service; (h) protocol field; (i) TCP Flags; (j) outgoing port;
`(k) forward or hold flag, and (l) a mask which indicates which
`of the data entries is applicable to the particular record” in order
`to route such a packet to the CO network instead of the CL
`network depending on availability of a valid connection in the
`CO network for a flow associated with the particular packet.
`(Ex. 1006 at 7:42-54, 7:60-8:2; Ex. 1005 at ¶¶ 184, 185.)
`Pet. 14–15. Petitioner cites this argument as part of its obviousness
`contentions regarding the limitation at issue. Id. at 45 (citing argument from
`§V(A) at claim 4[d]). Petitioner’s obviousness argument supplements those
`contentions with an argument that path selection for individual packets was
`within the knowledge of a person of ordinary skill in the art. Id.
`Petitioner’s argument is specifically directed to the potential for an
`alternate construction of “per-packet basis.” Id. Dr. Negus supported
`Petitioner’s argument by opining that if we were to construe “per-packet
`basis” to require a selection for each packet then “the knowledge and
`common sense of the person of ordinary skill in the art at the time of the
`invention was sufficient to extrapolate from the disclosures of Karol.”
`Ex. 1005 ¶ 190. Dr. Negus cites two pieces of evidence to support his
`testimony that this modification would have been within the knowledge of
`one of ordinary skill in the art, (1) a passage from the ’235 patent that
`describes selecting paths based on the origin of a packet; and (2) a data and
`computer communications textbook. Id. ¶¶ 192–194. We found this
`evidence to be persuasive and we agreed with Petitioner’s contention it
`would have been obvious to modify Karol to make its routing decisions for
`each packet as opposed to making decisions for a flow as is disclosed in
`Karol.
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`IPR2016-00976
`Patent 6,775,235 B2
`
`
`In the Decision, we discussed the evidence cited by Dr. Negus. In
`particular, we addressed Petitioner’s view of “a passage from the
`’235 patent, which describes a ‘prior approach[] for selecting which network
`to use for which packet(s)’ in which decisions are made based on the origin
`of the packet.” Dec. 19 (quoting Ex. 1001, 4:15–23). Petitioner cited this
`passage as evidence of “the ‘prior art [as] disclos[ing] routing decisions that
`are independent of the particular flows or sessions of particular packets.’”
`Id. (citing Pet.45) (alterations in Decision).
`Patent Owner asserts that Petitioner’s reliance on the passage from the
`’235 patent discussing routing packets based on their origin is misplaced.
`Req. Reh’g 7–9 (quoting Ex. 1001, 4:15–23). Petitioner, however, does not
`assert that these claims are obvious over Karol and any admitted prior art,
`but rather Petitioner asserts that the “combination of the knowledge of a
`POSITA with Karol would render this claim element obvious.” Pet. 45. In
`an obviousness analysis under 35 U.S.C. §103(a), “common sense” or the
`knowledge of the ordinarily skilled artisan may play a role in bridging gaps
`in prior art's explicit teachings. KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398,
`420–21 (2007) (“Common sense teaches ... that familiar items may have
`obvious uses beyond their primary purposes, and in many cases a person of
`ordinary skill will be able to fit the teachings of multiple patents together
`like pieces of a puzzle.”). Although “common sense and common
`knowledge have their proper place in the obviousness inquiry,” common
`sense “cannot be used as a wholesale substitute for reasoned analysis and
`evidentiary support, especially when dealing with a limitation missing from
`the prior art references specified.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d
`1355, 1361–62 (Fed. Cir. 2016). We must proceed with caution because the
`
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`IPR2016-00976
`Patent 6,775,235 B2
`
`use of common sense or knowledge of the artisan to supply a missing
`limitation ought to be treated as the exception, rather than the rule. Id. at
`1361. As our reviewing court has observed, “[a]bsent some articulated
`rationale, a finding that a combination of prior art would have been
`‘common sense’ or ‘intuitive’ is no different than merely stating the
`combination ‘would have been obvious.’” In re Van Os, 844 F.3d 1359,
`1361 (Fed. Circ. 2017).
`Thus, we were tasked with looking to see if the assertion of
`knowledge and common sense of the person of ordinary skill was supported
`with “articulated reasoning with some rational underpinning to support the
`legal conclusion of obviousness,” as required by our reviewing court. In re
`Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). In support of his opinion that
`per-packet routing was within the knowledge of one of ordinary skill,
`Dr. Negus discusses the passage in question. Id. ¶ 192. Specifically, he
`argues that the ’235 patent admits that routing on a per-packet basis was
`known at the time of the patent’s invention. Id. He testified that “routing
`decisions that are based entirely upon the origin (for example, source
`address) of the packet independent of the particular flows or sessions that
`particular packets from such an origin are associated with (see, for example,
`Ex. 1001 at 4:15–23)” were discussed in the ’235 patent. Id. As further
`evidence of the knowledge of a person of ordinary skill he also cited
`“Stallings, a common reference textbook on data and computer
`communications, [that] describes ‘source routing’ whereby the ‘source
`station specifies the route by including a sequential list of routers in the
`datagram’ (see, for example, Ex. 1011 at p. 539).” Id. ¶ 1.
`
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`IPR2016-00976
`Patent 6,775,235 B2
`
`
`On rehearing, Patent Owner argues that “the ’235 patent’s description
`of per-department network selection does not lend any teaching or rationale
`to modify Karol to make a decision on a per-packet basis.” Req. Reh’g 9.
`Specifically, Patent Owner contends that the “coarse routing of traffic or
`flows between networks” stands in contrast to the recited per-packet or
`packet-by packet routing and thus, does not support Petitioner’s arguments.
`Req Reh’g 7. The passage at issue states,
`But better tools and techniques are needed for use in
`architectures such as that shown in FIG. 5. In particular, prior
`approaches for selecting which network to use for which
`packet(s) are coarse. For instance, all packets from department
`X might be sent over the frame relay connection 106 while all
`packets from department Y are sent over the Internet 500. Or
`the architecture might send all traffic over the frame relay
`network unless that network fails, and then be manually
`reconfigured to send all traffic over a VPN 502.
`Id. at 8 (quoting Ex. 1001, 4:15–23 (emphasis by Patent Owner)). Patent
`Owner argues that this method of routing is criticized in the specification
`because it does not support load-balancing on a per-packet or per-session
`basis. Id. at 8–9 (citing Ex. 1001, 7:37–42). In addition, Patent Owner
`contends that “path selection [by department] is too coarse because a routing
`decision is broadly applied to all packets of a certain origin rather than
`making a new selection for each individual packet or session.” Id. at 9.
`These arguments are not persuasive. Patent Owner’s arguments focus
`on the eventual outcome of the selection, i.e., all packets from a given
`department are routed to a particular network. Petitioner’s argument,
`however, is different. Petitioner is arguing that the ’235 patent is providing
`an example of a routing procedure that examines individual packets to
`determine where they should be routed as opposed to Karol’s method of
`
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`IPR2016-00976
`Patent 6,775,235 B2
`
`routing based on a flow. As described in the specification, prior to the
`invention of the ’235 patent, networking “require[d] some inflexible method
`of assigning packets to paths.” Ex. 1001, 8:56–57 (emphasis added).
`Traditionally, such necessary match-ups of packets with routers
`were done by inflexible approaches such as sending all traffic
`from a given department, building, or local area network to a
`specified router. Manual and/or tedious reconfiguration was
`needed to change the destination address used in packets from a
`given source LAN such as one at site A, so this approach
`allowed load-balancing only on a very broad granularity, and
`did not load-balance dynamically in response to actual traffic.
`In particular, difficult reconfiguration of network parameters
`was needed to redirect packets to another router when the
`specified router went down.
`Id. at 9:1–9:11. We determined that the cited passage from the ’235 patent
`described routing packets based on the source information contained within
`the packet. Thus, we agreed with Petitioner’s interpretation of the cited
`passages as examples of a prior art procedure in which packets are examined
`on an individual basis to determine from which department each packet
`originated so that that information may be used in routing.
`Patent Owner goes on to argue that “[i]f Karol’s system were
`modified to analyze only the source address, then there could be no per-
`packet path selection at the CL-CO gateway because the routing decisions
`would be predetermined, based on the source.” Req. Reh’g 11. Patent
`Owner notes that we disagreed with Petitioner’s anticipation argument
`because we found that routing decisions made for a flow were not the same
`as the recited routing decisions made on a per-packet basis. Id. Patent
`Owner argues that Petitioner’s obviousness argument would have a similar
`defect because “if a routing table or flow database forwards all packets from
`a particular origin or source address to a particular network interface, there is
`
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`IPR2016-00976
`Patent 6,775,235 B2
`
`no per-packet selection taking place because the selection is made for an
`entire group of packets having the same source address.” Id. The question,
`however, is not whether the packets end up being routed to the same
`network, but rather, the question is whether the modified Karol system
`makes its network selections on a per packet basis. See Dec. 9. The
`anticipation argument failed because Karol “inquires as to whether the
`received packet is ‘a packet from a flow that needs CO Service’” rather than
`examining whether an individual packet needs CO Service. See id. at 22
`(citing Ex. 1006, Fig. 5, element 503 (emphasis in Decision)). We were
`persuaded that modifying Karol’s system to review each packet on an
`individual basis would meet the requirements of the recited selection on a
`per-packet basis.
`In light of Dr. Negus’s testimony and supporting evidence (both from
`the ’235 patent and Stallings), we were persuaded that one of ordinary skill
`in the art would have been motivated to modify Karol to examine packets
`individually and make the routing decisions for those packets and not for a
`flow. Dec. 19 (“We determine that Petitioner has shown that it would have
`been obvious to modify Karol to select networks on a per packet basis.”).
`Thus, the determination was not that Karol should route packets based on
`origin, but rather that Karol’s routing methodology would be applied for
`individual packets. We determined that the proposed modification as
`viewed in light of the other disclosures relied upon by Petitioner would have
`rendered claim 4 obvious. Therefore, we are not persuaded of error in our
`determination that claim 4 would have been obvious over Karol.
`Similarly, claim 9 depends from claim 5 and as such, claim 9 includes
`several limitations from claim 5 that “require analysis of the destination
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`11
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`IPR2016-00976
`Patent 6,775,235 B2
`
`address/location.” Req. Reh’g 6. In the Decision, we determined that
`Petitioner had established by a preponderance of the evidence that claim 5
`was anticipated by and would have been obvious over Karol. Dec. 45.
`Thus, for reasons described in the Decision we determined that Karol
`disclosed the location related limitations that are found in claim 5. Id. at 23–
`26. In its Request, Patent Owner does not challenge our determinations as to
`claim 5, but rather argues that the modification of Karol does not meet the
`claim limitations because it would “limit the routing decision to an analysis
`of the packet’s source address.” Req. Reh’g 6–7.
`As with its allegations regarding claim 4, here again Petitioner relied
`upon its anticipation argument as part of its obviousness contentions.
`Pet. 54. Petitioner argued that “[t]o the extent ‘packet-by-packet basis’
`means ‘for each packet, a selection is made between network interfaces
`regardless of the session with which the packet is associated,’ then Claim 9
`is rendered obvious over Karol in view of the skill of a POSITA as set forth
`in [Petitioner’s obviousness argument for claim 4].” Id. Thus, for reasons
`described above, we were persuaded that it would have been obvious to
`modify Karol in order to make its routing selections for individual packets.
`As such, that modification is viewed in light of Karol’s other disclosures,
`which we found to anticipate claim 5. Therefore, we determined that
`dependent claim 9 would have been obvious over Karol. Dec. 30–31. We
`are not persuaded of error in that determination.
`Thus, we are not persuaded of error in our determination that claims 4
`and 9 would have been obvious over Karol.
`
`III. CONCLUSION
`
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`IPR2016-00976
`Patent 6,775,235 B2
`
`
`Having considered Patent Owner’s Request, Patent Owner has not
`persuaded us, for the reasons discussed, that our determination that claims 4
`and 9 would have been obvious over Karol was in error. Thus, we maintain
`our determination in regards to the disputed claims.
`
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`For PETITIONER:
`Andy Chan
`Charles Koch
`PEPPER HAMILTON LLP
`chana@pepperlaw.com
`kochc@pepperlaw.com
`
`For PATENT OWNER:
`Robert Mattson
`Sameer Gokhale
`OBLON, MCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketmattson@oblon.com
`cpdocketgokhale@oblon.com
`
`
`13
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`