Trials@uspto.gov
`571-272-7822
`
`
`
`Paper: 34
`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 IPR2016-00977
`Patent 7,406,048 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.
`
`
`571-272-7822
`
`
`
`Paper: 34
`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 IPR2016-00977
`Patent 7,406,048 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.
`
`
`
`IPR2016-00977
`Patent 7,406,048 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 7 and 192 of
`U.S. Patent No. 7,046,048 (Ex. 1003, “the ’048 patent”) would have been
`obvious. In our Decision, we determined that those claims would have been
`obvious over Karol3 alone and Karol in combination with Stallings.4
`Dec. 35.5 Patent Owner argues that we erred in our determination because
`(1) we misapprehended passages from the ’048 patent describing path
`selection based on origin; and (2) 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.
`“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
`maintain our Decision regarding the patentability of claims 7 and 19.
`
`
`2 We also found that Petitioner demonstrated by a preponderance of the
`evidence that claims 1–6, 8–18, and 20–24 are unpatentable. Patent Owner
`provides no specific arguments as to these claims.
`3 U.S. Patent No. 6,628,617 B1 (“Karol,” Ex. 1006).
`4 William Stallings, Data and Computer Communications, Prentice-Hall, 5th
`Ed, 1997, ISBN-81-203-1240-6 (“Stallings,” Ex. 1011).
`5 There is a typographical error on page 35 of the Decision. Petitioner did
`not establish that claims 7 and 19 were anticipated by Karol. See Dec. 19–
`23, 35.
`
`2
`
`
`
`IPR2016-00977
`Patent 7,406,048 B2
`
`
`II. DISCUSSION
`Patent Owner argues that we erred in our determinations regarding
`claims 7 and 19. Req. Reh’g 2–5. Petitioner asserted that claims 7 and 19
`were anticipated by and would have been obvious over Karol. Pet. 22–26;
`28–29 (anticipation arguments); id. at 53–56, 59 (obviousness argument).
`Claims 7 and 19 recite, in relevant part, “[selecting/selects], within the
`controller on a per-packet basis, between a path through an Internet-based
`network and a path through a private network that is not Internet-based.”
`In our Final Written Decision, we construed “selecting/selects . . . on a per-
`packet basis” to mean “selecting a network path 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 22.
`Petitioner also argued that these claims would have been obvious over
`Karol if we construed “per-packet basis” to require selection for each packet.
`Pet. 45. We found Petitioner’s obviousness argument to be legally sufficient
`and held that Petitioner had meet its burden to establish the unpatentability
`of these claims as obvious over Karol. Dec. 22–24. On rehearing, Patent
`Owner asserts that this determination was incorrect because (1) the
`’048 patent’s description of prior art does not disclose selecting on a per-
`packet basis (Req. Reh’g 2–4) and (2) modifying Karol to analyze only the
`source of the packet would not achieve the recited selection (id. at 5–6). We
`address each of these arguments in turn.
`As an initial matter, we note that this argument is different from the
`argument presented during the trial. Patent Owner had argued that
`
`3
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`
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`IPR2016-00977
`Patent 7,406,048 B2
`
`
`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.”) 21. Thus, despite the fact that Patent Owner stated
`that “Claims 7 and 19 are not anticipated by Karol or obvious over Karol
`alone or in view of Stallings”6 the argument was directed to Petitioner’s
`anticipation argument with no discussion of the obviousness argument over
`Karol alone. See id. (emphasis added). 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.
`First, Patent Owner asserts that Petitioner’s argument relies upon passage
`from the background of the ’048 patent that discusses routing packets based
`on their origin. Req. Reh’g 2–3 (quoting Ex. 1003, 4:11–19). 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. 55, 59. Petitioner’s declarant, Dr. Kevin Negus, opined that
`“the knowledge and common sense of the person of ordinary skill in the art
`
`
`6 We note that Patent Owner’s Request for Rehearing provides no discussion
`of Stallings and does not address our determination that claims 7 and 19
`would have been obvious over the combination of Karol and Stallings.
`4
`
`
`
`IPR2016-00977
`Patent 7,406,048 B2
`
`at the time of the invention was sufficient to extrapolate from the disclosures
`of Karol to such an interpretation at least because this was within the skill of
`person of ordinary skill in the art at the time of the invention, obvious to try
`and yielded predictable results.” Ex. 1005 ¶ 332.
`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
`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
`
`5
`
`
`
`IPR2016-00977
`Patent 7,406,048 B2
`
`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,
`Dr. Negus discusses the passage in question. Id. ¶ 334. Specifically, he
`argues that the ’048 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. 1003 at 4:11–19)” were discussed in the ’048 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, 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. ¶ 336. Based on this evidence,
`Dr. Negus concluded that “a person of ordinary skill in the art at the time of
`the invention would have found substituting the packet by packet path
`selection process that considers multiple criteria including associated flows
`as explicitly disclosed in Karol with a source routing process that considers
`only the source route chosen by the source endpoint to be obvious to try in
`the context of Karol and this claim element.” Id.
`On rehearing, Patent Owner argues that “the ’048 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 4.
`Specifically, Patent Owner contends that the “coarse routing of traffic or
`flows between networks” stands in contrast to the recited per-packet or
`
`6
`
`
`
`IPR2016-00977
`Patent 7,406,048 B2
`
`packet-by packet routing and thus, does not support Petitioner’s arguments.
`Req Reh’g 2. 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 2–3 (quoting Ex. 1003, 4:11–19 (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 3 (citing Ex. 1003, 7:31–36). 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 4.
`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 ’048 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
`routing based on a flow. As described in the specification, prior to the
`invention of the ’048 patent, networking “require[d] some inflexible method
`of assigning packets to paths.” Ex. 1003, 8:48–49 (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
`
`7
`
`
`
`IPR2016-00977
`Patent 7,406,048 B2
`
`
`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 8:60–9:3. We determined that the cited passage from the ’048 patent
`describes 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 5. 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 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
`
`8
`
`
`
`IPR2016-00977
`Patent 7,406,048 B2
`
`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
`recited selection on a per-packet basis. Thus, we are not persuaded of error
`in our determination that claims 7 and 19 would have been obvious over
`Karol.
`
`III. CONCLUSION
`Having considered Patent Owner’s Request, Patent Owner has not
`persuaded us, for the reasons discussed, that our Decision should be
`modified.
`
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`9
`
`
`
`IPR2016-00977
`Patent 7,406,048 B2
`
`
`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
`
`10
`
`
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