UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`AKAMAI TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`LIMELIGHT NETWORKS, INC.,
`Patent Owner.
`
`______________
`
`Case IPR2016-01011
`Patent 7,715,324
`
`______________
`
`Patent Owner's Response
`
`Patent Owner Limelight Ex. 2004
`
`

`

`Table of Contents
`
`I. 
`
`II. 
`
`Introduction .................................................................................................. 1 
`
`Summary of the Board’s Findings .............................................................. 2 
`
`III.  One of Ordinary Skill in the Art Would Not Combine Devanneaux
`with Chu ........................................................................................................ 3 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`Legal Standard .................................................................................... 3 
`
`The Petition and Board’s Institution Decision Rely on the Assertion
`That It Would Be Obvious to Combine Devanneaux and Chu ......... 7 
`
`Implementing the Chu Plug-in Architecture Would Disrupt Normal
`Edge Server Operations ...................................................................... 7 
`
`Implementing the Chu Plug-in Architecture While Maintaining
`Normal Edge Server Operations Is Outside of the Skill of a
`PHOSITA .......................................................................................... 12 
`
`Petitioner’s Combination of Devanneaux and Chu is Based on
`Merely Conclusory Statements ......................................................... 16 
`
`The Court Cannot Properly Evaluate the Combination of
`Devanneaux and Chu Because Petitioner Fails to Identify the
`Differences Between the Claimed Invention and the Prior Art ...... 18 
`
`IV.  None of the Cited Art Discloses the “protocol attribute selector” of
`Claims 6, 7, 8, 10 and 11 ............................................................................ 19 
`
`A. 
`
`B. 
`
`CLAIM CONSTRUCTION – “Protocol Attribute Selector” .......... 19 
`
`The Cited Art Does Not Disclose the “protocol attribute selector” of
`Claims 6, 7, 8, 10 and 11 ................................................................... 23 
`
`V.  Dr. Crovella’s Redirect Testimony Should Be Given No Weight .......... 26 
`
`VI.  Conclusion ................................................................................................... 28 
`
`
`
`Page i of ii
`
`
`
`

`

`EXHIBIT LIST
`
`Exhibit
`2009
`
`2010
`
`2011
`2012
`2013
`
`Description
`Supplemental Declaration of Kevin Almeroth, Ph.D. (“Dr.
`Almeroth Supplemental Declaration”)
`J. Christner and T. Grevers, Overcoming Transport and Link
`Capacity Limitations Through WAN Optimization, Cisco Press
`(June 19, 2008)
`Deposition of Mark Crovella, Ph.D. (Jan. 12, 2017)
`Order, No. 3:15-cv-720-JAG, Dkt. 179 (E.D. Va. Sept. 2, 2016)
`Email from V. Kapadia to trials@uspto.gov (Jan. 12, 2017).
`
`Page ii of ii
`
`

`

`I.
`
`Introduction
`
`Patent Owner, Limelight, Inc. (“Patent Owner”), submits the following
`
`Response to the Petition for Inter Partes Review (the “Petition”) filed by Akamai
`
`Technologies, Inc. (“Petitioner”) regarding Claims 1, 2, 4, 5, 6, 7, 8, 10, and 11
`
`(“Challenged Claims”) of U.S. Patent No. 7,715,324 (“the ’324 Patent”). Akamai
`
`has alleged that Claims 1, 2, 5, 6, 7, 8, and 11 are unpatentable under 35 U.S.C. §
`
`103(a) in view of U.S. Patent Publication No. 2007/0156845 (“Devanneaux”), and
`
`further in view of U.S. Patent Publication No. 2007/0226375 (“Chu”) (“Ground
`
`1”). (Petition at 14). Additionally, Akamai alleges that claims 4 and 10 are
`
`unpatentable under 35 U.S.C. § 103(a) in view of the Devanneaux and Chu, further
`
`in view of the publication titled “Transmission Control Protocol, DARPA Internet
`
`Program, Protocol Specification” (“RFC793”) (“Ground 2”) (collectively,
`
`“Grounds of Rejection”). (Id.). The Board instituted inter partes review with
`
`respect to Grounds 1 and 2. (Paper No. 8 at 35 (“Institution Decision”)).
`
`The Petition and Board’s institution decision hinges on Petitioner’s assertion
`
`that it would be obvious to combine Devanneaux and Chu. (See, e.g., Institution
`
`Decision at 24, 29-32; see also Petition at 20-21, 28-29, 44, 46, 47, 55, 58).
`
`However, as explained in detail below, a person having ordinary skill in the art
`
`(“PHOSITA”) would not combine these references because inclusion of the plug-
`
`in architecture of Chu into the edge server disclosed in Devanneaux would render
`
`
`
`Page 1 of 29
`
`

`

`the edge server unsatisfactory for its intended purpose. In addition, the inclusion
`
`of the Chu plug-in architecture in Devanneaux’s edge server would not be a routine
`
`or simple substitution because this modification is beyond the skill of a PHOSITA.
`
`Further, as explained by the Supreme Court, “rejections on obviousness
`
`grounds cannot be sustained by mere conclusory statements; instead, there must be
`
`some articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
`
`(2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The rules require
`
`that “[e]ach petition … must include … [a] full statement of the reasons for the
`
`relief requested, including a detailed explanation of the significance of the
`
`evidence.” 37 C.F.R. § 42.22(a)(2); see also 37 C.F.R. § 42.104(b)(4)-(5). In this
`
`case, the Petition included unsupported conclusory statements indicating that the
`
`cited references disclose various claim elements and fails to articulate why it
`
`would have been obvious to combine the cited references. Accordingly, Petitioner
`
`has failed to articulate specific reasoning, based on evidence of record, to support
`
`the legal conclusion of obviousness for the Challenged Claims.
`
`II.
`
`Summary of the Board’s Findings
`The Board instituted inter partes review with respect to the following
`
`grounds:
`
`
`
`Page 2 of 29
`
`

`

` Claims 1, 2, 5, 6, 7, 8, and 11 as obvious under 35 U.S.C. § 103(a) over
`
`Devanneaux and Chu; and
`
` Claims 4 and 10 as obvious under 35 U.S.C. § 103(a) over Devanneaux, Chu,
`
`and RFC 793.
`
`(Institution Decision at 35). The Board construed terms “uniform resource
`
`indicator” to “include[] information in a request’s Uniform Resource Locator
`
`(“URL”), such as, among other things, all or part of a URL.” (Id. at 14).
`
`Additionally, the Board declined to expressly construe “protocol attribute selector”
`
`and stated that “the limitations recited in the claim . . . define what the ‘protocol
`
`attribute selector’ is ‘configured to do.’” (Id. at 16).
`
`III. One of Ordinary Skill in the Art Would Not Combine Devanneaux with
`Chu
`
`A. Legal Standard
`In analyzing whether a claim is obvious, four factors are considered: (1) the
`
`scope and content of the prior art, (2) differences between the prior art and the
`
`claims at issue, (3) the level of ordinary skill in the art, and (4) secondary
`
`considerations such as commercial success, long-felt need, failure of others, etc.
`
`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]n obviousness inquiry
`
`requires examination of all four Graham factors and . . . an obviousness
`
`determination can be made only after consideration of each factor.” In re Magnum
`
`Oil Tools Int'l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016).
`Page 3 of 29
`
`
`
`

`

`A finding of obviousness requires “all the elements of an invention [to be]
`
`found in a combination of prior art references.” Velander v. Garner, 348 F.3d 1359,
`
`1363 (Fed. Cir. 2003). But “a patent composed of several elements is not proved
`
`obvious merely by demonstrating that each of its elements was, independently,
`
`known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`Choosing bits and pieces of the prior art that favor the combination a petitioner
`
`wants to make, and failing to consider each reference as a whole, may indicate an
`
`impermissible reliance on hindsight to make that combination. See Panduit Corp.
`
`v. Dennison Mfg. Co., 810 F.2d 1561, 1587 (Fed. Cir. 1987) (reversing finding of
`
`obviousness because the district court “treated no claim, nor the entire prior art, nor
`
`any prior patent ‘as a whole,’ but [instead] selected bits and pieces from prior
`
`patents”); see also Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d
`
`443, 448 (Fed. Cir. 1986) (“It is impermissible within the framework of section 103
`
`to pick and choose from any one reference only so much of it as will support a
`
`given position to the exclusion of other parts necessary to the full appreciation of
`
`what such reference fairly suggests to one skilled in the art.”).
`
`“In assessing the prior art, the PTAB considers whether a PHOSITA would
`
`have been motivated to combine the prior art to achieve the claimed invention.” In
`
`re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (internal quotations
`
`omitted). “[T]he factual inquiry whether to combine references must be thorough
`
`
`
`Page 4 of 29
`
`

`

`and searching and the need for specificity pervades the [Federal Circuit’s] authority
`
`on the PTAB's findings on motivation to combine.” Id. at 1381-82. “If [the]
`
`proposed modification would render the prior art invention being modified
`
`unsatisfactory for its intended purpose, then there is no suggestion or motivation to
`
`make the proposed modification.” MPEP 2143.01(V) (citing In re Gordon, 733
`
`F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)). Further, a combination of elements is
`
`not merely a predictable variation or simple substitution if the “actual application is
`
`beyond [the] skill [of a PHOSITA].” KSR, 550 U.S. at 417.
`
`The “identif[ication] and analy[sis of] the differences between the claimed
`
`invention and the prior art [is] a critical inquiry in a proper obviousness analysis.”
`
`CaptionCall LLC v. Ultratec, Inc., IPR2015-01359, Paper 75 at 18 (P.T.A.B. Dec.
`
`14, 2016). If Petitioner fails to identify these differences, the Court cannot properly
`
`evaluate any proffered reasons for combining and modifying the prior art. See
`
`Travelocity.com L.P. v. Cronos Techs. LLC, CBM2014-00082, Paper 10 at 19-20
`
`(PTAB Sept. 15, 2014) (noting that “[w]ithout Petitioner having identified
`
`specifically the[] differences [between the claimed invention and prior art]”, the
`
`Board could not “evaluate properly any reason offered by Petitioner for modifying
`
`[the prior art]”); see also Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-
`
`00355, Paper 9 at 9 (P.T.A.B. June 26, 2015) (finding no reasonable likelihood of
`
`proving obviousness because “the Petition does not identify sufficiently the
`
`
`
`Page 5 of 29
`
`

`

`differences between the claimed invention and the prior art, or how the prior art
`
`teachings are to be modified or combined, if at all.”).
`
`“[T]he burden of persuasion is on the petitioner to prove ‘unpatentability by a
`
`preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to
`
`the patentee.” In re Magnum Oil, 829 F.3d at 1375 (emphasis added). The
`
`petitioner that must show where each claim limitation is found in the prior art. See,
`
`e.g., Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed.
`
`Cir. 2012). “[T]he Board must base its decision on arguments that were advanced
`
`by a party, and to which the opposing party was given a chance to respond.” In re
`
`Magnum Oil, 829 F.3d at 1381. Further, “rejections on obviousness grounds
`
`cannot be sustained by mere conclusory statements; instead, there must be some
`
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d
`
`977, 988 (Fed. Cir. 2006); see also ActiveVideo Networks, Inc. v. Verizon
`
`Communications, Inc., 694 F.3d 1312, 1327-28 (Fed. Cir. 2012) (holding that an
`
`expert’s merely conclusory statements are insufficient to support a finding of
`
`obviousness). Specifically, the Board “must examine the relevant data and articulate
`
`a satisfactory explanation for its action including a rational connection between the
`
`facts found and the choice made.” In re Nuvasive, 842 F.3d at 1382.
`
`
`
`Page 6 of 29
`
`

`

`B.
`The Petition and Board’s Institution Decision Rely on the
`Assertion That It Would Be Obvious to Combine Devanneaux and Chu
`
`Devanneaux describes a “content delivery network or CDN edge server [is]
`
`configured to provide one or more extended content delivery features on a domain-
`
`specific, customer-specific basis, preferably using configuration files that are
`
`distributed to the edge servers using a configuration system.” (Institution Decision
`
`at 18 (internal quotations omitted); see also Petition at 7, 27, 44, 48). Chu
`
`describes a “plug-in architecture for a network stack in an operating system where
`
`the functions may be dynamically changed in order to change the TCP behavior of
`
`the network environment.” (Institution Decision at 19 (internal quotations
`
`omitted); see also Petition at 20, 27-28, 42-43, 53-54, 57). The Petition and
`
`Board’s Institution Decision hinges on Petitioner’s assertion that it would be
`
`obvious to implement the Chu “plug-in architecture” in the edge servers of
`
`Devanneaux. (See, e.g., Institution Decision at 24, 29-32; see also Petition at 20-
`
`21, 28-29, 44, 46, 47, 55, 58).
`
`C.
`Implementing the Chu Plug-in Architecture Would Disrupt
`Normal Edge Server Operations
`
`In discussing why a PHOSITA would allegedly be motivated to combine
`
`Devanneaux and Chu, Petitioner explains that “Chu describes a “plug-in
`
`architecture for a network stack in an operating system and, in particular, one that
`
`provides a process of changing the TCP behavior of a network connection . . . .”
`
`
`
`Page 7 of 29
`
`

`

`(Petition at 20 (internal citations and quotations omitted); see also Institution
`
`Decision at 19 (internal quotations omitted); Petition at 27-28, 42-43, 53-54, 57).
`
`Figure 3 of Chu, reproduced below, “presents a flow chart illustrating the process
`
`of changing the TCP behavior of a network connection.” (Ex. 1007 at ¶67; see
`
`also Ex. 2011 at 123:24-124:4):
`
`(Id. at Fig. 3). Specifically, when the Chu system “determines or is notified of a
`
`need for changing the TCP behavior of a network connection (step 302)[,] the
`
`
`
`
`
`Page 8 of 29
`
`

`

`system disables a relevant portion of the network stack in order to put the network
`
`connection into a quiescent state (step 304).” (Id. at ¶67). “Then, the system
`
`changes the function pointer for the function associated with the TCP behavior to
`
`point to a new function with the desired behavior (step 306). Finally, the system re-
`
`enables the corresponding portion of the network stack to return the network
`
`connection to an active state (step 308).” (Id.)
`
`Akamai’s expert explained that, when a connection is put into a quiescent
`
`state (i.e. when “the system disables a relevant portion of the network stack” (Id. at
`
`¶67)), “the connection is suspended in the sense that the algorithm doesn't make
`
`further progress. The algorithm is in some sense temporarily stopped.” (Ex. 2011
`
`at 119:8-20). Thus, whenever the Chu plug-in architecture changes the TCP
`
`behavior of a connection, it must temporarily suspend that connection. (Ex. 1007 at
`
`¶67, Fig. 3; see also Ex. 2011 at 123:24-124:4).
`
`This mechanism, however, is unsuitable for the edge servers of Devanneaux
`
`because it would disrupt normal edge server operations and ultimately undermine
`
`the primary reason for using a CDN: improving the performance of web sites for
`
`end users. (Ex. 2009 at ¶¶7-11). Devanneaux states the following in describing the
`
`problems involved with hosting web content:
`
`As such, the capability and flexibility of the supporting Internet
`infrastructure for the Web site becomes mission-critical. In particular,
`the infrastructure must provide good performance for all end user
`Page 9 of 29
`
`
`
`

`

`consumers, regardless of their location. The site must scale to
`handle high traffic load during peak usage periods. It must
`remain available 24x7, regardless of conditions on the Internet.
`When performance, reliability, or scalability problems do occur, Web
`site adoption and usage can be negatively impacted, resulting in
`greater costs, decreased revenue, and customer satisfaction issues.
`
`[0007] It is known in the prior art to off-load Web site content for
`delivery by a third party distributed computer system. One such
`distributed computer system is a “content delivery network" or
`“CDN” that is operated and managed by a service provider.
`
`(Ex. 1004 at ¶¶6-7 (emphasis added)). Thus, CDN customers use a CDN to
`
`“provide good performance” to end users regardless of the network traffic patterns,
`
`which may include spikes in network traffic or prolonged periods of high traffic
`
`during peak usage periods. (Id.; Ex. 2009 at ¶¶9-10; see also Ex. 2001, ¶52; Ex.
`
`2011 at 60:4-63:23). CDNs use edge servers, such as the one provided in
`
`Devanneaux, to support the high volume of requests that generally accompany these
`
`high traffic periods and to otherwise improve the speed of delivery of content. (Ex.
`
`2009 at ¶¶9-10; see also Ex. 1004 at Abstract). Thus, edge servers are used to
`
`reduce latency when responding to content requests. (Ex. 2009 at ¶10).
`
`Accordingly, a PHOSITA would not modify an edge server in a way that would
`
`increase latency or otherwise reduce the performance, particularly during high load
`
`and high traffic periods. (Ex. 2009 at ¶10).
`
`
`
`Page 10 of 29
`
`

`

`Chu notes that, since suspending and subsequently re-enabling a connection
`
`“occurs quickly enough, and the system typically has capacity to buffer packets,
`
`there is effectively no interruption of network service.” (Ex. 1007 at ¶67 (emphasis
`
`added)). However, that means that an interruption would occur if the system lacks
`
`the capacity to sufficiently buffer packets, such as during high traffic periods. (Ex.
`
`2009 at ¶11). Since edge servers are used to improve web performance during high
`
`traffic periods, and since interrupting a connection would inevitably increase
`
`latency for requests within the connection, the proposed modification would render
`
`the prior art invention being modified (i.e. the edge server of Devanneaux)
`
`unsatisfactory for its intended purpose. (Id.) Accordingly, a PHOSITA would not
`
`implement the Chu plug-in architecture in the edge server of Devanneaux. (Id.)
`
`Since a PHOSITA would not combine these references, Petitioner has failed to
`
`meet its burden to show that the Challenged Claims are unpatentable as obvious.
`
`In addition, Petitioner contends that the motivation for the combination
`
`would have been to “enhance the operation of the CDN edge server irrespective of
`
`the varied network environments in which the server is configured to operate.”
`
`(Institution Decision at 24, 32; see also Petition at 21). However, as detailed above
`
`and further detailed in the Supplemental Declaration of Kevin Almeroth, Ph.D. in
`
`Paragraphs 4-15, the combination would not “enhance the operation of the CDN
`
`
`
`Page 11 of 29
`
`

`

`edge server” of Devanneaux but would, instead, have the opposite effect – it would
`
`disrupt the normal operation of the Devanneaux edge server.
`
`D.
`Implementing the Chu Plug-in Architecture While Maintaining
`Normal Edge Server Operations Is Outside of the Skill of a PHOSITA
`
`Petitioner contends that both Devanneaux and Chu describe transport layer
`
`protocol optimization and thus, the inclusion of the Chu plug-in architecture in the
`
`Devanneaux operating system is either a simple substitution of one known element
`
`for another or application of a known technique to an existing device that would
`
`yield predictable results. (Institution Decision at 24; see also Petition at 20-21).
`
`However, as explained below, the combination of Devanneaux and Chu is not
`
`merely a predictable variation or simple substitution because the “actual application
`
`is beyond [the] skill [of a PHOSITA].” KSR, 550 U.S. at 417.
`
`Chu focuses on a plug-in TCP architecture for end-user computer
`
`workstations or PCs, as opposed to content servers. (Ex. 2009 at ¶11; see also Ex.
`
`2001, ¶53). Indeed, Chu uses the word “server” only six times and only in
`
`paragraphs 54, 69, and 70. Of these, paragraph 69 is instructive:
`
`[0069] The plug-in approach also enables employing an aggressive,
`special-purpose technique in a controlled network environment. For
`instance, a server in a data center with a well-controlled traffic
`pattern or well-tuned queuing model might deploy a non-compliant
`congestion control technique that allows packets to be sent without
`slow-start or any bandwidth throttling. This technique could be
`
`
`
`Page 12 of 29
`
`

`

`useful, for example, to eliminate the overhead of congestion control
`for connections that transfer data between two servers on a
`dedicated network link, or to expedite connections that exchange
`cluster membership heartbeat messages within the data center.
`Previously, such service variation either was not possible, or would
`require multiple servers.
`
`(Ex. 1007 at ¶69 (emphasis added)).
`
` Chu’s “well-controlled” network
`
`requirements for servers employing its “special-purpose technique” are in stark
`
`contrast to the CDN edge servers of Devanneaux which reside on the Internet
`
`because, as discussed above, the edge servers may be subject to a variety of
`
`network traffic patterns, including “spikes in network traffic or prolonged periods
`
`of high traffic during peak usage periods.” (Ex. 2009 at ¶12; see also id. at ¶10; Ex.
`
`2001, ¶¶52-53).
`
`Chu does not disclose or otherwise teach how to employ its “special-purpose
`
`technique” in a server with an uncontrolled or unpredictable network, such as the
`
`edge server of Devanneaux. (Ex. 2009 at ¶13). This omission is notable because
`
`the techniques and considerations for optimizing TCP for a server in a well-
`
`controlled network are disparate as compared
`
`to
`
`those
`
`techniques and
`
`considerations that are applicable to an edge server on the Internet. (Id. at ¶13; Ex.
`
`2010 at 7). For example, “[i]n environments that are largely static (bandwidth and
`
`latency are stable), rate-based transmission solutions work quite well.” (Ex. 2010 at
`
`
`
`Page 13 of 29
`
`

`

`9; Ex. 2009 at ¶13). However, these same solutions may reduce performance in a
`
`dynamic network environment, such as the Internet, due to the changing
`
`characteristics of the network and potential for excessive amounts of measurements
`
`to adapt to these changes. (Ex. 2009 at ¶13; Ex. 2010 at 9).
`
`Additionally, it would not be trivial to implement the Chu plug-in TCP
`
`architecture in an edge server on the Internet, a network containing devices of
`
`mixed operating systems spanning workstations and servers. (Ex. 2009 at ¶14; Ex.
`
`2010 at 11). “Many researchers, universities, and technology companies have spent
`
`a significant amount of money and time to rigorously design, test, and implement
`
`[an] advanced TCP stack” that can operate in such an environment. (Ex. 2009 at
`
`¶14; Ex. 2010 at 11). In addition, Petitioner’s expert admits that “[d]esigning a
`
`CDN system like is described in Devanneaux is an immense undertaking that would
`
`be done by a team of many people over a long time.” (Ex. 2011 at 91:12-20).
`
`Indeed, when asked what would occur if a CDN were subject to a spike in traffic
`
`(precisely the problem identified in Devanneaux), Petitioner’s expert explained that
`
`he could not answer unless he knew, at minimum:
`
`How the CDN system is designed? What algorithms are used for
`operating the CDN system? What software is being used on the CDN
`system? How many servers there are? How interconnected they are?
`Where they're located with respect to the arriving requests? The
`nature of the arriving requests? The nature of the content that's being
`
`
`
`Page 14 of 29
`
`

`

`requested? Sizes of the content objects being requested? The sizes of
`the disks on the system? Speeds of the CPUs involved? The capacity
`of the network links interconnecting the hosts? The number of
`network links interconnected to a host? The topology of the network
`links interconnecting to the hosts? The capacity of the routers
`connecting the links in between the hosts? The protocols used on the
`links interconnecting the hosts? The routing protocols used in the
`network? The distribution algorithm for distributing the requests
`along the host of the network? The sizes of the caches on the host in
`the network? The number of caches in each host? The cache
`replacement algorithms used in each host? The interconnection
`protocols used to move content between caches, and there's probably a
`few others.
`
`(Id. at 83:11-86:25)
`
`In view of the “significant amount of money and time to rigorously design,
`
`test, and implement” an advanced TCP stack that can operate on the Internet and
`
`the “immense undertaking” by “many people over a long time” required to
`
`“[d]esign[] a CDN system like is described in Devanneaux,” combining the Chu
`
`plug-in TCP architecture with an edge server of Devanneaux would be beyond the
`
`skill of a PHOSITA, which Petitioner contends would have been “an individual
`
`having a Bachelor’s Degree in Computer Science or Computer Engineering, or
`
`equivalent experience, and one to two years of experience in the field of computer
`
`networking and/or distributed systems, particularly as those systems relate to
`
`
`
`Page 15 of 29
`
`

`

`connection optimization.”1 (Ex. 2009 at ¶¶14-15; Institution Decision at 17
`
`(emphasis added); see also Ex. 1002 at ¶12). And since the proposed modification
`
`is beyond the skill of a PHOSITA, the combination of Devanneaux and Chu is not
`
`merely a predictable variation or simple substitution, and is therefore is not obvious.
`
`KSR, 550 U.S. at 417.
`
`For at least these reasons, a PHOSITA would not combine Devanneaux and
`
`Chu, and thus Petitioner has failed to meet its burden to show that the Challenged
`
`Claims are unpatentable as obvious.
`
`E.
`Petitioner’s Combination of Devanneaux and Chu is Based on
`Merely Conclusory Statements
`
`Petitioner proffers the following conclusory statements in support of its
`
`assertion that the inclusion of the Chu plug-in TCP architecture in the Devanneaux
`
`operating system is a simple substitution or that the combination is the application
`
`of a known technique to a known device ready for improvement to yield predictable
`
`
`1 Patent Owner proposed a similar level of ordinary skill, proposing “several years
`
`of experience” and including “name services, or Internet content delivery” to the
`
`scope of experience. (Institution Decision at 17; see also Ex. 2001 at ¶17). While
`
`the Board adopted Petitioner’s proposal, a PHOSITA under either proposal would
`
`be incapable of modifying the edge server of Devanneaux with the Chu plug-in
`
`architecture.
`
`
`
`Page 16 of 29
`
`

`

`results: “because Devanneaux and Chu are in the same technical field, because both
`
`describe transport layer protocol optimization, because both refer to computers with
`
`operating systems implementing transport layer protocol optimizations, and because
`
`both provide for customizing those optimizations.” (Institution Decision at 24, 30;
`
`see also Petition at 20-21). Petitioner additionally contends that the motivation for
`
`the combination would have been to “enhance the operation of the CDN edge
`
`server irrespective of the varied network environments in which the server is
`
`configured to operate.” (Institution Decision at 24, 32; see also Petition at 21).
`
`After considering these statements, the Board found that Petitioner’s assertion was
`
`ultimately only supported by Dr. Crovella’s testimony that both references provided
`
`for customized optimizations. (Institution Decision at 32 (citing Ex. 1002 at ¶34)).
`
`However, Dr. Crovella’s testimony that “both provide for customizing those
`
`optimizations” simply mirrors Petitioner’s own conclusory statement that “both
`
`provide for customizing those optimizations.” (Compare Ex. 1002 at ¶34 with
`
`Petition at 20-21).
`
`Such conclusory statements cannot sustain a rejection on obviousness
`
`grounds as Petitioner has failed to provide articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness. KSR, 550 U.S. at 418;
`
`see also ActiveVideo Networks, 694 F.3d at 1327-28 (holding that an expert’s
`
`merely conclusory statements are insufficient to support a finding of obviousness).
`
`
`
`Page 17 of 29
`
`

`

`Indeed, “the factual inquiry whether to combine references must be thorough and
`
`searching and the need for specificity pervades the [Federal Circuit’s] authority on
`
`the PTAB's findings on motivation to combine.” In re Nuvasive, 842 F.3d at 1381-
`
`82.
`
`For at least these reasons, Petitioner has failed to meet its burden to show
`
`that a PHOSITA would be motivated to combine Devanneaux and Chu.
`
`F.
`The Court Cannot Properly Evaluate the Combination of
`Devanneaux and Chu Because Petitioner Fails to Identify the
`Differences Between the Claimed Invention and the Prior Art
`
`The “identif[ication] and analy[sis of] the differences between the claimed
`
`invention and the prior art [is] a critical inquiry in a proper obviousness analysis.”
`
`CaptionCall, IPR2015-01359, Paper 75 at 18. However, in comparing the claimed
`
`invention with the prior art, Petitioner’s expert admits that he did not consider
`
`Devanneaux and Chu separately. (Ex. 2011 at 219:24-202:11; 221:10-19). In
`
`Travelocity.com L.P. v. Cronos Techs. LLC, CBM2014-00082, Paper 10, the Board
`
`considered a similar situation where the petitioner “fail[ed] to show where each
`
`limitation of challenged claims … is taught by one of the combined references.”
`
`(Id. at 19). As here, the petitioner in Travelocity.com failed to “articulate[] any
`
`difference between the [claimed invention] and each of [the prior art references].”
`
`Id. at 19-20. “Without having identified specifically the differences between the
`
`recited invention and the prior art,” the Board found that the petitioner had “failed
`
`
`
`Page 18 of 29
`
`

`

`to make a meaningful obviousness analysis under 35 U.S.C. § 103(a).” Id. at 20.
`
`Further, “[w]ithout Petitioner having identified specifically the[] differences
`
`[between the claimed invention and prior art]”, the Board could not “evaluate
`
`properly any reason offered by Petitioner for modifying [the prior art]”). Id.
`
`Accordingly, since Petitioner failed to consider Devanneaux and Chu separately
`
`and thus failed to “articulate[] any difference between the [claimed invention] and
`
`each of [these prior art references],” the Board cannot properly evaluate Petitioner’s
`
`proferred motivations to combine these references. For at least these reasons,
`
`Petitioner has failed to meet its burden to show that the Challenged Claims are
`
`unpatentable as obvious.
`
`IV. None of the Cited Art Discloses the “protocol attribute selector” of
`Claims 6, 7, 8, 10 and 11
`A. CLAIM CONSTRUCTION – “Protocol Attribute Selector”
`In an inter partes review, the Board construes claim terms in an unexpired
`
`patent according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo
`
`Speed Technologies v. Lee, 136 S. Ct. 2131, 2144-45 (June 20, 2016). The claim
`
`language should be read in light of the specification as it would be interpreted by
`
`one of ordinary skill in the art. In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359,
`
`1364 (Fed. Cir. 2004). The broadest reasonable meaning given to claim language
`
`
`
`Page 19 of 29
`
`

`

`must take into account any definitions presented in the specification. Id. (citing In
`
`re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)).
`
`Claims 6, 7, 8, 10 and 11 require a “protocol attribute selector.” The Board
`
`declined to expressly construe this term and stated that “the limitations recited in
`
`the claim . . . define what the ‘protocol attribute selector’ is ‘configured to do.’”
`
`(Institution Decision at 16). Specifically, the Board stated that the “claim language
`
`itself makes clear that ‘each request’ is analyzed in reciting ‘receive first
`
`information relating to a first request’ and ‘receive second information relating to a
`
`second request.’” (Id.)
`
`In the underlying litigation, the term “protocol attribute selector” was
`
`originally agreed by the parties to mean “a software process that can analyze each
`
`request