Paper No. 8
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`AKAMAI TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`LIMELIGHT NETWORKS, INC.,
`Patent Owner.
`
`______________
`
`
`
`Case IPR2017-00348
`Patent 8,750,155
`
`______________
`
`Patent Owner's Preliminary Response
`
`
`
`
`
`
`
`
`
`
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`
`

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`Table of Contents
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................ 1 
`
`SUMMARY OF THE PATENTED TECHNOLOGY ............................. 4 
`
`III.  CLAIM CONSTRUCTION ........................................................................ 4 
`
`IV.  STANDARD FOR INSTITUTING INTER PARTES REVIEW ............. 6 
`
`V.  A POSITA WOULD NOT COMBINE DEVANNEAUX WITH CHU 11 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`G. 
`
`The Petition Relies on the Assertion That It Would Be Obvious to
`Combine Devanneaux and Chu .................................................................. 11 
`
`The Petition Relies on Mere Conclusory Statements Regarding the
`Combination of Devanneaux and Chu ....................................................... 12 
`
`Dr. Bhattacharjee’s Declaration Uses Merely Conclusory Statements, and
`Never Explains Why Implementing the Chu TCP Architecture into the
`Devanneaux Edge Servers is a “Simple Substitution,” or Why The
`Substitution Would Provide “Predictable Results” ................................... 17 
`
`Chu Ties Its TCP Architecture To “Riskier New Behavior,” Showing Its
`Use in Devanneaux is not a “Predictable Result” ..................................... 25 
`
`Implementing the Chu Plug-In Architecture Would Disrupt the Normal
`Edge Server Operations of Devanneaux .................................................... 26 
`
`Implementing the Chu Plug-In Architecture While Maintaining Normal
`Edge Server Operations is Beyond the Skill of a POSITA ........................ 31 
`
`The Court Cannot Properly Evaluate the Combination of Devanneaux
`and Chu or Devanneaux and Haverstock Because Petitioner Fails to
`Identify the Differences Between the Claimed Invention and the Prior
`Art, in Accordance with the Graham Factors ............................................ 36 
`
`VI.  CONCLUSION ........................................................................................... 38 
`
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`Page i of v
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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Comm’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................... 17, 24
`
`In re Am. Acad. Of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................................ 5
`
`Ancestry.com DNA, LLC v. DNA Genotek Inc.,
`IPR2016-01152, Paper 11 (Nov. 23, 2016) .................................................. 14, 21
`
`In re Bass,
`314 F.3d 575 (Fed. Cir. 2002) .............................................................................. 5
`
`Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
`796 F.2d 443 (Fed. Cir. 1986) .............................................................................. 9
`
`CaptionCall v. Ultratec, Inc.,
`IPR2015-01359, Paper 75 (Dec. 14, 2016)......................................................... 36
`
`Cardiocom, LLC v. Robert Bosch Healthcare Sys., Inc.,
`IPR2013-00439, Paper 26 (Jan. 16, 2014),
`aff’d 2016 WL 3545685 (Fed. Cir. June 29, 2016) .....................................passim
`
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (June 20, 2016) ........................................................................... 4
`
`Front Row Techs., LLC v. MLB Advanced Media, L.P.,
`IPR2015-01932, Paper 7 (Mar. 24, 2016) ............................................................ 8
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 7
`
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................................... 16
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2015-01402, Paper 18 (Oct. 21, 2015). .................................................... 8, 36
`
`Page ii of v
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`

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`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ............................................................................ 8
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`LG Display Co., Ltd. v. Innovative Display Techs. LLC,
`IPR2015-00487, Paper 36 (July 15, 2016) ................................................... 15, 24
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .............................................................. 6, 7, 8, 24
`
`Minerva Surgical, Inc. v. Hologic, Inc.,
`IPR2016-00680, Paper 8 (Sept. 12, 2016) .................................................... 15, 24
`
`Nautilus Hyosung Inc. v. Diebold, Inc.,
`IPR2016-00633, Paper 9 (Aug. 22, 2016) .......................................................... 16
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) ............................................................................ 9
`
`SAP Am. Inc. v. Clouding IP, LLC,
`IPR2014-00299, Paper 8 (July 9, 2014) ............................................................... 8
`
`Silver Star Capital, LLC v. Power Integrations, Inc.,
`IPR 2016-00736, Paper 11 (Aug. 26, 2016). ...............................................passim
`
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`IPR2013-00054, Paper 12 (April 8, 2013) ............................................. 13, 17, 24
`
`Statutes
`
`35 U.S.C. § 103 .................................................................................................. 7, 8, 9
`
`35 U.S.C. § 103(a) ............................................................................................... 1, 11
`
`35 U.S.C. § 314(a) ..................................................................................................... 6
`
`35 U.S.C. § 316(e) ..................................................................................................... 6
`
`Other Authorities
`37 C.F.R. §§ 42.24 et seq. .......................................................................................... 2
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`Page iii of v
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`37 C.F.R. § 42.65(a) ................................................................................................. 10
`
`37 C.F.R. § 42.100(b) ................................................................................................ 4
`
`37 C.F.R. § 42.108(b) ................................................................................................ 6
`
`37 C.F.R. § 42.108(c) ................................................................................................. 6
`
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ................................................................ 6, 8, 9
`
`MPEP § 2143.01(V) ................................................................................................. 31
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`
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`
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`Page iv of v
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`EXHIBIT LIST
`
`Exhibit
`2001
`2002
`
`2003
`
`2004
`2005
`
`2006
`
`2007
`2008
`
`Description
`Declaration of Dr. Kevin Almeroth
`Attachment to Dr. Almeroth Declaration – CV of Dr. Kevin
`Almeroth
`Attachment to Dr. Almeroth Declaration – List of Materials
`Considered
`Patent Owner Response in related IPR2016-01011
`Deposition of Mark Crovella, Ph.D, IPR2016-01011 (Jan. 12,
`2017) (“Ex. 2005-Crovella”)
`J. Christner and T. Grevers, Overcoming Transport and Link
`Capacity Limitations Through WAN Optimizations, Cisco Press
`(June 19, 2008) (“Ex. 2006-Cisco”)
`U.S. Patent No. 6,108,703
`Patent Owner Preliminary Response in related IPR2016-01011
`
`Page v of v
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`I.
`
`INTRODUCTION
`
`Patent Owner, Limelight, Inc. (“Patent Owner”), submits the following
`
`Preliminary Response to the Petition for Inter Partes Review (the “Petition”) filed
`
`by Akamai Technologies, Inc. (“Petitioner”) regarding Claims 1, 8, and 13
`
`(“Challenged Claims”) of U.S. Patent No. 8,750,155 (“the ’155 Patent”).
`
`Petitioner has alleged that Claims 1, 8, and 13 are unpatentable under 35 U.S.C. §
`
`103(a) over U.S. Patent Publication No. 2007/0156845 (“Devanneaux”), U.S.
`
`Patent Publication No. 2007/0226375 (“Chu”), and U.S. Patent No. 6,192,415
`
`(“Haverstock”). (Petition at 35.) For the below reasons, the Board should deny
`
`Akamai’s IPR request.
`
`As noted in the Petition, the ’155 patent is related to U.S. Patent No.
`
`7,715,324 (“the ’324 patent”) via U.S. Patent Application No. 12/572,981. An IPR
`
`Trial was instituted against the ’324 patent in IPR2016-01011 (“the Related IPR”)
`
`on November 4, 2016. (Petition at 5.) Petitioner used the same primary references
`
`and same general arguments in the Related IPR as they do here against the ’155
`
`patent. Specifically, Petitioner argued that Devanneaux in combination with Chu
`
`renders the claims of the ’324 patent obvious.
`
`In instituting a trial against the ’324 patent, and as is normal per §41.108(c),
`
`the Board resolved all genuine issues of material fact against Patent Owner, and “in
`
`the light most favorable to the petitioner solely for purposes of deciding whether to
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`Page 1 of 39
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`

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`institute an inter partes review.” (Ex. 1007 at 25.) In doing so, the Board stated
`
`that there was insufficient evidence as to whether the combination of Devanneaux
`
`and Chu was a “simple substitution:”
`
`“At this stage of the proceeding, Patent Owner has raised issues of
`material fact as to whether or not Chu teaches away from a
`combination with Devanneaux. Viewing the evidence in the light most
`favorable to Petitioner we are not persuaded that Chu teaches away
`from the proposed combination. At this stage, there is insufficient
`evidence that ‘a person of ordinary skill, upon reading the reference,
`would be discouraged from following the path set out in the reference,
`or would be led in a direction divergent from the path that was taken
`by the applicant.’
`
`. Petitioner argues, because both references ‘provide for
`.
`.
`customizing those optimizations,’ 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. Petitioner alleges 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.’
`
`Neither Patent Owner nor its expert addresses the testimony of Dr.
`Crovella based on both references providing for customized
`optimizations. Contrary to Patent Owner’s argument, the preceding
`is cited as a basis for concluding the substitution of Chu into the CDN
`
`Page 2 of 39
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`

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`of Devanneaux would be a simple substitution. Again, a genuine issue
`of material fact, which we view ‘in the light most favorable to the
`petitioner solely for purposes of deciding whether to institute an inter
`partes review,’ is raised as to whether or not the combination is a
`simple substitution.” (Ex. 1007 at 31-32 (emphasis added, internal
`citations omitted).)
`
`Patent Owner filed its Patent Owner response in the Related IPR on January
`
`31, 2017. (Ex. 2004.) In its response, Patent Owner addressed the “simple
`
`substitution” issue, and provided additional facts showing that, in fact, the
`
`substitution proposed by Petitioner is not routine or simple. As also shown herein,
`
`Petitioner’s proposed substitution is beyond the skill of a person of ordinary skill in
`
`the art (a “POSITA”). (Id. at § III(D).) Patent Owner also showed that the
`
`substitution would not be made because it would render the edge servers of
`
`Devanneaux unsatisfactory for their intended purpose. (Id. at § III(C).)
`
`For these same reasons, Petitioner’s inter partes review request of the ’155
`
`patent should be denied. As shown below, Petitioner has not overcome the
`
`deficiencies of the inappropriate combination of Devanneaux and Chu. Indeed,
`
`Petitioner’s new expert makes the same conclusory statements regarding the
`
`combination of Devanneaux and Chu as Petitioner’s prior expert did in the Related
`
`IPR. Further, neither the Petition nor Petitioner’s expert articulate a rational basis
`
`for modifying the prior art, which articulation is required by the Supreme Court’s
`
`Page 3 of 39
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`decision in KSR International Co. v. Teleflex Inc.1 Thus, Petitioner’s inter partes
`
`review request should be denied.
`
`II.
`
`SUMMARY OF THE PATENTED TECHNOLOGY
`
`The ’155 Patent relates to improvements in the optimization of network
`
`protocols (such as TCP) used to connect networked computers—servers and clients
`
`in particular. The ’155 Patent discloses systems and methods where a server can
`
`actively monitor network connections for requests. (See, e.g., Ex. 1001 at 2:8-
`
`3:44, 22:5-24:56.) When requests arrive, the server analyzes them to determine
`
`whether the connection should be optimized. (Id.) If the connection should be
`
`optimized, the server can re-configure the connection. The ’155 Patent discloses
`
`systems and methods that can therefore update the configuration of protocols used
`
`for active connections, throughout the duration of the connections, on a request-by-
`
`request basis. (Id.)
`
`III. CLAIM CONSTRUCTION
`In an inter partes review, the Board construes claim terms in an unexpired
`
`patent according to their broadest reasonable interpretation in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo
`
`Speed Techs. 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
`
`
`1 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
`
`Page 4 of 39
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`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
`
`must take into account any definitions presented in the specification. Id. (citing In
`
`re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)).
`
`In the Petition, Petitioner adopts, for the purposes of the Petition, the
`
`following constructions from the related District Court Lawsuit:
`
`Claim Term
`
`Construction
`
`“a request for content” (claim 1)
`
`Plain meaning
`
`“a request” (claim 13)
`
`“using information from the request”
`
`(claim 1)
`
`“based on the request” (claim 13)
`
`“parameters relate / relating to
`utilization of available processing or
`memory capabilities of part or all of a
`system supporting the first connection”
`(claims 1 and 13)
`
`“parameters relate / relating to
`utilization of available processing or
`memory capabilities of part or all of a
`system supporting the first connection,
`but not those relate / relating to link
`capacity or the size or type of content”
`
`“the data source is configured to
`monitor a first connection for a
`request” (claim 13)
`
`“the data source is configured to
`monitor a first connection for one or
`more requests”
`
`Page 5 of 39
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`(Petition at 32-33.) For the purposes of this Preliminary Response, Patent Owner
`
`does not contest these constructions at this time.
`
`IV. STANDARD FOR INSTITUTING INTER PARTES REVIEW
`The Board has discretion to “deny some or all grounds for unpatentability
`
`for some or all of the challenged claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. §
`
`314(a). Petitioner bears the burden of demonstrating a reasonable likelihood that it
`
`would prevail in showing unpatentability on the grounds asserted in its petition. 37
`
`C.F.R. § 42.108(c). The Board may only institute a petition for inter partes review
`
`where “the information presented in the petition … shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c). Petitioner
`
`bears the burden of showing that this statutory threshold has been met. See, e.g.,
`
`Office Patent Trail Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012)
`
`[hereinafter “Practice Guide”] (“The Board … may institute a trial where the
`
`petitioner establishes that the standards for instituting the requested trial are met.”).
`
`Ultimately, “the 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 Tools Int’l, Ltd., 829 F.3d 1364, 1375
`
`(Fed. Cir. 2016) (emphasis added).
`
`Page 6 of 39
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`“To satisfy its burden of proving obviousness, a petitioner cannot employ
`
`mere conclusory statements.” Id. at 1380. “The petitioner must instead articulate
`
`specific reasoning, based on evidence of record, to support the legal conclusion of
`
`obviousness.” Id. The Board is “[not] free to adopt arguments on behalf of
`
`petitioners that could have been, but were not, raised by the petitioner during an
`
`IPR.” Id. at 1381. “[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.” Id. It is the “petitioner’s burden to demonstrate both that a skilled
`
`artisan would have been motivated to combine the teachings of the prior art
`
`references to achieve the claimed invention, and that the skilled artisan would have
`
`had a reasonable expectation of success in doing so.” Id. (internal quotes
`
`omitted).
`
`The ground raised by Petitioner in the Petition is based on claims of
`
`obviousness under 35 U.S.C. § 103. (Petition at 35.) 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
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`Page 7 of 39
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`and . . . an obviousness determination can be made only after consideration of each
`
`factor.” In re Magnum Oil, 829 F.3d at 1376.
`
`“[C]ontentions [that] are directed to what [a prior art reference] purportedly
`
`discloses … do not compensate for [a] lack of meaningful analysis of the
`
`differences between the prior art and the claims at issue.” Front Row Techs., LLC
`
`v. MLB Advanced Media, L.P., IPR2015-01932, Paper 7 (Mar. 24, 2016) at 17-18.
`
`“Without having identified specifically the differences between the claimed
`
`invention and the prior art, [a] Petitioner [will] fail[] to make a meaningful
`
`obviousness analysis under 35 U.S.C. § 103, and thus [will] fail[] to make a
`
`threshold showing of a reasonable likelihood that [a claim] is unpatentable over
`
`[the prior art].” SAP Am. Inc. v. Clouding IP, LLC, IPR2014-00299, Paper 8 (July
`
`9, 2014) at 19. “[W]ithout Petitioner having identified specifically the differences,
`
`[the Board is] unable to evaluate properly any rationale offered by Petitioner for
`
`modifying one reference in view of another reference.” Johns Manville Corp. v.
`
`Knauf Insulation, Inc., IPR2015-01402, Paper 18 (Oct. 21, 2015) at 13 (Oct. 21,
`
`2015) (quoting SAP Am., IPR2014-00299, Paper 8 at 19).
`
`In addition, Petitioner 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). Failure to do so defeats an assertion that a claim is obvious.
`
`Id.
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`Page 8 of 39
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`

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`Further, “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, 550 U.S. at 418. 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.”).
`
`Challenges in a petition should be rejected if the petitioner’s rationale for
`
`combining prior art references relies on conclusory expert testimony without
`
`objective support. This is suggested in the rules governing inter partes review:
`
`“Expert testimony that does not disclose the underlying facts or data on which the
`
`opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).
`
`Additionally, the Board has repeatedly rejected conclusory testimony that fails to
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`Page 9 of 39
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`disclose evidentiary support or that merely parrots a petition’s conclusory language.
`
`For example, in Silver Star Capital, LLC v. Power Integrations, Inc., the petitioner
`
`had argued that the challenged claims were obvious over a combination of two
`
`references: “Semmler” and “Nguyen.” IPR2016-00736, Paper 11 (Aug. 26, 2016)
`
`at 14. The Board found that the follow argument by the petitioner amounted to an
`
`unsupported conclusory statement:
`
`“A [person of ordinary skill in the art] would recognize in particular
`that Semmler teaches the need for a dual mode frequency regulator
`with variable frequency control, and that disclosure would lead a
`[person of ordinary skill in the art] to consider known solutions taught
`by Nguyen, such as varying the on-time and off-time of the drive
`signal at variable frequency operation, to yield predictable results of a
`more efficient dual mode switching regulator.” Id.
`
`In addition to finding petitioner’s argument conclusory and unsupported by facts or
`
`data, the Board also found that the purported motivation to combine the references
`
`was not based on “rational underpinnings.” Id. In denying institution, the Board
`
`gave little weight to the petitioner’s expert’s declaration, which repeated essentially
`
`the same arguments and also cited no facts or data. Id.
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`Page 10 of 39
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`V. A POSITA WOULD NOT COMBINE DEVANNEAUX WITH CHU
`A. The Petition Relies on the Assertion That It Would Be Obvious to
`Combine Devanneaux and Chu
`
`Petitioner’s challenge of claims 1, 8, and 13 is based on a single invalidity
`
`Ground. Specifically, Petitioner asserts that these Challenged Claims are
`
`unpatentable under 35 U.S.C. § 103(a) over U.S. Patent Publication No.
`
`2007/0156845 (“Devanneaux”), U.S. Patent Publication No. 2007/0226375
`
`(“Chu”), and U.S. Patent No. 6,192,415 (“Haverstock”).2 (Petition at 35.)
`
`Devanneaux describes a content delivery network (“CDN”) edge server that 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. (See Petition at 18-21,
`
`51-52, 58.) 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. (See Petition at 22-26, 53-
`
`55, 58-59.) The Petition hinges on the assertion that it would be obvious to
`
`implement the Chu “plug-in architecture” in the edge servers of Devanneaux. (See
`
`Petition at 24-29, 35, 55, 57, 61, 65, 68-69.)
`
`
`2 Patent Owner does not concede Haverstock is properly combinable with
`
`Devanneaux or Chu.
`
`Page 11 of 39
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`

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`B.
`
`The Petition Relies on Mere Conclusory Statements Regarding
`the Combination of Devanneaux and Chu
`
`In asserting that a POSITA would find it obvious to use the plug-in
`
`architecture of Chu in the edge servers of Devanneaux, Petitioner argues the
`
`following:
`
`“Accordingly, a POSITA would have known to incorporate the
`dynamically loaded kernel module and network stack of Chu into
`Devanneaux’s operating system kernel to implement the TCP protocol
`optimization described in Devanneaux. A POSITA would have been
`motivated to make this substitution 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. Moreover,
`using the Chu plug-in architecture in the Devanneaux operating
`system kernel requires no more than a simple substitution of one
`known element for another to obtain predictable results, or applying a
`known technique to a known device ready for improvement to yield
`predictable results. Ex 1002-Decl. ¶84.” (Petition at 27.)
`
`These statements are merely conclusory and lack evidentiary support. For instance,
`
`Petitioner argues “a POSITA would have known to incorporate the dynamically
`
`loaded kernel module and network stack of Chu into Devanneaux’s operating
`
`system kernel
`
`to
`
`implement
`
`the TCP protocol optimization described
`
`in
`
`Devanneaux.” However, Petitioner provides no support as to why Chu’s TCP
`
`Page 12 of 39
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`

`

`protocol optimization would need to be implemented in Devanneaux’s edge servers.
`
`That is, the Petition never explains why the proposed incorporation of Chu’s
`
`specific TCP architecture would benefit Devanneaux’s edge servers.
`
`The above paragraph also argues a POSITA would combine Devanneaux and
`
`Chu because both references:
`
`“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.” (Petition
`at 27.)
`
`However, just because references may relate to the same technology does not mean
`
`that it is obvious to combine them. Again, Petitioner provides no analysis as to why
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`the incorporation of Chu’s specific TCP architecture would benefit Devanneaux’s
`
`edge servers. This approach – reciting reasons that could support an obviousness
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`combination from the Supreme Court’s KSR decision without supporting evidence
`
`– has been rejected repeatedly. See, e.g., Wowza Media Sys., LLC v. Adobe Sys.
`
`Inc., IPR2013-00054, Paper 12 (April 8, 2013) at 15 (providing “mere conclusory
`
`statements” alleging “no change in their respective functions” and “no more than
`
`predictable results” represented the same approach rejected by the Supreme Court
`
`in KSR); Silver Star Capital, IPR2016-00736, Paper 11 at 25-26 (little weight is
`
`accorded to expert contentions that are simply repeated without citations to facts or
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`Page 13 of 39
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`

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`data); Cardiocom, LLC v. Robert Bosch Healthcare Sys., Inc., IPR2013-00439,
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`Paper 26 (Jan. 16, 2014) at 15-16 (rejecting petitioner’s arguments and giving “little
`
`to no credit” to expert’s conclusory declaration), affirmed 2016 WL 3545685 (Fed.
`
`Cir. June 29, 2016). Moreover, Petitioner’s reliance on alleged similarities in the
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`technology described in Devanneaux and Chu would only constitute a starting point
`
`for an obviousness analysis, not a complete rationale for combining these
`
`references. Ancestry.com DNA, LLC v. DNA Genotek Inc., IPR2016-01152, Paper
`
`11 (Nov. 23, 2016) at 9-10 (“The mere fact that both Birnboim and O’Donovan are
`
`in the same field of endeavor falls short of an adequate rationale. The same field of
`
`endeavor analysis is merely the jumping-off point in reaching the determination of
`
`whether a claimed invention is obvious.”) (citing K-TEC, Inc. v. Vita-Mix Corp.,
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`696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness
`
`analysis, references must be analogous art—either from the same field of endeavor,
`
`or reasonably pertinent to the problem with which the inventor is involved)).
`
`Finally, and tellingly, Petitioner argues:
`
`“using the Chu plug-in architecture in the Devanneaux operating
`system kernel requires no more than a simple substitution of one
`known element for another to obtain predictable results, or applying a
`known technique to a known device ready for improvement to yield
`predictable results.” (Petition at 27.)
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`Page 14 of 39
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`Petitioner provides no support for its contention that the substitution of Chu’s TCP
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`architecture into Devanneaux is simple or routine. As with the conclusory
`
`statements described above, Petitioner’s arguments fail because unsupported legal
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`conclusions are insufficient to warrant institution of an inter partes review.
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`These statements are also inadequate for an additional reason. Petitioner
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`cites paragraph 84 of its expert declaration to support the above assertion, but the
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`expert declaration parrots the above language of the Petition. As shown in § V(C),
`
`below, Petitioner’s expert never explains why the proposed substitution of Chu’s
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`TCP architecture into Devanneaux’s edge servers is “simple,” or why the proposed
`
`substitution would yield “predictable results.” The expert’s conclusory statements,
`
`therefore, are entitled to little or no weight. See, e.g., Silver Star Capital, IPR2016-
`
`00736, Paper 11 at 14 (rejecting petitioner’s conclusory argument and according
`
`little weight to expert declaration that parroted the petition without citing
`
`underlying facts or data); Cardiocom, IPR2013-00439, Paper 26 at 15-16 (rejecting
`
`petitioner’s arguments and giving “little to no credit” to expert’s conclusory
`
`declaration); LG Display Co., Ltd. v. Innovative Display Techs. LLC, IPR2015-
`
`00487, Paper 36 (July 15, 2016) at 21 (refusing to credit petitioner’s expert and
`
`noting that “[m]erely repeating an argument from the Petition in the declaration of a
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`proposed expert does not give that argument probative value.”); Minerva Surgical,
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`Inc. v. Hologic, Inc., IPR2016-00680, Paper 8 (Sept. 12, 2016) at 27-28 (rejecting
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`Page 15 of 39
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`

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`petition where petitioner’s and expert’s arguments for combining references were
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`merely “conclusory and insufficient”). In fact, as shown in §§ V(D)-(F), the
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`evidence of record shows that the proposed substitution is not “simple”, and the
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`corresponding results are not “predictable.” Moreover, the presence of TCP
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`parameters in both Devanneaux and Chu merely goes to whether both references
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`could be combined and not to whether a POSITA would be motivated to combine
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`these references or to whether a Chu teaches away from Devannaeaux. See
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`Nautilus Hyosung Inc. v. Diebold, Inc., IPR2016-00633, Paper 9 (Aug. 22, 2016)
`
`(“An assertion that something could be done does not articulate a reason why
`
`something would be done by one of ordinary skill in the art at the time of the
`
`invention and, therefore, raises a specter of impermissible hindsight bias in an
`
`obviousness analysis.”) (emphasis in original); see also InTouch Techs., Inc. v.
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`VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (indicating testimony
`
`primarily consisting of conclusory assertions that one of ordinary skill in the art
`
`could combine references, not that one of ordinary skill in the art would have been
`
`motivated to do so, reveals hindsight bias).
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`Page 16 of 39
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`

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`C. Dr. Bhattacharjee’s Declaration Uses Merely Conclusory
`Statements, and Never Explains Why Implementing the Chu TCP
`Architecture into the Devanneaux Edge Servers is a “Simple
`Substitution,” or Why The Substitution Would Provide “Predictable
`Results”
`
`As shown above, Petitioner’s supposition for
`
`the combination of
`
`Devanneaux and Chu is:
`
`“using the Chu plug-in architecture in the Devanneaux operating
`system kernel requires no more than a simple substitution of one
`known element for another to obtain predictable results, or applying a
`known technique to a known device ready for improvement to yield
`predictable results.” (Petition at 27 (emphasis added).)
`
`As shown in this section, Petit