Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 48
`Date: September 9, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC. and PALO ALTO NETWORKS, INC.,
`Petitioner,
`v.
`PACKET INTELLIGENCE LLC,
`Patent Owner.
`
`
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`Before STACEY G. WHITE, CHARLES J. BOUDREAU, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper 48
`Date: September 9, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUNIPER NETWORKS, INC. and PALO ALTO NETWORKS, INC.,
`Petitioner,
`v.
`PACKET INTELLIGENCE LLC,
`Patent Owner.
`
`
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`Before STACEY G. WHITE, CHARLES J. BOUDREAU, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`I.
`INTRODUCTION
`Juniper Networks, Inc. and Palo Alto Networks, Inc. (collectively
`“Petitioner”) filed a Petition requesting an inter partes review of claims 10,
`12, 13, 16, and 17 (“the challenged claims”) of U.S. Patent No. 6,665,725
`B1 (Ex. 1002, “the ’725 patent”). Paper 3 (“Pet.”). Packet Intelligence LLC
`and Packet Intelligence Holdings LLC (collectively “Patent Owner”) filed a
`Preliminary Response. Paper 7. With our authorization (Paper 8), Petitioner
`filed a Preliminary Reply (Paper 9) and Patent Owner filed a Preliminary
`Sur-Reply (Paper 10). Based on our review of these submissions and
`associated evidence, we instituted inter partes review of the challenged
`claims. Paper 21 (“Dec.”). After institution, Patent Owner filed a Patent
`Owner Response (Paper 26, “PO Resp.”), Petitioner filed a Reply (Paper 29,
`“Reply”), and Patent Owner filed a Sur-Reply (Paper 32, “Sur-Reply”).
`A combined oral hearing with cases IPR2020-00336 and IPR2020-
`00337 was held on June 9, 2021, and a transcript of the hearing is included
`in the record (Paper 47, “Tr.”). The transcript of an oral hearing held the
`same day in cases IPR2020-00338, IPR2020-00339, and IPR2020-00486,
`also involving patents related to the ’725 patent, also is included in the
`record of this proceeding.1 Paper 46 (“338 Tr.”).
`Following oral hearing, we ordered the parties to provide additional
`briefing on the claim-construction arguments presented in the briefs and at
`oral hearing. Paper 41. Petitioner and Patent Owner each filed respective
`Opening Briefs on claim construction. See Paper 42 (“Petitioner’s Opening
`
`
`1 The parties had no objection to entering into this record the transcript from
`the oral hearing for IPR2020-00338, IPR2020-00339, and IPR2020-00486.
`Tr. 7:15–8:5; 338 Tr. 5:22–6:10.
`
`2
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`Brief” or “Pet. Br.”); Paper 43 (“Patent Owner’s Opening Brief” or “PO
`Br.”). Petitioner filed a Responsive Brief to Patent Owner’s Opening Brief,
`Paper 44 (“Petitioner’s Responsive Brief” or “Pet. Resp. Br.”), and Patent
`Owner filed a Responsive Brief to Petitioner’s Opening Brief, Paper 45
`(“Patent Owner’s Responsive Brief” or “PO Resp. Br.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is issued
`pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine
`Petitioner has shown, by a preponderance of the evidence, that claims 10,
`12, 13, 16, and 17 of the ’725 patent are unpatentable.
`A. Related Matters
`The parties identify two district court litigations as related matters that
`involve the ’725 patent: Packet Intelligence LLC v. Juniper Networks, Inc.,
`3:19-cv-04741 (N.D. Cal.) and Palo Alto Networks, Inc. v. Packet
`Intelligence LLC, No. 3:19-cv-02471 (N.D. Cal). Pet. 1; Paper 6, 2. The
`parties also identify as related matters Packet Intelligence LLC v. NetScout
`Systems, Inc., No. 2:16-cv-230-JRG (E.D. Tex.) and Packet Intelligence
`LLC v. NetScout Systems, Inc., No. 19-2041 (Fed. Cir.).2 Pet. 1; Paper 6, 2.
`In addition, the parties identify the following matters pending before the
`Board, challenging claims of patents related to the ’725 patent: IPR2020-
`00337, IPR2020-00338, IPR2020-00339, and IPR2020-00486. Pet. 1;
`Paper 6, 2–3. Lastly, the parties collectively identify the following matters,
`
`
`2 A copy of the Final Judgment in Case No. 2:16-cv-00230, dated
`September 7, 2018, has been filed by Patent Owner in the record of this
`proceeding as Exhibit 2059, and a copy of the Decision of the U.S. Court of
`Appeals for the Federal Circuit in Appeal No. 19-2041, dated July 14, 2020,
`has been filed by Patent Owner in the record of this proceeding as Exhibit
`2060.
`
`
`
`3
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`no longer pending before the Board, as being related: (i) IPR2017-00862,
`IPR2017-00863, and IPR2019-01291, which challenged certain claims of
`the ’725 patent; and (ii) IPR2017-00450, IPR2017-00451, IPR2017-00629,
`IPR2017-00630, IPR2017-00769, IPR2019-01289, IPR2019-01290,
`IPR2019-01292, and IPR2019-01293, IPR2020-00335, IPR2020-00485,
`which challenged claims of patents related to the ’725 patent. Pet. 2; Paper
`6, 3–5.
`
`B. The ’725 Patent
`The ’725 patent is titled “Processing Protocol Specific Information in
`Packets Specified by a Protocol Description Language.” Ex. 1002, code
`(54). The ’725 patent describes a “method of performing protocol specific
`operations on a packet passing through a connection point on a computer
`network.” Id. at 3:61–63. “The method includes receiving the packet and
`receiving a set of protocol descriptions for protocols that may be used in the
`packet.” Id. at 3:66–4:2. The method further “includes performing the
`protocol specific operations on the packet specified by the set of protocol
`descriptions based on the base protocol of the packet” and the children of the
`protocols used in the packet. Id. at 4:8–12. “The protocol specific
`operations include parsing and extraction operations to extract identifying
`information,” and “state processing operations defined for a particular state
`of a conversational flow of the packet.” Id. at 4:17–21.
`Figure 1 of the ’725 patent is reproduced below.
`
`
`
`4
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`
`Figure 1 illustrates a network in “which a monitor is connected to
`analyze packets passing at a connection point.” Id. at 4:30–32. System 100
`illustrated in Figure 1 includes computer network 102 that communicates
`packets between clients 104–107 and servers 110 and 112. Id. at 5:63–66.
`Monitor 108 examines the packets passing in either direction past its
`connection point 121 and can elucidate what application programs are
`associated with each packet. Id. at 6:1–5. Network activity (for example, an
`application program run by client 104 communicating with another running
`on server 110) will produce an exchange of a sequence of packets over
`network 102 that is characteristic of the respective programs and of the
`network protocols. Id. at 6:18–23. The packets are subsequently parsed
`then analyzed in the context of various protocols, for example, the transport
`through the application session layer protocols for packets of a type
`conforming to an International Standardization Organization (“ISO”) layered
`network model. Id. at 6:27–31.
`
`
`
`5
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`Figure 3 of the ’725 patent is reproduced below.
`
`
`Figure 3 is a functional block diagram of a process embodiment of the
`’725 patent’s system, which utilizes the packet monitor shown in Figure 1.
`Id. at 4:45–48. More specifically, Figure 3 shows network packet monitor
`300, similar to monitor 108 in Figure 1. Id. at 8:48–50. Packet 302 is
`examined, and the packet is evaluated, for example in an attempt to
`determine its characteristics, e.g., all the protocol information in a multi-
`level model, including what server application produced the packet. Id.
`at 8:51–57. Monitor 300 further includes: (1) compiler and optimizer 310
`that initializes monitor 300 to generate the operations necessary to occur on
`packets of different types; (2) parser 301 that parses and extracts selected
`portions of packets to generate an identifying signature; and (3) analyzer 303
`that analyzes the packets. Id. at 8:64–9:3.
`The ’725 patent explains that a flow is “[a] stream of packets being
`exchanged between any two addresses in the network.” Id. at 9:9–10. As
`6
`
`
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`described by the ’725 patent, when compiler and optimizer 310 executes, it
`generates two sets of internal data structures: parsing/extraction operations
`308 and state patterns and processes 326. Id. at 9:42–44, 9:53–54. Database
`308 of parsing/extracting operations includes information describing how to
`determine a set of protocol dependent extraction operations from data in the
`packet that indicate a protocol used in the packet. Id. at 9:48–52. Database
`326 of state patterns and processes includes different states and state
`transitions that occur in different conversational flows, and describe the task
`of analyzing a conversational flow. Id. at 9:54–60.
`The ’725 patent further describes that packet 302 is input into a packet
`buffer, where pattern recognition process 304 analyzes and recognizes
`patterns in the packets. Id. at 10:3–7. Subsequently, extraction process 306
`extracts selected parts of the packet, including identifying information from
`the packet as required for recognizing the packet as part of a flow. Id. at
`10:19–25. “The extracted information subsequently is processed in block
`312 to build a unique flow signature (i.e., “key”) for [the] flow.” Id. at
`10:25–27. The extracted information from the packet (i.e., “parser record”)
`is subsequently “passed onto lookup process 314 which looks in an internal
`data store of records of known flows that the system has already
`encountered.” Id. at 10:58–60. At block 316, lookup process 314 decides
`whether the “packet belongs to a known flow as indicated by the presence of
`a flow-entry matching the flow in a database of known flows 324.” Id. at
`10:60–65.
`
`
`
`7
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`C. Illustrative Claim
`Of the challenged claims, claims 10 and 17 are independent.
`Claims 12, 13, and 16 depend from claim 10. Claim 10 is illustrative of the
`claimed subject matter and is reproduced below:
`10. A method of performing protocol specific operations on a
`packet passing through a connection point on a computer
`network, the method comprising:
`(a) receiving the packet;
`(b) receiving a set of protocol descriptions for a plurality of
`protocols that conform to a layered model, a protocol
`description for a particular protocol at a particular layer level
`including:
`(i) if there is at least one child protocol of the protocol at
`the particular layer level, the-one or more child protocols
`of the particular protocol at the particular layer level, the
`packet including for any particular child protocol of the
`particular protocol at the particular layer level information
`at one or more locations in the packet related to the
`particular child protocol,
`(ii) the one or more locations in the packet where
`information is stored related to any child protocol of the
`particular protocol, and
`(iii) if there is at least one protocol specific operation to be
`performed on the packet for the particular protocol at the
`particular layer level, the one or more protocol specific
`operations to be performed on the packet for the particular
`protocol at the particular layer level; and
`(c) performing the protocol specific operations on the packet
`specified by the set of protocol descriptions based on the base
`protocol of the packet and the children of the protocols used
`in the packet,
`wherein the protocol specific operations include one or more
`parsing and extraction operations on the packet to extract
`selected portions of the packet to form a function of the
`8
`
`
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`selected portions for identifying the packet as belonging to a
`conversational flow.
`Ex. 1002, 96:24–57.3
`
`D. Instituted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 10):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`103(a) 4
`10, 12, 13, 16, 17
`Riddle,5 Baker6
`10, 12, 13, 16, 17
`103(a)
`Riddle, Baker, Yu7
`10, 12, 13, 16, 17
`103(a)
`Riddle, Baker, RFC19458
`
`
`Pet. 16–96. Petitioner submits the Declaration of Dr. Jon B. Weissman
`(Ex. 1006) in support of its arguments.
`
`
`3 In a Certificate of Correction, “In” was changed to “in” at column 96, line
`38. Ex. 1002, Certificate of Correction.
`4 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’725
`patent issued from an application filed before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`5 U.S. Patent No. 6,412,000 B1 (issued June 25, 2002) (Ex. 1008).
`6 PCT Published Application No. WO 97/23076 (published June 26, 1997)
`(Ex. 1013).
`7 U.S. Patent No. 6,625,150 B1 (issued Sept. 23, 2003) (Ex. 1011).
`8 T. Berners-Lee et al., Hypertext Transfer Protocol -- HTTP/1.0, Request
`for Comments 1945, Network Working Group (May 1996) (“RFC1945”)
`(Ex. 1010).
`
`
`
`9
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`To determine whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17
`(1966). The resolution of this question is important because it allows us to
`“maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–
`Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing the level of
`ordinary skill in the art, various factors may be considered, including the
`“type of problems encountered in the art; prior art solutions to those
`problems; rapidity with which innovations are made; sophistication of the
`technology; and educational level of active workers in the field.” In re
`GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted).
`Generally, it is easier to establish obviousness under a higher level of
`ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637
`F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill
`generally favors a determination of nonobviousness . . . while a higher level
`of skill favors the reverse.”).
`Here, we initially adopted Petitioner’s description of a person of
`ordinary skill in the art. Dec. 26–27. Petitioner copied the Board’s previous
`preliminary finding for the level of ordinary skill in the art for a related
`patent and argues that one of ordinary skill in the art at the time of the
`invention of the ’725 patent would have “had a bachelor’s degree in
`electrical engineering, computer engineering, computer science, or a related
`field (or its equivalent), and one to two years of experience working in
`networking environments, including at least some experience with network
`
`
`
`10
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`traffic monitors and/or analyzers.” Pet. 11 (citing Ex. 1056 (IPR2017-00450
`Institution Decision), 13–14; Ex. 1006 ¶¶ 195–201). Patent Owner does not
`dispute this description. PO Resp. 21 (citing Dec. 26–27). We note that
`Petitioner’s assessment appears consistent with the level of ordinary skill in
`the art at the time of the invention as reflected in the prior art of record. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Based on our
`review of the complete record, we agree with Petitioner’s assessment and
`maintain the decision to adopt Petitioner’s description of the level of skill in
`the art.
`
`B. Claim Construction
`In an inter partes review proceeding, a patent claim shall be construed
`using the same claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R.
`§ 42.100(b) (as amended Oct. 11, 2018). This rule adopts the same claim
`construction standard used by Article III federal courts, which follow
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its
`progeny. Under this standard, the words of a claim are generally given their
`“ordinary and customary meaning,” which is the meaning the term would
`have to a person of ordinary skill at the time of the invention, in the context
`of the entire patent including the specification. See Phillips, 415 F.3d at
`1312–13.
`
`1. Incorporation by reference of previous disclosures
`The ’725 patent claims the benefit of U.S. Provisional Application
`No. 60/141,903, filed on June 30, 1999 (Ex. 1016, “the provisional
`application”). See Ex. 1002, code (60). The ’725 patent states that the
`contents of the provisional application, as well as the contents of several
`11
`
`
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`other U.S. patent applications, including Application No. 09/608,237, filed
`June 30, 2000, which issued as U.S. Patent No. 6,651,099 on November 18,
`2003 (Ex. 1001, “the ’099 patent”), “are incorporated herein by reference.”
`See Ex. 1002, 1:8–12 (incorporating by reference the provisional
`application), 1:17–20 (incorporating by reference the application leading to
`the ’099 patent), 1:22–27 (incorporating by reference U.S. Patent
`Application No. 09/608,126), 1:28–32 (incorporating by reference U.S.
`Patent Application No. 09/608,266), 1:33–37 (incorporating by reference
`U.S. Patent Application No. 09/608,267). Throughout their papers, the
`parties refer to the disclosures of the ’099 patent and the provisional
`application, and state that the ’725 patent incorporates the entire contents of
`those disclosures. See, e.g., PO Resp. 2 n.1; Reply 2 n.1, 3–4.
`We agree with the parties that the ’725 patent incorporates the
`disclosures of the ’099 patent and the provisional application by specific
`reference to those documents. Ex. 1002, code (60), 1:8–12, 1:17–20; see
`also 37 C.F.R. § 1.57. Thus, we also refer to the ’099 patent and the
`provisional application when discussing claim construction—not only for
`consistency with the parties, but also for consistency throughout our final
`decisions involving related inter partes proceedings between these parties.
`See Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282
`(Fed. Cir. 2000) (stating that material incorporated by reference is
`“effectively part of the host document as if it were explicitly contained
`therein”); see also Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d
`1359, 1365–66 (Fed. Cir. 2016) (using statements in a provisional
`application to construe claim terms in a patent incorporating the provisional
`application by reference).
`
`
`
`12
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`2. Overview
`The only claim-construction dispute remaining in this proceeding
`concerns the meaning of “conversational flow,” as recited in independent
`claims 10 and 17. See, e.g., Ex. 1002, 96:56–57 (claim 10 reciting
`“identifying the packet as belonging to a conversational flow.”). At the
`heart of the parties’ dispute is the following passage from the ’099 patent:
`A conversational flow, on the other hand, is the sequence of
`packets that are exchanged in any direction as a result of an
`activity—for instance, the running of an application on a
`server as requested by a client. It is desirable to be able to
`identify and classify conversational flows rather than only
`connection flows. The reason for this is that some
`conversational flows involve more than one connection, and
`some even involve more than one exchange of packets between
`a client and server.
`Ex. 1001, 2:37–45 (emphases added). In our Institution Decision, we
`preliminarily construed “conversational flow” as “sequence of packets that
`are exchanged in any direction as a result of an activity.” Dec. 31. We
`declined to include the phrases “for instance, the running of an application
`on a server as requested by a client” and “some conversational flows involve
`more than one connection,[9] and some even involve more than one exchange
`of packets between a client and server” in the construction of
`“conversational flow,” as Patent Owner had requested. Id. We explained
`that those passages, because they begin with the phrases “for instance,”
`“where some,” and “some,” are “merely exemplary and non-limiting.” Id.
`
`
`9 The ’099 patent expressly defines “connection flow”: “The term
`‘connection flow’ is commonly used to describe all the packets involved
`with a single connection.” Ex. 1001, 2:35–37. Neither party disputes this
`definition of “connection flow.”
`
`13
`
`
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`Petitioner does not challenge our preliminary construction. 338 Tr.
`9:20–10:15; Tr. 10:23–11:11. Patent Owner, however, argues that our
`construction captures only a “part of the definition in the specification,” and
`improperly “excludes some of the clarifying language that is also part of the
`explicit definition in the specification.” PO Resp. 22. According to Patent
`Owner, “[t]hat clarifying language is important for understanding the nature
`of a conversational flow.” Id.
`Specifically, Patent Owner argues that the written description of the
`’725 patent provides an express definition of the term “conversational flow”
`and that the express definition controls even though it contains exemplary
`language. Id. at 22–23 (citing Sinorgchem Co., Shandong v. Int’l Trade
`Comm’n, 511 F.3d 1132, 1137 (Fed. Cir. 2007)). Patent Owner argues that
`the language following “for instance” is necessary for understanding a
`“conversational flow,” because that language “makes apparent that
`‘conversational flow’ must relate to a conversation” and “involves an
`application activity involving the same client.” Id. at 26 (emphasis added);
`see also Sur-Reply 1 (arguing that an “‘activity’ occurs between specific
`entities”); PO Br. 1 (arguing that an activity “must relate to the actions of a
`particular client or end user”). “Ignoring that language,” Patent Owner
`argues, “risks losing the basic and fundamental requirement of a
`‘conversation.’” PO Resp. 26
`Patent Owner also argues our construction is incorrect because, prior
`to this inter partes review, “every tribunal to have considered the proper
`construction for ‘conversational flow’ has accepted . . . the construction
`advanced by Patent Owner” here:
`
`
`
`14
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`the sequence of packets that are exchanged in any direction as a
`result of an activity—for instance, the running of an application
`on a server as requested by a client—and where some
`conversational flows involved more than one connection, and
`some even involve more than one exchange of packets between
`a client and server.
`PO Resp. 23. As an example, Patent Owner argues that the District Court
`for the Eastern District of Texas adopted this construction in Packet
`Intelligence LLC v. NetScout Systems, Inc., and that the Court of Appeals for
`the Federal Circuit “addressed conversational flows and connection flows
`when affirming the jury’s infringement verdict in NetScout, which
`necessarily hinged on applying the court’s claim construction of
`‘conversational flow.’” Id. (citing Ex. 2060, 3).
`3. Analysis
`Independent claim 10 recites, in relevant part, “identifying the packet
`as belonging to a conversational flow” and independent claim 17 recites that
`“the packet belongs to a conversational flow of packets having a set of one
`or more states.” Ex. 1002, 96:56–57 (claim 10), 98:30–31 (claim 17). As
`explained above, the parties agree that “conversational flow” includes “the
`sequence of packets that are exchanged in any direction as a result of an
`activity,” but disagree about whether the phrases “for instance, the running
`of an application on a server as requested by a client” and “some
`conversational flows involve more than one connection, and some even
`involve more than one exchange of packets between a client and server”
`should limit the meaning of “conversational flow.” Patent Owner argues
`that those phrases are necessary because they make clear that a
`conversational flow is client-specific. Thus, the parties’ basic dispute is
`whether a conversational flow is limited to a specific client or user, as Patent
`15
`
`
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`Owner argues, or may include multiple clients or users, as Petitioner
`contends. Compare, e.g., PO Resp. 25 (arguing that “the basic and
`fundamental requirement’ of a conversational flow” is that it “involves an
`application activity involving the same client”), with Reply 3 (contending
`that “[t]he definitional language of ‘conversational flow’ doesn’t contain any
`requirement for identifying flows based on a particular user or client”).
`Starting with the passage reproduced above that we identified as the
`heart of the parties’ dispute (Ex. 1001, 2:37–45), we determine that the “for
`instance” phrase is exemplary and does not limit a “conversational flow” to
`a specific client or user. The phrase “for instance” is synonymous with “for
`example,” and necessarily indicates that “the running of an application on a
`server as requested by a client” exemplifies, but does not limit, the
`conversational flow to a server and a specific client or user.
`Our determination that the “for instance” phrase is exemplary and
`non-limiting is consistent with argument in its Preliminary Response that the
`“some” phrase (“some conversational flows involve more than one
`connection, and some even involve more than one exchange of packets
`between a client and server”) is non-limiting. Specifically, Patent Owner
`argued that the use of the word “some” necessarily means that “some
`conversational flows involve multiple connections, while, some involve a
`single connection.” Prelim. Resp. 25 (citing Ex. 1001, 2:34–45; Ex. 1016,
`3:3–10). Similarly here, while “conversational flow” certainly may involve
`the running of an application on a server as requested by a single client or
`user, “conversational flow” is not limited to a single client or user.
`Indeed, the ’099 patent and the provisional application expressly
`contemplate classifying connection flows from different clients into the
`16
`
`
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`same conversational flow when those connections involve the same activity.
`These documents describe, in the context of identifying packets as part of a
`conversational flow, a client/server protocol known as Service Advertising
`Protocol (SAP), which is “used to identify the services and addresses of
`servers attached to a network.” Ex. 1016, 3:12–14; Ex. 1001, 2:49–52. The
`provisional application describes a packet exchange between a client and the
`server in which the client sends a SAP request to a server for print service,
`and the server sends a SAP reply that identifies the print service address:
`In a first exchange, a client sends a SAP request to a server, for
`example, for print service. The server sends a SAP reply that
`identifies a particular address, for example, SAP #5, as the print
`service on that server. Such may be responses used to update a
`table, for example in a router, known as the Server Information
`Table.
`Ex. 1016, 3:14–18; see also Ex. 1001, 2:53–58. The provisional application
`then describes a client who has “inadvertently seen” the SAP reply, and
`therefore does not need to make a SAP request, but may send a print request
`directly to SAP #5:
`A client who has inadvertently seen this reply or who has
`access to the table (via the router that has the Server
`Information Table, for example) would know that SAP #5 for
`such this [sic] server is a print service. Therefore, in order to
`print data on the server, such a client does not need to make the
`request for a print service, but simply to send data to be printed
`specifying SAP #5.
`Ex. 1016, 3:18–23; see also Ex. 1001, 2:58–64.
`The provisional application explains that the packet exchange between
`the client who has “inadvertently seen” the print service address and SAP #5
`is not connected to the initial packet exchange, “which was with a different
`client”:
`
`
`
`17
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`This sending of data to be printed again involves an exchange
`of data between a client and a server, disjoint [sic] from the
`previous exchange which was with a different client setting up
`that SAP #5 is a print service on this server is a second
`connection.
`Ex. 1016, 3:23–25 (emphasis added). Similarly, the ’099 patent describes
`this packet exchange as “independent of the initial exchange.” Ex. 1001,
`64–67.
`The provisional application states that “[i]t is desirable for a network
`packet monitor to be able to ‘virtually concatenate’ the first exchange that
`defines SAP #5 as the print service on the server with the second exchange
`that uses the print service.” Ex. 1016, 3:25–28. In this case, the provisional
`application explains, the two packet exchanges (the first between a client
`and the server and the second between a client and SAP #5) “would then be
`correctly identified as being part of the same flow if the clients were the
`same,” but also, “[t]hey would even be recognized if the clients were not the
`same.” Id. at 3:28–30 (emphasis added). Similarly, the ’099 patent states
`that “because one features [sic] of the invention is to correctly identify the
`second exchange as being associated with a print service on that server, such
`exchange would even be recognized if the clients were not the same.”
`Ex. 1001, 3:44–48 (emphasis added).
`We interpret the SAP description in the provisional application and
`’099 patent as describing two seemingly disjointed packet exchanges
`involving two different clients or users (the first packet exchange between a
`client and the server and the second packet exchange between the client who
`has “inadvertently seen” the print service address and SAP #5) as belonging
`to the same “conversational flow.” And because Patent Owner’s proposed
`
`
`
`18
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`construction—that a “conversational flow” is client-specific—is inconsistent
`with the written description, we decline to limit a “conversational flow” to a
`specific client or user.
`Patent Owner argues that our interpretation of the SAP example is
`incorrect because “[t]he second sentence” of that example—i.e., “such
`exchange would even be recognized if the clients were not the same”—
`merely “illustrates how a later print request by a different client can also be
`recognized as a print request activity because it uses the now known address
`of the print service.” Sur-Reply 7 (emphasis added). We are not persuaded.
`In the provisional application, this description of the second client follows
`the statement that “[i]t is desirable to be able to identify and classify
`conversational flows,” Ex. 1016, 3:7–8 (emphasis added), and is followed by
`statements describing “[o]ther protocols that are similar in that they may
`lead to disjointed conversational flows,” id. at 4:1–5 (emphasis added). The
`provisional application also states that “[p]rior art network monitors do not
`presently have the ability to recognize such disjointed flows as belonging to
`the same conversational flow.” Id. at 4:13–14. Similarly, in the ’099 patent,
`the phrase “such exchange would even be recognized if the clients were not
`the same” is soon followed by the statement that “[w]hat distinguishes this
`invention from prior art network monitors is that it has the ability to
`recognize disjointed flows as belonging to the same conversational flow.”
`Ex. 1001, 3:48–51 (emphasis added). We view these statements, in context,
`as reinforcing the notion that the disclosed invention sought to classify
`disjointed connection flows—even those involving more than one client or
`user—into the same conversational flow based on a specific activity, such as
`print service.
`
`
`
`19
`
`
`
`IPR2020-00336
`Patent 6,665,725 B1
`
`
`We are not persuaded by Patent Owner’s argument that Sinorgchem,
`compels a different result here. See PO Resp. 24. In Sinorgchem, the claim
`language at issue was “controlled amount,” of which the patent stated:
`A ‘controlled amount’ of protic material is an amount up to that
`which inhibits the reaction of aniline with nitrobenzene, e.g., up
`to about 4% H2O based on the volume of the reaction mixture
`when aniline is utilized as the solvent.
`511 F.3d at 1136. The International Trade Commission “agreed that the
`patentee had expressly de
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
