Express Mail Label Nos. EM 305150478 & EM 305150481
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent No.: 6,629,163
`
`Group Art Unit:
`
`To be assigned
`
`Inventors:
`
`Edward Balassanian
`
`Examiner:
`
`To be assigned
`
`Issued:
`
`Sept. 30, 2003
`
`Attorney Docket No.: 159291-0025(163)
`
`Serial No.:
`
`09/474,664
`
`Reexam Control No.: To be assigned
`
`Reexam Filing Date: To be assigned
`
`Title: METHOD AND SYSTEM FOR
`DEMULTIPLEXING A FIRST
`SEQUENCE OF PACKET
`COMPONENTS TO IDENTIFY
`SPECIFIC COMPONENTS
`WHEREIN SUBSEQUENT
`COMPONENTS ARE
`PROCESSED WITHOUT RE-
`IDENTIFYING COMPONENTS
`
`REQUEST FOR INTER PARTES REEXAMINATION
`
`Mail Stop Inter Partes Reexam
`Attn: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Sir or Madam:
`
`Juniper Networks, Inc. (hereinafter “Requester”) respectfully requests inter partes
`
`reexamination of U.S. Patent No. 6,629,163 (“the ‘163 patent”) entitled “Method and
`
`System for Demultiplexing a First Sequence of Packet Components to Identify Specific
`
`Components Wherein Subsequent Components are Processed Without Re-Identifying
`
`Components.” This Request is made pursuant to 35 U.S.C. §§ 311-316 and 37 C.F.R.
`
`§§ 1.906, 1.913 and 1.915. The ‘163 patent was filed on December 29, 1999 and issued
`
`on September 30, 2003. The patent has not yet expired. As a result of ex parte
`
`reexamination, an Ex Parte Reexamination Certificate (7567th) issued for the ‘163 patent
`
`2315571
`
`Juniper Ex. 1017-p. 1
`Juniper v Implicit
`
`

`

`on June 22, 2010. Implicit Networks, Inc. (“Implicit”) has alleged that it is the current
`
`assignee of the ‘163 patent. A copy of the ‘163 patent, in the format specified by
`
`37 C.F.R. § 1.915(b)(5), is attached as Exhibit 1. The reexamination certificate is
`
`attached as Exhibit 2.
`
`This Request for Inter Partes Reexamination (“Request”) is being served on the
`
`correspondent of record for the ‘163 patent (Newman Du Wors LLP, 1201 Third Avenue,
`
`Suite 1600, Seattle, WA 98101) and on counsel for Implicit (Hosie Rice LLP,
`
`Transamerica Pyramid, 34th Floor, 600 Montgomery Street, San Francisco, CA 94111).
`
`This Request is also accompanied by the required fee as set forth in 37 C.F.R.
`
`§ 1.20(c)(2) and the certificate required by 37 C.F.R. § 1.915(b)(6).
`
`For the convenience of the Examiner, following is a table of contents for this
`
`Request:
`
`I. INTRODUCTION
`
`Major Section
`
`II. DISCLOSURE OF CONCURRENT PROCEEDINGS
`
`III. CLAIMS FOR WHICH REEXAMINATION IS REQUESTED AND
`CITATION OF PRIOR ART
`
`IV. CLAIM CONSTRUCTION ADMISSIONS OF THE PATENT
`OWNER
`
`V. PERTINENCE AND MANNER OF APPLYING THE PRIOR ART
`
`VI. CERTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(7)
`
`VII. IDENTIFICATION OF REAL PARTY IN INTEREST PURSUANT
`TO 37 C.F.R. § 1.915(b)(8)
`
`VIII. CONCLUSION
`
`Page
`
` 3
`
` 9
`
`10
`
`18
`
`24
`
`272
`
`272
`
`272
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 2
`
`Juniper Ex. 1017-p. 2
`Juniper v Implicit
`
`

`

`I.
`
`INTRODUCTION
`
`The PTO should grant this Request and initiate inter partes reexamination
`
`proceedings for the ‘163 patent in light of the invalidating prior art presented herein.
`
`Virtually all of the art cited in this Request has never before been considered in
`
`connection with the ‘163 patent claims, and the art clearly discloses every element of the
`
`claims to be reexamined—including those elements that the patentee previously alleged
`
`during prosecution to be distinguishing features over the prior art. Given the clear
`
`teachings of this new prior art as explained below, this Request readily satisfies the
`
`threshold requirement of presenting a “reasonable likelihood that the requester would
`
`prevail” with respect to one or more of the challenged claims. 35 U.S.C. 312.
`
`The ‘163 patent describes itself as relating “generally to a computer system for
`
`data demultiplexing.” Ex. 1 at 1:11-12, 2:57-64. As explained in the background section
`
`of the patent, contemporary computer systems “generate data in a wide variety of
`
`formats,” including bitmap, encryption, and compression formats, and formats used for
`
`packet-based communications such as TCP and IP. Id. at 1:24-29. To facilitate
`
`processing of communications in this multi-format environment, the patent proposes a
`
`“method and system for converting a message that may contain multiple packets from [a]
`
`source format into a target format.” Id. at 2:38-40. The packet processing method as
`
`claimed employed a “sequence” of components, such that a format conversion could be
`
`performed by using a plurality of components taking a message through “various
`
`intermediate formats” before reaching the final, target format. Id. at 2:47-49. An
`
`illustration of such a conversion (from format D1 to D15) is illustrated in Figure 2 of the
`
`‘163 patent:
`
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 3
`
`Juniper Ex. 1017-p. 3
`Juniper v Implicit
`
`

`

`
`
`
`
`
`
`
`
`
`
`During thhe original prrosecution annd prior ex pparte reexammination procceedings forr
`
`
`
`
`
`
`
`the ‘1163 patent, thhe patentee emphasized a few speciffic features oof its purporrted inventioon
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`in an attempt to ddistinguish pprior art citedd against it.
`
`
`
`
`
`
`
`
`
`
`
`
`
`The originaal claims as ffiled in 20033
`
`
`
`descrribed a method in which (1) a packett of a messagge was receiived, (2) a coomponent
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`for prrocessing thhe packet was identified, and then (3)) certain stepps relevant tto packet
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`proceessing were pperformed innvolving “sttate informaation.” In re
`
`
`
`
`
`
`
`
`
`
`
`sponse to ann initial officce
`
`
`
`
`
`propoosed a new sset of claims adding langguage to the
`
`
`
`
`
`
`
`e cancelled tthose claimss and
`
`
`
`
`
`effect that thhe identificaation of a
`
`
`
`
`
`actionn rejecting aall of the origginal claims,, the patente
`
`
`
`
`
`
`
`
`
`
`
`sequeence of compponents for processing mmust be storred, “so that
`
`
`
`
`
`
`
`
`
`
`
`the sequencce does not
`
`
`
`need to be re-identified for suubsequent ppackets of thhe message.”” In other woords, an
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ident
`
`
`
`ification of ccomponents was to take place only ffor the first ppacket of a ggiven
`
`
`
`
`
`
`
`
`
`
`mess
`
`
`
`age; that ideentification wwas then to bbe stored andd made availlable for subbsequent
`
`
`
`
`
`
`
`
`
`
`
`n essentially h could thenessage, whicpackeets in the me
`
`
`
`
`
`
`
`
`
`follow the llead of the fiirst packet
`
`
`
`
`
`throuugh the sequeence of compponents alreeady identifieed.
`
`
`
`
`
`
`
`
`
`
`
`The examminer issued aa notice of aallowance foor the claims
`
`
`
`
`
`
`
`
`
`as thus ameended, statin
`
`g
`
`
`
`that this new limiitation—processing of suubsequent paackets “withhout re-identtifying” a
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`new ssequential orrder of compponents—waas not taughtt or suggesteed in the prioor art of
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`recorrd. Indeed, the examinerr underscored the importtance of the
`
`
`
`
`
`
`
`
`
`
`
`limitation wwith an
`
`
`
`examminer’s amenndment to thee patent title which incluuded the worrds: “Whereein
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Subsequent Commponents aree Processed Without Re-e-Identifyingg Componennts.”
`
`
`
`
`
`
`
`
`
`
`
`
`
`Inter Parrtes Reexamination oof
`
`
`
`ent No.6,629,163
`U.S. Pate
`
`
`
`
`
`4
`
`Juniper Ex. 1017-p. 4
`Juniper v Implicit
`
`

`

`Years later, the PTO initiated ex parte reexamination proceedings for the ‘163
`
`patent on the request of a third party that had been accused of infringing the patent.1
`
`During those proceedings, the patentee offered a new purported point of distinction in an
`
`attempt to overcome the primary piece of prior art under consideration in the
`
`reexamination—a paper called the “Mosberger” reference. Specifically, the patentee
`
`argued that “[t]he '163 invention is about a system that, upon receipt of first message
`
`packet, dynamically selects a sequence of components to create a path for processing the
`
`message.” Ex. 35-I [Examiner Interview PowerPoint]. In other words, there is a specific,
`
`sequential “order to [the] claims – first, packet is received, and then, component
`
`sequence is identified based on packet.” Id. The patentee pointed to language from the
`
`specification suggesting the importance of a “dynamic” approach in avoiding the
`
`“overhead” that would otherwise be involved in calculating “each possible series of
`
`conversion routines” in advance. Ex. 1 at 1:38-66. The patentee alleged that Mosberger,
`
`by contrast, performed its identification of sequences before the first packet was received,
`
`and therefore did not disclose the type of dynamic identification contemplated by the
`
`claims.
`
`After multiple rejections, the patentee was ultimately forced to amend its claims
`
`(though purportedly only to “clarify” their original intent) to expressly include the step of
`
`“dynamically identifying a non-predefined sequence of components.” The examiners in
`
`the reexamination unit subsequently issued a notice of allowance for these claims as
`
`amended. The allowance was expressly based on the patentee’s argument that
`
`“Mosberger does not dynamically identify sequences.”
`
`1 The litigation matter settled before conclusion of the ex parte reexamination
`proceedings.
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 5
`
`Juniper Ex. 1017-p. 5
`Juniper v Implicit
`
`

`

`The new prior art now presented in this Request plainly discloses the very
`
`elements of the claimed invention that were supposedly found lacking during prior
`
`prosecution of the ‘163 patent.
`
`For example, a technical paper presented at an international telecommunications
`
`conference in 1996 (“Pfeifer96”) demonstrates that researchers had already discovered
`
`how to perform dynamic conversion from a source format into a target format using a
`
`wide variety of formats:
`
`Ex. A02 at 118. To do this, Pfeifer96 teaches the use of what it calls a “dynamically
`
`generated converter chain”—an approach indistinguishable from that claimed in the
`
`‘163 patent (compare the following Fig. 6 of Pfeifer96 to Fig. 2 of the ‘163 patent):
`
`Id. at 111 (Figure 6: “Converter chain: fax reception, conversion to text and speech,
`
`telephone delivery”); see also id. at 125 (characterizing “converter chain” as
`
`“dynamically generated”). This reference was published over three years before the
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
`
`
`
`
` 6
`
`Juniper Ex. 1017-p. 6
`Juniper v Implicit
`
`

`

`
`
`patenntee had evenn filed the appplication thhat became thhe ‘163 pateent. Pfeifer996 fully
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`anticiipates and reenders obvioous every eleement of claiims 1, 15, annd 35 of the
`
`
`
`
`
`
`
`
`
`
`
`
`
`‘163 patent,,
`
`
`
`both on its own aand in combiinations withh other refereences as set
`
`
`
`
`
`And Pfeiffer96 is harddly the only eexample of iinvalidating
`
`
`
`
`
`
`
`
`
`
`
`
`
`forth in this
`
` Request.
`
`
`
`prior art datting from
`
`
`
`yearss before the ccritical date of the ‘163 ppatent. Ciscco Systems wwas also actiively
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`invollved in this teechnologicaal space in 19996, when a
`
`
`
`
`
`pair of Ciscco engineers
`
`filed an
`
`application that uultimately isssued as a pattent (“Kerr”)). The Kerr
`
`
`
`patent teachhes how
`
`
`
`
`
`
`
`
`
`
`
`
`
`ed nology calleuse of a technms with the ufigure systemlexibly confitrators can flnetwoork administ
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`“flowws,” in whichh the first paacket of a meessage goes tthrough seveeral functionns task by
`
`
`
`
`
`
`
`task aand then “caaches” the information foor high-speedd use by subbsequent pacckets. This
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`functtionality wass incorporateed into actuaal Cisco prodducts under tthe name “NNetFlow,” as
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`elaboorated in the following arrticle excerppt from a 19997 trade pubblication:
`
`
`
`
`
`
`
`
`
`
`
`Inter Parrtes Reexamination oof
`
`
`
`ent No.6,629,163
`U.S. Pate
`
`
`
`
`
`7
`
`
`
`Juniper Ex. 1017-p. 7
`Juniper v Implicit
`
`

`

`Ex. 16 [InfoWorld Article]. The Kerr technology as embodied in NetFlow is still part of
`
`Cisco’s product line to this day.2 Kerr fully anticipates and renders obvious every
`
`element of claims 1, 15, and 35 of the ‘163 patent, both on its own and in combinations
`
`with other references as set forth in this Request.
`
`This Request contains other invalidating references and combinations of
`
`references. For example, a 1998 article (“Decasper98”) presents its own solution to the
`
`“increasingly rapid pace” with which “[n]ew network protocols . . . are being deployed
`
`on the Internet,” by proposing an architecture with “code modules, called plugins, to be
`
`dynamically added and configured at runtime.” Ex. 25 [Decasper98] at 229. As with
`
`Kerr, the “information gathered by processing the first packet” is stored in a “cache,”
`
`from which “[s]ubsequent packets” can obtain it “quickly and efficiently.” Id. at 231.
`
`Finally, although this Request presents numerous prior art references teaching the
`
`supposed shortcomings of the Mosberger reference cited in the prior ex parte
`
`reexamination, it also explains how Mosberger is not nearly so limited as the patentee
`
`argued to the PTO during those proceedings. Mosberger itself states that it would be
`
`“straight-forward to add a dynamic module-loading facility.” Ex. 31 [Mosberger] at 71.
`
`Thus viewed for the first time in this new light, Mosberger also anticipates and renders
`
`obvious the ‘163 patent claims by itself or in combination with other references.
`
`In summary, for these reasons and as detailed below, there is a reasonable—and
`
`indeed compelling—likelihood that Requester will prevail on the proposed claim
`
`rejections presented herein. Accordingly, this Request should be granted as to at least
`
`
`2 See <http://www.cisco.com/en/US/products/ps6601/products_ios_protocol_
`group_home.html>.
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 8
`
`Juniper Ex. 1017-p. 8
`Juniper v Implicit
`
`

`

`claims 1, 15, and 35 of the ‘163 patent, and a certificate under 35 U.S.C. § 316(a)
`
`ultimately issued cancelling all of these claims.
`
`II.
`
`
`DISCLOSURE OF CONCURRENT PROCEEDINGS
`
`Implicit has asserted the ‘163 patent against Requester in a District Court action
`
`styled Implicit Networks, Inc. v. Juniper Networks, Inc. (N.D. Cal. Civ. No. Civ. No.
`
`3:10-cv-04234-SI). In the District Court action, Implicit alleges that it is the owner of the
`
`‘163 patent by assignment. Implicit alleges that claims 1, 15, and 35 of the ‘163 patent
`
`are infringed by Requester’s products. For example, in its first amended complaint
`
`against Requester, Implicit describes the allegedly infringing functionality as follows:
`
`Junos OS dynamically identifies a sequence of
`37.
`actions to be performed on a data packet flow on the basis
`of the first packet. The sequence of actions so identified is
`applied to all the subsequent packets of the flow. The
`actions to be performed are determined using policies
`maintained by the system. Junos OS inspects data packets,
`analyzes them against the various policies and performs the
`appropriate actions as dictated by the applicable policies.
`Junos OS performs de-multiplexing of data packets by
`reassembling datagrams fragmented over multiple packets.
`
`38. Whenever a data packet transits Juniper networking
`equipment running the Junos OS, Junos OS performs a
`flow lookup to see if the packet belongs to an already
`established session. If the packet does not belong to an
`existing session, a new session is created with the packet as
`the first packet of the session. The system them analyzes
`the first packet to determine the various actions to be
`performed on all the data packets of that session. The
`sequence of actions determined on the basis of the first
`packet forms a fast processing path. All subsequent packets
`of the session are then processed through the fast
`processing path.
`
`Ex. 36-A [Complaint] at 10; see also Exs. 36-B – 36-D [Infringement Contentions].
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 9
`
`Juniper Ex. 1017-p. 9
`Juniper v Implicit
`
`

`

`To date, the District Court has not construed any term of the ‘163 patent, although
`
`the parties have briefed claim construction and a Markman hearing was held on January
`
`18-19, 2012.
`
`III. CLAIMS FOR WHICH REEXAMINATION IS REQUESTED AND
`CITATION OF PRIOR ART
`
`
`
`Reexamination of claims 1, 15, and 35 of the ‘163 patent is requested under
`
`35 U.S.C. §§ 311-316 and 37 C.F.R. §§ 1.906, 1.913 and 1.915 based on the following
`
`references:
`
`Prior Art Reference
`
`Prior Art Date
`
`Exhibit
`
`Article entitled “Generic Conversion of
`Communication Media for Supporting Personal
`Mobility” by Tom Pfeifer and Radu Popescu-
`Zeletin (“Pfeifer96”)
`
`November 27, 1996
`
`Ex. 3
`
`Color version of Pfeifer96 (“Pfeifer96a”)
`
`November 27, 1996
`
`Ex. 3-B
`
`Specification entitled “ISDN Primary Rate User-
`Network Interface Specification” from Northern
`Telecom (“ISDN98”)
`
`August 1998
`
`Ex. 4
`
`Book entitled “The Data Compression Book” by
`Mark Nelson and Jean-Loup Gailly (“Nelson”)
`
`November 6, 1995
`
`Ex. 5
`
`Book entitled “Superdistribution: Objects as
`Property on the Electronic Frontier” by Brad
`Cox (“Cox”)
`
`Thesis entitled “Job and Stream Control in
`Heterogeneous Hardware and Software
`Architectures” by Stefan Franz (“Franz98”)
`
`Thesis entitled “Dynamic Configuration
`Management of the Equipment in Distributed
`Communication Environments” by Sven van der
`Meer (“Meer96”)
`
`June 4, 1996
`
`Ex. 6
`
`April 22, 1998
`
`Ex. 7
`
`October 6, 1996
`
`Ex. 8
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 10
`
`Juniper Ex. 1017-p. 10
`Juniper v Implicit
`
`

`

`Prior Art Reference
`
`Prior Art Date
`
`Exhibit
`
`Specification entitled RFC 793: “Transmission
`Control Protocol” by Information Sciences
`Institute (“RFC 793”)
`
`Book entitled “Principles of Information
`Systems Analysis and Design” by Harlan D.
`Mills, Richard C. Linger, and Alan R. Hevner
`(“Mills”)
`
`Thesis entitled “Generic Description of
`Telecommunication Services and Dynamic
`Resource Selection in Intelligent Communication
`Environments” by Stefan Arbanowksi
`(“Arbanowski96”)
`
`Article entitled “Resource Selection in
`Heterogeneous Communication Environments
`using the Teleservice Descriptor” by Tom
`Pfeifer, Stefan Arbanowski, and Radu Popescu-
`Zeletin (“Pfeifer97”)
`
`U.S. Patent No. 6,104,500 entitled “Networked
`Fax Routing Via Email” by Hassam Alam,
`Horace Dediu, and Scot Tupaj (“Alam”)
`
`U.S. Patent No. 5,298,674 entitled “Apparatus
`for Discriminating an Audio Signal as an
`Ordinary Vocal Sound or Musical Sound” by
`Sang-Lak Yun (“Yun”)
`
`U.S. Pat. No. 6,243,667 entitled "Network Flow
`Switching and Flow Data Export," by Darren R.
`Kerr and Barry L. Bruins (“Kerr”)
`
`Article entitled “Cisco NetFlow Switching
`speeds traffic routing,” InfoWorld Magazine
`(“NetFlow”)
`
`Article entitled “A Concrete Security Treatment
`of Symmetric Encryption” by M. Bellare et al.
`(“Bellare97”)
`
`September 1981
`
`Ex. 9
`
`1986
`
`Ex. 10
`
`October 6, 1996
`
`Ex. 11
`
`December 19, 1997
`
`Ex. 12
`
`April 29, 1998
`
`Ex. 13
`
`March 29, 1994
`
`Ex. 14
`
`May 28, 1996
`
`Ex. 15
`
`July 7, 1997
`
`Ex. 16
`
`October 27, 1997
`
`Ex. 17
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 11
`
`Juniper Ex. 1017-p. 11
`Juniper v Implicit
`
`

`

`Prior Art Reference
`
`Prior Art Date
`
`Exhibit
`
`Article entitled “XOR MACs: New Methods for
`Message Authentication Using Finite
`Pseudorandom Functions” by Mihir Bellare,
`Roch Guerin, and Phillip Rogaway (“Bellare95”)
`
`Book entitled “Local Area Network Concepts
`and Products: Routers and Gateways” from IBM
`(“IBM96”)
`
`1995
`
`Ex. 18
`
`May 1996
`
`Ex. 19
`
`Article entitled “Checkpoint Firewall-1 White
`Paper, Version 2.0” (“Checkpoint”)
`
`September 1995
`
`Ex. 20
`
`U.S. Pat. No. 5,835,726 entitled “System for
`securing the flow of and selectively modifying
`packets in a computer network,” by Shwed et al.
`(“Shwed”)
`
`U.S. Pat. No. 6,651,099 entitled “Method and
`Apparatus for Monitoring Traffic in a Network”
`by Russell S. Dietz et al. (“Dietz”)
`
`Article entitled “Dynamic Reconfiguration of
`Agent-Based Applications”) by Luc Bellisard,
`Noel de Palma, and Michel Riveill (“Bellisard”)
`
`Publication entitled “DTE Firewalls Phase Two
`Measurement and Evaluation Report” by
`Timothy L. Fraser et al. of Trusted Information
`Systems (“Fraser”)
`
`Article entitled “Router Plugins: A Software
`Architecture for Next Generation Routers” by
`Dan Decasper et al. (“Decasper98”)
`
`Specification entitled RFC 1825: “Security
`Architecture for the Internet Protocol” by R.
`Atkinson (“RFC 1825”)
`
`Specification entitled RFC 1829: “The ESP
`DES-CBC Transform” by P. Karn et al. (“RFC
`1829”)
`
`December 15, 1993
`
`
`Ex. 21
`
`June 30, 1999
`
`Ex. 22
`
`September 10, 1998
`
`Ex. 23
`
`July 22, 1997
`
`Ex. 24
`
`September 4, 1998
`
`Ex. 25
`
`August 1995
`
`Ex. 26
`
`August 1995
`
`Ex. 27
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 12
`
`Juniper Ex. 1017-p. 12
`Juniper v Implicit
`
`

`

`Prior Art Reference
`
`Prior Art Date
`
`Exhibit
`
`Specification entitled RFC 1883: “Internet
`Protocol, Version 6 (IPv6) Specification” by S.
`Deering and R. Hinden (“RFC 1883”)
`
`December 1995
`
`Ex. 28
`
`Book entitled “IPv6: The New Internet Protocol”
`by Christian Huitema (“Huitema”)
`
`October 28, 1997
`
`Ex. 29
`
`Article entitled “Crossbow: A Toolkit for
`Integrated Services over Cell Switched IPv6” by
`Dan Decasper et al. (“Decasper97”)
`
`Dissertation entitled “Scout: A Path-Based
`Operating System” by David Mosberger
`(“Mosberger”)
`
`Article entitled “Implementing Communication
`Protocols in Java” by Bobby Krupczak et. al
`(“HotLava”)
`
`Article entitled “An Extensible Protocol
`Architecture for Application-Specific
`Networking” by Marc Fiuczynski et. al
`(“Plexus”)
`
`Article entitled “ComScript: An Environment for
`the Implementation of Protocol Stacks and their
`Dynamic Reconfiguration” by Murhimanya
`Muhugusa et. al
`
`
`May 29, 1997
`
`Ex. 30
`
`1997
`
`Ex. 31
`
`October 1998
`
`Ex. 32
`
`January 22, 1996
`
`Ex. 33
`
`December 1994
`
`Ex. 34
`
`Most of these prior art references were not cited or considered by the PTO during
`
`prosecution of the ‘163 patent and are not cumulative to the art of record in the original
`
`file. Only one of the references relied upon in this Request were cited during the
`
`prosecution of the ‘163 patent (i.e., Mosberger). However, the finding of a “reasonable
`
`likelihood” under Section 312 is “not precluded by the fact that a patent or printed
`
`publication was previously cited by or to the Office or considered by the Office.” 35
`
`U.S.C. § 312(a).
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 13
`
`Juniper Ex. 1017-p. 13
`Juniper v Implicit
`
`

`

`A copy of each patent or printed publication relied upon in establishing each
`
`substantial new question of patentability is included with this Request as required by
`
`37 C.F.R. § 1.915(b)(4). These references are cited in the accompanying Information
`
`Disclosure Statement and Form PTO/SB/08A.
`
`Pfeifer96 was published by November 27, 1996, and is prior art under 35 U.S.C.
`
`§ 102(a) and (b). See Ex. V07. Pfeifer96-C is another version of Pfeifer96 which is
`
`substantively identical to Pfeifer96 except for its figures being rendered in color. Pfeifer-
`
`96C bears the date November 25-27, 1996.
`
`ISDN98 bears the date August 1998 and is prior art under 35 U.S.C. § 102(a) and
`
`(b).
`
`Nelson was published on November 6, 1995. See Ex. V01 (document from
`
`United States Copyright Office Public Catalog showing date of publication). It is prior
`
`art under 35 U.S.C. § 102(a) and (b).
`
`Cox was published on June 4, 1996. See Ex. V02 (document from United States
`
`Copyright Office Public Catalog showing date of publication). It is prior art under 35
`
`U.S.C. § 102(a) and (b).
`
`Franz98 bears the date April 22, 1998, and is prior art under 35 U.S.C. § 102(a)
`
`and (b).
`
`Meer96 bears the date October 6, 1996, and is prior art under 35 U.S.C. § 102(a)
`
`and (b).
`
`RFC 793 bears the date September 1981, and is prior art under 35 U.S.C. § 102(a)
`
`and (b).
`
`Mills bears the date 1986, and is prior art under 35 U.S.C. § 102(a) and (b).
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 14
`
`Juniper Ex. 1017-p. 14
`Juniper v Implicit
`
`

`

`Arbanowski96 bears the date October 6, 1996, and is prior art under 35 U.S.C.
`
`§ 102(a) and (b).
`
`Alam was filed on April 22, 1998, and is prior art under 35 U.S.C. § 102(e).
`
`Yun was issued on March 29, 1994 and is prior art under 35 U.S.C. § 102(a) and
`
`(b).
`
`(b).
`
`Kerr was filed on May 28, 1996 and is prior art under 35 U.S.C. § 102(e).
`
`NetFlow bears the date July 7, 1997, and is prior art under 35 U.S.C. § 102(a) and
`
`Bellare97 bears the legend “IEEE 1997” and was published by October 22, 1997.
`
`See Ex. V03 (document from IEEE website showing date of publication). It is prior art
`
`under 35 U.S.C. § 102(a) and (b).
`
`Bellare95 bears the date 1995, and is prior art under 35 U.S.C. § 102(a) and (b).
`
`IBM96 bears the date May 1996, and is prior art under 35 U.S.C. § 102(a) and
`
`(b).
`
`Checkpoint bears the date September 1995, and is prior art under 35 U.S.C.
`
`§ 102(a) and (b).
`
`Shwed was filed June 17, 1996 and issued November 19, 1998, and is prior art
`
`under 35 U.S.C. § 102(a) and (b).
`
`Dietz was filed as a provisional application on June 30, 1999, and is prior art
`
`under 35 U.S.C. § 102(e).
`
`Bellisard was published on September 10, 1998. See Ex. V04. It is prior art
`
`under 35 U.S.C. § 102(a) and (b).
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 15
`
`Juniper Ex. 1017-p. 15
`Juniper v Implicit
`
`

`

`Fraser bears the date July 22, 1997, and is prior art under 35 U.S.C. § 102(a) and
`
`(b).
`
`Decasper98 bears the date September 1998, and was published by September 4,
`
`1998. See Ex. V05. It is prior art under 35 U.S.C. § 102(a) and (b). Decasper98B&W
`
`bears the date 1998, and is a black & white version of Decasper98.
`
`Decasper was published in 1998. See Ex. V06. It is prior art under 35 U.S.C.
`
`§ 102(a) and (b).
`
`RFC 1825 bears the date August 1995, and is prior art under 35 U.S.C. § 102(a)
`
`and (b).
`
`RFC 1829 bears the date August 1995, and is prior art under 35 U.S.C. § 102(a)
`
`and (b).
`
`RFC 1883 bears the date December 1995, and is prior art under 35 U.S.C.
`
`§ 102(a) and (b).
`
`Huitema was published on October 28, 1997. See Ex. V08 (document from
`
`United States Copyright Office Public Catalog showing date of publication). It is prior
`
`art under 35 U.S.C. § 102(a) and (b).
`
`Decasper97 was published in 1997. See Ex. V09. It is prior art under 35 U.S.C.
`
`§ 102(a) and (b).
`
`Mosberger bears the date 1997, and is prior art under 35 U.S.C. § 102(a) and (b).
`
`HotLava bears the date October 1998, and is prior art under 35 U.S.C. § 102(a)
`
`and (b).
`
`
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 16
`
`Juniper Ex. 1017-p. 16
`Juniper v Implicit
`
`

`

`Plexus bears the date January 22, 1996, and is prior art under 35 U.S.C. § 102(a)
`
`and (b).
`
`ComScript was published in December 1994 and is prior art under 35 U.S.C.
`
`§ 102(a) and (b). See Ex. 38 (document from publisher website indicating date of
`
`publication)
`
`The following other written evidence is also made of record, solely to help
`
`explain the content of certain of the references listed in the table above. See MPEP
`
`§ 2205.
`
`Other Written Evidence
`
`FH: Original Claims
`FH: 9/23/2002 Office Action
`FH: 2/24/2003 Amendment
`FH: 5/20/2003 Notice of Allowance
`FH: Ex Parte Reexamination Request
`FH: Order Granting Ex Parte Reexamination Request
`FH: 7/7/2009 Office Action
`FH: 9/1/2009 Amendment
`FH: 10/23/2009 Interview Summary
`FH: 12/4/2009 Final Office Action
`FH: 12/18/2009 Response to Final Rejection
`FH: 1/21/2010 Advisory Action
`FH: 2/8/2010 Amendment After Final
`FH: 3/2/2010 Notice of Intent to Issue Certificate
`First Amended Complaint
`Implicit Patent Infringement Contentions
`Implicit Infringement Claim Chart (Security Devices)
`Implicit Infringement Claim Chart (Application Acceleration)
`Implicit Opening Claim Construction Brief
`
`Exhibit
`Ex. 35-A
`Ex. 35-B
`Ex. 35-C
`Ex. 35-D
`Ex. 35-E
`Ex. 35-F
`Ex. 35-G
`Ex. 35-H
`Ex. 35-I
`Ex. 35-J
`Ex. 35-K
`Ex. 35-L
`Ex. 35-M
`Ex. 35-N
`Ex. 36-A
`Ex. 36-B
`Ex. 36-C
`Ex. 36-D
`Ex. 37-A
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 17
`
`Juniper Ex. 1017-p. 17
`Juniper v Implicit
`
`

`

`Other Written Evidence
`Defendants Responsive Claim Construction Brief
`Implicit Reply Claim Construction Brief
`Implicit Technical Tutorial
`Defendants Technical Tutorial
`Technical Tutorial Transcript
`Implicit Claim Construction Slides
`Defendants Claim Construction Slides
`Claim Construction Transcript – Day 1
`Claim Construction Transcript – Day 2
`Penn State University, CiteSeer Digital Library
`
`
`Exhibit
`Ex. 37-B
`Ex. 37-C
`Ex. 37-D
`Ex. 37-E
`Ex. 37-F
`Ex. 37-G
`Ex. 37-H
`Ex. 37-I
`Ex. 37-J
`Ex. 38
`
`IV. CLAIM CONSTRUCTION ADMISSIONS OF THE PATENT OWNER
`
`A party requesting reexamination is permitted to submit admissions of the patentee in
`
`support of its request or proposed grounds for rejection. “The admission can reside in the patent
`
`file (made of record during the prosecution of the patent application) or may be presented during
`
`the pendency of the reexamination proceeding or in litigation.” MPEP 2617(III). Following is a
`
`brief description of the prosecution of the ‘163 patent (original and reexamination history), as
`
`well as statements by Implicit regarding claim construction in connection with its litigation
`
`against Requester.
`
`Note that, both here and throughout this Request, the claims are accorded their broadest
`
`reasonable interpretation for purposes of reexamination only. Requester notes that claim
`
`construction in reexamination is broader than claim construction in litigation. See In re
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 18
`
`Juniper Ex. 1017-p. 18
`Juniper v Implicit
`
`

`

`Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). Therefore, nothing in this Request should be
`
`taken as an assertion regarding how the claims should be construed in litigation.3
`
`A.
`
`Original Prosecution
`
`During the original prosecution of the ‘163 patent, the patentee initially proposed 34
`
`claims. Ex. 35-A [Original Claims] at 21-25. The PTO initially rejected all of these claims as
`
`being anticipated by at least three patents: U.S. Patent No. 5,870,479 to Feiken et al. ("Feiken"),
`
`U.S. Patent No. 5,425,029 to Hluchyj et al. ("Hluchyj"), and U.S. Patent No. 5,568,478 to Van
`
`Loo, Jr. et al. ("Van Loo"). Ex. 35-B [9/23/2002 Office Action] at 2-6. In response, the patentee
`
`cancelled those claims and proposed a new set of claims with additional language, including the
`
`“storing” step “so that the sequence does not need to be re-identified for subsequent packets of
`
`the message.” Ex. 35-C [2/24/2003 Amendment] at 2. The patentee also offered a few
`
`arguments in an attempt to distinguish the cited prior art. Id. at 9-10. However, in issuing a
`
`notice of allowance for the new claims, the examiner appeared to rely primarily on the new
`
`limitations added to the claims. Ex. 35-D [5/20/2003 Notice of Allowance] at 2. The examiner
`
`further entered an examiner’s amendment to the patent title, which was changed to: “Method and
`
`System for Demultiplexing a First Sequence of Packet Components to Identify Specific
`
`Components Wherein Subsequent Components are Processed Without Re-Identifying
`
`Components.” Id.
`
`
`3 Moreover, nothing in this Request should be construed as expressing any position as to
`whether the claims of the ‘163 patent claims constitute patentable subject matter under 35 U.S.C.
`§ 101, or whether they satisfy the definiteness, enablement, best mode, or written description
`requirements of 35 U.S.C. § 112, since these grounds of invalidity cannot properly be raised in a
`request for reexamination. See MPEP § 2617 (“Other matters, such as . . . 35 U.S.C. 112 . . . will
`not be considered when making the determination on the request and should not be presented in
`the request.”); see also MPEP § 2143.03(I) (even limitations rejected for indefiniteness must be
`examined).
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`
`
`
`
` 19
`
`Juniper Ex. 1017-p. 19
`Juniper v Implicit
`
`

`

`B.
`
`Reexamination
`
`On January 17, 2009, the PTO granted a request for ex parte reexamination of the '163
`
`patent. Ex. 35-F [Order Granting Request for Ex Parte Reexamination]. Among other prior art
`
`references not considered during the original prosecution of the '163 patent, the PTO determined
`
`that a substantial new question of patentabi