Case3:10-cv-04234-SI Document205 Filed03/13/13 Page1 of 30
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`IMPLICIT NETWORKS INC,
`Nos. C10-3365 SI; C 10-4234 SI
`Plaintiff,
`
` v.
`F5 NETWORKS INC,
`Defendant.
`
`IMPLICIT NETWORKS INC,
`Plaintiff,
`
` v.
`JUNIPER NETWORKS, INC.
`Defendant.
`
`/
`
`/
`
`ORDER GRANTING DEFENDANTS’
`MOTIONS FOR SUMMARY JUDGMENT
`
`Currently before the Court are summary judgment motions by defendant Juniper Networks (Case
`No. 10-4234 SI) and defendant F5 Networks (Case No. 10-3365 SI) for non-infringement; and a motion
`for summary judgment by defendant Juniper Networks, in which defendant F5 Networks joins, as to
`invalidity of the asserted patents. Having considered the arguments of counsel and the papers submitted,
`the Court GRANTS defendants’ motions.
`
`BACKGROUND
`In these two related cases, plaintiff Implicit Networks, Inc. accuses defendants’ products of
`infringing two patents owned by plaintiff: U.S. Patent No. 6,629,163, as issued September 30, 2003 and
`as it emerged after reexamination on June 22, 2010 (‘163 Patent); and U.S. Patent No. 7,711,857 (‘857
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`For the Northern District of California
`
`United States District Court
`United States District Court
`
`Juniper Ex. 1022-p. 1
`Juniper v Implicit
`
`

`

`Case3:10-cv-04234-SI Document205 Filed03/13/13 Page2 of 30
`
`Patent), issued May 4, 2010 as a continuation application from ‘163. In early 2012, Juniper filed
`requests for inter partes reexamination on both patents. The inter partes proceedings are still pending,
`although the examiners have issued Patent Action Closing Prosecutions (ACPs) concluding that both
`patents are invalid as anticipated and/or obvious.
`According to Implicit, the patents cover a modular networking system which dynamically selects
`software routines (“modules” or “beads”) after the arrival of the first packet of a message to build a data
`processing path for the subsequent packets of the message (“flow”). See, e.g., Implicit’s Opposition to
`Motion for Summary Judgment on Invalidity (“Invalidity Oppo.”) at 4-7. Since Implicit’s system
`creates the processing path dynamically and only after the arrival of the first packet, Implicit’s system
`is flexible and can be changed to accommodate different processing steps, can be adapted to handle
`different sorts of technology/flows, and can adopt “policies” based on administrator direction. Id.
`Implicit accuses two lines of products made by defendant Juniper Networks, Inc.: the SRX and
`J series of gateways and routers that use “flow based” processing of internet traffic. Implicit accuses
`F5’s “BIG-IP” IP networking products which act as intermediaries and transfer data between users (e.g.,
`a consumer) and servers (e.g., an e-commerce business like Amazon). The BIG-IP products help
`“enterprise applications” sort and get traffic to the appropriate servers.
`
`I.
`
`DISCUSSION
`Defendants’ Motion on Invalidity
`Juniper, joined by F5, moves for summary judgment on invalidity, arguing that the asserted
`claims are invalid as disclosed or rendered obvious by Daniel Decasper, et al., “Router Plugins: A
`Software Architecture for Next Generation Routers,” Computer Communication Review, a publication
`of ACM SIGCOMM, Vol. 28, No. 4 Oct. 1998. (Decasper98). Juniper also argues that the asserted
`claims are rendered obvious by Decasper98 in combination with IBM, Local Area Network Products
`Concepts and Products: Routers and Gateways (May 1996) (IBM96) and Mark Nelson and Jean Loup
`Gailly, the Data Compression Book, M&T Books (2nd ed. 1996) (Nelson).
`Juniper notes that the PTO examiners in both of the pending inter partes reexamination
`proceedings have rejected all of the asserted claims. The PTO issued an Action Closing Prosecution
`
`2
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`Juniper Ex. 1022-p. 2
`Juniper v Implicit
`
`

`

`Case3:10-cv-04234-SI Document205 Filed03/13/13 Page3 of 30
`
`(ACP) in the ‘163 Patent reexam on October 1, 2012 and issued an ACP in the ‘857 Patent reexam on
`December 21, 2012. See ‘163 Patent ACP, Declaration of Douglas Dixon [Dixon Decl., Docket No.
`167-5], Ex 15; ‘857 Patent ACP, Docket No. 201 The two panels of examiners found that Claims 1,
`5, and 35 in the ‘163 Patent and Claims 1, 4 and 10 of the ‘857 Patent were anticipated in light of
`Decasper98 and obvious in light of Decasper98 alone and/or in combination with IBM96 and Nelson.1
`Implicit contends that the PTO actions are irrelevant for two reasons. First, the PTO examiners applied
`only a “preponderance of the evidence” standard of review in determining invalidity, but this Court must
`apply the higher “clear and convincing” standard. Second, Implicit notes that the inter partes
`proceedings are far from over. Following the issuance of the ACPs, patent owners are allowed to submit
`additional comments to the examiners and an appeal may follow. See, e.g., Manual of Patent Examining
`Procedures, §§2671, 2672.
`As relevant to the motion for summary judgment on invalidity, the parties’ dispute centers on
`five claim limitations, designated by the parties “1a,” “1b,” “1e,” “1f” and “1g” and shown in bold
`below, which are all present in Claim 1 of the ‘163 Patent:
`Claim 1 of ‘163 Patent:
`A method in a computer system for processing a message having a sequence of packets, the
`method comprising:
`[1a] providing a plurality of components, each component being a software routine
`for converting data with an input format into data with an output format;
`[1b] for the first packet of the message,
`dynamically identifying a non-predefined sequence of components for
`processing the packets of the message such that the output format of the
`components of the non-predefined sequence match the input format of the
`next component in the non-predefined sequence, wherein dynamically
`identifying includes selecting individual components to create the non-predefined
`sequence of components after the first packet is received; and
`storing an indication of each of the identified components so that the non-
`predefined sequence does not need to be re-identified for subsequent packets of
`the message; and
`for each of a plurality of packets of the message in sequence,
`[1e] for each of a plurality of components in the identified non-predefined
`sequence,
`retrieving state information relating to performing the processing of
`the component with the previous packet of the message;
`[1f] performing the processing of the identified component with the
`
`1.
`
`1 For the ‘163 Patent, the PTO also found that the claims were anticipated and/or obvious in
`light of Patent No. 6,243,667 (Kerr). See generally Dixon Decl., Ex. 15. However, the PTO rejected
`that same argument with respect to Claims 1, 4, and 10 in the ‘857 Patent ACP. ‘857 ACP at 35.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`3
`
`For the Northern District of California
`
`United States District Court
`
`Juniper Ex. 1022-p. 3
`Juniper v Implicit
`
`

`

`Case3:10-cv-04234-SI Document205 Filed03/13/13 Page4 of 30
`
`packet and the retrieved state information; and
`storing state information relating to the processing of the component
`[1g] with packet for use when processing the next packet of the
`message.
`
`See Dixon Decl., Ex 15 (italics added in reexamination; bold added by Court to show limitations
`involved in challenge to validity); see also Dixon Decl., Ex. 19 (Report of Dr. Scott Nettles on
`Infringement by Juniper; identifying limitations within claims).2
`
`
`
`A.
`
`Legal Standard
`i.
`In General
`A patent is presumed valid after the PTO examination process, based on “the basic proposition
`that a government agency such as the then Patent Office was presumed to do its job.” Am. Hoist &
`Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984) (abrogated on other grounds
`by Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011)) (citing Morgan v.
`Daniels, 153 U.S. 120 (1894)). The defendant carries a high burden on summary judgment of invalidity,
`as the “moving party seeking to invalidate a patent at summary judgment must submit such clear and
`convincing evidence of invalidity so that no reasonable jury could find otherwise.” Eli Lilly & Co. v.
`Barr. Labs, 251 F. 3d 955, 962 (Fed. Cir. 2001). The presumption of validity can nonetheless be
`overcome with sufficient evidence. See Magnivision, Inc. v. Bonneau Co., 115 F.3d 956, 960 (Fed. Cir.
`1997) (“The validity of a patent is always subject to plenary challenge on its merits. A court may
`invalidate a patent on any substantive ground, whether or not that ground was considered by the patent
`
`2 Juniper argues that the elements of the other asserted claims not corresponding to the five
`limitations identified by Implicit ( i.e., non-contested elements of claims 1, 15 and 35 of the ‘163 Patent
`and non-contested elements of Claims 1, 4, and 10 of the ‘857 Patent) are disclosed by Decasper98 and,
`therefore, at a minimum partial summary judgment should be entered in Juniper’s favor on those
`claims/elements. See Juniper Motion re Invalidity at 19-21. Implicit does not contest this in its
`Opposition. In Reply, Juniper also argues that because Implicit only challenges whether Decasper98
`covers sub-aspects of each of the limitations identified in Claim 1 (e.g., Implicit does not dispute that
`Decasper98 discloses “a plurality of components, each component being a software routine” from 1a)
`summary judgment should be granted in Juniper’s favor on the “undisputed aspects” of elements 1a, 1b,
`1e, 1f and 1g. Juniper Reply on Invalidity at 2; see also Juniper’s Slides from Summary Judgment
`Hearing at 4-8 (identifying undisputed claim elements).
`
`4
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`Juniper Ex. 1022-p. 4
`Juniper v Implicit
`
`

`

`Case3:10-cv-04234-SI Document205 Filed03/13/13 Page5 of 30
`
`examiner.”).3
`The moving party’s burden is “especially difficult” when the prior art references presented were
`considered by the patent examiner during prosecution. Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339,
`1348 (Fed. Cir. 2004). But when, as here, additional evidence is presented by the moving party, “the
`burden may be more or less easily carried because of the additional evidence.” Applied Materials, Inc.
`v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1569 (Fed. Cir. 1996). New evidence
`supporting an invalidity contention may “carry more weight” than evidence previously considered by
`the PTO. Microsoft Corp. v. i4i Ltd. P’ship, 131 S.Ct. 2238, 2251 (2011).4 As the Supreme Court has
`held, “[s]imply put, if the PTO did not have all material facts before it, its considered judgment may lose
`significant force. . . . And, concomitantly, the challenger’s burden to persuade the jury of its invalidity
`defense by clear and convincing evidence may be easier to sustain.” Id. (internal citations omitted).
`
`Anticipation
`ii.
`Under 35 U.S.C. § 102(b):
`A person shall be entitled to a patent unless–
`* * *
`(b) the invention was patented or described in a printed publication in this or a foreign country or
`in public use or on sale in this country, more than one year prior to the date of the application for
`patent in the United States . . . .
`In determining validity of a patent claim over the prior art, a two-step process applies. The first
`step is the claim construction by the Court. See Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183
`F.3d 1347, 1353 (Fed. Cir. 1999). The second step is a comparison of the asserted claims against the
`prior art reference. A determination that a claim is invalid for anticipation requires a finding that “each
`and every limitation is found either expressly or inherently in a single prior art reference.” Celeritas
`
`3 See also Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1139 (Fed. Cir. 1985) (“[t]he
`Examiner’s decision, on an original or reissue application, is never binding on the court. It is, however,
`evidence the court must consider in determining whether the party asserting invalidity has met its
`statutory burden by clear and convincing evidence.”).
`4 Citing SIBIA Neurosciences, Inc. v. Cadus Pharmaceutical Corp., 225 F.3d 1349, 1355-1356
`(Fed.Cir. 2000) (“[T]he alleged infringer’s burden may be more easily carried because of th[e]
`additional [evidence]”); Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1306 (Fed. Cir. 2005)
`(similar).
`
`5
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`Juniper Ex. 1022-p. 5
`Juniper v Implicit
`
`

`

`Case3:10-cv-04234-SI Document205 Filed03/13/13 Page6 of 30
`
`Techs. Inc. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360, 47 USPQ2d 1516, 1522 (Fed. Cir. 1998). The
`Federal Circuit has held that “it is axiomatic that that which would literally infringe if later anticipates
`if earlier.” Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1378 (Fed. Cir.
`2001); see also Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir. 1987).5
`
`Obviousness
`iii.
`Defendants must prove by clear and convincing evidence that “the subject matter as a whole
`would have been obvious at the time the invention was made to a person having ordinary skill in the art
`to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). Obviousness under 35 U.S.C. § 103 is a question of law, with underlying factual
`considerations regarding (1) the scope and content of the prior art, (2) the differences between the prior
`art and the claimed invention, (3) the level of ordinary skill in the art, and (4) any relevant secondary
`considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966); see also Brown
`& Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed. Cir. 2000). A claimed
`invention is invalid for obviousness “if the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103.6
`“Although it is well settled that the ultimate determination of obviousness is a question of law,
`it is also well understood that there are factual issues underlying the ultimate obviousness decision.”
`McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1349 (Fed. Cir. 2001). Summary judgment may be
`
`5 Implicit does not contest that Decasper98, IBM96 and Nelson are publications under 35 U.S.C.
`§ 102(b) which could qualify as prior art.
`
`6 The parties’ experts describe a “person of ordinary skill in the art” differently. Juniper’s expert
`(Dr. Calvert) describes the person as one with a bachelor’s degree in a relevant field and at least four
`years’ work experience or a master’s degree in a relevant field and two years experience. See
`Declaration of Dr. Kenneth I. Calvert [Docket No. 167-1] and Exhibit 2 [Calvert Invalidity Expert
`Report], ¶ 42. Implicit’s expert describes the person as having a bachelor’s degree in the relevant field
`and at least two years’ experience. Expert Report of Dr. Scott Nettles on Validity Rebuttal [Docket No.
`167-9], ¶ 30. Implicit points out the distinction, but does not argue that the distinction matters for
`resolution of the arguments made in the invalidity motion.
`
`6
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`Juniper Ex. 1022-p. 6
`Juniper v Implicit
`
`

`

`Case3:10-cv-04234-SI Document205 Filed03/13/13 Page7 of 30
`
`appropriate if “the content of the prior art, the scope of the patent claim, and the level of ordinary skill
`in the art are not in material dispute, and the obviousness of the claim is apparent in light of these
`factors.” KSR, 550 U.S. at 427 (citing Graham, 383 U.S. at 17). However, a factual dispute as to any
`one of these elements will defeat the motion. Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed.
`Cir. 2000).
`
`
`Whether Decasper98 Anticipates or Renders Obvious the Asserted Claims
`B.
`Juniper’s expert, Dr. Kenneth L. Calvert, concludes that Decasper98 alone anticipates or renders
`obvious claims 1, 15, 35 of the ‘163 Patent as well as claims 1, 4 and 10 of the ‘857 Patent. See Calvert
`Declaration [Docket No. 167-1] and Exhibit 2 [Calvert Invalidity Expert Report] ¶¶ 543-611.7
`Decasper98 describes a general “framework” for IP processing, that is “extensible” and can be applied
`to applications other than IP processing. Decasper98 (Dixon Ex. 1) at 2. Dr. Calvert argues Decasper98
`describes a router system for processing message flows comprising multiple packets. Calvert Invalidity
`Report, ¶¶ 544-545. In Decasper98, packets traveling through the system encounter “gates” and at that
`point the system dynamically loads “plug-ins” (software routines) to process the message flow. See
`Decasper98 at 1,2, 4; see also Calvert Invalidity Report ¶¶ 546, 548. Descasper98 uses an
`“identification unit” which stores information relating to processing of particular types of packets, as
`well as “pointers to state information for each plugin that uses state information.” Calvert Invalidity
`Report, ¶549. The system maintains two types of state, including a “pointer” to the particular plugin
`and a pointer to “private data” for the plugin instance associated with the particular packet within a flow.
`Id., ¶ 557. Based on those and other conclusions not contested by Implicit, Dr. Calvert opines that
`Decasper98 anticipates the asserted claims of the patents at issue. Id., ¶¶ 543, 567.8
`The PTO examiners in both the ‘163 and ‘857 inter partes reexams have likewise concluded that
`the patents in suit are anticipated and/or rendered obvious in light of Descasper98. See ‘163 Patent ACP
`
`7 As discussed below, Dr. Calvert also finds that Decasper98 in view of IBM96 alone and with
`Nelson likewise render the asserted claims obvious. Calvert Invalidity Report ¶¶ 673-700.
`
`8 The Court notes that Decasper98 also expressly contemplates use of the framework in an edge-
`router. Decasper98 at 2.
`
`7
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`Juniper Ex. 1022-p. 7
`Juniper v Implicit
`
`

`

`Case3:10-cv-04234-SI Document205 Filed03/13/13 Page8 of 30
`
`at 93,118 [Dixon Decl., Ex 15]; ‘857 Patent ACP at 7, 19.9 In the ‘163 Patent ACP, the examiner found
`that Decasper98 used “‘plug-ins’ as the claimed ‘individual components’ that are dynamically selected
`to create a sequence in accordance with this claim limitation.” ‘163 Patent ACP at 11, 20 (emphasis in
`original). The examiner also found that simply because Decasper98 might be designed to handle one
`type of traffic (IP), did not mean it could not read on the format-matching or compatibility limitation
`of the claims. Id., 21-22. Finally, the examiner found that Descasper98 teaches the maintenance of
`message-specific state information as required by the claims. Id., at 36; see also id. 118-137 [rejecting
`Claims 15 and 35 as anticipated by Decasper98].10 In the ‘857 ACP, the examiner found Claims 1, 4
`and 10 anticipated by Decasper98. ‘857 ACP at 7.11 In particular, the examiner found that even
`assuming Decasper98 uses a single IP format, Decasper98 still discloses the input and output matching
`feature of the claims. ‘857 ACP at 16. The examiner also found that Decasper98 discloses storing state
`information for each of the plug-in sequences/software routines to be used in processing the next packets
`as recited in the challenged claims. Id., at 18-19.
`In opposition, Implicit argues that Decasper98 cannot anticipate the claim limitations of the ‘163
`patent identified above because Decasper98 describes a simple “one format fast router” which routes
`only IP packets. As Decapser98 handles only one type of format of message (IP),12 it cannot cover the
`demultiplexing (conversion) processing claimed by the patents in suit, nor does it necessarily have to
`maintain state information for the processing of all packets in the message/flow. As such, Implicit
`argues, Decasper98 cannot anticipate Implicit’s inventions. Implicit, however, does not rely on its
`
`9 The Court recognizes that in the reexaminations the PTO is considering validity under a
`preponderance of the evidence standard, as opposed to the clear and convincing evidence standard that
`applies here. The reasoning of the PTO, however, is persuasive and supports the Court’s conclusions.
`
`10 The examiner in the ‘163 Patent ACP also rejected Claim 1 as obvious in light of Decasper98.
`‘163 Patent ACP at 93-117.
`
`11 In the alternative, the examiner in the ‘857 Patent ACP rejected Claims 1, 4 and 10 as obvious
`under Decasper98, as well as obvious under Decasper in view of IBM96 and IBM96 and Nelson
`combined. Id., at 19, 22, 31.
`12 As the parties explained in the tutorial IP (Internet Protocol) is responsible for addressing
`hosts and routing packets of messages across the internet. See, e.g., Defendants’ Technology Tutorial
`at 10.
`
`8
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`Juniper Ex. 1022-p. 8
`Juniper v Implicit
`
`

`

`Case3:10-cv-04234-SI Document205 Filed03/13/13 Page9 of 30
`
`expert to contradict Dr. Calvert and Juniper’s assertions on these key points. Indeed, the Rebuttal
`Expert Report on Invalidity of Dr. Scott Nettles, Implicit’s expert, attempts to distinguish Decasper98
`on different grounds, namely: (1) that Decasper98 does not dynamically identify components because
`components are initially identified by a static core; (2) plugins in Decasper98 are not components or
`software routines as defined by the Court; and (3) Decasper98 does not process packets so that input
`format matches output format. Nettles Invalidity Rebuttal Report ¶¶ 67-75. Implicit’s opposition
`arguments – Decasper98 does not convert data and fails to maintain state – are made without citation
`to expert support, although Nettles does assert that Decasper98 is a one-format system. See, e.g., Nettles
`Invalidity Rebuttal Report, ¶ 64.
`
`Effect of PTO Not Considering Decasper98 in Prior Proceedings
`i.
`As an initial matter, Implicit disputes the impact – in terms of the deference the Court should
`provide to the presumption of validity of the patents – of the failure of the PTO to consider Decasper98
`as prior art in the prosecution proceedings. Implicit argues that the failure of the PTO to consider
`Decasper98 does not lower Juniper’s burden to demonstrate invalidity by clear and convincing evidence
`under Microsoft Corp. v. i4i Ltd. P’ship, 131 S.Ct. at 2251, because the invention disclosed in
`Decasper98 is cumulative to prior art that was disclosed in the prosecution, namely Dietz, Method and
`Apparatus for Monitoring Traffic in a Network, United States Patent No. 6,651,099 (Dietz). See
`Invalidity Oppo. at 9. While Implicit attaches the Dietz patent to the Declaration of Spencer Hosie in
`Opposition to Invalidity (Hosie Invalid. Decl.), Implicit does not provide any analysis – by way of an
`expert or argument in its brief – as to how it believed Decasper98 was cumulative to Dietz. Instead,
`Implicit criticizes Juniper’s expert, Dr. Calvert, for failing to address Dietz. Id.
`Dietz does not describe a router or gateway – the types of devices at issue here – but a “monitor
`and method of examining packets.” By contrast, Decasper98 teaches an architecture “to quickly and
`efficiently classify packets into flows, and to apply different policies to different flows” through
`“dynamically loaded” plug-ins. Dixon Decl., Ex. 1 at 2. Decasper98, on its face, closely matches the
`inventions covered by the patents in suit, while Dietz does not. Moreover, in his expert report Dr.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`9
`
`For the Northern District of California
`
`United States District Court
`
`Juniper Ex. 1022-p. 9
`Juniper v Implicit
`
`

`

`Case3:10-cv-04234-SI Document205 Filed03/13/13 Page10 of 30
`
`Calvert did address Dietz, if only to determine whether it, in combination with another reference (Kerr)
`rendered obvious the patents in suit. Calvert Invalidity Report, ¶¶318-331. Finally, in issuing the Office
`Actions and the Patent ACPs rejecting the asserted claims based in significant part on Decasper98, the
`PTO has apparently agreed that Decasper98 was a substantial new piece of prior art and not cumulative
`to Dietz, which had been before the PTO on its initial consideration. See, e.g., MPEP § 2647 (requests
`for reexamination “will be denied if a substantial new question of patentability is not found based on
`patents or printed publication.”).
`In sum, Implicit has not shown that the Dietz reference is cumulative to the aspects of
`Decasper98 that Juniper – and the PTO in the inter partes reexam– rely on. As such, Juniper faces a
`somewhat lighter burden under the clear and convincing evidence standard for demonstrating invalidity.
`
`Format Matching/Conversion
`ii.
`Implicit’s main argument against Decasper98 acting as an anticipating (or obviating) reference
`is that Decasper98 is a one format system – the packets that are processed are IP and the packets that
`come out of processing are IP. According to Implicit, the system covered by the patents is a system that
`converts data to ensure input and output formats match. Implicit and its expert acknowledge that –
`based on Implicit’s arguments during claim construction – the Court has already held that the
`“components” or software routines in Implicit’s system need not always “convert” data, but Implicit and
`Dr. Nettles contend that a system like Decasper98, which does not convert any data, cannot disclose the
`system covered by the patents. See Invalidity Oppo. at 13. Juniper responds that based on the Court’s
`claim construction, the components/software routines – the plug-ins in Decasper98 – need not actually
`convert anything; simple processing is enough. See Claim Construction Order [Docket No. 69 in Case
`No. 10-4234] at 9 (“‘conversion’ is not a necessary limitation with respect to the processing of each
`packet”).13 Juniper also contends, supported by Dr. Calvert, that Decasper98 discloses the possibility
`
`13 In issuing its ACPs the PTO likewise agreed that Implicit’s claims, as construed, can cover
`processing of data and need not convert data or formats. See, e.g., ‘163 ACP at 16 (Decasper98
`invention “can cover protocol stacks conforming to the OSI model, even where the same general type
`of processing is performed at each layer, and in a predetermined order”) and at 22 (“within IP, various
`plugins handle various different formatting needs”); ‘857 ACP at 15 (“There is no requirement of
`
`10
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`Juniper Ex. 1022-p. 10
`Juniper v Implicit
`
`

`

`Case3:10-cv-04234-SI Document205 Filed03/13/13 Page11 of 30
`
`of using a conversion plug-in, which – as Implicit’s expert agrees – is “conversion” pursuant to the
`patent claims. See Calvert Invalidity Report ¶ 553; Dixon Decl., Ex. 20 [Nettles Depo..] at 191:11-
`192:16.14
`The Court concludes, based on clear and convincing evidence not contradicted by Implicit’s
`expert, that the system described in Decasper98 processes the IP packets in a manner that anticipates
`Implicit’s inventions.
`
`State Information
`iii.
`Implicit also argues that Decasper98 cannot anticipate or render obvious Implicit’s system
`because the Decasper98 system does not maintain “state” regarding each components’ processing of a
`specific message, as required by the claims. Implicit argues that as a basic IP router, Decasper98 is not
`guaranteed to even see all packets of a particular message and, therefore, cannot manage the processing
`and maintenance of all packets of a particular message or flow, which is essential to the ‘163 Patent.
`See Oppo. at 9-10, 13. Relatedly, Implicit argues that given its structure, Decasper98 maintains only
`“soft state” information and not “hard state” as required by the ‘163 Patent to ensure all packets in a
`message are processed consistent with the dynamically identified path. Soft state, according to Implicit,
`means that the state information could be dumped at any time, jeopardizing the ability of a system to
`fully process all packets in a flow that, for example, contains TCP data. Oppo. at 14.
`Juniper responds that because Decasper98 explicitly indicates it can be implemented as a router
`at the edge of a network, it would – in that configuration – see every message in a particular flow. See
`Decasper98 at 2; Juniper Reply on Invalidity at 7. Implicit did not address or rebut this point during oral
`argument. Juniper also notes that Implicit has no evidence that Decasper98 cannot maintain “hard” state
`and that Implicit’s citation to portions of Decasper98 that allow an administrator to “reset state
`
`multiple formats or any conversion of format in the claims”) and at 17 (nonetheless evidence showed
`that plugins in Decasper98 have differences in format, “which would require coordination of formats
`between the plug-ins.”).
`
`14 Juniper also notes that the patents’ inventor, Edward Balassanian, testified that an all IP
`processing system could satisfy the input/output matching limitations. Dixon Decl., Ex. 34 [Balassanian
`Rule 30(b)(6) deposition] at 1054:14-24.
`
`11
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`Juniper Ex. 1022-p. 11
`Juniper v Implicit
`
`

`

`Case3:10-cv-04234-SI Document205 Filed03/13/13 Page12 of 30
`
`information,” i.e., dump it when useful, does not undermine the fact that Decasper98 maintains state for
`the flows it processes. Juniper Reply on Invalidity at 7-8 & n.8 (noting that Decasper98 explains that
`the administrator can set the system to clear out or recycle cached entries in a flow table as necessary,
`but also the system is capable of exponential expansion to handle more cached records, demonstrating
`an ability to keep “hard state”); see also Decasper98 at 5, 9. The Court agrees with Juniper’s evidence
`that Decasper98 demonstrates the “maintenance of state” limitation of the patents.
`As such, the Court finds that based on clear and convincing evidence, which was not before the
`PTO initially, Decasper98 anticipates the asserted claims.
`
`Obviousness as Single Prior Art Reference
`iv.
`Having found that Decasper98 anticipates the asserted claims, the Court need not reach whether
`Decasper98 renders the asserted claims obvious. The Court notes, however, that Implicit’s argument
`against Decasper98 as an obviousness reference is based on its “meta-level” argument that Decasper98
`cannot anticipate because it is a single-format basic router. As discussed above, the Court has found
`that Decasper98 explicitly contemplates use as an edge-router, contemplates and ensures input and
`output format matching within the parameters of IP processing, and likewise contemplates the use of
`a conversion “plug-in” which could convert data (if that limitation were required, although under the
`Court’s Claim Construction Order, it is not). Those findings support a conclusion that Implicit’s claims
`are unpatentable over (as rendered obvious by) Decasper98.
`
`C.
`
`Whether Decasper98 in Combination with IBM96 and Nelson Render the Asserted
`Claims Obvious
`The Court has found that Decasper98 alone both anticipates the ‘163 patent and renders it
`obvious. Further, the Court finds that Decasper98 in combination with IBM96 and Nelson render the
`asserted claims obvious.
`IBM96 and Nelson disclose the use of software components (plugins) for data compression
`and/or decompression, that according to Juniper and Dr. Calvert, one skilled in the art could have
`appreciated applying within the Decasper98 system. See Calvert Invalidity Report, ¶¶ 673-700. Dr.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`12
`
`For the Northern District of California
`
`United States District Court
`
`Juniper Ex. 1022-p. 12
`Juniper v Implicit
`
`

`

`Case3:10-cv-042