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:
`
`Issued:
`
`Serial No.:
`
`Edward Balassanian
`
`Examiner:
`
`To be assigned
`
`Sept. 30, 2003
`
`Attorney Docket No.:
`
`159291-0025(163)
`
`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
`for Patents
`Commissioner
`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. Asa result of ex parte
`
`reexamination,
`
`an Ex Parte Reexamination Certificate (7567th) issued for the ‘163 patent
`
`2315571
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`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 /nter 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
`
`Il. DISCLOSURE OF CONCURRENT PROCEEDINGS
`Il. 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. §
`
`VIL IDENTIFICATION OF REAL PARTY IN INTEREST PURSUANT
`TO 37
`§ 1.915(b)(8)
`
`VU. CONCLUSION
`
`Inter Partes Reexamination
`US. Patent No.6,629,163
`
`of
`
`Page
`
`3
`
`9
`
`10
`
`18
`
`24
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`272
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`272
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`I.
`
`INTRODUCTION
`
`The PTO should grant this Request and initiate infer 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.
`
`/d. 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.” /d. 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.
`
`/d. 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
`U.S. Patent No.6,629,163
`
`of
`
`3
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`OF
`
`Pt
`
`2
`
`b2
`
`D3
`
`P2
`
`DS
`
`P4
`
`pte
`
`{NUL
`
`P3
`
`2
`
`During the original prosecution and prior ex parte reexamination proceedings for
`
`the ‘163 patent, the patentee emphasized a few specific features of its purported invention
`
`in an attempt to distinguish prior art cited against it. The original claims as filed in 2003
`
`described a method in which (1) a packet of a message was received,
`
`(2) a component
`
`for processing the packet was identified, and then (3) certain steps relevant to packet
`
`processing were performed involving “state information.” In response to an initial office
`
`action rejecting all of the original claims, the patentee cancelled those claims and
`
`proposed a new set of claims adding language to the effect that the identification of a
`
`sequence of components for processing must be stored, “so that the sequence does not
`
`need to be re-identified for subsequent packets of the message.” In other words, an
`
`identification of components was to take place only for the first packet of a given
`
`message;
`
`that identification was then to be stored and made available for subsequent
`
`packets in the message, which could then essentially follow the lead of the first packet
`
`through the sequence of components already identified.
`
`The examiner issued a notice of allowance for the claims as thus amended, stating
`
`that this new limitation—processing of subsequent packets “without re-identifying” a
`
`new sequential order of components—was not taught or suggested in the prior art of
`
`record.
`
`Indeed, the examiner underscored the importance of the limitation with an
`
`examiner’s amendment to the patent title which included the words:
`
`“Wherein
`
`Subsequent Components are Processed Without Re-Identifying
`
`Components.”
`
`Inter Partes Reexamination
`USS. Patent No.6,629,163
`
`of
`
`4
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`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.’
`
`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.” /d. 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.”
`
`' The litigation matter settled before conclusion of the ex parte reexamination
`
`proceedings.
`
`Inter Partes Reexamination
`U.S. Patent No.6,629,163
`
`of
`
`5
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`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:
`
`Medisandian
`Fommat
`Conversion
`
`Pune
`
`.
`
`a“
`
`Ex. AO2 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):
`
`Mea“
`Zea
`
`ISDN
`
`ed
`
`fax service
`gateway
`
`image
`
`sgawtext > filtered text> speech > auduo format’ phone sermnice
`gateway
`
`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
`U.S. Patent No.6,629,163
`
`of
`
`6
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`patentee had even filed the application that became the ‘163 patent. Pfeifer96 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.
`
`And Pfeifer96 is hardly the only example of invalidating prior art dating from
`
`years before the critical date of the ‘163 patent. Cisco Systems was also actively
`
`involved in this technological space in 1996, when a pair of Cisco engineers filed an
`
`application that ultimately issued as a patent (‘Kerr’). The Kerr patent teaches how
`
`network administrators can flexibly configure systems with the use of a technology called
`
`“flows,” in which the first packet of a message goes through several
`
`functions task by
`
`task and then “caches” the information for high-speed use by subsequent packets. This
`
`functionality was incorporated into actual Cisco products under the name “NetFlow,” as
`
`elaborated in the following article excerpt from a 1997 trade publication:
`
`Cisco stream ines routing, management
`
`functions
`
`With Cco’s Nethle
`task by tack
`gut those tacks at highspeed f
`about the few can then be wassed: on for network
`
`erat
`
`pagernent an
`
`ole
`
`Inter Partes Reexamination
`USS. Patent No.6,629,163
`
`of
`
`7
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`Ex. 16 [InfoWorld Article]. The Kerr technology as embodied in NetFlow is still part of
`
`Cisco’s product line to this day.” 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.” /d. 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
`
`See
`
`<http://www.cisco.com/en/US/products/ps6601/products ios protocol
`group_home.html>.
`
`Inter Partes Reexamination
`U.S. Patent No.6,629,163
`
`of
`
`8
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`claims 1, 15, and 35of the ‘163 patent, and a certificate under 35 U.S.C. § 316(a)
`
`ultimately issued cancelling all of these claims.
`
`IL.
`
`DISCLOSURE OF CONCURRENT
`
`PROCEEDINGS
`
`Implicit has asserted the ‘163 patent against Requester in a District Court action
`
`styled Jmplicit Networks,
`
`Inc. v. Juniper Networks,
`
`Inc. (N.D. Cal. Civ. No. Civ. No.
`
`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
`
`running the Junos OS, Junos OS performs a
`equipment
`flow lookup to see if the packet belongs to an already
`If the packet does not belong to an
`established
`session.
`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
`forms a fast processing path. All subsequent packets
`packet
`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
`U.S. Patent No.6,629,163
`
`of
`
`9
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`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.
`li,
`
`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
`
`entitled “ISDN Primary Rate User-
`Specification
`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
`
`Book entitled “Superdistribution: Objects as
`Property on the Electronic Frontier” by Brad
`Cox (“Cox”)
`
`Thesis entitled “Job and Stream Control
`Heterogeneous Hardware and Software
`Architectures” by Stefan Franz (“Franz98”)
`
`in
`
`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
`
`October 6, 1996
`
`Inter Partes Reexamination
`U.S. Patent No.6,629,163
`
`of
`
`10
`
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`Prior Art Reference
`
`Prior Art Date
`
`Exhibit
`
`entitled RFC 793:
`“Transmission
`Specification
`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”)
`
`September 1981
`
`Ex. 9
`
`1986
`
`Ex. 10
`
`October 6, 1996
`
`December 19, 1997
`
`Ex. 12
`
`April 29, 1998
`
`Ex. 13
`
`March 29, 1994
`
`U:S. Pat. No. 6,243,667 entitled "Network Flow
`Switching and Flow Data Export," by Darren R.
`Kerr and Barry L. Bruins (“Kerr”)
`
`May 28, 1996
`
`Article entitled “Cisco NetFlow Switching
`speeds traffic routing,” InfoWorld Magazine
`(“NetFlow”)
`
`July 7, 1997
`
`Article entitled “A Concrete Security Treatment
`of Symmetric Encryption” by M. Bellare et al.
`(“Bellare97”)
`
`October 27, 1997
`
`Ex. 17
`
`Inter Partes Reexamination
`U.S. Patent No.6,629,163
`
`of
`
`ll
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`Prior Art Reference
`
`Prior Art Date
`
`Article entitled “XOR MACs: New Methods for | 1995
`
`Message Authentication Using Finite
`Pseudorandom Functions” by Mihir Bellare,
`Roch Guerin, and Phillip Rogaway (“Bellare95”)
`
`Exhibit
`
`Ex. 18
`
`Book entitled “Local Area Network Concepts
`and Products: Routers and Gateways” from IBM
`(“IBM96”)
`
`May 1996
`
`Ex. 19
`
`Article entitled “Checkpoint Firewall-1 White
`Paper, Version 2.0” (“Checkpoint”)
`
`September 1995
`
`Ex. 20
`
`USS. 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”)
`
`December 15, 1993
`
`Ex. 21
`
`June 30, 1999
`
`Ex. 22
`
`September 10,1998 | Ex. 23
`Publication entitled “DTE Firewalls Phase Two | July 22, 1997
`
`US. 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”’)
`
`Measurement and Evaluation Report” by
`Timothy L. Fraser et al. of Trusted Information
`(“Fraser”)
`Systems
`
`Ex. 24
`
`Article entitled “Router Plugins: A Software
`Architecture for Next Generation Routers” by
`Dan Decasper et al.
`(“Decasper98”)
`
`entitled RFC 1825: “Security
`Specification
`Architecture for the Internet Protocol” by R.
`Atkinson (“RFC 1825”)
`
`entitled RFC 1829: “The ESP
`Specification
`DES-CBC Transform” by P. Karn et al.
`1829”)
`
`September 4, 1998
`
`Ex. 25
`
`August 1995
`
`Ex. 26
`
`August 1995
`
`Ex, 27
`
`Inter Partes Reexamination of
`U.S. Patent No.6,629,163
`
`l 2
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`Prior Art Reference
`
`Prior Art Date
`
`Exhibit
`
`entitled RFC 1883: “Internet
`Specification
`Protocol, Version 6 (IPv6) Specification” by S.
`Deering and R. Hinden (“RFC 1883”)
`
`Book entitled “IPv6: The New Internet Protocol”| October 28, 1997
`
`by Christian Huitema (“Huitema’)
`
`December 1995
`
`Ex. 28
`
`Ex. 29
`
`Article entitled “Crossbow: A Toolkit for
`Integrated Services over Cell Switched IPv6” by
`Dan Decasper et al.
`(“Decasper97”)
`
`May 29, 1997
`
`Ex. 30
`
`entitled “Scout: A Path-Based
`Dissertation
`Operating System” by David Mosberger
`(“Mosberger”)
`
`Article entitled “Implementing Communication | October 1998
`
`Protocols in Java” by Bobby Krupczak
`(“HotLava”)
`
`al
`
`1997
`
`Ex. 31
`
`Ex. 32
`
`January 22, 1996
`
`Ex. 33
`
`Article entitled “An Extensible Protocol
`Architecture for Application-Specific
`Networking” by Marc Fiuczynski
`(“Plexus”)
`
`al
`
`Article entitled “ComScript: An Environment for | December 1994
`
`the Implementation of Protocol Stacks and their
`Dynamic Reconfiguration” by Murhimanya
`Muhugusa ez. al
`
`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 (/.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
`Patent No.6,629,163
`
`USS.
`
`of
`
`13
`
`JNPR-IMPL_30024_
`
`Page 13 of 272
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`Implicit Exhibit 2001
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`
`

`

`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. VO1 (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).
`
`and (b).
`
`and (b).
`
`Meer96 bears the date October 6, 1996, and is prior art under 35 U.S.C. § 102(a)
`
`RFC 793 bears the date September 1981, and is prior art under 35 U.S.C. § 102(a)
`
`Mills bears the date 1986, and is prior art under 35 U.S.C. § 102(a) and (b).
`
`Inter Partes Reexamination
`USS. Patent No.6,629,163
`
`of
`
`14
`
`JNPR-IMPL_30024_
`
`Page 14 of 272
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`

`

`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
`
`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
`USS. Patent No.6,629,163
`
`of
`
`15
`
`JNPR-IMPL_30024_
`
`Page 15 of 272
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`

`

`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. VOS.
`
`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).
`
`and (b).
`
`RFC 1829 bears the date August 1995, and is prior art under 35 U.S.C. § 102(a)
`
`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. VO9.
`
`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
`Patent No.6,629,163
`
`USS.
`
`of
`
`16
`
`JNPR-IMPL_30024_
`
`Page 16 of 272
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`

`

`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
`
`Exhibit
`
`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
`
`Implicit Patent Infringement Contentions
`Infringement Claim Chart (Security Devices)
`Infringement Claim Chart (Application Acceleration)
`Implicit
`Implicit Opening Claim Construction Brief
`
`Inter Partes Reexamination
`U.S. Patent No.6,629,163
`
`of
`
`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
`
`17
`
`JNPR-IMPL_30024_
`
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`Other Written Evidence
`
`Exhibit
`
`Defendants Responsive Claim Construction Brief
`Implicit Reply Claim Construction Brief
`Implicit Technical Tutorial
`Technical Tutorial
`
`Defendants
`
`Technical Tutorial Transcript
`Implicit Claim Construction Slides
`Defendants Claim Construction Slides
`
`Claim Construction Transcript — Day
`
`Claim Construction Transcript — Day 2
`Penn State University, CiteSeer Digital Library
`
`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(IID. 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 /n re
`
`Inter Partes Reexamination
`USS. Patent No.6,629,163
`
`of
`
`18
`
`JNPR-IMPL_30024_
`
`Page 18 of 272
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`

`

`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.*
`
`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.
`
`/d. 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.”
`
`>
`
`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
`U.S.C. 112... will
`request for reexamination. See MPEP § 2617 (“Other matters, such as...
`not be considered when making the determination on the request and should not be presented in
`the request.”); see also MPEP §
`(even limitations rejected for indefiniteness must be
`examined).
`
`Inter Partes Reexamination
`U.S. Patent No.6,629,163
`
`of
`
`] 9
`
`JNPR-IMPL_30024_
`
`Page 19 of 272
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`

`

`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 patentability existed based upon a 1997 doctoral
`
`dissertation
`
`by David Mosberger, entitled “Scout: A Path-Based Operating System” (“Mosberger”). The
`
`PTO subsequently issued an initial office action rejecting every single claim of the '163 patent as
`
`anticipated by Mosberger. Ex. 35-G [07/07/2009 Office Action] at 5-13.
`
`Implicit
`
`initially attempted to distinguish Mosberger without making any substantive
`
`amendments to the claims.
`
`In its first office action response,
`
`Implicit argued that Mosberger
`
`“configures paths (formed from a sequence of components) before receiving the ‘first packet of
`
`the message.” Ex. 35-H [09/01/2009 Amendment] at 11 (emphasis in origina