Express Mail Label Nos. EM 305148752US & EM 305149510US
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent No.:
`
`Group Art Unit:
`
`To be assigned
`
`Inventors:
`
`Issued:
`
`Edward Balassanian
`
`Examiner:
`
`To be assigned
`
`May 10, 2010
`
`Attorney Docket No.:
`
`159291-0025(163)
`
`Serial No.:
`
`11/933,022
`
`Reexam Control No.:
`
`To be assigned
`
`Title) METHOD AND SYSTEM FOR
`DATA DEMULTIPLEXING
`
`Reexam Filing Date:
`
`To be assigned
`
`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. 7,711,857 (“the ‘857 patent”) entitled “Method and
`
`System for Data Demultiplexing.” This Request is made pursuant to 35 U.S.C. §§ 311-
`
`316 and 37
`
`§§ 1.906, 1.913 and 1.915. The ‘857 patent was filed on October 31,
`
`2007 and issued on May 4, 2010. The patent has not yet expired.
`
`Implicit Networks,
`
`Inc.
`
`(“Implicit”) has alleged that it is the current assignee of the ‘857 patent. A copy of the
`
`‘857 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 /Jnter Partes Reexamination (“Request”) is being served on the
`
`correspondent of record for the ‘857 patent (Newman Du Wors LLP, 1201 Third Avenue,
`
`Suite 1600, Seattle, WA 98101) and on counsel for Implicit (Hosie Rice LLP,
`
`Inter Partes Reexamination
`U.S. Patent No7,711,857
`
`of
`
`1
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`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
`
`§ 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. § 1.915(b)(7)
`
`VIL IDENTIFICATION OF REAL PARTY IN INTEREST PURSUANT
`TO 37
`§ 1.915(b)(8)
`VU CONCLUSION
`
`Page
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`2
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`11
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`12
`
`21
`
`28
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`286
`
`286
`
`286
`
`L
`
`INTRODUCTION
`
`The PTO should grant this Request and initiate inter partes reexamination
`
`proceedings for the ‘857 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 ‘857 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
`
`Inter Partes Reexamination
`US. Patent No. 7,711,857
`
`of
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`2
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`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 ‘857 patent claims priority to a patent application filed on December 29, 1999
`
`(App. No. 09/474,664) which issued as U.S. Pat. No. 6,629,163 (“the ‘163 patent’) on
`
`September 30, 2003. See Ex. 49 (‘163 patent). A request for ex parte reexamination of
`
`the ‘163 patent was submitted on December 15, 2008. The ensuing reexamination
`
`proceeding (“the ‘163 Reexamination”) resulted in issuance of an Ex Parte
`
`Reexamination Certificate (7567th) on June 22, 2010. See Ex. 2 (163 Reexamination
`
`Certificate).
`
`The
`
`patent has not yet been subject to either ex parte or inter partes
`
`reexamination.
`
`The ‘857 patent describes itself as relating “generally to a computer system for
`
`data demultiplexing.” Ex.
`
`1 (857 patent) at 1:13-14, 2:58-65. As explained in the
`
`background
`
`section of the ‘857 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 1:21-28. 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 2:39-41. 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
`
`2:48-50. An illustration of such a conversion (from format D1 to D15) is illustrated in
`
`Figure 2of the ‘857 patent:
`
`Inter Partes Reexamination of
`U.S. Patent No.7,711,857
`
`II. Concurrent Proceedings
`
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`D1
`
`DiS
`
`P2
`
`PS
`
`P4
`
`des
`
`‘Yow,
`
`During the original prosecution and prior ex parte reexamination proceedings for
`
`the ‘163 patent (parent to the ‘857 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
`
`Inter Partes Reexamination of
`USS. Patent No.7,711,857
`
`II. Concurrent Proceedings
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`examiner’s amendment to the patent title which included the words: “Wherein
`
`Subsequent Components are Processed Without Re-Identifying
`
`Components.”
`
`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. | 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
`
`' The litigation matter settled before conclusion of the ex parte reexamination
`
`proceedings.
`
`Inter Partes Reexamination of
`U.S. Patent No.7,711,857
`
`II. Concurrent Proceedings
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`amended. The allowance was expressly based on the patentee’s argument
`
`that
`
`“Mosberger does not dynamically identify sequences.”
`
`The prosecution of the ‘857 patent
`
`included none of this scrutiny and discussion
`
`of the Mosberger reference, even though the time period of this prosecution (from
`
`October 31, 2007 to May 4, 2010) largely overlapped with the ‘163 reexamination
`
`proceeding (from December 15, 2008 to June 22, 2010).
`
`Indeed, even though Mosberger
`
`was presented in the ‘163 reexamination request of December 15, 2008, was found to
`
`present a substantial new question of patentability against the ‘163 claims on January 17,
`
`2009, and was the sole basis for the rejection of all ‘163 claims in an office action dated
`
`July 7, 2009, the patentee did not submit an Information Disclosure Statement
`
`regarding
`
`Mosberger in the ‘857 patent prosecution until January 29, 2010—several weeks after the
`
`‘857 patent examiner had declared that the pertinent objections over the prior art had
`
`been overcome. See Ex. 40-F (£857 1/29/2010 IDS) at 3; Ex. 40-D (‘857 12/11/2009
`Final Rejection) at 3 (“Claims 6, 8, 9, 22-24 and 26-28 would be allowable ifa terminal
`
`disclaimer is filed to overcome the obviousness-type double patenting rejection.”).
`
`Thus,
`
`the examiner for the ‘857 patent prosecution was not made aware of the
`
`simultaneously
`
`ongoing battle regarding the patentability of the ‘163 patent claims over
`
`Mosberger.
`
`The patentee failed to timely bring these issues to the attention of the
`
`examiner in the ‘857 patent prosecution,
`
`including, in particular, a complete omission of
`
`the patentee’s office action response in the ‘163 patent reexamination dated February 8,
`
`2010 (Ex. 35-M)—a document that Implicit has now characterized as “the most
`
`important document in the entire case” against Requester in the concurrent district court
`
`proceedings. Ex. 37-C (Implicit’s Reply of December 19, 2011 to Defendants’
`
`Inter Partes Reexamination of
`U.S. Patent No.7,711,857
`
`II. Concurrent Proceedings
`
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`Responsive Claim Construction Brief) at 2. Accordingly, Requester now submits these
`
`materials and issues so that the PTO may properly consider them in the first instance as
`
`they bear upon the invalidity of the claims of the ‘857 patent.
`
`Because Mosberger was not timely disclosed during prosecution of the ‘857
`
`patent, prosecution focused entirely on another prior art reference known as Taylor (U.S.
`
`Patent No. 6,785,730). The most prominent deficiency of Taylor alleged by patentee was
`
`that Taylor purportedly discloses only a single component, and several of the
`
`amendments made during prosecution related to this deficiency. See Ex. 40-C (9/24/2009
`
`Amendment) at 5-7 (arguing that Taylor fails to disclose elements “relating to a plurality
`
`of components in a sequence”). The patentee also alleged that Taylor failed to provide
`
`adequate detail on the internal operation of its format translator component.
`
`/d. at 5-7
`
`(“Taylor provides no details on the internal operation of the format translator 32.”).
`
`/d. at
`
`5-7, 12 (independent claim 6), 14 G@ndependent claim 22). The examiner ultimately
`
`allowed these claims without further explanation. Ex. 40-G (3/10/2010 Allowance).
`
`All of the possible points of distinction raised during prosecution of the ‘857
`
`patent
`
`(and its parent, the ‘163 patent) are now clearly and repeatedly addressed by the
`
`prior art presented in this Request.
`
`For example, a technical paper presented at an international
`
`telecommunications
`
`conference in 1996 (“Pfeifer96”) demonstrates that researchers had already discovered
`
`how to process a message using a “dynamically generated converter chain” consisting of
`
`multiple components. Ex. 3 at 124 (emphasis added), 109-11.
`
`Inter Partes Reexamination of
`U.S. Patent No.7,711,857
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`II. Concurrent Proceedings
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`Gax service
`
`gstewsey
`
`mmege
`
`>
`
`gawtext
`
`Hkered text> speech
`
`audio format> phone
`gelewsy
`
`sera
`
`Id. at 111 (Figure 6: “Converter chain: fax reception, conversion to text and speech,
`
`telephone delivery”). Pfeifer96 also provides internal details regarding the operation of
`
`its processing steps, observing, e.g., that selection of the chain of components is based on
`
`analysis of a data type of the incoming message (e.g., whether its source “medium” is
`
`fax, voice call, multimedia email, and so on) and of the message’s intended destination
`
`(called party).
`
`/d. at 120, 109-11. This reference was published over three years before
`
`the filing date of the application that became the parent of the ’857 patent. Pfeifer96
`
`fully anticipates and renders obvious every element of claims 1, 4, and 10 of the ‘857
`
`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 ‘857 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 several distinct
`
`functions are applied task-by-task by components to
`
`the packets of a particular flow. E.g., Ex. 15 at 4:20-59. The various functions to be
`
`applied to a flow are ascertained while processing the first packet of the flow, and this
`
`information is then “cache[d]” for high-speed use by subsequent packets. Kerr also
`
`provides
`
`internal details regarding its classification and treatment of flows,
`
`including
`
`Inter Partes Reexamination of
`U.S. Patent No.7,711,857
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`II. Concurrent Proceedings
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`analysis of a data type (e.g., “standard port numbers
`
`includ[ing]...FTP...TELNET...
`
`an internet
`
`telephone protocol, or an internet video protocol”), and analysis of multiple
`packet headers (including, e.g., “source” and “destination... IP... address” at layer 3,
`
`and “port number[s]” at layer 4).
`
`/d. at 3:3-20. 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
`
`task by tank
`functions
`those tasks af hig:
`
`aut
`
`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, 4, and 10 of the ‘857 patent, both on its own and in combinations
`
`with other references as set forth in this Request.
`
`? See
`<http://www.cisco.com/en/US/products/ps6601/products ios protocol
`group_home.html>.
`
`Inter Partes Reexamination of
`USS. Patent No.7,711,857
`
`II. Concurrent Proceedings
`
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`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 multiple “code modules, called
`
`plugins,
`
`to be dynamically added and configured at runtime.” Ex. 25 (Decasper98) at 1.
`
`A sequence of multiple plugin components may be assigned to process the packets of
`
`each flow. E.g.,
`
`id. at 5 (“Each flow table entry stores pointers [p/ura/] to the appropriate
`
`plugins [plural]’). 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 3. Decasper98 also provides internal details regarding its
`
`classification
`
`and treatment of flows, including analysis of a data type (e.g.,
`
`“protocol”
`
`and “port’), and analysis of multiple packet headers (including, e.g., “source” and
`
`“destination address” at layer 3, and “source” and “port” at layer 4). Jd. at 3.
`
`As mentioned above, this Request also presents—for the first time—a robust
`
`analysis and application of the Mosberger reference to the claims of the ‘857 patent. The
`
`Request
`
`further explains how Mosberger is not nearly so limited as the patentee argued to
`
`the PTO during the prior ex parte reexamination proceedings for the parent of the ‘857
`
`patent. Mosberger itself states that it would be “straight-forward to add a dynamic
`
`module-loading facility.” Ex. 31 (Mosberger) at 71. And to the extent that Mosberger is
`
`still deemed to lack any elements of the ‘857 patent claims, obviousness combinations are
`
`presented with related publications by others (e.g., the “Plexus” reference), at least one of
`
`which also anticipates the ‘857 patent claims standing alone (the “HotLava” reference).
`
`Inter Partes Reexamination of
`U.S. Patent No.7,711,857
`
`II. Concurrent Proceedings
`
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`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
`
`claims 1, 4, and 10 of the ‘857 patent, and a certificate under 35 U.S.C. § 316(a)
`
`ultimately issued cancelling all of these claims.
`I.
`
`DISCLOSURE OF CONCURRENT
`
`PROCEEDINGS
`
`A requestfor inter partes reexamination is already pending for the ‘163 patent,
`
`which is the parent of the ‘857 patent. Requesterfiled this earlier request on February
`
`13, 2012, and it has now been assigned control number 95/000,659.
`
`Implicit has asserted the ‘857 patent against Requester in a District Court action
`
`styled /mplicit 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
`
`‘857 patent by assignment.
`
`Implicit alleges that claims 1, 4, and 10 of the ‘857 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
`
`Inter Partes Reexamination of
`U.S. Patent No.7,711,857
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`II. Concurrent Proceedings
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`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 a/so Exs. 36-B (Infringement Contentions), 36-E and 36-
`
`F (857 claim charts).
`
`A Markman hearing was held on January 18-19, 2012, and the District Court
`
`recently issued a Claim Construction Order on February 29, 2012. See Ex. 39 (Claim
`
`Construction Order).
`
`WW.
`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED AND
`CITATION OF PRIOR ART
`
`Reexamination of claims 1, 4, and 10 of the ‘857 patent is requested under
`
`35 U.S.C. §§ 311-316 and 37
`
`§§ 1.906, 1.913 and 1.915 based on the following
`
`references:
`
`Prior Art Reference
`
`Prior Art Date
`
`Exhibit®
`
`November 27, 1996
`
`Ex. 3
`
`November 27, 1996 | Ex. 3-B
`entitled “ISDN Primary Rate User- | August 1998
`Book entitled “The Data Compression Book” by| November 6, 1995
`
`Article entitled “Generic Conversion of
`Communication Media for Supporting Personal
`Mobility” by Tom Pfeifer and Radu Popescu-
`Zeletin (“Pfeifer96”)
`
`Color version of Pfeifer96 (“Pfeifer96a”)
`
`Specification
`Network Interface Specification” from Northern
`Telecom (“ISDN98”)
`
`Mark Nelson and Jean-Loup Gailly (“Nelson”)
`
`Ex. 4
`
`Ex. 5
`
`> For the convenience of the examiner and the parties, exhibit numbers have
`largely been maintained across the infer partes reexamination requests for the ‘163 and
`patents.
`
`Inter Partes Reexamination of
`U.S. Patent No.7,711,857
`
`II. Concurrent Proceedings
`
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`Prior Art Reference
`
`Prior Art Date
`
`Exhibit’
`
`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”)
`
`entitled RFC 793:
`“Transmission
`Specification
`Control Protocol” by Information Sciences
`Institute (“RFC 793”)
`
`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”)
`
`US. Patent No. 6,104,500 entitled “Networked
`Fax Routing Via Email” by Hassam Alam,
`Horace Dediu, and Scot Tupaj
`(“Alam”)
`
`US. 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”)
`
`US. Pat. No. 6,243,667 entitled "Network Flow
`Switching and Flow Data Export," by Darren R.
`Kerr and Barry L. Bruins (“Kerr”)
`
`June 4, 1996
`
`Ex. 6
`
`April 22, 1998
`
`Ex. 7
`
`October 6, 1996
`
`Ex. 8
`
`September 1981
`
`Ex. 9
`
`October 6, 1996
`
`December 19, 1997
`
`April 29, 1998
`
`Ex. 13
`
`March 29, 1994
`
`May 28, 1996
`
`Ex. 15
`
`Inter Partes Reexamination
`U.S. Patent No.7,711,857
`
`of
`
`UI. Claims and Prior Art
`
`13
`
`JNPR-IMPL_30024_
`
`

`

`Prior Art Reference
`
`Prior Art Date
`
`Exhibit’
`
`Article entitled “Cisco NetFlow Switching
`speeds traffic routing,” InfoWorld Magazine
`(“NetFlow”)
`
`Article entitled “A Concrete Security Treatment
`of Symmetric Encryption” by M. Bellare ef al.
`(“Bellare97”)
`
`Article entitled “XOR MACs: New Methods for
`Message Authentication Using Finite
`Pseudorandom Functions” by Mihir Bellare,
`Roch Guerin, and Phillip Rogaway (“Bellare95”)
`
`July 7, 1997
`
`Ex. 16
`
`October 27, 1997
`
`Ex. 17
`
`1995
`
`Ex. 18
`
`Book entitled “Local Area Network Concepts
`and Products: Routers and Gateways” from IBM
`(“IBM96”)
`
`May 1996
`
`Article entitled “Checkpoint Firewall-1 White
`Paper, Version 2.0” (“Checkpoint”)
`
`September 1995
`
`U.S. Pat. No. 5,835,726 entitled “System for
`securing the flow of and selectively modifying
`packets in a computer network,” by Shwed ef al.
`(“Shwed”)
`
`December 15, 1993
`
`US. Pat. No. 6,651,099 entitled “Method and
`Apparatus for Monitoring Traffic in a Network”
`by Russell S. Dietz et al. (“Dietz”)
`
`June 30, 1999
`
`Article entitled “Dynamic Reconfiguration of
`Agent-Based Applications”) by Luc Bellissard,
`Noel de Palma, and Michel Riveill (“Bellissard”)
`
`Publication entitled “DTE Firewalls Phase Two
`Measurement and Evaluation Report” by
`Timothy L. Fraser ef al. of Trusted Information
`Systems (“Fraser”)
`
`Article entitled “Router Plugins: A Software
`Architecture for Next Generation Routers” by
`Dan Decasper ef al. (“Decasper98”)
`
`September 10, 1998
`
`Ex. 23
`
`July 22, 1997
`
`September 1998
`
`Ex. 25
`
`Inter Partes Reexamination
`U.S. Patent No.7,711,857
`
`of
`
`UI. Claims and Prior Art
`
`14
`
`JNPR-IMPL_30024_
`
`

`

`Prior Art Reference
`
`Prior Art Date
`
`Exhibit’
`
`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 ef al.
`(“RFC
`1829”)
`
`entitled RFC 1883: “Internet
`Specification
`Protocol, Version 6 (IPv6) Specification” by S.
`Deering and R. Hinden (“RFC 1883”)
`
`August 1995
`
`Ex. 26
`
`August 1995
`
`Ex, 27
`
`December 1995
`
`Ex. 28
`
`Article entitled “Crossbow: A Toolkit for
`Integrated Services over Cell Switched IPv6” by
`Dan Decasper et al. (“Decasper97”)
`
`May 28, 1997
`
`entitled “Scout: A Path-Based
`Dissertation
`Operating System” by David Mosberger
`(“Mosberger’)
`
`1997
`
`Article entitled “Implementing Communication
`al
`Protocols in Java” by Bobby Krupczak
`(“HotLava’)
`
`October 1998
`
`Article entitled “An Extensible Protocol
`Architecture for Application-Specific
`Networking” by Mare Fiuczynski et. al
`(“Plexus”)
`
`Article entitled “ComScript: An Environment for
`the Implementation of Protocol Stacks and their
`Dynamic Reconfiguration” by Murhimanya
`Muhugusa et. al
`
`January 22, 1996
`
`December 1994
`
`Ex. 34
`
`Article entitled “The Active IP Option” by David
`J. Wetherall e al. (“Wetherall”)
`
`September 11, 1996
`
`Ex. 47
`
`Paper entitled “Active Gateway: A Facility for
`Video Conferencing Traffic Control” by Shunge
`Li etal. (“Li”)
`
`February 1, 1997
`
`Ex. 48
`
`Inter Partes Reexamination
`U.S. Patent No.7,711,857
`
`of
`
`UI. Claims and Prior Art
`
`15
`
`JNPR-IMPL_30024_
`
`

`

`Most of these prior art references were not cited or considered by the PTO during
`
`prosecution of the ‘857 patent and are not cumulative to the art of record in the original
`
`file. Only two of the references relied upon in this Request were cited during the
`
`prosecution of the ‘857 patent (7.e., Mosberger and Dietz). However, neither was
`
`discussed or applied by the Examiner at any time during prosecution of the ‘857 patent,
`
`and 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).
`
`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 bears the date November 27, 1996, and is prior art under 35 U.S.C.
`
`§ 102(a) and (b). Pfeifer96a is substantively identical to Pfeifer96, except its figures are
`
`rendered in color. Pfeifer96a also bears the date November 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. 43 (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. 44 (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).
`
`Inter Partes Reexamination of
`US. Patent No.7,711,857
`
`Ill. Claims and Prior Art
`
`16
`
`JNPR-IMPL_30024_
`
`

`

`Franz98 bears the date April 22, 1998, and is prior art under 35 U.S.C. § 102(a)
`
`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)
`
`and (b).
`
`and (b).
`
`and (b).
`
`Arbanowski96 bears the date October 6, 1996, and is prior art under 35 U.S.C.
`
`§ 102(a) and (b).
`
`Pfeifer97 bears the date December 19, 1997, 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 date October 22, 1997, and 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).
`
`Inter Partes Reexamination
`U.S. Patent No.7,71 1,857
`
`of
`
`IIL. Claims and Prior Art
`
`17
`
`JNPR-IMPL_30024_
`
`

`

`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).
`
`Bellissard was published on September 10, 1998. See Ex. 45 (document
`
`showing
`
`date of publication).
`
`Itis prior art under 35 U.S.C. § 102(a) and (b).
`
`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 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. 46 (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 bears the date May 28, 1997, and 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).
`
`Inter Partes Reexamination
`U.S. Patent No.7,71 1,857
`
`of
`
`IIL. Claims and Prior Art
`
`18
`
`JNPR-IMPL_30024_
`
`

`

`HotLava bears the date October 1998, and is prior art under 35 U.S.C. § 102(a)
`
`Plexus bears the date January 22, 1996, and is prior art under 35 U.S.C. § 102(a)
`
`and (b).
`
`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)
`
`Wetherall bears the date September 11, 1996, and is prior art under 35 U.S.C.
`
`§ 102(a) and (b).
`
`Li bears the date February 1, 1997, and is prior art under 35 U.S.C. § 102(a) and
`
`(b).
`
`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
`
`‘163 patent
`‘163 patent: Ex Parte Reexamination Certificate
`
`‘163 FH: Original Claims
`‘163 FH: 9/23/2002 Office Action
`
`FH: 2/24/2003 Amendment
`
`‘163 FH: 5/20/2003 Notice of Allowance
`
`Ex. 49
`
`Ex. 2
`
`Ex. 35-A
`
`Ex. 35-B
`
`Ex. 35-C
`
`Ex. 35-D
`
`‘163 Reexam FH: Ex Parte Reexamination Request
`
`‘163 Reexam FH: Order Granting Ex Parte Reexamination Request | Ex. 35-F
`
`Ex. 35-E
`
`‘163 Reexam FH: 7/7/2009 Office Action
`
`‘163 Reexam FH: 9/1/2009 Amendment
`
`‘163 Reexam FH: 10/23/2009 Interview Summary
`
`Ex. 35-G
`
`Ex. 35-H
`
`Ex. 35-I
`
`US Patent
`
`No
`
`I, Claims and Prior Art
`
`19
`
`JNPR-IMPL_30024_
`
`

`

`Other Written Evidence
`
`Exhibit
`
`‘163 Reexam FH: 12/4/2009 Final Office Action
`
`‘163 Reexam FH: 12/18/2009 Response to Final Rejection
`‘163 Reexam FH: 1/21/2010 Advisory Action
`“163 Reexam FH: 2/4/2010 Examiner Interview Summary
`‘163 Reexam FH: 2/8/2010 Amendment After Final
`
`‘163 Reexam FH: 3/2/2010 Notice of Intent to Issue Certificate
`
`°857 FH: Original Claims
`FH: 2/19/2008 Office Action
`
`FH: 6/24/2009 Amendment
`
`FH: 12/11/2009 Final Rejection
`FH: 1/29/2010 Amendment
`
`°857 FH: 1/29/2010 IDS
`
`FH: 3/10/2010 Notice of Allowance
`
`First Amended Complaint
`
`Implicit Patent Infringement Contentions
`‘163 Infringement Claim Chart (Security Devices)
`
`Implicit
`
`Ex. 35-J
`
`Ex. 35-K
`
`Ex. 35-L
`
`Ex. 35-O
`
`Ex. 35-M
`
`Ex. 35-N
`
`Ex. 40-A
`
`Ex. 40-B
`
`Ex. 40-C
`
`Ex. 40-D
`
`Ex. 40-E
`
`Ex. 40-F
`
`Ex. 40-G
`
`Ex. 36-A
`
`Ex. 36-B
`
`Ex. 36-C
`
`Implicit
`
`Implicit
`
`‘857 Infringement