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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`JUNIPER NETWORKS, INC.,
`Petitioner.
`v.
`IMPLICIT, LLC,
`Patent Owner.
`___________
`
`Case IPR2020-00587
`U.S. Patent No. 9,591,104
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`___________________
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case No. IPR2020-00587
`U.S. Patent No. 9,591,104
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`Application of the two-part framework set forth in Advanced Bionics, LLC v.
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`MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469 (Feb. 13, 2020)
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`confirms that Juniper’s Petitions should not be denied institution under § 325(d).
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`Part 1 of Advanced Bionics is not satisfied here as the base references cited in the
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`Petitions (Smith and CheckPoint) were not previously before the Office either in
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`form or substance. Moreover, the core arguments in the Petitions—that these base
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`references clearly disclose the trivial “TCP” limitations on which the claims were
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`allowed, and that it was obvious for those references to further incorporate
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`Decasper’s dynamic plugin features—are completely different from any the Office
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`previously considered. Part 2 of Advanced Bionics also does not support a § 325(d)
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`denial. Rather,
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`to
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`the extent
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`the Office accepted Patent Owner’s prior
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`mischaracterization of Decasper as being limited to an IP router and overlooked the
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`straightforward possibility of incorporating Decasper into the well-known TCP
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`functionality of systems such as Smith or CheckPoint, those errors can and should
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`be corrected by instituting proceedings, as requested in the Petitions.
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`This case in fact presents the opposite of the situation in Advanced Bionics. In
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`Advanced Bionics, a prior art reference (“Zimmerling”) that was cited in an office
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`action rejection was overcome with the addition of a claim limitation requiring a
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`rotating magnet. Given that the Office had expressly found Zimmerling lacked that
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`element, a later IPR petition relying on Zimmerling in combination with new art that
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`Case No. IPR2020-00587
`U.S. Patent No. 9,591,104
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`admittedly lacked a rotating magnet was properly denied under § 325(d). Id. at 21-
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`22. Conversely, here the Petitions do not seek to effectively overturn a finding by
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`the Office regarding old art, but rather rely on new art, new arguments, and new
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`evidence to satisfy the allegedly missing “TCP” limitations.
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`Moreover, although Implicit misleadingly describes the challenged patents as
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`being part of a “family of thoroughly-examined patents” on which the “Patent Office
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`has already expended significant resources” (POPR at 5-6, 8-9), it omits the fact that
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`this was almost entirely in connection with reexamination proceedings that
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`concluded with the invalidation of other patents in the family whose claims did not
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`include the “TCP” limitations at issue here.1 By contrast, during the entire
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`examination of all six patents challenged here, there was a grand total of one prior
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`art rejection, and there was no analysis or rejection by the Office on anything like
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`the art and arguments presented in the Petitions. Accordingly, there is no basis to
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`deny institution here under § 325(d) and Advanced Bionics.
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`1 For this reason, the reexamination proceedings considered Decasper solely
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`in the context of a router implementation, with only passing mention of the “firewall
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`plugin” as a basis for maintaining state information (Ex. 2001 at 197-202) or to
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`motivate the dynamic configuration of policies (id. at 241-244), and not in relation
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`to the TCP limitations introduced in the later patents.
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`Case No. IPR2020-00587
`U.S. Patent No. 9,591,104
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`I.
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`Advanced Bionics Part 1: The Petitions Present New Art And Argument
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`First, the grounds proposed in the Petitions clearly do not present the same or
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`substantially the same art or arguments as previously presented to the Office. See
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`Advanced Bionics at 13-17 (applying Part 1 on a ground-by-ground basis).
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`A. Ground 1: Smith in combination with Decasper
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`It is undisputed that Smith was not previously considered by the Office. POPR
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`at 13. Smith is also not “substantially the same” as any art previously presented. Ex.
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`1011 ¶ 602. Contrary to Implicit’s argument (POPR at 13-14), the critical disclosures
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`of Smith are not limited to generic layer-7 firewall features. For example, Smith
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`describes sophisticated application-layer gateways (“ALGs”) that are “themselves
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`endpoints of [two] TCP connections” and therefore expressly execute the TCP
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`protocol consistent with the “TCP” limitations of the challenged patent claims. See
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`Petition at 37-38. Those limitations are further supported by Smith’s disclosure of
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`ALG packet processing that operates by “executing TCP and stripping the TCP
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`header.” See id. at 37-40. Smith also describes a “Caching Web documents” feature
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`that is cited in the Petition in additional support of these “TCP” limitations. See id.
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`at 39-40. Implicit does not even attempt to argue that anything similar to these cited
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`features from Smith was disclosed or suggested in any of the art previously
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`considered during prosecution. To the contrary, the sole “gateway” reference cited
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`U.S. Patent No. 9,591,104
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`in an office action rejection was expressly found to lack TCP processing capabilities.
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`Ex. 1004 at 207.
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`The arguments presented in the Petitions with respect to Ground 1 are also
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`unlike anything previously considered by the Office during prosecution. For
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`example, the Office was never presented with arguments regarding TCP
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`functionality (e.g., TCP endpoint termination) in an ALG such as Smith. Nor was
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`there any consideration of how the Decasper framework would be beneficially
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`incorporated into this type of ALG. See Petition at 2-3; Ex. 1011 ¶ 612. Ground 1
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`therefore presents new art and arguments under Advanced Bionics Part 1.
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`B. Ground 2: Checkpoint in combination with Decasper
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`The CheckPoint reference cited in the Petitions was also not previously
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`considered by the Office. Ex. 1011 ¶ 603. This reference consists of a collection of
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`interrelated and linked webpages, including a 1997 Check Point white paper
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`(“CheckPoint97”), all of which were published on CheckPoint’s website as a
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`description of the FireWall-1 product as it existed in 1998. See Petition at 17. This
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`is this first time this material has been presented to the Office.
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`Implicit nevertheless argues that the Checkpoint reference cited here is
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`substantially the same as two earlier papers that were presented to the Office, one
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`from 1994 (“CheckPoint94”) (Ex. 2010) and another from 1995 (“CheckPoint95”)
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`(Ex. 2009). This is not true. Although the POPR quotes language from the earlier
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`Case No. IPR2020-00587
`U.S. Patent No. 9,591,104
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`papers to suggest similarities with the CheckPoint website reference, it is how they
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`differ that matters. It is hardly surprising that such differences exist; like many
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`software products at the time (and today), FireWall-1 was not a single, unitary
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`product but rather evolved over time with new features and functionality being added
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`along the way. See, e.g., Ex. 1011 (Nielson Decl.) ¶ 607 (identifying website
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`disclosures published years later with “substantially more” than CheckPoint95).
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`In this case, the Petitions specifically rely upon aspects of the FireWall-1
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`product from the cited CheckPoint reference (as of 1998) that were not disclosed in
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`any earlier reference before the Office. For example, the currently cited CheckPoint
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`reference details the application-layer “Security Servers” of Firewall-1 (see id.
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`¶¶ 363-368), while CheckPoint95 makes no mention of them. See id. ¶ 607. The
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`earlier CheckPoint papers also omit any disclosure of the Content Vectoring
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`Protocol (CVP) used by CheckPoint in its virus-checking function. These new
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`teachings and associated arguments are explicitly relied upon to satisfy the new
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`“TCP” limitations of the challenged patents. See e.g., Petition at Section IX.B.ii
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`(Security Servers), IX.B.iii (Anti-virus Inspection), IX.B.iv (CVP), IX.E (Combined
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`System), Elements 1(c), 1(f), Claim 2, etc. There is also no substantial overlap
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`between the arguments previously presented to the Office with respect to
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`CheckPoint95 because CheckPoint95 was relied on for different limitations than is
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`the CheckPoint website of Ground 2. See Ex. 1011 ¶ 606; Ex. 2001 at 165-166.
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`Case No. IPR2020-00587
`U.S. Patent No. 9,591,104
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`Accordingly, denial under § 325(d) is unwarranted as Grounds 1 and 2 both
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`present new art and arguments under Advanced Bionics Part 1.
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`II. Advanced Bionics Part 2: The Office Erred Allowing Implicit’s Claims
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`To the extent that it is necessary to consider Advanced Bionics Part 2 (and it
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`should not be), Implicit’s § 325(d) arguments still fail. As noted in Advanced
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`Bionics, institution is especially appropriate where “the record of the Office’s
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`previous consideration of the art is not well developed or silent”—thus suggesting
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`key issues that may have been “overlook[ed].” Advanced Bionics at 8-10 & n.9. In
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`this case, the Office failed to analyze or discuss any of the art and arguments
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`presented in the Petitions during prosecution of the challenged patents.2 The Office
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`thus committed material error by overlooking key teachings in the prior art, and by
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`failing to consider straightforward combinations that would render obvious the
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`challenged claims (as explained in the Petitions and accompanying evidence).
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`For example, the examiner did not challenge Implicit’s mischaracterization of
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`Decasper as limited to an IP router implementation. The sole discussion of Decasper
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`during prosecution of the six challenged patents was in a preliminary amendment
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`2 Indeed, there was only one prior art rejection over prosecution of the six
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`challenged patents combined, and not even Implicit argues that rejection has
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`anything to do with the art and arguments presented in the Petitions (it does not).
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`Case No. IPR2020-00587
`U.S. Patent No. 9,591,104
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`filed by Implicit during prosecution, which described Decasper as an “IP router
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`using an IP core that executes an IP protocol.” Ex. 1004 at 19; Ex. 1020 at 6
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`(describing Decasper as a “general IP router[]”). Implicit’s filing did not even
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`mention Decasper’s express statement that the Decasper framework is also “very
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`well suited” to ALGs and firewalls. See Petition at 2-3 (citing Ex. 1014 at 2). Nor
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`did Implicit address whether the Decasper framework could be incorporated into an
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`ALG or firewall with TCP functionality to satisfy the trivial “TCP” limitations of
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`the claims. Indeed, there was no discussion of firewall or ALG prior art at all during
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`prosecution proceedings of the six challenged patents. The examiner in these
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`proceedings completely failed to address any of these issues. See Ex. 1011 ¶ 610.
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`This was clear error.
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`Finally, the Office did not have the benefit of the detailed expert evidence
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`submitted with the Petitions, which shows how a reference like Smith or CheckPoint
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`would incorporate the teachings of Decasper, as well as the reasons and manner in
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`which a POSA would pursue such combinations to supply the supposedly missing
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`“TCP” limitations. See Ex. 1011 (Decl. of Dr. Seth Nielson) at Sections VIII.D-E,
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`IX.D-E; see also IPR2020-00040, Paper 21 (May 12, 2020) at 20 (new expert
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`testimony weighs against exercising discretion under 325(d)); IPR2020-00264,
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`Paper 24 (May 24, 2020) at 18 (same).
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`In view of this record, the Board should not deny institution under § 325(d).
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`Case No. IPR2020-00587
`U.S. Patent No. 9,591,104
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`Dated: June 9, 2020
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`Respectfully submitted,
`
` /Jonathan M. Lindsay/
`Jonathan M. Lindsay (Reg. No. 45,810)
`David McPhie (Reg. No. 56,412)
`Dennis Courtney (Admitted Pro Hac Vice)
`Irell & Manella LLP
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
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`Case No. IPR2020-00587
`U.S. Patent No. 9,591,104
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, pursuant to 37 CFR § 42.6(e), a copy
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`of the foregoing PETITIONER’S REPLY TO PATENT OWNER’S
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`PRELIMINARY RESPONSE was served electronically via electronic mail on
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`counsel for the Patent Owner as follows:
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`DAVIS FIRM, PC
`
`Christian Hurt
`churt@davisfirm.com
`mbutton@davisfirm.com
`
`William E. Davis, III
`bdavis@davisfirm.com
`
`
`By: /Susan M. Langworthy/
`June 9, 2020
` Susan M. Langworthy
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