UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JUNIPER NETWORKS, INC.
`Petitioner
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`v.
`
`IMPLICIT, LLC
`Patent Owner
`
`Case: IPR2020-00587
`Patent No. 9,591,104
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`SUR-REPLY IN RESPONSE TO PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 9,591,104
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JUNIPER NETWORKS, INC.
`Petitioner
`
`v.
`
`IMPLICIT, LLC
`Patent Owner
`
`Case: IPR2020-00587
`Patent No. 9,591,104
`
`
`
`
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`
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`
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`SUR-REPLY IN RESPONSE TO PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 9,591,104
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`TABLE OF CONTENTS
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`Table of Authorities .................................................................................................. ii
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`I.
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`
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`The Petition Relies on the Same Prior Art—Decasper ......................... 1
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`The Petition Relies on Substantially the Same Prior Art—CheckPoint
`and Smith .............................................................................................. 2
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`The First Prong of Advanced Bionics Applies ................................................ 1
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`A.
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`B.
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`C.
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`The Petition Presents Substantially the Same Arguments That Were
`Before the Patent Office ........................................................................ 3
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`Juniper Has Not Demonstrated That the Patent Office Erred ......................... 5
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`II.
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`III. Conclusion ....................................................................................................... 7
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`i
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`TABLE OF AUTHORITIES
`
`
`Cases
`
`Acceleration Bay, LLC v. Activision Blizzard, Inc.,
`
`908 F.3d 765 (Fed. Cir. 2018) ......................................................................... 6
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`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH
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`IPR2019-01469, Paper 6 (PTAB Dec. Feb. 13, 2020) .................................... 1
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG
`
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) ............................................ 5
`
`Colas Sols., Inc. v. Blacklidge Emulsions, Inc.,
`759 F. App’x 986 (Fed. Cir. 2019) (non-precedential) ................................... 6
`
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`
`821 F.3d 1359 (Fed. Cir. 2016) ....................................................................... 6
`
`
`Statutes
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`35 U.S.C. § 325(d) ..................................................................................................... 1
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`ii
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`Juniper fails to show that the Board should institute proceedings. It is
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`undisputed that the Patent Office considered Decasper in detail and allowed the
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`claims. That reality—which Juniper did not address in Reply—weighs heavily
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`against instituting proceedings under the first prong of Advanced Bionics. Juniper
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`also conceded in its Petition that it did not seek reversal of any alleged error made
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`during prosecution. Pet. at 15. That forecloses additional review under the second
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`prong of Advanced Bionics. And it ends the inquiry under Section 325(d).
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`In Reply, Juniper focuses on two different references—CheckPoint and
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`Smith—as providing a reason to institute proceedings. But Juniper only relies on
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`those references for disclosure of supposed “trivial ‘TCP’ limitations,” Reply, at 1.
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`And, for that disclosure, these references are the same in substance as what the Patent
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`Office already considered during prosecution when it allowed these claims. And,
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`again, Juniper did not allege in its Petition that the Patent Office erred. Section
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`325(d) forecloses further review.
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`I.
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`The First Prong of Advanced Bionics Applies
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`A. The Petition Relies on the Same Prior Art—Decasper
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`It is undisputed that (1) both grounds in the Petition are based on the Decasper
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`reference and (2) the Decasper reference was front-and-center during prosecution of
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`the Implicit Patents. Juniper does not contest those facts. It instead flips around the
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`references to call CheckPoint and Smith (and not Decasper) the “primary”
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`1
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`references. But Juniper’s Reply exposes that mislabeling: Juniper relies on
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`CheckPoint and Smith for the supposed “trivial ‘TCP’ limitations” of the claims,
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`Reply, at 1, while it relies on Decasper’s teaching for every other limitation (e.g.,
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`receiving packets of a message, creating a path, storing the path, processing
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`subsequent packets using the path, etc…).
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`Decasper is the primary reference for both of Juniper’s proposed grounds.
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`The Patent Office considered that reference, and Implicit addressed that reference in
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`detail during prosecution. This weighs against instituting proceedings here.
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`B.
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`The Petition Relies on Substantially the Same Prior Art—
`CheckPoint and Smith
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`CheckPoint and Smith were also before the Patent Office in substance (and,
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`in the case of CheckPoint, by name). With regard to CheckPoint, Juniper does not
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`dispute that two CheckPoint references were before the Patent Office during
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`prosecution. Juniper also does not contend that, for the issues in its Petition, the
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`substance in its “new” CheckPoint reference is different from the prior CheckPoint
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`references. See Reply, at 5.
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`Juniper instead points to different words from the new CheckPoint reference,
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`specifically “application-layer ‘Security Server’” and the “Content Vectoring
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`Protocol (CVP).” Reply, at 5. These different words, however, do not change the
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`analysis. Juniper relies on those disclosures for their alleged application-layer
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`processing. See Pet. at 54–57. That is the same supposed teaching reproduced in
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`2
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`the dozen-plus instances from the two prior CheckPoint references that Implicit cited
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`in its Response. See Resp. at 10–12. And, critically, Juniper does not contest that
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`fact in Reply. It does not allege that either of these “new” disclosures from
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`CheckPoint are different in substance from what the prior references already
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`disclosed. That weighs against institution.
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`The same is true for Smith. Juniper asserts that Smith contains new subject
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`matter because it is at an “endpoint of [two] TCP connections” and contains a
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`“Caching Web Documents” feature that uses HTTP. Reply, at 4. But that subject
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`matter was before the Patent Office in other references. Those references disclose
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`gateways that can operate as endpoints. See, e.g., Ex. 2011, at 163 (depicting
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`gateway as endpoint for communications with Computer A and Computer B); Ex.
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`2012, at 16 (“[O]ur approach towards performing QoS control was an end-to-end
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`solution, i.e., adaptation was achieved at the end points of a video conferencing
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`session.”). They also disclose the use of HTTP. See, e.g., Resp. at 11–12 (collecting
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`citations to CheckPoint references, including HTTP). And, like its new CheckPoint
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`reference, Juniper does not explain how Smith is materially different than what the
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`Patent Office considered during prosecution. Because Smith and CheckPoint are at
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`most cumulative, the first prong of Advanced Bionics is satisfied.
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`C. The Petition Presents Substantially the Same Arguments
`That Were Before the Patent Office
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`Juniper’s Petition presents the same subject matter that the Patent Office
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`3
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`considered during prosecution. That satisfies the first prong of Advanced Bionics.
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`In addition, substantially the same arguments were before the Patent Office. During
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`reexamination of the Implicit Patent family, Juniper made the same arguments
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`regarding Decasper that it makes here, namely that Decasper could be implemented
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`in a firewall or gateway. See, e.g., Resp. at 16–17 (citing instances in which Juniper
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`asserted that “Decasper98 teaches ‘a firewall plugin’” and “Decasper98 teaches an
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`architecture that is ‘very well suited to Application Layer Gateways . . . and to
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`security devices like Firewalls’”). Juniper does not contest that fact in Reply.
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`Juniper instead ignores these statements. It contends that its arguments for
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`Smith are new because there allegedly was not “any consideration of how the
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`Decasper framework would be beneficially incorporated into this type of ALG.”
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`Reply, at 4 (emphasis added). But Juniper’s own Petition shows that this position is
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`wrong: the Petition relies on the exact same disclosure as above to assert a
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`motivation to combine Decasper with Smith. Pet. at 20 (“As detailed below, it was
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`obvious to apply Decasper to Smith, particularly since Decasper explains that its
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`“framework is also very well suited to Application Layer Gateways (ALGs), and to
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`security devices like Firewalls.”) (emphases in original).
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`Juniper also argues that the Board should ignore its prior arguments regarding
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`CheckPoint because those arguments related to “different limitations.” Reply, at 4.
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`That misses the point. During prosecution of the Implicit Patents, Implicit
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`4
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`specifically pointed the Examiner to the reexamination record of the Implicit Patent
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`family, disclosed the CheckPoint references, and amended the claims to add the
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`limitations requiring executing TCP and converting packets from TCP to another
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`format (such as an application-level format). If that functionality were “trivial,” the
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`Examiner had the material to make the rejection, including Juniper’s arguments
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`about CheckPoint and Decasper. The Examiner declined to do so, and allowed the
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`claims. Juniper disagrees and recycles those arguments in its Petition. But it is not
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`the purpose of Inter Partes Review to second guess the Examiner’s decision. Thus,
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`under either route, the first prong of Advanced Bionics is satisfied in this case.
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`II.
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`Juniper Has Not Demonstrated That the Patent Office Erred
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`Juniper has not demonstrated error. Indeed, Juniper’s Petition conceded that
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`it was not basing its Petition on an error. It asserted that the error during examination
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`factor (Becton, Dickinson factor (e)) “do[es] not apply in the instant action”:
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`the examiner’s
`Although Petitioner disagrees with
`apparent finding that Decasper fails to disclose the added
`TCP limitations, this Petition does not rely on a reversal of
`any such finding. Instead, the challenge here uses other
`references for the allegedly missing limitation. Hence,
`these two [Becton, Dickinson] factors [(e) and (f)] do not
`apply in the instant action.
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`Pet. at 15. Juniper also did not point to new evidence in its Petition as justifying
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`review, other than the “other references” its presented besides Decasper (i.e.,
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`CheckPoint and Smith).
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`5
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`Juniper then changed positions in Reply. It now asserts that the Examiner
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`committed “material error,” including its decision to “not challenge Implicit’s
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`mischaracterization of Decasper as limited to an IP router implementation.” Reply,
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`at 6. It points to its “detailed expert evidence” as supporting review. Id. at 7.
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`None of those positions were in Juniper’s Petition, and, for that reason,
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`Juniper has waived them. See, e.g., Intelligent Bio-Systems, Inc. v. Illumina
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`Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (finding that Board
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`properly excluded Reply Brief under 37 C.F.R. § 42.23(b) where the Brief raised an
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`“entirely new rationale” that was not raised in the Petition); Acceleration Bay, LLC
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`v. Activision Blizzard, Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (finding that the
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`Board properly excluded new argument in Reply that was “not made in the petition,”
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`even though the petition “had an opportunity to present this argument in its petition,
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`but chose not to”); Colas Sols., Inc. v. Blacklidge Emulsions, Inc., 759 F. App’x 986,
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`990 (Fed. Cir. 2019) (non-precedential) (upholding Board’s exclusion of theory
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`raised in Reply brief where the Petitioner “fail[ed] to point to a single line of its
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`original Petition articulating this theory”). Because Juniper did not demonstrate
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`error in its Petition—and, in fact, conceded the point—Juniper has not carried its
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`burden on this factor.
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`Juniper’s new arguments in Reply are also wrong on the merits. The
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`Examiner did not overlook art or arguments. Implicit addressed Decasper in detail
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`6
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`and specifically pointed the examiner to the reexamination file histories (in which
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`Decasper rendered claims unpatentable and contain the same arguments that Juniper
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`makes here). Implicit submitted the relevant prior art subject matter that Juniper
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`recycles in its Petition. Implicit amended the claims to add the TCP-related
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`limitations and explained, in detail, why the claims were patentable. The Examiner
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`had the art and arguments to make the rejections that Juniper now requests, and
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`Decasper was front-and-center. The Examiner decided to allow the claims.
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`Juniper has not demonstrated an error during prosecution that warrants re-
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`plowing the same ground. It has not pointed to any particular error in the Examiner’s
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`findings. It has not provided new prior art subject matter to demonstrate an error.
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`And it has not pointed to any arguments or evidence beyond what was already in
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`front of the Office during examination via the reexamination history, viz., that
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`Decasper “teaches ‘a firewall plugin’” and teaches “architecture that is ‘very well
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`suited to Application Layer Gateways . . . and to security devices like Firewalls.”
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`Juniper may believe the Examiner’s decision is incorrect. But that is insufficient to
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`meet Juniper’s burden under the second prong of Advanced Bionics.
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`III. CONCLUSION
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`For the reasons set forth above, Patent Owner respectfully requests that the
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`Board decline to institute proceedings in this case under Section 325(d).
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`7
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`Dated: June 23, 2020
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`Respectfully submitted,
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`DAVIS FIRM, PC
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`By:/s/Christian J. Hurt
`Christian J. Hurt
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`8
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`CERTIFICATE OF COMPLIANCE
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`I hereby certify that the foregoing Preliminary Response complies with the
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`type-volume limitation and general format requirements pursuant to 37 C.F.R.
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`§§42.24 and 42.6. I further certify that this response contains seven pages or less
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`per the Board’s Order, excluding parts exempted by 37 C.F.R. §42.24.
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`/s/Christian J. Hurt
`Christian J. Hurt
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`9
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 23, 2020, a true copy of the following
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`document(s):
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`PATENT OWNER IMPLICIT, LLC’S SUR-REPLY PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,591,104
`was served as follows:
`
`Rory P. Shea
`shea@ls3ip.com
`Cole B. Richter
`richter@ls3ip.com
`George I. Lee
`lee@ls3ip.com
`Michael P. Boyea
`boyea@ls3ip.com
`Lee Sullivan Shea & Smith LLP
`224 North Desplaines Street, Suite 250
`Chicago, IL 60661
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`I declare under penalty of perjury under the laws of the United States of
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`America that the foregoing is true and correct. Executed on June 23, 2020 at
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`Dallas, Texas.
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`/s/Christian J. Hurt
`Christian J. Hurt
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`10
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