Trials@uspto.gov
`571-272-7822
`
`Paper: 15
`Entered: August 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JUNIPER NETWORKS, INC.,
`Petitioner,
`
`v.
`
`IMPLICIT, LLC,
`Patent Owner.
`
`IPR2020-00587
`Patent 9,591,104 B2
`
`
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2020-00587
`Patent 9,591,104 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`
`Juniper Networks, Inc., (“Petitioner”) filed a Petition requesting inter
`
`partes review of claims 1–7, 10–13, 16, 19, and 20 (the “challenged claims”)
`
`of U.S. Patent No. 9,591,104 B2 (Ex. 1006, the “’104 patent”). Paper 2
`
`(“Pet.”). Implicit, LLC, (“Patent Owner” or “Implicit”) filed a Preliminary
`
`Response. Paper 5 (“Prelim. Resp.”). With our authorization, Petitioner
`
`filed a Reply (Paper 11, “Reply”) and Patent Owner filed a Sur-reply (Paper
`
`13, “Sur-reply”) addressing the issue of discretionary denial under 35 U.S.C.
`
`§ 325(d).
`
`For the reasons that follow, we institute inter partes review of all
`
`challenged claims on all grounds in the Petition.
`
`II. INSTITUTION OF INTER PARTES REVIEW
`
`A. Standard for Institution
`
`The standard for institution is set forth in 35 U.S.C. § 314, which
`
`provides that an inter partes review may not be instituted unless the
`
`information presented in the Petition and the Preliminary Response shows
`
`that “there is a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314 (2018); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on
`
`behalf of the Director.”).
`
`B. Related Proceedings
`
`The parties identify the following pending district court proceedings
`
`involving the ’104 patent: Implicit, LLC v. Juniper Networks, Inc., Case No.
`
`2:19-cv-00037-JRG-RSP (E.D. Tex.); Implicit, LLC v. Fortinet, Inc., Case
`
`No. 2:19-cv-00039 (E.D. Tex.); Implicit, LLC v. Imperva, Inc., Case No.
`
`2:19-cv-00040 (E.D. Tex.); Implicit, LLC v. Netscout Systems, Inc., Case
`
`2
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`IPR2020-00587
`Patent 9,591,104 B2
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`No. 2:18-cv-00053 (E.D. Tex.); and Implicit, LLC v. Sandvine Corporation,
`
`Case No. 2:18-cv-00054 (E.D. Tex.). Pet. 70–71; Paper 4, 2.
`
`Petitioner identifies the following completed district court
`
`proceedings involving the ’104 patent: Implicit, LLC v. F5 Networks, Inc.,
`
`Case No. 3:14-cv-02856 (N.D. Cal.); Implicit, LLC v. Ericsson, Inc., Case
`
`No. 6:16-cv-00075 (E.D. Tex.); Implicit, LLC v. Huawei Technologies USA
`
`Inc., Case No. 6:16-cv-00076 (E.D. Tex.); Implicit, LLC v. NEC
`
`Corporation of America, Case No. 6:16-cv-00078 (E.D. Tex.); Implicit, LLC
`
`v. Nokia Solutions and Networks US LLC, Case No. 6-16-cv00079 (E.D.
`
`Tex.); Implicit, LLC v. Trend Micro, Inc., Case No. 6:16-cv-00080 (E.D.
`
`Tex.); and Implicit, LLC v. Palo Alto Networks, Inc., Case No. 6:17-cv-
`
`00336 (E.D. Tex.). Pet. 71.
`
`Patents related to the ’104 patent are challenged by Petitioner in
`
`IPR2020-00585, IPR2020-00586, IPR2020-00590, IPR2020-00591, and
`
`IPR2020-00592.
`
`C. Real Parties-in-Interest
`
`Petitioner identifies “Juniper Networks, Inc.” as the real party-in-
`
`interest. Pet. 70. Patent Owner identifies “Implicit LLC and Edward
`
`Balassanian” as the real parties-in-interest. Paper 4, 2.
`
`D. The ’104 Patent
`
`
`
`The ’104 patent is titled “Method and System for Data
`
`Demultiplexing.” Ex. 1006, (54). The ’104 patent relates to a computer
`
`system for data demultiplexing. Id. at 1:22–23. According to the patent,
`
`interconnected computer systems, such as those on the Internet, “generate
`
`data in a wide variety of formats.” Id. at 1:28–30. For example, to send
`
`bitmap data from one computer system to another, the sending computer
`
`system may compress and encrypt the bitmap data, convert the data into a
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`IPR2020-00587
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`TCP (Transmission Control Protocol) format1 and then into an IP format,
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`and finally, convert the data into an Ethernet format. Id. at 1:34–41. The
`
`receiving computer system performs each of these conversions in reverse
`
`order to recover the original bitmap data. Id. at 1:43–45.
`
`
`
`In order to process data in such a wide variety of formats, both
`
`sending and receiving computer systems need to have many conversion
`
`routines available to support the various formats. Id. at 1:49–52. The ’104
`
`patent recognizes that it would be desirable to dynamically identify a series
`
`of conversion routines for processing data, where “the output format of one
`
`conversion routine can be identified as being compatible with the input
`
`format of another conversion routine” and “the series of conversion routines
`
`. . . can be quickly identified when data is received.” Id. at 2:8–16.
`
`
`
`Accordingly, the conversion method and system of the ’104 patent
`
`searches for and identifies a sequence of conversion routines for the received
`
`packets of a message, where a message may be a collection of related data,
`
`such as a video or audio stream, or an email. Id. at 2:49–56. The sequence
`
`is used to convert the packets of the message from a source format to a target
`
`format using various intermediate formats. Id. at 2:56–58. Because the
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`conversion system receives multiples messages with different source and
`
`target formats, it “effectively ‘demultiplexes’” the messages by receiving
`
`each message, identifying the sequence of conversion routines, and
`
`controlling the processing of each message by the identified sequence. Id. at
`
`2:66–3:6. Moreover, the conversion system retains state information for the
`
`
`1 When computers communicate over the Internet, they typically use a suite
`of protocols referred to as TCP/IP. The protocols are often described as a
`layers in a “stack.” See Ex. 1030 (“TCP/IP Illustrated Volume I”), 23–24.
`
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`IPR2020-00587
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`packets of a message by “rout[ing] all packets for a message through the
`
`same session of each conversion routine so that the same state or instance
`
`information can be used by all packets of the message.” Id. at 3:6–14. The
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`sequence of conversion routine sessions for a given packet is called a “path.”
`
`Id. at 3:14–17.
`
`
`
`Figure 4 of the ’104 patent is reproduced below.
`
`Figure 4 is a block diagram illustrating a path data structure having several
`
`paths. Id. at 5:41–42. Figure 4 shows data paths 4612, 462, and 463,
`
`
`
`
`2 Path 461 appears to be mislabeled in Figure 4 as “464.”
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`represented by sequences of path entry structures shown as triangles. Id. at
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`5:59, 5:65–67. The paths share the same Ethernet session 410 and IP session
`
`420, but have different TCP sessions 430, 440, and 450. Id. at 5:59–65.
`
`Each session corresponds to an instance of a protocol with associated state
`
`information. Id. at 5:51–55. The paths include “edges” 411, 421, and 431,
`
`which correspond to conversion routines for converting data from one
`
`protocol to another. Id. at 5:45–46, 5:59–60. Queues 471, 472, and 473
`
`store messages to be processed by the edges of the paths. Id. at 6:2–5.
`
`
`
`In operation, when a “driver” of the conversion system, for example,
`
`an Ethernet driver, receives a message packet, it forwards the packet to a
`
`forwarding component. Id. at 3:18–21. The forwarding component
`
`identifies the session of the conversion routine that should next process the
`
`packet. Id. at 3:21–24. In particular, “the forwarding component may use a
`
`demultiplexing (‘demux’) component to identify the session of the first
`
`conversion routine of the path that is to process the packet and then queues
`
`the packet for processing by the path.” Id. at 3:25–28. The first conversion
`
`routine “processes the packet and forwards the processed packet to the
`
`forwarding component, which then invokes the second conversion routine in
`
`the path,” and so on. Id. at 3:34–37.
`
`E. Illustrative Claims
`
`The ’104 patent has 20 claims. Claims 1–7, 10–13, 16, 19, and 20 are
`
`challenged in the Petition. See supra. Claims 1, 10, and 16 are independent.
`
`Claim 1 is illustrative of the challenged claims, and recites3:
`
`1. An apparatus, comprising:
`
`
`3 Reference letters in brackets mirror those provided by Petitioner. Pet. 33–
`42, 62–64.
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`IPR2020-00587
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`[1(a)] a processing unit; and
`
`[1(b)] a memory storing instructions executable by the
`processing unit to:
`
`[1(c)] receive one or more packets of a message;
`
`[1(d)] determine a key value using information in
`the one or more packets;
`
`[1(e)] identify, using the key value, a sequence of
`two or more routines, wherein the sequence includes a
`routine that is used to execute a Transmission Control
`Protocol (TCP) to process packets having a TCP format;
`
`[1(f)] create a path that includes one or more data
`structures that indicate the identified sequence of two or
`more routines, wherein the path is usable to store state
`information associated with the message; and
`
`[1(g)] process subsequent packets in the message
`using the sequence of two or more routines indicated in
`the path.
`
`Ex. 1006, 14:40–57.
`
`F. References and Other Evidence
`
`The Petition relies on the following references:
`
`1. Smith et al., “Protecting a Private Network: The AltaVista
`
`Firewall,” Digital Technical Journal, Vol. 9, No. 2 (1997) (Ex. 1012,
`
`“Smith”);
`
`2. Decasper et al., “Router Plugins: A Software Architecture for Next
`
`Generation Routers, ACM SIGCOMM Computer Communication Review,
`
`Vol. 28, No. 4 (1998) (Ex. 1014, “Decasper”);
`
`3. Selected Web pages from www.checkpoint.com, as archived by the
`
`Internet Archive’s Wayback Machine on February 12, 1998 (Ex. 1016,
`
`“CheckPoint”).
`
`Pet. 16–17.
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`
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`In addition, Petitioner submits the Declaration of Seth Nielson
`
`(Ex. 1011, “Nielson Decl.”). Patent Owner has not submitted a declaration.
`
`G. Asserted Grounds of Unpatentability
`
`Petitioner asserts the challenged claims are unpatentable on the
`
`following grounds.
`
`Claims Challenged
`
`1–7, 10–13, 16, 19,
`20
`1–7, 10–13, 16, 19,
`20
`
`Pet. 17.
`
`Statutory
`Basis4
`
`References
`
`35 U.S.C. § 103 Smith, Decasper
`
`35 U.S.C. § 103 CheckPoint, Decasper
`
`III. PATENT OWNER’S REQUEST FOR DISCRETIONARY DENIAL
`OF THE PETITION
`
`A. Overview
`
`Patent Owner contends we should deny the Petition under 35 U.S.C.
`
`§ 325(d) because Decasper was previously considered by the Office and the
`
`other references before us, Smith and CheckPoint, are cumulative of art that
`
`was considered during prosecution of the ’104 patent. See Prelim. Resp. 8–
`
`19; Sur-reply 1–5. According to Patent Owner, “[t]he Patent Office has
`
`already expended significant resources examining the family of the Implicit
`
`Patents and allowed these claims.” Prelim. Resp. 8.
`
`Petitioner responds that “the base references cited in the Petitions
`
`(Smith and CheckPoint) were not previously before the Office either in form
`
`or substance. “ Reply 1. Petitioner further responds that, “to the extent the
`
`Office accepted Patent Owner’s prior mischaracterization of Decasper as
`
`
`4 Because the application from which the ’104 patent issued was filed before
`March 16, 2013, citations to 35 U.S.C. §§ 102 and 103 are to their pre-AIA
`versions. Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29.
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`being limited to an IP router and overlooked the straightforward possibility
`
`of incorporating Decasper into the well-known TCP functionality of systems
`
`such as Smith or CheckPoint, those errors can and should be corrected by
`
`instituting proceedings, as requested in the Petitions.” Id.
`
`B. Applicable Legal Principles
`
`Institution of inter partes review is discretionary. See Harmonic Inc.
`
`v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`
`permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C.
`
`§ 314(a). Under § 325(d), in determining whether to institute an inter partes
`
`review, “the Director may take into account whether, and reject the petition
`
`or request because, the same or substantially the same prior art or arguments
`
`previously were presented to the Office.”
`
`
`
`In evaluating arguments under § 325(d), we use a two-part
`
`framework: (1) whether the same or substantially the same art previously
`
`was presented to the Office or whether the same or substantially the same
`
`arguments previously were presented to the Office; and (2) if either
`
`condition of first part of the framework is satisfied, whether the petitioner
`
`has demonstrated that the Office erred in a manner material to the
`
`patentability of challenged claims. Advanced Bionics, LLC v. MED-EL
`
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB
`
`Feb. 13, 2020) (precedential). We must also consider the non-exclusive
`
`factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG,
`
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant
`
`part), which “provide useful insight into how to apply the framework” under
`
`§ 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors
`
`include:
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`IPR2020-00587
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`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`
`(d) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner relies
`on the prior art or Patent Owner distinguishes the prior art;
`
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
`
`(f) the extent to which additional evidence and facts presented
`in the Petition warrant reconsideration of the prior art or
`arguments.
`
`Becton, Dickinson, Paper 8 at 17–18. “If, after review of factors (a), (b), and
`
`(d), it is determined that the same or substantially the same art or arguments
`
`previously were presented to the Office, then factors (c), (e), and (f) relate to
`
`whether the petitioner has demonstrated a material error by the Office.”
`
`Advanced Bionics, Paper 6 at 10.
`
`Our analysis begins with a discussion of the prosecution history. Then
`
`we turn to the parties’ contentions regarding § 325(d). For the reasons given
`
`below, we are not persuaded to deny the Petition based on § 325(d).
`
`C. Prosecution History
`
`The challenged ’104 patent is a member of a family that includes five
`
`other related patents challenged in IPR proceedings currently before the
`
`Board. See discussion of Related Matters, supra. The six patents share a
`
`common specification, and all descend from a common ancestor, the ’163
`
`patent (U.S. Patent No. 6,629,163), filed in 1999. A diagram showing the
`
`patent family tree follows.
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`10
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`Patent 9,591,104 B2
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`
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`The diagram above summarizes the Implicit patent family.
`
`In 2012, the ancestor ’163 patent was involved in an inter partes
`
`reexamination (see, e.g., Ex. 1018, 4–27, 69–103) as well as district court
`
`litigation (see, e.g., Ex. 1022), in which the main prior art reference was
`
`Decasper. In the reexamination, certain claims were rejected over Decasper
`
`(Ex. 1019, 3. 95, 120). Patent Owner presented extensive arguments to
`
`overcome the rejection over Decasper, but they were unsuccessful. Ex.
`
`1020. In March 2013, while the claims were still under rejection in the
`
`reexamination and prosecution had closed, but before the reexaminaton was
`
`completed, the district court, in parallel infringement litigation, entered
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`summary judgment of invalidity of those rejected claims, also based on
`
`Decasper. Ex. 1022, 1–15. In light of the district court’s decision holding
`
`the claims invalid, the reexamination was vacated by the PTO. Ex. 1021.
`
`Also in 2012, the ’857 patent (U.S. Patent No. 7,711,857), a
`
`continuation of the ’163 patent, was involved in an inter partes
`
`reexamination proceeding in which claims were rejected over Decasper. Ex.
`
`2006, 3–8; 2007, 3–6. The district court also held those claims invalid over
`
`Decasper in its summary judgment decision. Ex. 1022, 1–15.
`
`
`
`In June 2013, after the district court’s decision, Patent Owner filed a
`
`series of continuations that eventually led to issuance of the ’104 patent and
`
`the five other patents involved in these proceedings before the Board. See
`
`Implicit Application Tree, supra. These patents issued with claims amended
`
`in similar ways to overcome Decasper.5 See, e.g., Ex. 1004, 3–7. In the
`
`prosecution of the ’683 patent (U.S. Patent No. 8,694,683), each of claims 1
`
`and 10 was amended to recite routine packet processing operations, i.e., “to
`
`execute a Transmission Control Protocol (TCP) to convert one or more
`
`packets having a TCP format into a different format” in claim 1, and “a
`
`session associated with a transport layer protocol[6] that is executed to
`
`convert one or more packets in a transport layer format into a different
`
`format” in claim 10. Id. at 3–7, 264–267.
`
`
`
`The independent claims of the ’104 patent in this proceeding also
`
`include a similar limitation. For example, claim 1 of the ’104 patent recites:
`
`“identify, using the key value, a sequence of two or more routines, wherein
`
`
`5 Petitioner points out that during the prosecution of the six patents, there
`was only one prior art rejection. Reply 2.
`6 TCP is an exemplary transport layer protocol. See Ex. 1030 (“TCP/IP
`Illustrated Volume 1”), 24.
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`the sequence includes a routine that is used to execute a Transmission
`
`Control Protocol (TCP) to process packets having a TCP format.” Ex.
`
`1006, 14:48–50 (emphasis added).
`
`
`
`In the ’683 patent prosecution, Patent Owner cited Decasper and
`
`argued that Decasper “operates on IP packets only” and therefore did not
`
`meet the limitation to executing TCP protocol added by amendment:
`
`As described in detail below, Decasper includes an “IP core” that
`uses modules called “plugins” to operate on IP packets.
`Decasper therefore does not teach or suggest a path having a
`sequence of routines, “wherein the sequence includes a routine
`that is used to execute a Transmission Control Protocol (TCP) to
`convert packets having a TCP format into a different format.
`
`Ex. 1004, 13 (emphasis added). The Examiner cited other references,
`
`eventually allowing the claims without citing Decasper. Id. at 206, 283.
`
`Following this pattern, in the prosecution the ’104 patent, the Examiner
`
`allowed the claims in the first Office Action, without citing Decasper or any
`
`other prior art against the claims. Ex. 1010, 224.
`
`
`
`D. § 325(d) Analysis
`
`Under the first part of the § 325(d) framework, Becton, Dickinson
`
`factors (a), (b), and (d) are considered in the evaluation of whether the same
`
`or substantially the same art and arguments were previously before the
`
`Office. See Advanced Bionics, Paper 6 at 10. The challenges before us each
`
`combine Decasper with one other reference (either Smith or CheckPoint).
`
`As explained above, Decasper was before the Office during the
`
`reexamination of the ʼ163 patent. Although Decasper was cited, Decasper
`
`was not relied upon by the Examiner in the prosecution of the continuations
`
`that led to the patents involved in the current proceedings before the Board.
`
`
`
`Moreover, although Patent Owner is correct that Petitioner relies
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`heavily on Decasper for most elements of the challenged claims, that is
`
`understandable because the district court found that Decasper discloses
`
`many claim elements that are carried over from the ’163 patent claims. See
`
`Ex. 1022. The amendments made to overcome Decasper simply recite
`
`executing a TCP protocol, which applicants acknowledged was known prior
`
`art. See, e.g., Ex. 1004, 19 n.4.
`
`While it is undisputed that Smith itself was not previously considered
`
`by the Office (Prelim. Resp. 13; Sur-reply 2–3), Patent Owner asserts that
`
`the “subject matter” of Smith was before the Office, and identifies two
`
`references relating to gateways. Prelim. Resp. 14; Sur-reply 3. Those
`
`references include an IBM publication (Ex. 2011, “IBM”) and a technical
`
`report by Li (Ex. 2012, “Li”), both of which discuss performance and quality
`
`of service in a more generalized way than Smith.
`
`We do not agree with Patent Owner that either IBM or Li is
`
`cumulative of Smith. See Becton, Dickinson Factor (b). For instance, Smith
`
`more completely describes an application gateway firewall, the AltaVista
`
`firewall, that “operate[s] in user space at the application layer of the open
`
`system interconnection (OSI) model.” Ex. 1012, 11.7 Smith further
`
`describes that its gateway “provides a high level of control over all major
`
`TCP/IP services.” Id. (emphasis added).
`
`CheckPoint’s firewall technology, however, was cited in an IDS.
`
`Ex. 1004, 91. Although Petitioner points to features in the CheckPoint
`
`descriptions cited here that differ from the subject matter previously
`
`presented to the Office (see, e.g., Reply 4–6), Patent Owner argues (and we
`
`
`7 Unless otherwise indicated, we use the parties’ page numbering for
`exhibits throughout this decision.
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`agree) that Petitioner does not rely on those new features (Sur-reply 2–3).
`
`Pet. 17. We do not need to reach this issue, however, as all challenged
`
`claims are included in the obviousness challenge over Smith (which was
`
`admittedly not before the Office) and Decasper. Id.
`
`Because it is our view that at least the combination of Smith and
`
`Decasper is new and not cumulative, this factor weighs towards a
`
`determination that the same art was not previously before the Office.
`
`However, because Patent Owner contends (and we agree) that Decasper is
`
`the primary reference that is relied upon for teaching most of the claim
`
`elements, and we also agree that Decasper was before the Examiner during
`
`the prosecution, we turn to the second step of the Advanced Bionics
`
`framework. We conclude that Petitioner has demonstrated that the Office
`
`erred. In particular, Petitioner has shown that the Examiner overlooked the
`
`significance of Decasper in considering the amendments made by Patent
`
`Owner.
`
`As noted, Patent Owner argued in its Preliminary Amendment that
`
`Decasper is limited to executing only IP protocol, and not other networking
`
`protocols such as TCP. Ex. 1004, 13–21. That may have led the Examiner
`
`away from applying Decasper, or from considering the straightforward
`
`combination of Decapser’s framework and an Application Layer Gateway
`
`(e.g., Smith) or Firewall (e.g., CheckPoint) as a basis for a rejection. The
`
`Examiner erred in failing to consider Decasper’s statement that Decasper’s
`
`“framework is also very well suited to Application Layer Gateways (ALGs)
`
`and to security devices like Firewalls.” Ex. 1014, 2.
`
`The Examiner erred also in not considering the district court’s
`
`invalidation of the ’163 and ’857 patent based on Decasper. Ex. 1022.
`
`Although the Examiner did not apply the Decasper reference, the district
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`court concluded that this reference rendered substantially the same claims
`
`invalid. The district court’s decision included a detailed analysis of
`
`Decasper in relation to the claims and Decasper’s disclosures, for example,
`
`of processing IP packet flows, storing information relating to particular
`
`packets, and maintaining state. See, e.g., id., 7–15. The district court
`
`concluded its analysis by stating: “[T]he Court finds—based on clear and
`
`convincing evidence presented by Juniper’s expert—that the asserted claims
`
`in the ‘163 and ‘857 patents are anticipated as well as rendered obvious by
`
`Decasper98 alone and/or in combination with IBM96 and Nelson.” Id. at
`
`15.8
`
`The application of Decapser’s framework to Application Layer
`
`Gateways (e.g., Smith) is suggested by Decasper itself, and Petitioner has
`
`provided a rationale for making the combination that we find persuasive at
`
`this stage. Pet. 26–33. Petitioner also provides an explanation of the
`
`Examiner’s error in overlooking this suggestion. Id. at 13–15, Reply 6–7.
`
`Thus, we determine that Becton, Dickinson Factors (e) and (f) heavily weigh
`
`in favor of a finding of error under the second step of Advanced Bionics.
`
`We conclude that the circumstances presented here do not warrant us
`
`exercising our discretion to deny institution based on § 325(d).).9
`
`
`8 Decasper98 is the Decasper reference (Exhibit 1014) and IBM96 is the
`IBM publication (Exhibit 2011). See Ex. 1022, 2.
`9 As discussed supra, we do not decide the question of whether CheckPoint
`was considered by the Examiner. Because we institute an inter partes
`review based on Decasper and Smith (see infra), we also must institute as to
`all other claims and all grounds, including the ground based on Decasper and
`CheckPoint. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018)
`(holding that a decision to institute under 35 U.S.C. § 314 may not institute
`on fewer than all claims challenged in the petition); Patent Trial and Appeal
`Board Consolidated Trial Practice Guide (Nov. 2019) (“TPG”), at 5 (“In
`
`16
`
`

`

`IPR2020-00587
`Patent 9,591,104 B2
`
`IV. OTHER PRELIMINARY MATTERS
`
`A. Level of Ordinary Skill
`
`Petitioner contends: “A person of ordinary skill in the art . . . of the
`
`’104 patent would have a bachelor’s degree in computer science or [a]
`
`related field and four years of industry experience in computer networking,
`
`or a master’s degree in computer science and two years of industry
`
`experience.” Pet. 18 (citing Nielson Decl. ¶ 14).
`
`At this stage, Patent Owner does not dispute Petitioner’s formulation
`
`of a person of ordinary skill in the art.
`
`We regard Petitioner’s definition as consistent with the prior art
`
`before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
`
`(prior art itself may reflect an appropriate level of skill). Thus, for the
`
`purpose of our decision, we adopt Petitioner’s proposal.
`
`B. Claim Construction
`
`For this inter partes review, the Board applies the same claim
`
`construction standard as that applied in federal courts. See 37 C.F.R
`
`§ 42.100(b) (2019). In this context, claim terms “are generally given their
`
`ordinary and customary meaning” as understood by a person of ordinary
`
`skill in the art in question at the time of the invention. Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citations
`
`omitted). “In determining the meaning of the disputed claim limitation, we
`
`look principally to the intrinsic evidence of record, examining the claim
`
`language itself, the written description, and the prosecution history, if in
`
`
`instituting a trial, the Board will either (1) institute as to all claims
`challenged in the petition and on all grounds in the petition, or (2) institute
`on no claims and deny institution.”) (available at https://
`www.uspto.gov/TrialPracticeGuideConsolidated).
`
`17
`
`

`

`IPR2020-00587
`Patent 9,591,104 B2
`
`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
`
`1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
`
`Extrinsic evidence is “less significant than the intrinsic record in
`
`determining ‘the legally operative meaning of claim language.’” Phillips,
`
`415 F.3d at 1317 (citation omitted).
`
`Petitioner provides claim constructions for several claim terms:
`
`“message”; “sequence of two or more routines”; “state information”;
`
`“execute a Transmission Control Protocol (TCP) to process packets having a
`
`TCP format”/ “execute TCP to process at least one of the subsequent packets
`
`having a TCP format”; and “key value.” See Pet. 18–20.
`
`Petitioner’s proposed constructions are presented in the following
`
`table.
`
`Claim Term
`
`Claims10
`
`“message”
`
`1, 10, 16
`
`“sequence of two or
`more routines”
`
`1, 10, 16
`
`“state information”
`
`1, 10, 16
`
`Petitioner’s Construction
`Contentions
`“a collection of data that is
`related in some way, such as a
`stream of video or audio data or
`an email message.” Pet. 18.
`“two or more software routines
`arranged in a sequence that was
`not established in a chain of
`modules connected before
`receiving a first packet of the
`message.” Pet. 18.
`“information that is specific to a
`software routine for a specific
`message, that can be used for all
`packets of the message, and that
`is not information related to an
`overall path.” Pet. 19.
`“operate on one or more packets
`
`“execute a
`
`10 Only independent claims are identified, except for terms recited in only
`dependent claims.
`
`1, 10, 16
`
`18
`
`

`

`Petitioner’s Construction
`Contentions
`whose outermost header is a
`TCP header.” Pet. 19.
`
`IPR2020-00587
`Patent 9,591,104 B2
`
`Claim Term
`
`Claims10
`
`Transmission Control
`Protocol (TCP) to
`process packets
`having a TCP
`format”/ “execute
`TCP to process at
`least one of the
`subsequent packets
`having a TCP
`format”
`
`“key value”
`
`1, 10, 16
`
`
`
`“information that can be used to
`identify the session of the
`protocol.” Pet. 20.
`
`Patent Owner states that “[w]hile Patent Owner does not agree with
`
`the Petition’s proposed claim constructions, for the purposes of this
`
`Preliminary Response only, Patent Owner does not contest those claim
`
`constructions.” Prelim. Resp. 7.
`
`In view of the issues we address below, we determine that it is not
`
`necessary to provide an express interpretation of any claim terms at this
`
`juncture. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`
`868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`
`construed that are in controversy, and only to the extent necessary to resolve
`
`the controversy.”).
`
`C. Description of Prior Art References
`
`Petitioner’s challenges rely on Smith, Decasper, and CheckPoint. See
`
`supra.
`
`19
`
`

`

`IPR2020-00587
`Patent 9,591,104 B2
`
`1. Smith (Exhibit 1012)
`
`
`
`Smith is a journal article titled “Protecting a Private Network: The
`
`AltaVista Firewall.” Ex. 1012, 4. Smith describes a commercial firewall,
`
`The AltaVista Firewall 97, for connecting an organization’s private network
`
`to the Internet and protecting the network from malicious attack. Id. Smith
`
`begins with a general overview of firewall technology (id. at 4–7) and
`
`follows with a description of the AltaVista Firewall product (id. at 7– 17).
`
`
`
`Smith explains that a firewall protects private networks by enforcing
`
`security policies that specify which connections are allowed between a
`
`private network and the Internet. Id. at 4. In general, firewalls provide two
`
`types of controls and are categorized either as packet-filtering (packet-
`
`screening) or application-level implementations. Id. at 5.
`
`Packet-filtering firewalls control whether individual packets are
`
`forwarded or denied based on a set of rules, such as rules that specify source
`
`and destination IP addresses and ports and the packet type (for example,
`
`TCP and UDP (User Datagram Protocol).11 Id. In contrast, application-
`
`level firewalls impose protocol-specific and user-specific controls on each
`
`connection. Id. For example, an application-level firewall for a File
`
`Transfer Protocol (FTP) application gateway, with the assistance of a user
`
`authentication system, can identify a user who wishes to establish a
`
`connection and can control what FTP operations that user performs. Id.
`
`Smith describes the AltaVista Firewall as “primarily an application
`
`gateway firewall.” Id. at 11. Figur