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.
`
`IPR2020-00591
`Patent 10,033,839 B2
`
`
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, BARBARA A. PARVIS, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`KHAN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2020-00591
`Patent 10,033,839 B2
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Juniper Networks, Inc. (“Petitioner”) filed a Petition requesting inter
`
`partes review of claim 1 (the “challenged claim”) of U.S. Patent
`
`No. 10,033,839 B2 (Ex. 1008, the “’839 patent”). Paper 1 (“Pet.”). Implicit,
`
`LLC (“Patent Owner”) 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”).
`
`We have authority to institute an inter partes review only if the
`
`information presented in the Petition shows “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(a). Upon consideration of the
`
`aforementioned papers, we conclude that Petitioner has shown a reasonable
`
`likelihood of prevailing against the challenged claim. For the reasons
`
`explained below, we institute an inter partes review on the challenged claim
`
`of the ’839 patent on all grounds.
`
`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; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf
`
`of the Director.”).
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`IPR2020-00591
`Patent 10,033,839 B2
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`B. Related Proceedings
`
`The parties identify the following pending district court proceedings
`
`involving the ’839 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
`
`No. 2:18-cv-00053 (E.D. Tex.); and Implicit, LLC v. Sandvine Corporation,
`
`Case No. 2:18-cv-00054 (E.D. Tex.). Pet. 60–61; Paper 4, 2.
`
`Petitioner identifies the following completed district court
`
`proceedings involving the ’839 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. 61.
`
`Patents related to the ’839 patent are challenged by Petitioner in
`
`IPR2020-00585, IPR2020-00586, IPR2020-00587, IPR2020-00590, and
`
`IPR2020-00592.
`
`C. Real Parties-in-Interest
`
`Petitioner identifies “Juniper Networks, Inc.” as the real party-in-
`
`interest. Pet. 60. Patent Owner identifies “Implicit LLC and Edward
`
`Balassanian” as the real parties-in-interest. Paper 4, 2.
`
`3
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`IPR2020-00591
`Patent 10,033,839 B2
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`D. The ’839 Patent
`
`The ’839 patent is titled “Method and System for Data
`
`Demultiplexing.” Ex. 1008, code (54). According to the patent,
`
`interconnected computer systems, such as those on the Internet, “generate
`
`data in a wide variety of formats.” Id. at 1:29–30. 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
`
`TCP format1 and then into an IP format, and finally, convert the data into an
`
`Ethernet format. Id. at 1:36–43. The receiving computer system performs
`
`each of these conversions in reverse order to recover the original bitmap
`
`data. Id. at 1:45–47.
`
`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 1:51–54. The ’839
`
`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 2:10–18.
`
`Accordingly, the conversion method and system of the ’839 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 2:51–58. The sequence
`
`
`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 1”), 23–24.
`Id.
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`IPR2020-00591
`Patent 10,033,839 B2
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`is used to convert the packets of the message from a source format to a target
`
`format using various intermediate formats. Id. at 2:58–60. 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 3:1–8.
`
`Moreover, the conversion system retains state information for the 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 3:8–16. The sequence of
`
`conversion routine sessions for a given packet is called a “path.” Id. at
`
`3:16–17.
`
`Figure 4 of the ’839 patent is reproduced below.
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`IPR2020-00591
`Patent 10,033,839 B2
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`
`
`Fig. 4 is a block diagram illustrating a path data structure having several
`paths. Id. at 5:43–44.
`
`
`
`Figure 4 shows paths 4612, 462, and 463, represented by sequences of
`
`path entry structures shown as triangles. Id. at 5:61, 5:67–6:2. The paths
`
`share the same Ethernet session 410 and IP session 420, but have different
`
`TCP sessions 430, 440, and 450. Id. at 5:62–64. Each session corresponds
`
`to an instance of a protocol with associated state information. Id. at 5:55–
`
`57. The paths include “edges” 411, 421, and 431, which correspond to
`
`conversion routines for converting data from one protocol to another. Id. at
`
`
`2 Path 461 appears to be mislabeled as “464” in Figure 4.
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`IPR2020-00591
`Patent 10,033,839 B2
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`5:47–48, 5:61–62. Queues 471, 472, and 473 store messages to be
`
`processed by the edges of the paths. Id. at 6:4–7.
`
`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 3:20–23. The forwarding component
`
`identifies the session of the conversion routine that should next process the
`
`packet. Id. at 3:23–26. 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 3:27–30. 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 3:34–39.
`
`E. Challenged Claim
`
`Claim 1, the only claim in the patent, recites3:
`
`1. An method, comprising:
`
`[a] receiving, at a computing device having a processing
`circuit, a packet of a message;
`
`[b] determining, by the computing device, a key value for
`the packet, wherein the key value is determined based on one or
`more headers in the packet; and
`
`[c] using, by the computing device, the key value to
`determine whether the computing device is currently storing a
`previously created path for the key value;
`
`[d] in response to determining that no path is currently
`stored for the key value, the computing device:
`
`
`3 Reference letters in brackets mirror those provided by Petitioner. Pet. 34–
`45, 57–60.
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`IPR2020-00591
`Patent 10,033,839 B2
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`[d1] identifying, using the key value, one or more
`routines for processing the packet, including a routine that
`is used to execute a Transmission Control Protocol (TCP)
`to convert packets having a TCP format into a different
`format;
`
`[d2] creating a path using the identified one or more
`routines wherein the created path stores state information
`for at least one of the identified one or more routines and
`specifies an ordering in which the identified one or more
`routines are to be performed to process the packet; and
`
`[d3] processing the packet using the created path.
`
`Ex. 1008, 14:42–64.
`
`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) (hereinafter
`
`“Smith”) (Ex. 1012);
`
`2. Decasper et al., “Router Plugins: A Software Architecture for Next
`
`Generation Routers, ACM SIGCOMM Computer Communication Review,
`
`Vol. 28, No. 4 (1998) (hereinafter “Decasper”) (Ex. 1014);
`
`3. Selected Web pages from www.checkpoint.com, as archived by the
`
`Internet Archive’s Wayback Machine on February 12, 1998 (hereinafter
`
`“CheckPoint”) (Ex. 1016).
`
`Pet. 16–17.
`
`
`
`In addition, Petitioner submits the Declaration of Seth Nielson
`
`(Ex. 1011, “Nielson Decl.”). Patent Owner has not submitted an expert
`
`declaration.
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`IPR2020-00591
`Patent 10,033,839 B2
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`G. Asserted Grounds of Unpatentability
`
`Petitioner asserts the challenged claim is unpatentable on the
`
`following grounds.
`
`Claim Challenged
`
`1
`1
`
`Pet. 17.
`
`Statutory
`Basis4
`35 U.S.C. § 103 Smith, Decasper
`35 U.S.C. § 103 CheckPoint, Decasper
`
`References
`
`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 ’839 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
`
`being limited to an IP router and overlooked the straightforward possibility
`
`of incorporating Decasper into the well-known TCP functionality of systems
`
`
`4 Because the application from which the ’839 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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`IPR2020-00591
`Patent 10,033,839 B2
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`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:
`
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
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`IPR2020-00591
`Patent 10,033,839 B2
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`(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 ’839 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 chart showing the
`
`patent family tree follows.
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`11
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`

`IPR2020-00591
`Patent 10,033,839 B2
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`The figure 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). 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
`
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`IPR2020-00591
`Patent 10,033,839 B2
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`district court, in parallel infringement litigation, entered 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 ’839 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 add a limitation reciting 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 ’839 patent in this proceeding also
`
`include a similar limitation. For example, claim 1 of the ’839 patent recites:
`
`
`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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`IPR2020-00591
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`“identifying, using the key value, one or more routines for processing the
`
`packet, including a routine that is used to execute a Transmission Control
`
`Protocol (TCP) to convert packets having TCP format into a different
`
`format.” Ex. 1008, 14:42–64 (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 283.
`
`Following this pattern, in the prosecution the ’839 patent, the Examiner
`
`allowed the claims in the first Office Action, without citing Decasper or any
`
`other prior art. Ex. 1010, 420–422.
`
`D. § 325(d)
`
`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.
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`
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`Moreover, although Patent Owner is correct that Petitioner relies
`
`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. 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
`
`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
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`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
`
`court concluded that this reference rendered substantially the same claims
`
`invalid. The district court’s decision included a detailed analysis of
`
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`IPR2020-00591
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`Decasper in relation to the claims and Decasper’s disclosures, for example,
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`of processing IP packet flows, storing information relating to particular
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`packets, and maintaining state. See, e.g., Ex. 1022, 7–15. The district court
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`concluded its analysis by stating: “[T]he Court finds—based on clear and
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`convincing evidence presented by Juniper’s expert—that the asserted claims
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`in the ‘163 and ‘857 patents are anticipated as well as rendered obvious by
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`Decasper98 alone and/or in combination with IBM96 and Nelson.” Id. at
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`15.7
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`The application of Decapser’s framework to Application Layer
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`Gateways (e.g., Smith) is suggested by Decasper itself, and Petitioner has
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`provided a rationale for making the combination that we find persuasive at
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`this stage. Pet. 26–33. Petitioner also provides an explanation of the
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`Examiner’s error in overlooking this suggestion. Pet. 13–15, Reply 6–7.
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`Thus, we determine that Becton, Dickinson Factors (e) and (f) heavily weigh
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`in favor of a finding of error under the second step of Advanced Bionics.
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`We conclude that the circumstances presented here do not warrant us
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`exercising our discretion to deny institution based on § 325(d).8
`
`
`7 Decasper98 is the same as the Decasper reference discussed herein (Exhibit
`1014) and IBM96 is the same as the IBM publication (Exhibit 2011)
`discussed herein. See Ex. 1022, 2.
`8 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
`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
`
`17
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`IV. OTHER PRELIMINARY MATTERS
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`A. Level of Ordinary Skill
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`Petitioner contends a person of ordinary skill in the art “would have a
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`bachelor’s degree in computer science or related field and four years of
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`industry experience in computer networking, or a master’s degree in
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`computer science and two years of industry experience.” Pet. 17–18 (citing
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`Ex. 1011 ¶ 14). At this stage, Patent Owner does not dispute Petitioner’s
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`formulation of a person of ordinary skill in the art. See generally Prelim.
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`Resp.
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`In determining the level of ordinary skill in the art, various factors
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`may be considered, including the “type of problems encountered in the art;
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`prior art solutions to those problems; rapidity with which innovations are
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`made; sophistication of the technology; and educational level of active
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`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
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`(citation omitted). The level of ordinary skill in the art is also reflected by
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`the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
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`Cir. 2001).
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`Based on our review of the ’839 Patent and the prior art of record, we
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`determine that Petitioner’s definition is consistent with the types of problems
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`and solutions encountered in the art. At this stage of the proceeding, we
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`adopt Petitioner’s proposed level of ordinary skill in the art.
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`B. Claim Construction
`
`In this inter partes review, the Board applies the same claim
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`construction standard as that applied in federal courts. See 37 C.F.R
`
`
`on no claims and deny institution.”) (available at https://
`www.uspto.gov/TrialPracticeGuideConsolidated).
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`18
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`§ 42.100(b) (2019). Under this standard claim terms “are generally given
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`their ordinary and customary meaning” as understood by a person of
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`ordinary skill in the art in question at the time of the invention. Phillips v.
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`AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citations
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`omitted). “In determining the meaning of the disputed claim limitation, we
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`look principally to the intrinsic evidence of record, examining the claim
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`language itself, the written description, and the prosecution history, if in
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`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
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`1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
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`Extrinsic evidence is “less significant than the intrinsic record in
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`determining ‘the legally operative meaning of claim language.’” Phillips,
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`415 F.3d at 1317 (citation omitted).
`
`Petitioner provides claim constructions for several terms as set forth in
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`the table below.
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`Claim Term
`
`“message”
`
`“one or more routines
`for processing the
`packet”
`
`“state information”
`
` “convert packets
`having a TCP format
`into a different
`format”
`“execute a
`
`Petitioner’s Constructions
` “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.
` “[software routines/software conversion routines]
`arranged in a sequence that was not established in
`a chain of modules connected before receiving a
`first packet of the message.” Pet. 18–19.
`“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.
`“convert the outermost header structure of the
`packet(s) from TCP [a transport layer protocol
`header] to another type of header structure.” Pet.
`19–20.
`“operate on one or more packets whose outermost
`
`19
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`Claim Term
`Transmission Control
`Protocol (TCP)”
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`“key value”
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`Petitioner’s Constructions
`header is a TCP header.” Pet. 20.
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`“information that can be used to identify the
`session of the protocol.” Pet. 20.
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`Patent Owner states that “[w]hile Patent Owner does not agree with
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`the Petition’s proposed claim constructions, for the purposes of this
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`Preliminary Response only, Patent Owner does not contest those claim
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`constructions.” Prelim. Resp. 7.
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`In view of the issues we address below, we determine that it is not
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`necessary to provide an express interpretation of any of the aforementioned
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`claim terms at this juncture. See Nidec Motor Corp. v. Zhongshan Broad
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`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc.
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`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
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`terms need be construed that are in controversy, and only to the extent
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`necessary to resolve the controversy.”).
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`C. Description of Prior Art References
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`Petitioner’s challenge relies on Smith, Decasper, and CheckPoint. See
`
`Pet., passim.
`
`1.
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`Smith (Exhibit 1012)
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`
`
`Smith is a journal article titled “Protecting a Private Network: The
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`AltaVista Firewall.” Ex. 1012, 4.9 Smith describes a commercial firewall,
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`The AltaVista Firewall 97, for connecting an organization’s private network
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`to the Internet and protecting the network from malicious attack. Id. Smith
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`
`9 Unless otherwise indicated, we use the parties’ page numbering for
`exhibits throughout this decision.
`
`20
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`begins with a general overview of firewall technology (id. at 4–7) and
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`follows with a description of the AltaVista Firewall product (id. at 7– 17).
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`
`
`Smith explains that a firewall protects private networks by enforcing
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`security policies that specify which connections are allowed between a
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`private network and the Internet. Id. at 4. In general, firewalls provide two
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`types of controls and are categorized either as packet-filtering (packet-
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`screening) or application-level implementations. Id. at 5.
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`Packet-filtering firewalls control whether individual packets are
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`forwarded or denied based on a set of rules, such as rules that specify source
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`and destination IP addresses and ports and the packet type (for example,
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`TC