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.
`
`IPR2020-00592
`Patent 10,225,378 B2
`
`
`
`
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, BARBARA A. PARVIS, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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.
`
`IPR2020-00592
`Patent 10,225,378 B2
`
`
`
`
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, BARBARA A. PARVIS, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00592
`Patent 10,225,378 B2
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background and Summary
`
`Juniper, Inc. (“Juniper” or “Petitioner”) filed a Petition requesting
`
`inter partes review of claims 1–6, 11, 14, and 16–20 of U.S. Patent No.
`
`10,225,378 B2 (Ex. 1009, “the ’378 patent”) pursuant to 35 U.S.C. §§ 311–
`
`319, along with the supporting Declaration of Seth Nielson, Ph.D. Paper 1
`
`(“Pet.”); Ex. 1011. Implicit, LLC (“Implicit” or “Patent Owner”) filed a
`
`Preliminary Response to the Petition. Paper 5 (“Prelim. Resp.”). Pursuant
`
`to our authorization (Paper 6), Petitioner filed a Reply to Patent Owner’s
`
`Preliminary Response. Paper 11 (“Pet. Reply”). Patent Owner filed a Sur-
`
`reply In Support of Preliminary Response. Paper 13 (“PO Sur-reply”).
`
`We have authority under 35 U.S.C. § 314(a), which provides that an
`
`inter partes review may not be instituted “unless . . . the information
`
`presented in the petition . . . 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.”
`
`For the reasons that follow, we determine that Petitioner has
`
`demonstrated that there is a reasonable likelihood that it would prevail in
`
`showing the unpatentability of at least one of the challenged claims. For the
`
`reasons set forth below, and pursuant to 35 U.S.C. § 314, we institute inter
`
`partes review of claims 1–6, 11, 14, and 16–20 of the ’378 patent.
`
`B.
`
`Related Matters
`
`The parties identify several related litigations, including Implicit, LLC
`
`v. Juniper Networks, Inc., Case No. 2:19-cv-00037-JRG-RSP (E.D. Tex.).
`
`Pet. 70–71; Paper 4, 2.
`
`2
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`IPR2020-00592
`Patent 10,225,378 B2
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`Several other petitions challenge claims of patents that are related to
`
`the ’378 patent, namely, IPR2020-00585, IPR2020-00586, IPR2020-00587,
`
`IPR2020-00590, and IPR2020-00591.
`
`C.
`
`The ’378 Patent
`
`The ’378 patent is titled “Method And System For Data
`
`Demultiplexing” and issued on March 5, 2019, from an application filed on
`
`July 23, 2018. Ex. 1009, codes (22), (45), (54). The application for the ’378
`
`patent is a continuation of several applications. See id., code (63). A
`
`terminal disclaimer was filed during the prosecution of the application that
`
`led to the issuance of this patent, and the term of ’378 patent appears to have
`
`expired. See Ex. 1010, 110–112 (terminal disclaimer over the statutory term
`
`of U.S. Patent No. 6,629,163).
`
`The ’378 patent is directed to a method and system for demultiplexing
`
`packets of a message. Ex. 1009, code (57), 1:26–27, 3:28–38. The ’378
`
`patent addresses sequences of conversion routines used to convert the
`
`message from a source format to the target format using various intermediate
`
`formats. Id. at 2:60–62.
`
`The ’378 patent indicates that it is desirable to “dynamically
`
`identifying 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.” Ex. 1009, 2:12–20.
`
`The ’378 patent describes a conversion system that routes 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
`
`3
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`IPR2020-00592
`Patent 10,225,378 B2
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`message. Ex. 1009, 3:15–18. A sequence of sessions of conversion routines
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`is referred to as a “path.” Id. at 3:18–19.
`
`Figure 4 of the ’683 patent, which is a block diagram illustrating
`
`example path data structures of an embodiment, is reproduced below. Ex.
`
`1009, 2:19–30.
`
`
`
`Figure 4, above, is a block diagram illustrating example path data structures,
`
`which shows three paths 4611, 462, and 463. Ex. 1009, 5:63. A path is
`
`represented by a series of path entries, which are represented by triangles.
`
`Id. at 4:17–19. Paths 461, 462, and 463 correspond to the same Ethernet
`
`session 410 and IP session 420, but have unique Transmission Control
`
`Protocol (TCP) sessions 430, 440, and 450. Id. at 5:59–62, 5:64–66. Figure
`
`
`1 Path 461 appears to be mislabeled as Path “464” in Figure 4.
`
`4
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`IPR2020-00592
`Patent 10,225,378 B2
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`4 illustrates that paths 461, 462, and 463 have “edges” 411, 421, and 431,
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`which correspond to conversion routines for converting data from one
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`protocol to another. Id. at 5:46–50, 5:63. Queues 471, 472, and 473 store
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`messages that are to be processed. Id. at 6:6–9.
`
`
`
`When a “driver” of the conversion system, such as an Ethernet driver,
`
`receives a message packet, it forwards the packet to a forwarding
`
`component. Ex. 1009, 3:22–25. The forwarding component identifies the
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`session of the conversion routine that should next process the packet. Id. at
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`3:25–28. “[T]he 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
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`processing by the path.” Id. at 3:29–32. The first conversion routine
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`“processes the packet and forwards the processed packet to the forwarding
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`component, which then invokes the second conversion routine in the path.”
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`Id. at 3:39–41.
`
`Challenged claims 1 and 16 are independent. Claim 1 of the ’378
`
`patent is reproduced below, with bracketed letters added to the limitations
`
`for reference purposes.
`
`1. A method, comprising:
`
`[a] receiving, at a computing device, 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;
`
`[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:
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`5
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`IPR2020-00592
`Patent 10,225,378 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; and
`
`
`
`[d3] processing the packet using the created path.
`
`Ex. 1009, 14:44–61.
`
`D.
`
`Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims of the ’378 patent on
`
`the following grounds:
`
`Claims Challenged
`1–6, 11, 14, 16–20
`1–6, 11, 14, 16–20
`
`35 U.S.C. §
`103(a)
`103(a)
`
`Reference(s)
`Smith2, Decasper3
`CheckPoint4, Decasper
`
`Pet. 17.
`
`II. DISCRETIONARY DENIAL UNDER § 325(d)
`
`
`
`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 patent. See Prelim. Resp. 8–19;
`
`PO Sur-Reply 1–5. According to Patent Owner, “[t]he Patent Office has
`
`
`2 AltaVista Internet Security and Mail, Alpha-Based Workstations for NT
`and UNIX, Digital Technical Journal, Vol. 9, No. 2 (1997). Ex. 1012.
`3 Dan Decasper, Router Plugins – A Software Architecture for Next
`Generation Routers, 1998 ACM 1-58113-003-1/98/0008. Ex. 1014.
`4 Webpages from Check Point Products Home Page,
`http://www.checkpoint.com:80/products/whitpapers/30_broch.zip. Ex.
`1016.
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`6
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`Patent 10,225,378 B2
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`already expended significant resources examining the family of the Implicit
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`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.” Pet. 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
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`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
`
`7
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`
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`IPR2020-00592
`Patent 10,225,378 B2
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`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;
`
`(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).
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`8
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`IPR2020-00592
`Patent 10,225,378 B2
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`
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`C. Prosecution History
`
`The challenged ’378 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 is shown below.
`
`
`
`
`
`The diagram above depicts a summary of the Implicit patent family. In
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`2012, the ancestor ’163 patent was involved in an inter partes reexamination
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`9
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`IPR2020-00592
`Patent 10,225,378 B2
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`(see, e.g., Ex. 1018, 4–27, 69–103) as well as district court litigation (see,
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`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 reexamination was completed, the 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
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`series of continuations that eventually led to issuance of the ’378 patent and
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`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
`
`
`5 Petitioner points out that during the prosecution of the six patents, there
`was only one prior art rejection. Pet. Reply 2.
`
`10
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`IPR2020-00592
`Patent 10,225,378 B2
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`convert one or more packets having a TCP format into a different format” in
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`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 ’378 patent in this proceeding also
`
`include a similar limitation. For example, claim 1 of the ’378 patent recites:
`
`“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.” Ex. 1009, 14:54–58.
`
`
`
`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.
`
`
`
`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
`
`
`6 TCP is an exemplary transport layer protocol. See Ex. 1030 (“TCP/IP
`Illustrated Volume 1”), 24.
`
`11
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`IPR2020-00592
`Patent 10,225,378 B2
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`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.
`
`
`
`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; PO 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; PO 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).
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`12
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`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., Pet. Reply 4–6), Patent Owner argues (and
`
`we agree) that Petitioner does not rely on those new features (PO Sur-Reply
`
`2–3). Pet. 59–62. 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 in the Petition 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 Decasper’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
`
`13
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`“framework is also very well suited to Application Layer Gateways (ALGs)
`
`and to security devices like Firewalls.” Ex. 1014, 2.
`
`The Examiner also erred 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
`
`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., Ex. 1022, 7–15. The district court
`
`concluded its analysis by stating: “the 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
`
`15.7
`
`The application of Decasper’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. Pet. 13–15, Pet. 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.
`
`
`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.
`
`14
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`Accordingly, we conclude that the circumstances presented here do
`
`not warrant us exercising our discretion to deny institution based on
`
`§ 325(d).8
`
`III. ANALYSIS
`
`A.
`
`Level of Ordinary Skill in the Art
`
`Petitioner asserts that a person of ordinary skill in the art the time of
`
`the invention would have had a bachelor’s degree in computer science or
`
`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. 17 (citing Ex. 1011 ¶ 14). Petitioner also asserts that a
`
`skilled artisan would also have experience with implementation of network
`
`protocols and subsystems, and would be aware of data structures, including
`
`hash tables and tries, and data processing technologies such as packet filters,
`
`and would be familiar with the operation of commonly-used protocols such
`
`as IP and TCP. Id. at 17–18. Patent Owner does not provide a proposed
`
`level of qualifications for one of ordinary skill in the art.
`
`
`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
`on no claims and deny institution.”) (available at https://
`www.uspto.gov/TrialPracticeGuideConsolidated).
`
`15
`
`
`
`IPR2020-00592
`Patent 10,225,378 B2
`
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encountered in the art;
`
`prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level of active
`
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(citation omitted). The level of ordinary skill in the art is also reflected by
`
`the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`
`Cir. 2001).
`
`Considering the subject matter of the ’378 patent, the background
`
`technical field, and the prior art, we agree with Petitioner’s proposed
`
`qualifications for one of ordinary skill in the art at this stage of the
`
`proceedings. 9
`
`B.
`
`Claim Construction
`
`For petitions filed after November 13, 2018, the Board interprets
`
`claim terms in accordance with the standard used in federal district court in a
`
`civil action involving the validity or infringement of a patent. 37 C.F.R.
`
`§ 42.100(b) (2019). Under the principles set forth by our reviewing court,
`
`the “words of a claim ‘are generally given their ordinary and customary
`
`meaning,’” as would be 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 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic,
`
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of
`
`the disputed claim limitation, we look principally to the intrinsic evidence of
`
`
`9 The parties are encouraged to address the impact, if any, of differences in
`the level of qualifications on the obviousness analysis in any subsequent
`briefing.
`
`16
`
`
`
`IPR2020-00592
`Patent 10,225,378 B2
`
`record, examining the claim language itself, the written description, and the
`
`prosecution history, if in 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).
`
`Petitioner provides proposed constructions for several claim terms.
`
`Pet. 18–20. Patent Owner asserts that no claim construction is required in
`
`order to determine whether to institute review. Prelim. Resp. 7. Patent
`
`Owner further contends that, although it does not agree with the Petition’s
`
`proposed claim constructions, for the purposes of this Preliminary Response
`
`only, Patent Owner does not contest Petitioner’s proposed claim
`
`constructions. Id.
`
`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.
`Alleged Obviousness of Claims 1–6, 11, 14, and 16–20 Over
`Smith and Decasper
`
`Petitioner contends that claims 1–6, 11, 14, and 16–20 would have
`
`been obvious over Smith and Decasper. Pet. 20–50. To support its
`
`contentions, Petitioner provides explanations as to how Smith and Decasper
`
`teach each claim limitation and its contention that there is a motivation to
`
`combine the references. Id. Petitioner also relies upon the Nielson
`
`Declaration (Ex. 1011) to support its positions. Patent Owner does not
`
`17
`
`
`
`IPR2020-00592
`Patent 10,225,378 B2
`
`present any arguments specific to the obviousness assertions for this ground.
`
`See generally Prelim. Resp.
`
`We begin our discussion with a brief summary of Smith and
`
`Decasper, and then address the evidence and arguments presented.
`
`1.
`
`Smith (Ex. 1012)
`
`Smith describes an AltaVista Firewall, which is primarily an
`
`application gateway firewall. Ex. 1012, 11. Smith’s firewall provides a
`
`control mechanism for traffic between two connected networks. Id. at 5.
`
`The packet-filtering firewall checks each packet’s IP addresses and port
`
`numbers against a set of security rules, and permits or blocks the packet
`
`accordingly. Id. Smith includes application-layer gateway (ALG)
`
`functionality that provides more thorough security checks by processing the
`
`packet through multiple protocol layers. Id. at 5, 10–11. Smith includes
`
`transparent proxying which intercepts a connection through a firewall, and
`
`redirects the packet to the appropriate gateway, where if the gateway allows
`
`the connection, it builds a new connection between the firewall and server,
`
`which is transparent to the user. Id. at 10. Smith provides several
`
`application level gateways including WWW (including Hypertext Transfer
`
`Protocol (HTTP), FTP, and secure socket layer (SSL) forwarding), Simple
`
`Mail Transfer Protocol (SMTP), and generic TCP or User Datagram
`
`Protocol (UDP). Id. at 11.
`
`2.
`
`Decasper (Ex. 1014)
`
`Decasper is directed to a software framework for network devices to
`
`improve the modularity, extensibility, flexibility, and performance of the
`
`devices. Ex. 1014, 1–2. Decasper presents a software architecture for
`
`routers that permits them to be easily updated to accommodate new
`
`18
`
`
`
`IPR2020-00592
`Patent 10,225,378 B2
`
`protocols as they are developed. Id. at 1. Thus, Decasper describes a router
`
`software architecture that “allows code modules, called plugins, to be
`
`dynamically added and configured at run time.” Id. In addition, the
`
`Decasper design has the ability to “bind different plugins to individual
`
`packet flows.” Id.
`
`Although Decasper describes an implementation of this framework in
`
`a router, Decasper discusses several other possible applications. Ex. 1014,
`
`2. For example, Decasper states that the software architecture is “well suited
`
`to Application Layer Gateways (ALGs), and to security devices like
`
`Firewalls.” Id.
`
`Decasper’s architecture supports the concept of flows. Ex. 1014, 3.
`
`This is a consideration because “multimedia data sources and applications
`
`(e.g., real-time audio/video) will produce longer lived packet streams with
`
`more packets per session.” Id. Specifically, Decasper provides “[e]fficient
`
`mapping of individual packets to flows, and the ability to bind flows to
`
`plugin instances.” Id.
`
`In mapping data packets to flows, sets of flows are specified using
`
`filters. Ex. 1014, 3. Decasper provides an example of a filter that matches
`
`all TCP traffic from a certain network to a certain host. Id. A packet
`
`matching a particular filter will be passed to the plugin instance that has
`
`been “bound to that filter.” The filter lookup to determine the right plugin
`
`instance to which a packet should be passed happens only for the first packet
`
`in a burst. Id. Subsequent packets get this information from a “fast flow
`
`cache.” Id. This cache stores temporarily the information gathered by
`
`processing the first packet in the burst. Id.
`
`19
`
`
`
`IPR2020-00592
`Patent 10,225,378 B2
`
`In Decasper, “flow tables” are used to cache the flows. Ex. 1014, 5.
`
`Flow tables allow for fast lookup times for arriving packets that are part of
`
`cached flows. Id. Decasper also describes filter tables that store bindings
`
`between filters and plugins. Id. Decasper additionally describes gates in the
`
`data path, which are placed wherever interactions with plugins are to take
`
`place. Id. Decasper describes this architecture as “highly mobile” and
`
`“scalable.” Id. at 6.
`
`3.
`
`Analysis
`
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness.10 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`a)
`
`Independent claim 1
`
`The Petition asserts the combination of Smith and Decasper teaches
`
`all the limitations
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