Trials@uspto.gov
`571-272-7822
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`Paper 12
`Entered: May 8, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`JUNIPER NETWORKS, INC.,
`Petitioner,
`
`v.
`
`MONARCH NETWORKING SOLUTIONS LLC,
`Patent Owner.
`____________
`
`IPR2024-00175
`Patent 8,693,369 B2
`____________
`
`
`Before THU A. DANG, CHARLES J. BOUDREAU, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 12
`Entered: May 8, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`JUNIPER NETWORKS, INC.,
`Petitioner,
`
`v.
`
`MONARCH NETWORKING SOLUTIONS LLC,
`Patent Owner.
`____________
`
`IPR2024-00175
`Patent 8,693,369 B2
`____________
`
`
`Before THU A. DANG, CHARLES J. BOUDREAU, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2024-00175
`Patent 8,693,369 B2
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`I.
`INTRODUCTION
`On November 10, 2023, Juniper Networks, Inc. (“Petitioner”) filed a
`Petition (“Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an inter
`partes review of claims 1–17 of U.S. Patent No. 8,693,369 B2 (“the ’369
`patent”). Paper 1. On February 26, 2024, Monarch Networking Solutions
`LLC (“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”).
`Paper 6.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition and any
`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.”
`For the reasons explained below, we determine that Petitioner has
`established a reasonable likelihood that it would prevail with respect to at
`least one challenged claim. Accordingly, we institute an inter partes review
`as to the challenged claims and grounds raised in the Petition.
`
`II. BACKGROUND
`A.
`The ’369 Patent
`The ’369 patent, titled “Method Of Routing A Data Packet In A
`Network and An Associated Device,” was filed on March 31, 2009, and
`issued on April 8, 2014. Ex. 1001, codes (54), (22), (45). The ’369 patent is
`directed to routing a data packet in a telecommunications network. Id. at
`code (57). In the context of the Internet networks, packets of data are
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`transported from source equipment to destination equipment identified by a
`destination address. Id. at 1:15–18. The Internet Protocol (IP) defines the
`syntax of packet addresses, and in particular IP version 4 (IPv4) provides for
`32-bit addresses, which can accommodate over four billion unique
`addresses. Bhattacharjee Decl. ¶¶ 27–29.1 As of the filing date of the ’369
`patent, it was commonly accepted in the IP service provider community that,
`despite the availability of over four billion public IPv4 addresses, exhaustion
`of this supply of addresses was inevitable. Ex. 1001, 1:53–54.
`One approach to ameliorating this problem was to store a Network
`Address Translation (NAT) table in a home gateway between terminal
`equipment of a private home network and the public telecommunications
`network, in which the table associated private IP addresses and the ports of
`the terminals inside the private network with the IPv4-type public IP address
`and a port of the gateway. Id. at 1:45–53.2 Using the NAT approach, when
`a terminal in the private network sent a packet through the gateway to the
`public network, the gateway, using the NAT table, translated the private IP
`address and a port number of the terminal to the public IP address and a port
`number of the gateway, thus allowing a single public IP address to stand in
`for numerous terminal IP addresses inside the private network. Ex. 1001,
`Fig. 1, 1:66–2:18; Bhattacharjee Decl. ¶¶ 32–34. The process was reversed
`
`
`1 “Bhattacharjee Decl.” refers to the Declaration of Dr. Samrat
`Bhattacharjee, filed by Petitioner in support of the Petition. Ex. 1003.
`2 Ports associated with devices on a network typically were assigned 16-bit
`port numbers, thus potentially accommodating approximately 65,000 ports
`for each device, although only a small portion were used for a given device.
`Bhattacharjee Decl. ¶ 31.
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`for incoming packets sent from the public network to an internal terminal via
`the gateway. Id.
`The ’369 patent modifies the NAT approach by taking advantage of
`the fact that pieces of terminal equipment do not make use simultaneously of
`all the 216 (i.e., 65,536) port number values available, and therefore each
`terminal equipment in the private network can be assigned a lesser range of
`port numbers that is uniquely associated with that terminal. Ex. 1001,
`7:12–28. The port number range is provided to the terminal in the form of a
`mask, which uses bit values to define the range. Id. at Figs. 2A, 2B,
`7:29–67. As a simplified example, using 10-bit binary numbers, a mask for
`the range 0–15 could be 1111110000, and performing a bit-wise AND
`operation between the mask and a particular number would yield a non-zero
`result if a bit value in the number equaled one in any of the six most
`significant bits of the number, which would indicate that the number fell
`outside the range. Bhattacharjee Decl. ¶¶ 41–43. If the AND operation
`yielded all zeros, then the port number would fall within the range. Id.
`With this arrangement, when a terminal in the private network sends a
`packet through the gateway to the public network, the gateway translates the
`private IP address of the terminal to the public IP address of the gateway but
`transmits the port number of the terminal (a number within the terminal’s
`assigned range) unchanged. Ex.1001, 13:42–50. The gateway stores the
`association of the port mask of the terminal with its private IP address.
`Id. at 8:44–48. For incoming packets sent from the public network to an
`internal terminal via the gateway, the gateway determines which port mask
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`the incoming port number belongs to, which in turn identifies the private IP
`address of the destination terminal. Id. at 8:21–36.
`The ’369 patent asserts:
`Thus the invention is based on an entirely novel and
`inventive approach to routing a data packet that relies on a
`unique combination consisting of the destination address of the
`packet, the port mask defining a range of port numbers that
`includes the destination port number of the received packet and
`a routing identifier of the destination terminal equipment. The
`invention thus makes it possible to assign the same routable
`primary address in the telecommunications network to a
`plurality of pieces of terminal equipment connected to that
`network and thus to economize on the use of public IP
`addresses without having recourse to the Operator NAT
`solution. The invention thus constitutes a solution to the
`exhaustion of IPv4 addresses that is simple, effective, and
`continuous with standard practices in the field.
`Ex. 1001, 3:11–29.
`
`Illustrative Claim
`B.
`Claims 1–6 and 15 generally relate to routing IP packets, and claims
`7–14, 16, and 17 generally relate to configuring terminal equipment for such
`routing. Prelim. Resp. 7. Independent claims 1 and 7 are, respectively,
`representative of the former and latter groups, and are reproduced below.3
`1. A method of routing an IP data packet in a
`telecommunications network to a destination equipment, said
`packet comprising a primary destination address and a
`destination port number, said method comprising, on reception
`of said packet, the following steps:
`
`3 The bracketed letters and paragraph arrangement are taken from the
`Petition but do not impact our analysis. Pet. viii, ix.
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`[a] determining a port mask assigned to the
`destination equipment, the port mask defining a
`range of port numbers to which the destination
`port number belongs;
`[b] selecting at least one identifier of the destination
`equipment of the packet from a plurality of
`equipment identifiers associated with said
`primary destination address based on the port
`mask; and
`[c] routing the packet to the destination equipment
`based on said identifier.
`7. A method of configuring a piece of terminal
`equipment connected to a telecommunications network,
`comprising, on reception of a configuration request sent by said
`equipment, the following steps:
`[a] assigning to said piece of terminal equipment a
`primary address shared with a plurality of pieces
`of terminal equipment;
`[b] assigning to said piece of terminal equipment a
`port mask defining a range of numbers dedicated
`to it and a routing identifier; and
`[c] sending to said piece of terminal equipment a
`configuration message comprising said primary
`address, said port mask, and said routing
`identifier.
`Ex. 1001, 14:15–28, 15:3–15.
`C.
`Evidence of Record
`Petitioner relies on the following references (Pet. 4):
` Biswas et al., US 8,019,889 B1, filed May 31, 2002, issued
`September 13, 2011 (“Biswas”). Ex. 1022.
` Kumar et al., US 7,394,809 B2, filed March 31, 2003, issued
`July 1, 2008 (“Kumar”). Ex. 1023.
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` Fangman et al., US 7,068,647 B2, filed July 11, 2001, issued
`June 27, 2006 (“Fangman”). Ex. 1024.
` King et al., US 8,032,639 B2, filed May 23, 2006, issued
`October 4, 2011 (“King”). Ex. 1025.
` RFC 791, “DARPA Internet Program Protocol Specification”
`(September 1981) (“RFC 791”). Ex. 1026.
`
`D.
`Asserted Challenges to Patentability
`Petitioner challenges the patentability of claims 1–17 of the ’369
`patent on the following bases (Pet. 4):
`
`Claims Challenged
`7–14, 16, 17
`1–3, 5, 6, 15
`1–3, 5, 6, 15
`4
`4
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`35 U.S.C. §4
`103
`103
`103
`103
`103
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`References
`Biswas, Kumar
`Fangman, Kumar
`King, Kumar
`Fangman, Kumar, RFC 791
`King, Kumar, RFC 791
`
`Real Parties in Interest
`E.
`The parties identify themselves as the real parties in interest. Pet. 1;
`Paper 10, 2.
`
`F.
`Related Proceedings
`The parties identify the following as related proceedings: Monarch
`Networking Solutions LLC v. Juniper Networks, Inc., Case No. 1:23-cv-
`
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`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included amendments to 35 U.S.C. §§ 102 and 103 that
`became effective after the filing of the application for the ’369 patent.
`Therefore, we apply the pre-AIA versions of these sections.
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`00670-TSE-LRV (E.D. Va.), transferred; Monarch Networking Solutions
`LLC v. Juniper Networks, Inc., Case No. 4:23-cv-05076-JST (N.D. Cal.),
`pending; Ex Parte Reexamination No. 90/015,315, pending. Pet. 2;
`Paper 10, 2.
`
`III. ANALYSIS OF PETITIONER’S CHALLENGE
`A.
`Legal Standards
`To prevail in its challenge, Petitioner must demonstrate by a
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d). “In an IPR, the petitioner has the burden from
`the onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). This burden of persuasion
`never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`of proof in inter partes review).
`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;
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`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`indicia of non-obviousness (also called secondary considerations), such as
`commercial success, long-felt but unsolved needs, and failure of others.5
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze grounds
`based on obviousness in accordance with the above-stated principles.
`
`Level of Skill in the Art
`B.
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103(a) requires us to resolve the level of
`ordinary skill in the pertinent art at the time of the invention. Graham, 383
`U.S. at 17. The person of ordinary skill in the art is a hypothetical person
`who is presumed to have known the relevant art at the time of the invention.
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be
`considered in determining the level of ordinary skill in the art include, but
`are not limited to, the types of problems encountered in the art, the
`sophistication of the technology, and educational level of active workers in
`the field. Id. In a given case, one or more factors may predominate. Id.
`Petitioner asserts that a person of ordinary skill in the art at the time of
`the alleged invention of the ’369 patent:
`[W]ould have had a B.S. degree in electrical engineering,
`computer engineering, computer science, or a related subject,
`and three years of work experience in computer networking,
`including experience with the IPv4 protocol, or a related field
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`5 No evidence of objective indicia of non-obviousness is of record.
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`. . . . Lack of professional experience can be remedied by
`additional education, and vice versa . . . .
`Pet. 14 (citing Bhattacharjee Decl. ¶¶ 62–64). Patent Owner does not
`dispute Petitioner’s proposal at this stage of the proceeding. Prelim. Resp. 9.
`Petitioner’s proposal is consistent with the level of ordinary skill in
`the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record,
`the level of ordinary skill is neither in dispute nor dispositive of any
`challenge. For purposes of this Decision, we apply Petitioner’s articulation.
`
`Claim Construction
`C.
`The Petition was accorded a filing date of November 10, 2023.
`Paper 3, 1. In an inter partes review for a petition filed on or after November
`13, 2018, a claim “shall be construed using the same claim construction
`standard that would be used to construe the claim in a civil action under
`35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). We apply the claim construction
`standard from Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc).
`Claim terms need only be construed to the extent necessary to resolve
`the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties submit that no claim
`construction is necessary. Pet. 14; Prelim. Resp. 16. We have not been
`presented with the need to construe any claim terms for purposes of this
`Decision.
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`D.
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`Alleged Obviousness of Claims 7–14, 16, and 17 over Biswas and
`Kumar
`Petitioner challenges claims 7–14, 16, and 17 as obvious over the
`combination of Biswas and Kumar. Pet. 14–38.
`
`1. Biswas
`Biswas, titled “Method And Apparatus For Making End-Host
`Network Address Translation (NAT) Global Address And Port Ranges
`Aware,” issued September 13, 2011, from an application filed May 31,
`2002. Ex. 1022, codes (54), (45), (22). Biswas describes performing
`network address translation on data transmitted within a computer network.
`Id. at 1:9–12. Biswas recognizes that the IPv4 address protocol provided for
`an insufficient number of unique addresses given the “explosion of the
`Internet.” Id. at 1:13–24. Biswas notes use of NAT tables (described above)
`as one then-existing solution to the limited address problem. Id. at 1:25–27.
`As an alternative, Biswas provides for a host in a private network to obtain
`from an edge router a local address, a global address and a global port range.
`Id. at Fig. 8, 2:25–56, 6:41–67, 11:25–39. When the host sends data to a
`destination in a public network, it uses the global address and a port number
`within its assigned port range. Id. at Fig. 8, 2:34–52, 11:50–57, 12:11–16.
`The edge routers keep track of the port ranges assigned to their associated
`hosts, so that the destination port number of incoming data is sent to the
`correct host. Id. at 7:1–8.
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`2. Kumar
`Kumar, titled “Method And Apparatus For Packet Classification
`Using A Forest Of Hash Tables Data Structure,” issued July 1, 2008, from
`an application filed March 31, 2003. Ex. 1023, codes (54), (45), (22).
`Biswas describes a packet classifier that uses rules that specify sets of
`criteria applied to a packet to determine whether to perform a specified
`action on the packet, such as accepting or blocking the packet. Id. at
`code (57), 7:14–38. A rule can be in the form of a mask to specify, for
`example, a range of values that a packet address of port number can have to
`satisfy the rule. Id. at 7:31–34, 7:39–48. For example, the bit mask
` may specify a rule that a packet is blocked if the
`destination port number is less than or equal to 1023. Id. at Figs. 7A, 7B,
`7:58–63, 8:5, 8:14–19, 8:34–35.
`3. The Combination of Biswas and Kumar
`Petitioner argues that one of ordinary skill would have been motivated
`to apply the use of masks to define port number ranges, as disclosed in
`Kumar, in order to implement the disclosed operation in Biswas of edge
`routers providing port ranges to hosts. Pet. 17–18 (citing Bhattacharjee
`Decl. ¶ 77). Petitioner argues that both references are in the same field of
`computer networking and routing data packets, that one of ordinary skill
`would have been motivated to look beyond Biswas for implementation
`details on how the edge router would provide port ranges to hosts, and that
`the use of masks as discussed in Kumar was a well-known technique for
`accomplishing that operation. Id. at 24–25 (citing Ex. 1023, 2:57–65;
`Bhattacharjee Decl. ¶¶ 97–98). Petitioner contends that it was well known
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`that the use of masks to define rages was computationally efficient and that
`persons of ordinary skill would have had a reasonable expectation of success
`in making the combination given that it involved straightforward use of
`masking techniques. Id. at 25–26 (citing Bhattacharjee Decl. ¶¶ 99–101).
`Patent Owner argues that one of ordinary skill would not have been
`motivated to turn to Kumar for additional implementation details because
`Biswas and Kumar are directed to separate aspects of networking — Kumar
`being directed exclusively with packet classification, not packet addressing.
`Prelim. Resp. 19–20 (citing Minoli Decl. ¶¶ 77–78).6 Patent Owner argues
`that Kumar fails to disclose the complexities and processes involved with
`routing packets that would arise in attempting the combination, and that
`Kumar’s complex search system using hash tables and rule hierarchies
`would add significant processing demands to any combination. Id. at 20–21
`(citing Minoli Decl. ¶¶ 78–79). Patent Owner further argues that neither
`Biswas nor Kumar discloses transmitting a port mask to a terminal device.
`Id. at 21 (citing Minoli Decl. ¶ 80).
`For purposes of this Decision, we determine that Petitioner has
`provided sufficiently articulated reasoning with rational underpinnings for
`the proffered combined teachings of Biswas and Kumar. Patent Owner
`focuses on specific details of the packet classification system of Kumar,
`whereas Petitioner relies on the combination of Biswas and Kumar. In re
`Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d
`413, 425 (CCPA 1981). “The test for obviousness is not whether the
`
`6 “Minoli Decl.” refers to the Declaration of Daniel Minoli, filed by Patent
`Owner in support of its Preliminary Response. Ex. 2001.
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`features of a secondary reference may be bodily incorporated into the
`structure of the primary reference. . . . Rather, the test is what the combined
`teachings of those references would have suggested to those of ordinary skill
`in the art.” In re Keller, 642 F.2d at 425; In re Mouttet, 686 F.3d 1322, 1332
`(Fed. Cir. 2012). “Combining the teachings of references does not involve
`an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965,
`968 (CCPA 1973). At this stage, we are persuaded by Petitioner’s
`declarant’s testimony that one of ordinary skill would have known to use the
`masking techniques exemplified by Kumar to implement the disclosed
`operation in Biswas of edge routers providing hosts with port number
`ranges. Bhattacharjee Decl. ¶¶ 77, 97–101. Accordingly, for purposes of
`this Decision, we accept Partitioner’s proffered combination of Biswas and
`Kumar.
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`4. Independent Claims 7, 10, 11, and 14
`For the “method of configuring” preamble of independent claim 7,
`Petitioner generally relies on the disclosures in Biswas of hosts connected to
`networks which are configured in response to DHCP (Dynamic Host
`Configuration Protocol) requests. Pet. 18–20 (citing Ex. 1022, Fig, 1,
`2:23–33, 2:47–3:57, 6:50–60, 7:9–12:19, 12:54–58; Bhattacharjee Decl.
`¶¶ 79–82).7
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`7 Based on the present record, we make no determination at this stage of the
`proceeding that the preamble of claim 7 (or of claims 10, 11, or 14) is
`limiting.
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`For claim requirement 7[a] of assigning a primary address,8 Petitioner
`relies on the disclosure in Biswas of edge routers providing multiple
`requesting hosts with the edge router’s primary address in response to DHCP
`requests. Pet. 20–21 (citing Ex. 1022, Fig. 3A, 1:42–45, 2:25–28, 6:50–7:7,
`7:62–8:15, 11:50–54; Bhattacharjee Decl. ¶¶ 83–86).
`For claim requirement 7[b] of assigning a port mask and routing
`identifier, Petitioner relies on the disclosure in Biswas of edge routers
`providing requesting hosts with a local address and a global port range in
`response to DHCP requests, and on the disclosure in Kumar of the use of
`masks to identify port ranges. Pet. 21–24 (citing Ex. 1022, Figs. 3A–3E,
`1:32–33, 6:37–7:7, 7:49–61; Ex. 1023, Fig. 7B, 7:31–8:64; Bhattacharjee
`Decl. ¶¶ 87–95). As discussed above, Petitioner persuasively demonstrates
`that one of ordinary skill would have combined Biswas and Kumar in this
`manner.
`For claim requirement 7[c] of sending a configuration message,
`Petitioner relies on the disclosure in Biswas of sending a DHCP reply to a
`requesting host. Pet. 26–27 (citing Ex. 1022, Fig. 5, 10:22–58;
`Bhattacharjee Decl. ¶¶ 102–104).
`Independent claim 10 is an apparatus claim directed to a configuration
`server that has similar requirements to method claim 7 and additionally
`requires a processor and communications unit performing the method steps
`
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`8 For economy of presentation, we refer to the portions of claim 7 identified
`by bracketed letters at Section II.B above, and paraphrase the referenced
`claim requirement, although the complete language of each claim
`requirement is the subject of our analysis.
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`of claim 7. Ex. 1001, 15:27–38. Petitioner’s challenge to claim 10 tracks
`that of claim 7 and further relies on disclosures in Biswas of edge routers
`that include processors and communication units. Pet. 30 (citing
`Bhattacharjee Decl. ¶¶ 110–113).
`Independent claim 11 is a method claim that includes a preamble
`establishing that a piece of terminal equipment receives a configuration
`message as specified in claim 7, additionally requires storage of the
`configuration data of the message, and further requires “before sending a
`data packet into the telecommunications network, selecting a port number in
`the range of port numbers defined by the port mask, said data packet
`comprising as source address the primary address of said piece of terminal
`equipment and as source port number the selected port number.” Ex. 1001,
`15:39–16:6. Independent claim 14 is an apparatus claim counterpart to
`method claim 11. Id. at 16:21–35. Petitioner’s challenge to claims 11 and
`14 refers to its analysis of claim 7 for the preambles of those claims, relies
`on the disclosure in Biswas of memory in hosts for storing data, and further
`relies on the disclosure in Biswas of hosts sending data by selecting a global
`address and a port number within the assigned port number range for
`inclusion in the data packet header. Pet. 30–33, 37–38 (citing Ex. 1022,
`Fig. 8, 11:25–12:28, 12:40–13:17, 13:45–57; Bhattacharjee Decl.
`¶¶ 114–119, 132–134).
`Other than arguing that the combination of Biswas with Kumar is not
`motivated, which we discuss above, Patent Owner does not specifically
`respond to Petitioner’s arguments regarding the requirements of independent
`claims 7, 10, 11, and 14. See generally Prelim. Resp. Nonetheless, the
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`burden remains on Petitioner to demonstrate unpatentability. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015). We determine, on the current record and for purposes of this
`Decision, that the information presented in the Petition demonstrates a
`reasonable likelihood that Petitioner will prevail in establishing that
`claims 7, 10, 11, and 14 are unpatentable under 35 U.S.C. § 103(a) over the
`combination of Biswas with Kumar.
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`5. Dependent Claims 8, 9, 12, 13, 16, and 17
`Claim 8 adds to claim 7 the step of:
`assigning to said piece of terminal equipment an identifier of a
`routing device adapted to route a data packet comprising said
`primary address as the destination address to said piece of
`terminal equipment, and the configuration message further
`comprising said routing device identifier.
`Ex. 1001, 15:16–22. For the claim 8 requirements, Petitioner relies on the
`disclosure in Biswas of gateway master 110 as the claimed routing device
`and attributes the global address of that component as the referenced
`“routing device identifier.” Pet. 27–28 (citing Bhattacharjee Decl.
`¶¶ 105–107). Petitioner cites the statement in Biswas:
`Gateway Master 110 translates local addresses of data received
`from a private network 108 into global addresses of data being
`output from the Gateway Master 110 to public network 112, and
`vice versa. The Gateway Master 110 also translates global
`addresses of data received from public network 112 into local
`addresses of data being output from the Gateway Master 110 to
`private network 108, and vice versa.
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`Ex. 1022, 6:12–19. Petitioner asserts that the global address of gateway
`master 110 is assigned to terminal equipment as part of the DHCP
`configuration process. Pet. 28 (citing Bhattacharjee Decl. ¶ 106).
`Claim 9 adds to claim 7 the requirement that “said configuration
`message is further sent to a routing device that routes to said piece of
`terminal equipment a data packet containing said primary address as the
`destination address.” Ex. 1001, 15:23–26. For the claim 9 requirement,
`Petitioner relies on the disclosure in Biswas of embodiments that employ a
`DHCP server that is separate from the edge router, in which the edge router
`operates a customer premises equipment that is operable as a DHCP relay.
`Pet. 28–29 (citing Ex. 1022, Fig. 3B, 7:9–10, 8:16–27; Bhattacharjee Decl.
`¶¶ 108–109).
`Claim 12 adds to claim 11 the requirement that “once an identifier of
`a routing device adapted to route a data packet comprising said primary
`address as the destination address to said piece of terminal equipment has
`been received, said method further comprises a step of sending the
`configuration data to said routing device.” Ex. 1001, 16:7–13. For the
`claim 12 requirement, Petitioner relies on the disclosure in Biswas of
`gateway master 110 as the claimed routing device, and attributes the global
`address of that component as the referenced “identifier of a routing device.”
`Pet. 33–34 (citing Ex. 1022, 6:12–24, 6:61–7:8; Bhattacharjee Decl.
`¶¶ 120–123). Petitioner asserts that the gateway master is adapted to route
`data packets to terminal equipment. Id. Petitioner argues that a person of
`ordinary skill in the art would have understood that the configuration data
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`used to send packets to the terminal equipment would have to have been sent
`to the gateway master. Id.
`Claim 13 adds to claim 11 the requirement that “on reception of a data
`packet comprising a destination address, a port number, and a routing
`identifier, said method further comprises a step of verifying that the port
`number belongs to the range of port numbers defined by the port mask, and a
`step of rejecting said packet if result of the verification is negative.”
`Ex. 1001, 16:14–19. For the claim 13 requirement, Petitioner relies, inter
`alia, on the hosts in Biswas being assigned a port range, and that therefore
`one of ordinary skill would have understood that a host would not have used
`port numbers outside its assigned range. Pet. 37 (citing Ex. 1022, 2:23–33,
`2:46–65, 3:6–14; Bhattacharjee Decl. ¶ 130). Petitioner further relies on the
`disclosure in Kumar of the use of rules to block incoming packets, and
`argues that it would have been obvious to adopt Biswas to use the rule
`approach of Kumar to reject data packets with port numbers outside the
`assigned range. Id. at 35–36 (citing Ex. 1023, 7:14–38, 8:1–19, 9:1–2;
`Bhattacharjee Decl. ¶¶ 126, 130). Petitioner’s argument in support of the
`combination tracks that summarized in Section III.D.3 above, that Biswas
`does not explain specific implementation details regarding the handling of
`incoming packets that have non-complying port numbers, and therefore a
`person of ordinary skill would have been motivated to adopt the rule
`approach of Kumar. Id. at 36–37 (citing Bhattacharjee Decl. ¶¶ 127–131).
`Claim 16 requires a “non-transitory computer readable medium
`encoded with program code instructions executable by a microprocessor to
`perform the method according to claim 7,” and claim 17 correspondingly
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`sets forth the same requirement for claim 11. Ex. 1001, 16:39–44. For these
`requirements, Petitioner relies on the disclosure in Biswas of computer
`implementation details supporting the disclosed embodiments. Pet. 38
`(citing Ex. 1022, 3:59–4:4, 13:58–14:16, 17:63–18:21; Bhattacharjee Decl.
`¶¶ 135–136).
`Other than arguing that the combination of Biswas with Kumar is not
`motivated, which we discuss above, Patent Owner does not specifically
`respond to Petitioner’s arguments regarding dependent claims 8, 9, 12, 13,
`16, and 17. See generally Prelim. Resp. Nonetheless, the burden remains on
`Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800
`F.3d at 1378.
`With that in mind, at this stage we cannot accept Petitioner’s analysis
`regarding dependent claims 8 and 12. Petitioner assumes that the global
`address that is used by gateway master 110 corresponds to both the “primary
`address” and the “routing device identifier” referenced in claims 8 and 12,
`and that this global address of the gateway master is provided via the DHCP
`configuration. Pet. 28, 33–34. However, the only global address disclosed
`in Biswas that is provided to hosts is the global address of the edge routers.
`Ex. 1022, 6:50–60. Likewise, Petitioner assumes, for claim 12, that the
`gateway master routes data packets to terminal equipment, and therefore it
`would be apparent that the gateway master had to have the configuration
`data. Pet. 34. However, it is the edge routers that route data to the
`terminals, and therefore only those components need the configuration data.
`Biswas actually suggests that the disclosed embodiment on which Petitioner
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`relies bypasses the address translation process that otherwise would be
`performed by the gateway master. Ex. 1022, 12:22–27.
`Other than for claims 8 and 12,
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