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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`
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`DISPERSIVE NETWORKS, INC.
`Petitioner
`
`v.
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`NICIRA, INC.
`Patent Owner
`
`
`_____________________
`
`Case PGR2018-00063
`Patent 9,722,815
`_____________________
`
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
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`
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`Table of Contents
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`INTRODUCTION AND RELIEF REQUESTED .................................. 1
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`I.
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`II. THE SUBSTITUTE CLAIMS MEET ALL THE REQUIREMENTS
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`OF 37 C.F.R. § 42.221 ............................................................................................... 3
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`A. Nicira Proposes a Reasonable Number of Substitute Claims .............. 3
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`B. The Claim Amendments Are Responsive to at Least One Ground of
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`Unpatentability Involved in the Trial ..................................................................... 3
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`C. The Amendments Do Not Enlarge the Scope of the Claims or
`
`Introduce New Subject Matter ................................................................................ 4
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`D. The Original Disclosure of the Patent Fully Supports Each Substitute
`
`Claim ............................................................................................................. 5
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`III. CLAIM CONSTRUCTION ..................................................................19
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`IV. THE SUBSTITUTE CLAIMS ARE PATENTABLE ..........................20
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`A. Substitute Claims Are Patent Eligible ...............................................20
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`B. Substitute Claims Are Definite ..........................................................20
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`B. The Substitute Claims Are Patentable over the Prior Art ................233
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`V. CONCLUSION .....................................................................................25
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`
`
`
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`Contingent Motion to Amend
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`PGR2018-00063
`U.S. Patent No. 9,722,815
`
`
`I.
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`INTRODUCTION AND RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221, Patent Owner Nicira,
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`Inc. ( “Nicira” or “Patent Owner”) moves to amend (“Motion”) U.S. Patent No.
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`9,722,815 (“the ’815 patent”), contingent upon the outcome of the present trial. If
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`any of Claims 1, 6 or 8 are deemed unpatentable by the Board, Nicira requests that
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`the Board grant this Motion to Amend and issue the corresponding substitute claim
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`presented herein.
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`The substitute claims meet all of the requirements of 35 U.S.C. § 326(d) and
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`37 C.F.R. § 42.221. Each amendment is responsive to a ground of unpatentability
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`involved in this proceeding, does not seek to enlarge the scope of the claims or
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`introduce new subject matter, proposes a reasonable number of substitute claims,
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`sets forth detailed written description support for each proposed substitute claim,
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`and includes a claim listing which clearly identifies the proposed changes.
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`Moreover, this Motion follows the guiding principles set forth in Western
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`Digital Corp. v. SPEX Techs., Inc., IPR2018–00082, –00084 (Paper 13),
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`designated as informative by the Board. In this regard, although Nicira is required
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`to demonstrate that it has met each of the statutory and procedural obligations set
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`forth in 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221, Nicira does not bear the
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`burden of persuasion with respect to the patentability of the substitute claims
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`presented in this motion. Aqua Products Inc. v. Matal, 872 F.3d 1290, 1306 (Fed.
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`Page 1 of 25
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`Contingent Motion to Amend
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`PGR2018-00063
`U.S. Patent No. 9,722,815
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`Cir. 2017) (en banc). Because the requirements set forth in 35 U.S.C. § 326(d) and
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`37 C.F.R. § 42.221 have clearly been satisfied, Petitioner bears the burden to
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`establish by a preponderance of the evidence that the Motion should be denied on
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`grounds of unpatentability of the substitute claims. Bosch Auto. Serv. Sols., LLC v.
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`Matal, 878 F.3d 1027, 1040 (Fed. Cir. 2017). Because the substitute claims
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`contain at least all of the same elements as the original claims, the substitute claims
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`are patentable for at least the same reasons explained in detail in the concurrently
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`filed Patent Owner Response (“POR”).
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`Should the Board find any issued claim unpatentable in this proceeding,
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`Nicira respectfully requests that the Board grant this Motion to Amend with
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`respect to each corresponding substitute claim presented herein. More specifically:
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`(i) contingent upon a finding of unpatentability of claim 1, cancel claim 1 and
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`substitute claim 12 therefor, and cancel claims 2–5 and substitute claims 13–16
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`therefor (to adjust dependencies only); (ii) contingent upon a finding of
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`unpatentability of claim 6, cancel claim 6 and substitute claim 17 therefor; and (iii)
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`contingent upon a finding of unpatentability of claim 8, cancel claim 8 and
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`substitute claim 18 therefor, and cancel claims 9–11 and substitute claims 19–21
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`therefor (to adjust dependencies only). For any claim that the Board finds
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`Petitioner failed to meet its burden to demonstrate unpatentability, the Board need
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`not consider the amendments of any such claim(s) addressed in this Motion.
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`Page 2 of 25
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`
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`Contingent Motion to Amend
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`PGR2018-00063
`U.S. Patent No. 9,722,815
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`II. THE SUBSTITUTE CLAIMS MEET ALL THE REQUIREMENTS
`OF 37 C.F.R. § 42.221
`
`As indicated in its Order of December 19, 2018, this Motion has been
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`authorized by the Board upon consultation during a conference call on December 7,
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`2018. Thus, Patent Owner’s obligations under 37 C.F.R. § 42.221(a) are satisfied.
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`This Motion is being filed, consistent with the Scheduling Order, concurrently with
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`Patent Owner’s Response. Therefore, the timeliness requirement of 37 C.F.R.
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`§ 42.221(a)(1) is satisfied.
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`A. Nicira Proposes a Reasonable Number of Substitute Claims
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`Nicira proposes only one substitute claim for each original claim is seeks to
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`replace, and is thus presumptively reasonable in number. 37 C.F.R. § 42.221(a)(3).
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`B.
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`The Claim Amendments Are Responsive to at Least One Ground
`of Unpatentability Involved in the Trial
`
`The proposed substitute claims are responsive to one or more grounds of
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`patentability at issue in this proceeding. Petitioner has challenged the patentability
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`of claims 1–6 and 8–11 on 35 U.S.C. § 112(b) grounds. Petition, pp. 17–25. More
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`specifically, Petitioner alleges that claims 1, 6 and 8 are indefinite. The Board
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`instituted trial on all grounds, as required by SAS1. Decision on Institution, Paper
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`25 (“DI”), pp. 17–25. The proposed amendments seek to further clarify the claim
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`language, and remove any arguable doubt regarding the definiteness of these
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`
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`1 SAS Inst. Inc. v. Iancu, 584 U.S. ___, 138 S. Ct. 1348 (2018).
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`Page 3 of 25
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`Contingent Motion to Amend
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`PGR2018-00063
`U.S. Patent No. 9,722,815
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`claims. The definiteness of the proposed substitute claims is explained, supra.
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`Thus, 37 C.F.R. § 42.221(a)(2)(i) is satisfied.
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`C. The Amendments Do Not Enlarge the Scope of the Claims or
`Introduce New Subject Matter
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`Proposed substitute claims 12, 17 and 18 do not enlarge the scope of the
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`original claims (1, 6 and 8) that they proposed to replace. None of the amendments
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`remove any element from these claims. Rather, the proposed amendments, at a
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`minimum, clarify and add meaning to the existing claim elements of claims 1, 6
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`and 8. See, Thermalloy, Inc. v. Aavid Eng’g, Inc., 121 F.3d 691, 692 (Fed. Cir.
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`1997); see also, Declaration of Dr. Nader F. Mir, Ph.D. (Ex. 2033) at ¶¶ 138–149.
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`In addition, the proposed substitute dependent claims 13–16 and 19–21 are
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`amended only to reflect their new dependency from the substitute independent
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`claims (12 and 18), and are clearly not broader than the issued claims. See, Ex.
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`2033, ¶149. Accordingly, the scope of the original claims (1–6 and 8–11) is not
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`enlarged by the proposed amendments. Finally, as demonstrated in the next
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`section, the proposed substitute claims are well supported by the original
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`disclosure, so they do not introduce any new subject matter. See 37 C.F.R. §
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`42.221(a)(2)(ii). Ex. 2033, ¶¶150–152.
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`Page 4 of 25
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`Contingent Motion to Amend
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`PGR2018-00063
`U.S. Patent No. 9,722,815
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`
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`D. The Original Disclosure of the Patent Fully Supports Each
`Substitute Claim
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`The attached Claims Appendix includes a claim listing of the contingent
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`substitute claims 12–21, identifying the proposed changes. 37 C.F.R. § 42.221(b).
`
`The ’815 patent issued from Application No. 14/321,818 (Ex. 1002 at pp. 1–
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`34); “the ’818 application”), filed on July 2, 2014; which is based on U.S.
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`Provisional Application No. 61/844,822 (“the ’822 application”), filed on July 10,
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`2013.
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`Nicira identifies the following portions of the original non–provisional ’818
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`application, which provide written description support for the proposed substitute
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`claims. As demonstrated below and in the accompanying Declaration of Dr. Nader
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`Mir, (Ex. 2033), one of ordinary skill in the art would have understood, based on
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`the original disclosure of the ’818 application, that the inventors had possession of
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`the claimed subject matter of the substitute claims at least as of the filing date of
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`the ’818 application.2 Ex. 2033, ¶¶150–187.
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`The issued claims of the ’815 patent were mainly the result of combining as–
`
`filed original dependent claims with as–filed original independent claims. Ex.
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`2 The issues currently at trial do not require an analysis of the provisional
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`application. If the effective filing date based upon the provisional application
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`disclosure becomes an issue, Nicira reserves the right to rely on the filing date of
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`the ’822 provisional application.
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`Page 5 of 25
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`Contingent Motion to Amend
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`PGR2018-00063
`U.S. Patent No. 9,722,815
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`1002, pp. 108–112. The following substitute claim elements (independent claims),
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`and dependent substitute claims, find verbatim support in at least the as–filed
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`original claims of the ’818 application: 12(a)–12(i); 13–16; 17(a); 18(a)–18(g);
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`18(j)–18(l); 18(o); and 19–21. Because the original claims form part of the
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`original description of the ’815 patent, there is no question that the inventors had
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`possession of the subject matter reflected in the limitations of the original claims of
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`the ’815 patent. Application of Gardner, 480 F.2d 879, 879–80 (C.C.P.A. 1973)
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`(“we consider the original claim in itself adequate ‘written description’ of the
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`claimed invention. It was equally a ‘written description’ whether located among
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`the original claims or in the descriptive part of the specification”). Thus, the focus
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`of the following chart is on the amended limitations of the substitute claims, and
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`other limitations needed for context. Nevertheless, the cited portions of Dr. Mir’s
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`Declaration (Ex. 2033) expressly discusses the support for each limitation of the
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`substitute claims.
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`Page 6 of 25
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`Contingent Motion to Amend
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`Claim 12 (subst. for cl. 1) – by
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`Support3
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`element “(x)”
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`12 (a). An edge-gateway muitipath
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`Abstract (p. 11); [0003] (p. 18); original cl.
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`method comprising:
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`1 (p. 12); Ex. 2033, ¶153.
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`12(b) providing an edge device in a
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`Abstract (p. 11); [0003] (p. 18); original cl.
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`local network communicatively
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`1 (p. 12); Ex. 2033, ¶154.
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`coupled with a cloud-computing
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`service in a cloud-computing
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`network;
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`12(c) automatically detecting a set of
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`Abstract (p. 11); [0003] (pp. 18–19);
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`wide area network (WAN) links
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`[0026] (p. 24); [0028] (p. 25); Figure 3
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`connected directly to the edge device
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`(p.3); original cl. 1(p. 12); Ex. 2033, ¶155.
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`or via an intermediate router;
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`12(d) automatically measuring the
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`Abstract (p. 11); [0003] (p. 19); [0028] (p.
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`bandwidth of the WAN links
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`25); original cl. 1 (p. 12); Ex. 2033, ¶156.
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`communicatively coupling the edge
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`device with a central configuration
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`point in the cloud-computing
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`network;
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`12(e) downloading, from the central
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`Abstract (p. 11); [0003] (p. 19); [0028] (p.
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`configuration point, an enterprise-
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`35); original cl. 1 (p. 12); Ex. 2033, ¶157.
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`
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`3 All page and paragraph references in this table are to the contents of the
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`original ’818 application disclosure, with reference made to Petitioner’s Exhibit
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`1002, pp. 1–34, in which the original ’818 application disclosure appears, or to the
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`Declaration of Dr. Mir (Ex. 2033) further explaining the contents thereof.
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`Page 7 of 25
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`PGR2018-00063
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`Contingent Motion to Amend
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`specific configuration data into the
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`edge device, wherein the enterprise-
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`specific configuration data comprises
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`a gateway information;
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`12(f) communicatively coupling the
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`Abstract (p. 11); [0003] (p. 19); [0027] (pp.
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`edge device with a gateway in the
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`24–25); [0029] (pp. 25–26); [0032] (p. 26);
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`cloud-computing network, wherein
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`original cls. 1 and 7 (pp. 12–13); Ex. 2033,
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`the communicatively coupling of the
`
`¶158.
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`edge device with the gateway
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`comprises a rnultipath (MP) protocol,
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`and wherein the MP protocol is
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`implemented by combining a set of
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`multiple network paths into a
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`composite connection that transmits a
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`set of data packets from a single user
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`packet flow across all oaths
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`simultaneously;
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`12(g) measuring an available
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`[0028] (p. 25); [0040] (p. 29); original cl. 2
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`bandwidth on each path of the set of
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`(p. 12); Ex. 2033, ¶159.
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`multiple network paths between the
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`edge device and the gateway;
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`12(h) utilizing a deep-packet
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`[0004] (p. 19);[0027] (p. 24); Figure 2
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`inspection engine to identify an
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`(p.2); [0037] (p. 28); original cl. 8 (p. 13);
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`application and an application type in
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`Ex. 2033, ¶160.
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`a MP network flow;
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`12(i) determining an optimal
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`[0027] (p. 24): “Appropriate measures can
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`Page 8 of 25
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`Contingent Motion to Amend
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`multipath network flow setting that
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`PGR2018-00063
`U.S. Patent No. 9,722,815
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`be applied to ensure the QoS of the specific
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`ensures a quality of service (QoS)
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`traffic based on the application . . . For
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`parameter of the multipath network
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`example, if the network traffic is identified
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`flow; and
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`
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`as voice traffic which is high business
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`priority, then forward error correction can
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`be performed to reduce or eliminate packet
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`loss.”; [0032] (p. 26): “In one embodiment,
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`peer 1 can be a client-side edge device and
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`peer 2 can be a cloud-based gateway
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`device. Peer 1 can transmit an
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`MP_INITIATE 402 to peer 2.
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`MP_CONTROL 408 (e.g. control
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`information such as QoS parameters,
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`treatment of data traffic flow parameters,
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`etc.) can be exchanged between peer 1 and
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`peer 2.”; [0037] (p. 28): “An MP system
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`can . . . identify the application and
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`application type of a given flow. This
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`information can be used to determine the
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`optimal MP packet flow settings to ensure
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`the MP packet flow's QoS . . .”; [0044] (p.
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`30): “QoS can be ensured for an application
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`by utilizing a combination of path selection
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`methods such as those provided supra, as
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`well as, network scheduling, packet
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`reordering and/or error correction. For
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`Page 9 of 25
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`Contingent Motion to Amend
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`PGR2018-00063
`U.S. Patent No. 9,722,815
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`example, when an MP packet flow is
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`initiated, an edge device (e.g. edge device
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`108) can identify the application and
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`determine the proper QoS methods to be
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`applied for this type of flow. . . Once the
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`edge device determines the methods to be
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`used, a control message can be sent to the
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`gateway to ensure that the gateway (e.g.
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`gateway(s) 106) in turn has information as
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`to how to treat the MP packet flow”;
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`[0045], (p. 31): “[T]he edge device
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`identifies the application and determines
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`the proper QoS methods to apply for this
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`type of flow. As noted in supra, this
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`includes network scheduling, packet
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`reordering and/or error correction . . .”;
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`original cl. 9 (p. 13); Ex. 2033, ¶161.
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`12(j) [setting another] updating the
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`[0044] (pp. 30–31): “In the event the MP
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`MP network flow [parameter] setting
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`system (e.g. based on network conditions)
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`based on the optimal multipath
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`and/or an administrator indicates that the
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`network flow setting.
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`methods should be changed, the edge
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`device can again signal the gateway with a
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`control message. The methods can be
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`updated without interruption to the service
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`or traffic. For example, upon receipt of the
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`control message from the edge, the
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`Page 10 of 25
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`Contingent Motion to Amend
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`U.S. Patent No. 9,722,815
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`gateway can update the QoS methods of
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`the flow without deleting the existing flow.
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`As a result, the next packet to be sent can
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`use the updated scheduling policies and
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`link selection methods that were
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`transmitted without interruption. For
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`example, an MP packet flow that is being
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`load balanced and is changed to replication
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`as loss increases in the network can load
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`balance packets 1-n until the control
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`message is received. . . Accordingly,
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`packets beginning with n+1 can begin to be
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`replicated.”; [0045] (p. 31): “[T]he edge
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`device identifies the application and
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`determines the proper QoS methods to
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`apply for this type of flow. . . .[t]he SaaS
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`application may modify these policies
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`dynamically to ensure that the end-user gets
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`the best experience possible given the
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`current last-mile characteristics.”; [0027]
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`(p. 25): “Based on the levels of loss and
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`jitter in the network and the sensitivity of
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`the traffic to them, a mitigation mechanism
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`is put into play. . .”; Ex. 2033, ¶162–163.
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`Claim 13 (subst. for cl. 2)
`
`Support
`
`See CLAIMS APPENDIX
`
`See support for cl. 12; Fig. 1 (102); original
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`Page 11 of 25
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`Contingent Motion to Amend
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`cl. 3 (p. 13); [0021] (p. 22); Ex. 2033;
`
`¶164.
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`Claim 14 (subst. for cl. 3)
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`Support
`
`See CLAIMS APPENDIX
`
`See support for cl. 12; original cl. 4 (p. 13);
`
`[0004] (p. 19); Ex. 2033; ¶165.
`
`Claim 15 (subst. for cl. 4)
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`Support
`
`See CLAIMS APPENDIX
`
`See support for cl. 12; original cl. 5 (p. 13);
`
`[0004] (p. 19); Ex. 2033; ¶166.
`
`Claim 16 (subst. for cl. 5)
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`Support
`
`See CLAIMS APPENDIX
`
`See support for cl. 12; original cl. 6 (p. 13);
`
`[0025] (p. 23); Ex. 2033; ¶167.
`
`Claim 17 (subst. for cl. 6) – by
`
`Support
`
`element “(n)”
`
`17(a) The edge-gateway multipath
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`See support for cl. 12; Ex. 2033; ¶168.
`
`method of claim [1] 12,
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`17(b) wherein a software as a service
`
`[0045] (p. 31): “In one example, SaaS
`
`(SaaS) application interacts with the
`
`applications may also directly interact with
`
`edge device and the gateway to
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`the software in the edge device (e.g. edge
`
`determine a value of a specified
`
`device 108 in FIG. 1) or gateway(s) (e.g.
`
`network characteristic of a network
`
`gateway 106 in FIG. 1). This can be done,
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`communicatively coupling the SaaS
`
`for example, to query the health of the
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`application with the edge device,
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`last-mile and to provision network
`
`bandwidth and characteristics in the last-
`
`mile to ensure QoS for the application. The
`
`edge device and/or the gateway(s) . . .
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`determine how the last-mile from the edge
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`Page 12 of 25
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`Contingent Motion to Amend
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`device to the gateway (e.g. in both
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`directions) is performing.”; [0026] (p. 23):
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`“In some examples, edge device 108 and
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`the gateway(s) 106 can straddle the
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`'bottleneck' section of a communication
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`network (e.g. the ‘last-mile’ —a final leg
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`of a communication networks delivering
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`communications connectivity to a network
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`host such as an enterprise computing
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`system).”; Figure 8; original cl. 11 (pp 13–
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`14); Ex. 2033; ¶169.
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`17(c) and [resetting] resets the QoS
`
`[0045] (p. 31): “With this information the
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`parameter based on the value of the
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`SaaS application may throttle back
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`specified network characteristic.
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`bandwidth so that the application continues
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`to operate without congesting the network
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`further and yet function reasonably well.
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`By default. when an end-user accesses an
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`application (which may run anywhere in
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`the public cloud), the edge device identifies
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`the application and determines the proper
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`QoS methods to apply for this type of
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`flow. . . The SaaS application may modify
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`these policies dynamically to ensure that
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`the end-user gets the best experience
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`possible given the current last-mile
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`characteristics.”; original cl. 11 (pp 13–
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`Page 13 of 25
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`Contingent Motion to Amend
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`Claim 18 (subst. for cl. 8) – by
`
`Support
`
`14); Ex. 2033, ¶169.
`
`element “(n)”
`
`18(a) An edge-gate ay multipath
`
`[0017] (p. 20); original cl. 16 (p. 15); Ex.
`
`network system comprising:
`
`2033, ¶170.
`
`18(b) an edge device in a local
`
`Abstract (p. 11); [0003], (p. 18): original cl.
`
`network communicatively coupled
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`16 (p. 15); Ex. 2033, ¶171.
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`with a cloud-computing service in a
`
`cloud computing network,
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`18(c) wherein, upon installation, the
`
`Abstract (p. 11); [0003] (pp. 18–19); [0026]
`
`edge device automatically detects a
`
`(p. 24); [0028] (p. 25); Figure 3; original cl.
`
`set of wide area network (WAN) links
`
`16 (p. 15); Ex. 2033, ¶172.
`
`connected to the edge device,
`
`18(d) wherein the edge device
`
`Abstract (p. 11); [0003] (p. 19);
`
`automatically measures the WAN link
`
`[0028] (p. 25); original cl. 16 (p. 15); Ex.
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`attributes,
`
`2033, ¶173.
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`18(e) wherein the edge device
`
`Abstract (p. 11); [0003] (p. 19); [0028] (p.
`
`downloads, from an orchestrator, an
`
`25); [0049] (p. 33); Figure 9 (p. 9); [0051]
`
`enterprise-specific configuration data
`
`(p. 33); Figure 10; original cl. 16; (p. 15);
`
`and a set of service chain rules,
`
`Ex. 2033, ¶174.
`
`wherein the enterprise-specific
`
`configuration data comprises a
`
`gateway information, wherein the
`
`edge device is communicatively
`
`couple the orchestrator,
`
`18(f) and wherein the edge device
`
`Abstract (p. 11); [0003] (p. 19); [0004] (p.
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`Page 14 of 25
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`
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`Contingent Motion to Amend
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`communicatively couples with a
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`PGR2018-00063
`U.S. Patent No. 9,722,815
`
`19); [0028] (p. 25); [0032] (p. 26)
`
`gateway in the cloud-computing
`
`[0044] (p. 30); See, [0049] (p. 33)& [0051]
`
`network based on the enterprise-
`
`(p. 33) above regarding “service chain
`
`specific configuration data and the set
`
`rules”; [0053] (p. 34); original cl. 16 (p.
`
`of service chain rules,
`
`15); Ex. 2033, ¶175.
`
`18(g) and wherein the
`
`Abstract (p. 11); [0003] (p. 19); [0027] (pp.
`
`communicatively coupling of the
`
`24–25); [0029] (pp. 25–26); [0032] (p. 26);
`
`edge device with the gateway
`
`original cl. 16 (p. 15); original cl. 7 (p. 13);
`
`comprises a multipath (MP)
`
`Ex. 2033, ¶176.
`
`protocolprotocol, and wherein the MP
`
`protocol is implemented by
`
`combining a set of multiple network
`
`paths into a composite connection that
`
`transmits a set of data packets from a
`
`single user packet flow across all
`
`paths simultaneously,
`
`18(h) wherein the edge device
`
`[0027] (pp. 24–25); [0028] (p. 25): “In step
`
`measures an available bandwidth on
`
`302, WAN links that are connected directly
`
`each path of the set of multiple
`
`to the edge device can be detected and
`
`network paths between the edge
`
`measured without the need for an external
`
`device and the gateway,
`
`router. In step 304, a central configuration
`
`point in the cloud can be connected to . . .
`
`“In step 308, an available bandwidth on
`
`each path can be measured.”; Figure 3
`
`(p.3); [0029] (p. 25); [0040] (p. 29): “As a
`
`part of link characterization, the latency
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`Page 15 of 25
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`
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`Contingent Motion to Amend
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`
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`PGR2018-00063
`U.S. Patent No. 9,722,815
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`(e.g. one-way packet delay), jitter (e.g.
`
`packet delay variation), loss and available
`
`bandwidth on the path can be measured.”;
`
`[0027] (p. 24): “The edge device 108 sends
`
`network packets, which may be control
`
`packets, data packets or management
`
`packets. Control packets or control traffic
`
`is used to sense the quality of the path . . .”
`
`original cl. 2 (p. 12); Ex. 2033, ¶177.
`
`18(i) and wherein the edge device
`
`[0004] (p. 19); [0032] (p. 26); [0037] (p.
`
`utilizes a deep-packet inspection
`
`28); [0044] (p. 30); [0045] (p. 31); original
`
`engine to identify an application and
`
`cl. 17 (p. 16); Ex. 2033, ¶178.
`
`an application type in a MP network
`
`flow;
`
`18(j) the orchestrator comprising a
`
`[0022] (p. 22); Abstract (p. 11); [0003] (p.
`
`central configuration point in the
`
`19); [0028] (p. 25); [0049] (p. 33); Figure 9
`
`cloud-computing network, wherein
`
`(p.9); See, [0049] (p. 33)& [0051] (p. 33)
`
`the orchestrator receives a heartbeat
`
`regarding “service chain rules”; original cl.
`
`communication from the edge device
`
`16 (p. 15); Ex. 2033, ¶179.
`
`and communicates the enterprise-
`
`specific configuration data and the set
`
`of service chain rules to the edge
`
`device as a response;
`
`18(k) a gateway comprising a network
`
`[0025] (p. 23); original cl. 16 (p. 16); Ex.
`
`node equipped for interfacing with
`
`2033, ¶180.
`
`another computer network utilizing
`
`Page 16 of 25
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`
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`Contingent Motion to Amend
`
`
`different communication protocols,
`
`wherein the gateway is implemented
`
`with the cloud-computing service,
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`PGR2018-00063
`U.S. Patent No. 9,722,815
`
`18(l) wherein the gateway has no
`
`[0004] (p. 19); [0044] (p. 30); original cl.
`
`initial setup configuration,
`
`19 (p. 16); Ex. 2033, ¶181.
`
`18(m) wherein the edge device passes
`
`[0004] (p. 19): “The edge device can pass
`
`the enterprise-specific configuration
`
`its enterprise identification and a local
`
`data, comprising an enterprise
`
`configuration to the gateway. . .”; [0003]
`
`identification of the edge device and a
`
`(p. 19): “The method further includes the
`
`local configuration, to the gateway,
`
`step of downloading, from the central
`
`configuration point, an enterprise-specific
`
`configuration data into the edge device.
`
`The enterprise-specific configuration data
`
`includes the gateway information. The
`
`edge device is communicatively coupled
`
`with a gateway in the cloud computing
`
`network.”; [0028] (p. 25): “In step 304, a
`
`central configuration point in the cloud can
`
`be connected to. Enterprise-specific
`
`configuration data, including available
`
`gateways, can be downloaded. In step 306,
`
`the available gateways can be connected to
`
`by the entity in the cloud with the
`
`enterprise-specific configuration data .”;
`
`[0053] (p. 34): “FIG. 10 depicts a gateway
`
`'service chaining' process. In step 1002 of
`
`Page 17 of 25
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`Contingent Motion to Amend
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`PGR2018-00063
`U.S. Patent No. 9,722,815
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`process 1000, a new service can be
`
`uploaded and configured in the orchestrator
`
`104. In step 1004, an edge profile and/or
`
`configuration can be updated to indicate
`
`that it can receive the new service. In step
`
`1006, the affected gateway(s) receive
`
`notification about new configuration and
`
`service that has to be enabled for the
`
`affected edges. In step 1008, the gateway
`
`processes can configure information for the
`
`new service.”; original cl. 19 (p. 16):
`
`“wherein the edge device passes an
`
`enterprise identification of the edge device
`
`and a local configuration to the gateway”;
`
`original claim 16 (p. 15): “wherein the edge
`
`device communicatively couples with a
`
`gateway in the cloud-computing network
`
`based on the enterprise-specific
`
`configuration data . . .”); Ex. 2033, ¶182.
`
`18(n) wherein the gateway uses the
`
`[0004] (p. 19): “The edge device can pass
`
`[initial] enterprise-specific
`
`its enterprise identification and a local
`
`configuration data to automatically
`
`configuration to the gateway. The gateway
`
`create multiple isolated
`
`uses the initial setup configuration to
`
`configurations-per-enterprise, and
`
`automatically create multiple isolated
`
`configurations-per-enterprise.”; [0044] (p.
`
`31): “The gateway can be a multi-tenant
`
`Page 18 of 25
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`
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`Contingent Motion to Amend
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`
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`PGR2018-00063
`U.S. Patent No. 9,722,815
`
`gateway wherein multiple customers with
`
`edge devices can connect to the same
`
`gateway without actually exposing any of
`
`their data to each other.”; Ex. 2033, ¶183.
`
`18(o) wherein the gateway is
`
`[0004] (p. 19); [0026] (p. 23); original cl.
`
`deployed as a virtual machine
`
`20 (p. 16); Ex. 2033, ¶184.
`
`gateway.
`
`Claim 19 (subst. for cl. 9)
`
`Support
`
`See CLAIMS APPENDIX
`
`See support for cl. 18; original cl. 17 (p.
`
`16); [0004] (p. 19); [0032] (p. 26); [0037]
`
`(p. 28); [0044] (pp. 30–31); [0045] (p. 31);
`
`Ex. 2033; ¶185.
`
`Claim 20 (subst. for cl. 10)
`
`Support
`
`See CLAIMS APPENDIX
`
`See support for cls. 18 and 19; original cl.
`
`18 (p. 16); [0044] (pp. 30–31); Ex. 2033;
`
`¶186.
`
`Claim 21 (subst. for cl. 11)
`
`Support
`
`See CLAIMS APPENDIX
`
`See support for cl. 18; original cl. 20 (p.
`
`16); [0004] (p. 19; Ex. 2033; ¶187.
`
`III. CLAIM CONSTRUCTION
`
`The Board construed “edge device” as “a device or virtual machine that
`
`provides routing functionality and that provides an entry point into a network.” DI,
`
`pp. 10–11. Nicira respectfully submits that the Board’s construction should not be
`
`construed so broadly such that a client device or an end–user device reads on the
`
`claimed “edge device.” Ex. 2033, ¶¶42–45. Nevertheless, even assuming that the
`
`Page 19 of 25
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`
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`Contingent Motion to Amend
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`PGR2018-00063
`U.S. Patent No. 9,722,815
`
`
`Board’s definition of “edge device” is correct, the substitute claims are well
`
`supported by the written description, and otherwise patentable. Nicira does not
`
`believe that, for purposes of this Motion, any other claim terms requires an explicit
`
`instruction, and should be afforded their plain and ordinary meaning.
`
`IV. THE SUBSTITUTE CLAIMS ARE PATENTABLE
`
`Nicira does not bear the burden of persuasion with respect to the
`
`patentability of the substitute claims presented in this motion. Aqua Prods., 872
`
`F.3d at 1306; Bosch Auto. 878 F.3d at 1040. Nevertheless, Nicira asserts that the
`
`substitute claims are clearly patentable.
`
`A.
`
`Substitute Claims Are Patent Eligible
`
`The DI correctly observed that the original claims are not directed to an
`
`abstract idea, do not preempt the use of this approach in all fields, and an
`
`“inventive concept” is found in the ordered combination of steps recited in
`
`independent claims . DI, pp. 16–17. This analysis holds true for the proposed
`
`substitute claims. See, POR, pp. 73–86; Ex. 2033, ¶¶128–137.
`
`B.
`
`Substitute Claims Are Definite
`
`The substitute claims are clearly definite under 35 U.S.C. §112(b). With
`
`regard to claim 1, as the Board correctly noted, one of ordinary skill in the art
`
`would understand that the recited “the optimal multipath network flow setting”
`
`refers back to the previously recited “optimal multipath network flow setting” in
`
`Page 20 of 25
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`
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`Contingent Motion to Amend
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`PGR2018-00063
`U.S. Patent No. 9,722,815
`
`
`the “determining” limitation, and is thus definite. DI, p. 19. However, the Board
`
`found that the “setting” limitation of original claim 1 is more likely than not
`
`indefinite because it is unclear as to what the “setting another parameter” refers.
`
`DI, p. 20. In reaching this determination, the Board observed that the portions of
`
`the specifications cited by Nicira in his preliminary response all discussed
`
`“updating or changing,” but not “setting another.” DI, p. 20. Substitute claim 12
`
`amends original claim 1 by changing “setting another” to “updating,” and
`
`changing “parameter” to “setting,” thus improving consistency within the language
`
`of the claim itself, and more closely tracking the description contained in the
`
`specification (“[setting another] updating the MP network flow [parameter]
`
`setting . . .”). See CLAIMS APPENDIX; Ex. 2033, ¶189
`
` With regard to claim 6, first, the Board agreed that petitioner failed to
`
`establish that claim 6 is more likely than not indefinite based on the grounds
`
`contained in the Petition, but found the language itself to be unclear “given its
`
`structure.” DI, p. 22. Therefore, substitute claim 17 amends claim 6 to create
`
`parallel structure, making it clear that the SaaS application (i) interacts with the
`
`edge device and the gateway to determine the value of a specific network
`
`characteristic of a network communicatively coupling . . ., and (ii) resets the QoS
`
`parameter based on the value of the specified network characteristic.
`
`Page 21 of 25
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`
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`Contingent Motion to Amend
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`
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`PGR2018-00063
`U.S. Patent No. 9,722,815
`
`Second, the
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