`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISPERSIVE NETWORKS, INC.
`
`Petitioner
`
`v.
`
`NICIRA, INC.
`
`Patent Owner
`____________
`
`Case PGR2018-00063
`U.S. Patent 9,722,815
`____________
`
`
`PETITIONER’S SUR-REPLY IN FURTHER OPPOSITION TO PATENT
`OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`Filed: July 15, 2019
`
`
`
`TABLE OF CONTENTS
`
`
`TABLE OF CONTENTS ............................................................................................ i
`TABLE OF AUTHORITIES .................................................................................... ii
`
`Introduction ........................................................................................................ 1
`I.
`II. Proposed substitute claim 12 is indefinite based on the recitation of “updating
`the MP network flow setting based on the optimal multipath network flow
`setting.” ............................................................................................................... 1
`III. Proposed substitute claim 12 enlarges the scope of the claim as compared to
`original claim 1. .................................................................................................. 4
`IV. Proposed substitute claim 18 introduces new matter in the form of new
`recitation that “the enterprise-specific configuration data” downloaded
`from the orchestrator “compris[es] an enterprise identification of the edge
`device”. ............................................................................................................... 8
`V. Proposed substitute claim 18 enlarges the scope of the claim as compared to
`original claim 8. ................................................................................................ 11
`VI. Conclusion ......................................................................................................... 12
`
`CERTIFICATE OF SERVICE .................................................................................. I
`
`
`
`
`
`
`-i-
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Interval Licensing, LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014) ........................................................................ 2, 6
`
`
`Nautilus Inc. v. Biosig Instruments, Inc.,
`134 S.Ct. 2120 (2014) ................................................................................... 2, 4, 6
`
`
`Statutes
`
`35 U.S.C. § 112 .................................................................................................passim
`
`35 U.S.C. § 326 .................................................................................................... 8, 12
`
`
`
`
`
`
`
`
`-ii-
`
`
`
`
`I.
`
`
`Introduction
`
`Petitioner Dispersive Networks, Inc. (“Petitioner”) submits this sur-reply to
`
`respond to the Patent Owner’s Reply to Opposition to the Motion to Amend (PO
`
`Rep. to Opp.) filed by Patent Owner Nicira, Inc. (“Patent Owner”).
`
`II.
`
`
`
`Proposed substitute claim 12 is indefinite based on the recitation of
`“updating the MP network flow setting based on the optimal multipath
`network flow setting.”
`
`Proposed substitute claim 12 recites “determining an optimal multipath
`
`network flow setting”, and “updating the MP network flow setting based on the
`
`optimal multipath network flow setting.”
`
`a. The Patent Owner suggests that that “[t]he ‘optimal multipath network flow
`
`setting’ provides the antecedent basis for ‘the MP network flow setting,’” PO Rep.
`
`to Opp. at 2. The Patent Owner appears to be suggesting that the word “optimal” is
`
`just omitted, and the limitation involves “updating the [determined, optimal] MP
`
`network flow setting,” but this interpretation is not in accord with the Specification
`
`or the examples provided by the Patent Owner. To illustrate this, consider the
`
`example the Patent Owner repeatedly references of “modifying the MP settings for
`
`packet flow ‘based on’ the initial load-balancing setting to a replication setting for
`
`future packets in the MP flow.” PO Rep. to Opp. at 5 (quoting Ex. 2033, paragraph
`
`56). In this example, the “determine[ed] [] optimal multipath network flow setting”
`
`
`
`1
`
`
`
`would be the “initial load-balancing setting.” However, rather than this load
`
`balancing setting being updated, it is simply replaced by a replication setting.
`
`Would replacing the determined, optimal load balancing setting with a
`
`replication setting qualify as “updating” that determined, optimal load balancing
`
`setting? More generally, is the limitation of “updating the [determined, optimal] MP
`
`network flow setting” read on by replacing the determined, optimal MP network
`
`flow setting with another network flow setting? Does the limitation of “updating the
`
`MP network flow setting” require updating the determined, optimal MP network
`
`flow setting itself? Petitioner has no idea, because it is impossible to answer these
`
`questions with any certainty. Despite the Patent Owner having an opportunity to
`
`present amendments clarifying what is being claimed, the amended “claims, [even
`
`when] read in light of the patent's specification and prosecution history, fail to
`
`inform, with reasonable certainty, those skilled in the art about the scope of the
`
`invention,” Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2123 (2014),
`
`and fail to “provide objective boundaries for those of skill in the art.” Interval
`
`Licensing, LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
`
`b. This indefiniteness is only further reinforced by the additional recitation
`
`that “updating the MP network flow setting” is “based on the optimal multipath
`
`network flow setting”. This is problematic for the Patent Owner’s proffered
`
`interpretation in that this would mean that this limitation should be read as “updating
`
`
`
`2
`
`
`
`the [determined optimal] MP network flow setting based on the [determined]
`
`optimal multipath network flow setting,” i.e. that this limitation should be read as
`
`updating the setting based on itself. To try to extricate itself from this situation, the
`
`Patent Owner offers three minor variations on the same basic theory.
`
`In particular, the Patent Owner alleges that “the updated setting is clearly
`
`‘based on’ the initial setting.” PO Rep. to Opp. at 4, that “the updated setting is
`
`‘based on’ the properties associated with the initial setting,” Id. at 5, and that “the
`
`initial setting forms the basis [] for the update[d],” Id., setting. This entire line of
`
`reasoning is flawed in that the Patent Owner improperly focuses on whether an
`
`“updated setting is [] ‘based on’ the initial setting,” Id. at 4, rather than on whether
`
`an updating step itself is “based on” a setting, as recited in the claim. The Patent
`
`Owner’s own thermostat example illustrates this clearly, as even assuming arguendo
`
`that an updated setting of 72 degrees could somehow be characterized as being
`
`“based on” a prior setting of 70 degrees, this is a far cry from an updating step being
`
`“based on” the prior setting of 70 degrees. Similarly in a network flow context, even
`
`assuming arguendo that an “updated setting is [] ‘based on’ the initial setting,” Id. at
`
`4,1 this is a far cry from the updating step itself being “based on” the prior determined
`
`“optimal multipath network flow setting.” Instead, as the Patent Owner has
`
`
`1 Or that an “updated setting is ‘based on’ the properties associated with the initial
`setting,” Id. at 5, or that “the initial setting forms the basis [] for the update[d],” Id.,
`setting.
`
`
`
`3
`
`
`
`explained, this updating step is based on “changes in the network conditions, or
`
`intervention by an administrator.” Patent Owner Response at 30.
`
`Overall, it makes no sense to recite “updating the [determined optimal] MP
`
`network flow setting based on the [determined] optimal multipath network flow
`
`setting, ”2 and it is abundantly clear that the proposed substitute claim “fail[s] to
`
`inform, with reasonable certainty, those skilled in the art about the scope of the
`
`invention.” Nautilus, 134 S. Ct. at 2123.
`
`III. Proposed substitute claim 12 enlarges the scope of the claim as compared
`to original claim 1.
`
`
`
`Original claim 1 recites “determining an optimal multipath network flow
`
`setting” and “setting another MP network flow parameter based on the optimal
`
`multipath network flow setting”, while substitute claim 12 amends this second step
`
`to instead recite “updating the MP network flow setting based on the optimal
`
`multipath network flow setting”.
`
`a. The Patent Owner suggests that there is no “substantive difference between
`
`‘setting another’ and ‘updating,’” PO Rep. to Opp. at 6 (citing Ex. 2033, paragraph
`
`
`2 The Patent Owner’s own confusion on this point stems from, and only serves to
`further evidence, the indefiniteness of the original claim. The Patent Owner has
`been unsuccessful in attempting to amend the claim to render it definite because the
`Patent Owner has no idea how the original claim language relates to the
`Specification. Indeed, the Patent Owner’s attempts to interpret the phrase “based
`on” in various manners lacking any support from the Specification illustrates that
`the Patent Owner itself is not even “informed, with reasonable certainty, … about
`the scope of the invention.” Nautilus, 134 S. Ct. at 2123.
`4
`
`
`
`
`
`142), and that “’setting another[]’ … is clearly analogous to ‘updating’.” PO Rep. to
`
`Opp. at 7 (citing Ex. 2033, paragraph 58). However, the Patent Owner’s own expert
`
`has undermined this theory which requires improperly ignoring the term “another”.
`
`Returning to the Patent Owner’s thermostat example, during the deposition of
`
`Patent Owner’s expert, Petitioner’s counsel inquired regarding a scenario where “the
`
`temperature of the thermostat is initially set at 72 and later is changed to 70,” Ex.
`
`1020 at 133, and specifically asked whether, “if you're changing the value of the set
`
`temperature parameter from 72 to 70, does that constitute changing another
`
`parameter of the thermostat?” Id. at 135. In response, Patent Owner’s expert clearly
`
`answered “[n]o,” Id., thus confirming that “if you're changing the value of the set
`
`temperature parameter from 72 to 70… that [does not] constitute changing another
`
`parameter of the thermostat.” Id. at 135.
`
`Analogously, contra the suggestion of the Patent Owner, changing the value
`
`of a previously set MP network flow parameter or setting would not constitute
`
`“setting another MP network flow parameter” or setting. Thus, the Patent Owner’s
`
`expert has, with his subsequent testimony, clearly undermined his prior allegation
`
`that there is no “substantive difference between ‘setting another’ and ‘updating,’”
`
`PO Rep. to Opp. at 6 (citing Ex. 2033, paragraph 142), by acknowledging that there
`
`is a substantive difference, e.g. “if you're changing the value of the set temperature
`
`
`
`5
`
`
`
`parameter from 72 to 70… that [does not] constitute changing another parameter of
`
`the thermostat,” Ex. 1020 at 135, even though it would clearly constitute updating.
`
`b. Moreover, under the Patent Owner’s theory, in original claim 1, the claim
`
`term “another MP network flow parameter” must be construed to encompass “the
`
`[determined, optimal] MP network flow setting”, otherwise amending the claim to
`
`recite “setting the MP network flow setting” rather than “setting another MP network
`
`flow parameter” would clearly broaden the claim.
`
`The problem with this theory is that this claim construction is clearly
`
`erroneous.3 Given that claim 1 recites “determining an optimal multipath network
`
`flow setting”, and then immediately thereafter recites “setting another MP network
`
`flow parameter based on the optimal multipath network flow setting”, it would be
`
`nonsensical to interpret “setting another MP network flow parameter based on the
`
`optimal multipath network flow setting” as “setting [the determined, optimal MP
`
`network flow setting] based on the optimal multipath network flow setting”. That
`
`is, the determined, optimal MP network flow setting is clearly not “another MP
`
`network flow parameter”.
`
`
`3 The Patent Owner’s confusion on this point and belief in such an erroneous claim
`construction only further evidences the indefiniteness of original claim 1. If the
`Patent Owner itself is not even “informed, with reasonable certainty, … about the
`scope of the invention,” Nautilus, 134 S. Ct. at 2123, then how can the claims
`possibly “provide objective boundaries for those of skill in the art.” Interval
`Licensing, 766 F.3d at 1371.
`
`
`
`6
`
`
`
`c. Further, the proposed claim amendments would allow for some settings to
`
`be encompassed by the claim which would not be understood by an ordinary artisan
`
`to be a “parameter”. The Patent Owner has indicated that “[t]he term ‘parameter’
`
`would have been understood by one of ordinary skill in the art as ‘an item of
`
`information,’” PO Rep. to Opp. at 24 (citing Ex. 2033 at 22, paragraph 47), but the
`
`‘815 Patent itself appears to use the word “setting” in a manner such that it is broader
`
`than simply “an item of information.” Petitioner offered the example that the ‘815
`
`Patent discloses that “[i]n some operational settings, computing system 700 may be
`
`configured…,” Ex. 1001 at col. 10, lines 37-41, and noted that such an operational
`
`setting would clearly not be understood as an “item of information.”
`
`In response, the Patent Owner merely alleges in a conclusory manner that this
`
`example “clearly fails to support the argument.” PO Rep. to Opp. at 8. The Patent
`
`Owner alleges that “Petitioner fails to even identify what the alleged ‘settings’ …
`
`are,” PO Rep. to Opp. at 8, apparently overlooking Petitioner’s specific
`
`identification that “such an operational setting would clearly not be understood as
`
`an ‘item of information.’” Petitioner’s Opposition at 5. The Patent Owner fails to
`
`even allege that such an operational setting is an “item of information”, much less
`
`explain how this is so.
`
`Further, contra the Patent Owner’s seeming confidence that parameters and
`
`settings are always synonymous, the Patent Owner’s own expert does not believe it
`
`
`
`7
`
`
`
`is possible to equate the term MP network flow setting to the term MP network flow
`
`parameter. For example, when asked “could an optimal multipath network flow
`
`setting be characterized as an MP network flow parameter?”, the Patent Owner’s
`
`expert indicated that “[y]ou are trying to either equate one term to another term or
`
`making one comprised of the other one,” and “[t]here is no such a thing in this
`
`patent.” Ex. 1020 at 108-109.4
`
`Overall, it is clear that proposed substitute claim 12 improperly “enlarge[s]
`
`the scope of the claim[],” 35 U.S.C. § 326(d)(3), as compared to original claim 1,
`
`both because it no longer requires “setting another MP network flow parameter”
`
`(emphasis added), and because the term “setting” allows for some settings to be
`
`encompassed by the claim which would not be understood by an ordinary artisan to
`
`be a “parameter”.
`
`IV. Proposed substitute claim 18 introduces new matter in the form of new
`recitation that “the enterprise-specific configuration data” downloaded
`from the orchestrator “compris[es] an enterprise identification of the
`edge device”.
`
`
`
`Original claim 8 of the ‘815 Patent recites that an “edge device downloads,
`
`from an orchestrator, an enterprise-specific configuration data”. To this, proposed
`
`
`4 Further, when asked “does a multipath network flow setting comprise a MP
`network flow parameter,” Ex. 1020 at 106, the Patent Owner’s expert indicated that
`“[t]his question cannot be answered.” Ex. 1020 at 107.
`8
`
`
`
`
`
`substitute claim 12 adds recitation that “the enterprise-specific configuration data[]
`
`compris[es] an enterprise identification of the edge device”.
`
`a. The Patent Owner suggests that “[a]s explained by the unrebutted and
`
`undisputed testimony of Dr. Mir, the specification of the ’815 patent makes it clear
`
`that the enterprise-specific configuration data obtained from the orchestrator
`
`“compris[es] ‘an enterprise identification of the edge device’ (enterprise-
`
`specific).” PO Rep. to Opp. at 9. Notably, however, far from this allegation being
`
`undisputed and unrebutted, Dr. Mir himself actually disputed and rebutted this
`
`allegation in his testimony. In particular, Petitioner’s counsel asked Dr. Mir if “the
`
`enterprise identification of the edge device would [] be part of the enterprise-specific
`
`configuration data that is downloaded from the orchestrator,”5 and Dr. Mir indicated
`
`that “there is no direct mention or explicit mention of it which is part of it or not part
`
`of it.” Ex. 1020 at 187. Indeed, when asked “where does the edge device get the
`
`enterprise identification of the edge device from?”, and “[i]s it present prior to
`
`downloading of the enterprise-specific configuration data from the orchestrator?”,
`
`the Patent Owner’s expert indicated that “I have not rendered any opinion, so I
`
`cannot opine on that.” Id.
`
`b. To try to support its allegation, the Patent Owner alleges that “the portion
`
`of Dr. Mir’s answer to that question that Petitioner leaves out explains that one of
`
`
`5 Ex. 1020 at 187.
`
`
`
`9
`
`
`
`ordinary skill in the art would understand that this identification ‘is always
`
`accompany[ing] the information that is directed to a – to a destination.’” PO Rep. to
`
`Opp. at 10. Notably, though, Dr. Mir’s statement appears to simply be noting that
`
`an identification of a destination is required to send information.6 This certainly
`
`does not appear to be intended to contradict his prior indication that, with respect to
`
`the question of “where does the edge device get the enterprise identification of the
`
`edge device from,” “I have not rendered any opinion, so I cannot opine on that.” Id.
`
`at 187.
`
`c. The Patent Owner further alleges that “[w]hen asked to give an example of
`
`a piece of data that would comprise or be part of the enterprise-specific configuration
`
`data, Dr. Mir clearly testified that this would include ‘an enterprise identification of
`
`the edge device.’” PO Rep. to Opp. at 10 (citing Ex. 1020 at 175:12-23).
`
`This simply is not true, however. Petitioner’s counsel asked Dr. Mir “with
`
`respect to the downloaded enterprise-specific configuration data, could you give an
`
`example of a piece of data that would comprise or that would be part of that
`
`enterprise-specific configuration data?” Ex. 1020 at 175. Dr. Mir’s answer was the
`
`furthest thing from “clear”, however, and he certainly did not testify “that this would
`
`include ‘an enterprise identification of the edge device.’” PO Rep. to Opp. at 10
`
`
`6 This is in accord with his immediately subsequent answer that “the information the
`gateway receives must be identified from where it is coming to what destination it
`is sent and what ID of the information.” Ex. 1020 at 188.
`10
`
`
`
`
`
`(citing Ex. 1020 at 175:12-23). Instead, he simply read from the claim language of
`
`the ‘815 Patent, reading that “’[t]he gateway has no initial setup configuration,
`
`wherein the edge device passes an enterprise identification of the edge device and a
`
`local configuration to the gateway’.” Ex. 1020 at 175. This language merely recites
`
`what the edge device passes to the gateway, and nowhere does this language indicate
`
`that the enterprise identification of the edge device was downloaded by the edge
`
`device from the orchestrator.
`
`V.
`
`
`
`Proposed substitute claim 18 enlarges the scope of the claim as compared
`to original claim 8.
`
`Original claim 8 of the ‘815 Patent recites that a “gateway uses [an] initial
`
`setup configuration to automatically create multiple isolated configurations-per-
`
`enterprise” (emphasis added). In contrast, substitute claim 12 recites that an “edge
`
`device downloads, from an orchestrator, an enterprise-specific configuration data”,
`
`that “the edge device passes the enterprise specific configuration data… to the
`
`gateway,” and that “the gateway uses the enterprise-specific configuration data to
`
`automatically create multiple isolated configurations-per-enterprise.”
`
`This amendment broadens the claim by no longer requiring the “gateway [to]
`
`use[] [an] initial setup configuration to automatically create [the] multiple isolated
`
`configurations-per-enterprise” (emphasis added), and instead allows such creation
`
`to be done using data passed to the gateway from the edge device after being
`
`downloaded from the orchestrator. This change, from use of an initial setup
`11
`
`
`
`
`
`configuration to use of subsequently received data, is clearly a change in the scope
`
`of the claim which broadens the claim by no longer requiring the use of an initial
`
`setup configuration.
`
`The Patent Owner seemingly has no response to this. Previously, the claim
`
`required the gateway to use an initial setup configuration. The claim no longer
`
`requires the gateway to use an initial setup configuration. Thus, the amendment to
`
`remove the requirement to utilize an initial configuration clearly “enlarge[s] the
`
`scope of the claims of the patent.” 35 U.S.C. § 326(d)(3).
`
`VI. Conclusion
`
`Petitioner respectfully submits that, for the foregoing reasons, the proposed
`
`substitute claims should be denied entry, and the Patent Owner’s Contingent Motion
`
`to Amend denied.
`
`
`Dated: July 15, 2019
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`Respectfully submitted,
`
`/Jeremy C. Doerre/
`
`Jeremy C. Doerre
`Reg. No. 62,146
`Back-up Counsel for Patent Owner
`Tillman Wright, PLLC
`jdoerre@ti-law.com
`704-248-4883
`
`
`
`12
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing PETITIONER’S SUR-REPLY IN FURTHER
`
`OPPOSITION TO PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`was served via email sent on the date indicated below using the following email
`
`address(es):
`
`
`
`Scott W. Cummings
`Lead Counsel for the Patent Owner
`scott.cummings@dentons.com
`
`
`Peter Yim
`Back-up Counsel for the Patent Owner
`peter.yim@dentons.com
`
`
`ipt.docketchi@dentons.com
`
`
`
`Dated: July 15, 2019
`
`
`
`
`
`
`
`
`
`Kevin Greenleaf
`Back-up Counsel for the Patent Owner
`kevin.greenleaf@dentons.com
`
`
`
`
`
`
`
`
`
`
`
`/Jeremy C. Doerre/
`Jeremy C. Doerre
`Reg. No. 62,146
`jdoerre@ti-law.com
`Back-up Counsel for Petitioner
`
`-I-
`
`
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