Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper 47
` Entered: July 17, 2019
`
`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
`Patent 9,722,815 B2
`____________
`
`
`Before DEBRA K. STEPHENS, GARTH D. BAER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`DECISION
`
`Granting in Part Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`571-272-7822
`
`
`
`
`
`
` Paper 47
` Entered: July 17, 2019
`
`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
`Patent 9,722,815 B2
`____________
`
`
`Before DEBRA K. STEPHENS, GARTH D. BAER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`DECISION
`
`Granting in Part Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`I. INTRODUCTION
`Nicira, Inc.1 (“Patent Owner”) filed a Request for Rehearing (Paper
`
`27, “Request” or “Req. Reh’g”) of our Decision to Institute (Paper 25,
`“Decision” or “Dec.”) entered on November 15, 2018. Patent Owner’s
`Request seeks reconsideration of our Decision granting institution of post-
`grant review with respect to claims 1–11 as indefinite under 35 U.S.C.
`§ 112(b).
`
`For the reasons provided below, we grant-in-part Patent Owner’s
`Request.
`
`II. LEGAL STANDARDS
`The party requesting rehearing bears the burden of showing that the
`
`decision should be modified (37 C.F.R. § 42.71(d)). A request for rehearing
`“must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each mater was
`previously addressed” (id.).
`
`When rehearing a decision on a petition, we review the decision for an
`abuse of discretion (see 37 C.F.R. § 42.71(c)). An abuse of discretion may
`be indicated if a decision is based on an erroneous interpretation of law, if a
`factual finding is not supported by substantial evidence, or if the decision
`represents an unreasonable judgment in weighing relevant factors (see Star
`Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold
`P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203
`
`
`1 Nicira, Inc. identifies VMware, Inc. as an additional real party in interest.
`(Paper 5, 3).
`
`
`
`2
`
`
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`Case PGR2018-00063
`Patent 9,722,815 B2
`
`F.3d 1305, 1315–16 (Fed. Cir. 2000)). With this in mind, we address the
`arguments Patent Owner presents.
`
`III. ANALYSIS
`A. Claim 1: 35 U.S.C. § 112(b)
`1. Argument that Petitioner did not advocate the basis for institution in the
`decision
`In the Petition, Petitioner alleged the limitation “setting another MP
`
`network flow parameter based on the optimal multipath network flow
`setting” is indefinite (Pet. 19). Patent Owner argues that the reasoning stated
`in the Decision on page 20 was not explicitly argued by Petitioner (Req.
`Reh’g 3). In particular, Patent Owner contends “Petitioner failed to identify
`which of the . . . words or phrases specifically have a meaning that is
`unclear, or why they are unclear” (id. (quoting Paper 17 (“Prelim. Resp.”)
`26)). Thus, according to Patent Owner, Petitioner “never argued this as a
`basis for alleging that claim 1 is indefinite . . . and thus, could not have
`possibly met its burden to establish that claim 1 is more likely than not
`indefinite on this basis” (id. at 3–4).
`Based on the record before us, we disagree. The reasoning now
`identified by Patent Owner is our analysis of Patent Owner’s own argument
`from Patent Owner’s Preliminary Response (Prelim. Resp. 31). Specifically,
`Patent Owner identifies and asserts the following is a new argument
`formulated by the Board: “[t]he cited portions of the ’815 patent do not
`discuss ‘setting another parameter’, rather, those portions describe updating
`or changing a parameter that is already set” (Req. Reh’g 3 (citing Dec. 19–
`20)). However, the “cited portions of the ’815 Patent” were cited by Patent
`Owner in the Preliminary Response on page 31 (see Dec. 19 (“[T]he
`
`
`
`3
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`Patent 9,722,815 B2
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`portions cited by Patent Owner discuss updating or changing: … (Prelim.
`Resp. 31 (citing ’815 Patent, Ex. 1001, 9:38–54))”). Thus, the text identified
`by Patent Owner from the Decision at page 20 is our analysis of Patent
`Owner’s own argument, not a “Board formulated” argument as Patent
`Owner now asserts.
`
`For these reasons, we are not persuaded we misapprehended or
`overlooked any argument, based on the record before us.
`
`2. Argument that “setting” is the same as updating or changing
`Patent Owner next asserts that we overlooked Patent Owner’s
`
`argument that the claim 1 limitation “‘setting another MP parameter’ is clear
`and definite on its face,” and overlooked “the evidence cited in support
`thereof” (Req. Reh’g 5 (citing Prelim Resp. 27–28)). Moreover, according
`to Patent Owner, we did “not address the fundamental issue of whether one
`of ordinary skill in the art would even need to resort to the contents of the
`specification to understand the meaning of the above-quoted limitation, or
`explain why the language on the face of the claim is unclear or indefinite”
`(id. at 5). Patent Owner further argues that the Specification describes “an
`example of ‘setting another MP flow parameter[’ as] changing a load-
`balancing setting to a new replication setting for future packets in the MP
`flow” (Req. Reh’g 5–6). Patent Owner again argues “Petitioner did not
`allege that the word ‘setting’ was unclear’” and that if Petitioner had, Patent
`Owner could have explained “that ‘setting’ is the same as updating or
`changing” (id. at 6).
`Based on the record before us, we disagree we overlooked the
`argument because our Decision analyzes Patent Owner’s argument regarding
`the meaning of “setting” and the cited section of the ’815 Patent (Dec. 19–
`
`
`
`4
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`Case PGR2018-00063
`Patent 9,722,815 B2
`
`20). Our Decision quotes Patent Owner’s cited section of the ’815 Patent
`and explains why “setting” is indefinite:
`
`Therefore, the claim is unclear as to what the “setting
`another . . . parameter” refers. The cited portions of the ’815
`Patent do not discuss “setting another parameter”; rather, those
`portions describe updating or changing a parameter that is
`already set. At this juncture, we have not identified portions of
`the ’815 Patent that would support Patent Owner’s
`interpretation. Accordingly, based on this record, we determine
`the claim, even when read in light of the ’815 Patent’s
`Specification, fails to delineate the bounds of the invention, to
`an ordinarily skilled artisan
`(Dec. 20 (referring to cited portions of the ’815 Patent, Ex. 1001, 9:38–54)).
`The above quotation addresses Patent Owner’s argument. Thus, as we
`explained, Patent Owner’s Specification describes “updating or changing” a
`parameter but not “setting another MP network flow parameter.”
`Accordingly, based on the record before us, we determined Petitioner has
`shown, more likely than not, that the limitation is indefinite. Patent Owner,
`however, has the opportunity to develop the record during the trial.
`
`For these reasons, we are not persuaded we misapprehended or
`overlooked Patent Owner’s argument.
`
`3. Argument for claim 1 that Nautilus is the correct indefiniteness standard
`for PGRs
`Patent Owner asserts that the Decision misapprehended or overlooked
`
`Patent Owner’s argument that the standard set forth in Nautilus, Inc. v.
`Biosig Instruments, Inc., 134 S. Ct. 212 (2014), is the correct standard to be
`applied in post-grant review (PGR) proceedings (Req. Reh’g 7, 11–12, 15–
`16; Prelim. Resp. 25–26). Patent Owner cites no controlling authority that
`supports this assertion (Prelim. Resp. 25–26).
`
`
`
`5
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`Case PGR2018-00063
`Patent 9,722,815 B2
`
`We set forth in our decision that claims are given their broadest
`
`reasonable construction (Dec. 9–10). Nevertheless, we determined that
`Petitioner has shown, more likely than not, that at least one of claims 1–6
`and 8–11 of the ’815 Patent is indefinite under 35 U.S.C. § 112(b) under
`both the Nautilus standard and the standard articulated in In re Packard, 751
`F.3d 1307 (Fed. Cir. 2014)2 (see Dec. 17–20 (claim 1), 20–23 (claim 6), 23–
`25 (claim 8)). Moreover, Patent Owner’s Request fails to show how we
`misapprehended or overlooked or any persuasive arguments why the claims
`would be definite under either the Nautilus or the Packard standards. We
`considered all of Patent Owner’s arguments, but determined Petitioner had
`nevertheless satisfied its burden sufficiently for institution.
`
`For these reasons, we are not persuaded that we erroneously
`interpreted the law.
`
`4.
`
` Argument that the claim 1 limitation “setting another MP network flow
`parameter” is clear and definite on its face
`Patent Owner asserts that we misapprehended or overlooked both
`
`Patent Owner’s argument that the claim 1 limitation “setting another MP
`network flow parameter” is clear and definite on its face and the evidence
`cited in support thereof (Req. Reh’g 5 (citing Prelim. Resp. 27–28; Ex. 2003
`¶¶ 37–41)).
`
`2 In Packard, the Federal Circuit stated “[a] claim is indefinite when it
`contains words or phrases whose meaning is unclear” (In re Packard, 751
`F.3d 1307, 1310, 1314 (Fed. Cir. 2014)). In Nautilus, the Supreme Court
`stated “a patent is invalid for indefiniteness if its claims, read in light of the
`specification delineating the patent, and the prosecution history, fail to
`inform, with reasonable certainty, those skilled in the art about the scope of
`the invention” (Nautilus, 134 S. Ct. at 2124).
`
`
`
`
`6
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`Case PGR2018-00063
`Patent 9,722,815 B2
`
`We disagree because claims are not construed on their face, as argued
`
`by Patent Owner, but under both Nautilus and Packard, claims are read in
`light of the specification. Specifically, Nautilus states “a patent is invalid for
`indefiniteness if its claims, read in light of the specification . . . and the
`prosecution history, fail to inform, with reasonable certainty, those skilled in
`the art about the scope of the invention” (Nautilus, 134 S. Ct. at 2124).
`Under Packard, claims are construed in light of the specification and “[a]
`claim is indefinite when it contains words or phrases whose meaning is
`unclear” (Packard, 751 F.3d at 1310, 1314). Moreover, our Decision
`properly interprets the “setting another MP network flow parameter” in light
`of the Specification (Dec. 19–20).
`
`For these reasons, we are not persuaded that we misapprehended or
`overlooked Patent Owner’s argument or that we erroneously interpreted the
`law.
`
`B. Claim 6: 35 U.S.C § 112(b)
`1. Argument that Petitioner did not argue that claim 6 is indefinite because
`claim 6 is missing punctuation or needs rewording
`Claim 6 recites:
`The edge-gateway multipath method of claim 1 wherein a software as
`a service (SaaS) application interacts with the edge device and the
`gateway to determine a value of a specified network characteristic
`communicatively coupling the SaaS application with the edge device
`and resetting the QoS parameter based on the value of the specified
`network characteristic
`(’815 Patent, 13:14–20).
`Patent Owner asserts that Petitioner did not specifically assert that
`claim 6 is indefinite for the exact reason that the claim needs punctuation
`
`
`
`7
`
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`Case PGR2018-00063
`Patent 9,722,815 B2
`
`between “characteristic” and “communicatively” or needs rewording for
`parallel structure, or otherwise needs amendment to clarify the meaning as
`stated in the Decision at page 22 (Req. Reh’g 8–9). Patent Owner asserts
`that, because of this, Petitioner did not meet its burden under 35 U.S.C
`§ 324(a).3
`We disagree because we find Petitioner put forth sufficient argument
`and evidence to demonstrate sufficiently for purposes of institution that
`claim 6 is more likely than not indefinite. Specifically, Petitioner pointed
`out the meaning of “a value of a specified network characteristic
`communicatively coupling the SaaS application with the edge device” is
`unclear (Pet. 21–22 (emphasis added)).
`Based on the record before us, we agree. Although we determined an
`ordinarily skilled artisan would have known a value or network
`characteristic could not be communicatively coupled to an application, we
`agreed with Petitioner that the meaning of the limitation was unclear––the
`claim does not make clear what is communicatively coupled (Dec. 22).
`Thus, we agreed, for purposes of institution, that the claim as written is
`indefinite, conflicts with the Specification, and fails to adequately notify the
`public of the scope of the claim (id.). Our suggestion that the claim may be
`missing some punctuation, which would possibly clarify its meaning (id.),
`does not alter our determination that, based on the record before us, the
`claim is indefinite. Specifically, Petitioner’s argument that the limitation
`“appears to suggest that either a ‘value’ or a ‘network characteristic’ is
`
`
`3 35 U.S.C. § 324(a) requires that “the information presented in the petition
`. . . would demonstrate that it is more likely than not that at least 1 of the
`claims challenged in the petition is unpatentable.”
`
`
`
`8
`
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`Case PGR2018-00063
`Patent 9,722,815 B2
`
`communicatively coupling an application to an edge device” (Pet. 21–22)
`makes evident that the claim is indefinite and appears to need punctuation
`between “characteristic” and “communicatively” or other amendment, as
`stated in the Decision on page 22. Based on this record, we find Petitioner
`put forth sufficient argument and evidence to demonstrate that claim 6 is
`more likely than not indefinite. Patent Owner has not persuaded us we
`misapprehended or overlooked the facts.
`
`
`2. Argument that the claims must be read in view of the specification
`Patent Owner asserts that we misapprehended or overlooked the
`
`argument that the claims are viewed in light of the Specification (Req. Reh’g
`10–11). As discussed above, we disagree we overlooked Patent Owner’s
`arguments because we analyzed the claim in view of the Specification,
`especially the sections of the Specification cited by Patent Owner (Dec. 20–
`22 (citing Prelim. Resp. 34–37; ’815 Patent, 10:5–29, Fig. 8)).
`
`Accordingly, Patent Owner has not shown that we misapprehended or
`overlooked the facts presented in the Preliminary Response.
`
`3. Argument that Nautilus is the correct indefiniteness standard for PGRs
`Regarding claim 6, Patent Owner again asserts that Nautilus is the
`correct indefiniteness Standard for post grant reviews (Req. Reh’g 11–12).
`As discussed above in Section III.A.3., we determined, for purposes of
`institution, that Petitioner had sufficiently shown that the claims are more
`likely than not indefinite under both the Nautilus and Packard standards (see
`Dec. 21–23).
`
`
`
`9
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`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`C. Claim 7: 35 U.S.C § 112(b)
`1. Argument that Petitioner did not challenge the validity of independent
`claim 7 under 35 U.S.C. § 112(b)
`Patent Owner asserts that we erred by instituting review of claim 7
`
`under 35 U.S.C. § 112(b) because the Petition did not challenge the validity
`of claim 7 under 35 U.S.C. § 112(b) (Req. Reh’g 12 (citing Dec. 56, Pet. 17–
`25)).
`
`We agree. We erroneously instituted review of claim 7 under 35
`U.S.C. § 112(b). We modify our Decision to the extent that we do not
`institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-
`grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that
`these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).
`
`
`D. Claim 8: 35 U.S.C. § 112(b)
`1. Argument that the use of the language “the edge device passes . . . a
`local configuration to the gateway” is entirely consistent with passing
`enterprise-specific configuration data to the gateway
`Claim 8 recites “wherein the 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, wherein the
`gateway uses the initial setup configuration to automatically create multiple
`isolated configurations-per-enterprise” (’815 Patent, claim 8). Patent Owner
`asserts that we overlooked its argument in the Preliminary Response at page
`43 that the Specification supports the interpretation that the recited “initial
`setup configuration” used by the gateway is enterprise-specific configuration
`
`
`
`10
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`Case PGR2018-00063
`Patent 9,722,815 B2
`
`data (Req. Reh’g 12–14; Prelim. Resp. 43 (citing ’815 Patent 5:63–6:2,
`9:54–58)).
`We disagree we overlooked this argument because we addressed, in
`the Decision at pages 24–25, Patent Owner’s argument and the portion of the
`Specification cited by Patent Owner in support. Specifically, Patent
`Owner’s argument was considered and addressed in the Decision as follows:
`Patent Owner further points to the preceding limitations recited
`in the claim, and contends although the “‘gateway’ did not
`initially possess the ‘enterprise-specific configuration data,’ it
`had to obtain it from the ‘edge device’” (Prelim. Resp. 40).
`
`Patent Owner further points to the Specification as
`support (Prelim. Resp. 42–43 (citing ’815 Patent, 5:63–
`6:2,9:54–58)). Specifically, the Specification describes
`“[e]nterprise-specific configuration data, including available
`gateways, can be downloaded . . . the available gateway(s) can
`be connected to by the entity in the cloud with the enterprise-
`specific configuration data” ([’]815 Patent, 5:67–6:1).
`
`Claim 8, however, recites “the gateway has no initial
`setup configuration,” “a local configuration” is passed to the
`gateway, and “wherein the gateway uses the initial setup
`configuration to automatically create” (’815 Patent, 14:32–41).
`Thus, even in light of the ’815 Patent, the claim contradicts
`itself in reciting the gateway does not have an initial setup
`configuration and then uses the initial setup configuration.
`Although Patent Owner contends the gateway uses “enterprise-
`specific configuration data,” the claim does not recite this
`(Dec. 24). Indeed, the claim does not recite the gateway uses the local
`configuration to “automatically create multiple isolated configurations-per-
`enterprise.” We determined, based on the record before us, “the claim, in
`light of the Specification, more likely than not, fails to delineate the bounds
`of the invention, to a skilled artisan” (id. at 25).
`
`
`
`11
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`Case PGR2018-00063
`Patent 9,722,815 B2
`
`Accordingly, Patent Owner has not shown that we misapprehended or
`
`overlooked the argument presented in the Preliminary Response on page 43.
`
`2. Argument that Claim 8 is definite to one of ordinary skill in the art when
`considered in light of the Specification
`Patent Owner asserts that we overlooked the argument “that one of
`
`ordinary skill in the art would have been able to ascertain the scope and
`meaning of claim 8 when considered in light of the specification of the ’815
`patent” (Req. Reh’g 14 (citing Prelim. Resp. 39–43)).
`We disagree because the Decision at pages 24–25 addresses Patent
`Owner’s arguments regarding the claim’s scope and meaning to an
`ordinarily skilled artisan in light of the Specification (Dec. 24–25 (citing
`Prelim. Resp. 39–44)). A request for rehearing is not an opportunity to
`express mere disagreement with our Decision, or with our weighing of the
`evidence. Accordingly, Patent Owner has not shown that we
`misapprehended or overlooked the argument presented in the Preliminary
`Response on page 43.
`
`3. Argument that Nautilus is the correct indefiniteness Standard for PGRs
`Regarding claim 8, Patent Owner again asserts that Nautilus is the
`correct indefiniteness Standard for post-grant reviews (Req. Reh’g 15–16).
`As discussed above in Section III.A.3., we determine that our analysis and
`conclusions in the Decision support that claim 8 is more likely than not
`indefinite under 35 U.S.C. § 112(b) under both the Nautilus and Packard
`Standards (see Dec. 23–25).
`
`
`
`12
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`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`IV. CONCLUSIONS
`Insofar as we have addressed above the assertions set forth in
`
`Petitioner’s Request for Rehearing, the Request is granted.
`
`Patent Owner’s Request for Rehearing is granted with respect to the
`institution of Claim 7 under 35 U.S.C. § 112(b). We modify the Order of the
`Decision to the extent that we do not institute on claim 7 under 35 U.S.C.
`§ 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of
`the ’815 Patent on the challenge that these claims are indefinite and
`unpatentable under 35 U.S.C. § 112(b) (Dec. 56).
`
`For all other aspects, we determine, however, Patent Owner has not
`demonstrated that our Decision is based on an erroneous interpretation of
`law, is based on a factual finding not supported by substantial evidence, or
`represents an unreasonable judgment in weighing relevant factors (see Star
`Fruits, 393 F.3d at 1281). Accordingly, we are not persuaded that we
`abused our discretion when instituting review, and Patent Owner’s Request
`for Rehearing is denied with respect to making any modification to our
`Decision other than the Order as discussed above or as noted below.
`
`V. ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Request for Rehearing is granted
`with respect to the institution of claim 7 under 35 U.S.C. § 112(b). We
`modify the Order of the Decision to the extent that we do not institute on
`claim 7 under 35 U.S.C. § 112(b). All other grounds of institution are
`
`
`
`13
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`
`unchanged. The Order in the Decision on page 56, second “ORDERED”
`statement, is modified to read as follows:
`ORDERED that pursuant to 35 U.S.C. § 324(a), a post-grant review
`of claims 1–6 and 8–11 of the ’815 Patent is instituted on the
`challenge that these claims are indefinite and unpatentable under 35
`U.S.C. § 112(b);
`
`and
`FURTHER ORDERED that, with respect to all other parts of Patent
`
`Owner’s Request for Rehearing, the Request is denied.
`
`
`
`
`
`
`
`14
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`Case PGR2018-00063
`Patent 9,722,815 B2
`
`PETITIONER:
`
`Chad Tillman
`chad@ti-law.com
`
`Jeremy Doerre
`jdoerre@ti-law.com
`
`PATENT OWNER:
`
`Scott Cummings
`scott.cummings@dentons.com
`
`Kevin Greenleaf
`kevin.greenleaf@dentons.com
`
`
`
`15
`
`
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