`
`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
`_____________
`
`Record Of Oral Hearing
`Held: August 13, 2019
`_____________
`
`
`Before DEBRA K. STEPHENS, GARTH D. BAER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`CHAD TILLMAN, ESQ.
`JEREMY DOERRE, ESQ.
`Tillman Wright, PLLC
`11325 North Community House Road
`Suite 250
`Charlotte, N.C. 28277
`(704) 348-6292 (Tillman)
`(704) 248-4883 (Doerre)
`chad@ti-law.com
`jdoerre@ti-law.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`SCOTT CUMMINGS, ESQ.
`Dentons US, LLP
`1900 K Street, N.W.
`Washington, D.C. 20006-1102
`(202) 496-7323
`scott.cummings@dentons.com
`
`KEVIN GREENLEAF, ESQ.
`Dentons US, LLP
`1530 Page Mill Road
`Suite 200
`Palo Alto, C.A. 94304-1125
`(650) 798-0381
`kevin.greenleaf@dentons.com
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, August
`
`13, 2019, commencing at 9:59 a.m. at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
`
`
`2
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`
`
`
`P-R-O-C-E-E-D-I-N-G-S
`
`9:59 a.m.
`
`JUDGE BAER: Please be seated.
`Good morning, everyone. Welcome. We have this morning our
`final hearing in I -- excuse me, PGR2018-00063 between Petitioner
`Dispersive Networks and Patent Owner Nicira, Inc.
`I am Judge Baer. And with me are Judges Stephens and Jivani.
`Judge Stephens, can you hear us okay?
`JUDGE STEPHENS: Yes, I can. Thank you.
`JUDGE BAER: Great. And, Judge Jivani?
`JUDGE JIVANI: Yes, thank you, great.
`JUDGE BAER: All right. Let’s get the parties’ appearances
`before we get going. Who do we have for Petitioner Dispersive Networks,
`please?
`MR. DOERRE: Jeremy Doerre, backup counsel.
`MR. TILLMAN: And Chad Tillman, lead counsel.
`JUDGE BAER: Great. Thank you. Mr. Doerre; is that correct?
`MR. DOERRE: That’s correct.
`JUDGE BAER: Thank you, Mr. Doerre.
`MR. DOERRE: Thank you.
`JUDGE BAER: And for Patent Owner Nicira?
`MR. CUMMINGS: Yes. Good morning, this is Scott Cummings
`representing Patent Owner Nicira. And with me at counsel table is my
`colleague Kevin Greenleaf, also attorney of record for Nicira. And also
`with us is Peter Yim, attorney of record for Patent Owner Nicira.
`JUDGE BAER: Great. Thank you, Mr. Cummings.
`
`3
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`Again, welcome. It’s very good to have you all here. We certainly
`do appreciate everyone making the effort to be here.
`We set forth a procedure for today’s hearing in our hearing order.
`But just to make sure everybody’s aware of how this will work. Each side
`will have 30 minutes of total time to present your argument, including
`arguments addressing the Motion to Amend.
`When you refer to an exhibit or a slide, just if you would, please,
`make that clear on the record. Judges Jivani and Stephens won’t be able to
`see what’s up on the screen but they have what was emailed to us. And,
`actually, let me address that before we get going.
`Petitioner, we did not receive slides from you; is that correct?
`MR. DOERRE: That’s correct. We did not have any slides.
`JUDGE BAER: Okay. So, if you would, just to make the record
`clear, and so that Judges Jivani and Stephens know where we are, if you
`would just articulate clearly what slides you’re on or what records you’re
`referring to, what page, exhibit number and page, that would be helpful.
`MR. DOERRE: Yes, Your Honor.
`JUDGE BAER: All right. We’d like to remind each party that
`under no circumstances are they to interrupt the other party while that party
`is presenting its arguments and demonstratives. If a party believes that a
`demonstrative or an argument presented by the other party is objectionable
`for any reason, please only address that during your own argument. Okay?
`Again, you’ll have 30 minutes per side.
`Before we get doing, does counsel for Petitioner have any questions?
`MR. DOERRE: No, Your Honor.
`JUDGE BAER: Great. And counsel for Patent Owner?
`
`4
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`MR. CUMMINGS: No questions, thank you.
`JUDGE BAER: All right. With that, I think we’re ready to begin.
`Petitioner, you have the burden of proof. You will go first. So,
`
`MR. DOERRE: Doerre.
`JUDGE BAER: Doerre. Thanks, Mr. Doerre
`MR. DOERRE: Thank you.
`JUDGE BAER: Mr. Doerre, whenever you are ready, you may
`
`Mr. --
`
`begin.
`
`First, would you like to reserve any time for rebuttal?
`MR. DOERRE: Yes, 15 minutes.
`JUDGE BAER: Great. I’m going to put 15 minutes on the clock.
`And the light will go red when you’ve got 2 minutes to go -- excuse me, will
`go yellow when you have 2 minutes to go. Is that okay?
`MR. DOERRE: Perfect.
`JUDGE BAER: Okay. Whenever you are already, you may begin,
`
`sir.
` MR. DOERRE: Good morning, Your Honors. I’m here today
`primarily to answer any questions you might have about what we put forth in
`our briefs. But, in the interim I want to go ahead and provide just kind of
`some context and background on where we are and where we think we are.
`So, Petitioner originally set out in this proceeding to challenge the
`subject patent as obvious over one of its own patents. However, when we
`started reviewing the patent and went out to do that, we realized there were
`some claim limitations that we just didn’t understand exactly what they
`mean.
`
`5
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`We made a game attempt to try and understand exactly what they
`meant in our initial petition. But during the course of this proceeding, as we
`proceeded it became clear that there wasn’t really any clarity coming from
`the Patent Owner. We’re not sure the Patent Owner has any more idea of
`what those claim limitations mean.
`Accordingly, and you’re probably wondering in our briefing, we
`have not continued to pursue or present arguments regarding the
`obviousness of the claims, the ineligibility of the claims, simply because at
`this time we think that we’re not entirely sure what the claims even mean.
`So it seems not like -- not the best use of this ’Board’s time to have to try
`and see arguments about meeting claim limitations that we’re not even sure
`what they mean.
`So, for judicial efficiency, we’re just focusing on the indefiniteness
`grounds.
`With that being said, I’m going to start by jumping into original
`Claim 8. I’m starting with Claim 8, jumping past Claim 1, just because I
`think it’s the simpler claim and it presents simpler issues. Always happy to
`move in a different order if the Board prefers.
`So, starting with Claim 8, Claim 8 recites a gateway comprising a
`network node equipped for interfacing with another computer network
`utilizing different communication protocols, “wherein the gateway has no
`initial setup configuration,” “wherein the gateway uses the initial setup
`configuration to automatically create multiple isolated configurations per
`enterprise.”
`So, I’ve ellipsed this out a little bit in my reading there, but the two
`key portions are “wherein the gateway has no initial setup configuration”
`
`6
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`and then “wherein the gateway uses the initial setup configuration to
`automatically create the multiple isolated configurations per enterprise.”
`And our position is quite simply that if the gateway has no initial
`setup configuration, we don’t understand how it can possibly use it to create
`the multiple isolated configurations per enterprise. So, we find the claim
`indefinite.
`You know, the Supreme Court has disregarded the insolubly
`ambiguous standard. But we think that even under that standard this claim
`would probably be indefinite. It seems like there’s two contradictory
`statements. And we don’t know how to reconcile them. It seems like a
`drafting error most likely, but it’s a drafting error that’s tough to even
`reconcile.
`So, that’s in essence our position on Claim 8.
`At the end of the day, you know, the Supreme Court said in Nautilus,
`and I’m going to quote from 572 U.S. 898 at 911, that “to tolerate
`imprecision just short of that rendering a claim insolubly ambiguous would
`diminish the definiteness requirement as” -- sorry -- “would diminish the
`definite requirement’s public-notice function, and foster the innovation-
`discouraging zone of uncertainty.”
`Here the claim goes even further, and actually does seem to breach
`into that insolubly ambiguous territory.
`That’s our position with original Claim 8. So, if there’s any
`questions? Otherwise I’m going to move on to original Claim 1.
`JUDGE JIVANI: Counsel, you referred to the Nautilus standard a
`moment ago. I’m not sure you are aware there’s a little bit of debate in the
`briefing that these, as you say, the Nautilus standard and the Packard
`
`7
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`standard. Do your arguments change under Packard, if we had used that
`standard?
`MR. DOERRE: I don’t think so. I mean, I think that the -- I tried
`to apply the Nautilus standard because I think that, and really it’s even
`reaching a bit past the Nautilus standard to the standard that the Supreme
`Court disregarded as just too strict, too rigid a test in Nautilus, the insolubly
`ambiguous standard. And kind of just our intent by playing to that which is
`to point out that even under the strictest standard that we could find, the
`insolubly ambiguous standard, these claims are still indefinite.
`I think under the Packard standard the claims are equally indefinite.
`The core problem here that I think we want to highlight is just that,
`look, you have this language saying that the gateway has no initial setup
`configuration. And then you have this language saying that it uses the
`initial setup configuration. And those two things, those two statements
`seem to directly contradict each other. And we’re not really sure how to
`resolve it. And that’s kind of where the insolubly -- insoluble ambiguity
`comes in.
`And it really is kind of beyond that. I mean, that’s the closest thing
`to the case language, it’s really just a direct conflict where the claim seems
`impossible. I mean, it’s impossible to have those two statements both be
`true. It’s almost a paradox. So, we just think the claim is indefinite
`because we don’t know how anything could meet both of those limitations at
`the same time.
`JUDGE JIVANI: Counsel, Patent Owner has filed a Motion to
`Amend in this matter addressing particularly that claim. And I see in your
`
`8
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`briefing that you’ve argued that there’s a new matter, the patent issue, is that
`insoluble ambiguity, as you put it, resolved by your opponent’s amendment?
`MR. DOERRE: So, I think that -- so, absent that, absent the issue
`of new matter, and absent the issue of whether or not it broadens the claim, it
`would potentially resolve it. I mean, there are times they’re no longer
`claiming that it is taking this action based on the initial setup configuration.
`And, as a result, it seems like that may resolve it, or that it no longer has that
`-- it no longer has those two conflicting statements.
`But I think that the two issues with their proposed amendments are,
`one, that it introduces new matter. And in particular, I think that it
`introduces new matter because it adds recitation that the enterprise-specific
`configuration data comprises an enterprise identification of the edge device.
`You know, and they rely, in suggesting this they’re relying on testimony of
`their expert Dr. Mir, who says that an enterprise configuration data -- and
`here I’m quoting from the Patent Owner’s Response to Opposition at 9,
`which says that the enterprise-specific configuration data obtained from the
`orchestrator comprises an enterprise identification of the edge device.
`But far from this allegation being undisputed, Dr. Mir himself
`actually disputed and rebutted this allegation. During our deposition with
`Dr. Mir, we asked if the enterprise identification of the edge device would be
`part of the enterprise-specific configuration data that is downloaded from the
`orchestrator. And Dr. Mir indicated there’s no direct mention or explicit
`mention of what is or is not part of it. He actually, his language, quoting
`directly, is “of it which is part of it or not part of it.”
`And I’m quoting from Exhibit 1020 at 187.
`
`9
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`And continuing on, when asked “Where does the edge device get the
`enterprise identification of the edge device from?” And also asked, “Is 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.”
`So, basically, in their attempt to amend it, although they may try to
`clear up the ambiguity, their amendment is actually introducing new matter.
`Because the attempt to say that the enterprise-specific configuration data
`comprises an enterprise identification of the edge device, it’s not clear where
`that comes from, and it’s not clear that it is actually part of that enterprise-
`specific configuration data as their expert admitted during the deposition.
`Is that -- Sorry, I probably went a little further than what the question
`you were looking for, but did that answer your question?
`JUDGE JIVANI: I see no problem with what you are presenting.
`The time is yours to use as you see fit. Thank you.
`MR. DOERRE: Okay, thank you.
`So, I am now going to move on and go back to original Claim 1,
`which Claim 1 recites, “utilizing a deep packet inspection engine to identify
`an application and an application type in an MP network flow” and
`“determining an optimal multi-path network flow setting that ensures a
`quality of service parameter of the multi-path network flow.” And then,
`“setting another MP network flow parameter based on the optimal multi-
`path network flow setting.”
`The first two of these steps are relatively clear and in accord with the
`Spec disclosure. For example, the Patent Owner has cited Exhibit 1001,
`column 9, lines 28 to 31, where it says, “When an MP packet flow is
`
`10
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`initiated, an edge device, (e.g. edge device 108), can identify the application
`and determine the proper QoS methods to be applied to this type of flow.”
`But, the problem comes in that last step, the “setting another MP
`network flow parameter based on the optimal multi-path network flow
`setting.”
`Initially this, this is the recitation that seems the most problematic.
`It is the one that we have had the hardest time trying to figure out exactly
`what it means. And there’s several different pieces of it, in fact, that we’re
`not entirely sure what it means.
`The first ambiguity that seems uncertain is, what does the phrase
`“another MP network flow parameter” mean? And we initially raised in our
`petition, and we continue to kind of be curious about does it mean a
`parameter of another MP network flow, which the claim uses the words
`“another MP network flow,” or does it mean another parameter of the
`previously recited MP network flow?
`Now, this Board observed in its institution decision that “one of
`ordinary skill in the art would understand ‘the optimal multi-path network
`flow setting’ recited in the ‘setting’ limitation as referring back to the recited
`‘optimal multi-path network flow setting’ in the ‘determining’ limitation.”
`And that makes perfect sense.
`And I’m quoting from the Decision to Institute at 19.
`But the Patent Owner asks this Board to make a logical leap from
`this premise to assume that it would be readily understood by one of
`ordinary skill in the art -- and here I’m quoting from the Patent Owner
`Response at 31 -- that “it would be readily understood by one of ordinary
`skill in the art, based on the plain meaning of the claim language alone” and
`
`11
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`inserting the word “that,” the “another MP flow parameter” is clearly for the
`same MP network flow.
`The problem is, just because the setting action is performed based on
`the previously-referenced “optimal multi-path network flow setting,” which
`is indeed for the previously-referenced MP network flow, that doesn’t
`necessarily imply or require that the parameter that is set is also for that MP
`network flow. It could possibly be a parameter for a different MP network
`flow.
`
`In other words, the setting is based on that -- or the “setting” step is
`based on that setting for that MP network flow, but it doesn’t necessarily
`require that -- there’s nothing in the claim language that seems to require
`that the parameter that is set is necessarily for the same MP network flow.
`That is kind of a first issue we identified. But, strangely, if you kind
`of move forward in this proceeding, the Patent Owner introduced even more
`ambiguity. And the big ambiguity I’m referring to is they seem to have
`suggested that, you know, so we were unsure whether it’s a parameter of
`another MP network flow, or it’s another parameter of the previously-
`referenced multi-path network flow.
`But the Patent Owner suggests that it requires neither. Instead, they
`kind of introduce a suggestion that the “another MP network flow
`parameter” may not have to be another parameter different from the multi-
`path network flow setting, instead just that the “another MP network flow
`parameter” that is set might simply be the multipath network flow setting.
`And I’m getting this because it’s axiomatic that a Motion to Amend
`cannot broaden the scope of the claims. And in proposing to amend Claim
`1 with proposed substitute Claim 12, they propose changing the recitation of
`
`12
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`“setting another MP network flow parameter” to recitation of “updating the
`MP network flow setting.”
`In doing so, they’re actually suggesting that “setting another MP
`network flow parameter” already encompasses “updating the MP network
`flow setting.” But the problem is it’s self-defeating, and it’s clearly
`erroneous. And the reason is if an ordinary artisan would understand, as
`they propose, that the multi-path network flow setting is a parameter, then
`the phrase “another parameter” can’t possibly refer to that parameter they
`just mentioned. I mean, if they really believe that the multi-path network
`flow setting itself is a parameter, then when the claim recites “another
`parameter,” it has to be meaning another parameter different than that multi-
`path network flow setting which was just mentioned.
`On the other hand, if they were to argue that the multi-path network
`flow setting is somehow not a parameter, then that amendment would have
`broadened the scope of the claim, so that they wouldn’t have proposed it.
`And the problem with this, I think this illustrates that if the Patent
`Owner is not even sure about the scope of the claim, how can the public
`possibly be expected to? I mean, if the Patent Owner is proposing this
`amendment to the claim that seems to actually be outside the scope of the
`claim and broaden it, it’s not clear that the public really is going to be any
`better at figuring out what the scope of the claim means.
`Moreover, I want to move on to kind of the second part of this
`language, which is the “based on” language. Because I think it’s equally
`unclear what it means for the recited setting to be “based on the optimal
`multi-path network flow setting,” the recited “setting” step that is to be
`based on that.
`
`13
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`During the course of this proceeding, the Patent Owner has actually
`had to introduce some creative constructions of the phrase “based on” in
`order to try to explain how its examples from the spec actually met this
`claim language. The Patent Owner repeatedly references an example where
`-- and here I’m going to read from the Patent Owner Response at 30. You
`can also -- it’s also found in Exhibit 2033, which is their expert declaration,
`at 27 to 28.
`The Patent Owner repeatedly references an example where
`substituting replication flow parameters for low balancing flow parameters
`via the control messages would be clearly understood as “setting another MP
`network flow parameter.”
`However, you know, they’ve outlined three very creative and
`closely-related theories for construing the “based on” language in order to
`make this example align with the language in the claim. And here I’m
`going to read from the Patent Owner Response to a Reply to the Opposition
`at page 4 and 5.
`They allege that the updated setting -- that “updating a setting is
`clearly based on an initial setting. The updating setting is based on
`properties associated with the initial setting and that the initial setting forms
`a basis for an update.”
`The problem with this entire line of reasoning, the idea that if it’s
`based on this initial setting any update to that setting is necessarily based on
`the initial setting, is that the Patent Owner isn’t properly focusing on
`whether an updated setting itself is based on the initial setting rather than on
`the step of updating. An updating step is based on the initial setting. And
`
`14
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`in doing so, they are not really recognizing or looking at the language of the
`claim.
`
`Overall, the Patent Owner’s three different creative theories for
`“based on” fail, but they also illustrate yet again that the Patent Owner itself
`doesn’t even understand what the claim language means.
`JUDGE BAER: Great. And thank you, Mr. Doerre.
`MR. DOERRE: Thank you.
`
`JUDGE BAER: Mr. Cummings.
`MR. CUMMINGS: Yes sir.
`JUDGE BAER: Do you wish to present an argument?
`MR. CUMMINGS: Yes sir.
`JUDGE BAER: Great. And would you like to reserve any time for
`rebuttal?
`MR. CUMMINGS: Yes, Your Honor. I’d like to --
`JUDGE BAER: Or, excuse me, for sur-rebuttal.
`MR. CUMMINGS: For sur-rebuttal I’d like to reserve 10 minutes.
`JUDGE BAER: Great. We’ll put 20 minutes on the clock.
`There’s no hurry, but whenever you’re ready you may begin.
` MR. CUMMINGS: Thank you.
`I’d like to begin by taking a look at demonstrative slide No. 2, Patent
`Owner’s demonstrative No. 2, and addressing something that Petitioner
`noted during its argument about the abandonment of two-thirds of our case
`with respect to what was presented in the petition.
`And the reason I heard for that abandoning those grounds was that
`they couldn’t understand what the claims meant. But I would respectfully
`
`15
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`point out that they had no problem with that in their petition. And when
`they filed their petition, they argued what the claims meant and how the
`prior art met those limitations, how those limitations were patent ineligible,
`et cetera. So, I would respectfully submit that the grounds have been
`abandoned because they lack merit.
`And so, we have one, one ground left, and that’s the 112 grounds.
`And I would respectfully point out that patent -- Petitioner has not
`introduced any new evidence in this case since trial began. So, their entire
`opposition to our Motion to Amend is not based upon any new evidence.
`It’s based on, solely on attorney argument.
`And I think that’s significant. When we’re talking about 112, what
`we’re talking about is does one of ordinary skill in the art understand the
`claim language in the light of the specification. And Petitioner provides no
`evidence about what one of ordinary skill in the art would understand about
`either the original claim language of the patent, or the amended claim
`language of the patent. So, I think that’s significant because, of course,
`Petitioner bears the burden of proof here.
`JUDGE JIVANI: Counsel, may I just interrupt you for a moment?
`MR. CUMMINGS: Sure. Please.
`JUDGE JIVANI: Because you said something different from your
`opponent’s statement than I did. So, I’m aware that the briefing does not
`address, does not appear to address Section 101 issues after a certain point,
`and that the focus of the briefing is Section 112.
`I heard your opponent a moment ago in his opening tell us that they
`were withdrawing their 103 grounds. And I’m hopeful that when we hear
`again from him we’ll get some clarity on precisely whether they’re
`
`16
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`abandoned, or withdrawn, or moot. But as to the 101 grounds, I think you,
`a moment ago, just implied that those similarly are withdrawn. And I did
`not hear that explicit statement.
`So, is there some agreement between the parties limiting the scope of
`the matter that we are not aware of?
`MR. CUMMINGS: No, Your Honor. There is no agreement
`between the parties about any formal withdrawal of any of the grounds that
`were alleged in the petition.
`Regardless, the situation is the Board in its Decision on Institution
`evaluated Petitioner’s grounds, 101 and 103, and they made several findings
`with regard to deficiencies associated with those grounds. Those findings
`in the Decision on Institution have not been challenged at all.
`Likewise, Patent Owner filed its opening brief after trial was
`instituted, and Patent Owner provided extensive briefing supported by
`evidence regarding deficiencies of the 101 and the 103 grounds. And those
`arguments and that evidence have also not been rebutted during trial. So,
`regardless of whether it’s a formal withdrawal or not, that’s the situation that
`we find ourselves in.
`Moving on to Exhibit No. -- demonstrative slide No. 3, this is just
`simply a summary of the claim language that’s under consideration at trial,
`the original claim language of Claims 1, 6, and 8. And Claims 1 and 8 are
`independent claims, and Claim 6 is a dependent claim.
`So, I wanted to talk first about Claim 1 because in the Decision on
`Institution there was a comment made by the Board, I think expressing some
`concern about the language of the Specification that we pointed to in support
`of the clear and definite meaning of the original wording of Claim 1 versus
`
`17
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`the actual wording in Claim 1. The language in the Specification refers to
`an updating, an updating of the network flow parameter at least in certain
`parts of the Specification. And the claim language said “setting another.”
`And I think the concern expressed in the Decision on Institution was
`maybe does that mean something different? So, I’d like to specifically
`address that here today because we took a very close look at that, at that
`situation, that argument. And we’ve identified additional portions of the
`Specification and introduced new evidence that I think clearly demonstrates
`that the original wording of Claim 1 is in fact clear and definite to one of
`ordinary skill in the art in light of the Specification.
`And moving onto the demonstrative No. 6, the first bullet point here
`is that issue, basically referring to testimony from our expert to the effect
`that somebody would understand that that’s setting another multi-path
`network flow parameter. The original language of Claim 1 is clear and
`definite.
`I’d like to skip ahead to slide No. 8. Slide No. 8 is some testimony,
`actually it’s argument that we have from our Patent Owner’s Sur-reply that’s
`supported by testimony explaining why setting another multi-path network
`flow parameter would be understood by one of ordinary skill in the art as
`updating. And I’d like to refer to an example in the Specification that sort
`of makes that point.
`The Specification talks about -- and Mr. Doerre pointed this part of
`the Specification out. It’s at column 9, starting at about line 25. It
`describes the step before in Claim 1, the “determining” step that Mr. Doerre
`referred to. The “determining” step sets an initial network flow control
`parameter for the system.
`
`18
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`And then the subsequent step of “setting” another parameter
`associated with that flow updates or modifies that original setting. So, it’s
`revisited.
`And so, with regard to the original “determining” setting, the
`“determining” step that sets the original setting, in the Specification it’s
`described here, column 9, starting line 25 going down to about line 35. But
`it says, “Once the edge device determines the methods to be used, a control
`message can be sent to the gateway to ensure that the gateway, e.g. gateway
`106, in turn has the information as to how to treat the multi-path network
`flow.”
`
`So, it implements the setting with a control message. And what do
`we know about the control message from the Specification? We know from
`the Specification at column 6, column 6, lines 41 through about 43 describes
`that control message. And there it describes the control message as, it says
`MP control 408, e.g. control information such as quality of service
`parameters, treatment of data flow parameters, etcetera.
`So, we know from the Specification that the system sets, makes the
`initial determination of the setting. And that setting is implemented through
`the use of parameters.
`And then, subsequently, the setting is changed. And how is the
`setting changed? Going back to column 9 of the Specification, the
`changing of that setting is described here about lines 38 through 41. And it
`says “In the event the MP system, (e.g. based on network conditions) and/or
`. . . administrator” – “an administrator indicates” --
`JUDGE BAER: I’m sorry, Mr. Cummings.
`MR. CUMMINGS: Yes?
`
`19
`
`
`
`Case PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`JUDGE BAER: You’re in column 6 again?
`MR. CUMMINGS: I’m sorry. I’m back to column 9, Judge Baer.
`JUDGE BAER: Thank you.
`MR. CUMMINGS: Back to column 9, line 38. There it describes
`the modification of the initial setting, which is captured in the “setting
`another multi-path network flow” limitation of Claim 1. And that process is
`described here as, “In the event the MP system (e.g. based on network
`conditions) and/or an administrator indicates that the method should be
`changed, the edge device can again signal the gateway with a control
`message.”
`So, again, we use another control message to update the setting.
`What do we know about the control message? It uses parameters to do that.
`And, clearly, the parameters have to be different. If we’re going to change
`a setting, the parameters must be different.
`So, we would respectfully submit that when you look at the
`Specification, one of ordinary skill in the art would clearly understand t
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
