Trials@uspto.gov
`571-272-7822
`
`Paper 50
`Date: November 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISPERSIVE NETWORKS, INC.,
`Petitioner,
`v.
`NICIRA, INC.,
`Patent Owner.
`
`PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`
`
`
`
`
`
`Before DEBRA K. STEPHENS, GARTH D. BAER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`STEPHENS, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`INTRODUCTION
`I.
`We have authority to hear this post-grant review under 35 U.S.C.
`§ 6(c), and to issue this Final Written Decision pursuant to 35 U.S.C.
`§ 328(a). For the reasons that follow, after reviewing all relevant evidence
`
`
`
`
`571-272-7822
`
`Paper 50
`Date: November 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISPERSIVE NETWORKS, INC.,
`Petitioner,
`v.
`NICIRA, INC.,
`Patent Owner.
`
`PGR2018-00063
`Patent 9,722,815 B2
`
`
`
`
`
`
`
`
`
`Before DEBRA K. STEPHENS, GARTH D. BAER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`STEPHENS, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`INTRODUCTION
`I.
`We have authority to hear this post-grant review under 35 U.S.C.
`§ 6(c), and to issue this Final Written Decision pursuant to 35 U.S.C.
`§ 328(a). For the reasons that follow, after reviewing all relevant evidence
`
`
`
`
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`PGR2018-00063
`Patent 9,722,815 B2
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`and assertions, we determine that Dispersive Networks Inc.1 (“Petitioner”)
`has shown by a preponderance of the evidence that claims 1–6 and 8–11 of
`U.S. Patent No. 9,722,815 B2 (hereinafter, “’815 Patent”) are unpatentable.
`Additionally, we deny Patent Owner’s Motion to Amend.
`
`
`A. Procedural History
`Petitioner filed a Petition (Paper 1 (“Pet.”)) requesting a post-grant
`review of claims 1–11 of the ’815 Patent (35 U.S.C. § 321). Petitioner
`challenged claims 1–5 and 7 as unpatentable under 35 U.S.C. § 101 (Pet. 7).
`Petitioner also challenged claims 1–6 and 8–11 as unpatentable under
`35 U.S.C. § 112(b) (id. at 6–7). Additionally, Petitioner challenged claims
`1–5 and 7 as unpatentable under 35 U.S.C. § 103(a) (id.).
`Nicira, Inc.2 (“Patent Owner”) timely filed a Preliminary Response
`(Paper 17 (“Prelim. Resp.”)) to the Petition. Pursuant to 35 U.S.C. § 324(a)
`and 37 C.F.R. § 42.4(a), we instituted this post-grant review based on our
`decision that Petitioner had demonstrated a reasonable likelihood of
`prevailing as to at least one of the challenged claims of the ’815 Patent
`(Paper 25 (“Dec. to Inst.”)). Accordingly, we instituted this post-grant
`review on all the grounds asserted in the Petition, as set forth in our Decision
`on Institution (id. at 56).
`Patent Owner filed a request for rehearing (Paper 27 (Req. for
`Reh’g)), which we granted in part to correct the stated grounds (Paper 47).
`Patent Owner additionally filed a Patent Owner Response (Paper 33 (“PO
`
`
`1 Dispersive Networks, Inc. identifies Dispersive Technologies, Inc. as an
`additional real party-in-interest (Paper 11, 3).
`2 Nicira, Inc. identifies VMware, Inc. as an additional real party-in-interest
`(Paper 5, 3).
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`Resp.”)). In its response, Patent Owner contends that Petitioner is time
`barred under 35 U.S.C. § 321(c) for failure to identify a real party-in-
`interest and that, as a result, the Petition should be denied as to all
`challenged claims (see generally PO Resp.). Patent Owner additionally filed
`a Contingent Motion to Amend (Paper 35 (“Mot. to Amend”)).
`Petitioner filed a Petitioner’s Reply to Patent Owner’s Response
`(Paper 38 (“Pet. Reply”)) and an Opposition to Patent Owner’s Contingent
`Motion to Amend (Paper 40 (“Pet. Opp. to MTA”)).
`Patent Owner filed a Sur-Reply in response to Petitioner’s Reply
`(Paper 41 (“PO Sur-Reply”)) and filed a Reply to Petitioner’s Opposition to
`the Motion to Amend (Paper 42 (“PO Reply to Pet. Opp. to MTA”)).
`Petitioner subsequently filed a Petitioner’s Sur-Reply to Patent
`Owner’s Reply to Petitioner’s Opposition to Patent Owner’s Motion to
`Amend (Paper 45 (“Pet. Sur-Reply to PO Reply to MTA”)).
`At the parties’ request (Papers 44, 46), an Oral Hearing was held on
`August 13, 2019, a transcript of which is included in the record (Paper 49
`(“Tr.”)).
`
`
`B. Real Parties-in-Interest
`Patent Owner states “Nicira, Inc. and VMware, Inc. are real parties-in-
`interest” (Paper 5, 3).
`Petitioner identifies Dispersive Networks, Inc. and its wholly-owned
`subsidiary Dispersive Technologies, Inc. as real parties-in-interest (Pet. 2;
`Paper 11, 3).
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`C. Related Matters
`Petitioner and Patent Owner indicate the ’815 Patent is not at issue in
`any additional proceedings (see generally Pet. 1–90; Paper 5).
`
`
`D. The ’815 Patent
`The ’815 Patent, titled “Edge-Gateway Multipath Method and
`System,” issued Aug. 1, 2017 (’815 Patent Title). The ’815 Patent describes
`a technique for communicatively coupling a local network with a cloud-
`computing network and service using edge devices connected by wide area
`network (“WAN”) links (id. at Abstract).
`The ’815 Patent describes an example of a programmable multi-tenant
`overlay network, which can be “a computer network built on the top of
`another network” (id. at 3:32–35). Figure 1, reproduced below, illustrates an
`exemplary overlay network (id. at 2:17–18).
`
`
`As shown in Figure 1, overlay network 100 includes a public cloud
`107 and an edge device 108. Public cloud 102 can include SaaS (Software-
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`as-a-Service) companies 109 (not shown) and orchestrator 104 (id. at 3:42–
`43, 55–56, Fig. 1). SaaS companies 109 provide applications to enterprises
`and end-consumers (id. at 3:43–44). Orchestrator 104 is “a central controller
`for configuring and monitoring a multi-tenant instance of the overlay
`network,” which “can enable configuration and monitoring of the network
`from any location with Internet access” (id. at 3:56–60).
`The ’815 Patent describes a process 300 that removes the requirement
`for an administrator to configure each individual device in an enterprise
`computing network (id. at 5:58–61, Fig. 3). WAN links, connected directly
`to edge devices, are detected and measured without need for an external
`router (id. at 5:61–63, Fig. 3, step 302). A central configuration point in the
`cloud can be connected and “[e]nterprise-specific configuration data,
`including available gateways, can be downloaded” (id. at 5:63–66, Fig. 3,
`step 304). Using the configuration data, the available gateway(s) can be
`connected and available bandwidth on each path can be measured (id. at
`5:66–6:2, Fig. 3, steps 306, 308). “A multipath (MP) protocol can [be]
`implemented by combining multiple network paths into a composite
`connection that multiplexes packets from MP packet flows and control
`information (path quality, link characteristics, clock synchronization, etc.)”
`(id. at 6:3–7).
`Network traffic is identified using deep packet inspection that
`“determine[s] the application and/or application type of the traffic” (id. at
`5:11–14). “Appropriate measures can be applied to ensure the QoS
`[(Quality of Service)] of the specific traffic based on the application,
`application type[,] and business priority of the traffic” (id. at 5:14–17).
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`Figure 8 of the ’815 Patent illustrates an exemplary network system
`that communicates services between an end user (not shown), through an
`edge device, to an application in the public cloud (id. at 2:34–36) and is
`reproduced below.
`
`
`Figure 8 illustrates an exemplary arrangement of new services 800
`injected into the flow as it goes from end user (not shown) through edge
`device 802, to the application in the public cloud (‘815 Patent 10:53–57).
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`Edge device 802, in conjunction with gateway(s) 806, provides new services
`804 and 808 through the public cloud network (id. at 10:55–65). Edge
`device 802 and gateway(s) 806 provide these services accessing either SaaS
`application(s) 812 or the Internet 810 (id. at 10:59–11:2).
`According to the ’815 Patent, the advantage of employing a plurality
`of computing devices in a cloud environment, to access applications, is
`easier deployment and remote management of network services having a
`known quality of service (“QoS”) (id. at 1:34–42). The edge-gateway
`multipath technique, utilizing a deep-packet inspection engine and a
`multipath protocol, ensures the maintenance of the proper QoS in an
`enterprise-specific configuration (id. at 1:46–2:4).
`
`
`Illustrative Claims
`E.
`Of the challenged claims, claims 1, 7, and 8 are independent (’815
`Patent 12:34–67, 13:21–53, 13:54–14:42). Claims 2–6 depend directly from
`claim 1, and claims 9–11 depend directly from claim 8 (’815 Patent 13:1–20,
`14:43–57). Independent claim 1 is illustrative of the challenged claims and
`is reproduced below:
`1. An edge-gateway multipath method comprising:
`providing an edge device in a local network communicatively
`coupled with a cloud-computing service in a cloud-computing
`network;
`automatically detecting a set of wide area network (WAN) links
`connected directly to the edge device or via an intermediate
`router;
`automatically measuring the bandwidth of the WAN links
`communicatively coupling the edge device with a central
`configuration point in the cloud-computing network;
`downloading, from the central configuration point, an enterprise-
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`specific configuration data into the edge device, wherein the
`enterprise-specific configuration data comprises a gateway
`information;
`communicatively coupling the edge device with a gateway in the
`cloud-computing network, wherein the communicatively
`coupling of the edge device with the gateway comprises a
`multipath (MP) protocol, 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;
`measuring an available bandwidth on each path of the set of
`multiple network paths between the edge device and the
`gateway;
`utilizing a deep-packet inspection engine to identify an application
`and an application type in a MP network flow;
`determining an optimal multipath network flow setting that ensures
`a quality of service (QoS) parameter of the multipath network
`flow; and
`setting another MP network flow parameter based on the optimal
`multipath network flow setting.
`(’815 Patent Claim 1).
`
`
`F. Evidence
`Petitioner relies upon the following references (Pet. 6–7):
`Reference
`Publication Number Exhibit
`Twitchell, Jr. (hereinafter “Twitchell”) US 9,071,607 B2
`1003
`Ray (hereinafter “Ray”)
`US 8,111,692 B2
`1004
`Raleigh et al. (hereinafter “Raleigh”) US 2012/0221955 A1
`1005
`Devine et al. (hereinafter “Devine”)
`US 9,715,401 B2
`1008
`Dong (hereinafter “Dong”)
`US 2011/0153909 A1
`1009
`Petitioner supports its challenge with a Declaration by Mr. Richard W.
`Conklin, dated April 30, 2018 (Ex. 1006).
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`Patent Owner supports its Response with a Declaration by Dr. Nader
`F. Mir dated August 16, 2018 (Ex. 2023).
`
`
`G. Prior Art and Asserted Grounds
`In its Petition, Petitioner asserts that claims 1–11 would have been
`unpatentable on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`1–5, 7
`101
`1–6
`112(b)
`6
`112(b)
`8–11
`112(b)
`1, 2, 5
`103(a)
`7
`103(a)
`3, 4
`103(a)
`
`Reference(s)/Basis
`Eligibility
`Indefiniteness
`Indefiniteness
`Indefiniteness
`Twitchell, Ray, Raleigh
`Twitchell, Ray, Raleigh
`Twitchell, Ray, Raleigh,
`Devine, Dong
`
`
`
`II. ANALYSIS
`A. Eligibility for Post-Grant Review
`As a threshold matter, we must determine whether the ’815 Patent
`may properly be the subject of a post-grant review. Post-grant review is
`available only if the Petition is filed within nine months of issuance of the
`challenged Patent (35 U.S.C. § 321(c)). Patent Owner contests the filing
`date of the Petition based on Petitioner’s identification in its Updated
`Mandatory Notices of wholly-owned subsidiary Dispersive Technologies,
`Inc. as a real party-in-interest (Prelim. Resp. 14 (citing Paper 11, 3)).
`As required by our Rules, Petitioner must file a complete Petition in
`order to be accorded a filing date (37 C.F.R. § 42.206(a)), and a complete
`Petition must comply with 37 C.F.R. § 42.204 (37 C.F.R. § 42.206(a)(1)).
`Compliance under 37 C.F.R. § 42.204 requires the content of the Petition to
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`set forth grounds for standing and the identification of the challenge (see 37
`C.F.R. § 42.204(a)–(b)). Additionally, 37 C.F.R. § 42.204 states “[a] motion
`may be filed that seeks to correct a clerical or typographical mistake in the
`petition. The grant of such a motion does not change the filing date of the
`petition” (37 C.F.R. § 42.204(c) (emphasis added)). In determining whether
`the ’815 Patent is eligible for post-grant review, we consider the record in its
`entirety (see 35 U.S.C. § 324(a)).
`On July 20, 2018, after a call with the parties, we authorized Patent
`Owner’s request “to file a motion for additional discovery relating to
`whether and to what exten[t] a relationship exists between Petitioner and its
`subsidiary, Dispersive Technologies, Inc. (‘DT’)” (Paper 8, 2). Patent
`Owner filed a Patent Owner Motion for Additional Discovery (Paper 9) and,
`in response, Petitioner filed a Petitioner’s Opposition to Patent Owner’s
`Motion for Additional Discovery (Paper 13). Petitioner additionally filed an
`Updated Mandatory Notice in which Petitioner updated its mandatory
`notices to identify Dispersive Technologies, Inc. as a real party-in-interest,
`but Petitioner “maintains that Dispersive Technologies, Inc. was not a real
`party-in-interest when the petition was filed” (Paper 11). In its Preliminary
`Response, Patent Owner contended the “Petition was incomplete and was
`not entitled to a filing date of May 1, 2018 because it failed to identify
`Dispersive Technologies, Inc. (‘DT’) as a real party-in-interest (RPI)”
`(Prelim. Resp. 11).
`After consideration of the issue, in our August 30, 2018 Order, we
`allowed Petitioner to update its mandatory notice and amend its disclosure of
`real parties in interest to include Dispersive Technologies, Inc., without
`changing the filing date of the Petition (Paper 24, 3; see also 37 C.F.R.
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`§ 42.5(b)). Accordingly, in our Decision to Institute, we determined
`Petitioner has complied with the requirements of 37 C.F.R. § 42.204 and,
`thus, should be accorded the filing date of May 1, 2018 (see 37 C.F.R.
`§ 42.206(a)) (Dec. to Inst. 11–12).
`In our Order we noted:
`Neither the rules nor statute governing RPI disclosures prohibit
`updating RPI disclosures while maintaining a petition’s filing date
`(see Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case
`IPR2015-00739, slip op. at 5 (PTAB Mar. 4, 2016) (Paper 38); Elekta,
`Inc. v. Varian Med. Sys., Inc., Case IPR2015-01401, slip op. at 6–10
`(PTAB Dec. 31, 2015) (Paper 19) (“Elekta”)). 37 C.F.R. § 42.206
`does not foreclose the Board’s discretion to maintain a petition’s
`original filing date when a party amends its RPI disclosures because,
`under § 42.5(b), “[t]he Board may waive or suspend a requirement of
`parts 1, 41, and 42” –– here, § 42.206’s filing date provisions –– and
`“may place conditions on the waiver or suspension” (see Elekta, slip
`op. at 8 (addressing parallel provisions under 37 C.F.R. § 42.106))
`(Paper 24, 2). We thus determined, “permitting Petitioner to add Dispersive
`Technologies, Inc., a wholly-owned subsidiary of Dispersive Networks, Inc.,
`as a real-party-in-interest (RPI) while maintaining the original filing date is
`in the interests of justice” (id.).
`“A petition for a post-grant review may only be filed not later than the
`date that is 9 months after the date of the grant of the patent or of the
`issuance of a reissue patent (as the case may be)” (35 U.S.C. § 321(c)). The
`’815 Patent was issued August 1, 2017 (‘815 Patent). Petitioner filed its
`Petition May 1, 2018. Thus, if Petitioner’s corrected Petition were to receive
`a new filing date, it would fall outside the nine-month time bar under 35
`U.S.C. § 321(c).
`Petitioner’s counsel, Mr. Chad D. Tillman, filed a Declaration stating
`his law firm, Tillman Wright, PLLC (“TW”) “[a]t the time the petition for
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`the PGR was filed, [Petitioner’s Counsel] did not represent Dispersive
`Technologies (‘DT’)” (Ex. 1013, 1). Prior to the filing of the Declaration,
`Mr. Tillman further set forth “TW represented [Petitioner] in the preparation
`and filing of the petition for the PGR, and all payment for and comment and
`instruction regarding the petition were received from [Petitioner]” (id.).
`Thus, we are not persuaded Dispersive Technologies, Inc., exercised actual
`control over Petitioner’s counsel, retained or paid counsel, or provided
`instructions or comments to counsel (see Ex. 1014).
`Nonetheless, Patent Owner argues Petitioner “fails to establish that
`good cause exists to waive the requirements of 37 C.F.R. §§ 42.5 (c)(3) and
`42.206, et. al., and makes no attempt at such a showing” (PO Resp. 17).
`Patent Owner asserts unlike in Lumentum Holdings, Inc. v. Capella
`Photonics, Inc., Case IPR2015-00739, Paper 38 (Mar. 4, 2016), the Petition
`when filed did not correctly identify all RPIs (PO Resp. 17). In particular,
`Patent Owner asserts Petitioner’s argument that “DT did not exercise actual
`control over Petitioner’s counsel, or fund these proceedings, at the time the
`Petition was filed” is not required to find Dispersive Technologies, Inc., was
`an RPI at the time of filing (id. at 18). According to Patent Owner, omission
`of Dispersive Technologies, Inc., as an RPI was not “objectively reasonable
`or based upon an innocent mistake” (id. at 19).
`Although a petition “may be considered only” if the petition
`“identifies all real parties in interest” (35 U.S.C. § 322(a)(2)) and a petition
`will not be accorded a filing date until the petition satisfies various
`requirements, including identifying all real parties in-interest (37 C.F.R.
`§§ 42.206, 42.204, and 42.8(b)(1)), the Board has held these requirements
`are not jurisdictional (see Lumentum Holdings, Inc. v. Capella Photonics,
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`Inc., IPR2015-00739, slip op. at 5 (PTAB Mar. 4, 2016) (Paper 38)
`(precedential)). As the Board in Lumentum explained, Ҥ 312(a) sets forth
`requirements that must be satisfied for the Board to give consideration to a
`petition, however, a lapse in compliance with those requirements does not
`deprive the Board of jurisdiction over the proceeding, or preclude the Board
`from permitting such lapse to be rectified” (id.; see also Blue Coat Sys., Inc.
`v. Finjan, Inc., IPR2016–01444, slip op. at 10 (PTAB July 18, 2017) (Paper
`11) (“[E]vidence [of failure to identify all real parties in interest] is, at best,
`suggestive [of] an issue that is not jurisdictional.”)). In permitting a
`petitioner to amend its identification of real parties in interest while
`maintaining the original filing date, panels of the Board have looked to
`whether there have been
`(1) attempts to circumvent the § 315(b) bar, and analogously, the
`§ 325(b) bar or estoppel rules,
`(2) bad faith by the petitioner,
`(3) prejudice to the patent owner caused by the delay, or
`(4) gamesmanship by the petitioner
`
`
`(see Aerospace Communications Holdings Co. v. Armor All/Step Products
`Co., IPR2016-00441, slip op. 3 (PTAB June 28, 2016) (Paper
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`12)).
`Patent Owner contends “[t]he Board should not waive the rule and
`permit Petitioner to retain the original filing date, because doing so would
`circumvent both the rule and the statutory time-bar of 35 U.S.C. § 321(c),
`prejudicing Patent Owner” (PO Resp. 17).
`We may allow Petitioner to update its real parties in interest to add
`allegedly unnamed real parties in interest after institution (see Proppant
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`Express Investments, LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86
`(PTAB Feb. 13, 2019) (precedential)). The Board may, under 35 U.S.C.
`§ 312(a) and for the same reasons, under 35 U.S.C. § 322(a), accept updated
`mandatory notices as long as the petition would not have been time-barred
`under 35 U.S.C. § 315(b) or 35 U.S.C. § 325(b) if it had included the real
`party-in-interest (see Proppant Express, IPR2017-01917, Paper 86). As the
`U.S. Court of Appeals for the Federal Circuit has recognized, it “is
`incorrect” to “conflate[] ‘real party in interest’ as used in § 312(a)(2) and
`§ 315(b), and claim[] that ‘§ 312(a)(2) is part and parcel of the timeliness
`inquiry under § 315’” (Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364,
`1374 n.9 (Fed. Cir. 2018) (en banc)). “For example, if a petition fails to
`identify all real parties in interest under § 312(a)(2), the Director can, and
`does, allow the petitioner to add a real party in interest” (id). “In contrast, if
`a petition is not filed within a year after a real party in interest, or privy of
`the petitioner is served with a complaint, it is time-barred by § 315(b), and
`the petition cannot be rectified and in no event can IPR be instituted” (id.).
`The same reasoning applies to Post-Grant Reviews (see, e.g., Adello
`Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11 (PTAB Feb. 14,
`2019) (precedential)).
`Indeed, many post-Lumentum Board decisions indicate that a petition
`may be corrected after institution of trial to add a real party-in-interest if
`warranted without assigning a new filing date to the petition (see, e.g.,
`Proppant Express, IPR2017-01917, Paper 86; ZTE (USA) Inc. v.
`Fundamental Innovation Sys. Int’l LLC, IPR2018-00425, slip op. at 4–8
`(PTAB Feb. 6, 2019) (Paper 34); T-Mobile USA, Inc. v. Vertical Connection
`Techs., IPR2018-01388, slip op. 16– 19 (PTAB Jan. 23, 2019) (Paper 14);
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`Tesco Offshore Services, Inc. v. Weatherford Tech. Holdings, LLC,
`IPR2018-01308, slip op. at 10–11 (PTAB Dec. 10, 2018) (Paper 19); Merck
`Sharp & Dohme Corp. v. Mayne Pharma Int’l Pty Ltd., IPR2016-01186, slip
`op. at 3–6 (PTAB Dec. 13, 2017) (Paper 70); Intel Corp. v. Alacritech, Inc.,
`IPR2017-01392, slip op. at 23 (PTAB Nov. 30, 2017) (Paper 11); Axon EP,
`Inc. v. Derrick Corp., Case IPR2016–00642, slip op. at 3 (PTAB Nov. 21,
`2016) (Paper 17); Xactware Solutions, Inc. v. Eagle View Technologies, Inc.,
`IPR2016- 00586, slip op. at 4 (PTAB Nov. 2, 2016) (Paper 19); see also
`AIT, 897 F.3d at 1364 (Reyna, J., concurring) (“Section 312(a)(2) is akin to
`a pleading requirement that can be corrected.”)). The reasoning in inter
`partes reexamination is applicable to post grant reexaminations. Because we
`have the authority to allow Petitioner to update its naming of real parties in
`interest, we turn to considerations outlined above that other panels have
`considered.
`Patent Owner asserts “it cannot be said that the omission of DT as a
`real party-in-interest in the Petition was objectively reasonable or based
`upon an innocent mistake” (PO Resp. 19 (citing Reflectix, Inc. v.
`Promethean Insulation Technology, LLC, IPR2015–00039, Paper No. 18,
`14–15 (PTAB April 24, 2015))). Looking to the factors discussed above, we
`find no evidence in the record of an attempt by Petitioner to circumvent the
`35 U.S.C. § 325 bar or estoppel rules or bad faith by the petitioner. Nor do
`we find any evidence of gamesmanship in the record. Petitioner added DT
`as an RPI prior to our Decision to Institute (see Paper 11).
`
`In our Order regarding the addition of a real party-in-interest, we
`determined:
`Dispersive Networks’s delay in identifying Dispersive Technologies,
`a wholly-owned subsidiary, as an RPI has no negative impact on the
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`
`“core functions” of the RPI requirement as outlined in Our Trial
`Practice Guide—i.e. assisting members of the Board in identifying
`potential conflicts and assuring proper application of the statutory
`estoppel provisions in future cases (see Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012))
`(Paper 24, 3). More specifically, here, like in Adello Biologics (Adello
`Biologics LLC, PGR2019-00001, Paper 11, 4 (PTAB Feb. 14, 2019)),
`Dispersive Technologies is a wholly-owned subsidiary of Dispersive
`Networks. “[R]equiring a petition to identify all RPIs serves ‘to assist
`members of the Board in identifying potential conflicts, and to assure proper
`application of the statutory estoppel provisions” (id. (citing Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756 48,759 (Aug. 14, 2012))).
`“Requiring a petition to identify all RPIs also protects a patent owner from
`‘harassment via successive petitions by the same or related parties,’ and
`prevents parties from having a ‘second bite at the apple’” (id. (citing Trial
`Practice Guide, 77 Fed. Reg. at 48,759)). Allowing Petitioner to add DT as
`an RPI serves this “core function” and moreover, secures a “just, speedy,
`and inexpensive resolution” of this proceeding (37 C.F.R. § 42.1). The
`potential prejudice to Petitioner if we were not to permit the amendment is
`drastic –– “neither the statute nor the rule governing RPI disclosures is
`designed to award a patent owner such a windfall” (Adello Biologics LLC,
`PGR2019-00001, Paper 11, 3–4).
`Cases cited by Patent Owner are distinguishable. In Reflectix, Inc. v.
`Promethean Insulation Technology, LLC, IPR2015-00039, Paper 18 at 19
`(PTAB April 24, 2015), Sirius XM Radio, Inc. v. Fraunhofer– Gesellschaft
`Zur Forderung Der Angewandten Forschung E.V., IPR2018–00681, Paper
`12 at 7 (PTAB September 6, 2018), Radware, Inc. v. F5 Networks, Inc.,
`IPR2017–01249, Paper 10, at 5 (PTAB September 30, 2019), and
`16
`
`
`
`
`
`PGR2018-00063
`Patent 9,722,815 B2
`
`Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper 88
`(PTAB Jan. 6, 2015) it was a subsidiary that filed the Petition. In this PGR,
`Dispersive Technologies, Inc., is a wholly-owned subsidiary of Petitioner,
`Petitioner is not a subsidiary of Dispersive Technologies, Inc. Therefore,
`Patent Owner’s contention based on these cases is not persuasive.
`Accordingly, in light of the reasoning above and the record before us and
`because the interests of justice favor allowing Petitioner to update its
`mandatory notice, amending its RPI disclosures to add Dispersive
`Technologies, Inc., without changing the filing date, we exercise our
`discretion to do so under 37 C.F.R. § 42.5(b).
`
`
`B. Level of Ordinary Skill in the Art
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis (Al-Site Corp. v.
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
`F.2d 714, 718 (Fed. Cir. 1991))).
`Petitioner asserts that a person of ordinary skill in the art at the time of
`the invention “has at least a bachelor’s degree in computer science or
`computer engineering with at least five years of experience in the field of
`computer networking” (Pet. 8 (citing Ex. 1006 ¶ 8)). Patent Owner does not
`address Petitioner’s assertion regarding the education or experience of an
`ordinarily skilled artisan at the time of the invention (see generally PO
`Resp.).
`We determine that Petitioner’s description of an ordinarily skilled
`artisan as possessing a bachelor’s degree in computer science or computer
`
`
`
`17
`
`
`
`PGR2018-00063
`Patent 9,722,815 B2
`
`engineering with at least five years of experience in the field of computer
`networking, is supported by the current record.
`We note also that the applied prior art reflects the appropriate level of
`skill at the time of the claimed invention (see Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001)).
`
`
`C. Claim Construction
`In a post-grant review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear (see Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,766 (Aug. 14, 2012); 37 CFR § 42.100(b)(2017)).3
`Claim terms are given their ordinary and customary meaning as would
`be understood by one of ordinary skill in the art in the context of the entire
`disclosure (In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007)). An inventor may rebut that presumption by providing a definition of
`the term in the specification with reasonable clarity, deliberateness, and
`precision (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the
`absence of such a definition, limitations are not to be read from the
`specification into the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`Cir. 1993)).
`
`
`3 We note that the PTO changed the claim construction standard used in
`PGR proceedings (see Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340, 51,340 (Oct. 11, 2018); 37 C.F.R. 42.100(b)).
`As stated in the Federal Register notice, however, the new rule applies only
`to petitions filed on or after November 13, 2018, and therefore does not
`impact this case (id.).
`
`
`
`18
`
`
`
`PGR2018-00063
`Patent 9,722,815 B2
`
`
`Petitioner provides a claim construction analysis for the terms “edge
`device,” “cloud-computing network,” “cloud-computing service,”
`“communicatively coupling,” “central configuration point,” “gateway,”
`“deep-packet inspection engine,” “virtual machine edge device,” and
`“virtual machine gateway” (Pet. 11–16). Patent Owner disputed the
`interpretation of “edge device” but provides no claim construction and
`asserts no other claim terms requires an explicit interpretation, but rather
`“should be afforded their plain and ordinary meaning” (PO Resp. 13).
`In light of the disputed issues and the record before us, we need not
`address any of these terms (see Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`
`D. Definiteness Under 35 U.S.C. § 112
`The ’815 Patent must have “one or more claims particularly pointing
`out and distinctly claiming the subject matter” (35 U.S.C. § 112(b)). The
`definiteness requirement of 35 U.S.C. § 112(b) “secure[s] to the patentee all
`to which he is entitled” and “apprise[s] the public of what is still open to
`them” (Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996)
`(quotation and brackets omitted)). 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)). “[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, Inc. v. Biosig
`Instruments, Inc., 134 S. Ct. 2120, 2124 (2014)).
`
`
`
`19
`
`
`
`PGR2018-00063
`Patent 9,722,815 B2
`
`
`1. Alleged Indefiniteness Under 35 U.S.C. § 112: Claims 1–64
`Petitioner contends that claim 1, and the claims that depend from
`claim 1, are unpatentable under 35 U.S.C. § 112(b) as indefinite (Pet. 18–
`21). Specifically, Petitioner argues that “claim 1 is indefinite based on
`recitation of ‘setting another MP network flow parameter based on the
`optimal multipath network flow setting’” (id. at 18). According to
`Petitioner, “the specification of the ’815 Patent does not provide any clarity
`regarding this recitation” (id. at 19). Petitioner contends:
`Although the ‘815 Patent discloses that “[i]n cases where the
`application cannot be identified, an MP system can monitor the
`behavior of MP packet flows over time and attempt to derive the
`optimal settings for QoS” and that “these settings which were
`obtained through this slow learning method … can be shared to all
`other edges in the network,” this does not seem to be applicable to the
`claim, as this disclosure only pertains to “cases where the application
`cannot be identified” and the claim clearly recites “utilizing a deep-
`packet inspection engine to identify an application and an application
`type in a MP network flow”
`(Pet. 19). Petitioner argues “it is not . . . clear whether this step involves
`‘setting another MP network flow parameter’ for ‘the [recited] multipath
`network flow[,’] or ‘setting another MP network flow parameter’ for a
`different multipath network flow,” i.e., whether “another” modifies
`“multipath network flow” or “parameter” (id. at 20 (citing Ex. 1006 ¶ 60)).
`Thus, according to Petitioner, the cla
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