Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Date: November5, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMWARE, INC.,
`Petitioner,
`
`V.
`
`INTELLECTUAL VENTURESII LLC,
`Patent Owner.
`
`IPR2020-00859
`Patent RE44,818 El
`
`Before DAVID C. McKONE, JOHN A. HUDALLA,and
`JOHN D. HAMANN,Administrative Patent Judges.
`
`HUDALLA,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`VMware,Inc. (“Petitioner”) filed a Petition (Paper2, “Pet.”)
`
`requesting an inter partes review of claims 1, 30, 32, 33, and 37-42 (“the
`
`challenged claims”) of U.S. Patent No. RE44,818 El (Ex. 1001, “the ’818
`
`patent”). Petitioner filed a Declaration of John R. Black,Jr., Ph.D.
`
`(Ex. 1005) with its Petition. With our authorization (Ex. 1040), Petitioner
`
`also filed a supplemental brief (Paper 7, “Supp. Br.”’) to address the Board’s
`
`
`571-272-7822
`
`Paper 13
`Date: November5, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMWARE, INC.,
`Petitioner,
`
`V.
`
`INTELLECTUAL VENTURESII LLC,
`Patent Owner.
`
`IPR2020-00859
`Patent RE44,818 El
`
`Before DAVID C. McKONE, JOHN A. HUDALLA,and
`JOHN D. HAMANN,Administrative Patent Judges.
`
`HUDALLA,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`VMware,Inc. (“Petitioner”) filed a Petition (Paper2, “Pet.”)
`
`requesting an inter partes review of claims 1, 30, 32, 33, and 37-42 (“the
`
`challenged claims”) of U.S. Patent No. RE44,818 El (Ex. 1001, “the ’818
`
`patent”). Petitioner filed a Declaration of John R. Black,Jr., Ph.D.
`
`(Ex. 1005) with its Petition. With our authorization (Ex. 1040), Petitioner
`
`also filed a supplemental brief (Paper 7, “Supp. Br.”’) to address the Board’s
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`precedential decision in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
`
`(PTAB Mar. 20, 2020) (precedential) (“Fintiv”’). Patent Owner, Intellectual
`
`Ventures II LLC (“Patent Owner”), filed a Preliminary Response (Paper 8,
`
`“Prelim. Resp.”).
`
`Wehaveauthority to determine whetherto institute an inter partes
`
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). Under
`
`35 U.S.C. § 314(a), we may not authorize an inter partes review unless the
`
`information in the petition and the preliminary response “showsthatthereis
`
`a reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” For the reasonsthat follow,
`
`weinstitute an inter partes review as to claims1, 30, 32, 33, and 37-42 of
`
`the ’818 patent on all grounds of unpatentability presented.
`
`A.
`
`Real Parties-in-Interest
`
`I. BACKGROUND
`
`Petitioner identifies VMware, Inc., EMC Corporation, and Dell
`
`TechnologiesInc. as real parties-in-interest. Pet. 69. Patent Owner
`
`identifies Intellectual Ventures IJ LLC as the real party-in-interest. Paper 5,
`
`1.
`
`B.
`
`Related Proceeding
`
`Theparties identify the following proceeding related to the
`
`’818 patent (Pet. 69-70; Paper5, 1):
`
`Intellectual Ventures I, LLC v. VMWare, Inc., No. 1:19-cv-01075
`
`(W.D.Tex.filed July 31, 2019) (“the underlyinglitigation”).
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`C.
`
`The ’818 patent
`
`The °818 patent is a broadening reissue of U.S. Patent No. 7,711,789
`
`B1 (‘the ’789 patent”). Ex. 1001, code (64), 1:12-16. The ’818 patentis
`
`directed to “distributed computing systems and, moreparticularly, to the
`
`quality of service (QoS) managementofvirtualized input/output(I/O)
`
`subsystemsin virtual I/O servers.” Jd. at 1:20-23. Figure 1 of the
`
`’818 patent is reproduced below.
`
`102a
`
`102b
`
`102c
`
`Application
`Servers
`
`Application
`Servers
`
`Application
`Servers
`
`Interface
`
`Network
`
`n4
`i—
`woOs subsystems 8 f Subsystems 5
`
`18 =
`
`3
`
`116
`> avo
`
`Fig. 1
`
`Figure 1 depicts I/O switch fabric 104 interconnecting application
`servers 102a—c andvirtual I/O server 106. Id. at 2:66-3:2. Storage area
`
`network (SAN)I/O subsystems 114 andlocal area network (LAN)I/O
`
`subsystems 116 are attached to virtual I/O server 106. Jd. at 3:24. Virtual
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`I/O server 106 has host bus adapters (HBAs) 108 as physical storage
`
`network interfaces connecting with SAN I/O subsystems 114 and network
`
`interfaces (NICs) 112 as physical LAN interfaces connecting with LAN I/O
`
`subsystems 116. Jd. at 3:49. Virtual I/O server 106 connects to I/O switch
`
`fabric 104 through I/O fabric interface 110. Jd. at 3:9-11. Virtual I/O
`
`server 106 creates virtual device interfaces for application servers 102 to
`
`access the I/O subsystemsasif the I/O subsystems were directly connected
`
`to application servers 102. Jd. at 3:18—21.
`
`Figure 2 of the ’818 patent is reproduced below.
`
`
`
`Kernel
`
`VES Layer
`
`213
`
`Generk Black interface
`
`Monitor
`250
`
`alu
`
`208
`2K
`
`Vieux HBA
`
`
`
`
`
`
`
`
`
`
`
`
`LO Fabric Driver Stack
`
`
`LO Fabric. PHY Interface
`
`TO Sesitch Fabric.
`
`Fig, 2
`
`Figure 2 is a schematic diagramillustrating a protocol stack and software
`modules of an application server. /d. at 2:32-34. I/O fabric PHY
`
`interface 202 is a hardwareinterface or interconnection to I/O switch
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`fabric 104. Jd. at 4:32-33. Encapsulation module 206 handles
`
`encapsulation processes associated with the virtualization of I/O subsystems
`
`between application server 102 and network interfaces 112 and host bus
`
`adapters 108. Jd. at 4:51-55. Encapsulation module 206 presents a generic
`
`interface to higher layer virtual interfaces, such as virtual HBA layer 208a.
`
`Id. at 4:55-57. Virtual HBA layer 208a establishes a connection with the
`
`virtual block interface of virtual I/O server 106 to forward commandsor
`
`other messages. Jd. at 5:10-13. Virtual network interface 220 is used to
`
`access network interfaces of virtual I/O server 106 over I/O switch
`
`fabric 104. Jd. at 5:17—20. Virtual HBA layer 208a is assigned one or more
`
`virtual World Wide Names (WWNs).
`
`/d. at 7:30-32.
`
`The ’818 patent also discloses a hierarchical token bucket (HTB)
`
`scheduling mechanism that controls whether packets are forwarded for
`
`further processing or enqueued. Jd. at 9:66-10:2, 10:21-36. Such a
`
`mechanism mayinclude hierarchical classes. Jd. at 10:15-21.
`
`The ’789 patent issued from an application that wasfiled on
`
`December 7, 2007. Ex. 1002, code (22). Accordingly,the earliest possible
`
`effective filing date for the claims of the °818 patent is December 7, 2007.
`
`Ex. 1001, code (64).
`
`D.
`
`Illustrative Claim
`
`Ofthe challenged claims, claims 1, 30, 32, and 42 are independent.
`
`Claim 33 depends from claim 32, and claims 37-41 depend directly or
`
`indirectly from claim 32. Claim 1 is illustrative of the challenged claims and
`
`recites:
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`1.
`
`A method, comprising
`maintaining a connection, over a networkfabric, to a
`virtual storage network interface layer of an application server,
`wherein the virtual storage networkinterface layer is associated
`with a virtual storage node identifier;
`presenting, at a physical storage network interface, the
`virtual storage node identifier to a storage area network;
`enforcing a hierarchical token bucket resource allocation
`of bandwidth across the physical storage network interface;
`receiving, over the connection, a storage command from
`the virtual storage network interface layer of the application
`server, wherein the storage command is a commandto read data
`from, or write data to, a target connected to the storage area
`network;
`classifying the storage commandrelative to the
`hierarchical token bucket resource allocation to determine a
`current amountof tokens available;
`
`comparing a data transfer size of the storage command to
`the current amount of tokensavailable;
`forwarding the data associated with the storage command
`to the data’s destination, if the current amount of tokens
`available are sufficient; and
`
`buffering the storage command,if the current amountof
`tokens available are insufficient.
`
`Ex. 1001, 17:44-18:5.
`
`E.
`
`Prior Art
`
`Petitioner relies on the following priorart:
`
`U.S. Patent No. 7,757,033 B1, filed July 12, 2004, issued
`July 13, 2010 (Ex. 1008, “Mehrotra”);
`U.S. Patent No. 7,782,869 B1, filed Nov. 29, 2007, issued
`Aug. 24, 2010 (Ex. 1009, “Srinivasa”);
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`M. Brown, Traffic Control HOWTO, Version 1.0.2,
`Oct. 2006 (Ex. 1010, “Brown’”’); and
`J.L. Valenzuela et al., “A Hierarchical Token Bucket
`Algorithm to Enhance QoS in IEEE 802.11: Proposal,
`Implementation and Evaluation,” Proceedings,
`IEEE 60th
`Vehicular Technology Conference, Vol. 4, 26-29 Sept. 2004,
`pp. 2659-62 (Ex. 1012, “Valenzuela”).
`
`F.
`
`The Asserted Grounds
`
`Petitioner challenges claims 1, 30, 32, 33, and 37-42 of the
`
`
`
`
`
`’818 patent on the following grounds(Pet. 19):
`
`
`
`
`Il. ANALYSIS
`
`
`
`
`
`
`Wenow consider Petitioner’s asserted grounds and Patent Owner’s
`
`argumentsin the Preliminary Response to determine whetherPetitioner has
`
`' The Leahy-Smith America Invents Act (“AJA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), amended 35 U.S.C. §§ 102, 103, and 112.
`Because the ’818 patent was filed before March 16, 2013 (the effective date
`of the relevant amendments), the pre-AIA versions of §§ 102, 103, and 112
`apply.
`* Petitioner refers collectively to Brown and Valenzuela as the “HTB
`References.” Pet. 9. Notwithstanding, Petitioner’s introduction of the term
`“HTB References” in the Petition could be read to include additional
`references based on Petitioner’s use of the qualifier “including, for
`instance....” Jd. We address that potentially broader interpretation below.
`See infra note 5.
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`met the “reasonable likelihood” standard for institution under 35 U.S.C.
`
`§ 314(a).
`
`A.
`
`Legal Standards
`A claim is anticipated if a single prior art reference either expressly or
`
`inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai
`
`Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). Although the elements must
`
`be arranged or combinedin the same wayasin the claim,“the reference
`need notsatisfy an ipsissimis verbistest,”i.e., identity of terminologyis not
`
`required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re
`
`Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990)).
`
`A claim is unpatentable under 35 U.S.C. § 103(a)if the differences
`
`between the claimed subject matter andthe prior art are such that the subject
`
`matter, as a whole, would have been obviousat the time the invention was
`
`madeto a person having ordinary skill in the art to which said subject matter
`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`
`determinations, including (1) the scope and content of the prior art; (2) any
`
`differences between the claimed subject matter and thepriorart; (3) the level
`
`of skill in the art; and (4) where in evidence, so-called secondary
`
`considerations. See Graham vy. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`Wealso recognize thatprior art references must be “considered together
`
`with the knowledge of one of ordinary skill in the pertinent art.” Jn re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)(citing In re Samour, 571 F.2d
`
`559, 562 (CCPA 1978)).
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`B.
`
`Level of Ordinary Skill in the Art
`Petitioner contends a person ofordinary skill in the art (or “POSITA”)
`
`would have had a “Bachelor of Science in Electrical Engineering, Computer
`
`Science, or Computer Engineering, or equivalent, and at least two years of
`
`prior experience with distributed computer systems involving virtualization
`
`as well as QoS,including class-based scheduling mechanisms such as
`
`hierarchical token bucket.” Pet. 17-18. Dr. Black testifies similarly.
`
`Ex. 1005 9 24. Patent Ownerdoes not dispute Petitioner’s definition of the
`
`level of ordinary skill at this time.
`
`For purposesof this Decision, we adopt Petitioner’s definition of the
`level of ordinary skill in the art. On the present record, we are satisfied that
`
`this definition comports with the level of skill necessary to understand and
`
`implementthe teachings of the ’818 patent and the asserted priorart.
`
`C.
`
`Claim Interpretation
`In an inter partes review, we construe each claim “in accordance with
`the ordinary and customary meaning of such claim as understood by one of
`
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`37 C.E.R. § 42.100(b) (2019). Accordingly, our claim construction standard
`
`is the sameasthat of a district court. See id. Under the standard applied by
`
`district courts, claim terms are generally given their plain and ordinary
`
`meaning as would have been understood by a person ofordinary skill in the
`
`art at the time of the invention and in the context of the entire patent
`
`disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
`(en banc). “There are only two exceptionsto this general rule: 1) when a
`patenteesets out a definition and acts as his own lexicographer, or 2) when
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`the patentee disavowsthe full scope of a claim term either in the
`
`specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
`
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`
`Petitioner notes the parties have put forth certain claim terms for
`
`construction in the underlyinglitigation, but that no issues in this proceeding
`
`turn on the construction of these terms. Pet. 18-19 (citing Exs. 1006, 1007).
`
`Patent Ownerlikewise contends “the Board does not need to construe these
`
`terms to resolve the instant dispute.” Prelim. Resp. 7-8. Thus, based on the
`
`current record, we determine that no terms require explicit construction.
`
`See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`
`F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are
`
`in controversy, and only to the extent necessary to resolve the controversy’
`
`....? (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999))).
`
`D.
`
`Patent Owner’s Arguments Regarding Discretionary Denial
`
`Institution of inter partes review is discretionary. Harmonic Inc.v.
`
`Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [Office] is
`
`permitted, but never compelled,to institute an [inter partes review]
`
`proceeding.”); 35 U.S.C. § 314(a) (“The Director may not authorize an inter
`
`partes review to be instituted unless the Director determinesthat the
`
`information presentedin the petition filed under section 311 and any
`
`responsefiled under section 313 showsthat there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims
`
`challengedin the petition.” (emphasis added)). Patent Owner contends we
`
`should exercise our discretion to deny institution under 35 U.S.C. §§ 314(a)
`
`10
`
`
`
`IPR2020-00859
`Patent RE44,818 E]
`
`and 325(d). Prelim. Resp. 8-30. Petitioner provides arguments about
`
`discretionary denial based on § 314(a). Supp. Br. 1-5. We now consider the
`
`parties’ arguments regarding discretionary denial.
`
`1.
`
`Arguments Under 35 U.S.C. § 314(a)
`
`In Fintiv, the Board discussed potential applications of NHK Spring
`
`Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12,
`
`2018) (precedential) (“NHK’’), as well as a numberofother cases dealing
`
`with discretionary denial under § 314(a). Fintiv identifies a non-exclusive
`
`list of factors parties may consider addressing, particularly where thereis a
`
`related, parallel district court action and whether such action provides any
`
`basis for discretionary denial. Fintiv, Paper 11 at 5-16. Those factors
`
`include:
`
`1. whether the court granted a stay or evidence exists that one
`maybe granted if a proceedingis instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investmentin the parallel proceeding by the court and the
`parties;
`4, overlap betweenissuesraised in the petition and in the
`parallel proceeding;
`5. whetherthe petitioner and the defendantin the parallel
`proceeding are the sameparty; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Id. at 5-6.
`
`Wenowconsiderthese factors to determine whether we should use
`
`our discretion to deny institution under 35 U.S.C. § 314(a). In evaluating the
`
`factors, we take a holistic view of whetherefficiency and integrity of the
`
`11
`
`
`
`IPR2020-00859
`Patent RE44,818 El]
`
`system are best served by denyingorinstituting review. Fintiv, Paper 11 at
`
`6.
`
`a.
`
`Stay in the Underlying Litigation
`
`Theparties indicate that the underlying litigation has not been stayed,
`
`and neither party indicates that Petitioner previously has soughta stay.
`
`Supp. Br. 5; Prelim. Resp. 12-13. Patent Ownerarguesthat the presiding
`
`judge in the underlying litigation “is unlikely to issue a stay if the IPR is
`
`instituted in this case” based on his prior denial of a stay motion in another
`
`case. Prelim. Resp. 12-13. Petitioner argues this factor does not weigh for
`
`or againstinstituting an inter partes review. Supp. Br. 5. We agree with
`Petitioner. In the absence of any evidencespecific to this case, we decline to
`
`speculate about the presiding judge’s inclinations. See Apple Inc. v. Fintiv,
`Inc., IPR2020-00019, Paper 15 at 12 (PTAB May13, 2020) (informative)
`(“Wedecline to infer, based on actions taken in different cases with different
`
`facts, how the District Court would rule should a stay be requested by the
`
`parties in the parallel case here.”). Thus, we find this factor is neutral.
`
`b.
`
`TheTrial Date in the Underlying Litigation
`
`Patent Ownercontendsthetrial in the underlyinglitigation “is
`
`currently scheduled to begin and conclude in April 2021, seven months
`
`before the Board’s projected statutory deadline.” Prelim. Resp. 13 (citing
`
`Ex. 2019). Nevertheless, Petitioner contends “the trial date for the district
`
`court action is unclear because the Markman hearing for the ’818 patent has
`
`not been scheduled and becausethe trial may be postponed.” Supp. Br. 5
`
`(citing Ex. 1038, 64:2—22).
`
`12
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`Anorderin the underlyinglitigation indicates that the court nominally
`
`set the trial date for early April 2021, albeit without a specific starting date,
`
`and indicates that an actual trial date will be set at the conclusion of a
`
`Markmanhearing. Ex. 2019, 7-8. Nevertheless, a more recenttranscript of
`proceedings before the court indicates that the presiding judge is amenable
`to setting the trial date sometime between June and Decemberof 2021.
`Ex. 1038, 64:2-22. As such,thetrial could happen before or after our
`
`projected statutory deadline for a final written decision. Under those
`circumstances, wefind this factor is neutral.
`
`C.
`
`Investment by the Court and the Parties in the
`Underlying Litigation
`Petitioner contendsthat “[t]he court has not issued any substantive
`
`opinions regarding the scopeorvalidity of the challenged claim[s].” Supp.
`Br. 3. Petitioner also argues that the instant Petition does not depend on the
`
`claim construction issues that have been briefed in the underlyinglitigation.
`
`Id. at 3+4.
`
`As evidence of the court’s investmentin the underlyinglitigation,
`
`Patent Ownercontends“t]he parties have engaged in discovery, completed
`
`claim construction briefing, and the court has held a Markman hearing and
`
`issued a claim construction order.” Prelim. Resp. 15 (citing Exs. 1023-
`
`1026, 2001-2007). Patent Owneralso argues that Petitioner is wrong to
`
`suggest that the court’s investment in the underlyinglitigation only carries
`weightif it is substantively related to the unpatentability grounds presented
`
`in the Petition.
`
`/d. at 16.
`
`Contrary to Patent Owner’s argument(id.), we will consider whether
`the alleged investmentin the underlying litigation is tethered to the merits of
`
`13
`
`
`
`IPR2020-00859
`Patent RE44,818 El]
`
`the parties’ validity positions in that litigation and, by extension,their
`
`patentability positions here. See Sand Revolution II, LLC v. Continental
`
`Intermodal Group—Trucking LLC, IPR2019-01393, Paper 24 at 10-11 (June
`
`16, 2020) (informative) (“Sand Revolution’). The parties have filed a
`
`numberof claim construction papers, and portions of these papers pertain to
`
`the °818 patent. See, e.g., Exs. 1006-1007, 1023-1026, 2001-2002, 2004.
`Nevertheless, the court’s preliminary claim constructions? as cited by Patent
`Owner(Prelim. Resp. 15) do not appear to relate to the ’818 patent. See
`Ex. 2007. Thus, it does not appearthat the parties’ and the court’s claim
`
`construction efforts to date have advancedorclarified any issues related to
`
`patentability that would be decided during an inter partes review.
`
`Wealso considerthe present posture of the underlyinglitigation.
`
`According to the scheduling order, fact discovery has been completed and
`
`expert discovery has begun. See Ex. 2019, 6. At least some of this work—
`
`especially expert discovery, whichlikely addresses the validity of the
`
`°818 patent claims—will be relevant to issues in this case. Thus, we find
`
`this factor slightly favors the exercise of discretionary denial.
`
`d.
`
`Overlap of the Issues
`
`Regarding overlap of the issues, Petitioner cites a stipulation it made
`
`in the underlyinglitigation that it “will not pursue invalidity on the same
`
`grounds—or even the same references—if the Boardinstitutes trial in this
`
`3 Moreover, Patent Owner’s characterization of these preliminary
`constructions as a “claim construction order” (Prelim. Resp. 15) appears to
`be overstatement given that Exhibit 2007 refers to an email from a court
`clerk to the parties that merely forwards certain preliminary constructions
`that would be discussed at a later claim construction hearing.
`
`14
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`proceeding.” Supp. Br. 1 (citing Ex. 1039). In particular, the stipulation
`
`states that Petitioner will not pursue the groundslisted in the Petition or “‘any
`
`other ground involving the [asserted] references alone or in combination
`
`with any other reference.” Ex. 1039, 2. Petitioner contendsthis stipulation
`
`is broader than the one considered in Sand Revolution, where the petitioner
`
`merely stipulated not to pursue identical grounds. Supp. Br. 2-3. Petitioner
`
`urgesus to follow Sand Revolution, among other cases, and find that this
`
`factor weighs substantially in favor ofinstituting inter partes review. Seeid.
`
`Patent Ownerarguesthat “[t]he Petition includes the same claims and
`
`substantially the same grounds, arguments, and evidenceasthe parallel
`
`proceeding.” Prelim. Resp. 16. According to Patent Owner, Petitioner’s
`
`stipulation “does ot eliminate the substantial overlap between the
`
`proceedings and does not address the substantially similar art that it has
`
`asserted in the district court proceeding.” Jd. at 17. In particular, Patent
`
`Ownercontendsthat Petitioner asserts other references in the underlying
`
`litigation that are cumulative to the HTB references,i.e., Brown and
`
`Valenzuela. Id. at 17-19. Patent Owneralso contends Petitioner has failed
`
`to establish that the grounds that would remain in the underlyinglitigation
`
`are materially different from those in the Petition. See id. at 19-20.
`
`Wefind that, in the event we wereto institute inter partes review,
`
`Petitioner’s stipulation (Ex. 1039) would streamline the court’s
`
`consideration of invalidity issues in the underlying litigation and create a
`
`significant distinction between this case and the underlyinglitigation.
`
`Importantly, the stipulation would ensure that no commonpriorart
`
`references are considered in the two forums. We agree with Petitioner
`(Supp. Br. 2-3) that, consistent with Sand Revolution, Petitioner’s
`
`15
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`stipulation is broad and addresses concerns regarding duplicative efforts and
`
`potentially conflicting decisions in a substantial way. See Sand Revolution,
`
`Paper 24 at 12 & n.5. And, even if certain references in the underlying
`
`litigation are merely cumulative to the HTB references, Patent Owner
`
`acknowledgesthat “different primary references” would be consideredin the
`
`underlyinglitigation. See Prelim. Resp. 18. Further, the record does not
`
`reflect that these different primary references are cumulative of the primary
`
`references here, as Patent Owner seemsto imply. See id. at 19-20. Thus,
`
`weviewthis factor as weighing strongly against exercising discretion to
`
`deny institution.
`
`e.
`
`WhetherPetitioner is Unrelated to the Defendant
`in the Underlying Litigation
`
`“If a petitioner is unrelated to a defendantin an earlier court
`
`proceeding, the Board has weighedthis fact against exercising discretion.”
`
`Fintiv at 13-14. Both parties acknowledgethat Petitioner here is the
`
`defendantin the underlyinglitigation. Supp. Br. 5; Prelim. Resp. 16. Thus,
`
`this factor does not weigh against exercising discretionary denial.
`
`f.
`
`Other Considerations
`
`Thefinal Fintiv factor is a catch-all that takes into account any other
`
`relevant circumstances. The decision whetherto exercise discretion to deny
`
`institution under § 314(a) is based on “‘a balanced assessmentofall relevant
`
`circumstancesin the case, including the merits.” Patent Trial and Appeal
`
`Board Consolidated Trial Practice Guide 58 (Nov. 2019) (“Consolidated
`
`Trial Practice Guide”), available at https://www.uspto.gov/sites/default/files/
`
`documents/tpgnov.pdf. Considering the merits of the unpatentability
`
`16
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`arguments in the Petition and Patent Owner’s arguments in the Preliminary
`
`Response,as discussed below, we determine Petitioner has established a
`
`reasonable likelihood that Petitioner would prevail with respect to the
`
`challenged claims. As discussed below,Petitioner is likely to show that
`
`Srinivasa disclosesall limitations of challenged claims, including the
`
`limitations directed to hierarchical token buckets. See infra § IIE.
`
`Accordingly, the merits of at least one ground presentedin the Petition favor
`
`institution.
`
`g.
`
`Conclusion Regarding Discretionary Denial Under
`§ 314(a)
`
`The only Fintiv factor that weighs in favor of exercising our discretion
`
`to deny institution is the one that relates to investment in the underlying
`
`litigation by the court and the parties, and we have accorded this factor only
`
`slight weight. Against this showing, Petitioner has stipulated to that it will
`
`not pursue any invalidity theories in the underlyinglitigation that are based
`on any reference asserted here. This effectively counteracts concerns about
`
`overlapping issues in the two proceedings. See Sand Revolution, Paper 24 at
`
`12 n.5. Wealso note Petitioner’s relatively strong preliminary showing of
`
`unpatentability based on Srinivasa. In our view, these considerations
`
`outweigh concerns aboutinefficiency based on the posture of the underlying
`
`litigation. For these reasons, we decline to exercise our discretion
`
`under 35 U.S.C. § 314(a) to deny inter partes review.
`
`Arguments Under 35 U.S.C. § 325(d)
`2.
`When determining whether to institute an inter partes review, “the
`
`Director may take into account whether, and reject the petition or request
`
`17
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`because, the sameor substantially the same prior art or arguments previously
`
`were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-
`
`part framework in determining whether to exerciseits discretion under
`
`§ 325(d), specifically:
`
`(1) whether the sameorsubstantially the same art previously
`waspresented to the Office or whether the same or substantially
`the same arguments previously were presented to the Office;
`and (2) if either condition of thefirst part of the frameworkis
`satisfied, whether the petitioner has demonstrated that the
`Office erred in a manner material to the patentability of
`challenged claims.
`
`Advanced Bionics, LLC v. Med-El Elektromedizinische Gerdte GmbH,
`
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In
`
`applying the two-part framework, we consider several non-exclusive factors,
`
`including:
`
`(a) the similarities and material differences between the asserted
`art and the priorart involved during examination;(b) the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whetherthe prior art
`wasthe basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the mannerin
`whichPetitionerrelies on the prior art or Patent Owner
`distinguishesthe prior art; (e) whether Petitioner has pointed
`out sufficiently how the Examinererred in its evaluation of the
`asserted prior art; and (f) the extent to which additional
`evidence andfacts presented in the Petition warrant
`reconsideration ofthe prior art or arguments.
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`
`Paper 8 at 17-18 (PTAB Dec. 15, 2017) (precedential as to SectionIII.C.5,
`first paragraph) (“Becton, Dickinson’). If, after review of factors(a), (b),
`
`and (d), we determine that the same or substantially the sameart or
`
`18
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`arguments previously were presented to the Office, then factors (c), (e), and
`
`(f) relate to whether the petitioner demonstrates that the Office erred in a
`
`manner materialto the patentability of the challenged claims. Advanced
`
`Bionics, Paper 6 at 10.
`
`Patent Ownercontends Valenzuela wasalready considered during
`
`prosecution because it appeared on an Information Disclosure Statement
`
`(IDS). Prelim. Resp. 26 (citing Ex. 1001, code (56); Ex. 1004, 82). Patent
`
`Ownerfurther contends Brown—andanygeneral knowledgeofhierarchical
`
`token buckets ascribed to a person of ordinary skill in the art—is
`
`substantially similar to Valenzuela. Jd. at 27-28. Patent Owneradditionally
`
`contends the combination of Mehrotra and the HTB references(or the
`
`knowledgeofan ordinarily skilled artisan regarding the same) is
`
`substantially similar to the combination of Gildfind and Pan applied by the
`patent examiner during prosecution. /d. at 28-30 (citing Ex. 1004, 73, 110-
`
`13).
`
`Petitioner argues that the patent examiner’s “[unpatentability]
`
`rejections were not based on anyofthe references raised in this proceeding”
`
`and that “[t]he references relied upon by the examinerdid not disclose the
`
`use ofthe hierarchical token bucket algorithm in a virtual I/O server to
`
`access remote subsystems.” Pet. 22.
`
`Petitioner’s anticipation ground based on Srinivasa applies a reference
`
`that was not previously considered before the Office. In addition, Patent
`
`Owner’s arguments regarding § 325(d)are all based on obviousness
`
`combinations, whereas Srinivasa is asserted in an anticipation ground. As
`
`such, Petitioner uses Srinivasa in a different manner than any ofthe
`
`references Patent Ownerhighlights in its arguments. Because the Srinivasa
`
`19
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`ground applies different art in a different way, we find that the same or
`
`substantially the same art or arguments were not previously presented.
`
`Accordingly, we need not proceed past the first stage of the Advanced
`
`Bionics framework with respect to Srinivasa. Thus, § 325(d) is not
`
`implicated by Petitioner’s reliance on Srinivasa.
`
`Regarding the two obviousness grounds based on Mehrotra, we note
`
`that Mehrotra was not previously presented to the Office. Although Patent
`
`Ownerarguesthat Petitioner’s ground based on Mehrotra aloneis
`
`cumulative of a rejection during prosecution based on Gildfind and Pan,
`
`Patent Owneralso arguesthat Petitioner’s ground based on Mehrotra and the
`
`HTBreferences is cumulative in the same way. Prelim. Resp. 28-30. But
`
`Patent Ownerdoesnot explain persuasively why or how Mehrotra can be
`
`cumulative of Gildfind and Pan both with and without the HTB references.
`
`Wealso note that Petitioner applies the HTB references here (Pet. 56) just as
`
`Pan wasapplied during prosecution—for teaching limitations related to
`
`hierarchical token buckets. See Prelim. Resp. 29 (citing Ex. 1004, 73-74).
`
`For these reasons, and considering that Mehrotra was not previously before
`
`the Office, we find that Petitioner’s ground based on Mehrotra aloneis not
`
`the same or substantially the sameas art or arguments previously presented
`
`to the Office. Thus, we do not proceedpastthe first stage of the Advanced
`
`Bionics framework, and wefind that Petitioner’s ground based on Mehrotra
`
`alone does not implicate § 325(d).
`
`Wenow consider Patent Owner’s arguments under § 325(d) against
`
`the combination of Mehrotra and the HTB references. One of the HTB
`
`references, Valenzuela, was cited in an IDS. Ex. 1004, 82. Because the
`
`same art was previously presented to the Office, we proceed to the second
`
`20
`
`
`
`IPR2020-00859
`Patent RE44,818 El
`
`part of the Advanced Bionics framework. Regarding Becton, Dickinson
`
`Factor (c), the extent to which the asserted art was evaluated during
`
`examination, Valenzuela was not applied by the patent examiner. This
`
`factor favors institution. Regarding Becton, Dickinson Factor(f), the extent
`
`to which additional evidence and facts presented in the Petition warrant
`
`reconsideration ofthe prior art, we note that Valenzuela is a secondary
`
`reference for teaching limitations related to hierarchical token bucketsthatis
`
`combined with Mehrotra, a primary reference that was not before the Office.
`
`See Pet. 56. The combination of Mehrotra and Valenzuela was never
`
`previously evaluated. This factor also favorsinstitution. Regarding Becton,
`
`Dickinson Factor (e), we agree with Patent Owner(Prelim. Resp. 27) that
`
`Petitioner makes no attempt to explain how the Office erred in applying
`
`Valenzuela. This factor favors exercising discretion to d
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
