UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`
`____________
`
`Case IPR2012-00026 (TLG)
`Case IPR2013-00109 (TLG)
`Patent 6,757,717 B1
`
`____________
`
`MICROSOFT CORPORATION’S BRIEF ON REMAND
`ON THE EFFECT OF THE FEDERAL CIRCUIT’S DECISION ON THE
`PATENTABILITY OF CLAIMS 1, 3, 6, 7, 9, 10, 22, AND 23
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`
`____________
`
`Case IPR2012-00026 (TLG)
`Case IPR2013-00109 (TLG)
`Patent 6,757,717 B1
`
`____________
`
`MICROSOFT CORPORATION’S BRIEF ON REMAND
`ON THE EFFECT OF THE FEDERAL CIRCUIT’S DECISION ON THE
`PATENTABILITY OF CLAIMS 1, 3, 6, 7, 9, 10, 22, AND 23
`
`
`
`I.
`
`II.
`
`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
`
`
`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIMS 6, 7, AND 9 ARE UNPATENTABLE
`FOR OBVIOUSNESS IN VIEW OF MATTIS AND DRP ........................... 1
`
`A.
`
`B.
`
`The Petition Established The
`Obviousness Of Claims 6, 7 And 9 ....................................................... 1
`
`The Board Found A Likelihood
`Of Prevailing On This Challenge .......................................................... 2
`
`C.
`
`Proxyconn Did Not Dispute The Gateway Element ............................. 3
`
`D. Microsoft’s Reply Rebutted Proxyconn’s Contentions ........................ 4
`
`E.
`
`F.
`
`G.
`
`The Board’s Final Written
`Decision Did Not Reach Obviousness .................................................. 4
`
`The Federal Circuit Narrowed
`Where The Gateway Could Be .............................................................. 5
`
`The Federal Circuit’s Decision Does Not Affect
`Microsoft’s Showing Of Obviousness Of Claims 6, 7 And 9 ............... 5
`
`III. CLAIMS 1, 3 AND 10 ARE UNPATENTABLE FOR
`OBVIOUSNESS IN VIEW OF PERLMAN AND YOHE ............................. 6
`
`A. Microsoft’s Petition Showed That These Claims Were Obvious ......... 7
`
`B.
`
`C.
`
`The Board’s Institution Decision Found That
`Microsoft Was Likely To Prevail On This Ground .............................. 7
`
`Proxyconn’s Response Conceded That Perlman Discloses
`A Sender And Receiver And Contested Only Other Issues .................. 7
`
`D. Microsoft’s Reply Rebutted
`Proxyconn’s Attempted Distinctions .................................................... 8
`
`E.
`
`The Board’s Final Written Decision Rejected Most Of
`Proxyconn’s Contentions And Found The Claims Obvious ................. 8
`
`i
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`
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
`
`
`The Federal Circuit Vacated The Board’s Determination Based
`Solely On Its Construction Of Sender And Receiver Computers .......10
`
`Claims 1, 3 And 10 Are Unpatentable For Obviousness Even
`Under The Federal Circuit’s Narrower Claim Interpretation .............10
`
`F.
`
`G.
`
`IV. CLAIMS 22 AND 23 ARE ANTICIPATED BY SANTOS .........................11
`
`A.
`
`B.
`
`C.
`
`The Board Found That Santos Anticipates .........................................12
`
`The Federal Circuit Vacated The Board’s Determination
`Based Solely On Its Reinterpretation Of “Receiver/Computer” .........12
`
`Claims 22 And 23 Are Anticipated By Santos Even
`Under The Federal Circuit’s Narrower Claim Interpretation .............13
`
`V.
`
`CONCLUSION ..............................................................................................15
`
`
`
`
`
`ii
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`
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
`
`
`TABLE OF AUTHORITIES
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`Page(s):
`
`Cases
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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................. 5, 6, 10, 13
`
`
`
`
`
`iii
`
`
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
`
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`I.
`
`INTRODUCTION
`
`The Federal Circuit’s narrower claim constructions do not affect the
`
`unpatentability of any of the eight remaining challenged claims. This brief
`
`identifies the evidence and findings already of record establishing that
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`unpatentability. Specifically, even under these narrower constructions, Mattis still
`
`discloses the claims’ “gateway,” Perlman still discloses the claims’ “receiver” and
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`“sender,” and Santos still discloses the claims’ “receiver.” All eight claims can and
`
`should be canceled based on the existing record.
`
`II. CLAIMS 6, 7, AND 9 ARE UNPATENTABLE
`FOR OBVIOUSNESS IN VIEW OF MATTIS AND DRP
`
`The Federal Circuit’s decision does not affect the unpatentability of claims
`
`6, 7 and 9 for obviousness over the combination of Mattis (2nd Pet., Ex. 1004) and
`
`DRP (2nd Pet., Ex. 1003). The Board initially determined that Microsoft was likely
`
`to prevail on this challenge (2nd Pet., Paper No. 14, p. 19) but then deemed it moot
`
`in the final written decision (1st Pet., Paper No. 73, p. 53). The Federal Circuit’s
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`narrower interpretation of the claimed location of the “gateway” in claim 6 does
`
`not affect this obviousness ground because Mattis’s gateway is located precisely
`
`where the Federal Circuit ruled it must be located.
`
`A. The Petition Established The Obviousness Of Claims 6, 7 And 9
`
`Microsoft’s second petition (IPR2013-00109) established obviousness of
`
`claims 6, 7 and 9 over Mattis and DRP (2nd Pet., pp. 18-26) with a claim-mapping
`
`Microsoft’s Brief on Remand
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`
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`Page 1
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
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`chart (2nd Pet., App. A) and a declaration of expert Dr. Darrell Long (2nd Pet., Ex.
`
`1013) explaining why a designer would have combined Mattis and DRP in the
`
`claimed manner. In particular, Microsoft explained that Mattis discloses claim 6’s
`
`element of a “gateway ... connected to said packet-switched network in such a way
`
`that network packets sent between at least two other computers pass through it” by
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`locating its gateway between clients and servers (receivers and senders) that
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`communicate over the Internet. (See 2nd Pet., App. A, 3:14-4:7, 6:3-6). Microsoft
`
`cited, among other portions, Mattis’s express reference to its proxy cache server as
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`being a “gateway” between clients and servers: “The proxy server provides a
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`‘middleman’ gateway service, acting as a server to the client, and a client to the
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`server.” (2nd Pet., Ex. 1004, 2:1-3).
`
`B.
`
`The Board Found A Likelihood Of Prevailing On This Challenge
`
`The Board found that this challenge was likely to prevail:
`
`Petitioner contends that these claims would have been obvious
`over the combination of Mattis and DRP. Pet. 4. We agree with
`Petitioner that when combined the references meet all
`requirements of these claims. App. A 15-22. A rationale for
`combining the references is set forth in the Long Declaration,
`supra. Among the reasons given by Professor Long are that the
`references are directed to the same problem (the desire to reduce
`redundancy in network data transmissions), the same solution
`(each uses MD5 digest fingerprints), and the same application
`(same type of content and distribution system). Long Decl. 10-14.
`Professor Long acknowledges that in Mattis’ disclosure the clients
`typically request an object by its URL or other name. Id. 14.
`Professor Long discusses the fact that Mattis therefore includes the
`capability of first converting object names to MD5 digests, and
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`Microsoft’s Brief on Remand
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`Page 2
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
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`thereafter uses the MD5 digests. See discussion of object keys
`supra. Professor Long concludes that Mattis and DRP would “fully
`operate together.” Id.
`
`We find Professor Long’s analysis credible, and when considered
`together with Petitioner’s claim charts, we are persuaded by this
`evidence that Petitioner has demonstrated a reasonable likelihood
`of prevailing on the issue of obviousness of claims 6, 7, and 9 over
`Mattis and DRP.
`
`(2nd Pet., Paper 14, pp. 18-19).
`
`C.
`
`Proxyconn Did Not Dispute The Gateway Element
`
`In its response (1st Pet., Paper No. 45, pp. 41-43), Proxyconn conceded that
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`Mattis locates its proxy in the claimed location for the gateway. Specifically,
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`referring to Mattis’s Figures 1-2, Proxyconn conceded that “Mattis discloses a
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`cache file system implemented on a single proxy 30, intermediate between a server
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`40 and multiple clients 10” (id., p. 41) (emphasis added). Proxyconn instead
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`challenged obviousness on grounds unrelated to the gateway’s location. Proxyconn
`
`argued that there was no motivation to combine DRP and Mattis because, it said,
`
`(1) Mattis was not directed to “reduction of redundancy in network data
`
`transmission” (id., pp. 41-42), and (2) Microsoft had identified no problem in
`
`either system requiring modification (id., p. 42). Proxyconn also argued that the
`
`combination lacked a caching computer having a means for comparison between
`
`the digests because there was no reason to modify DRP to do digest comparisons at
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`the proxy cache rather than at the client. (Id., p. 43).
`
`Microsoft’s Brief on Remand
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`
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`Page 3
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
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`The only evidence Proxyconn cited in these pages of its response was the
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`following statement by its expert Dr. Konchitsky: “In my opinion any combination
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`of DRP and Mattis lacks a caching computer having a means for comparison, as
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`required by claims 6, 7, and 9.” (See id., citing 1st Pet., Ex. 2002, ¶ 67).
`
`D. Microsoft’s Reply Rebutted Proxyconn’s Contentions
`
`Microsoft’s reply (1st Pet., Paper No. 46, pp. 14-15) noted that Proxyconn
`
`had not refuted Dr. Long’s explanation of the reasons why a designer would
`
`combine Mattis and DRP. In reply to Proxyconn’s argument that neither system
`
`needed modification, Microsoft cited Dr. Long’s unrefuted explanation that
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`“Mattis and DRP fully operate together without changing either.” (Id., p. 14).
`
`(Emphasis added). In reply to Proxyconn’s argument that Mattis does not seek to
`
`reduce redundant network transmissions, Microsoft quoted Mattis saying its goal is
`
`to do just that. (Id., pp. 14-15). In reply to Proxyconn’s argument that DRP does
`
`not compare digests at the proxy server, Microsoft cited portions of DRP
`
`disclosing just that. (Id., p. 15).
`
`E.
`
`The Board’s Final Written Decision Did Not Reach Obviousness
`
`The Board interpreted the term “gateway ... between at least two other
`
`computers” as not restricting the “two other computers” to computers that would
`
`constitute a “sender” and “receiver” in other claims. (1st Pet., Paper No. 73, pp. 17-
`
`18). Under that interpretation, the Board found that DRP anticipated these three
`
`Microsoft’s Brief on Remand
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`Page 4
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
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`claims. (Id., pp. 46-47). The Board declined to reach obviousness over Mattis and
`
`DRP on the ground that this issue was “moot.” (Id., p. 53).
`
`F.
`
`The Federal Circuit Narrowed Where The Gateway Could Be
`
`The Federal Circuit disagreed with the Board’s ruling regarding the location
`
`of the claimed “gateway,” holding that the gateway had to be located between
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`sender and receiver computers. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
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`1299 (Fed. Cir. 2015). The court vacated the Board’s final written decision on
`
`claims 6, 7, and 9 and remanded for further consideration under this narrower
`
`interpretation. Id. at 1299.
`
`G. The Federal Circuit’s Decision Does Not Affect
`Microsoft’s Showing Of Obviousness Of Claims 6, 7 And 9
`
`The Federal Circuit’s limitation on the gateway’s location does not affect
`
`Microsoft’s showing of obviousness over Mattis and DRP. The claims’ “gateway”
`
`now must be positioned between a sender and a receiver, but the record shows—
`
`without refutation—that this is precisely where Mattis’s gateway is located. As
`
`Microsoft’s petition explained, citing multiple passages in Mattis, Mattis’s proxy
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`cache server (e.g., 2nd Pet., Ex. 1004, item “30” in Figs. 1-2 and “1100” in Fig. 11)
`
`is a gateway “connected to the packet-switched Internet in such a way that packets
`
`sent between a client computer and a server computer, addressed to the server
`
`computer (e.g., naming an URL) or client computer, pass through the gateway.
`
`(’880, Figs. 1-2, 11, 1:14-2:14, 9:65-10:10, 27:50-28:2, 37:26-31, 37:42-45).” (See
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`Microsoft’s Brief on Remand
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`Page 5
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
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`2nd Pet., App. A at 6:3-6; see also id. at 3:14-4:7). Both Figures 1-2 (item “30”) and
`
`Figure 11 (item “1100”) of Mattis (2nd Pet., Ex. 1004) show this gateway proxy
`
`server positioned to intercept communications between clients (receivers) and
`
`servers (senders) over the Internet. (Id.) Proxyconn does not dispute this.
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`Nor can Proxyconn deny that in this combination DRP’s client and server
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`constitute “receiver” and “sender” computers because claim 11 also requires a
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`“receiver” and “sender” and the Federal Circuit affirmed that DRP anticipates that
`
`claim. 789 F.3d at 1303. The combination of Mattis with DRP thus locates the
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`“gateway” between a “receiver” and “sender” in the manner required by the
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`Federal Circuit.
`
`In sum, the Federal Circuit’s ruling regarding the gateway’s location does
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`not affect Microsoft’s showing that these claims’ system was obvious. The Board
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`should now reach the issue and hold these claims unpatentable on that basis.
`
`III. CLAIMS 1, 3 AND 10 ARE UNPATENTABLE FOR
`OBVIOUSNESS IN VIEW OF PERLMAN AND YOHE
`
`The Federal Circuit’s decision also does not affect the unpatentability of
`
`claims 1, 3 and 10 for obviousness over the combination of Perlman (1st Pet., Ex.
`
`1003) and Yohe (1st Pet., Ex. 1005). Because Proxyconn did not deny that Perlman
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`discloses a “sender” and “receiver” even under its narrower interpretation of those
`
`claim terms, adoption of Proxyconn’s narrower interpretation should not deter the
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`Board from declaring these claims unpatentable for obviousness.
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`Microsoft’s Brief on Remand
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`Page 6
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
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`A. Microsoft’s Petition Showed That These Claims Were Obvious
`
`Microsoft’s petition established the obviousness of claims 1, 3, and 10 over
`
`the combination of Perlman and Yohe (1st Pet., pp. 31-40) with a claim-mapping
`
`chart (1st Pet., App. A (Ex. 1001)) and the declaration of Dr. Darrell Long (1st Pet.,
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`Ex. 1007, pp. 5-18) explaining why a designer would have combined Perlman and
`
`Yohe in the claimed manner. Regarding the “sender” and “receiver” claim
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`elements, Microsoft showed that “each computer” in Perlman constitutes a
`
`“sender,” including “router R4” (1st Pet., App. A at 3:2-3), and that “each
`
`computer” constitutes a “receiver,” including “routers R1-R3 and R5-R6” (id.,
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`5:11-12). Microsoft and Dr. Long explained that Yohe provides the only claim
`
`feature arguably missing from Perlman, namely storing of digests in permanent
`
`memory rather than volatile memory. (1st Pet., pp. 36-38; Ex. 1007, pp. 11-15).
`
`B.
`
`The Board’s Institution Decision Found That
`Microsoft Was Likely To Prevail On This Ground
`
`The Board’s decision granting Microsoft’s first petition found a likelihood
`
`of prevailing on this challenge. (1st Pet., Paper 17, pp. 18-20).
`
`C.
`
`Proxyconn’s Response Conceded That Perlman Discloses
`A Sender And Receiver And Contested Only Other Issues
`
`Proxyconn conceded that Perlman discloses a “sender” and “receiver” even
`
`under Proxyconn’s narrower interpretation of those claim terms. Specifically,
`
`Proxyconn’s response (1st Pet., Paper No. 45) conceded that “Perlman discloses a
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`sending node that broadcasts a database identifier to a plurality of receiver nodes.”
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`Microsoft’s Brief on Remand
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`Page 7
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
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`(Id., p. 29). (Emphases added). Proxyconn argued, however, that Perlman was not
`
`analogous art; that it was not obvious to modify Perlman to store digests in
`
`permanent memory; and that Yohe lacks the claimed sender/computer and another
`
`element.
`
`D. Microsoft’s Reply Rebutted Proxyconn’s Attempted Distinctions
`
`In reply (1st Pet., Paper No. 46, pp. 12-14), Microsoft cited the unrefuted
`
`explanation of Dr. Long of the motivations to combine Yohe with Perlman in the
`
`claimed manner. Dr. Long and Microsoft explained why a skilled artisan would
`
`have applied Perlman’s solution to applications calling for permanent-memory
`
`cache storage of the digital digests, such as Yohe’s file-directory application. (Id.)
`
`They noted Perlman’s express teaching that its solution is not limited to routers but
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`instead applies to “any type of distributed system requiring efficient
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`synchronization of the contents of databases stored on nodes of a computer
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`network.” (Id., pp. 6-7, 13-14). Microsoft also responded to Proxyconn’s other
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`arguments. (Id., pp. 5-7, 12-14).
`
`E.
`
`The Board’s Final Written Decision Rejected Most Of
`Proxyconn’s Contentions And Found The Claims Obvious
`
`The Board “interpreted ‘sender/computer’ to mean a computer that sends
`
`data and ‘receiver/computer’ to mean a computer that receives data.” (1st Pet.,
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`Paper No. 73, p. 15). Under that interpretation, the Board rejected Proxyconn’s
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`argument that Yohe lacks a sender. (Id., p. 36). Although the Board found that
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`Microsoft’s Brief on Remand
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`Page 8
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
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`Perlman lacks “permanent storage memory” (id., pp. 33-35) and that Yohe lacks a
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`“receiver/computer including means for comparison of digital digests” (id., p. 37),
`
`it nevertheless found that the combination of Yohe and Perlman rendered claims 1,
`
`3 and 10 unpatentable for obviousness. (Id., pp. 51-52). First, the Board found that
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`a skilled artisan would have been motivated to combine these references. (Id., pp.
`
`49-51). Then it agreed that in this combination it would have been obvious to
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`combine Yohe’s disclosure of a network cache in permanent memory with
`
`Perlman’s solution:
`
`Proxyconn also argues that it would not have been obvious to
`incorporate Yohe’s permanent storage memory into Perlman’s
`router because such memory would serve no function in Perlman’s
`router. Resp. 31–32. “The test for obviousness is not whether the
`features of a secondary reference may be bodily incorporated into
`the structure of the primary reference. ... Rather, the test is what
`the combined teachings of the references would have suggested to
`those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425
`(CCPA 1981) (citations omitted). Dr. Long testified at length
`about the reasons why a skilled artisan would have used permanent
`storage memory as taught by Yohe for the cache in Perlman. Ex.
`1007, 12:4–15:9. Proxyconn proffers no persuasive evidence in
`support of its position. Therefore, we reject Proxyconn’s argument
`that a skilled artisan would not have found it obvious to use
`permanent storage memory in the receiver/computer and
`sender/computer.
`
`(Paper No. 73, pp. 50-51).
`
`Microsoft’s Brief on Remand
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`Page 9
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
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`F.
`
`The Federal Circuit Vacated The Board’s Determination Based
`Solely On Its Construction Of Sender And Receiver Computers
`
`The Federal Circuit reversed the Board’s interpretation of
`
`“sender/computer” and “receiver/computer.” It held that “the Board erred in
`
`concluding that the terms ‘sender/computer’ and ‘receiver/computer’ were broad
`
`enough to include the intermediary gateway and caching computers,” but also
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`noted that “the receiver/computer can perform its own caching, calculating, and
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`comparing functions.” 789 F.3d at 1300. Based on this interpretation, the court
`
`vacated the Board’s final written decision on claims 1, 3, and 10 and remanded for
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`a redetermination of patentability under that interpretation. Id.
`
`G. Claims 1, 3 And 10 Are Unpatentable For Obviousness Even
`Under The Federal Circuit’s Narrower Claim Interpretation
`
`The narrower interpretation of “sender” and “receiver” does not change the
`
`obviousness of claims 1, 3 and 10 over the combination of Perlman and Yohe.
`
`To begin with, Proxyconn did not deny that Perlman discloses both a
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`“sender” and a “receiver” even under its narrower interpretation of those claim
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`terms. Therefore, simply modifying Perlman’s preferred embodiment to place its
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`cache in permanent memory—e.g., to allow it to handle the file-directory
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`application disclosed in Yohe—would have resulted in a combination including
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`every element of these claims, including the “sender” and “receiver.”
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`Microsoft’s Brief on Remand
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`Page 10
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
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`Nothing in the Federal Circuit’s opinion undermines the Board’s analysis of
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`obviousness. (1st Pet., Paper No. 73, pp. 51-52). As quoted above, the Board found
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`that it would have been obvious to use “permanent storage memory as taught by
`
`Yohe for the cache in Perlman.” (Id., p. 51). That finding is undisturbed and
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`establishes the obviousness of these claims.
`
`The Federal Circuit’s narrower interpretation of “sender” and “receiver” also
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`does not undermine the reasons explained by Dr. Long and Microsoft, and
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`accepted by the Board (id., pp. 49-51), why a skilled artisan would have applied
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`Perlman’s solution in an application such as Yohe’s, where the receiver’s network
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`cache naturally is stored in permanent memory. Tellingly, nothing in the Board’s
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`analysis of this issue (id.) mentions or depends on whether Yohe’s server-side
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`computers constitute a “sender.”
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`In sum, as it indisputable and undisputed that Perlman discloses both a
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`“sender” and a “receiver” even under the Federal Circuit’s interpretation of those
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`claim terms, the Board should reinstate its obviousness determination.
`
`IV. CLAIMS 22 AND 23 ARE ANTICIPATED BY SANTOS
`
`The Federal Circuit’s decision likewise does not affect anticipation of claims
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`22-23 by Santos (1st Pet., Ex. 1004). Specifically, Santos discloses a “receiver”
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`even under the Federal Circuit’s narrower interpretation.
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`Microsoft’s Brief on Remand
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`Page 11
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`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
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`A. The Board Found That Santos Anticipates
`
`The Board’s final written decision found that “Santos describes the claimed
`
`receiver/computer” and every other limitation of claims 22 and 23, and therefore
`
`anticipates these claims. (Paper No. 73, pp. 40-46). This decision was based on the
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`Board’s interpretation of “receiver/computer” as “a computer that receives data.”
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`(Id., p. 15). The Board noted that “Santos’s two computers on opposite ends of the
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`communication channel can send and receive data.” (Id., p. 40).
`
`B.
`
`The Federal Circuit Vacated The Board’s Determination
`Based Solely On Its Reinterpretation Of “Receiver/Computer”
`
`The only aspect of the Board’s ruling addressed by the Federal Circuit was
`
`the construction of “receiver/computer.” The Federal Circuit reasoned as follows:
`
`The Board erred in concluding that the terms “sender/computer”
`and “receiver/computer” were broad enough to include the
`intermediary gateway and caching computers for similar reasons as
`explained above. The language of the specification consistently
`refers to the sender/computer, receiver/computer, gateway, and
`caching computers as separate and independent components of an
`overall system. The figures of the ’717 patent separately identify
`and number each component of the system. And nowhere does the
`’717 patent indicate that the gateway and caching computer are the
`same as, or can be subsumed within, the sender/computer and
`receiver/computer.
`
`It is true, as Microsoft and the Board point out, that Figure 4
`describes a system wherein the receiver/computer can perform its
`own caching, calculating, and comparing functions. See ’717
`patent col. 7 ll. 27–37. But the mere fact that the receiver/computer
`can perform those functions in the invention’s most basic
`embodiment does not mean that the claim term
`“receiver/computer” is the same as, or is broad enough to include,
`
`Microsoft’s Brief on Remand
`
`
`
`Page 12
`
`
`
`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
`
`
`the separately identified “gateway” and “caching computer” that
`are associated only with the invention’s more complicated Figure
`11 embodiment. To the contrary, each time the terms “gateway”
`and “caching computer” are used in the ’717 patent, they are
`differentiated from the “sender/computer” and
`“receiver/computer.”
`
`…. Stated simply, the Board’s construction of “sender/computer”
`and “receiver/computer” to include the intermediary gateway and
`caching computers does not reasonably reflect the language and
`disclosure of the ’717 patent.
`
`Microsoft, 789 F.3d at 1300.
`
`C. Claims 22 And 23 Are Anticipated By Santos Even
`Under The Federal Circuit’s Narrower Claim Interpretation
`
`The court’s narrower interpretation of “receiver” does not affect the
`
`anticipation of these claims by Santos because, as the Board noted, Santos’s two
`
`computers are “on opposite ends of the communication channel.” (1st Pet., Paper
`
`No. 73, p. 40). Specifically, Santos discloses an implementation in which the
`
`receiving computer is at one end of the communication channel and is not a
`
`gateway or intermediary forwarding received data packets to another machine.
`
`Santos “directly connected to each other” “a pair” of Pentium II PCs “via a
`
`dedicated” Ethernet connection. (1st Pet., Ex. 1004, p. 9, and p. 9, § 3.4, ¶ 1; see
`
`also 1st Pet., App. A at p. 6, lns. 7-8 (“Receiver implementation is an ‘Intel-based
`
`PentiumII’ computer running Linux operating system (Santos § 3.4, ¶ 1), ….”)).
`
`(Both machines also were connected to the local area network (LAN) for the
`
`authors’ research group. (Id.)) The “compressor machine” sent data packets and
`
`Microsoft’s Brief on Remand
`
`
`
`Page 13
`
`
`
`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
`
`
`digests over this dedicated “compressed channel” to the second PC running the
`
`“decompressor module.” (Id.) Santos does not describe this Pentium II
`
`decompressor PC as an intermediary, relay, router or gateway for a downstream
`
`client. Nor does Santos describe this decompressor PC forwarding to a client or
`
`any other machine the data packets output by its user-level “decompressor module”
`
`process (e.g., id., Fig. 3). Nor does it disclose that this decompressor PC was even
`
`capable of forwarding data packets, instead noting that capability only for the
`
`compressor PC: “The compressor machine was configured with IP forwarding
`
`enabled in the kernel.” (Id., p. 9). On the contrary, the only disclosed use of the
`
`packets received by this decompressor PC is by the decompressor machine itself.
`
`(Id., pp. 9-10). As Microsoft explained in its Reply: “Santos implements the
`
`receiver as a general-purpose Pentium II 300MHz PC in which the data packets are
`
`processed by a user-level program, located on an Ethernet LAN (IPR2012-00026,
`
`Ex. 1004 (“Santos”) § 3.4). The computer’s user-level program necessarily ‘uses’
`
`the data.” (1st Pet., Paper No. 46, pp. 7-8).
`
`It is true that Santos also mentions an intended commercial embodiment in
`
`which the decompressor module would reside in a router and relay to various
`
`clients packets received over the Internet from a remote “compressor.” (1st Pet., Ex.
`
`1004, p. 6). But, that commercial router embodiment is not the dedicated-Ethernet
`
`implementation that the authors assembled and tested in their lab, and described in
`
`Microsoft’s Brief on Remand
`
`
`
`Page 14
`
`
`
`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
`
`
`their paper. As noted, the test implementation directly connected together the two
`
`PCs via a dedicated Ethernet connection with the receiving decompressor PC as
`
`one endpoint of that communication channel. They were not remotely separated by
`
`the Internet and the receiver is not described as relaying received packets to a
`
`client or any other machine.
`
`Because the Federal Circuit’s decision did not affect any other aspect of the
`
`Board’s decision on this challenge to claims 22 and 23, the Board should again
`
`find these claims anticipated by Santos.
`
`V. CONCLUSION
`
`Based on the existing record, the Board should (1) cancel claims 6, 7 and 9
`
`for obviousness over the combination of Mattis and DRP; (2) cancel claims 1, 3
`
`and 10 for obviousness over the combination of Perlman and Yohe; and (3) cancel
`
`claims 22 and 23 for anticipation by Santos.
`
`
`
`Dated: September 11, 2015
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/John D. Vandenberg/
`John D. Vandenberg
`Registration No. 31,312
`Klarquist Sparkman, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`Microsoft’s Brief on Remand
`
`
`
`Page 15
`
`
`
`Case IPR2012-00026; IPR2013-00109; Patent 6,757,717
`
`
`Certificate of Service in Compliance With 37 C.F.R. § 42.6(e)(4)
`
`The undersigned certifies that on September 11, 2015 a true and correct copy
`
`of the foregoing, MICROSOFT CORPORATION’S BRIEF ON REMAND ON
`
`THE EFFECT OF THE FEDERAL CIRCUIT’S DECISION ON THE
`
`PATENTABILITY OF CLAIMS 1, 3, 6, 7, 9, 10, 22, and 23, was served via
`
`electronic mail, per agreement of the parties, on the following counsel for Patent
`
`Owner Proxyconn, Inc.:
`
`Matthew L. Cutler
`mcutler@hdp.com
`Bryan K. Wheelock
`bwheelock@hdp.com
`Douglas A. Robinson
`drobinson@hdp.com
`Greg W. Meyer
`gmeyer@hdp.com
`HARNESS, DICKEY & PIERCE, PLC
`7700 Bonhomme Ave., Suite 400
`Clayton, MO 63105
`
`
`
`
`
`
`
`By /John D. Vandenberg/
`
`John D. Vandenberg, Reg. No. 31,312
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 1
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