`
`Trials@uspto.gov
`571-272-7822
` Entered: December 9, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`PROXYCONN, INC.,
`Patent Owner.
`____________
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`____________
`
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION ON REMAND
`35 U.S.C. § 144 and 37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`
`BACKGROUND
`
`
`
`On December 21, 2012, at the request of Microsoft Corporation
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`(“Microsoft”) in a petition (Paper 6, “Pet.”) filed in this case, we instituted
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`an inter partes review of claims 1, 3, 10, and 22–24 of U.S. Patent
`
`No. 6,757,717 (“the ’717 Patent”) under 35 U.S.C. §§ 311–319. Paper 17.
`
`On February 25, 2013, also at Microsoft’s request in a separate petition, we
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`instituted an inter partes review of claims 6, 7, 9, 11, 12, and 14 of the ʼ717
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`patent, and joined the two review proceedings under 35 U.S.C. § 315(c).
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`IPR2013-00109, Papers 14, 15. Patent Owner, Proxyconn, Inc.
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`(“Proxyconn”), did not file a Preliminary Response in either of the
`
`proceedings. After institution and joinder of the proceedings, however,
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`Proxyconn filed a Corrected Patent Owner Response (Paper 45, “PO Resp.”)
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`and a Motion to Amend (Paper 37). The trial proceeded and oral argument
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`was held on November 18, 2013.
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`
`
`
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`On February 19, 2014, the Board issued a Final Written Decision in
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`accordance with 37 C.F.R. § 42.73. Paper 73 (“Final Dec.”). The Board
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`concluded that Microsoft had established, by a preponderance of evidence,
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`that claims 1, 3, 6, 7, 9, 10, 11, 12, 14, 22, and 23 of the ʼ717 patent were
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`unpatentable as anticipated and claims 1, 3, and 10 were unpatentable as
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`being directed to obvious subject matter. The Board further concluded that
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`Microsoft had not established, by a preponderance of evidence, that claim 24
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`of the ʼ717 patent was unpatentable. Both parties appealed the decision to
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`the United States Court of Appeals for the Federal Circuit.
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`
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`On June 19, 2015, the Federal Circuit issued a decision, affirming-in-
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`part, reversing-in-part, and vacating-in-part the Board’s decision, and
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`remanding the case to the Board. Microsoft Corp. v. Proxyconn, Inc., 789
`
`
`
`2
`
`
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`F.3d 1292 (Fed. Cir. 2015). The Federal Circuit decided that the Board had
`
`erred in its construction of certain terms appearing in the claims of the
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`ʼ717 patent. As a result, the Federal Circuit vacated the Board’s
`
`determinations that claims 1, 3, 6, 7, 9, 10, 22, and 23 of the ʼ717 patent
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`were not patentable and remanded the case to the Board “for proceedings
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`consistent with this opinion.” 789 F.3d at 1299–1300. The court also
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`affirmed the Board’s determination that claim 24 was patentable and the
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`Board’s conclusion that claims 11, 12, and 14 were anticipated by the DRP
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`reference.1 Id. at 1302–03. Finally, the court affirmed the Board’s denial of
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`Proxyconn’s motion to amend. Id. at 1308. The Federal Circuit’s mandate
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`issued on August 25, 2015. Paper 76.
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`
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`The parties were unable to reach agreement on post-remand
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`procedures and, therefore, Microsoft sought the Board’s guidance. On
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`September 1, 2015, following a telephone conference call with counsel, the
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`Board entered an Order directing the parties to file briefs addressing the
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`effect of the Federal Circuit’s decision on the Board’s Final Written
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`Decision, specifically as to the patentability of claims 1, 3, 6, 7, 9, 10, 22,
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`and 23 of the ʼ717 patent. Paper 77. The briefs, limited to fifteen pages,
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`were to be filed simultaneously, and the parties were instructed that no new
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`prior art references or other evidence beyond that considered in the Board’s
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`Final Written Decision should be presented. No replies were authorized at
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`the time, but the parties were instructed that should they wish to file a reply,
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`
`1 THE HTTP DISTRIBUTION AND REPLICATION PROTOCOL, W3C Note
`(August 25, 1997), retrieved from http://www.www3.org/TR/NOTE-drp-
`19970825 (IPR2013-00109, Ex. 1003).
`
`
`
`3
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
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`they must contact the Board for authorization. Id. Neither party requested
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`such authorization.
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`
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`In accordance with the Board’s Order, the parties filed their briefs on
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`September 11, 2015. Papers 78 (“PO Remand Br.”), 79 (“Pet. Remand
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`Br.”). On remand, Microsoft limits its patentability challenge to three
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`grounds advanced in the Petition and upon which we instituted a trial:
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`
`
`
`
`
`
`
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`1. Obviousness of claims 6, 7, and 9 over Mattis2 and DRP;
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`2. Obviousness of claims 1, 3, and 10 over Perlman3 and Yohe;4 and
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`3. Anticipation of claims 22 and 23 by Santos.5
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`
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`The Board has reviewed the record in light of the Federal Circuit’s
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`decision and the arguments of the parties. For the reasons that follow, we
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`again conclude that claims 1, 3, 6, 7, 9, 10, 22, and 23 of the ʼ717 patent are
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`not patentable.
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`
`
`DISCUSSION
`
`
`
`The parties disagree on the effect of the Federal Circuit’s decision on
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`remand. Proxyconn contends that the Board has “no other option” but to
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`conclude that Microsoft failed to prove that the claims are unpatentable. PO
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`Remand Br. 2. According to Proxyconn, “Microsoft has had a full and fair
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`chance to present its chosen claim construction and arguments for
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`unpatentability, and it has lost.” Id. In a footnote, Proxyconn argues that the
`
`
`2 U.S. Patent No. 6,292,880, issued Sept. 18, 2001 (IPR2013-00109,
`Ex. 1004)
`3 U.S. Patent No. 5,742,820, issued Apr. 21, 1998 (Ex. 1003).
`4 U.S. Patent No. 5,835,943, issued Nov. 10, 1998 (Ex. 1005).
`5 Santos and Wetherall, Increasing Effective Link Bandwidth by Suppressing
`Replicated Data, Proceedings of the USENIX Annual Technical Conference
`(NO 98) New Orleans, Louisiana, June 1998 (Ex. 1004).
`
`
`
`4
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
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`Board is “without authority to take further action” because the 18-month
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`time period for the Board to make a final determination has expired. Id. at 3
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`n.1 (citing 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c)). Alternatively,
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`Proxyconn asserts that the claims are patentable over the art considered in
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`our Final Written Decision. Id. at 3–15.
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`
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`We are not persuaded by Proxyconn’s argument that the Board is not
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`permitted to consider the merits of Microsoft’s reasserted challenges on
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`remand. First and foremost, the Federal Circuit remanded the case to the
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`Board “for proceedings consistent with this opinion.” 789 F.3d at 1295.
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`We do not interpret the Federal Circuit’s decision as requiring us to enter
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`judgment for Proxyconn. Had this been the court’s intent, it could have
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`done so. See 28 U.S.C. § 2106 (authorizing appellate courts to “affirm,
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`modify, vacate, set aside or reverse” and remand). As the Federal Circuit
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`recently stated regarding another remand to the Board: “The Board may
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`control its own proceedings, consistent with its governing statutes,
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`regulations, and practice. 37 C.F.R. § 42.5(a).” Ariosa Diagnostics v.
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`Verinata Health, Inc., Nos. 2015-1215, 2015-1226, 2015 WL 7148267, at *8
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`(Fed. Cir. Nov. 16, 2015).
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`
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`We also are not persuaded by Proxyconn’s argument that
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`reconsidering the merits of the case in light of the Federal Circuit’s claim
`
`constructions results in unfairness or a “denial of due process.” PO Remand
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`Br. 2. The guidance on claim construction provided by the Federal Circuit
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`was based on claim constructions proposed by Proxyconn during the trial.
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`See PO Resp. 11–16. For this reason, the suggestions that the claim
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`constructions are “new,” or that Proxyconn was never permitted to address
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`them, are unavailing. PO Remand Br. 2.
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`
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`5
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
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`
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`Nor can Proxyconn claim it never had opportunity to respond to the
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`arguments presented by Microsoft on remand, for they are not new, either.
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`Rather, they are based on prior art of record that Microsoft relied upon in the
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`petitions in these cases. For the arguments themselves, Microsoft has
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`provided references to where they appear in the petitions and the supporting
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`claim charts and expert testimony.
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`
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`Likewise, we are not persuaded that the Board is constrained by the
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`18-month deadline for issuing a final written decision under 35 U.S.C.
`
`§ 316(a)(11). See supra. First, the 18-month deadline does not apply
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`necessarily to joined cases, such as this one.6 Second, even if the 18-month
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`deadline were applicable, the Board’s Final Written Decision was entered
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`within 18 months of the institution of trial, whether that date is measured
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`from the institution of trial in IPR2012-00026 or the joined proceeding in
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`IPR2013-00109. The Federal Circuit’s partial vacatur does not negate the
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`Board’s prior compliance with the deadline. If it did, that would essentially
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`foreclose any further proceedings consistent with the Federal Circuit’s
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`mandate in this case. Finally, we are not persuaded by Proxyconn’s
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`unsupported assertion that this proceeding is “skewed in favor of Petitioner.”
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`PO Remand Br. 2.
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`
`
`
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`The ʼ717 Patent
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`The ʼ717 patent is described in the Final Written Decision. Here, we
`
`present a summary description.
`
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`6 Under 35 U.S.C. § 316(a)(11), “the Director . . . may adjust the time
`periods [for issuing a final written decision] in the case of joinder under
`section 315(c).”
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`
`
`6
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`
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
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`
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`The ʼ717 Patent describes a system for data access in a packet
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`switched network. Ex. 1002, Abstract. The system has a sender/computer
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`including an operating unit, a first memory, a permanent storage memory,
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`and a processor. The system also has a remote receiver/computer including
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`an operating unit, a first memory, a permanent storage memory, and a
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`processor. The sender/computer and receiver/computer communicate
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`through the network. Id.
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`
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`The sender/computer further includes a device for calculating digital
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`digests on data; the receiver/computer further includes a network cache
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`memory and a device for calculating digital digests on data in the network
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`cache memory; and the receiver/computer and/or the sender/computer
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`includes a device for comparison between digital digests. Id.
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`
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`The ʼ717 patent describes several embodiments of the claimed
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`invention. The following figures (Figs. 4 and 11) from the patent illustrate
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`two embodiments:
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`7
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
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`Figure 4 depicts an embodiment of the invention in which a network
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`computer system has at least two computers: sender/computer 42 and
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`receiver/computer 46. Ex. 1002, col. 7, ll. 17–37. Figure 11 depicts an
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`embodiment which adds gateway 60 and cacher 62 between
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`sender/computer 46 and receiver/computer 42. Id. at col. 8, l. 57–col. 9, l. 9.
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`
`
`
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`The Federal Circuit Decision
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`The Federal Circuit identified two erroneous claim constructions and
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`one correct claim construction by the Board. First, the court considered the
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`term “gateway . . . connected to said packet-switched network in such a way
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`that network packets sent between at least two other computers pass through
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`it” recited in claims 6, 7, and 9. 789 F.3d 1298. See Ex. 1002, Fig. 11
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`(reproduced supra). The Federal Circuit decided that the Board erred in
`
`concluding that the “two other computers” through which network packets
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`pass could include the caching computer. 789 F.3d at 1299. Referring to the
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`ʼ717 patent specification, the Federal Circuit concluded that the phrase “two
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`other computers” describes components that are “separate and distinct” from
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`
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`8
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
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`the gateway and caching computers. Id. Because the Board’s determination
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`that claims 6, 7, and 9 were anticipated by the DRP reference was based on
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`an erroneous construction, the Federal Circuit vacated the Board’s
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`determination of unpatentability of claims 6, 7, and 9 and remanded to the
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`Board. Id. at 1299.
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`
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`Next, the Federal Circuit considered the Board’s construction of the
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`terms “sender/computer” and “receiver/computer” in connection with
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`independent claims 1, 10, and 22, and dependent claims 3 and 23. Referring
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`to the specification and figures, the Federal Circuit decided that the Board
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`erred in concluding that the terms “sender/computer” and
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`“receiver/computer” were broad enough to include intermediary gateway
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`and caching computers. Id. at 1300. Because the Board’s determination that
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`claims 1, 3, 10, 22, and 23 were not patentable was based on an erroneous
`
`construction, the Federal Circuit vacated the Board’s determination of
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`unpatentability of claims 1, 3, 10, 22, and 23 and remanded to the Board. Id.
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`
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`Finally, the Federal Circuit considered Microsoft’s appeal of the
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`Board’s decision that claim 24 was not rendered unpatentable by the Yohe
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`and Perlman references. Microsoft challenged the Board’s construction of
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`the phrase “searching for data with the same digital digest in said network
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`cache memory” appearing in that claim. The Federal Circuit concluded that
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`the Board correctly construed that phrase. Because Microsoft’s only
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`argument for reversing the Board’s determination on claim 24 was that the
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`construction of this limitation was wrong, the Federal Circuit affirmed the
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`Board’s determination that claim 24 was patentable. Id. at 1301–02.
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`
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`9
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
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`Patentability of Claims 6, 7, and 9
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`
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`These claims are drawn to the Figure 11 embodiment of the invention
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`depicted supra. In our Final Written Decision, we concluded that these
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`claims were anticipated by DRP. Final Dec. 47. Consequently, we did not
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`reach Microsoft’s separate challenge to those claims as obvious over the
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`combination of Mattis and DRP. Id. at 53. In its brief on remand, Microsoft
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`no longer challenges these claims as anticipated by DRP. Instead, Microsoft
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`argues that the claims would have been obvious over Mattis and DRP. Pet.
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`Remand Br. 1–6. This is not a new argument, as it was presented in the
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`Petition in IPR2013-00109, and Microsoft continues to rely upon the claim
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`charts and expert declaration it filed in that proceeding. Id. at 1–2. Further,
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`our Order of September 1, 2015, specifically authorized the parties to
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`address the combination of Mattis and DRP in their post-remand briefing.
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`Paper 77, 3.
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`
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`Microsoft argues that the Federal Circuit’s decision does not affect the
`
`showing that claims 6, 7, and 9 would have been obvious over Mattis and
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`DRP. Pet. Remand Br. 5–6. Microsoft’s Petition in IPR2013-00109
`
`identified Mattis’ proxy server as a gateway positioned as called for in the
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`claims. IPR2013-00109, Ex. 1001, 3–4. This is illustrated in Figure 1 from
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`Mattis, which follows:
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`
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`10
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
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`Figure 1 of Mattis shows proxy 30 positioned between client (10a, 10b) and
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`server (40) computers. The proxy server in Mattis includes a cache. Mattis
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`(at col 1, l. 65–col. 2, l. 4) describes this arrangement as follows:
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`In one arrangement, as shown in FIG. 1, the cache is
`
`located in a proxy server 30 that is logically interposed between
`the clients 10a, 10b and the server 40. The proxy server
`provides a “middleman” gateway service, acting as a server to
`the client, and a client to the server. A proxy server equipped
`with a cache is called a caching proxy server, or commonly, a
`“proxy cache”.
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`The integration of the proxy server and cache in Mattis is consistent with the
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`disclosure of the ʼ717 patent. According to the description of Figure 11 in
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`the ʼ717 patent, “gateway computer 60 may be integrally formed with the
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`caching computer.” Ex. 1002, col. 9, ll. 6–8.
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`
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`Based on the foregoing, we are persuaded that consistent with the
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`Federal Circuit’s guidance, Mattis discloses a gateway and caching
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`computer connected between “two other computers” as recited in claims 6,
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`7, and 9. Pet. Remand Br. 5 (identifying Mattis’ proxy server 30 and
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`computer system 1100 as examples of the gateway, and citing IPR2013-
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`00109, Ex. 1004, Figs. 1–2, and 11, col. 1, l. 14–col. 2, l. 14, col. 9, l. 65–
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`col. 10, l. 10, col. 27, l. 50–col. 28, l. 2, col. 37, ll. 26–31, and col. 37, ll. 42–
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`45). We are persuaded, therefore, that the Federal Circuit’s instruction that
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`the gateway be separate from the “other” computers recited in the claims is
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`met by the combination of Mattis and DRP.
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`
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`Microsoft argues that Proxyconn responded to this challenge in its
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`Patent Owner Response by arguing that there was no motivation to combine
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`Mattis and DRP. Id. at 3. Microsoft, therefore, asserts that Proxyconn has
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`admitted that Mattis discloses a cache file system intermediate between a
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`
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`11
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
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`server and multiple clients, thus meeting the “gateway” claim element as
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`construed by the Federal Circuit. Id. While not dispositive of this issue, we
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`agree with Microsoft that Proxyconn has not challenged this assertion.
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`
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`Proxyconn argues that because Microsoft did not “raise” it on appeal,
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`this obviousness challenge based on Mattis and DRP is waived and,
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`therefore, “[t]here is nothing more for this Board to do.” PO Remand Br. 5.
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`We disagree. The argument was presented in Microsoft’s second Petition
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`and was addressed in Patent Owner’s Response. PO Resp. 42–43; IPR2013-
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`00109, Pet. 18–26. The Board did not reach the merits of the argument in its
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`Final Written Decision. Consequently, there was no final decision on that
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`issue that Microsoft could appeal. See 35 U.S.C. § 141(c) (party “who is
`
`dissatisfied with the final written decision of the Patent Trial and Appeal
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`Board” may appeal the Board’s decision to the Federal Circuit (emphasis
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`added)). It would be unfair to preclude Microsoft from raising a ground that
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`the Board previously determined to be “moot” in light of another challenge
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`that was later reversed, especially when Proxyconn addressed the issue fully
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`during the trial.
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`
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`Proxyconn further argues that because the Federal Circuit has
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`determined that DRP no longer anticipates the correctly construed claims,
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`“the combination of Mattis and DRP likewise does not make the claims
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`obvious.” PO Remand Br. 5. This is a non sequitur. The Federal Circuit’s
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`reversal was based on the absence in DRP of a gateway separate from the
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`two “other” computers. See supra. It was not based on the absence in DRP
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`of the “other” computers, namely, the client and server. In fact, such “other”
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`computers are described by Proxyconn and shown as the “client” and
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`“server” in Proxyconn’s own illustration of DRP. Id. at 4. In any event, as
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`
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`12
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
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`Microsoft points out, and as is illustrated supra, Mattis describes the proxy
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`server as a gateway located between a client computer and a server
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`computer. IPR2013-00109, Ex. 1004, Figs. 1–2, and 11, col. 1, l. 14–col. 2,
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`l. 14, col. 9, l. 65–col. 10, l. 10, col. 27, l. 50–col. 28, l. 2, col. 37, ll. 26–31,
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`and col. 37, ll. 42–45. For at least these reasons, we do not find Patent
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`Owner’s argument persuasive.
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`
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`Nor are we persuaded by Proxyconn’s argument, based on the Board’s
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`statement at page 17 of the Institution Decision in IPR2013-00109, that
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`because Mattis lacks the comparison means recited in the claim there is a
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`“deficiency” in the Mattis-DRP combination. PO Remand Br. 5–6. The
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`argument is misplaced because that portion of the Institution Decision
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`addressed Mattis as an anticipatory reference. In the Institution Decision,
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`we also concluded that DRP met this element, as established by Microsoft’s
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`claim charts and expert declaration. IPR2013-00109, Decision on Institution
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`15–16; IPR2013-00109, Ex. 1001, 12–13; IPR2013-00109, Ex. 1013, 12.
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`We conclude, therefore, that such a “deficiency” does not exist in the
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`combination of Mattis and DRP.
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`
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`Finally, we note that persuasive evidence of a rationale to combine
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`DRP and Mattis is found in the Long Declaration. IPR2013-00109, Ex.
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`1013, 10–16. Proxyconn does not challenge this evidence. We, therefore,
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`conclude that, taking into account the Federal Circuit’s decision, Microsoft
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`has demonstrated that claims 6, 7, and 9 of the ʼ717 patent would have been
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`obvious over DRP and Mattis and are not patentable.
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`Patentability of Claims 1, 3, and 10
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`These claims are directed to the Figure 4 embodiment of the ʼ717
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`patent. See supra. Unlike the claims just discussed, they include recitation
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`13
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
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`of the sender/computer and receiver/computer, but not the gateway. All
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`three claims require the sender/computer and receiver/computer to have
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`permanent storage memory.
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`
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`Microsoft contends that the Federal Circuit’s decision does not affect
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`the Board’s decision that these claims are obvious over Perlman and Yohe.
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`Pet. Remand Br. 6–11. Microsoft points to evidence presented in the
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`Petition in this case and accompanying claim charts, as well as the Long
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`Declaration (Ex. 1007). Id. at 7. In those submissions, Microsoft identifies
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`certain “routers” shown in Perlman as corresponding to the
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`“sender/computer” and “receiver/computer” identified in these claims. Id.
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`(citing Ex. 1001, 3, 5). Microsoft asserts that Yohe provides the only feature
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`of these claims arguably missing from Perlman, namely, storing of digital
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`digests in permanent, rather than volatile, memory. Pet. Remand Br. 7
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`(citing Pet. 36–38; Ex. 1007 11–15).
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`
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`In the Petition, Microsoft contended that Perlman anticipates claims 1,
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`3, and 10. Pet. 9; Ex. 1001. Proxyconn responded that Perlman was not an
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`“access system” and did not disclose “permanent storage memory.” PO
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`Resp. 17–18. Proxyconn did not assert that Perlman’s routers failed to meet
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`the “sender” and “receiver” requirements, even under Proxyconn’s proposed
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`construction of those terms, namely: “Neither the sender/computer nor the
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`receiver/computer includes separate intermediary computers, such as
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`gateways, proxies, routers, and caching computers.” Id. at 16.
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`
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`As a consequence, Microsoft now asserts that Proxyconn has
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`“conceded” that Perlman discloses a “sender” and “receiver,” even under
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`Proxyconn’s narrower definition of those terms reflected in the Federal
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`Circuit decision. Pet. Remand Br. 7. On remand, Proxyconn does not
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`14
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
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`dispute this assertion. Instead, Proxyconn asserts that it should prevail
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`simply because the Board’s decision was based on a “rejected claim
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`construction.” PO Remand Br. 8. We are not persuaded by this argument.
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`Instead, we are persuaded that Perlman meets the “receiver” and “sender”
`
`limitations of the claims, even under Proxyconn’s construction of
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`“sender/computer” and “receiver/computer.”
`
`
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`Perlman discusses an illustrative network embodiment using routers.
`
`See supra. A router is an intermediary device and, under Proxyconn’s
`
`construction, might not be considered a “sender” or “receiver.”7
`
`Nevertheless, we agree with Microsoft that the disclosure of Perlman is not
`
`confined to networks using routers, but expressly applies to “any type of
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`distributed system requiring efficient synchronization of the contents of data
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`bases stored on nodes of a computer network.” Pet. Remand Br. 8; Ex.
`
`1003, col. 8, ll. 57–60. Perlman’s express disclosure of nodes is referred to
`
`in Microsoft’s Petition at pages 32–33, 35, 37, and 39. And Proxyconn’s
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`Patent Owner Response states, “Perlman discloses a sending node that
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`broadcasts a database identifier to a plurality of receiver nodes, and updates
`
`the receiver nodes so that all of the nodes are synchronized.” PO Resp. 29.
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`
`
`Although a router, like a gateway computer, may be considered an
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`“intermediary” differentiated from the “sender” and “receiver” under
`
`Proxyconn’s construction (see infra), a node is not. A dictionary definition
`
`of “node” is as follows: “In networking, a device, such as a client computer,
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`a server, or a shared printer, that is connected to the network and is capable
`
`of communicating with other network devices.” THE MICROSOFT COMPUTER
`
`
`7 The IBM DICTIONARY OF COMPUTING 588 (10th ed. 1993) defines “router”
`as “A computer that determines the path of network traffic flow.” Ex. 3001.
`
`
`
`15
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`
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`DICTIONARY 312 (4th ed. 1997).8 Ex. 3002. We are persuaded that
`
`Perlman’s disclosure of using nodes meets the “sender/computer” and
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`“receiver/computer” limitations of these claims consistent with the Federal
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`Circuit’s decision.
`
`
`
`We are further persuaded that Microsoft and Dr. Long provide a
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`compelling rationale for combining Perlman and Yohe. Pet. 12–14;
`
`Ex. 1007, 9–18. We, therefore, conclude that, taking into account the
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`Federal Circuit’s decision, Microsoft has demonstrated that claims 1, 3, and
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`10 of the ʼ717 patent are unpatentable for obviousness over Perlman and
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`Yohe.
`
`
`
`
`
`Patentability of Claims 22 and 23
`
`These method claims are directed to the operation of the
`
`receiver/computer. The claims, therefore, recite the receiver/computer, but
`
`not the sender/computer.
`
`
`
`Santos is described in the Final Written Decision at pages 26–30.
`
`Santos describes a compression architecture that prevents transmission of
`
`replicated data to increase bandwidth in a packet switched environment such
`
`as the Internet. Final Dec. 26. In Santos, the messages are exchanged
`
`between a “compressor” and a “decompressor.” Ex. 1004, Fig. 4. In one
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`embodiment, these elements are implemented as a pair of Pentium II
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`computers directly connected to each other via a dedicated Ethernet
`
`connection. Final Dec. 27–28; Ex. 1004, 9.
`
`
`8 This is consistent with the definition for “node” in the IBM DICTIONARY OF
`COMPUTING 459 (10th ed. 1993): “In a network, a point at which one or
`more functional units connect channels or data circuits.” Ex. 3003.
`
`
`
`16
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`
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`
`
`Citing this Pentium II implementation, Microsoft contends that even
`
`under the Federal Circuit’s “narrower” interpretation of “receiver,” Santos
`
`discloses a “receiver” as recited in the claims. Pet. Remand Br. 13–14
`
`(citing Ex. 1004, 9–10, Fig. 3). Microsoft recognizes that Santos also
`
`discloses an embodiment in which the compressors and decompressors are
`
`described as routers. Pet. Remand Br. 14. A router is defined as an
`
`intermediary device. See supra. However, in the test implementation
`
`described in Santos, the Pentium II PCs were directly connected, with the
`
`“decompressor” PC as one endpoint of the communications channel. Id. at
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`15.
`
`
`
`Proxyconn contends that Santos’ compressor and decompressor are
`
`“intermediate computers” as opposed to sender or receiver computers,
`
`because Santos says they are routers. PO Remand Br. 7. Proxyconn
`
`provides a diagram that it says is based on Figure 3 of Santos, showing the
`
`compressor and decompressor as separate from the server and clients,
`
`respectively. Id. Proxyconn contends that as a result, Santos fails to
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`disclose the “receiver/computer” recited in claims 22 and 23. Id. at 13.
`
`
`
`We are not persuaded by this argument because it ignores the Pentium
`
`II implementation in Santos. We are, instead, persuaded that the use of a
`
`Pentium II computer to implement the decompressor as described in Santos
`
`meets Proxyconn’s construction of “receiver/computer,” and is consistent
`
`with the Federal Circuit’s guidance. For the reasons discussed supra, we
`
`determine that the decompressor machine in Santos’s Pentium II
`
`implementation is not an intermediary device.
`
`
`
`Proxyconn contends that “at no point” did Microsoft attempt to show
`
`that Santos had a “receiver/computer” without intermediaries. PO Remand
`
`
`
`17
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`
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`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`Br. 13. This argument is unavailing. Microsoft contended in its claim charts
`
`accompanying the Petition that Santos provided such a receiver/computer.
`
`As stated in the claim charts: “Receiver implementation is an ‘Intel-based
`
`PentiumII’ computer running Linux Operating system (Santos § 3.4, ¶ 1).”
`
`Ex. 1001, 6.
`
`
`
`We, therefore, conclude that taking into account the Federal Circuit’s
`
`decision, Microsoft has demonstrated that claims 22 and 23 of the ʼ717
`
`patent are anticipated by Santos.
`
`
`
`
`
`
`
`In view of the foregoing, it is
`
`ORDER
`
`ORDERED that claims 1, 3, 6, 7, 9, 10, 22, and 23 of U.S. Patent No.
`
`6,757,717 are not patentable; and
`
`
`
`FURTHER ORDERED that this is a final written decision of the
`
`Board under 35 U.S.C. § 318(a). Parties to the proceeding seeking judicial
`
`review of the decision must comply with the notice and service requirements
`
`of 37 C.F.R. § 90.2.
`
`
`
`
`
`18
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`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`For Patent Owner
`
`Matthew L. Cutler
`Harness, Dickey & Pierce, PLC
`mcutler@hdp.com
`
`Bryan K. Wheelock
`Harness, Dickey & Pierce, PLC
`bwheelock@hdp.com
`
`Douglas A. Robinson
`Harness, Dickey & Pierce, PLC
`drobinson@hdp.com
`
`
`
`For Petitioner
`
`John D. Vandenberg
`Klarquist Sparkman LLP
`john.vandenberg@klarquist.com
`
`Stephen J. Joncus
`Klarquist Sparkman LLP
`stephen.joncus@klarquist.com
`
`
`
`19