NO: 439181US
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`ROCKSTAR CONSORTIUM US LP,
`Patent Owner.
`__________________
`
`Case IPR2015-_____
`Patent U.S. 6,128,298
`__________________
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,128,298
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`

`

`U.S. Patent 6,128,298
`Petition for Inter Partes Review
`TABLE OF CONTENTS
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`
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`I.
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`II.
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` Page
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`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 ..................... 1
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`CERTIFICATION OF GROUNDS FOR STANDING .................................. 2
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 2
`
`Prior Art Patents and Printed Publications ............................................ 2
`A.
`Grounds for Challenge .......................................................................... 4
`B.
`IV. BACKGROUND OF THE ’298 PATENT ..................................................... 5
`
`A. Overview of the ’298 Patent .................................................................. 5
`B.
`Prosecution History of the ’298 Patent ................................................. 6
`CLAIM CONSTRUCTION ............................................................................ 7
`
`V.
`
`“means for receiving from the first network…” ................................. 10
`A.
`“means for maintaining the source information…” ............................ 11
`B.
`“means for replacing in the data packet…” ........................................ 11
`C.
`“means for sending to the second network…” .................................... 12
`D.
`“means for receiving from the second network…”............................. 12
`E.
`“means for correlating the destination port…” ................................... 13
`F.
`“means for replacing, in the data packet…” ....................................... 13
`G.
`“means for sending to the first network…” ........................................ 14
`H.
`“means for ignoring a data packet…” ................................................. 15
`I.
`“means for storing the source information…” .................................... 15
`J.
`IDENTIFICATION OF HOW CHALLENGED CLAIMS 27–
`30 ARE UNPATENTABLE .......................................................................... 16
`
`A.
`
`Claims 27–30 are anticipated by Kim ................................................. 16
`
`i
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`VI.
`
`
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`

`

`C.
`
`D.
`E.
`
`F.
`
`G.
`H.
`
`U.S. Patent 6,128,298
`Petition for Inter Partes Review
`B.
`Claims 29 and 30 are rendered obvious by Kim in view
`of Mayes .............................................................................................. 23
`Claims 29 and 30 are rendered obvious by Kim in view
`of Feigen .............................................................................................. 26
`Claims 27–30 are anticipated by Yeom .............................................. 31
`Claims 29 and 30 are rendered obvious by Yeom in view
`of Mayes .............................................................................................. 38
`Claims 29 and 30 are rendered obvious by Yeom in view
`of Feigen .............................................................................................. 41
`Claims 27–30 are anticipated by Attanasio ......................................... 45
`Claims 29 and 30 are rendered obvious by Attanasio in
`view of Mayes ..................................................................................... 53
`Claims 29 and 30 are rendered obvious by Attanasio in
`view of Feigen ..................................................................................... 56
`VII. CONCLUSION .............................................................................................. 60
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`I.
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`ii
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`Page
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
`TABLE OF AUTHORITIES
`
`
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`
`
`
`
`
`Cases
`
`In re Trans Texas Holdings Corp.,
`
`498 F.3d 1290 (Fed. Cir. 2007) ....................................................................... 7
`
`Mass. Inst. of Tech. & Elecs. for Imaging, Inc. v. Abacus Software,
`
`462 F.3d 1344 (Fed. Cir. 2006) .......................................................... 9, 10
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) ....................................................................... 7
`
`York Prods., Inc. v. Cent. Tractor Farm & Family Ctr.,
`
`99 F.3d 1568 (Fed. Cir. 1996) .................................................................. 9
`
`Statutes
`
`35 U.S.C. § 102(a) ............................................................................................... 3
`
`35 U.S.C. § 102(b) ........................................................................................... 3, 4
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`35 U.S.C. § 102(e) ........................................................................................... 3, 4
`
`35 U.S.C. § 314(a) ............................................................................................... 5
`
`35 U.S.C. § 315(a) ............................................................................................... 1
`
`Rules
`
`37 C.F.R. § 42.8 ................................................................................................... 1
`
`37 C.F.R. § 42.22 ................................................................................................. 2
`
`37 C.F.R. § 42.100 ............................................................................................... 7
`
`37 C.F.R. § 42.104 .................................................................................... 2, 9, 16
`
`
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`iii
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
`
`
`I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`
`Real Party-in-Interest: Google Inc. (“Petitioner”).
`
`Related Matters: U.S. Patent No. 6,128,298 (the “’298 patent”) is asserted in
`
`the following cases: (1) consolidated case Rockstar Consortium US LP et al v.
`
`ASUSTeK Computer, Inc. et al., Consolidated Case No. 2:13-cv-00894 (E.D. Tex.),
`
`which consolidated six different cases filed by Rockstar Consortium US LP; (2)
`
`Arris Group, Inc. et al. v. Constellation Techs. LLC et al., Case No. 14-CV-114 (D.
`
`Del.); (3) Bockstar Techs. LLC v. Cisco Sys. Inc., Case No. 13-CV-2020 (D. Del.).
`
`The ’298 patent is also asserted in Google Inc. v. Rockstar Consortium US LP et
`
`al., Case No. 4:13-cv-05933-CW (N.D. Cal.). In that case, Google requested a
`
`declaration of non-infringement on the ’298 patent; Rockstar counterclaimed for
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`infringement of the ’298 patent; and Google then pled the affirmative defense of
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`invalidity with respect to the ’298 Patent. Google’s affirmative defense does not
`
`trigger the statutory bar against filing an inter partes review petition. 35 U.S.C.
`
`§ 315(a)(3). There are no patents or applications that claim the benefit of the filing
`
`date of the ’298 patent.
`
`Petitioner is also filing petitions for inter partes review challenging claims
`
`11–19, 22–26, and 31–32 of the ’298 patent. Petitioner recommends assigning all
`
`proceedings to the same panel.
`
`Counsel:
`
`Lead Counsel:
`
`Scott A. McKeown (Reg. No. 42,866)
`
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`1
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
`
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`Backup Counsel: Greg Gardella (Reg. No. 46,045)
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`Service Information : Email : CPDocketMcKeown@oblon.com
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`CPDocketGardella@oblon.com
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`Post: Oblon Spivak, 1940 Duke St., Alexandria, VA 22314
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`Telephone: 703-412-6297
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`Facsimile: 703-413-2220
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`II. CERTIFICATION OF GROUNDS FOR STANDING
`
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
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`review is sought is available for inter partes review and that Petitioner is not
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`barred or estopped from requesting an inter partes review challenging the patent
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`claims on the grounds identified in this Petition.
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`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
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`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)–(2), Petitioner challenges
`
`claims 27–30 of the ’298 patent. The ’298 patent claims priority to Provisional
`
`U.S. Patent Application No. 60/015,945, which was filed on Apr. 24, 1996. (Ex.
`
`1301, the ’298 patent.)
`
`A.
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`Prior Art Patents and Printed Publications
`
`Petitioner relies upon the following patents and printed publications:
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`Exhibit 1303 – “IP Address Reuse Through Transparent Port-Address
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`Translator,” by Il Hwan Kim et al. (“Kim”) was published by The Journal of Korea
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`Information and Communications Society in December 1995, which is prior to the
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`2
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
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`earliest filing date claimed by the ’298 patent (April 24, 1996). Kim is therefore
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`available as prior art under pre-AIA 35 U.S.C. § 102(a). Kim was not considered
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`during the original prosecution of the ’298 patent and is not cumulative of any
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`prior art considered by the examiner(s).
`
`Exhibit 1305 – U.S. Patent No. 5,793,763 to John C. Mayes et al. (“Mayes”)
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`issued on August 11, 1998, based on Application Serial No. 08/552,807, filed Nov.
`
`3, 1995, which is prior art to the earliest filing date claimed by the ’298 patent
`
`(April 24, 1996). Mayes is therefore available as prior art under pre-AIA 35
`
`U.S.C. § 102(e). Mayes was considered during the original prosecution of the ’298
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`patent, but is presented in a new light when considered in combination with Kim
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`and the expert declaration of Professor Vijay Madisetti, Ph.D.
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`Exhibit 1306 – “A Transparent TCP/IP Gateway to Connect Private
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`Networks to the Internet,” by Heon Yeom et al. (“Yeom”). As shown by the
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`Declaration of Bob Kummerfeld (Ex. 1328), Yeom was publicly posted to the
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`Internet on January 30, 1995 and, therefore, was publicly available prior to the
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`earliest filing date claimed by the ’298 patent (April 24, 1996). See MPEP 2128
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`II.B (“Prior art disclosures on the Internet or on an on-line database are considered
`
`to be publicly available as of the date the item was publicly posted.”) Yeom is
`
`therefore available as prior art under at least pre-AIA 35 U.S.C. § 102(b). Yeom
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
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`was not considered during the original prosecution of the ’298 patent and is not
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`cumulative of any prior art considered by the examiner(s).
`
`Exhibit 1323 – U.S. Patent No. 5,371,852 to Attanasio et al. (“Attanasio”)
`
`issued on December 6, 1994, which is at least one year prior to the earliest filing
`
`date claimed by the ’298 patent (April 24, 1996). Attanasio is therefore available
`
`as prior art under at least pre-AIA 35 U.S.C. § 102(b). Attanasio was not
`
`considered during the original prosecution of the ’298 patent and is not cumulative
`
`of any prior art considered by the examiner(s).
`
`Exhibit 1324 – U.S. Patent No. 5,699,513 to Feigen et al. (“Feigen”) issued
`
`on December 16, 1997, based on Application Serial No. 08/414,823, filed March
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`31, 1995, which is prior to the earliest filing date claimed by the ’298 patent (April
`
`24, 1996). Feigen is therefore available as prior art under at least pre-AIA 35
`
`U.S.C. § 102(e). Feigen was not considered during the original prosecution of the
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`’298 patent and is not cumulative of any prior art considered by the examiner(s).
`
`B. Grounds for Challenge
`
`Petitioner requests cancellation of challenged claims 27–30 under the
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`following statutory grounds:
`
`i. Claims 27–30 are anticipated by Kim;
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`ii. Claims 29 and 30 are rendered obvious by Kim in view of Mayes;
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`iii. Claims 29 and 30 are rendered obvious by Kim in view of Feigen;
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`4
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
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`iv. Claims 27–30 are anticipated by Yeom;
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`v. Claims 29 and 30 are rendered obvious by Yeom in view of Mayes;
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`vi. Claims 29 and 30 are rendered obvious by Yeom in view of Feigen;
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`vii. Claims 27–30 are anticipated by Attanasio;
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`viii. Claims 29 and 30 are rendered obvious by Attanasio in view of Mayes; and
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`ix. Claims 29 and 30 are rendered obvious by Attanasio in view of Feigen.
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`Section VI below demonstrates, for each of the statutory grounds, that there
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`is a reasonable likelihood that Petitioner will prevail. See 35 U.S.C. § 314(a).
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`Additional explanation and support for each ground of rejection is set forth in the
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`Expert Declaration of Professor Vijay Madisetti, Ph.D. (Exhibit 1309).
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`IV. BACKGROUND OF THE ’298 PATENT
`
`A. Overview of the ’298 Patent
`
`The ’298 patent is directed to the basic and well-known concept of network
`
`address translation using an IP filter. (Ex. 1301, Abstract.) A source node in the
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`first network with a private IP address and port (pIP, pPort) sends an outgoing data
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`packet to an IP address and Port (iIP, iPort) corresponding to a destination node in
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`a second network. (Ex. 1301, 5:55–60.) An IP filter intercepts the outgoing data
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`packet and replaces the source node’s IP address/port number combination with an
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`IP address and port number of the IP filter (frIP, frPort) before sending the
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`outgoing data packet to the destination node in the second network. (Ex. 1301,
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
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`5:65–6:4.) The IP filter also maintains a translation table, which stores, inter alia,
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`the source and destination node IP address and port numbers. (Ex. 1301, 5:40–50.)
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`The IP filter uses its own port number (frPort) plus an offset value to establish an
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`index into the translation table. (Ex. 1301, 6:2–4.) When the IP filter receives an
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`incoming data packet from the second network, the IP filter uses its port number
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`with the known offset as an index into the translation table. The IP filter replaces
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`the IP filter’s IP address/port number (frIP, frPort) in the incoming packet with the
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`first network’s IP address/port number (pIP, pPort), and then routes the packet to
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`the correct node in the first network. (Ex. 1301, 6:5–14.)
`
`B.
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`Prosecution History of the ’298 Patent
`
`The application that matured into the ’298 patent, U.S. Patent Application
`
`No. 08/842,328 (“the ’328 application”), was filed on April 24, 1997. The ’328
`
`application claims priority to Provisional U.S. Application No. 60/015,945, which
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`was filed on April 24, 1996.
`
`In a non-final office action mailed on April 27, 1999, the examiner rejected
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`claims 1-5, 9, 11, 14–18, 22, 24, and 27–31 of the ’328 application over U.S.
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`Patent No. 5,781,550 (“Templin”). (Ex. 1302, pp. 57–64.)
`
`In a response dated July 27, 1999, the applicants submitted a declaration
`
`under Rule 131 “including facts showing a completion of the invention claimed in
`
`
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`6
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
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`the present application before the filing date of the Templin reference (February 2,
`
`1996).” (Ex. 1302, pp. 67–93.)
`
`In a non-final office action dated October 12, 1999, the examiner rejected all
`
`claims 1–5, 9, 11–18, and 22–32 of the ’328 application as being obvious in view
`
`of U.S. Patent No. 5,793,763 (“Mayes”). (Ex. 1302, pp. 96–101.)
`
` In a response dated February 25, 2000, the applicants amended claims 6,
`
`10, 19, and 23 to rewrite them in independent form. Furthermore, applicants
`
`argued that “Mayes does not disclose such a lookup table for stored source
`
`information, indexed by the filter node port number.” (Ex. 1302, pp. 106–15.)
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`The examiner allowed the application and the ’298 patent issued on October
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`3, 2000.
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`V. CLAIM CONSTRUCTION
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`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`according to their broadest reasonable interpretation (“BRI”) in view of the
`
`specification in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). The USPTO uses BRI
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`because, among other reasons, the patentee has the opportunity to amend its claims in
`
`this proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,764 (Aug. 14, 2012) (“Since patent owners have the opportunity to amend their
`
`claims during IPR, PGR, and CBM trials, unlike in district court proceedings, they
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
`
`are able to resolve ambiguities and overbreadth through this interpretive approach,
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`producing clear and defensible patents at the lowest cost point in the system.”).
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`Thus, as required by the applicable rules, this Petition uses the BRI standard. The
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`BRI of claim terms here may be different from the construction that those same terms
`
`may receive following claim construction proceedings in district court. See, e.g., In
`
`re Trans Texas Holdings Corp., 498 F.3d 1290, 1297 (Fed. Cir. 2007). Thus the
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`claim constructions presented in this Petition, including where Petitioner does not
`
`propose an express construction, do not necessarily reflect the claim constructions
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`that Petitioner believes should be adopted by a district court under Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005). In presenting this Petition, unless otherwise
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`stated, the grounds set forth herein are based on (1) the proposed claim
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`construction offered by the Patent Owner in Google Inc. v. Rockstar Consortium
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`US LP, et al., Case No. 13-5933 (N.D. Cal.) (Ex. 1326), or (2) for terms where
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`Patent Owner has not explicitly offered a claim construction, on petitioner’s
`
`understanding of Patent Owner’s infringement contentions in Google Inc. v.
`
`Rockstar Consortium US LP, et al., Case No. 13-5933 (N.D. Cal.). (Ex. 1327.) In
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`presenting the grounds set forth in this Petition, petitioner does not concede that
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`any claim constructions impliedly or expressly proposed by Patent Owner are
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`appropriate for the district court litigation, where a different legal standard applies
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`to the construction of the asserted claim terms. Petitioner does not believe that
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
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`many of the Patent Owner’s implied or express proposed constructions are
`
`appropriate under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Instead,
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`petitioner presents these proposed constructions to the Board for consideration in
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`determining the BRI because Patent Owner considers these constructions correct
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`under Phillips, and therefore necessarily also considers them within the appropriate
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`scope of the BRI. Petitioner further submits these constructions under 35 U.S.C. §
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`301(a)(2), which encourages submission of claim construction materials to prevent
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`patentees from arguing broad constructions under Phillips while simultaneously
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`arguing narrow constructions as the BRI.
`
`As addressed below, claims 27–30 of the ’298 patent each recite means-
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`plus-function claim limitations that recite the operative language “means for…” to
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`invoke 35 U.S.C. § 112(f). See 37 C.F.R. § 42.104(a)(3) (requiring the
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`corresponding structure for means-plus function limitations to be set forth in a
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`petition for inter partes review). Furthermore, no structure is present in the claims
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`that modify the “means for …” terms, and as such, the claim limitations
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`presumptively invoke § 112(f). See, e.g., York Prods., Inc. v. Cent. Tractor Farm
`
`& Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (“[T]he use of the word
`
`‘means’ triggers a presumption that the inventor used this term advisedly to invoke
`
`the statutory mandates for means-plus-function clauses”); Mass. Inst. of Tech. &
`
`Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006)
`
`
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
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`(“The generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘device,’ typically do
`
`not connote sufficiently definite structure”).
`
`The specification discloses little to no structure for these means-plus-
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`function elements, raising questions regarding indefiniteness. There is no general
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`flow chart of the disclosed software elements, let alone a specific algorithm, to
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`support the recited functions. However, because indefiniteness challenges are not
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`available in inter partes review proceedings, Petitioner sets forth below the general
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`structure set forth in Patent Owner’s proposed constructions for these terms in
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`Google Inc. v. Rockstar Consortium US LP, et al., Case No. 13-5933 (N.D. Cal.).
`
`(Ex. 1326.)
`
`A.
`
`“means for receiving from the first network…”
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`As recited in claim 27, the function recited by this § 112(f) limitation is
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`“receiving from the first network, a data packet having destination information,
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`which includes a destination address and a destination port, corresponding to a
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`node in the second network and having source information, which includes a
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`source address and a source port, corresponding to a node in the first network.”
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`The general structure most closely linked to this function language is packet
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`driver (30) in IP filter (12). The IP filter (12) is a general-purpose “data processing
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`platform” with “appropriate software to implement the functionality of the IP
`
`filter.” (Ex. 1301, 7:59–64, Figure 2.) “The packet drivers 30 and 32 control the
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`10
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
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`Ethernet hardware interfaces in order to communicate with, respectively, the
`
`private network 10 and the public network 14.” (Ex. 1301, 8:3–6.)
`
`B.
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` “means for maintaining the source information…”
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`As recited in claim 27, the function recited by this § 112(f) feature is
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`“maintaining the source information taken from the data packet in correlation with
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`a unique value representing a port of the filter node.”
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`The general structure most closely linked to this function language is address
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`translation (40) software in IP filter (12). The IP filter (12) is a general-purpose
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`“data processing platform” with “appropriate software to implement the
`
`functionality of the IP filter.” (Ex. 1301, 7:59–64, Figure 2.) The specification
`
`states that “[t]he address translation 40 effects translation between source port
`
`numbers from the private network 10 and the destination port numbers on the
`
`public network side 14.” (Ex. 1301, 8:9–11.)
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`C.
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` “means for replacing in the data packet…”
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`As recited in claim 27, the function recited by this § 112(f) feature is
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`“replacing in the data packet the source address with an address of the filter node
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`and the source port with the filter node port value.”
`
`The general structure most closely linked to this function language is address
`
`translation (40) software in IP filter (12). The IP filter (12) is a general-purpose
`
`“data processing platform” with “appropriate software to implement the
`
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`11
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
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`functionality of the IP filter.” (Ex. 1301, 7:59–64, Figure 2.) The specification
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`states that “[t]he address translation 40 effects translation between source port
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`numbers from the private network 10 and the destination port numbers on the
`
`public network side 14.” (Ex. 1301, 8:9–11.)
`
`D.
`
` “means for sending to the second network…”
`
`As recited in claim 27, the function recited by this § 112(f) feature is
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`“sending to the second network, the data packet having the replaced source
`
`information, whereby that packet is routed according to its destination information
`
`to the corresponding second network node.”
`
`The general structure most closely linked to this function language is packet
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`driver (32) in IP filter (12). The IP filter (12) is a general-purpose “data processing
`
`platform” with “appropriate software to implement the functionality of the IP
`
`filter.” (Ex. 1301, 7:59–64, Figure 2.) “The packet drivers 30 and 32 control the
`
`Ethernet hardware interfaces in order to communicate with, respectively, the
`
`private network 10 and the public network 14.” (Ex. 1301, 8:3–6.)
`
`E.
`
` “means for receiving from the second network…”
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`As recited in claim 28, the function recited by this § 112(f) feature is
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`“receiving from the second network, a data packet having the address of the filter
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`node as the destination address.”
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`12
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
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`
`The general structure most closely linked to this function language is packet
`
`driver (32) in IP filter (12). The IP filter (12) is a general-purpose “data processing
`
`platform” with “appropriate software to implement the functionality of the IP
`
`filter.” (Ex. 1301, 7:59–64, Figure 2.) “The packet drivers 30 and 32 control the
`
`Ethernet hardware interfaces in order to communicate with, respectively, the
`
`private network 10 and the public network 14.” (Ex. 1301, 8:3–6.)
`
`F.
`
` “means for correlating the destination port…”
`
`As recited in claim 28, the function recited by this § 112(f) feature is
`
`“correlating the destination port of the destination information in the data packet to
`
`particular source information being maintained.”
`
`The general structure most closely linked to this function language is address
`
`translation (40) software in IP filter (12). The IP filter (12) is a general-purpose
`
`“data processing platform” with “appropriate software to implement the
`
`functionality of the IP filter.” (Ex. 1301, 7:59–64, Figure 2.) The specification
`
`states that “[t]he address translation 40 effects translation between source port
`
`numbers from the private network 10 and the destination port numbers on the
`
`public network side 14.” (Ex. 1301, 8:9–11.)
`
`G.
`
` “means for replacing, in the data packet…”
`
`
`
`13
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
`
`
`As recited in claim 28, the function recited by this § 112(f) feature is
`
`“replacing, in the data packet, the destination information with the particular
`
`source information.”
`
`The general structure most closely linked to this function language is address
`
`translation (40) software in IP filter (12). The IP filter (12) is a general-purpose
`
`“data processing platform” with “appropriate software to implement the
`
`functionality of the IP filter.” (Ex. 1301, 7:59–64, Figure 2.) The specification
`
`states that “[t]he address translation 40 effects translation between source port
`
`numbers from the private network 10 and the destination port numbers on the
`
`public network side 14.” (Ex. 1301, 8:9–11.)
`
`H.
`
` “means for sending to the first network…”
`
`As recited in claim 28, the function recited by this § 112(f) feature is
`
`“sending to the first network the data packet having the replaced destination
`
`information, whereby that packet is routed according to its destination information
`
`to the corresponding first network node.”
`
`The general structure most closely linked to this function language is packet
`
`driver (30) in IP filter (12). The IP filter (12) is a general-purpose “data processing
`
`platform” with “appropriate software to implement the functionality of the IP
`
`filter.” (Ex. 1301, 7:59–64, Figure 2.) “The packet drivers 30 and 32 control the
`
`
`
`14
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
`
`Ethernet hardware interfaces in order to communicate with, respectively, the
`
`private network 10 and the public network 14.” (Ex. 1301, 8:3–6.)
`
`I.
`
` “means for ignoring a data packet…”
`
`As recited in claim 29, the function recited by this § 112(f) feature is
`
`“ignoring a data packet received from the second network, if the destination port of
`
`the destination information in that data packet can not be correlated to the
`
`maintained source information.”
`
`The general structure most closely linked to this function language is address
`
`translation (40) software in IP filter (12). The IP filter (12) is a general-purpose
`
`“data processing platform” with “appropriate software to implement the
`
`functionality of the IP filter.” (Ex. 1301, 7:59–64, Figure 2.) The specification
`
`states that “[t]he address translation 40 effects translation between source port
`
`numbers from the private network 10 and the destination port numbers on the
`
`public network side 14.” (Ex. 1301, 8:9–11.)
`
`J.
`
` “means for storing the source information…”
`
`As recited in claim 30, the function recited by this § 112(f) feature is
`
`“storing the source information from the data packet as an entry in a lookup table,
`
`and wherein the filter node port value correlating to the source information
`
`constitutes an index into the table for that entry.”
`
`
`
`15
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
`
`
`The general structure most closely linked to this function language is address
`
`translation (40) software in IP filter (12). The IP filter (12) is a general-purpose
`
`“data processing platform” with “appropriate software to implement the
`
`functionality of the IP filter.” (Ex. 1301, 7:59–64, Figure 2.) The specification
`
`states that “[t]he address translation 40 effects translation between source port
`
`numbers from the private network 10 and the destination port numbers on the
`
`public network side 14.” (Ex. 1301, 8:9–11.)
`
`VI.
`
`IDENTIFICATION OF HOW CHALLENGED CLAIMS 27–30 ARE
`UNPATENTABLE
`
`Pursuant to Rule 42.104(b)(4)–(5), this section demonstrates that the
`
`challenged claims are unpatentable.
`
`A. Claims 27–30 are anticipated by Kim
`
`The structure in Kim that implements the “means for…” claim limitations is
`
`an “IBM PC compatible machines and packet drivers.” (Ex. 1304, p. 41.)
`
`Claim 27.
`[27A] A filter node for
`interfacing first and
`second data
`communications
`networks, comprising:
`
`Kim (Ex. 1304)
`Kim discloses a filter node for interfacing first and
`second data communications networks.
`
` “By focusing on the fact that there are significantly
`more actual UDP and TCP ports compared to the
`number of sockets simultaneously required by one
`node, the connections to external networks by multiple
`local nodes by using one global address can be
`provided by translating many local sockets to one
`global address and unused port number.” (Ex. 1304,
`p. 39.)
`
`
`
`16
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
`
`
`Claim 27.
`
`Kim (Ex. 1304)
`
`
`See also Madisetti Expert Declaration (Ex. 1309,
`¶ 98.)
`“From this point on, the sockets in each node will be
`marked as (IP address, TCP port number), and all
`TCP packets will be expressed as (srcIP, srcPORT,
`dstIP, dstPORT).” (Ex. 1304, p. 39.)
`
` A
`
` packet is received with a source address of the
`inner network and a destination address in the
`outer network :
`
`
`
`
`(Ex. 1304, p. 44.)
`
`“[Y]ou’ll see that the packet going from (S, 1000) to
`(D, 23) is relayed by G, changed to (G, 3000), and
`then sent to (D, 23) and that the packet sent from (D,
`23) to (G, 3000) is relayed to (S, 1000) by G so that a
`one-to-one connection can be made between S and D.”
`(Ex. 1304, p. 40.)
`
`See also Madisetti Expert Declaration (Ex. 1309,
`¶¶ 101, 170.)
`“Take a look at Table 1. This table shows the sockets
`(IPaddr, PORT) created from the Node 1 (inner nodes)
`of the stub B class network with the address of
`172.16.0.0 being corresponded with the port number
`of G (Gateway node) with a global address.” (Ex.
`1304, p. 40.)
`
`
`[27B] means for
`receiving from the first
`network, a data packet
`having destination
`information, which
`includes a destination
`address and a
`destination port,
`corresponding to a node
`in the second network
`and having source
`information, which
`includes a source
`address and a source
`port, corresponding to a
`node in the first
`network;
`
`[27C] means for
`maintaining the source
`information taken from
`the data packet in
`correlation with a
`unique value
`representing a port of
`the filter node;
`
`
`
`17
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`U.S. Patent 6,128,298
`Petition for Inter Partes Review
`
`
`Claim 27.
`
`Kim (Ex. 1304)
`
`
`
`(Ex. 1304, p. 40.)
`
` A
`
` table entry with source address and port is
`allocated for a packet establishing a new
`connection:
`
`
`[27D] means for
`replacing in the data
`packet the source
`address with an address
`of the filter node and the
`source port with the
`filter node port value;
`and
`
`
`
`(Ex. 1304, p. 44.)
`
`See also Madisetti Expert Declaration (Ex. 1309,
`¶¶ 100, 174.)
`“The transmitter header of an outbound packet is
`revised from (I. Addr. I. PORT) to (G. Addr. G.
`PORT) in accordance with the port-address translation
`table and then relayed to an external global network.
`In addition, the receiver header of a packet, received
`by G from outside, is revised from (G. Addr. G.
`PORT) to (I. Addr. I. PORT) and delivered to an