Petitioner’s Reply in Support of Petition
`IPR2015-00717
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SERVICENOW, INC.
`Petitioner
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`v.
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`HEWLETT-PACKARD COMPANY
`Patent Owner
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`Case IPR2015-00717
`U.S. Patent No. 7,027,411
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`PETITIONER’S REPLY
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`IPR2015-00717
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SERVICENOW, INC.
`Petitioner
`
`v.
`
`HEWLETT-PACKARD COMPANY
`Patent Owner
`
`Case IPR2015-00717
`U.S. Patent No. 7,027,411
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`
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`PETITIONER’S REPLY
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`Petitioner’s Reply in Support of Petition
`IPR2015-00717
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`TABLE OF CONTENTS
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`I.
`II.
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`INTRODUCTION .......................................................................................... 1
`CLAIM 1 DOES NOT REQUIRE THREE LISTS OF TUPLES .................. 1
`A.
`The Plain Claim Language Supports Petitioner’s Construction .......... 2
`B.
`The Specification Refutes the “Separate List” Theory ........................ 4
`C.
`The Prosecution History Supports Petitioner’s Construction ............ 10
`III. EVEN IF CLAIM 1 REQUIRES THREE LISTS, JONES AND
`TONELLI STILL RENDER THE CHALLENGED CLAIMS
`OBVIOUS ..................................................................................................... 13
`JONES DISCLOSES “INTERFACE INFORMATION” AND
`TONELLI DISCLOSES “A PORT SPECIFICATION”.............................. 16
`CONCLUSION ............................................................................................. 19
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`IV.
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`V.
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`Petitioner’s Reply in Support of Petition
`IPR2015-00717
`I.
`INTRODUCTION
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`The patent owner’s attempt to distinguish the Jones and Tonelli references
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`consists essentially of the argument that the “new list of a plurality of tuples” and
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`the “new tuples list” recited in claim 1 cannot refer to the same list. The patent
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`owner’s interpretation finds no basis in the plain language of the claims, the
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`specification or the prosecution history and is irreconcilable with long-standing
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`rules of claim construction. The Board should reject the patent owner’s argument.
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`But even if the patent owner’s argument had any merit, both Jones (Ex. 1003) and
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`Tonelli (Ex. 1004) disclose or suggest the alleged “three lists” that the patent
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`owner contends are required by the claim. Accordingly, the Board should find
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`claims 1 and 3 unpatentable based on the instituted grounds.
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`II. CLAIM 1 DOES NOT REQUIRE THREE LISTS OF TUPLES
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`The patent owner contends that claim 1 requires “three different” tuples lists.
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`(Resp. at 2.) Claim 1 is shown below, with underlining added to indicate the
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`alleged three lists in context:
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`1.
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`In a network having interconnected nodes with data tuples that
`represent nodal connections, a method for mapping a network
`topology by identifying changes between an existing topology
`and a new topology, the method comprising:
`[a] creating a list of existing tuples from an existing topology
`representing nodal connections of a network at a prior time;
`[b] creating a new list of a plurality of tuples for a topology of the
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`1
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`Petitioner’s Reply in Support of Petition
`IPR2015-00717
`network at a current time, wherein the new list of tuples
`represent nodal connections of the network at the current time,
`and wherein each of the tuples comprises a host identifier,
`interface information, and a port specification;
`receiving new tuples list that represent new nodal connections;
`and
`[d] comparing the list of existing tuples with the new tuples list to
`identify changes to the topology.
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`[c]
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`(’411, Ex. 1001, claim 1 (emphasis and lettering (e.g., “[a]”) added).)
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`The key dispute revolves around limitations [b] and [c], which recite
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`“creating a new list of a plurality of tuples” and then “receiving new tuples list,”
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`which the patent owner calls the “second list” and the “third list,” respectively.
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`There are three possible interpretations of these phrases – the “new list of a
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`plurality of tuples” and the “new tuples list”: (1) may (but need not) refer to the
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`same list; (2) must refer to the same list; or (3) cannot refer to the same list.
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`The Petitioner has applied interpretation (1) and believes it to be the
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`broadest reasonable interpretation of claim 1. The Petitioner’s view is supported
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`by the claim language, specification, and file history. The patent owner, on the
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`other hand, has chosen (3) – by far the most implausible interpretation.
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`A. The Plain Claim Language Supports Petitioner’s Construction
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`There is nothing in the claim language that forbids the “new tuples list” of
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`step [c] from referring to the “new list of a plurality of tuples” of step [b]. To the
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`2
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`Petitioner’s Reply in Support of Petition
`IPR2015-00717
`contrary, the plain language itself indicates that the “new list” and the “new tuples
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`list” are, or at least can be, the same.
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`Step 1[b] recites the step of “creating a new list of a plurality of tuples for a
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`topology of the network at a current time,” whereas step [c] merely recites
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`“receiving new tuples list.” The most natural and logical reading of these steps is
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`that a list is created in step [b], and that created list is then received in step [c] and
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`used for the comparison in step [d].
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`The patent owner’s contrary view, that the two lists must be different,
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`creates a strained and anomalous outcome.
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` Under
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`the patent owner’s
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`interpretation, the list created in step [b] is entirely superfluous; it is not referenced
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`in any subsequent claim limitation and not used in the claimed comparison in step
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`[d]. See Frans Nooren Afdichtingssystemen B.V. v. Stopaq Amcorr Inc., 744 F.3d
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`715, 722 (Fed. Cir. 2014) (noting that claims should be construed to not render any
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`part superfluous). Under the patent owner’s view, moreover, the list in step [c] is
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`created by some external, unspecified and unclaimed process. Indeed, the patent
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`owner’s expert conceded that for the patent owner’s interpretation to make sense,
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`one has to imply an unclaimed process of creating the “new tuples list” in step [c].
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`(Shamos Tr., Ex. 1008, 52:3-10 (“[T]here’s an implied generating step or creating
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`step where that list gets created, and the only thing that’s recited is receiving it.”).)
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`The Board should reject this strained and unsupported reading of claim 1.
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`3
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`IPR2015-00717
`The patent owner observes that step [c] recites “new tuples list,” and not
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`“said new tuples list” or “the new tuples list.” (Resp. at 33.) But the lack of an
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`antecedent article before “new tuples list” in step [c] at most means that it need not
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`refer to the list in step [b], not that the two must refer to different lists. The Board
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`should reject the patent owner’s strained interpretation.
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`B.
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`The Specification Refutes the “Separate List” Theory
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`The patent owner relies primarily on the specification to assert that steps [b]
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`and [c] must refer to two different lists. As noted, the patent owner calls the “new
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`list of a plurality of tuples” in step [b] the “second list,” and calls the “new tuples
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`list” in step [c] the “third list.” The patent owner attempts to tie these supposedly
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`separate lists to particular details of an embodiment described in the specification.
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`In particular, the patent owner contends that the “second list” in step [b]
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`corresponds to tuples from “neighbor data database 310.” (Resp. at 11 (“[T]he
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`tuple manager 300 builds the new list of a plurality of tuples (second list) and
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`stores these tuples in the “neighbor data” database 310.”); see also id. at 29;
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`Shamos Tr. at 13:15-25.) The patent owner asserts that the so-called “third list” in
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`step [c] corresponds to the list created by connection calculator 320. (Resp. at 13-
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`14 (“The connection calculator 320 processes the data in the neighbor data
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`database 310 to determine the new network topology. . . . The connection
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`calculator 320 processes the tuple data to create a new tuples list (third list).”); see
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`4
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`IPR2015-00717
`also id. at 29; Shamos Tr. at 14:16-22.) The patent owner’s argument
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`mischaracterizes the specification, as explained in more detail below.
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`At the outset, however, the patent owner’s approach violates fundamental
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`principles of claim construction. Even if the patent owner could show that the lists
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`in step [b] and [c] corresponded to two different lists in the embodiment described
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`in the specification – which it cannot as explained below – this would not mean
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`that these steps require two separate lists. The Federal Circuit has “repeatedly
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`cautioned against limiting the claimed invention to preferred embodiments or
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`specific examples in the specification.” Imaginal Systematic, LLC v. Leggett &
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`Platt, Inc., 805 F.3d 1102, 1109-10 (Fed. Cir. 2015) (quotations omitted; citing
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`cases). In fact, the Federal Circuit has expressly rejected the contention that even
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`if a patent “describes only a single embodiment, the claims of the patent must be
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`construed as being limited to that embodiment.” Hill-Rom Services, Inc. v. Stryker
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`Corp., 755 F. 3d 1367, 1371-72 (Fed. Cir. 2014) (quoting Liebel-Flarsheim Co. v.
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`Medrad, Inc., 358 F. 3d 898, 906 (Fed. Cir. 2004)) (emphasis added). As noted
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`previously, nothing in the claim language prevents steps [b] and [c] from referring
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`to the same list. The patent owner does not identify any disclaimer or other
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`language of restriction in the specification that would suggest otherwise.
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`The patent owner’s “three lists” argument is also inconsistent with the
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`specification and claims. As explained below, the claimed “new list of a plurality
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`Petitioner’s Reply in Support of Petition
`IPR2015-00717
`of tuples” and the “new tuples list” both correspond to the list created by the
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`connection calculator 320, as disclosed in the specification. (’411, 6:22-26.) What
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`the patent owner calls the “second list,” i.e. the tuples from the neighbor data
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`database 310, is simply the intermediate data received by the tuple manager 300, to
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`be processed by the connection calculator 320 to determine the new topology.
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`That intermediate data is not claimed.
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`This is demonstrated in the Summary of the Invention, which describes the
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`alleged invention by reference to only two lists of tuples – a list of tuples for an
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`“existing topology” and a list of tuples for a “new topology.”
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`A topology database stores an existing topology of a network. A
`topology converter accesses the topology database and converts the
`existing topology into a list of current tuples. A connection calculator
`calculates tuples to represent connections in the new topology. The
`topology converter receives the new tuples, identifies changes to the
`topology, and updates the topology database using the new tuples.
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`(’411, 3:9-16 (emphasis added).) The passage above clearly describes using only
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`two lists – the “list of current tuples,” which corresponds to step [a], and the tuples
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`that “represent connections in the new topology” that corresponds to step [b]. (Id.)
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`The passage continues by stating that “[t]he topology converter receives the new
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`tuples,” corresponding to step [c] yet referring back to the same tuples list. The
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`Summary of the Invention does not suggest that any additional list is required for
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`IPR2015-00717
`the claimed identification of network topology changes.
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`This reading makes sense in light of the purpose of the claim, which recites a
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`method of “identifying changes between an existing topology and a new
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`topology.” The purpose of the claim can be carried out with only two pieces of
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`information – the tuples for the existing topology, and the tuples for the new
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`topology. Moreover, as noted above, it makes no sense to read step [b] as
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`requiring the intermediate neighbor data that is not used in the claimed comparison
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`and identification of changes.
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`The patent owner’s interpretation also directly conflicts with dependent
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`claim 4, which provides further detail on the creating step [b]:
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`4. The method of claim 1, wherein the step of creating a new list of
`tuples comprises identifying duplicate tuples that appear both in the
`list of existing tuples and in the new tuples, and maintaining a current
`status of the topology for these tuples.
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`(’411, claim 4 (emphasis added).) As shown above, claim 4 equates the “new list
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`of tuples” in step [b] with “the new tuples” (recited in step [c]). Claim 4 further
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`recites sub-steps for the step of “creating a new list of tuples,” which is a clear
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`reference to step [b] (“creating a new list of a plurality of tuples”) of claim 1.
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`The specification is crystal clear that the sub-step of “identifying duplicate
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`tuples” as recited in claim 4 (the “discard duplicates” phase 936) operates on the
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`list created by the connection calculator 320 – the so-called “third list.” (Shamos
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`7
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`IPR2015-00717
`Tr., Ex. 1008, 48:10-18, 49:2-12.)
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`The topology converter 340 converts 934 the topology into tuple lists,
`also referred to as the “morph topo” phase 934. It then compares 936
`the list from the topology currently stored in the topology database
`350 with the new list generated by the connection calculator 320
`and discards 936 identical tuples in what is also referred to as the
`“discard duplicates” phase 936.
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`(’411, 11:16-23 (emphasis added).) Claim 4 therefore makes clear that the list
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`created in the step [b], “a new list of a plurality of tuples,” corresponds to the “new
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`list generated by the connection calculator 320,” which both parties agree also
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`corresponds to the list in step [c]. Claim 1 cannot require three different lists,
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`because the “new list” and the “new list of tuples” must be the same in order for
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`claim 4 to make sense. The patent owner’s expert conceded at his deposition that
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`he did not consider claim 4 in his analysis. (Shamos Tr., Ex. 1008, 51:13-22.) The
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`list generated by the connection calculator 320, as described in the specification,
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`corresponds to both the “new list of plurality of tuples” in step [b], and the “new
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`tuples list” in step [c].
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`The patent owner’s expert also conceded that the so-called “second list” and
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`“third list” can contain the same data. (Shamos Tr., Ex. 1008, 28:12-23 (tuples in
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`tuples list created by connection calculator (i.e., third list) each comprises a host
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`identifier, interface information and a port specification); 29:17-22 (tuples in tuples
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`IPR2015-00717
`list created by connection calculator can represent nodal connections of the
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`network at the current time).) Similarly, the patent owner’s expert acknowledged
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`that the second list, from step [b], could “represent new nodal connections” recited
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`in step [c]. (Shamos Tr., Ex. 1008, 22:12-22 (new list of a plurality of tuples can
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`include new nodal connections).) Thus, at a minimum, the patent owner appears to
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`acknowledge that the lists of steps [b] and [c] may be the same.
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`Despite long-standing rules of claim interpretation, the patent owner devotes
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`the lion’s share of its response to attempting to explain an unclaimed and
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`embodiment and features in the specification. The patent owner at length discusses
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`a “topology manager,” “topology converter,” “connection calculator,” as well as a
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`“first weeding phase,” “infrastructure building phase,” “second weeding phase,”
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`“noise reduction phase,” “look for phase” and “consolidation phase” that can be
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`carried out by the connection calculator. None of these terms are recited in claim
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`1. Moreover, the specification itself expressly states that the claims are not to be
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`limited to any specific embodiment. Rather, the specification advises that “the
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`embodiments described herein be considered in all respects illustrative and not
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`restrictive and that reference be made to the appended claims for determining the
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`scope of the invention.” (’411, 13:31-38 (emphasis added).)
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`Not only does the patent owner improperly import limitations into the
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`claims, but by doing so, the patent owner also improperly excludes other
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`Petitioner’s Reply in Support of Petition
`IPR2015-00717
`embodiments described in the specification. First, as explained above, the patent
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`owner’s interpretation cannot be reconciled with claim 4. Second, the specification
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`explains that it is possible that not all tuples in the neighbor data database will be
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`complete. (’411, 6:51-61 (“[T]he connection calculator 320 may require additional
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`node information and may signal the tuple manager 300 to gather that
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`information.”).) But in the patent owner’s view, the tuples in the neighbor data
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`database correspond to the “new list” in step [b] and therefore must each comprise
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`a host identifier, interface information, and a port specification as required by the
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`claim. The patent owner’s expert conceded that the specification explains that
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`some tuples in the neighbor data database might not have all of that information.
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`(Shamos Tr., Ex. 1008, 35:19-36:7.) If each of the tuples does not have that
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`information, the tuples in the neighbor data database will not satisfy the
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`requirements of step [b] and the patent owner’s mapping of the claim falls apart.
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`C. The Prosecution History Supports Petitioner’s Construction
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`The patent owner contends that “[t]he file history of the ’411 confirms that
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`claim 1 requires first, second and third lists” and that claim 1 was “explicitly
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`amended to include three lists.” (Resp. at 31, 33 (emphasis added).) But as
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`explained below, the prosecution history does not support this argument.
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`The Federal Circuit has recognized that “because the prosecution history
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`represents an ongoing negotiation between the PTO and the applicant, rather than
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`IPR2015-00717
`the final product of that negotiation, it often lacks the clarity of the specification
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`and thus is less useful for claim construction purposes.” Phillips v. AWH Corp.,
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`415 F. 3d 1303, 1317 (Fed. Cir. 2005) (en banc). To the extent anything definitive
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`can be gleaned from the prosecution history, it appears to undermine the patent
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`owner’s interpretation.
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`The patent owner first points to original language of claim 1 and contends
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`that the step of “converting an existing topology . . .” recited in that original
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`language corresponds to the “first list” of the claim as allowed. (Resp. at 31.) The
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`patent owner then points to an October 4, 2004 amendment and contends that the
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`added step of “creating a plurality of tuples . . .” “ends up as second list in final
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`claim 1.” (Resp. at 32) But in fact, the applicant explicitly stated that the step of
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`“creating a plurality of tuples . . .” was added to replace the step of “converting an
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`existing topology . . . ,” as shown below:
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`(10/04/2004 Amendment and Request for Reconsideration at 5 (Ex. 2001)
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`(highlight added).) The prosecution history therefore does not support the
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`IPR2015-00717
`suggestion that step [b] was intended to require a new and separate list.
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`Moreover, as shown below, the claim as amended recited “the list of existing
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`tuples” having an antecedent basis in “a plurality of tuples” – providing another
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`instance in which the applicant failed to use the exact same language to refer to a
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`previous claim element:
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`(Ex. 2001 at 2 (highlight added).)
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`The patent owner then points to an April 11, 2005 amendment in which
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`claim 1 was modified to recite “creating a new list of a plurality of tuples” and
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`“receiving new tuples list” to contend that a third list was somehow “explicitly”
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`added. (Resp. at 33-34.) But if anything, the fact that the applicant amended both
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`IPR2015-00717
`claim limitations at the same time so that they both recited a “list” strongly
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`suggests that the applicant actually intended for the “new list” and “new tuples list”
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`to refer to the same list. After all, if the applicant had intended that claim 1 require
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`three different lists, the applicant had the opportunity to add a third “creating” step.
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`But the applicant did not do so. Moreover, in light of the applicant’s earlier
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`imprecise claim amendments, the record as a whole indicates that the “new tuples
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`list” in step [c] refers to the “new list” in step [b], and the lack of an antecedent
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`modifier before the “new tuples list” was simply a result of sloppy claim drafting.
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`Accordingly, neither
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`the claim
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`language,
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`the specification nor
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`the
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`prosecution history supports the patent owner’s contention that claim 1 somehow
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`requires three different lists.
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`III. EVEN IF CLAIM 1 REQUIRES THREE LISTS, JONES AND
`TONELLI STILL RENDER THE CHALLENGED CLAIMS OBVIOUS
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`Even if steps [b] and [c] were construed to require two different lists, Jones
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`and Tonelli would still render claims 1 and 3 obvious. As explained below, Jones
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`and Tonelli disclose the use of databases for storing network information, and a
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`person of ordinary skill in the art would have understood that a third list – i.e., a
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`“result set” from the database system – is created and received by the software in
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`Jones and Tonelli that carries out the comparison step.
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`In particular, the patent owner’s expert explained at his deposition that a
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`database system normally provides an interface for another software program to
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`access the database. (Shamos Tr., Ex. 1008, 55:12-15.) A software program
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`could, for example, use the Structured Query Language (“SQL”) to issue a
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`command to the database system to retrieve records from the database. (Shamos
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`Tr., Ex. 1008, 55:19-23.) The patent owner’s expert further explained that, in
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`response to the command, the database system will create a “result set” that
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`contains data from the database that satisfies the query. (Shamos Tr., Ex. 1008,
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`55:24-56:3.) The software program that issued the command will then receive the
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`result set from the database system. (Shamos Tr., Ex. 1008, 56:4-7.)
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`Both Jones and Tonelli disclose storing collected network information in
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`databases. Jones explains, for example, that it “relates to merging network
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`databases” and describes software processes for comparing network information
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`that use those databases. (Jones, 1:7-8 (emphasis added), 5:16-23 (“For all three
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`processes, specific match criteria have been defined for each of the object types
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`involved, so that objects in both databases that represent the same ‘real’ object in
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`the network can be identified.”) (emphasis added).) Similarly, Tonelli teaches that
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`“[a] suite of probes using one or more communication protocols queries devices on
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`a network to discover network information, which information is then consolidated
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`in an electronic database.” (Tonelli, 4:27-30; see also id., 4:32-34 (“The network
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`audit software allows comparisons between the network configuration discovered
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`by the audit and a previously stored network configuration . . . .”).) The patent
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`owner’s expert agreed that Jones and Tonelli disclose storing network information
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`in databases. (Shamos Tr., Ex. 1008, 56:12-16 (Jones), 58:11-14 (Tonelli).)
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`As explained in the Petition, Jones and Tonelli also both disclose various
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`software processes that receive the collected network information in order to carry
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`out comparison operations. (Petition at 26-27 (Jones), 42-43 (Tonelli).) It would
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`have been obvious to a person of ordinary skill in the art that the information
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`retrieved from the database, and received by the comparison software, could
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`include a result set created by the database system storing the collected network
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`information. As a result, Jones and Tonelli therefore render obvious three lists: (1)
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`the list of tuples for the current network topology; (2) a list of tuples for the new
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`topology stored in a database; and (3) a result set with the information from list (2),
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`provided by the database in response to a request by the comparison processes.
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`The third list is then used by the software in Jones and Tonelli to compare the
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`current and new network topologies. Jones and Tonelli therefore render obvious
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`the ability to represent the information in steps [b] and [c] as two different lists.
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`As noted above, the patent owner’s expert explained at his deposition that
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`creating result sets in response to queries from software programs is how database
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`systems operate. As such, using a database system in this manner in Jones and
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`Tonelli would have been obvious because it simply involved the combination of
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`familiar elements according to known methods, with predictable results. KSR Int’l
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`Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007) (“The combination of familiar
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`elements according to known methods is likely to be obvious when it does no more
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`than yield predictable results.”).
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`Moreover, the patent owner’s expert explained that using databases to store
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`information provides several benefits, including the ability to efficiently store and
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`retrieve information. (Shamos Tr., Ex. 1008, 54:14-55:11.) And Tonelli explains
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`that “[a]n important aspect of designing and maintaining networks is being able to
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`quickly assess the current network configuration down to the device configuration
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`level.” (Tonelli, 2:16-18 (emphasis added).) Those networks can be extremely
`
`large. (Tonelli, 19:3-5 (“It will also be understood that a network includes linked
`
`segments, and can be as large as the world-wide web.”).) A skilled artisan would
`
`have been amply motivated, therefore, to use database systems to manage large
`
`amounts of data in order to improve the performance of the network topology
`
`monitoring systems of Jones and Tonelli. KSR, 127 S. Ct. at 1740-41. In sum,
`
`even if the patent owner’s strained position is adopted, it would not create any
`
`nonobvious distinction over the Jones and Tonelli references.
`
`IV. JONES DISCLOSES “INTERFACE INFORMATION” AND
`TONELLI DISCLOSES “A PORT SPECIFICATION”
`
`While the focus of the patent owner’s response is on its flawed interpretation
`
`of the claimed “lists,” the patent owner also offers a few sentences of conclusory
`
`attorney argument that Jones allegedly fails to disclose “interface information” and
`
`
`
`16
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00717
`that Tonelli allegedly fails to disclose a “port specification.” (Resp. at 51-52, 56.)
`
`Both contentions are based on
`
`the patent owner’s unsupported narrow
`
`characterizations of the terms “interface information” and “port specification.”
`
`The patent owner apparently does not have much confidence in these arguments as
`
`its accompanying expert declaration does not analyze this issue.
`
`As explained in the Petition, and supported by the accompanying declaration
`
`of Tal Lavian, Ph.D., Jones clearly discloses “interface information”:
`
`For example, the data set may include “the number of ports [the
`device] has and how they are connected, and the address to which at
`least some of the ports are connected.” (Jones, 3:36-38 (underlining
`added).) Jones explains that a “port” is “[a] physical connector on a
`networked device to which a connection can be made.” (Jones, 4:7-
`8.) These pieces of information qualify as “interface information”
`because they describe a particular device’s connection point with
`other devices. (Lavian Decl. ¶ 60.)
`
`(Petition at 23-24.) The patent owner contends that “how [ports] are connected”
`
`and “the address to which at least some of the ports are connected” somehow does
`
`not identify a connection. The patent owner provides no reasoning for its
`
`contention, which is contradicted by the express language of Jones. The plain
`
`language of claim 1 merely requires “interface information,” and the information
`
`in Jones about a device’s connection point with other devices (i.e., its “interface”)
`
`clearly satisfies the claim limitation.
`
`
`
`17
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00717
`As to Tonelli, the Petition explained that Tonelli discloses a “port
`
`specification”:
`
`Tonelli explains that “[t]he information discovered will typically need
`to be supplemented by the input of a network manager or engineer to
`enter the following: connection media type and port assignments . . .”
`(Tonelli, 20:60-63 (underlining added).) This is consistent with the
`’411 specification, which indicates that a “port specification” may
`include a “port number.” (See ’411, Ex. 1001, 4:28-30 (“The port
`specification (also described as the group/port) may include a group
`number and a port number, or just a port number . . .”) (underlining
`added).)
`
`(Petition at 40 (bold, italics added); see also Lavian Decl., Ex. 1002, ¶ 93.) The
`
`patent owner contends that “‘port assignments’ is vague on its face” but does not
`
`explain why. The patent owner contends that a “port specification” must identify a
`
`connection, but cites no evidence. The plain language of the claim simply requires
`
`a “port specification,” which the specification makes clear can be “just a port
`
`number.” (’411, Ex. 1001, 4:28-30.)
`
`In any event, Tonelli clearly discloses a port assignment in which a port
`
`number (e.g., “Port 1”) is assigned to interface information, such as MAC
`
`information (e.g., “137.199.2133”), to identify a connection, as shown below:
`
`
`
`18
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00717
`
`
`
`(See Tonelli, Ex 1004, Fig. 54 (red boxes added); see also id. at 21:67-22:4.)
`
`Accordingly, the patent owner’s meritless attorney argument should be rejected.
`
`V. CONCLUSION
`
`For all of the foregoing reasons, the Board should reject the patent owner’s
`
`arguments and enter a final decision finding claims 1 and 3 invalid under 35 U.S.C.
`
`§ 103 based on the prior art cited in the Petition.
`
`
`
`
`
`19
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00717
`Dated: February 5, 2016
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`By:
`
`
`
`
`Respectfully submitted,
`
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
`ServiceNow, Inc.
`
`
`
`
`
`20
`
`
`
`Petitioner’s Reply in Support of Petition
`IPR2015-00717
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached PETITIONER’S REPLY, including all exhibits (No. 1008) and related
`documents, are being served via electronic mail on the 5th day of February, 2016,
`the same day as the filing of the above-identified document in the United States
`Patent and Trademark Office/Patent Trial and Appeal Board, upon the patent
`owner’s attorneys of record:
`
`
`
`
`Monica Grewal (monica.grewal@wilmerhale.com)
`
`Donald R. Steinberg (don.steinberg@wilmerhale.com)
` WHIPDocketStaff@wilmerhale.com
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`DATED: FEBRUARY 5, 2016
`
`COOLEY LLP
`ATTN: Heidi L. Keefe
`Patent Docketing
`1299 Pennsylvania Ave. NW,
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
`1
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