UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software,
`Inc., 2K Sports, Inc., and Rockstar Games, Inc.,
`Petitioners
`
`v.
`
`Acceleration Bay, LLC,
`Patent Owner
`______________________
`
`Case No. IPR2016-00726
`
`______________________
`
`DECLARATION OF DAVID R. KARGER IN SUPPORT OF THE
`PETITION FOR AN INTER PARTES REVIEW OF
`UNITED STATES PATENT NOS. 6,732,147 AND 6,910,069
`
`
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`Submitted Electronically via the Patent Review Processing System
`
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`TABLE OF CONTENTS
`
`BACKGROUND AND QUALIFICATIONS ............................................... 7
`I.
`LEVEL OF ORDINARY SKILL ................................................................ 11
`II.
`III. MATERIALS RELIED UPON ................................................................... 14
`IV. SUMMARY OF THE ’147 AND ’069 PATENTS ..................................... 14
`A. Overview Of The ’147 Patent ................................................................ 14
`B. Overview Of The ’147 Patent Prosecution History ............................... 18
`C. Overview Of The ’069 Patent ................................................................ 20
`D. Overview Of The ’069 Patent Prosecution History ............................... 23
`V. OVERVIEW OF THE TECHNICAL FIELD OF THE CLAIMED
`INVENTIONS AND BRIEF DISCUSSION OF SOME OF THE
`RELEVANT PRIOR ART .......................................................................... 26
`VI. CLAIM CONSTRUCTION ........................................................................ 40
`VII. LEGAL STANDARDS ............................................................................... 41
`VIII. INVALIDITY OF THE ’147 PATENT UNDER 35 U.S.C. § 103 ............ 47
`A. The Challenged Claims Of The ’147 Patent .......................................... 47
`B. Overview Of Shoubridge ....................................................................... 47
`C. Overview Of Denes ................................................................................ 52
`D. Overview Of Rufino .............................................................................. 53
`E. Combination Of The Teachings Of Shoubridge, Denes, And Rufino ... 56
`F. Grounds 1-3: Invalidity Of Claims 1-16 ................................................ 58
`G. Ground 4: Invalidity Of Claims 1-16 ..................................................... 92
`INVALIDITY OF THE ’069 PATENT UNDER 35 U.S.C. § 103 ............ 94
`A. The Challenged Claims Of The ’069 Patent .......................................... 94
`B. Overview Of Obraczka .......................................................................... 95
`C. Overview Of Denes .............................................................................. 101
`D. Overview Of Shoubridge ..................................................................... 101
`E. Combination Of The Teachings Of Obraczka, Denes, And
`Shoubridge ........................................................................................... 103
`F. Grounds 1-2: Invalidity Of Claims 1-17 .............................................. 108
`SECONDARY CONSIDERATIONS ....................................................... 139
`
`IX.
`
`X.
`
`
`
`
`-ii-
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`XI. CONCLUSION .......................................................................................... 139
`
`
`
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`-iii-
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`LIST OF EXHIBITS
`
`Exhibit Description
`Ex. 1001 U.S. Patent No. 6,732,147 (“the ’147 patent”)
`Ex. 1002 U.S. Patent No. 6,732,147 File History
`Ex. 1003 This Exhibit – Expert Declaration of David R. Karger (“Karger”)
`Ex. 1004 Declaration of Scott Bennett, Ph.D
`Ex. 1005 Peter J. Shoubridge & Arek Dadej, “Hybrid Routing in Dynamic
`Networks,” IEEE International Conference on Communications,
`Montreal, 1997 (“Shoubridge”)
`Ex. 1006 Declaration of Steven Silvio Pietrobon attaching as Exhibit F Peter J.
`Shoubridge, “Adaptive Strategies for Routing in Dynamic Networks”
`(Ph.D. Thesis, University of South Australia, December 1996)
`(“Shoubridge Thesis”)
`Ex. 1007 John M. McQuillan, et al., “The New Routing Algorithm for the
`ARPANET,” IEEE Transactions Comms., Vol. 28, No. 5, 1980
`(“McQuillan”)
`Ex. 1008 Yogen Kantilal Dalal, “Broadcast Protocols in Packet Switched
`Computer Networks,” (Ph.D. Thesis, Stanford University 1977)
`(“Dalal”)
`Ex. 1009 Katia Obraczka, et al., “A Tool for Massively Replicating Internet
`Archives: Design, Implementation, and Experience,” Proceedings of
`the 16th International Conference on Distributed Computing Systems,
`27-30 May 1996, Hong Kong (New York, NY: 1996), 657-664
`(“Obraczka Paper”)
`Ex. 1010 Katia Obraczka, “Massively Replicating Services In Wide-Area
`Internetworks,” (Ph.D. Thesis, University of Southern California
`December 1994) (“Obraczka”)
`Ex. 1011 Jose Rufino, et al., “A Study On The Inaccessibility Characteristics Of
`ISO 8802/4 Token-Bus LANs,” IEEE INFOCOM ’92: The Conference
`on Computer Communications. One World through Communications.
`Eleventh Annual Joint Conference of the IEEE Computer and
`Communication Societies, Florence, Italy, Vol. 2 (Picataway, NJ: IEEE
`Service Center, 1992), 0958-0967 (“Rufino”)
`Ex. 1012 U.S. Patent No. 6,829,634 (“the ’634 patent”)
`Ex. 1013 Kuo-Jui Raymond Lin, “Routing and Broadcasting in Two-dimensional
`Linear Congruential Graphs of Degree Four,” (Master’s Thesis,
`Concordia University, June 1994) (“Kuo-Jui Lin”)
`
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`Exhibit Description
`Ex. 1014 William S. Davis and David C. Yen, The Information System
`Consultant’s Handbook: Systems Analysis and Design, CRC Press,
`1998 (“Davis”)
`Ex. 1015 Topological Design Considerations in Computer Communication
`Networks, Computer Communication Networks (V.G. Cerf, D.D.
`Cown, R.C. Mullin), 1975 (“Cerf”)
`Ex. 1016 Stephen M. Grimes certification of English translation attaching
`English translation and original text of Tamás Dénes, “The ‘Evolution’
`of Regular Graphs of Even Order by their Verticies,” Matematikai
`Lapok, 27, 3-4 (1976/1979): 365-377 (“Denes”)
`Ex. 1017 English language translation from Exhibit 1016: Tamás Dénes, “’The
`‘Evolution’ of Regular Graphs of Even Order by their Verticies,”
`Matematikai Lapok, 27, 3-4 (1976/1979): 365-377 (“Denes”)
`Ex. 1018 S. Toida, “Construction of Quartic Graphs,” Journal of Combinatorial
`Theory, Series B, 16.2 (April 1974): 124-133 (“Toida”)
`Ex. 1019 T. Todd, “The Token Grid Network,” IEEE/ACM Transactions On
`Networking, 2.3 (June 1994): 279-287 (“Todd”)
`Ex. 1020 Declaration of Peter John Shoubridge and, as Exhibit A, Peter J.
`Shoubridge, Adaptive Strategies for Routing in Dynamic Networks,
`Ph.D. Thesis (Univ. S. Austl., 1996) (“Shoubridge Thesis”), and as
`Exhibit B, Peter J. Shoubridge & Arek Dadej, Hybrid Routing in
`Dynamic Networks, in 3 IEEE INT’L CONF. ON COMMC’NS CONF.
`REC. 1381-86 (Montreal, 1997) (“Shoubridge”).
`Ex. 1021 U.S. Patent No. 5,802,285 to Hirviniemi (“Hirviniemi”)
`Ex. 1022 U.S. Patent No. 4,700,185 to Balph (“Balph”)
`Ex. 1023 U.S. Patent No. 6,603,742 to Steele et al. (“Steele”)
`Ex. 1024 U.S. Patent No. 6,732,147 File History Excerpt: November 5, 2003
`Office Action
`Ex. 1025 U.S. Patent No. 6,732,147 File History Excerpt: December 17, 2003
`Amendment and Response
`Ex. 1026 U.S. Patent No. 6,732,147 File History Excerpt: January 23, 2004
`Notice of Allowance
`Ex. 1027 L.G. Valiant, “Optimality of a Two-Phase Strategy for Routing in
`Interconnection Networks,” IEEE Transactions on Computers, C-32.9
`(September 1983): 861-863 (“Valiant”)
`Ex. 1028 U.S. Patent No. 6,490,247 to Gilbert et al. (“Gilbert”)
`Ex. 1029 U.S. Patent No. 6,122,277 to Garmire et al. (“Garmire”)
`Ex. 1030 U.S. Patent No. 5,181,017 to Frey et al. (“Frey”)
`
`
`
`
`-v-
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`Exhibit Description
`Ex. 1031 J. Van Leeuwen, et al., “Interval Routing,” The Computer Journal, 30.4
`(August 1987): 298-307 (“Van Leeuwen”).
`Ex. 1032-1100: Not Used
`Ex. 1101 U.S. Patent No. 6,910,069 (“the ’069 patent”)
`Ex. 1102 U.S. Patent No. 6,910,069 File History
`Ex. 1103 U.S. Patent No. 6,910,069 File History Excerpt: May 17, 2004
`Amendment
`
`
`
`
`
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`I, David R. Karger, hereby declare under penalty of perjury:
`
`1.
`
`This declaration is submitted in support of petitions for inter partes
`
`review of U.S. Patent Nos. 6,732,147 (the ’147 patent”) and 6,910,069 (“the ’069
`
`patent”). For the reader’s convenience, I address both the ’147 and ’069 patents in
`
`a single declaration because of the overlapping nature of the subject matter and
`
`prior art.
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`2.
`
`I have been retained on behalf of Petitioners and real parties in
`
`interest, Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive
`
`Software, Inc., 2K Sports, Inc., and Rockstar Games, Inc., to provide my opinions
`
`generally regarding the validity of claims 1-16 of U.S. Patent No. 6,732,147 (the
`
`“Challenged ’147 Claims”) and claims 1-17 of U.S. Patent No. 6,910,069 (the
`
`“Challenged ’069 Claims”).
`
`3.
`
`Attached hereto as Appendix A is a true and correct copy of my
`
`Curriculum Vitae, and Faculty Personnel Record, which, collectively, describe my
`
`background and experience.
`
`4.
`
`I earned a Bachelor’s Degree in Computer Science and Physics from
`
`Harvard University in 1989, a certificate of advanced study in mathematics from
`
`Churchill College, Cambridge, England, in 1990, and a Ph.D. Degree in Computer
`
`Science from Stanford University in 1994.
`
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`5.
`
`I am currently a professor at the Massachusetts Institute of
`
`Technology where I am a member of the Computer Science and Artificial
`
`Intelligence Laboratory and the Electrical Engineering and Computer Science
`
`Department.
`
`6.
`
`I have previously worked as a research scientist with Akamai
`
`Technologies (1998–2001), as a postdoctoral fellow at AT&T Bell Laboratories
`
`(1994–1995), as an intern at Xerox PARC (1991–1995), and have performed
`
`consulting work for Google, Microsoft, and Vanu.
`
`7. My research interests include, inter alia, graph algorithms and their
`
`applications in communications, networking, and natural language processing. I
`
`have authored over two hundred publications in these and other areas.
`
`8. My Ph.D. thesis on graph theory and graph algorithms received the
`
`1994 ACM doctoral dissertation award and the Mathematical Programming
`
`Society’s 1997 Tucker Prize. I also received the National Academy of Science’s
`
`2003 Award for Initiative in Research. See Appendix A for a representative list of
`
`other honors.
`
`9.
`
`I am a fellow of the Association for Computing Machinery (“ACM”),
`
`and a member of the Society for Industrial and Applied Mathematics (“SIAM”). I
`
`am also a member of other professional associations. See Appendix A.
`
`
`
`
`-8-
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`10.
`
`I have also served as a referee for the Journal of the ACM, the ACM
`
`Transactions on Information Systems, Mathematical Programming, the Journal of
`
`Algorithms, the SIAM Journal on Computing, Information Processing Letters, and
`
`the Journal of Computer and System Sciences, and chaired the 2009 International
`
`Semantic Web Conference in Chantilly, VA. In addition, I served on program
`
`committees for the 1996 ACM-SIAM Symposium on Discrete Algorithms, the
`
`1996 and 1998 IEEE Symposium on Foundations of Computer Science, the 2002
`
`International Peer to Peer Systems conference (IPTPS), the 2005 ACM
`
`Symposium on Theory of Computing, the 2007 and 2009 Conference on
`
`Innovative Database Systems Research (CIDR), the 2008 International Semantic
`
`Web Conference (ISWC), the 2010 Conference on Intelligent User Interfaces
`
`(IUI), the 2008 and 2010 Conference on Information Retrieval (SIGIR), the 2009
`
`Visual Interface to the Social and Semantic Web, the Conference on Human-
`
`Computer Interaction (CHI) 2010, and the World Wide Web conference (WWW)
`
`in 2003, 2009, and 2010.
`
`11.
`
`I have extensive experience in the technical areas of the ’147 and ’069
`
`patents. For example, my work with colleagues at M.I.T. on distributed cache
`
`systems was the basis for the founding of Akamai Technologies, a well-known
`
`content distribution network, where I served as the first research scientist. I helped
`
`to develop network protocols for Akamai and was a named inventor on several
`
`
`
`
`-9-
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`related patents. I also, together with a number of my colleagues at M.I.T.,
`
`developed Chord, one of the four original distributed hash tables protocols, which
`
`address a fundamental problem in peer-to-peer networks (how to efficiently locate
`
`a node that stores particular data items). (See Stoica, Ion, et al. Chord: A Scalable
`
`Peer-To-Peer Lookup Service For Internet Applications, ACM SIGCOMM
`
`COMPUTER COMMUNICATION REVIEW, Vol. 31, No. 4 (2001), 149–160).
`
`12.
`
`I have also performed services in several patent disputes as an
`
`independent technical expert and consultant, including non-litigation consulting on
`
`behalf of clients including Xerox PARC, NEC, IBM, Google, and Vanu. I served
`
`as an expert witness on computer and software-related cases before the United
`
`States Patent and Trademark Office and U.S. District Courts. I submitted expert
`
`declarations and was deposed in multiple IPR proceedings (IPR 2013-00292,
`
`00293, 00294, 00295), which
`
`involved
`
`the computerized presentation of
`
`information from a variety of sources. I also submitted expert declarations in IPR
`
`2014-00271 on behalf of Microsoft, and in Inter Partes Reexamination 95/000,685
`
`on behalf of Apple. I also prepared an expert declaration addressing the proper
`
`construction of disputed claim terms on behalf of Microsoft in SurfCast, Inc. v.
`
`Microsoft Corp., No. 2:12-cv-00333 (D. Me. filed Oct. 30, 2012). Finally, I was
`
`retained by Microsoft in several district court litigations, including: Microsoft v.
`
`Alcatel-Lucent Enterprise, No. 1:07-cv-00090, 2007 U.S. Dist. LEXIS 93048 (D.
`
`
`
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`Del. Dec. 18, 2008); Microsoft v. Alcatel-Lucent, No. 3:06-cv-02696 (S.D. Cal.
`
`Apr. 4, 2007); Alcatel USA Sourcing, Inc. v. Microsoft Corp., No. 6:06-cv-00500,
`
`2008 U.S. Dist. LEXIS 49615 (E.D. Tex. Dec. 17, 2008); Alcatel USA Sourcing,
`
`Inc. v. Microsoft Corp., No. 6:06-cv-00499, 2008 U.S. Dist. LEXIS 64351 (E.D.
`
`Tex. Dec. 17, 2008); and Lucent Technologies v. Microsoft Corp., 544 F. Supp. 2d
`
`1080 (S.D. Cal 2008).
`
`13.
`
`I have personal knowledge of the facts and opinions set forth in this
`
`declaration, and, if called upon to do so, I would testify competently thereto.
`
`14.
`
`I am being compensated at a rate of $770 per hour for my services. I
`
`have no financial interest in the outcome of this matter or on the pending litigations
`
`between Petitioners and Acceleration Bay LLC (“Acceleration Bay”) in federal
`
`court.
`
`15.
`
`In developing my opinions below relating to the ’147 and ’069
`
`patents, I have considered the materials cited herein, including those itemized in
`
`the “List of Exhibits” preceding this declaration.
`
`II. LEVEL OF ORDINARY SKILL
`16.
`I have been asked to provide my opinions regarding the knowledge
`
`and understanding of a person of ordinary skill in the art or “POSITA” as of at
`
`least July 31, 2000.
`
`
`
`
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`17.
`
`I understand that the factors considered in determining the ordinary
`
`level of skill in the art include: (i) the levels of education and experience of persons
`
`working in the field; (ii) the types of problems encountered in the field; and (iii)
`
`the sophistication of the technology. I understand that a POSITA is not a specific
`
`real individual, but rather a hypothetical individual having the qualities reflected
`
`by the factors above. This hypothetical person has knowledge of all prior art in the
`
`relevant field as if it were arranged on a workshop wall and takes from each
`
`reference what it would teach to a person having the skills of a POSITA.
`
`18.
`
`In my opinion, the field of art relevant to the ’147 and ’069 patents is
`
`a combination of computer networking and graph theory, which are related
`
`disciplines.
`
`19.
`
`In my opinion, a POSITA at the time of the alleged inventions
`
`claimed by the ’147 and ’069 patents would have a minimum of: (i) a bachelor’s
`
`degree in computer science, computer engineering, applied mathematics, or a
`
`related field of study; and (ii) four or more years of industry experience relating to
`
`networking protocols and network topologies. Additional graduate education
`
`could substitute for professional experience, or significant experience in the field
`
`could substitute for formal education.
`
`20. My opinions are based on my educational background, my
`
`commercial experience in the field of art, the technical training required to reduce
`
`
`
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`to practice the systems described in the ’147 and ’069 patents, the relevant prior
`
`art, my reading of the ’147 and ’069 patents and technical literature, and my
`
`experience consulting in many cases involving related technology. My opinion is
`
`also based on the numerous classes I have taught including undergraduate level
`
`computer science classes as identified on my curriculum vitae and my knowledge
`
`of the skills that such students possessed.
`
`21.
`
`I understand that a POSITA is presumed to have knowledge of all
`
`relevant prior art. Therefore, a POSITA would have been familiar with each of the
`
`references cited herein and the full range of teachings they contain. Accordingly,
`
`with regards to the ’147 patent, a POSITA reviewing Shoubridge would be familiar
`
`with the Denes and Rufino references, as discussed below, as well as the other
`
`references discussed in my declaration, and the full range of teachings they
`
`contain, at least because these prior art references address solutions to problems in
`
`networking. Additionally, with regards to the ’069 patent, a POSITA reviewing
`
`Obraczka would be familiar with the Denes and Shoubridge references, as
`
`discussed below, as well as the other references discussed in my declaration, and
`
`the full range of teachings they contain, at least because these prior art references
`
`address solutions to problems in networking.
`
`22.
`
`In July 2000, I would have qualified for or exceeded the level of skill
`
`required by the above definition, and I am in a position to opine on the
`
`
`
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`understanding of a POSITA as of that date. Unless otherwise noted, my statements
`
`and opinions below about the knowledge or understanding of a POSITA should be
`
`understood to refer to the knowledge or understanding of a POSITA as of July 31,
`
`2000.
`
`III. MATERIALS RELIED UPON
`23.
`In reaching the conclusions described in this declaration, I have relied
`
`on the documents and materials cited in the “List of Exhibits” that precede my
`
`testimony in this declaration.
`
`24. My opinions are also based upon my education, training, research,
`
`knowledge, and personal and professional experience.
`
`IV. SUMMARY OF THE ’147 AND ’069 PATENTS
`25. For the Board’s convenience, I address the ’147 and ’069 patents in
`
`this declaration because of the overlapping nature of the subject matter and prior
`
`art. The ’147 and ’069 patents both address maintenance of an m-regular non-
`
`complete network topology. The ’147 patent addresses removing a node from the
`
`topology. The ’069 patent addresses adding a node to the topology.
`
`A. Overview Of The ’147 Patent
`26. The ’147 patent, titled “Leaving a Broadcast Channel,” was filed on
`
`July 31, 2000, and issued on May 4, 2004. Ex. 1001.
`
`
`
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`27. The ’147 patent describes a method for maintaining a non-complete
`
`m-regular topology when a node leaves a network. See, e.g., Ex. 1001, Abstract,
`
`cls. 1, 11.
`
`28. The Challenged ’147 Claims require that each participant is connected
`
`to the same number (m) of neighbors, so that the network is m-regular, where m is
`
`at least three. Ex. 1001, cls. 1, 11. Figure 1 of the ’147 patent, for example,
`
`illustrates a graph where m is equal to 4 so that the graph is 4-regular. Ex. 1001 at
`
`Fig. 1, 2:46-47:
`
`
`Figure 1 from the ’147 Patent (Ex. 1001)
`29. As explained in more detail below, the Challenged ’147 Claims
`
`require that a computer broadcast a connection port search message on the
`
`broadcast channel to find another computer to which it can connect in order to
`
`maintain an m-regular graph. This requirement, viewed in the context of the ’147
`
`patent disclosure, makes it clear that the Challenged ’147 Claims are directed to a
`
`
`
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`network that forms a “non-complete” graph—meaning at least two nodes in the
`
`network are not directly connected to each other. See, e.g., Ex. 1001 at cls. 1, 6,
`
`11. This is because a complete graph would continue to be regular when a
`
`computer disconnected, and would not need to perform any additional steps to
`
`maintain a regular graph.
`
`30. Figure 5A illustrates one process of disconnecting a computer from
`
`the broadcast channel in order to maintain a non-complete m-regular graph. The
`
`’147 patent explains that “[w]hen computer H decides to disconnect, it sends its list
`
`of neighbors to each of its neighbors (computers A, E, F and I) and then
`
`disconnects from each of its neighbors. When computers A and I receive the
`
`message they establish a connection between them as indicated by the dashed line,
`
`and similarly for computers E and F.” Ex. 1001 at 9:20-26.
`
`Figure 5A from the ’147 Patent (Ex. 1001)
`
`
`
`
`
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`31. Figure 5B illustrates another process of disconnecting a computer
`
`from the broadcast channel in order to maintain a non-complete m-regular graph.
`
`The ’147 patent explains that “[i]n this illustration, computer H has disconnected in
`
`an unplanned manner. When each of its neighbors, computers A, E, F, and I,
`
`recognizes the disconnection, each neighbor broadcasts a port connection request
`
`indicating that it needs to fill an empty port. As shown by the dashed lines,
`
`computers F and I and computers A and E respond to each other’s requests and
`
`establish a connection.” Ex. 1001 at 9:42-51.
`
`Figure 5B from the ’147 Patent (Ex. 1001)
`
`
`
`32. Notably, the ’147 patent does not provide any generalized algorithm
`
`for maintaining a non-complete m-regular graph when a node disconnects. See
`
`generally Ex. 1001. The ’147 patent only provides the above two examples. This
`
`
`
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`may be because algorithms for maintaining certain non-complete m-regular graphs
`
`when a node disconnects were well-known in the art by July 2000, as will be
`
`discussed below in Section V.
`
`33. The independent claims are drawn to a node disconnection, and their
`
`dependents add commonplace features that would also have been well-known to a
`
`POSITA. Indeed, the combined teachings of Shoubridge in view of Denes and
`
`further in view of Rufino, renders obvious claims 1-16 of the ’147 patent.
`
`B. Overview Of The ’147 Patent Prosecution History
`34. The application that led to the ’147 patent was filed July 31, 2000, and
`
`applicants did not claim priority to any earlier-filed application. Ex. 1001. I have
`
`reviewed the file history and believe this summary represents an accurate summary
`
`of the prosecution history for the patent.
`
`35. The examiner issued a restriction requirement between: (Group I)
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`original claims 1-8 drawn to determining the diameter of a broadcast channel; and
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`(Group II) claims 9-30 disconnecting a computer from a broadcast channel. Ex.
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`1024 at 3. The applicant selected Group II. Ex. 1025 at 8.
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`36. The application was subject to a single office action where the
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`examiner rejected original claims 9-30 as obvious in view of: (a) U.S. Patent No.
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`6,618,752 to Moore (“Moore”) in view of U.S. Patent No. 6,353,599 to Bi (“Bi”);
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`and (b) Moore in view of Bi in further view of “Graph Theory with Applications”
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`by Bondy et al. (“Bondy”). Ex. 1024 at 5-11.
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`37.
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`In response, applicants amended the preamble of each independent
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`claim to indicate that the claim is directed to an m-regular graph where m is at least
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`3. Ex. 1025 at 4-6. According to applicants, Moore proposed a daisy chain
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`arrangement where clients act as “mini-servers” to forward data to other clients.
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`Ex. 1025 at 10. Applicants therefore argued that Moore did not disclose an m-
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`regular graph where m is at least 3. Ex. 1025 at 11.
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`38. Applicants also added a limitation to independent claims 11 and 112
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`that the disconnecting computer sends a list of its neighbors to all of its neighbors;
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`and that then the neighbors of the first computer can receive that list and can
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`attempt to contact other computers on that list. Ex. 1025 at 4-6. Applicants added
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`a similar limitation to claim 63. Id. According to applicants, this technique is not
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`disclosed in the Moore or Bondy references. Ex. 1025 at 12-13.
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`39. Subsequently, the examiner entered an Examiner’s Amendment which
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`amended independent claims 9 and 23 to further reflect an explicit linking to the
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`broadcast channel and its m-regular structure. Ex. 1026 at 4. The claims were
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`1 Also referred to as claim 9 in Ex. 1025.
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`2 Also referred to as claim 23 in Ex. 1025.
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`3 Also referred to as claim 15 in Ex. 1025.
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`then allowed. Ex. 1026 at 1. The examiner noted in his reasons for allowance that
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`“[c]laims 9-12, 15-19, 22-25 and 28-30 are allowable over the prior art of record
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`based on the argument set forth by the applicant in Paper 3 starting on page 10 as
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`directed to the presently amended claims.” Ex. 1026 at 3.
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`C. Overview Of The ’069 Patent
`40. The ’069 patent, titled “Joining a Broadcast Channel,” was filed on
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`July 31, 2000, and issued on June 21, 2005. Ex. 1101.
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`41. The ’069 patent describes a technique for maintaining an m-regular
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`network topology when a participant is added to the network. See, e.g., Ex. 1101,
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`Abstract, cls. 1, 14.
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`42. Claims 1-17 of the ’069 patent (the “Challenged ’069 Claims”)
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`require that each participant is connected to at least three or four other neighbors.
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`Ex. 1101, cls. 1, 14. Figure 1 of the ’069 patent, for example, “illustrates a graph
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`that is 4-regular, and 4-connected.” Ex. 1101 at Fig. 1, 2:46-47. In the figure
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`below, m is equal to 4.
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`Figure 1 from the ’069 Patent (Ex. 1101)
`43. As explained in more detail below, the claims of the ’069 patent
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`require the disconnection of participants before connection to the incoming
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`participant, which effectively requires that the network forms a “non-complete”
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`graph—meaning at least two nodes in the network are not directly connected to
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`each other. See, e.g., Ex. 1101 at cls. 1 and 14.
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`44. Figures 3A-B of the ’069 patent illustrate one process of connecting a
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`new computer Z to the broadcast channel pursuant to the method disclosed in the
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`’069 patent. Ex. 1101 at Figs. 3A-B, 2:51-52. In the method shown in these
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`figures, new computer Z is added by breaking the connections between existing
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`computer pairs (E, B) and (D, C) and then connecting computer Z to each of E, B,
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`D and C. Ex. 1101 at 5:64 - 6:9.
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`Figure 3A-B from the ’069 Patent (Ex. 1101)
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`45. Notably, the ’069 patent does not provide any generalized algorithm
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`for maintaining a non-complete m-regular graph when adding a node. See
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`generally Ex. 1101. The ’069 patent only provides the above example. This may
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`be because algorithms for maintaining certain non-complete m-regular graphs
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`when adding a node were well-known in the art by July 2000, as will be discussed
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`in Section V below.
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`46. Claim 1 is representative of the scope of the claims—its dependents
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`add commonplace features that would also have been well-known to a POSITA.
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`Independent claim 14 is similar in scope to claim 1 and its dependent claims
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`similarly add commonplace features that would also have been well-known to a
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`POSITA.
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`47.
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`Indeed, the combined teachings of Obraczka in view of Denes and
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`further in view of Shoubridge, renders obvious claims 1-3, 7-9, and 11-17. The
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`combination of Obraczka, Denes, Shoubridge, and Valiant renders obvious claims
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`4-6 and 10.
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`D. Overview Of The ’069 Patent Prosecution History
`48. The application that led to the ’069 patent was filed July 31, 2000, and
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`applicants did not claim priority to any earlier-filed application. Ex. 1101. I have
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`reviewed the file history and believe this summary represents an accurate summary
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`of the prosecution history for the patent.
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`49.
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`In the first office action, the examiner issued a restriction requirement
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`between: (Group I) claims 1-17, 32-40 drawn to method for adding a participant to
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`a network; (Group II) claims 18-31 drawn to method for sending a connection edge
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`search message for adding a participant to a network; and (Group III) claims 41-49
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`drawn to method for detecting neighbors with empty ports in a network. Ex. 1102
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`at 1185-89. The applicants selected Group I. Id. at 1195.
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`50.
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`In the second office action, the Examiner rejected claims 1-17 and 32-
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`40: (a) under 35 U.S.C. § 102(e) as being anticipated by U.S. Pat. No. 6,603,742 to
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`Steele, et al. (“Steele”); (b) under 35 U.S.C. § 103(a) as obvious over Steele in
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`view of Cho, et al., “A Flood Routing Method for Data Networks,” ICICS ’97
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`(“Cho”); under 35 U.S.C. § 103(a) as obvious over U.S. Pat. No. 6,490,247 to
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`Gilbert et al. (“Gilbert”) in view of U.S. Pat. No. 6,533,020 to Hughes et al.
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`(“Hughes”); and under 35 U.S.C. § 103(a) as obvious over Gilbert in view of
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`Hughes and further in view of Cho. Ex. 1102 at 1201-1217.
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`51.
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`In response, applicants amended the preamble of the independent
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`claims that are now numbered independent claims 1 and 14. Ex. 1103 at 4-6.
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`Specifically, claim 1 was amended to require that the claimed method was “non-
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`routing table based, non-switch based.” Id. Claim 14 was amended to require that
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`the claimed method be “non-switch based.” Id. While independent claim 32 was
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`also amended, this claim was later cancelled so it is not addressed in detail herein.
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`Ex. 1102 at 1384.
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`52. According to applicants, their invention did not use a switch based
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`method. Ex. 1103 at 12. In contrast, applicants argued that Gilbert disclosed a
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`method of adding a node to a network using a switching mechanism. Id. at 16-17.
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`The only example of “switch” that Gilbert appears to provide is one where all the
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`nodes are connected at a common switch to make or break connections to other
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`nodes, as illustrated in Figure 1 of Gilbert, provided below. See also Ex. 1028 at
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`Figs. 5, 6, 8, and 10 (other figures that illustrate all nodes are connected at a
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`common switch).
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`Figure 1 from Gilbert
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`53. Applicants also argued that their invention did not use routing tables.
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`Ex. 1103 at 10-12. In contrast, applicants argued that Steele used an interim
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`routing table to route traffic around the part