Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 7
`Filed: November 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TALARI NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS INDIA LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-00976
`Patent 6,775,235 B2
`____________
`
`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 7
`Filed: November 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TALARI NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS INDIA LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-00976
`Patent 6,775,235 B2
`____________
`
`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
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`IPR2016-00976
`Patent 6,775,235 B2
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`
`I. INTRODUCTION
`
`A. Background
`Talari Networks, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`seeking to institute an inter partes review of claims 4, 5, 7–15, and 19 of
`U.S. Patent No. 6,775,235 B2 (Ex. 1001, “the ’235 patent”) pursuant to
`35 U.S.C. §§ 311–319. FatPipe Networks India Limited. (“Patent Owner”)
`filed a Preliminary Response. (Paper 6, “Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes
`review may not be instituted “unless . . . there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”
`Petitioner contends the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and 103 on the following specific grounds (Pet. 10–60):
`Reference(s)
`Basis Claims Challenged
`Karol1
`§ 102 4, 5, 7–11, 14, and 19
`Karol and Stallings2
`§ 103 5, 11–15, and 19
`Karol
`§ 103 4, 5, 7–15, and 19
`
`Our factual findings and conclusions at this stage of the proceeding are
`based on the evidentiary record developed thus far (prior to Patent Owner’s
`Response). This is not a final decision as to patentability of claims for
`which inter partes review is instituted. Our final decision will be based on
`the record as fully developed during trial. For reasons discussed below, we
`institute inter partes review of claims 4, 5, 7–15, and 19 of the ʼ235 patent.
`
`
`1 U.S. Patent No. 6,628,617 B1 (“Karol,” Ex. 1006).
`2 William Stallings, Data and Computer Communications, Prentice-Hall, 5th
`Ed, 1997, ISBN-81-203-1240-6 (“Stallings,” Ex. 1011).
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`B. Related Proceedings
`The parties inform us FatPipe, Inc. v. Talari Networks, Inc., No.
`5:16-CV-54-BO (E.D.N.C.), may be impacted by this proceeding. Pet. 1,
`Paper 5, 1–2. In addition, Petitioner seeks inter partes review of a related
`patent, U.S. Patent No. 7,406,048 B2 (IPR2016-00977). Id.
`
`C. The ʼ235 Patent
`The ’235 patent describes a system and method for communicating
`using two or more disparate networks in parallel. Ex. 1001, Abstract. For
`example, an embodiment of this system could be composed of a virtual
`private network (“VPN”) in parallel with a frame relay network. Id. at 1:19–
`24. These parallel networks back each other up in case of failure and when
`both networks are operational their loads are balanced between the parallel
`networks. Id. at Abstract. An embodiment of this system is depicted in
`Figure 10, which is shown below.
`
`
`Figure 10 depicts an example of the network topology described in the ’235
`patent. Id. at 8:29–30. Two sites 102 transmit and/or receive data from one
`another. Id. at 2:38–40. These sites are connected by two disparate
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`networks, Internet 500 and frame relay network 106. Id. at 8:30–32. Each
`location has frame relay router 105 and Internet router 104. Id. at 8:32–33.
`“Access to the disparate networks at site A and site B is through an inventive
`controller 602 at each site.” Id. at 6:34–36. Controller 602 “allows load-
`balancing, redundancy, or other criteria to be used dynamically, on a
`granularity as fine as packet-by-packet, to direct packets to an Internet router
`and/or frame relay/point-to-point router according to the criteria.” Id. at
`9:12–17.
`
`Figure 7 of the ’235 patent is reproduced below.
`
`
`Figure 7 depicts controller 602. Id. at 10:59–60. Controller 602 is
`connected to site 102 via site interface 702. Id. at 10:60–63. Packet path
`selector 704 is hardware or software that determines which path a given
`packet is to travel. Id. at 11:2–6. The criteria used to determine which path
`a packet travels may be based on concerns such as redundancy,
`load-balancing, or security. Id. at 11:9–63. Controller 602 also has two or
`more network interfaces 706 (at least one per each network for which
`controller 602 controls access). Id. at 11:64–67.
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`D. Illustrative Claim
`As noted above, Petitioner challenges claims 4, 5, 7–15, and 19 of the
`ʼ235 patent, of which claims 4, 5, and 19 are independent. Claim 5 is
`illustrative of the challenged claims and is reproduced below:
`5. A method for combining connections for access to multiple
`parallel disparate networks, the method comprising the
`steps of:
`obtaining at least two known location address ranges which
`have associated networks;
`obtaining topology information which specifies associated
`networks that provide, when working, connectivity
`between a current location and at least one destination
`location;
`receiving at the current location a packet which identifies a
`particular destination location by specifying a destination
`address for the destination location;
`determining whether the destination address lies within a
`known location address range;
`selecting a network path from among paths to disparate
`associated networks, said networks being in parallel at
`the current location, each of said networks specified in
`the topology information as capable of providing
`connectivity between the current location and the
`destination location;
`forwarding the packet on the selected network path.
`
`
`II. CLAIM CONSTRUCTION
`In an inter partes review, “[a] claim in an unexpired patent shall be
`given its broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b). Under this standard, we
`construe claim terms using “the broadest reasonable meaning of the words in
`their ordinary usage as they would be understood by one of ordinary skill in
`the art, taking into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description contained in the
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`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997).
`Petitioner and Patent Owner both decline to seek construction of any
`terms at this time. Pet. 8; Prelim. Resp. 8. We reviewed the asserted
`grounds, and, for the purposes of this Decision, we have determined that no
`terms require express construction. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`III. ANALYSIS
`
`We turn to Petitioner’s asserted grounds of unpatentability to
`determine whether Petitioner has met the threshold of 35 U.S.C. § 314(a).
`
`A. Asserted Ground of Anticipation over Karol
`Petitioner asserts that claims 4, 5, 7–11, 14, and 19 are anticipated by
`the disclosures of Karol. Pet. 10–30. Petitioner supports its arguments with
`a declaration from Dr. Kevin Negus. Ex. 1005. For the reasons described
`below we are persuaded that Petitioner has made a showing sufficient to
`satisfy the threshold of § 314(a) as to its asserted anticipation of claims 4, 5,
`7–11, 14 and 19.
`1. Overview of Karol
`Karol is directed to “the internetworking of connectionless (e.g.,
`Internet Protocol or ‘IP’) and connection oriented (e.g., ATM, MPLS,
`RSVP) networks.” Ex. 1006, 1:7–10. Connectionless (“CL”) networks
`require no explicit connection setup prior to transmitting datagrams. Id. at
`1:19–24. In contrast, connection oriented (“CO”) networks determine a
`route for the connection and allocate bandwidth resources along the route.
`Id. at 1:31–39. Figure 1 of Karol is reproduced below.
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`Figure 1 depicts CO and CL networks in a parallel configuration. Id. at
`4:12–14. Datagrams ultimately destined for endpoint 151 may be sent from
`source 101 to node 111 in CL network 110. Id. at 4:39–40. The datagrams
`may be routed over either the CO or CL network in order to arrive at
`endpoint 151. Id. at 4:40–43. CL-CO gateways 140 and 150 interconnect
`the CL and CO networks and “allow[] datagrams (sometimes hereinafter
`called messages) originated on the CL network to be transported . . . on the
`CO network.” Id. at 3:30–37. “When a datagram arrives at CL-CO gateway
`140 of FIG. 1, a determination is made if that packet should be carried by
`CO network 160.” Id. at 5:23–25. CL-CO gateway 140 is described in more
`detail in Figure 4, which is reproduced below.
`
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`Figure 4 illustrates the internal arrangements of CL-CO gateway 140. Id. at
`6:31–32.
`Generally speaking, each CL-CO gateway arranged in
`accordance with the present invention includes hardware and
`software modules that typically comprise (a) a switch fabric for
`CO networking, shown in FIG. 4 as CO switch 410, (b) a CL
`packet forwarding engine, shown in FIG. 4 as CL router/switch
`420, (c) a protocol converter 450, (d) a moderately sized
`packet buffer 440 for temporarily storing packets waiting for
`CO network setup or turnaround; and (e) a processor 430 and
`associated database 431 for controlling the gateway packet
`handling operations and for storing forwarding, flow control,
`header translation and other information. Input line cards 401
`and output line cards 402 connect the gateway of FIG. 4 to
`external networks, such that datagrams received in input line
`cards 401 can be directed either to CO switch 410 or CL
`router/switch 420, and such that output line cards 402 can
`receive datagrams from either of the last mentioned elements
`and direct them to external networks.
`
`Id. at 6:32–50. The elements depicted in Figure 4 are controlled by
`processor 430 and such control is implemented via programs stored in the
`processor. Id. at 6:55–59. The routing procedures used by gateway 140
`may adjust routing dynamically “to divert connections away from
`overloaded call processors.” Id. at 17:64–67. In other words, routing “can
`be adjusted to reflect bandwidth availability.” Id. at 18:1–2.
`2. Independent Claim 4
`Claim 4 recites a controller which controls access to multiple
`networks. Petitioner’s arguments as to independent claim 4 may be
`summarized as follows: Petitioner argues in the alternative that the claimed
`controller that provides access to multiple networks may be either Karol’s
`CL-CO gateway alone or the gateway in combination with one or more
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`routers or switches. Pet. 10–12. If the controller is the gateway alone, then
`Petitioner asserts that the site interface is disclosed by one or more of
`Karol’s input line cards 401 or the network connection depicted in Figure 1
`between source 101 and node 111. Id. at 12. If the controller is the gateway
`in combination with routers and/or switches, then Petitioner asserts the site
`interface is a network connection. Id. According to Petitioner, Karol
`discloses at least two output line cards 402 that receive datagrams from the
`CO switch or CL router/switch and directs the datagrams to external
`networks. Id. at 12–13. As to the packet path selector, Petitioner points to
`Karol’s gateway processor, CL router/switch, CO switch, packet buffer,
`protocol converter and input line cards to disclose this element of the claim.
`Id. at 14. Petitioner asserts that these items work together in Karol to
`determine if a packet (“datagram”) from a source should be forwarded to
`either the CL or CO network. Id. Petitioner relies on Karol’s disclosure of
`routing datagrams based on “‘bandwidth availability’ that can be
`‘dynamically allocated to flows on an as-needed basis’ and can ‘divert[]
`connections away from congested links.” Id. at 15 (citing Ex. 1006, 17:18–
`26, 17:63–18:2; Ex. 1005 ¶ 182). On the record before us, we find
`Petitioner’s arguments and evidence to be persuasive.
`Patent Owner argues that Karol does not disclose the recited path
`selection factors (Prelim. Resp. 51), nor does it disclose the selection of
`paths on a per packet basis (id. at 45). Patent Owner supports its contentions
`with a declaration from Joel Williams. Ex. 2001. We address each of Patent
`Owner’s arguments in turn.
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`Claim 4 recites, in relevant part,
`a packet path selector which selects between network
`interfaces on a per-packet basis according to at least:
`[1] a destination of the packet,
`[2] an optional presence of alternate paths to that
`destination, and
`[3] at least one specified criterion for selecting between
`alternate paths when such alternate paths are present;
`
`Ex. 1001, 17:46–51. Patent Owner asserts that Petitioner failed to establish
`that Karol discloses these three factors for path selection. Prelim. Resp. 51.
`Petitioner asserts that Karol’s gateway processor, CL router/switch, CO
`switch, packet buffer, protocol converter and input line cards disclose the
`packet path selector. Pet. 14. According to Petitioner, these elements
`“compare[] information in each packet received at the CL-CO gateway to
`determine if the packet will be routed to the CL or CO network interface
`output line card.” Id. at 15–16. As to the three factors, Petitioner asserts
`that [1] Karol’s gateway processor compares the destination address of each
`received packet to fields in both the routing databases; [2] the gateway
`processor only forwards a packet to the CO network when a valid
`connection exists; and [3] forwarding occurs based upon the needs of a
`particular flow or to avoid congested links. Id. at 16 (citing Ex. 1005
`¶¶ 187–189).
`Patent Owner disputes Petitioner’s analysis of Karol and argues that
`the path selection is based on flows that have been predefined by service
`contracts and not the recited factors. Prelim. Resp. 51. It is Patent Owner’s
`contention that a node’s use of CL-CO gateway 140 to access the CO
`network is dependent upon pre-defined, user-specified service requirements.
`Id. at 14 (citing Ex. 1006, 5:34–57, 15:20–31, 16:3–8). We note, however,
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`that Karol states that “not all nodes of the CL network need to have the
`ability to make redirect decisions.” Ex. 1006, 2:33–34. Petitioner’s
`arguments are directed to the nodes that have been configured to redirect
`traffic to a CO network. These nodes connect to CL-CO gateways wherein
`“decisions [are] made whether to continue carrying the information in CL
`mode, or to redirect the traffic to a CO network.” Id. at 2:16–19. These
`gateways have “a processor containing logic for controlling the gateway
`packet handling operations.” Id. at 2:26–28.
`Patent Owner argues that the pre-set criteria used by Karol’s
`processors does not provide claimed dynamic routing. Prelim. Resp. 52.
`Karol describes, however, applying pre-set criteria in a dynamic fashion.
`One of Karol’s purported advantages is that “bandwidth can be dynamically
`allocated to flows on an as-needed basis.” Ex. 1006, 17:25–26. Thus, on
`this record, we are persuaded that Petitioner has made a sufficient showing
`that Karol discloses the claimed packet path selection based on the recited
`factors.
`Patent Owner also argues that Karol does not “select[] between
`network interfaces on a per-packet basis” as recited by claim 4. Prelim.
`Resp. 45. According to Patent Owner, “Karol relies on routing decisions
`that were made for a flow of datagrams” and not individual packets. Id. at
`47; see Ex. 1006, 15:29–30 (“user-specific routing then determines which
`user’s flows are sent to the CO network”). This argument, however, does
`not take into account Karol’s determinations that are made at the packet
`level. In Karol, “[w]hen a datagram arrives at a CO-CL gateway 140 . . . a
`determination is made if that packet should be carried by CO network 160.”
`Ex. 1006, 5:23–25 (emphasis added). Some, but not all, traffic flows are
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`configured to access the CO network. Id. at 5:25–27. Thus, one of the
`user-specified criteria to be evaluated is whether a particular packet is part of
`a traffic flow that may be redirected. Id. at 5:24–37; see also id. at 7:42–46
`(discussing the flow database’s storage of “information used to determine
`how to handle packets from flows requiring connection oriented service”
`(emphasis added)). Patent Owner cites Figure 5 of Karol in support of its
`argument. Prelim. Resp. 47. Step 503 of this Figure, however, examines
`whether “this is a packet from a flow that needs CO Service.” Ex. 1006, Fig.
`5. Thus, on this record, we are persuaded that Karol discloses examining
`packets to in order to select the network interface.
`On the current record, we are persuaded by Petitioner’s contention
`that independent claim 4 is anticipated by Karol. Thus, Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertion that
`independent claim 4 is unpatentable over Karol.
`3. Independent Claim 5
`Claim 5 recites a method for combining connections for access to
`multiple parallel disparate networks. Petitioner’s allegations regarding
`independent claim 5 may be summarized as follows: Karol discloses
`multiple parallel disparate networks through its discussion of CL and CO
`networks. Pet. 17. Karol discloses obtaining at least two known location
`address ranges through its discussion of routing tables. Id. at 17–18.
`Petitioner further asserts that Karol’s routing tables contain information
`about route topology and connectivity. Id. at 19–21. Karol’s datagrams are
`relied upon to disclose a packet which identifies a particular destination
`location. Id. at 21. Karol “compar[es] the destination IP address in each
`packet received at the CL-CO gateway to entries in the databases to
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`determine if the destination address lies within the routing tables that include
`a known location address range for the destination location.” Id. Petitioner
`argues in the alternative that Karol’s discussion of the CL-CO gateway alone
`or the gateway in combination with its associated routers and/or switches
`discloses the step of selecting a network path from among the disparate
`parallel CO and CL networks. Id. at 22. In addition, Karol’s routing tables
`provide information as to the connectivity between the current location and
`the destination. Id. On the record before us, we find Petitioner’s arguments
`and evidence to be persuasive.
`Patent Owner argues that Karol does not disclose “obtaining at least
`two known location address ranges which have associated networks” and
`“determining whether the destination address lies within a known location
`address range.” Prelim. Resp. 38–39. Patent Owner argues that when
`Karol’s gateways redirect traffic to the CL network, the routing table is
`overridden and source routing is used in place of the routing table. Id. at 39
`(citing Ex. 2001 ¶¶ 80–82). In support of its argument, Patent Owner cites a
`portion of Karol discussing the processing performed if the connection to the
`CO network has not yet been set up. See id. (citing Ex. 1006, 11:27–31,
`8:51–55). In this situation, a datagram may be placed in a packet buffer and
`then forwarded to the CL network using source routing. Ex. 1006, 11:21–
`26. This, however, is not the only routing discussed in Karol, which also
`discloses “creating routing tables that enable data flow from the CL network
`to the CO network.” Id. at 8:1–2. The routing tables used by the gateways
`may be either generic or user-specific. Id. at 16:3–9. These routing tables
`are maintained at the gateways. Id. at 14:50–51. The gateways use the
`information in these tables to “determine[] the shortest paths to IP
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`destinations by comparing its path on the two networks for each
`destination.” Id. at 14:57–59. The gateway maintains a list of the shortest
`paths in its routing table. Id. at 14:60–65. Thus, on this record, we are
`persuaded that Karol discloses the recited address ranges.
`On the current record, we are persuaded by Petitioner’s contention
`that independent claim 5 is anticipated by Karol. Thus, Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertion that
`independent claim 5 is unpatentable over Karol.
`4. Independent Claim 19
`Similar to claim 5, independent claim 19 also is directed to combining
`connections for access to parallel networks. Many of Petitioner’s
`contentions are similar to the contentions discussed above in regards to
`claims 4 and 5. Compare Pet. 59–60 (contentions regarding claim 19) with
`id. at 42–52 (contentions regarding claims 4 and 5). For the purpose of
`brevity, we focus our discussion here on a few limitations that we believe
`merit additional discussion.
`Claim 19 recites, in relevant part, “a packet path selector which
`selects between the network interfaces on a per-session basis to promote
`load-balancing.” Petitioner points out that one of Karol’s purported
`“advantage[s] to a service provider is that bandwidth utilization in a
`packet-switched CO network is better than in a CL network with
`precomputed routes since bandwidth can be dynamically allocated to flows
`on an as-needed basis.” Pet. 27–28 (citing Ex. 1006, 17:18–26, 17:63–18:2;
`Ex. 1005 ¶ 449). Patent Owner asserts that load balancing is not taught by
`Karol because the CO is the preferred network. Prelim. Resp. 25.
`According to Patent Owner, Karol describes the CO network as the faster,
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`preferred network and that the gateway should use the CO network if it is
`available. Id. at 27 (citing Ex. 2001 ¶ 60). Mr. Williams testifies that CO
`connections are shown as faster and thus, the system does not balance
`between the networks because it favors the CO network. Ex. 2001 ¶ 60.
`On this record, we disagree with Patent Owner’s analysis of Karol.
`The decision whether to setup a connection to a CO network is “based on
`user-specified service requirements and the traffic situation in the CL and
`CO networks.” Ex. 1006, 5:35–38 (emphasis added). Thus, Karol describes
`the network load as being part of the decision whether to redirect packets.
`On the record before us, we are persuaded that Karol teaches or at least
`suggests the recited load balancing. We find persuasive Petitioner’s
`assertion that Karol teaches load balancing through its discussion of
`diverting connections away from overloaded call processors and diverting
`connections away from congested links. Ex. 1006, 17:65–18:2. Thus, we
`are persuaded that Petitioner made a sufficient showing in regards to this
`limitation.
`Claim 19 also recites that “the controller sends different packets of a
`given message to different parallel networks.” Petitioner asserts that this is
`disclosed by Karol’s description of sending datagrams over both the CO and
`CL networks. Pet. 29. Patent Owner contends that this is a feature that
`improves the security of transmissions by individually routing packets on at
`least two different networks. Prelim. Resp. 34–35. As discussed above,
`Petitioner has shown sufficiently that routing decisions are made on a per
`packet basis. See § II.A.2. Karol states that “data can be allowed to flow
`simultaneously through the CL and CO networks if both networks meet the
`user’s needs.” Ex. 1006, 5:54–57. In addition, Karol states that datagrams
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`are routed through the CL network using “source routing until the [CO]
`connection is set up” and then datagrams from that flow may be transmitted
`via the newly established connection to the CO network. Id. at 4:11–29. On
`this record, we are persuaded that Petitioner has made a sufficient
`preliminary showing that Karol anticipates claim 19.
`5. Analysis of Dependent Claims
`Petitioner contends claims 7–11 and 14, which depend from claim 5,
`are anticipated by Karol. Pet. 22–27. Based on our review of Petitioner’s
`explanations and supporting evidence, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertions that
`claims 7–11 and 14 are anticipated. Patent Owner makes certain arguments
`directed to claim 9 (Prelim. Resp. 45–51 (no per packet analysis)) and claim
`11 (id. at 25–33 (no load balancing)). Patent Owner’s assertions regarding
`claim 9 need no further discussion in light of our discussion of the same
`arguments as applied to claims 4 and 19. See §§ II.A.2, II.A.4.
`On the current record, we are persuaded by Petitioner’s contention
`that dependent claims 7–11 and 14 are anticipated by Karol. Thus,
`Petitioner has demonstrated a reasonable likelihood of prevailing on its
`assertion that dependent claims 7–11 and 14 are unpatentable.
`For all of the foregoing reasons, we institute inter partes review of
`claims 4, 5, 7–11, 14, and 19 on the asserted ground of anticipation over the
`disclosures of Karol.
`
`B. Asserted Obviousness over Karol
`Petitioner asserts that claims 4, 5, 7–15, and 19 would have been
`obvious over the teachings of Karol. Pet. 42–60. Petitioner supports its
`arguments with a declaration from Dr. Negus. Ex. 1005. For the reasons
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`described below, we are persuaded that Petitioner has made a showing
`sufficient to satisfy the threshold of § 314(a) as to its asserted obviousness of
`claims 4, 5, 7–15, and 19.
`Petitioner relies upon similar disclosures from Karol in support of
`both its asserted anticipation and obviousness grounds for claims 4, 5, 7–11,
`14, and 19. Compare Pet. 10–30 (asserted anticipation) with id. at 42–60
`(asserted obviousness). Petitioner provides additional argument to support
`its contention that the challenged claim limitations would have been obvious
`over the disclosures of Karol. For example, Petitioner explains how Karol,
`when viewed in conjunction with knowledge of one of ordinary skill in the
`art, would have taught the limitations of claim 4 even if this Board construed
`the term “private network” to mean “a frame relay or point-to-point
`network.” Id. at 42. We decline to construe this term because it is at least as
`broad as the possible construction discussed in regards to this ground, and,
`for the purposes of this decision, we do not need an explicit construction of
`the scope and meaning of this term.
`Claims 12, 13, and 15 were not asserted to be anticipated by Karol,
`but they are asserted to be obvious over this reference. Pet. 56, 58–59.
`Claims 12 and 13 respectively depend from claims 5 and 11. Claims 12 and
`13 are directed to load balancing. Claim 12 recites selecting between
`networks at least in part on the basis of load balancing “which tends to
`balance line load by distributing packets between lines.” Claim 13 is similar
`to claim 12, but it recites load balancing “which tends to balance network
`load by distributing packets between disparate networks.” Dr. Negus asserts
`that these claims were obvious over Karol and the knowledge of one of
`
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`ordinary skill in the art because the routing procedures used at the time tend
`to balance line loads and network loads. Ex. 1005 ¶¶ 365, 382.
`Claim 15 depends from claim 5 and further recites that the “selecting
`step selects the network path at least in part on the basis of a security
`criterion.” Petitioner asserts that “implementing a security criterion in Karol
`would have amounted to nothing more than the use of a known technique to
`improve similar methods in the same way or the combination of prior art
`elements according to known methods to yield predictable results.” Pet. 58
`(citing Ex. 1005 ¶¶ 410, 417). Dr. Negus testifies that routing based on
`security criterion was known in the art and it would have been obvious to try
`the use of security based criterion in order to avoid links with inadequate
`security. Ex. 1005 ¶¶ 417, 420.
`We are persuaded that Petitioner has made a sufficient showing as to
`the asserted obviousness of claims 4, 5, 7–15, and 19. Patent Owner puts
`forth the same arguments regarding the alleged insufficiency of Petitioner’s
`arguments and evidence as it did with respect to ---, with a few additional
`points. The points that we believe merit additional discussion are addressed
`below.
`First, Patent Owner argues that this asserted ground is defective
`because it relies on alternative constructions. Prelim. Resp. 56–59.
`Alternative legal arguments, however, are permissible under Federal Rule of
`Civil Procedure § 8(d). See FRCP § 8(d)(2) (allowing “2 or more statements
`of a claim of defense alternatively or hypothetically”); see also id. at
`§ 8(d)(2) (“A party may state as many separate claims or defenses as it has,
`regardless of consistency”). Such arguments applying different potential
`constructions to the asserted challenges are proper and could be helpful if
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`they provide us with the benefit of Petitioner’s arguments as to why its
`challenges should succeed under different possible claim constructions.
`Second, Patent Owner argues that Petitioner has not provided a proper
`obviousness analysis. Prelim. Resp. 54–55. According to Patent Owner,
`Petitioner merely provides conclusory statements that “it would have been
`obvious to combine the knowledge of a POSITA” with the teachings of
`Karol. Id. We disagree. On the current record, we are persuaded that
`Petitioner articulates a reasonable rationale as to how and why one of
`ordinary skill in the art would have modified Karol in a manner that would
`have rendered the challenged claims obvious. See Pet. 45–46.
`Third, Patent Owner argues that Karol teaches away from the two
`address ranges recited in claim 5. Prelim. Resp. 41–44. This argument is
`based on Patent Owner’s analysis of Karol’s disclosures related to the
`routing of packets during the setup of the connection to the CO network.
`See id. at 41–42. As noted above in Section II.A.3, this is not the portion of
`Karol that is relied upon to teach this limitation. We disagree with Patent
`Owner’s arguments regarding claim 5 and find persuasive Petitioner’s
`evidence and arguments as to this claim.
`For all of the foregoing reasons, we institute inter partes review of
`claims 4, 5, 7–15, and 19 on the asserted ground of obviousness over the
`disclosures of Karol.
`
`C. Asserted Obviousness over Karol and Stallings
`1. Overview of Stallings
`Stallings is a book titled Data and Computer Communications. Ex.
`1011. Stallings is cited in the specification of Karol. Ex. 1006, 12:63–64.
`Internet protocol (“IP”) is discussed in Stallings as a tool to provide
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`connectionless service between two networks. Ex. 1011, 534. Stallings
`describes an example in which system A is transmitting a datagram to
`system B and these systems are on different networks. Id. at 535. As part of
`the routing of that datagram, the router may construct a new packet by
`appending a header that includes the address of another router on a different
`network. Id. at 535–37. Routing in Stallings “is generally accomplished by
`maintaining a routing table in each end system and router that gives, for each
`possible destination network, the next router to which the internet datagram
`should be sent.” Id. at 539.
`Routing tables may be static or dynamic. Id. Dynamic tables,
`however, are “more flexible in responding to both error and congestion
`conditions.” Id. “Each router makes routing decisions based on knowledge
`of the topology and on the conditions of the internet.” Id. at 549. In
`complex networks, dynamic cooperation is necessary among the routers to
`avoid portions of the network that have failed or are congested. Id.
`Stallings also teaches that the computation of routes may be based on “user-
`configurable metric[s]” that may be based on factors such as “delay, data,
`data rate, dollar cost, or other factors.” Id. at 557. Such route computation
`may b
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