UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Limelight Networks, Inc.,
`Petitioner
`
`v.
`
`Massachusetts Institute of Technology,
`Patent Owner.
`
`Case IPR2017-00249
`
`Patent 7,693,959
`
`PETITIONER’S REPLY
`
`

`

`Case No. IPR2017-00249
`
`Petitioner’s Reply
`
`I.
`II.
`
`III.
`
`IV.
`
`C.
`
`B.
`
`C.
`
`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`CLAIM CONSTRUCTION ........................................................................... 1
`The preambles of independent claims 1 and 58 are not limiting ......... 1
`A.
`The Board’s prior “service provider” construction remains
`B.
`correct ................................................................................................... 3
`The correctly Board’s determined it is unnecessary to construe
`“content provider” ................................................................................ 4
`The term “CDN content server” requires no construction ................... 5
`D.
`THE RABINOVICH-MEMO IS PRIOR ART .............................................. 5
`The PTAB previously determined that the Rabinovich-Memo
`A.
`was a publicly accessible printed publication before May 19,
`1999 ...................................................................................................... 5
`During prosecution of the ’959 patent, Patent Owner’s counsel
`submitted the Rabinovich-Memo to the patent office and
`admitted that the date of the reference was March 5, 1998 ................. 7
`Even if the Board were to ignore the Rabinovich-Memo,
`consideration of all of the evidence in the Petition would result
`in a finding of obviousness ................................................................... 7
`THE BOARD SHOULD REJECT PATENT OWNER’S
`NONOBVIOUSNESS ARGUMENTS ......................................................... 8
`The prior art discloses “string2” where “string2 … is a name
`A.
`maintained by a service provider” ........................................................ 9
`1.
`Any string can be “string2” if it is a name maintained by
`a CDNSP .................................................................................... 9
`The only relevant dispute about “string2” is whether the
`string is maintained by a CDNSP ............................................ 10
`The prior art renders obvious a CDNSP that provides content
`delivery services on behalf of multiple content providers ................. 15
`1.
`Ebrahim-777 discloses a CDN ................................................. 16
`Ebrahim-777 discloses CDN content servers .......................... 17
`2.
`
`2.
`
`B.
`
`ii
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`

`

`Case No. IPR2017-00249
`
`Petitioner’s Reply
`
`3.
`4.
`
`V.
`
`Ebrahim-777 discloses CDN name servers ............................. 18
`Patent Owner only argues Ebrahim-777 in isolation
`relative to claim 11. .................................................................. 20
`PATENT OWNER’S SECONDARY CONSIDERATIONS LACK
`EVIDENTIARY SUPPORT AND CANNOT OVERCOME THE
`STRONG EVIDENCE OF OBVIOUSNESS .............................................. 21
`Patent Owner’s evidence does not establish a nexus between
`A.
`purported secondary indicia and the claimed “invention” ................. 21
`1.
`Patent Owner cannot establish a nexus between purported
`secondary indicia and the cited “Wired” article (Ex.
`2006) ........................................................................................ 22
`Patent Owner also cannot establish a nexus between
`purported secondary indicia and the Peterson textbook
`(Ex. 2003) ................................................................................. 23
`Patent Owner cannot establish a nexus between purported
`secondary indicia and the cited MIT article (Ex. 2009) .......... 23
`The present case of obviousness cannot be overcome with
`secondary considerations .................................................................... 24
`VI. CONCLUSION ............................................................................................. 24
`CERTIFICATE OF SERVICE ............................................................................... 26
`CERTIFICATE OF COMPLIANCE PURSUANT TO 37 C.F.R. §42 ................. 27
`
`2.
`
`3.
`
`B.
`
`iii
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`

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`Case No. IPR2017-00249
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`Petitioner’s Reply
`
`TABLE OF EXHIBITS
`
`Exhibit
`1001
`
`Description
`U.S. Patent No. 7,693,959 (“’959 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`File history of U.S. Patent No. 7,693,959 (“’959 FH”)
`
`Declaration of Michael J. Freedman, Ph.D., Regarding
`Invalidity Of U.S. Patent No. 7,693,959 (“Freedman”)
`
`U.S. Patent No. 6,154,777 (“Ebrahim-777”)
`
`Rabinovich, Michael et al., Dynamic Replication on the
`Internet, dated March 5, 1998 (“Rabinovich-Memo”)
`
`U.S. Patent No. 6,167,427 (“Rabinovich-427”)
`
`Mockapetris, P., “Domain Names – Concepts and Facilities,”
`Request for Comments: 1034 dated November 1987 (“RFC
`1034”)
`
`Mockapetris, P., “Domain Names – Implementation and
`Specification,” Request for Comments: 1035 dated November
`1987 (“RFC 1035”)
`
`Claim Construction Order, Limelight Networks, Inc. v. XO
`Commc’ns, LLC and Akamai Tech., Inc., Case No. 3:15-cv-
`00720-JAG, Dkt. No. 179 (E.D. Va. Sept. 2, 2016)
`
`Claim Chart for Claims 1, 2, 4, 9-12, 15-16, 26, 28, and 58 of
`the ’959 Patent in light of Ebrahim-777 in view of Rabinovich-
`427 and the Rabinovich-Memo.
`Affidavit of Stephen Ullmer in Support of Motion for Pro Hac Vice
`Admission
`Declaration of Dr. Michael Rabinovich, submitted as Exhibit 1004 on
`August 23, 2015 in IPR2015-01802
`Michael Rabinovich, Issues in Web Content Replication, IEEE
`Computer Society Bulletin of the Technical Committee on Data
`Engineering, December 1998, Vol. 21, Issue 4
`Copy of the Rabinovich-Memo, submitted as Exhibit 1006 in
`
`iv
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`

`

`Case No. IPR2017-00249
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`Petitioner’s Reply
`
`1015
`
`1016
`1017
`
`IPR2015-01802
`Copy of the Rabinovich-Memo, as submitted by Patent Owner during
`prosecution of the ’959 patent
`Transcript of November 17, 2017 Deposition of Dr. Henry Houh
`PTAB Final Decision in IPR2015-01802, Paper 32 (Mar. 6, 2017)
`
`v
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`

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`Case No. IPR2017-00249`
`
`I.
`
`INTRODUCTION
`
`Petitioner’s Reply
`
`The ’959 patent claims old ways of hosting and delivering content on the
`
`Internet. In the Board’s institution decision (“Decision”), the Board instituted trial
`
`on every challenged claim (the “Instituted Claims”). As shown below, Patent
`
`Owner’s response (“POR”) shows that the Decision was correct, and the Instituted
`
`Claims should be found obvious.
`
`II.
`
`CLAIM CONSTRUCTION
`
`Patent Owner rehashes three claim construction arguments from its
`
`Preliminary Patent Owner Response (“POPR”) in its POR, namely that the Board
`
`incorrectly found the preamble to be non-limiting and that the Board incorrectly
`
`construed “service provider” and “content provider.” (POR at 11-22.) However,
`
`the Board’s original Decision was correct. (Decision at 8-11.)
`
`The preambles of independent claims 1 and 58 are not limiting
`
`A.
`As the Board correctly notes in it Decision, the preamble is not limiting as it
`
`is “simply an introduction to the general field of the claims.” (Decision at 10.)
`
`Patent Owner raises three counter arguments. (POR at 11-14.)
`
`First, the POR suggests that the limitation “a content delivery network
`
`(CDN) for multiple content providers” was substantively relied upon by the
`
`Examiner to distinguish over the prior art as per the Notice of Allowance. (POR
`
`at 11.) This is false. The Examiner’s first paragraph of the allowance simply
`
`1
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`Case No. IPR2017-00249
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`Petitioner’s Reply
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`regurgitates the entire body of then-pending claims 1, 39 and 63 without analysis.
`
`(Ex. 1002 at 370.) In fact, in the next paragraph, the Examiner excluded the
`
`“multiple content providers” language of the preamble in describing why the
`
`claims distinguish over the cited prior art. (Id. at 370-71.) Thus, Patent Owner’s
`
`assertion that the Examiner substantively relied upon the limitation is false.
`
`Second, the POR suggests that the preambles are limiting because the
`
`specification of the ’959 patent “repeatedly distinguishes” its disclosures from
`
`prior art systems on the basis of serving “multiple content providers.” (POR at
`
`12.) However, Patent Owner’s argument is irrelevant as the body of the claim does
`
`not include the “multiple content provider” language. Catalina Mktg. Int’l v.
`
`Coolsavings.com, Inc., 289 F.3d 801, 808-809 (Fed. Cir. 2002) (“a preamble
`
`generally is not limiting when the claim body describes a structurally complete
`
`invention such that deletion of the preamble phrase does not affect the structure or
`
`steps of the claimed invention.”) Indeed, the POR itself references statements that
`
`show that “mirroring” worked for multiple websites. (POR at 13 (citing Ex. 1001
`
`at 2:1-3 (suggesting that mirroring does not scale “beyond a few” websites)).)
`
`Mirroring “a few” websites is more than a single website; thus, the ‘959 patent
`
`itself shows that the phrase “multiple content providers” does not distinguish over
`
`the prior art.
`
`2
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`

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`Case No. IPR2017-00249
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`Petitioner’s Reply
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`Third, for claim 58, the POR argues that the entire preamble is limiting
`
`because a portion of it allegedly provides antecedent basis for “the CDN services
`
`provider” recited in the body of the claim. However, it is erroneous to construe the
`
`entire preamble as a limitation merely because a portion may provide antecedent
`
`basis for a term in the body of the claim. TomTom, Inc. v. Adolph, 790 F.3d 1315,
`
`1322 (Fed. Cir. 2015). In TomTom, as here, it was improper to construe an
`
`intended use in the preamble as a limitation. Id. at 1323. Likewise, it was
`
`improper to construe as limiting portions of the preamble that can be deleted
`
`without affecting the structurally complete claim. Id. at 1324. Removing the
`
`language “for multiple content providers” from the preamble of claim 58 does not
`
`affect the scope of the claim, so it is not limiting. Id.
`
`B.
`
`The Board’s prior “service provider” construction remains
`correct
`
`In its POPR, Patent Owner argued that “service provider” meant “a party,
`
`distinct from the content provider, that operates the recited content delivery
`
`network, including its content servers and name servers, to deliver content on
`
`behalf of multiple content providers.” (POPR at 10-11.) The Board rejected
`
`Patent Owner’s proposed construction. (Decision at 11.) Patent Owner now
`
`requests a “new” construction: “a party that provides a content delivery service to
`
`content providers using a content delivery network (CDN).” (POR at 14.)
`
`3
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`Case No. IPR2017-00249
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`Petitioner’s Reply
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`However, Patent Owner’s second proposed construction of “service provider”
`
`rehashes rejected arguments, namely, that a “service provider” must be an entity
`
`that “provides a distinct service from content providers, and operates the CDN to
`
`provide the service of delivering content on behalf of multiple content providers.”
`
`(POR at 20-21.) The Board should continue to reject Patent Owner’s proposed
`
`construction, and for the reasons cited in the Decision. (Decision at 10-11.)
`
`Indeed, Patent Owner’s arguments contravene the intrinsic evidence. The
`
`specification only uses “service provider” in the non-limiting context of an
`
`“Internet Service Provider.” (Petition at 16-17; Ex. 1001 at 1:20-25; 5:64-65;
`
`7:37-47.) This confirms that the Board should maintain its original construction.
`
`C.
`
`The Board correctly determined it is unnecessary to construe
`“content provider”
`
`The Board previously rejected Patent Owner’s construction of “content
`
`provider,” and noted that the term did not merit “patentable weight.” (Decision at
`
`10.) Patent Owner now argues that the term means “a party that is a provider (i.e.,
`
`source) of content.” (POR at 21.) However, as the Board noted, it is unnecessary
`
`to construe this term as it is not part of the claim. (Decision at 9-10.) Even if the
`
`term limited the claims, it is a basic term that not requiring any construction.
`
`Patent Owner’s proposed construction merely confuses its meaning.
`
`4
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`Case No. IPR2017-00249
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`Petitioner’s Reply
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`The term “CDN content server” requires no construction
`
`D.
`Patent Owner also argues that the broadest reasonable interpretation of
`
`“CDN content server” is “a content server within a CDN.” (POR at 22.) This term
`
`was not construed in the Decision. Patent Owner’s proposed construction amounts
`
`to a reordering of the words “CDN content server,” which does not serve any
`
`purpose. Thus, it is not necessary to construe this term.
`
`III. THE RABINOVICH-MEMO IS PRIOR ART
`Patent Owner argues that the Rabinovich-Memo was not publicly accessible
`
`prior to Patent Owner’s alleged priority date of the ’959 patent of May 19, 1999.
`
`(POR at 31-34.) This argument attacks the sufficiency of Petitioner’s evidence in
`
`establishing obviousness, to which Petitioner is permitted to respond in its Reply.
`
`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
`
`2012); FLIR Sys., Inc. v. Leak Surveys, Inc., Case IPR2015-00065, Paper 71 at 9
`
`(PTAB Sept. 3, 2015).
`
`A.
`
`The PTAB previously determined that the Rabinovich-Memo was
`a publicly accessible printed publication no later than December
`1998
`
`The core of Patent Owner’s argument is that the Rabinovich-Memo was not
`
`publicly accessible prior to May 19, 1999. Whether a reference qualifies as prior
`
`art as a printed publication under 35 U.S.C. §102 is a matter of law. Orion IP,
`
`LLC v. Hyundai Motor Am., 605 F.3d 967, 974 (Fed. Cir. 2010).
`
`5
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`Case No. IPR2017-00249
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`Petitioner’s Reply
`
`Public records show that the Rabinovich-Memo was published by AT&T in
`
`March 1998 and was publicly accessible on Dr. Rabinovich’s public website by at
`
`least December 1998. Indeed, the PTAB already found the Rabinovich-Memo to
`
`be authentic and publicly available no later than December 1998 as supported by
`
`corroborated evidence. Amazon.com, Inc. v. AC Techs. S.A., IPR2015-01802,
`
`Paper 32 at 9-13 (PTAB Mar. 6, 2017). (Ex. 1017 at 9-12.) Public accessibility by
`
`December 1998 establishes that the Rabinovich-Memo is also prior art to the ’959
`
`patent in this case. Id. (POR at 31 (identifying “the ’959 priority date of May 19,
`
`1999”).) Further, the Board’s prior decision applies equally here as it was based
`
`on sworn testimony from Dr. Rabinovich and other corroborating evidence. (Id.
`
`citing Exs. 1012 (Ex. 1004 in IPR2015-01802, August 23, 2015 Declaration of Dr.
`
`Michael Rabinovich); Ex. 1013 at 29 n.16 (citation to Rabinovich-Memo in Ex.
`
`1012 in IPR2015-01802); Ex. 1014 (Ex. 1006 in IPR2015-01802 [the Rabinovich-
`
`Memo]).) Patent Owner has produced no evidence to show that the PTAB’s prior
`
`decision holding the Rabinovich-Memo to be publicly accessible by at least
`
`December 1998 was incorrect. On the contrary, all of the available evidence and
`
`public records indicate the opposite is true.
`
`If appropriate, the Board should also take Judicial / Official Notice under
`
`§42.62(c) of the PTAB’s prior decision that the Rabinovich-Memo was publicly
`
`accessible by at least December 1998. As a simple comparison shows, the
`6
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`

`

`Case No. IPR2017-00249
`
`Petitioner’s Reply
`
`Rabinovich-Memo (Ex. 1005 in this case) is the same reference as Ex. 1014 (Ex.
`
`1006 in IPR2015-01802). Both documents also bear distinctive AT&T logos and
`
`present no indicia that they are anything other than what they purport to be: a
`
`memo co-authored by Dr. Michael Rabinovich and published by AT&T in March
`
`1998.
`
`B.
`
`During prosecution of the ’959 patent, Patent Owner’s counsel
`submitted the Rabinovich-Memo to the patent office and listed a
`publication date of March 5, 1998
`
`During prosecution of the ’959 patent, Patent Owner’s prosecution counsel
`
`submitted the Rabinovich-Memo to the PTO in an IDS, and identified the date of
`
`the memo as March 5, 1998. (Ex. 1002-FH at 224, the first cited reference.) Ex.
`
`1015 is the Rabinovich-Memo as submitted by Patent Owner, which is identical to
`
`the memo submitted in IPR2015-01802 and in this proceeding as Ex. 1005 (with
`
`the exception of a page that appears to have been inadvertently omitted from Ex.
`
`1015). In short, Patent Owner’s own actions during prosecution show that the
`
`Rabinovich-Memo is authentic and was publicly accessible prior to the ‘959
`
`patent.
`
`C.
`
`Even if the Board were to ignore the Rabinovich-Memo,
`consideration of all of the evidence in the Petition would result in
`a finding of obviousness
`
`Implicit in Patent Owner’s attack on the publication/public accessibility date
`
`of the Rabinovich-Memo is that the Instituted Claims are not obvious if the Board
`
`7
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`Case No. IPR2017-00249
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`Petitioner’s Reply
`
`does not consider the disclosures of the Rabinovich-Memo. This is not true. The
`
`preambles are not limiting, so exclusion of the Rabinovich memo has no effect.
`
`Further, even if the preambles are limiting, Petitioner argued both Ebrahim-777
`
`alone and Ebrahim-777 in view of the Rabinovich-Memo show that it was
`
`conventional for a network service (a CDN or otherwise) to provide delivery of
`
`resources for multiple parties. (Petition at 30-32.) Moreover, mere design choices,
`
`such as whether to provide content on behalf of one customer or multiple
`
`customers is prima facie obvious. See, e.g., In re Kaslow, 707 F.2d 1366, 1368,
`
`1374–75 (Fed. Cir. 1983) (rejecting the argument that prior art involving a single
`
`entity was distinguishable from claims involving multiple entities). Accordingly,
`
`the use of the term “multiple content providers” in the preamble does not confer
`
`patentability.
`
`SHOULD REJECT
`BOARD
`IV. THE
`NONOBVIOUSNESS ARGUMENTS
`
`PATENT OWNER’S
`
`The POR raises numerous arguments in §§VII.B-C, which arguments
`
`generally relate to: (1) whether the prior art discloses a “string2” that is
`
`“maintained by a CDN service provider;” and (2) whether the prior art discloses a
`
`CDNSP that provides content on behalf of multiple content providers. Both
`
`arguments fail.
`
`8
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`

`

`Case No. IPR2017-00249
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`Petitioner’s Reply
`
`A.
`
`The prior art discloses “string2” where “string2 … is a name
`maintained by a service provider”
`
`Limitation 1c-ii requires:
`
`“string2 is separated from string3 by a period and is a name
`maintained by a service provider that operates the CDN content
`servers and the CDN name servers”
`
`The only relevant dispute about this limitation is whether Petitioner’s prior art
`
`combination renders obvious a “string2” that “is a name maintained by a service
`
`provider that operates the CDN content servers and the CDN name servers.” (See,
`
`e.g., POR at §§VII.B.1, 1.a, 1.b, 2, 2a-2e; VII.C.1, 3.) Patent Owner’s arguments
`
`on this point are unfounded.
`
`1.
`
`Any string can be “string2” if it is a name maintained by a
`CDNSP
`
`There is nothing unique or inventive about “string2.” It is a conventional
`
`portion of a domain name, such as the “sun” portion of “www.sun.com”. (E.g.,
`
`Petition at 41-46 (limitations 1c & 1c-ii).) Any name, comprising virtually any
`
`combination of letters, qualifies as string2. The only disputed issue with respect to
`
`string2 is whether it is “maintained by a CDN service provider” – which has
`
`nothing to do with the contents of the string itself. (See Ex. 1001 at claim 1,
`
`limitation 1c-ii.)
`
`The arguments in the POR directed to “string2” repeatedly suggest that
`
`names like “sun,” “abcd,” and others cannot be “string2,” but that is not correct. If
`9
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`Case No. IPR2017-00249
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`Petitioner’s Reply
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`those names, or any other valid domain name string (i.e., one that is not prohibited
`
`by the DNS system) in the “middle” position of a domain name (e.g., the “sun” in
`
`www.sun.com) are in fact “maintained” by a CDNSP, then that string embodies the
`
`claimed string2. Patent Owner’s expert agreed that a valid “string2” would include
`
`content provider names like “cnn” or “nytimes”. (Ex. 1016-Houh at 30:12-20.)
`
`Thus, the Board should reject arguments in the POR that suggest that the claimed
`
`“string2” requires unique content; the claims plainly do not require any unique
`
`content.
`
`2.
`
`The only relevant dispute about “string2” is whether the
`string is maintained by a CDNSP
`The Petition shows, inter alia, that it was obvious for a CDNSP to deploy a
`
`global CDN infrastructure, and in so doing, for the CDNSP to use an organized
`
`naming scheme. (See, e.g., Petition at 25-27; Decision at 25-27 (referencing
`
`“practicality, cost, efficiency, and predictability”).) Using this naming scheme was
`
`an obvious way for a CDNSP to organize content on behalf of its multiple
`
`customers. (See, e.g., Petition at 45; see also id. at 25-27; Ex. 1003-Freedman at
`
`¶¶83-85.) Patent Owner’s rebuttal to the Petition on this point is based on isolating
`
`the prior art into individual components and misleading citations to the record.
`
`(See, e.g., POR at §§VII.B.1, 1.a, 1.b, 2, 2a-2e; VII.C.1, 3.) These arguments are
`
`off-point.
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`10
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`Case No. IPR2017-00249
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`Petitioner’s Reply
`
`a. Patent Owner erroneously argues that Ebrahim-777 and
`Rabinovich-427 do not disclose CDNs
`
`Patent Owner argues that Ebrahim-777 and Rabinovich-427 do not disclose
`
`CDNs (and thus, no CDNSP that maintains a “string2”) because “sun” and “abcd”
`
`are content provider names, not service provider names. (E.g., POR at 36-38.)
`
`This obfuscates an important point: Ebrahim-777 and Rabinovich-427 both
`
`disclose networks comprising content servers and name servers through which
`
`content may be delivered on a global scale and on behalf of multiple parties. (E.g.,
`
`Petition at 19-22 (Ebrahim-777); 22-24 (Rabinovich-427).) These are plainly
`
`“CDNs,” i.e., content delivery networks.
`
`Patent Owner’s arguments about “sun” and “abcd” also attack prior art
`
`references individually without addressing Petitioner’s obviousness argument.
`
`Patent Owner argues that specific names like “abcd” and “sun” are not service
`
`provider names in their respective, isolated prior art references. (POR at 36-38.)
`
`This argument is inapposite. In particular, it ignores Petitioner’s argument that it
`
`was obvious for an entity (whether that entity maintains the name “sun,” “abcd,” or
`
`any other valid domain name) to provide a CDN to customers. (Petition at 25-27;
`
`see generally §VII.A (Ground 1).) In this context, a POSITA would know that the
`
`names “sun,” “abcd,” etc. are the CDNSP’s names, not a content provider’s name.
`
`(Id.)
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`11
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`Case No. IPR2017-00249
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`Petitioner’s Reply
`
`Moreover, Patent Owner’s argument that “sun” and “abcd” are content
`
`provider names, even if true, is incomplete. Patent Owner’s expert admits that the
`
`same entity name, e.g. “Akamai,” can represent a content provider who provides a
`
`website and a service provider who provides a CDN service. (See, e.g., Ex. 1016-
`
`Houh at 65:7-66:19 & 68:5-11 (admitting that the website www.akamai.com exists
`
`and Akamai is the content provider); 131:9-132:18 (contending that the name
`
`“Akamai” would relate to a content provider in the context of Rabinovich-427,
`
`while also admitting that the same name is maintained by a service provider).)
`
`Thus, merely being a content provider does not preclude an entity from being a
`
`CDNSP.
`
`b. Patent Owner’s contention that “sun,” “abcd,” or other names
`are not in the location of “string2” in a DNS query is false
`
`As a second example, Patent Owner raises an argument that the Petition
`
`“do[es] not disclose a DNS query that includes the claimed ‘string2’ [in] the
`
`claimed location of string2 in the DNS query.” (POR at 36.) However, every
`
`alleged “string2” in the Petition is in the “string2” location, e.g., “abcd.sun.com”
`
`(Petition at 46). The emphasized portion of “sun” is in the “string2” location, so
`
`the Petition identifies the claimed string2.
`
`12
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`Case No. IPR2017-00249
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`Petitioner’s Reply
`
`c. Patent Owner wrongly alleges that Petitioner’s arguments rely
`on hindsight
`
`As a third example, Patent Owner argues that “Petitioner improperly relies
`
`on hindsight analysis,” because the Petition uses words like “could.” (POR at
`
`§VII.B.2.a.) In particular, Patent Owner cites to authority rejecting arguments that
`
`multiple references “could” be combined. (POR at 41-42.) Patent Owner’s
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`argument places form over substance. Further, Petitioner did not argue that the
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`prior art could be combined, but rather, explained in detail why a POSITA would
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`have combined it in a particular way. (Petition at 25-27.) In other portions of the
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`Petition, Petitioner used the term “could” in the context of how “a POSITA would
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`know” how to implement naming schemes that are consistent with the naming
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`scheme of Rabinovich-427. (Petition at 44.) Specifically, the naming scheme
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`“could” take a variety of forms consistent with the teachings of Rabinovich-427;
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`Petitioner explained what those forms were and provided explanations in the
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`Petition, supported by expert testimony, and showed that using any of those
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`naming schemes in view of Rabinovich-427 and Ebrahim-777 “would have been
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`predictable and obvious to a POSITA.” (Petition at 44-45; see, e.g., 19-27.)
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`Further, the Board already found that Petitioner’s obviousness arguments,
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`including the reasons to combine the references, were well-supported by record
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`evidence. (Decision at 25-27.)
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`Case No. IPR2017-00249
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`Petitioner’s Reply
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`d. Patent Owner advances a “principle of operation” argument
`that mischaracterizes the evidence
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`As a fourth example, Patent Owner argues that Ebrahim-777 relies on DNS
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`resolution techniques, while the Rabinovich references rely on HTTP redirection.
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`(Petition at 44-45.) This is another red herring. Patent Owner’s suggestion that
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`these are different “principles of operation” is not credible. First, Patent Owner
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`makes no effort to establish that DNS resolution and HTTP redirection are
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`“principles of operation” for the prior art in this case.
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`Second, HTTP redirection is not a “principle of operation” of the
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`Rabinovich references. Indeed, Patent Owner cites selectively to Dr. Freedman’s
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`testimony relative to an isolated embodiment. As Dr. Freedman made clear during
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`his testimony, in an HTTP redirection embodiment, “the name server is not a DNS
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`server,” while in another embodiment, “it is[ a DNS server].” (Ex. 2005-Freedman
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`at 195:21-196:9; see also 196:10-201:11.) Thus, Rabinovich-427 discloses a
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`specific HTTP redirection embodiment that differs from other DNS-based
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`embodiments.
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`Third, even if these were principles of operation, Patent Owner’s argument
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`is illogical because HTTP redirection results in the use of DNS resolution. As the
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`POR states, when a client makes a request (e.g., for a website like www.abc.com)
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`associated with an HTTP redirect, the client receives “a physical URL via a
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`Case No. IPR2017-00249
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`Petitioner’s Reply
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`redirect message” (e.g., in the case of www.abc.com, there is an HTTP redirect to
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`abc.go.com). (POR at 45.) That URL received by the client still needs to be
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`resolved, which requires using DNS. (Ex. 1016-Houh at 111:14-25.)
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`e. Patent Owner conflates the naming scheme of Rabinovich-427
`with references to delegation
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`Finally, Patent Owner argues that delegating a domain name to a service
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`provider does not mean that “string2” is “maintained by a service provider.” (POR
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`at §VII.B.2.e.) This is false. The Petition refers to conventional delegation and
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`CNAME techniques that would be used, and these are not related to whether a
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`DNS query string (e.g., abcd.sun.com or sun.abcd.com) satisfies the claim
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`limitation. Instead, these techniques relate to ways in which a content provider
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`may cede control of its content/domain to a CDNSP, so that a CDNSP may control
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`responses to content requests, while keeping that infrastructure organized using
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`conventional URL naming techniques. (See, e.g., Petition at 10-14; 22-27.)
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`B.
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`The prior art renders obvious a CDNSP that provides content
`delivery services on behalf of multiple content providers
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`Patent Owner argues that the prior art does not disclose a CDNSP that
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`operates for multiple content providers. (See, e.g., POR at §VII.B.1.b; §VII.C.1-3.)
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`These arguments fail for several reasons already discussed above in this Reply.
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`(See, e.g., §§II (explaining that the term is not limiting, as already determined by
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`the Board); III (explaining that the Rabinovich-Memo is authentic, publically
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`Case No. IPR2017-00249
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`Petitioner’s Reply
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`accessible prior art, and that the Instituted Claims are obvious irrespective of the
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`Rabinovich-Memo).) In any event, Patent Owner is wrong for the additional
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`reasons set forth below.
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`1.
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`Ebrahim-777 discloses a CDN
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`Patent Owner argues that Ebrahim-777 does not disclose a CDNSP because
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`it relates to a content provider infrastructure. (POR at 51-53.) Patent Owner
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`concedes that Ebrahim-777 refers to Sun as a “service provider,” but argues that
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`Sun is not a claimed “service provider” because the distribution infrastructure in
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`Ebrahim-777 may, e.g., be used to distribute Sun’s own content by resolving the
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`“same” name to multiple destinations. (Id. at 52.)
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`Patent Owner’s argument fails because using the “same” URL to direct
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`requests for that URL to one of multiple servers is the same concept claimed and
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`referenced in the ’959 patent. In particular, the domain “www.provider.com” in
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`the ’959 patent can be resolved to multiple CDN content servers, just like the
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`domain “www.sun.com” is in Ebrahim-777. (E.g., Ex. 1001 at 7:48-57 & 9:19-
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`29.) Further, Ebrahim-777 discloses a CDNSP entity because it expressly provides
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`a content delivery service using a globally distributed infrastructure. (See, e.g.,
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`Petition at 28-30; Ex. 1004-Ebrahim at FIGS. 4-6; 3:13-17, 3:37-47, 5:1-9, 6:30-
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`44, & 7:62-67.)
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`Case No. IPR2017-00249
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`Petitioner’s Reply
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`Patent Owner’s citations to the contrary mischaracterize Ebrahim-777. For
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`example, 2:33-38 of Ebrahim-777 (POR at 53) states that the same “name” (e.g.,
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`“sun.com”) may be used to address multiple servers. But this does not mean that
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`other names cannot also be used to address the same servers. The whole point of
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`Ebrahim-777’s disclosure in this regard is that multiple name binding eliminates
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`scalability problems, contrary to Patent Owner’s assertion that Ebrahim-777 was
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`directed to old “mirroring” technology that suffered from such problems. (POR at
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`52; Ex. 1004-Ebrahim at 2:25-54.) This fact is reflected in the Board’s prior claim
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`construction decision. (Decision at 8-11.)
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`2.
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`Ebrahim-777 discloses CDN content servers
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`Patent Owner argues that the “destination” servers of Ebrahim-777 are not
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`CDN content servers. (POR at 54-55.) First, Patent Owner argues that Ebrahim-
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`777 does not disclose CDN content servers because it teaches that the “destination”
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`servers are associated with the same name and are used to deliver content on behalf
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`of a single entity. These statements are Patent Owner’s attorney argument and
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`mischaracterize the reference. Ebrahim-777 does not provide that its destination
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`servers are only associated with a single name (logically, the ability to associate
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`one name with multiple servers says nothing about a server being limited to
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`handling requests for only one name), nor that only a single entity’s content may
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`Case No. IPR2017-00249
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`Petitioner’s Reply
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`be handled by the network. (Compare POR at 54 with Ex. 1004-Ebrahim at 2:34-
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`37 & 5:1-6.)
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`Second, Patent Owner argues that Ebrahim-777 is based on old mirroring
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`techniques, such that the “destinations” must be different from the CDN content
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`servers claimed in the ’959 patent. (POR at 55.) Again, Patent Owner
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`mischaracterizes Ebrahim-777. For example, Patent Owner refers to Ebrahim-777
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`at 7:3-12 in an effort to suggest that Ebrahim-777 was directed to old “mirror site”
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`technologies. (POR at 55.) This excerpt refers to modifications that Ebrahim-777
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`enables, including the ability to “establish[] a mirror site at a location
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`geographically near a large source of requests, etc.” (Ex. 1004-Ebrahim at 7:10-
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`12.) This reference to a “mirror” is the only reference to a mirror in the entire
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`Ebrahim-777 reference, and it is merely an example of one way in which Ebrah