UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`VIPTELA, INC.
`Petitioner
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`v.
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`FATPIPE NETWORKS INDIA LIMITED,
`Patent Owner
`
`___________________
`
`Inter Partes Review Case No. 2017-00684
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`___________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`___________________
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`84794665_1
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
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`VIPTELA, INC.
`Petitioner
`
`v.
`
`FATPIPE NETWORKS INDIA LIMITED,
`Patent Owner
`
`___________________
`
`Inter Partes Review Case No. 2017-00684
`
`___________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`___________________
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`84794665_1
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`Petitioner’s Reply
`IPR2017-00684
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`TABLE OF CONTENTS
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`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`PATENT OWNER’S CLAIM CONSTRUCTION SHOULD BE
`REJECTED ..................................................................................................... 2
`A.
`Patent Owner Already Conceded that Claims 6 and 22 Should
`Be Construed Broadly .......................................................................... 3
`Patent Owner’s Proposed “Construction” is Limited to a Single
`Embodiment in the Specification ......................................................... 4
`III. CLAIMS 6 AND 22-24 ARE ANTICIPATED OR RENDERED
`OBVIOUS ..................................................................................................... 10
`A.
`Claim 6 is anticipated by Karol (Ex. 1006)........................................ 10
`B.
`Claim 6 is obvious over Karol (Ex. 1006) in view of Stallings
`(Ex. 1011) ........................................................................................... 15
`Claims 22-24 are anticipated by Karol, and obvious over Karol
`in view of Stallings ............................................................................. 19
`IV. CONCLUSION ............................................................................................. 24
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`
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`B.
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`C.
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`TABLE OF AUTHORITIES
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`Cases
`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) ................... 6
`In re Freeman, 30 F.3d 1459 (Fed. Cir. 1994) ........................................................ 22
`In re Morris, 127 F.3d 1048 (Fed. Cir. 1997) ............................................................ 3
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ......................................... 17, 18
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) ..................... 6
`Oatey Co. v. IPS Corp., 514 F.3d 1271 (Fed. Cir. 2008) .......................................... 9
`Pharmacia & Upjohn Co. v. Mylan Pharm., Inc., 170 F.3d 1373 (Fed. Cir. 1999) 23
`Phillips v. AWH Corp., 415 F.3d 1320 (Fed. Cir. 2005) (en banc). .......................... 2
`
`Other Authorities
`MPEP § 2143 ................................................................................................... passim
`Regulations
`37 C.F.R. § 42.100(b) ................................................................................................ 3
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`PETITIONER’S EXHIBITS
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`1001
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`1002
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`1003
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`1004
`1005
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`1006
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`1007
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`1008
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`Exhibit No. Description
`U.S. Patent No. 6,775,235 by Sanchaita Datta and Ragula Bhaskar
`entitled “Tools and Techniques for Directing Packets Over
`Disparate Networks” (“the ’235 Patent”)
`File History for U.S. Patent No. 6,775,235
`U.S. Patent No. 7,406,048 by Sanchaita Datta and Ragula Bhaskar
`entitled “Tools and Techniques for Directing Packets Over
`Disparate Networks” (“the ’048 Patent”)
`File History for U.S. Patent No. 7,406,048
`Declaration of Dr. Leonard J. Forys
`U.S. Patent No. 6,628,617 by Mark John Karol and Malathi
`Veeraraghavan entitled “Technique for Internetworking Traffic on
`Connectionless and Connection-Oriented Networks” (“Karol”)
`W.R. Stevens, “TCP/IP Illustrated Volume 1, the Protocols,”
`Addison-Wesley Professional Computing Series, 1994, ISBN-0-
`201-63346-9 (“Stevens”).
`Complaint, D.I. 1 in 1:16- cv-00182-LPS in the District of
`Delaware
`U.S. Patent No. 6,748,439 by David R. Monachello et al. entitled
`“System and Method for Selecting Internet Service Providers from
`a Workstation that is Connected to a Local Area Network”
`(“Monachello”)
`Petition for Inter Partes Review, IPR2016-00976, Paper No. 1
`(April 29, 2016)
`William Stallings, “Data and Computer Communications,”
`Prentice-Hall, 5th Edition, 1997, ISBN-81-203-1240-6,
`(“Stallings”)
`Office Action dated 4/13/2012 for U.S. Application No.
`10/034,197
`Office Action dated 2/2/2012 for U.S. Application No. 10/034,197
`FatPipe’s Proposed Modifications to Claim Construction
`U.S. Patent No. 6,317,431 by Terence G. Hodgkinson and Alan
`W. O’Neill entitled “ATM Partial Cut-Through” (“Hodgkinson”)
`Adaptive Private Networking Configuration Editor User’s Guide,
`APNware Release 2.5 (FATPIPE-001374-1448)
`Decision, IPR2016-00976, Paper No. 7 (November 2, 2016)
`FatPipe’s Infringement Contentions
`
`1009
`
`1010
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`1011
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`1012
`1013
`1014
`1015
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`1016
`1017
`1018
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`1019
`1020
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`Deposition Transcript of Joel Williams (December 19, 2017)
`Final Written Decision, IPR2016-00976, Paper No. 32 (November
`1, 2017)
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`I.
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`INTRODUCTION
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`Patent Owner’s Response (“Response”) fits a pattern that Patent Owner has
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`consistently adhered to throughout the many proceedings involving U.S. Patent No.
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`6,775,235 (“the ’235 patent”). Specifically, with regards to claim construction,
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`Patent Owner seeks to have its cake and eat it too. Patent Owner at first takes the
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`position that the limitations of claims 6 and 22 of the ’235 patent should be construed
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`broadly (based on their plain and ordinary meaning). Unfortunately, Patent Owner
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`cannot maintain this reasonable position for more than a few pages of its Response
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`before completely reversing itself by shoehorning limitations from one embodiment
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`in one figure of the ’235 patent (Figure 10) into claims 6 and 22, while completely
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`ignoring a separate embodiment shown in the very next figure (Figure 11) of the
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`same patent. When presented with this dilemma at his deposition, Patent Owner’s
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`expert, Joel Williams, struggled for an explanation before essentially admitting that
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`Patent Owner’s construction excluded this separate embodiment of the ’235 patent,
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`offering the legally untenable and factually inaccurate justification that Patent
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`Owner’s narrow construction was proper because it was consistent with “the
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`majority” of the specification. (Ex. 1019 at 74:12-15.) Just as the Board did in
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`IPR2016-00976, it should reject Patent Owner’s disingenuous claim construction
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`posturing in this proceeding. Under the broadest reasonable interpretation of the
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`claims, Karol unquestionably anticipates claims 6 and 22-24 of the ’235 patent.
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`Similarly, these claims are obvious over Karol, and obvious over Karol in view of
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`Stallings. Accordingly, for all the reasons below as well as those previously stated,
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`the challenged claims of the ’235 patent are invalid.
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`II.
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`PATENT OWNER’S CLAIM CONSTRUCTION SHOULD BE
`REJECTED
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`In both its Preliminary Response and its Response following institution,
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`Patent Owner offered no specific constructions for any claims in the ’235 patent.
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`Indeed, in its Institution Decision, the Board determined that no constructions were
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`necessary. (Paper No. 8, at 6-7.) In its Response, Patent Owner first appears to agree
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`with the Board and argues for “the ordinary meaning of all terms, subject to
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`constraints imposed by the specification to inform a POSA ‘as to precisely which
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`ordinary definition the patentee was using.’” (Response at 7-8 (internal citations
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`omitted).) However, only pages later, Patent Owner completely reverses course and
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`attempts to slip in an extremely narrow construction of claim 6’s “modifying the
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`packet destination address” limitation. This construction improperly imports
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`limitations into the claims and excludes embodiments described in the specification,
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`and should therefore be rejected. Phillips v. AWH Corp., 415 F.3d 1320 (Fed. Cir.
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`2005) (en banc).
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`A.
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`Patent Owner Already Conceded that Claims 6 and 22 Should Be
`Construed Broadly
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`In its brief, Patent Owner did not offer any specific constructions for any
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`claims in the ’235 Patent, including claim 6. (Response at 7-8.) Instead, Patent
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`Owner conceded that the claims of the ’235 patent, including the term “modifying a
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`packet destination address” from claims 6 and 22, should be construed according to
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`their plain and ordinary meaning. (Id.) This is consistent with the claim construction
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`standard used in an inter partes review, that “[a] claim in an unexpired patent shall
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`be given its broadest reasonable construction in light of the specification of the patent
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`in which it appears.” 37 C.F.R. § 42.100(b).1 Under this standard, the Board
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`construes claim terms using “the broadest reasonable meaning of the words in their
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`ordinary usage as they would be understood by one of ordinary skill in the art, taking
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`into account whatever enlightenment by way of definitions or otherwise that may be
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`afforded by the written description contained in the applicant’s specification.” In re
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`Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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`1 At his deposition, Patent Owner’s expert, Joel Williams, stated that he believed
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`that the construction of claims 6 and 22 was the same under either the broadest
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`reasonable interpretation or the ordinary meaning. (Ex. 1019 at 44:8-12.)
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`Despite this concession, only a few pages later, Patent Owner reverses course
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`and proffers a construction of the claim term “modifying” that is limited to a single
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`embodiment in the specification. Specifically, Patent Owner argues that a “POSA
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`would not construe ‘modifying’ an item to be the same as discarding or deleting an
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`item according to either the plain and ordinary meaning of ‘modify,’ or in view of
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`the specification.” (Response at 26.)2 At his deposition, Mr. Williams doubled down
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`on Patent Owner’s position, stating that “modify is to change . . . some of the bits”
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`or to “alter partially.” (Ex. 1019 at 47:11-13, 50:14-19.) According to Patent Owner
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`and Mr. Williams, replacing an entire address is “not a modification.” (Id. at 57:5-
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`12; 58:3-19.) Yet Patent Owner offers no explanation as to how this narrow
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`construction is the “broadest reasonable interpretation” of the “modifying” terms in
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`claims 6 and 22, especially in view of the broader uses of the terms in the
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`specification.
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`B.
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`Patent Owner’s Proposed “Construction” is Limited to a Single
`Embodiment in the Specification
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`To support its “construction,” Patent Owner points to an “illustrative network”
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`in the specification of the ’235 patent. (Ex. 1001 at 9:18-19.) Specifically, the ’235
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`patent describes an embodiment in Figure 10 where “if the inventive module 602 at
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`location A receives a packet with a destination address in the 10.0.x.x range and the
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`2 Unless otherwise indicated, all emphasis is added.
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`Internet router X is either down or overloaded, then the inventive module 602 can
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`change the destination address so that it is in the 198.x.x.x range (the rest of the
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`address may be kept) and then send the modified packet to the frame relay router
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`Y.” (Id. at 9:18-25.) Patent Owner then argues that the phrase “the rest of the address
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`may be kept” indicates that claims 6 and 22 “require that a modification is made to
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`the actual original destination IP address values to put it into a different IP address
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`range without discarding or deleting the destination IP address.” (Response at 27.)
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`Mr. Williams further elaborated on Patent Owner’s position that if a destination IP
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`address is completely replaced, “[i]t would not be a modification.” (Ex. 1019 at
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`58:16-19.)3 The problems with Patent Owner’s proposed construction are manifold.
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`First, Patent Owner already took the position that the terms of claim 6 should
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`be construed based on their plain and ordinary meaning. (Response at 19.) Patent
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`Owner cannot now argue that the plain and ordinary meaning is limited to a single
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`embodiment disclosed in the specification (to the exclusion of other embodiments).
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`3 Mr. Williams also testified that these ten lines from the ’235 patent (associated
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`with Figure 10) were the “only example [the ’235 patent] gives, that I can recall”
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`relating to address modification. (Ex. 1019 at 52:19-25.) As described below, Mr.
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`Williams was either unaware of, or deliberately ignored, the embodiment
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`associated with the very next figure from the ’235 patent (Figure 11).
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`Indeed, a fundamental principle of claim construction is that the Board should not
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`“read limitations from the embodiments in the specification into the claims.” Hill-
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`Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (citing
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`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004)). The
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`Board has already rejected Patent Owner’s attempts to limit other terms of the ’235
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`patent in this way. (Ex. 1020 at 12 (rejecting Patent Owner’s construction on the
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`grounds that “[i]t is improper to limit the claims to this one exemplary embodiment
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`without more express language in the claims or the specification that would narrow
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`the scope of the claim.”).)
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`There are only two exceptions to this rule of claim construction, neither of
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`which are met here: (1) where a patentee has expressly set forth a definition of a
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`disputed claim term other than its plain and ordinary meaning (i.e., where the
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`patentee acted as its own lexicographer); or (2) where the intrinsic evidence clearly
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`demonstrates that the invention does not include a particular feature (disavowal).
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`Stryker, 755 F.3d at 1371-72. The Federal Circuit has made clear that “[t]he
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`standards for finding lexicography and disavowal are exacting.” Id. at 1371. Here,
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`Patent Owner has failed to show that the cited embodiment discussed in a mere ten
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`lines of the ’235 patent limits the construction of “modifying the packet destination
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`address” to a modification that occurs “without discarding or deleting the destination
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`IP address.” Just the opposite is true, as the ’235 patent unambiguously states that
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`the “described embodiments are to be considered in all respects only as illustrative
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`and not restrictive . . . [t]he scope of the invention is indicated by the appended
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`claims rather than the foregoing description.” (Ex. 1001 at 16:67-17:4.) Neither the
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`specification nor the prosecution history of the ’235 patent set forth an express
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`definition of “modify” that is at all limited in the way Patent Owner asserts it should
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`be.
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`More critically, the Board must reject Patent Owner’s construction because it
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`would exclude other embodiments in the ’235 patent. For example, with respect to
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`Figure 11, the ’235 patent describes an embodiment where multiple packet
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`destination addresses are used and modified during transmission between a source
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`and a destination. (Ex. 1001 at 15:39-41; FIGS. 9 & 11.) The ’235 patent notes that
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`“[d]uring an address modifying step 916, the packet destination address is modified
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`as needed to make it lie within an address range (obtained during step 900) which is
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`associated with the selected path to the selected network (selected during step 908).
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`For instance, if a packet is received 904 with a destination address corresponding to
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`travel through the Internet but the path selection 908 selects a path for the packet
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`through a frame relay network 106 to the same destination, then the packet's
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`destination IP address is modified 916 by replacing the IP address with the IP
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`address of the appropriate interface of the controller at Site B.” (Ex. 1001 at 15:61-
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`16:4; FIGS. 9 &11.) As detailed in this portion of the specification, the packet
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`destination IP address is modified by completely replacing the original destination
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`address (Site B’s IP address) with a different address (e.g., the controller B IP
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`address). (Ex. 1001 at 15:45-60.) In fact, the example provided in column 15 of the
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`’235 patent shows the destination address being completely replaced by a separate
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`address no less than five separate times: first with VPN B’s IP address, then with A
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`controller B’s IP address, then with controller B’s IP address, then with VPN B’s IP
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`address, then finally with the original Site B address. (Id.) In other words, there are
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`multiple destination addresses that can be used at different points along the path,
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`depending on the packet’s location in the network that is being traversed. In each
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`instance, the ’235 patent indicates that the destination address is being “modified.”
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`(Id.)
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`When confronted with this embodiment at his deposition, Mr. Williams
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`struggled to reconcile this with Patent Owner’s narrow construction. First, he stated
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`“I don’t know what [the inventor is] referring to specifically here.” (Ex. 1019 at
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`74:2-3.) Then, Mr. Williams admitted that Patent Owner chose to “giv[e] more
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`weight to the definition—the dictionary definition and the – the majority of the
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`description” compared to the embodiment associated with Figure 11. (Id. at 74:12-
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`15.) Nevertheless, Mr. Williams was forced to concede the obvious point that the
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`embodiment in columns 15 and 16 of the ’235 patent relates to “a modification of
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`the destination IP address.” (Id. at 76:10-20.) Mr. Williams testimony makes it clear
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`that Patent Owner has arbitrarily selected a narrow construction which limits
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`“modifying” a destination address to changing “a portion of the IP address”
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`(Response at 36). This construction would exclude the “replacement” embodiment
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`associated with Figure 11 of the ’235 patent, despite the fact that this embodiment
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`clearly describes modifying a destination address (as admitted by Patent Owner’s
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`expert). What Patent Owner is doing violates long-standing principles of claim
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`construction. The Board may only interpret claims to exclude an embodiment where
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`the embodiment “was clearly disclaimed in the specification, or prosecution
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`history.” Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (internal
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`citations omitted). Here the exact opposite is true: the ’235 patent makes it clear that
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`the term “modifying the destination address” at the very least encompasses situations
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`where the entire destination address is replaced (multiple times), and then later
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`reintroduced.
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`Additionally, the ’235 patent makes clear that it is intended to cover other
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`embodiments where the disparate network (in parallel with the Internet) is a non-IP
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`network (e.g., a “point-to point, leased line, or frame relay network”). (Ex. 1001 at
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`1:20-22.) Indeed, the ’235 patent makes it clear that the teachings of the patented
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`invention “will also be understood in the context of point-to-point networks.” (Ex.
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`Id. at 2:2-3.) If this type of network were used in Figure 11 (instead of the frame
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`relay network 106), it would require that the destination address of the packet
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`travelling to Controller B be modified to incorporate the (non-IP) address (e.g., a
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`telephone number on a telephone line) of Controller B on the point-to-point network.
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`Yet Patent Owner’s construction would exclude this embodiment as well.
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`Accordingly, the Board must reject Patent Owner’s improperly narrowing
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`construction.
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`III. CLAIMS 6 AND 22-24 ARE ANTICIPATED OR RENDERED
`OBVIOUS
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`A. Claim 6 is anticipated by Karol (Ex. 1006)
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`Karol discloses the step of modifying the packet destination address to lie
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`within a known location address range associated with the selected network before
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`the forwarding step. As admitted by Patent Owner, Karol describes two different
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`ways to send data received at the CL-CO gateway over a CO network: (1) protocol
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`conversion and (2) protocol encapsulation. (Response at 24-28; Ex. 1006 at 16:10-
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`17:18.) The second example provided in Karol (protocol encapsulation) is identical
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`to the example provided in the ’235 patent of what it means to “modify” the
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`destination address. As described in Karol, protocol encapsulation occurs when
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`packets of one network (e.g., a CL network like the Internet) are tunneled through a
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`second network (e.g., a CO network such as a frame relay or ATM network). (Ex.
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`1006 at 16:30-35.) During this process, an IP datagram is encapsulated into an AAL5
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`frame, which is then segmented into ATM cells for transport through the ATM
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`network. (Id. at 16:35-39.)
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`As shown in path 1120 between endpoints 1103 and 1104 in Figure 11
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`(highlighted above in red), the CL-CO gateway 961 must convert the IP address into
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`corresponding ATM address (of terminating CL-CO gateway 962) and use this as a
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`destination address in order to route the segmented frame to CL-CO gateway 962.
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`(Id. at 17:8-17; FIG.11; Ex. 2004 at 20:20-21:23.) In other words, the destination
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`address must be modified so that it is within the range of addresses that are part of
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`the CO network. (Id.) The destination address of endpoint 1104 is then used to route
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`the packet from terminating CL-CO gateway 962 to endpoint 1104 once the packet
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`exits the frame relay network.
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`This is identical to the process described in conjunction with Figure 11 of the
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`’235 patent, which is annotated below in red.
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`The ’235 patent notes that during the transmission from Site A 102 to Site B 102,
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`the packet addresses must be modified to travel over the frame relay network 106
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`(while the original destination address of Site B is again used on the final leg once
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`the packet exits the frame relay network). (Ex. 1001 at FIG. 11.) The ’235 patent
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`states clearly that “[d]uring an address modifying step . . . the packet destination
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`address is modified as needed to make it lie within an address range . . . which is
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`associated with the selected path to the selected network.” (Ex. 1001 at 15:61-65;
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`see also id. at 15:39-60, 16:1-4.)
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`At his deposition, Mr. Williams stated unequivocally that Figure 11 of the
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`’235 patent, and the associated description in columns 15 and 16, was “a classic
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`example of encapsulation.” (Ex. 1019 at 63:17-18; see also id. at 61:4-10, 64:4-11,
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`67:1-21, 70:15-21.) Mr. Williams also admitted that this “encapsulation”
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`embodiment of the ’235 patent clearly involves “modifying a destination IP
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`address.” (Id. at 76:10-20.) This embodiment is identical to the protocol
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`encapsulation process described in Karol. In both Karol and the ’235 patent, different
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`destination addresses are used at different points along the transmission path
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`(depending on the nature of the network being traversed). Whether the packet travels
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`through a frame relay network (in Figure 11 of the ’235 patent) or an ATM network
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`(in Karol), the destination address must be “modified” (i.e., temporarily replaced) in
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`order to lie within a range associated with that CO network so that the packet can
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`travel from one end of the CO network to the other. Thus, as with the ’235 patent,
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`Karol clearly discloses “modifying the packet destination address to lie within a
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`known location address range associated with the selected network before the
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`forwarding step.”
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`Similarly, Karol’s “protocol conversion” process, which is employed by the
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`CL-CO gateway on packets being transmitted to an endpoint in a CO network, also
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`requires modifying the destination address. For example, “if a user with an Internet
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`telephony PC connected to the Internet . . . is communicating with a user that has a
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`telephone, then voice signals sent by the Internet user are extracted from the IP
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`datagrams at the CL-CO gateway node (CL-CO gateway 960 in FIG. 11) and carried
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`directly on a DS0 circuit in the CO network 950.” (Ex. 1006 at 17:1-6; FIG. 11.) In
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`describing this process, Karol teaches “that TCP connections are terminated at the
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`CL-CO gateways from each endpoint of the communication, and a connection of the
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`type supported by the CO network is set up between the CL-CO gateways.” (Ex.
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`1006 at 7:18-29.) In referencing this example, Patent Owner argues that the packet’s
`
`destination address is not modified at the CL-CO gateway because the gateway is
`
`the actual destination and acts as a “termination point for the IP protocol.” (Response
`
`at 25.) According to Patent Owner, “there is no modification of the destination IP
`
`address in this case since the use of the IP protocol ceases and the original destination
`
`IP address is discarded.” Patent Owner again imports artificial limitations into claim
`
`6. First, as described above in Section II, the ’235 patent is crystal clear that address
`
`modification includes scenarios where the destination address is completely
`
`replaced. Supra § II. Second, nothing in claim 6, or the specification of the ’235
`
`patent, limits the claim to IP addresses, or IP protocols. (Ex. 1019 at 79:4-9.) Instead,
`
`the ’235 patent states unambiguously that the invention is intended to be used with
`
`non-IP networks, such as leased lines. (Ex. 1001 at 2:1-5.) Karol very clearly
`
`discloses that once the packet reaches the CL-CO gateway and undergoes the
`
`protocol conversion process, the destination address must be replaced to include the
`
`endpoint inside the CO network (1102). (Ex. 1006 at FIG. 11; Ex. 2004 at 22:13-
`
`25.)
`
`
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`14
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`Petitioner’s Reply
`IPR2017-00684
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`Accordingly, for all the reasons above, as well as the reasons in the original
`
`Petition, Karol anticipates claim 6 of the ’235 patent.
`
`B. Claim 6 is obvious over Karol (Ex. 1006) in view of Stallings (Ex.
`1011)
`
`Stallings clearly teaches “modifying the packet’s destination address” in a
`
`way that is identical to the process described in the ’235 patent above. The example
`
`from Figure 16.4 in Stallings (shown below) makes this clear.
`
`
`
`(Ex. 1011 at 536.) As shown above, an IP datagram (or packet) arrives at Router (X)
`
`for transport across an X.25 packet-switched network. The datagram comprises at
`
`least a 32 bit source address and a 32 bit destination address wherein each address
`
`comprises at least a network identifier and a host (or end system) identifier. (Id. at
`
`535, 544-45.) Stallings discloses that a packet destined for destination (B) may be
`
`transmitted through subnetwork 1 to router X. (Id. at 535.) The router X analyzes
`
`the IP header to determine the ultimate destination of the data and then determines
`
`that the data must pass through the X.25 packet switched WAN to router Y before
`
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`15
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`Petitioner’s Reply
`IPR2017-00684
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`reaching the destination. (Id. at 536.) Router X then constructs a new packet by
`
`appending an X.25 header, containing the destination address of router Y, to the IP
`
`data unit, and transmits it on to router Y. (Id. at 536-537.) This is necessary because
`
`the addressing scheme in an X.25 network is different than the IP addressing scheme.
`
`Specifically, the X.25 network address consists of at least 5 digits but not more than
`
`14 digits. (Id. at 679; Ex. 1019 at 17:20 – 18:15.)
`
`
`
`Patent Owner argues that because the original destination IP address for
`
`destination (B) remains “unmodified,” Stallings fails to disclose the features of claim
`
`6. (Response at 42.) Patent Owner argues that what Stallings discloses is “merely to
`
`cause transmission to a particular next hop in the network.” (Id.) Patent Owner’s
`
`contentions are wrong.
`
`
`
`Contrary to Patent Owner’s contentions, Stallings describes a process in
`
`which a virtual circuit is dynamically established on an X.25 network to route
`
`packets across the network. (Ex. 1011 at 284.) During this process, a Call-Request
`
`packet is transmitted from the origination point in the X.25 network to the
`
`termination point. (Id. at 284, 287.) This Call-Request packet includes the “source
`
`and destination addresses” (e.g., the destination address of the termination point in
`
`the X.25 network). (Id. at 284.) Thus, the destination address of the Call-Request
`
`packet must be modified to include the destination address of the termination point
`
`in the X.25 network. This is identical to the process described in the ’235 patent with
`
`
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`16
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`Petitioner’s Reply
`IPR2017-00684
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`respect to Figure 11. (Ex. 1001 at 15:45-16:10; FIG. 11.) Indeed, Patent Owner
`
`admits Stallings description is “very similar to the teaching of ‘protocol
`
`encapsulation’ described in Karol.” (Response at 41.) As confirmed by Patent
`
`Owner’s own expert, the ’235 patent also describes protocol encapsulation as
`
`requiring a modification of the destination address of a packet. (Ex. 1019 at 63:17-
`
`19.) In the example in the ’235 patent, when a packet is transported through the
`
`frame relay network, the destination address is replaced at multiple points along the
`
`frame relay network, until the packet arrives at the termination point of the frame
`
`relay network, and is then transported to an endpoint. (Ex. 1001 at 15:45-16:10; FIG.
`
`11.) Accordingly, Stallings discloses “modifying the packet’s destination address”
`
`for the exact same reasons as Karol and the ’235 patent.
`
`Patent Owner fails to offer any reason why a POSITA would not have
`
`combined Karol with Stallings. This combination would have been obvious to a
`
`POSITA. First, using the address modification disclosed in Stallings with 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. KSR Int’l Co. v. Teleflex Inc., 550
`
`U.S. 398, 417 (2007); MPEP § 2143; Ex. 1005 at ¶¶ 305, 307. A POSITA would
`
`have recognized that implementing the address modification disclosed in Stallings
`
`with the method in Karol would enable Karol to transmit a packet to the selected
`
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`17
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`Petitioner’s Reply
`IPR2017-00684
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`network. (Ex. 1005 at ¶¶ 305-308.) A POSITA would understand no other alternative
`
`to routing data in common usage for IP protocol based networking, other than via
`
`the above disclosure. (Ex. 1005 at ¶ 305.) A POSITA would look to combine
`
`Stallings because Karol cites to Stallings to describe attributes of Karol’s gateway
`
`to parallel data routes. (Ex. 1006 at 12:59-64; Ex. 1005 at ¶¶ 304, 308.) Karol also
`
`describes network addressing in routers over multiple parallel routes, and Stallings
`
`describes additional routing characteristics of network addresses as well as methods
`
`to obtain such network addresses. (Ex. 1005 at ¶ 308.) And a POSITA would have
`
`been motivated because the combination would have predictable results. (Ex. 1005
`
`at ¶ 236.)
`
`Second, the combination of Karol and Stallings was obvious to try. KSR, 550
`
`U.S. at 417; MPEP § 2143; Ex. 1005 at ¶¶ 229-237, 239. The need in the art was the
`
`ability to route to multiple network locations based on the IP protocol. (Ex. 1005 at
`
`¶ 305.) No other alternative than the routing structure in Karol and Stallings was in
`
`common usage for IP protocol. (Id.) Thus, a POSITA would have pursued the
`
`combination with a high likelihood of success. (Id.)
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`18
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`Petitioner’s Reply
`IPR2017-00684
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`Accordingly, for all the reasons given above, Karol in view of Stallings
`
`renders claim 6 obvious.
`
`C. Claims 22-24 are anticipated by Karol, and obvious over Karol in
`view of Stallings
`
`1.
`
`The Board has Already Determined that the Majority of
`the Elements of Claim 22, as well as Claims 23-24, are
`Anticipated by Karol and/or Rendered Obvious by Karol
`in View of Stallings.
`
`The overwhelming majority of the issues relating to claims 22-24 have already
`
`been decided by the Board. In IPR2016-00976 (the “’976 IPR”), Talari Networks,
`
`Inc. (“Talari”) argued that claims 5, 9, and 11 of the ’235 patent were anticipated by
`
`Karol, rendered obvious by Karol, or rendered obvious by Karol in view of Stallings.
`
`In a Final Written decision on Novembe
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