`571.272.7822
`
`
`Paper No. 9
`Filed: October 3, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIPTELA, INC.,
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS PRIVATE LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-01125
`Patent 6,775,235 B2
`____________
`
`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
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`IPR2017-01125
`Patent 6,775,235 B2
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`I. INTRODUCTION
`
`A. Background
`Viptela, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) seeking to
`institute an inter partes review of claims 4–15, 19, and 22–24 (the
`“Challenged Claims”) of U.S. Patent No. 6,775,235 B2 (Ex. 1001, the “’235
`patent”) pursuant to 35 U.S.C. §§ 311–319. FatPipe Networks Private
`Limited (“Patent Owner”) filed a Preliminary Response. (Paper 7, “Prelim.
`Resp.”). We have authority 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. § 103 on the following specific grounds (Pet. 4):
`References
`Basis Claims Challenged
`Karol1 and Zhang2
`§ 103 5–11, 14, and 22–24
`Karol and Pearce3
`§ 103 4 and 19
`Karol, Zhang, and Pearce
`§ 103 9, 10, and 14
`Karol, Zhang, and McCulloguh4 § 103 6, 9–15, and 22–24
`
`For reasons discussed below, we decline to institute inter partes review of
`the Challenged Claims of the ʼ235 patent.
`
`
`1 U.S. Patent No. 6,628,617 B1 (“Karol,” Ex. 1006).
`2 U.S. Patent No. 6,396,833 B1 (“Zhang,” Ex. 1019).
`3 U.S. Patent No. 5,910,951 (“Pearce,” Ex. 1021).
`4 U.S. Patent App. Publ. No. 2002/0010866 A1 (“McCullough,” Ex. 1020).
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`B. Related Proceedings
`Prior to filing this Petition, Petitioner filed a petition for inter partes
`review challenging claims 4–15, 19, and 22–24 of the ’235 patent (IPR2017-
`00684 (the “’684 IPR”)), and a petition for inter partes review of a related
`patent, U.S. Patent 7,406,048 (the “’048 patent”) (IPR2017-00680). We
`instituted review of claims 6 and 22–24 of the ’235 patent on July 14, 2017,
`and we denied institution with respect to the ’048 patent.
`In addition, the ’235 patent is the subject of a separate proceeding,
`IPR2016-00976 (the “’976 IPR”), filed by Talari Networks, Inc., for which a
`final written decision is due November 2, 2017.
`Also, Petitioner informs us that the ’235 and the ’048 patents have
`been asserted against Petitioner in the following proceeding: FatPipe, Inc.
`v. Viptela, Inc., No. 1:16-cv-182 (D. Del.). Pet. 1; see also Paper 6, 1.
`Patent Owner indicates that the ’235 and ’048 patents also are subject to
`additional district court proceedings and additional inter partes review
`proceedings. Paper 6, 1–2; Paper 8, 1–2.
`
`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.
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`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
`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 a frame relay/point-to-point router according to the criteria.” Id. at
`9:12–17.
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`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 11:6–63. 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.
`
`D. Illustrative Claim
`As noted above, Petitioner challenges claims 4–15, 19, and 22–24 of
`the ʼ235 patent, of which claims 4, 5, 19, and 22 are independent. Claim 22
`is illustrative of the challenged claims and is reproduced below:
`22. A computer storage medium having a configuration that
`represents data and instructions which will cause
`performance of a method for combining connections for
`access to multiple parallel disparate networks, the
`method comprising the steps of:
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`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;
`modifying the packet destination address to lie within a known
`location address range associated with the selected
`network if it does not already do so; and
`forwarding the packet on the selected network path.
`Ex. 1001, 19:31–20:24.
`
`
`
`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
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997).
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`Petitioner submits a list of terms for which Patent Owner has
`proposed construction in a co-pending district court case. Pet. 7–8.
`Petitioner, however, asserts that for the purposes of this Decision no terms
`need to be construed. Id. Patent Owner does not address claim construction
`in its Preliminary Response. See generally Prelim. Resp. We reviewed the
`parties’ arguments, 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
`
`A. 35 U.S.C. §§ 314(a) and 325(d)
`Institution of an inter partes review is discretionary. Section 314(a)
`of title 35 of the United States Code recites that the Director “may not”
`institute inter partes review unless certain circumstances are met, but does
`not specify any circumstances that would require institution. 35 U.S.C.
`§ 314(a) (“The Director may not authorize an inter partes review to be
`instituted unless the Director determined that the information presented in
`the petition . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”); see also 37 C.F.R. § 42.108(a) (“the Board may authorize the
`review to proceed”) (emphasis added); Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the
`PTO is permitted, but never compelled, to institute an IPR proceeding”).
`The Director has delegated the exercise of discretion as to whether to
`institute to the Board. 37 C.F.R. § 42.4(a) (“The Board institutes the trial on
`behalf of the Director.”).
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`In the exercise of this discretion, 35 U.S.C. § 325(d) provides a factor
`that may be taken into account, namely, “the Director may take into account
`whether, and reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the Office.” 35
`U.S.C. § 325(d). Additional factors the Board may consider include, for
`example, the factors set forth in NVIDIA Corp. v. Samsung Elec. Co., Case
`IPR2016-00134, slip op. at 6–7 (PTAB May 4, 2016) (Paper 9). Gen.
`Plastic Indus. v. Cannon Kabushiki Kaisha, Case IPR2016-01357, slip op. at
`16 (PTAB Sept. 6, 2017) (Paper 19) (informative). Also, we must consider
`managing the resources of the Office in order to secure the just, speedy, and
`inexpensive resolution of the challenges to the patentability of the ’235
`patent. See 37 C.F.R. § 42.1(b); see also 35 U.S.C. § 316(b) (regulations for
`inter partes review proceedings take into account “the efficient
`administration of the Office” and “the ability of the Office to timely
`complete [instituted] proceedings”); and see H.R. Rep. No. 112-98, pt.1, at
`48 (2011) (post-grant proceedings conducted under the AIA “are not to be
`used as tools for harassment or a means to prevent market entry through
`repeated litigation and administrative attacks on the validity of a patent.
`Doing so would frustrate the purpose of the section as providing quick and
`cost effective alternatives to litigation.”).
`Patent Owner’s Preliminary Response focuses on the issue of whether
`the Board should exercise its discretion under 35 U.S.C. § 325(d) and deny
`institution of Petitioner’s asserted grounds of unpatentability. Prelim. Resp.
`1–6. Patent Owner contends that the instant Petition should be denied
`because it relies on substantially the same prior art and presents substantially
`the same arguments that were presented by Petitioner in the petition for the
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`’684 IPR, which in turn was a “copy-cat” of the ’976 IPR petition. Prelim.
`Resp. 2, 5. However, in deciding whether we should exercise our discretion
`and decline to go forward with this Petition, our concern is not only whether
`“the same or substantially the same prior art or arguments previously were
`presented to the Office,” as expressed in § 325(d), but also whether other
`factors weigh in favor of denying institution in light of the discretion
`afforded to us pursuant to § 314(a).
`On April 29, 2016, Talari Networks, Inc. filed a petition in the ’976
`IPR challenging claims 4, 5, 7–15, and 19 of the ’235 patent over Karol, and
`claims 5, 11–15, and 19 over the combination of Karol and Stallings. See
`generally ’976 IPR, Paper 1 (PTAB Apr. 29, 2016). In that proceeding we
`instituted inter partes review of all challenged claims, namely claims 4, 5,
`7–15, and 19 (the “’976 instituted claims”), on all the asserted grounds. See
`generally ’976 IPR, Paper 7 (PTAB Nov. 2, 2016).
`On January 13, 2017, Petitioner filed a petition in the ’684 IPR that is
`essentially identical to that filed in the ’976 IPR, over the same art and
`grounds, with the difference being the ’684 IPR challenged a few additional
`claims that were not challenged in the ’976 IPR, namely claims 6 and 22–24
`of the ’235 patent. See generally ’684 IPR, Paper 1 (PTAB Jan. 13, 2017)
`and ’976 IPR, Paper 1 (PTAB Apr. 29, 2016). In the ’684 IPR, we exercised
`our discretion under 35 U.S.C. §§ 325(d) and 314(a), and denied institution
`of inter partes review with respect to the ’976 instituted claims. See
`generally ’684 IPR, Paper 8 (PTAB July 14, 2017). However, we instituted
`with respect to the newly added claims, namely claims 6 and 22–24 (the
`“’684 instituted claims”), on July 14, 2017. See generally id.
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`Less than one month after Petitioner filed the petition in the ’684 IPR,
`Patent Owner filed its response in the ’976 IPR (on February 8, 2017), in
`which Patent Owner argued that Karol does not disclose selecting between
`networks “on a per-packet basis” or “packet-by-packet basis,” as required by
`independent claim 4 and dependent claim 9 (which depends from
`independent claim 5), respectively, of the ’235 patent. ’976 IPR, Paper 22,
`at 9–15, 23–28 (PTAB Feb. 8, 2017). Patent Owner argued, inter alia, that
`the claims require “for each packet, mak[ing] a discrete choice between
`network paths/interfaces,” and that Karol’s forwarding database facilitates
`network path selections “infrequently and not on a per-packet basis.” Id. at
`24 (emphasis added). Patent Owner also argued that Karol does not disclose
`using address ranges, as recited in claim 5, but rather uses only a single
`destination IP address. Id. at 34–36.
`On March 21, 2017, after Patent Owner’s response in the ’976 IPR,
`Petitioner filed the Petition in the instant proceeding. The Petition in this
`proceeding is essentially identical to the one Petitioner filed only a few
`months earlier, in the ’684 IPR, except that the instant Petition includes
`contentions that address certain deficiencies in Karol alleged by Patent
`Owner in its response in the ’976 IPR. For example, regarding claim 4’s
`“per-packet basis” limitation, Petitioner contends in the instant Petition, as it
`did in the ’684 IPR, that Karol discloses this feature, and Petitioner’s
`analysis is essentially identical to that in the ’684 IPR (and to that in the ’976
`proceeding). However, Petitioner adds “[t]o the extent the Board finds that
`Karol fails to disclose [this feature] . . . Pearce discloses th[is] feature[].”
`Pet. 33. Also, regarding claim 5’s recitation relating to “known location
`address ranges,” Petitioner contends in this proceeding, as it did in the ’684
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`IPR, that Karol discloses this feature, and Petitioner’s analysis is essentially
`identical to that in the ’684 IPR (and to that in the ’976 proceeding).
`However, Petitioner adds “[i]n the event the Board finds that this element is
`not expressly disclosed in Karol . . . Zhang clearly discloses obtaining ‘at
`least two known location address ranges which have associated networks.’”
`Id. at 12–13. In addition, Petitioner argues that to the extent we find that the
`combination of Karol and Pearce fails to teach selecting network paths on a
`per-packet basis, or that the combination of Karol and Zhang fails to teach a
`known location address range, McCullough teaches these features. Id. at
`50–55.
`As we noted above, between the ’976 IPR and ’684 IPR we have
`instituted inter partes review of all claims of the ’235 patent that are
`challenged in the instant Petition. In addition, the primary prior art
`reference, Karol, and related arguments, are essentially identical to those in
`the ’976 and ’684 IPRs, but for the additional combinations with Pearce,
`Zhang, and McCullough that Petitioner introduces to address Karol’s alleged
`shortcomings.
`We note that even though Petitioner is not a party to the ’976 IPR, that
`proceeding is in an advanced stage. It is important that we do not extinguish
`Petitioner’s access to the proceedings before this body just because another
`party has sought review of the same claims. This is significant because
`Petitioner has no control over the decision to see the ’976 IPR through to a
`final determination. Accordingly, we examine the facts of the matter before
`us to take care that we do not impose a strict bright line determination
`barring petitions from entities that are not a party to the original proceeding.
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`All briefing is complete in the ’976 IPR, the oral hearing was held on
`August 14, 2017, and a final decision is due by November 2, 2017. At this
`point, the decision in the ’976 IPR as to whether to see the matter through to
`final determination is squarely in our hands, regardless of whether any
`settlement is reached between the parties. See 37 C.F.R. § 42.74(a) (“The
`parties may agree to settle any issue in a proceeding, but the Board is not a
`party to the settlement and may independently determine any question of
`jurisdiction, patentability, or Office practice.”). Thus, if we deem it
`appropriate, we can reach a final decision on the grounds presented in the
`’976 IPR with or without participation from the parties in that matter. These
`facts weigh in favor of us exercising our discretion not to move forward with
`the instant Petition, at least with respect to the ’976 instituted claims insofar
`as Petitioner’s arguments relate to Karol and are substantially identical to
`those in the ’976 IPR, because the issues raised are fully briefed and ripe for
`a final decision in the ’976 IPR, and Petitioner’s non-participation in that
`proceeding is at best neutral to our analysis.
`Petitioner is a party to the ’684 IPR, and in that proceeding the
`petition is directed to the same claims of the same patent as in this Petition.
`This fact weighs in favor of us not moving forward with the instant Petition.
`Also, at least with respect to the ’684 instituted claims, insofar as
`Petitioner’s arguments relate to Karol and are substantially identical to those
`in the ’684 IPR, Petitioner has the opportunity to address the same art and
`arguments in the ’684 proceeding. It would be an inefficient use of Office
`resources, and would run counter to securing the just, speedy, and
`inexpensive resolution of the challenges to the patentability of the ’235
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`patent, if we were to allow Petitioner to proceed on the same art and
`arguments in two separate proceedings.
`Additional factors we consider here in determining whether to
`exercise our discretion and deny institution include:
`whether at the time of filing of the ’684 petition, Petitioner
`knew, or should have known, of Pearce, Zhang, and
`McCullough (“the Additional References”);
`
`the length of time that elapsed between learning of the
`Additional References, and the filing of the instant Petition;
`
`whether Petitioner has provided adequate explanation for the
`time lapse;
`
`whether at the time of filing of the instant Petition, Petitioner
`already had access to Patent Owner’s response in the ’976 IPR;
`and
`
`the finite resources of the Board.
`
`See Gen. Plastic Indus. at 16 (Paper 19) (informative). Petitioner provides
`no explanation of whether it knew or should have known of the Additional
`References when filing the ’684 petition; of when it first learned of these
`references; or of any time lapse between learning of these references and the
`filing of the instant Petition.
`As we discussed above, in between the time of filing of the ’684 IPR
`and the instant Petition, Patent Owner filed a response in the ’976 IPR.
`Accordingly, prior to filing the instant Petition, Petitioner had access to
`Patent Owner’s response in the ’976 IPR. Whereas the ’684 petition is
`essentially identical to the ’976 petition (except for the addition of a few new
`claims), the instant Petition introduces the Additional References to
`specifically address shortcomings of Karol alleged by Patent Owner in the
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`’976 response. These facts indicate that in filing the ’684 IPR, Petitioner
`essentially copied the ’976 Petition, and in filing the instant Petition,
`Petitioner used Patent Owner’s response in the ’976 IPR as a roadmap, and
`therefore benefitted from having access to Patent Owner’s arguments.
`Regardless of when Petitioner first learned of the Additional
`References, Petitioner does not provide, nor do we discern, any explanation
`for why Petitioner could not have first introduced the Additional References
`in the petition for the ’684 IPR. Petitioner had access to the ’976 petition for
`more than eight months prior to filing the ’684 petition, and therefore, was in
`a position to identify on its own any potential shortcomings of Karol prior to
`filing the ’684 petition. Petitioner does not identify any surprises in Patent
`Owner’s ’976 response that would indicate Petitioner could not have
`identified, on its own, the alleged shortcomings of Karol addressed by the
`Additional References. Under the present circumstances, we find that
`Petitioner could have performed its own analysis of Karol as it applies to the
`Challenged Claims, performed a prior art search, and identified the
`Additional References prior to filing the ’684 petition. Moreover, Petitioner
`could have included such references, with additional arguments, in a single
`petition along with the Karol arguments that it essentially copied from the
`’976 petition. It is wasteful of the Board’s finite resources, and frustrates the
`purpose of inter partes review as providing a quick and cost effective
`alternative to litigation, when a Petitioner files what is, essentially, a copy of
`another party’s petition, without any indication it performed its own analysis
`or conducted a search to identify additional art and arguments, then files
`another petition a few months later that introduces additional art and
`arguments that could have been presented in the earlier-filed petition.
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`Therefore, these additional factors, applied to the facts in this
`proceeding, weigh in favor of our exercising our discretion in denying
`institution.
`As discussed above, the facts of this case support exercising our
`discretion under §§ 314(a) and 325(d) with respect to the challenged claims.
`Thus, we decline Petitioner’s request to institute inter partes review of
`claims 4–15, 19, and 22–24 of the ’235 patent.
`
`IV. CONCLUSION
`
`After due consideration of the record before us and for the foregoing
`reasons, we conclude that the circumstances of this case justify exercising
`our discretion under 35 U.S.C. §§ 314(a) and 325(d). Thus, we decline
`Petitioner’s request to institute inter partes review of claims 4–15, 19, and
`22–24 of the ’235 patent.
`
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`V. ORDER
`
`Accordingly, it is:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’235 patent and no trial is instituted.
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`PETITIONER:
`
`Robert C. Hilton
`George B. Davis
`MCGUIREWOODS LLP
`rhilton@mcguirewoods.com
`gdavis@mcguirewoods.com
`Viptela-FP@mcguirewood.com
`
`PATENT OWNER:
`
`Robert C. Mattson
`Also Martinez
`Sameer Gokhale
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketmattson@oblon.com
`cpdocketmartinez@oblon.com
`cpdocketgokhale@oblon.com
`
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