`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________________
`
`Case IPR2017-01600
`Patent 6,910,069
`
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`REDACTED VERSION
`
`

`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`TABLE OF CONTENTS
`
`Page
`
`PATENT OWNER’S EXHIBIT LIST ....................................................................... i 
`
`I.
` 
`
`II.
` 
`
`Introduction ...................................................................................................... 1 
`
`Facts ................................................................................................................. 3 
`
`A.
`
` 
`
`B.
`
` 
`
`SWAN Development ............................................................................. 3 
`
`The ‘069 Patent ..................................................................................... 5 
`
`
`
`  Claim Construction ........................................................................................ 11 III.
`
`A.
`
` 
`
`“wherein a seeking computer contacts a fully connected portal
`computer” (all challenged claims) ...................................................... 11 
`
`IV.
`
`  Francis Is Not Prior Art ................................................................................. 15 
`
`V.
`
` 
`
`The Board Should Deny the Petition Under 35 U.S.C. § 315(B) ................. 26 
`
`A.
`
`  Activision is a Real Party in Interest ................................................... 27 
`
`B.
`
` 
`
`C.
`
` 
`
`Petitioner is in Privity with Activision Blizzard, Inc. ......................... 30 
`
`The 315(b) Clock Runs From the Service of the 2015
`Complaint ............................................................................................ 31 
`
`VI.
`
`  The Board Should Deny the Petition Under 35 U.S.C. § 325(d) .................. 34 
`
`  Francis in View of Gilbert Does Not Render Claims 1–5, 7, 8, and 11–VII.
`
`
`13 Obvious Under 35 U.S.C. § 103(a) .......................................................... 37 
`
`A.
`
` 
`
`Francis in View of Gilbert Fails to Disclose “A computer-
`based, non-routing table based, non-switch based method for
`adding a participant to a network of participants, each
`participant being connected to three or more other participants”
`(all challenged claims) ........................................................................ 41 
`
`1. 
`
`Francis’ System is Routing Table Based .................................. 42 
`
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`

`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`B.
`
` 
`
`C.
`
` 
`
`2. 
`
`Gilbert’s System is Switch Based and Routing Table
`Based ......................................................................................... 44 
`
`Francis in View of Gilbert Fails to Disclose “wherein a seeking
`participant contacts a fully connected portal computer” (all
`challenged claims) ............................................................................... 52 
`
`Francis in View of Gilbert Fails to Disclose “a fully connected
`portal computer, which in turn sends an edge connection
`request to a number of randomly selected neighboring
`participants to which the seeking participant is to connect” (all
`challenged claims) ............................................................................... 56 
`
`
`
`  CONCLUSION .............................................................................................. 60 VIII.
`
`
`
`- ii -
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`

`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Acceleration Bay LLC v. Activision Blizzard, Inc.,
`Case No. 15-cv-00228 (D. Del. March 11, 2015) .............................................. 33
`
`Activision Blizzard, Inc. v. Acceleration Bay LLC,
`Case No. 16-cv-03375-RS, 2016 WL 454985 (N.D. Cal. Sept. 1, 2016.) ......... 32
`
`Activision Blizzard, Inc. v. Acceleration Bay LLC,
`Case IPR2016-00726, Paper 11 (P.T.A.B. Sept. 9, 2016.) ........................... 27, 30
`
`Amazon.com, Inc. v. Appisty, Inc.,
`Case IPR2015-00480, Paper 18 (P.T.A.B. July 13, 2015) ................................. 28
`
`ams AG v. 511 Innovations, Inc.,
`Case IPR2016-01792, Paper 15 (P.T.A.B. Mar. 16, 2017) ................................ 11
`
`Apple Inc. v. Rensselaer Polytechnic Institute,
`Case IPR2014-00319, Paper 12 (P.T.A.B. June 12, 2014) ................................ 33
`
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
`Case IPR2013-00453, Paper 88 (P.T.A.B. Jan. 6, 2015) ................................... 28
`
`Cooper v. Goldfarb,
`154 F.3d 1321 (Fed. Cir. 1998) .................................................................... 16, 17
`
`Fleming v. Escort, Inc.,
`774 F.3d 1371 (Fed. Cir. 2014) .......................................................................... 16
`
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc.,
`Case IPR2014-00529, Paper 8 (P.T.A.B. Sept. 23, 2014) .................................. 43
`
`LG Display Co. v. Delaware Display Group LLC,
`Case IPR2014-01359, Paper 12 (P.T.A.B. Mar. 2, 2015) .................................. 11
`
`Loral Fairchild Corp. v. Matsushita Elec. Indus. Co.,
`266 F.3d 1358 (Fed. Cir. 2001) .......................................................................... 17
`
`Loral Space & Communications, Inc. v. ViaSat, Inc.,
`Case IPR2014-00236, Paper 7 (P.T.A.B. Apr. 21, 2014) ................................... 33
`
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`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`Medtronic, Inc., v. Nuvasive, Inc.,
`Case IPR2014-00487, Paper 8 (P.T.A.B. Sept. 11, 2014) .................................. 37
`
`Metalcraft of Mayville, Inc. v. The Toro Co.,
`848 F. 3d 1358 (Fed. Cir. 2017) ......................................................................... 47
`
`Oracle Corp. v. Click-to-Call Techs. LP,
`Case IPR2013-00312, Paper 40 (P.T.A.B. Dec. 18, 2013) ................................ 32
`
`Taylor v. Sturgell,
`553 U.S. 880 (2008) ...................................................................................... 28, 29
`
`Travelocity.com L.P. v. Cronos Techs., LLC,
`Case CBM2014-00082, Paper 12 (P.T.A.B. Oct. 16, 2014) ................................ 3
`
`Statutes
`
`35 U.S.C. § 103(A) .................................................................................................. 37
`
`35 U.S.C. § 312(a)(2) ............................................................................................... 28
`
`35 U.S.C. § 315(b) ............................................................................................passim
`
`35 U.S.C. § 325(d) ................................................................................... 2, 34, 36, 37
`
`Other Authorities
`37 C.F.R. § 42.104(b) .......................................................................................passim
`
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 48
`
`37 C.F.R. § 42.65(a) ................................................................................................. 42
`
`77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) ............................................. 27, 31, 42
`
`
`
`
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`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`PATENT OWNER’S EXHIBIT LIST
`
`
`
`Description
`
`Exhibit-2001 Complaint for Patent Infringement, Acceleration Bay LLC v.
`Activision Blizzard, Inc., Case No. 15-cv-00228 (D. Del. March
`11, 2015)
`
`Exhibit-2002 Proof of Service of Summons and Complaint, Acceleration Bay
`LLC v. Activision Blizzard, Inc., Case No. 15-cv-00228
`
`Exhibit-2003 Activision and Bungie Software Publishing and Development
`Agreement
`
`Exhibit-2004 Email from counsel for Bungie in Acceleration Bay LLC v.
`Activision Blizzard, Inc.
`[PROTECTIVE ORDER MATERIAL]
`
`Exhibit-2005 Email from counsel for Bungie in Acceleration Bay LLC v.
`Activision Blizzard, Inc.
`[PROTECTIVE ORDER MATERIAL]
`
`Exhibit-2006 Declaration of Dr. Fred B. Holt in Support of Patent Owner’s
`Response (IPR2015-01951)
`[PROTECTIVE ORDER MATERIAL]
`
`Exhibit-2007 Declaration of Virgil E. Bourassa in Support of Patent Owner’s
`Response (IPR2015-01951)
`[PROTECTIVE ORDER MATERIAL]
`
`Exhibit-2008 Declaration of Robert Abarbanel in Support of Patent Owner’s
`Response (IPR2015-01951)
`[PROTECTIVE ORDER MATERIAL]
`
`Exhibit-2009 Declaration of Scott Smith in Support of Patent Owner’s
`Response (IPR2015-01951)
`[PROTECTIVE ORDER MATERIAL]
`
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`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`
`
`Description
`
`Exhibit-2010 Boeing Invention Disclosure Form
`[PROTECTIVE ORDER MATERIAL]
`
`Exhibit-2011 Larry L. Peterson and Bruce S. Davie, Computer Networks – A
`Systems Approach (Third Edition), pages 166-170
`
`Exhibit-2012 Token-ring networks, available from
`https://www.ibm.com/support/knowledgecenter/en/ssw_ibm_i_61
`/rzajt/rzajttrncon.htm
`
`Exhibit-2013 Proposed Stipulated Protective Order
`
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`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`
`I.
`
`INTRODUCTION
`The Board should not institute inter partes review of claims 1–5, 7, 8, and
`
`11–13 of U.S. Patent 6,910,069 (Ex. 1001, “the ‘069 Patent”) at least because
`
`(1) Francis, Yallcast: Extending the Internet Multicast Architecture (Sept. 30,
`
`1999) (Ex. 1005, “Francis”) is not prior art to the ‘069 Patent, (2) Bungie, Inc.
`
`(“Bungie” or “Petitioner”) is barred under 35 U.S.C. § 315(b), (3) the same or
`
`substantially the same prior art and arguments have been previously presented to
`
`the USPTO, (4) Petitioner fails to identify “[h]ow the challenged claim is to be
`
`construed” under 37 C.F.R § 42.104(b)(3), and (5) Petitioner has not met its burden
`
`to demonstrate a reasonable likelihood that it would prevail in showing
`
`unpatentability of any challenged claim over the cited references.
`
`The inventors of the ‘069 Patent, who are currently consultants to
`
`Acceleration Bay LLC (“Patent Owner” or “AB”) helping to commercialize the
`
`‘069 Patent, invented the SWAN technology embodied in the ‘069 Patent in
`
`November 1996 and reduced the invention to practice no later than September 16,
`
`1999. See Ex. 2010 (Invention Disclosure (“IDF”)); Ex. 2006 (“Holt Decl.”); Ex.
`
`2007 (“Bourassa Decl.”); Ex. 2008 (“Abarbanel Decl.”); Ex. 2009 (“Smith Decl.”).
`
`Because the earliest date that Petitioner contends Francis was published September
`
`30, 1999, Francis is not prior art to the ‘069 Patent. Petition at 36.
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`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`Additionally, Activision Blizzard, Inc. (“Activision”) is a privy of Bungie
`
`and is a real-party-in-interest to this proceeding. Activision was first “served with a
`
`complaint alleging infringement of the patent” on March 12, 2015, which is more
`
`than one year before Bungie, Inc., filed this Petition. See Ex. 2001; Ex. 2002.
`
`Therefore, the Petition is barred under 35 U.S.C. § 315(b).
`
`The Board should also exercise its discretion to deny Petitioner’s proposed
`
`grounds under 35 U.S.C. § 325(d) because the Petition recycles substantially the
`
`same prior art as well as substantially the same arguments that were already
`
`presented to the Patent Office. In particular, Gilbert et al. U.S. Patent No.
`
`6,490,247 (Ex. 1021) (“Gilbert”) was already considered by the USPTO during
`
`original prosecution of the ‘069 Patent, and Petitioner rehashes the same arguments
`
`that the Office has already considered and rejected.
`
`Furthermore, the Petition should be rejected because Petitioner fails to
`
`identify “[h]ow the challenged claim is to be construed” under 37 C.F.R
`
`§ 42.104(b)(3). In particular, Petitioner improperly identifies the term “wherein a
`
`seeking computer contacts a fully connected portal computer” as requiring
`
`construction but refused to proffer a meaning for the term as required under 37
`
`C.F.R § 42.104(b)(3). See Petition at 35–36.
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`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`Apart from this multiplicity of threshold reasons that the Board should reject
`
`the Petition, there are abundant technical reasons why the ‘069 Patent is valid over
`
`Francis in view of Gilbert.
`
`Although there are a variety of reasons why the ‘069 Patent is valid over
`
`Petitioner’s asserted prior art references, this Preliminary Response focuses on
`
`only limited reasons why inter partes review should not be instituted. See
`
`Travelocity.com L.P. v. Cronos Techs., LLC, Case CBM2014-00082, Decision
`
`Denying Request for Rehearing, Paper 12 at 10 (P.T.A.B. Oct. 16, 2014)
`
`(“[N]othing may be gleaned from the Patent Owner’s challenge or failure to
`
`challenge the grounds of unpatentability for any particular reason.”). Accordingly,
`
`while Patent Owner reserves its right to advance additional arguments in the event
`
`that trial is instituted on any ground, the deficiencies of the Petition noted herein
`
`are more than sufficient for the Board to find that Petitioner has not met its burden
`
`to demonstrate a reasonable likelihood that it would prevail in showing
`
`unpatentability of any of the challenged claims.
`
`
`II.
`
`FACTS
`
`The idea to create the patented invention described in the ‘069 Patent first
`
`SWAN Development
`
`A.
`
`arose in 1996 as Boeing was acquiring airplane companies outside of the Puget
`
`Sound region of Washington. The systems that Boeing used at that time only
`
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`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`allowed for a two-person collaboration with a one-to-one connection. Holt Decl. ¶
`
`5; Bourassa Decl. ¶¶ 3, 4. Accordingly, Virgil Bourassa and Fred Holt—
`
`employees working in the Mathematics & Engineering Analysis Department at
`
`Boeing and eventual co-inventors of the SWAN Patents—were asked to create a
`
`system that would allow peer-to-peer communications for at least three participants
`
`across the country. Holt Decl. ¶ 5; Bourassa Decl. ¶¶ 3, 4, 7. However, they saw a
`
`need to create a more comprehensive system that would allow for the reliable
`
`communication between a significantly higher number of participants. Holt Decl.
`
`¶ 5; Bourassa Decl. ¶¶ 3, 4.
`
`Although the inventors initially believed this would be a task that would take
`
`no more than three weeks, this project unexpectedly turned into a three-year effort.
`
`Holt Decl. ¶¶ 9–26; Bourassa Decl. ¶¶ 8–41. Throughout those three years, the
`
`inventors had nearly thirty different epiphanies that led to the creation of a
`
`successful system that was able to provide peer-to-peer communications among
`
`computer processes across the world, all while maintaining high reliability and low
`
`latency. Bourassa Decl. ¶¶ 8–41. After extensive testing and realizations, the
`
`inventors had built a working model of SWAN by August 30, 1999, and had fully
`
`implemented SWAN into
`
`, an internal CAD program at Boeing, by
`
`September 16, 1999. Holt Decl. ¶¶ 9–26; Bourassa Decl. at ¶¶ 8–41; Abarbanel
`
`Decl. ¶¶ 4–10; Smith Decl. ¶¶ 3–5.
`
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`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`SWAN’s success and usefulness was made apparent when Boeing launched
`
`an initiative in 1999 to search for the best internal technologies that had
`
`commercial potential. Holt Decl. ¶ 27; Bourassa Decl. ¶ 42. SWAN was selected
`
`as one of these technologies with commercial potential and quickly rose to the top
`
`of the portfolio. Id. The SWAN system yielded the SWAN Patents which were
`
`filed on the same day, but are unrelated and directed to distinct aspects.
`
`B.
`
`The ‘069 Patent
`
`
`As discussed in the Background of the Invention section of the ‘069 Patent
`
`(the “Background”), point-to-point network protocols, such as UNIX pipes,
`
`TCP/IP, and UDP, allow processes on different computers to communicate via
`
`point-to-point connections. ’069 Patent at 1:44–46. However, the interconnection
`
`of all participants using point-to-point connections, while theoretically possible,
`
`does not scale well as the number of participants grows. Id. at 1:46–49. Because
`
`each participating process needs to manage its direct connections to all other
`
`participating processes, the number of possible participants is limited to the
`
`number of direct connections a given machine, or process, can support. Id. at
`
`1:49–55.
`
`The ‘069 Patent is one of several patents obtained by Boeing directed to its
`
`novel computer network technology that solved the central bottleneck problem of
`
`client/server networks, as well as the problems of management complexity and
`
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`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`limited supported connections of point-to-point networks. More particularly, the
`
`‘069 Patent describes using a broadcast channel that overlays a point-to-point
`
`network where each node, or participant, is connected to some—but not all—
`
`neighboring participants. For example, Fig. 2 of the ‘069 Patent, reproduced
`
`below, shows a network of twenty participants, where each participant is connected
`
`to four other participants:
`
`
`Id. at Fig. 2. Such a network arrangement, where each node in the network, is
`
`connected to the same number of other nodes, is known as an m-regular network.
`
`Id. at 4:38–39. That is, a network is m-regular when each node is connected to m
`
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`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`other nodes at least some of the time, and a computer would become disconnected
`
`from the broadcast channel only if all m of the connections to its neighbouring
`
`nodes fail. Id. at 4:39–42. In Fig. 2 above, m=4 because each node is connected to
`
`four other nodes of the network. A network is said to be m-connected when it
`
`would take a failure of m computers to divide the graph into disjoint sub-graphs,
`
`i.e., separate broadcast channels. Id. at 4:42–45. The ‘069 Patent also describes a
`
`computer network in which the number of network participants N (in Fig. 2, this is
`
`twenty) is greater than the number of connections m to each participant (in Fig. 2,
`
`this is four). Id. at Fig. 2. This network topology, where no node is connected to
`
`every other node, is known as an incomplete graph.
`
`The incomplete graph topology relies on participants to disseminate
`
`information to other participants. See id. at 1:58–2:13. As described in the ‘069
`
`Patent, to broadcast a message, the originating computer sends the message to each
`
`of its neighbors using the overlay network. Id. at 7:30–36. Each computer that
`
`receives the message then sends the message to its three other neighbors using the
`
`network. Id. at 7:37–49. In this way, the message is propagated to each computer
`
`of the overlay network using the underlying network, thus broadcasting the
`
`message to each computer over a logical broadcast channel.
`
`The invention claimed in the ’069 Patent focuses on a process for adding
`
`nodes, or participants, to an existing network. In order to join an existing network,
`
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`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`a seeking computer (e.g. node Z in Fig. 3B) locates and contacts a portal computer
`
`that is fully connected to the network. Id. at 5:20–22. The portal computer then
`
`identifies computers to which the seeking computer will connect. Id. at 5:42–45.
`
`Once identified, the seeking computer joins the network by connecting to the
`
`identified computers using the ‘069 Patent’s edge pinning process.
`
`Figs. 3A and 3B of the ‘069 Patent, reproduced below, illustrate the process
`
`of breaking connections between nodes (i.e., “edges”) in a graph to add new node
`
`Z. In particular, Fig. 3A illustrates a graph that includes edges (cid:2161)(cid:2158) and (cid:2160)(cid:2159). In
`order to add new node Z to the graph, edges (cid:2161)(cid:2158) and (cid:2160)(cid:2159) are broken, and edges (cid:2161)(cid:2182),
`(cid:2158)(cid:2182),(cid:2160)(cid:2182) and (cid:2159)(cid:2182) are added:
`
`
`Id. at Figs. 3A and 3B. As described in the ‘069 Patent, when a computer seeks to
`
`join a broadcast channel, previously connected computers break connections to
`
`each other in favor of new connections to the seeking computer:
`
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`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`Thus, some connections between computers need to be broken so that
`the seeking computer can connect to four computers. In one
`embodiment,
`the broadcast
`technique
`identifies
`two pairs of
`computers that are currently connected to each other. Each of these
`pairs of computers breaks the connection between them, and then
`each of the four computers (two from each pair) connects to the
`seeking computer. FIGS. 3A and 3B illustrate the process of a new
`computer Z connecting to the broadcast channel. FIG. 3A illustrates
`the broadcast channel before computer Z is connected. The pairs of
`computers B and E and computers C and D are the two pairs that are
`identified as the neighbors for the new computer Z. The connections
`between each of these pairs is broken, and a connection between
`computer Z and each of computers B, C, D, and E is established as
`indicated by FIG. 3B. The process of breaking the connection
`between two neighbors and reconnecting each of the former
`neighbors to another computer is referred to as “edge pinning” as
`the edge between two nodes may be considered to be stretched
`and pinned to a new node.
`
`Id. at 5:58–6:9 (emphasis added).
`
`The ‘069 Patent describes a problem that arises when a seeking computer
`
`connects to computers directly connected to the portal computer or directly
`
`connected to one of its neighbors: the diameter of the network increases as it
`
`“becomes elongated in the direction of where the new nodes are added.” See id. at
`
`6:63–7:6. This issue is illustrated in FIGS. 4A–4C, reproduced below:
`
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`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`
`
`
`
`Although Figs. 4B and 4C both illustrate graphs in which node K has been added
`
`to the graph shown in Fig. 4A, the diameter of the graph of Fig. 4B is three
`
`(because the longest, shortest path between two nodes (e.g. G and K) traverses
`
`three edges, (cid:2163)(cid:2157), (cid:2157)(cid:2161), and (cid:2161)(cid:2167)), while the diameter of the graph of Fig. 4C remains
`two edges, (cid:2165)(cid:2163) and (cid:2163)(cid:2167)).
`
`two (because the longest, shortest path between nodes, (e.g. I and K) traverses only
`
`In order to minimize the diameter of the graph as new nodes are added, the
`
`‘069 Patent describes a “random selection technique to identify” neighbors for a
`
`seeking computer. Id. at 7:20–24. This technique minimizes the graph diameter
`
`by distributing connections for new seeking computers throughout the graph
`
`instead of allowing the graph to elongate in any one direction. Id. at 7:25–28. In
`
`order to randomly select the computers to which the seeking computer will
`
`connect, the “portal computer sends an edge connection request through one of its
`
`internal connections that is randomly selected.” Id. at 13:36–38. The receiving
`
`computer then sends the edge connection request on a random one of its internal
`
`connections, and so on, until “the message has traveled far enough to represent a
`
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`

`Patent Owner’s Preliminary Response
`IPR2017-01600 (U.S. Patent No. 6,910,069)
`
`randomly selected computer.” Id. at 13:38–45. The randomly selected computer
`
`offers the internal connection on which it received the request to the seeking
`
`computer for edge pinning. Id. at 13:45–48.
`
` CLAIM CONSTRUCTION
`III.
`The Petition should be rejected Petitioner fails to identify “[h]ow the
`
`challenged claim is to be construed” under 37 C.F.R § 42.104(b)(3). In particular,
`
`although Petitioner identifies the term “wherein a seeking computer contacts a
`
`fully connected portal computer” as requiring construction in this case, it does not
`
`propose a construction for the term or for any claim elements within the term. See
`
`ams AG v. 511 Innovations, Inc., Case IPR2016-01792, Decision Denying
`
`Institution of Inter Partes Review, Paper 15 at 6–8 (P.T.A.B. Mar. 16, 2017)
`
`(denying a Petition for failure to provide an explicit construction for a disputed
`
`claim term); see also LG Display Co. v. Delaware Display Group LLC, Case
`
`IPR2014-01359, Decision Institution of Inter Partes Review, Paper 12 at 7
`
`(P.T.A.B. Mar. 2, 2015). By not providing an explicit construction for this claim
`
`term, “Petitioner improperly attempts to shift the burden of construing the claim
`
`term . . . to the Board.” ams AG, IPR2016-01792, Paper 15 at 8.
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`A.
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`
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`“wherein a seeking computer contacts a fully connected portal
`computer” (all challenged claims)
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`The term “wherein a seeking computer contacts a fully connected portal
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`computer” is properly construed in the context of the ‘069 Patent as “wherein a
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`seeking computer contacts a portal computer participant of the network that is
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`currently, or has been, previously connected to the three or more other
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`participants.” The claims and specification each supports this construction.
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`The specification of the ‘069 Patent defines what it means to be in a
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`“seeking connection state,” a “partially connected state,” and a “fully connected
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`state”:
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`A computer that has started the process of locating a portal computer,
`but does not yet have a neighbor, is in the “seeking connection state.”
`A computer that is connected to at least one neighbor, but not yet four
`neighbors, is in the “partially connected state.” A computer that is
`currently, or has been, previously connected to four neighbors is in the
`“fully connected state.”
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`‘069 Patent at 5:47–54; see also id. at 17:34–38 (“When a portal computer is
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`located that is connected and this routine connects to at least one neighbor, this
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`process enters the partially connected state, and when the process eventually
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`connects to four neighbors, it enters the fully connected state.”). Although this
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`embodiment indicates that a process on a computer is “fully connected” when it is,
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`or has, connected to four neighbors, other embodiments contemplate different
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`numbers of connections between a process and its neighboring processes. See id.
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`at 14:52–56 (“In the embodiment described above, each fully connected computer
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`has four internal connections. The broadcast technique can be used with other
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`numbers of internal connections. For example, each computer could have 6, 8, or
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`any even number of internal connections.”). Thus, in the context of independent
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`claim 1, a portal computer is fully connected when it is, or has been, connected to
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`“three or more other participants.” Id. at claim 1.
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`As noted above, despite identifying this term as one requiring construction
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`Petitioner fails to provide an explicit construction Instead, Petitioner points to a
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`number of meanings for the term “fully connected” that it contends are not covered
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`by the term. See Petition at 35. Thus, Petitioner fails to meet its burden under 37
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`C.F.R. § 42.104(b)(3) because its construction for the term attempts to define what
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`the term does not mean rather than what it does. See Petition at 35–36 (“Thus, to a
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`person of ordinary skill in the art, a “fully connected portal computer,” as the term
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`is used in claim 1, must be flexible enough to be consistent with these
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`considerations.”). This strategy would allow Petitioner to evolve its position on
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`the meaning of the claim term throughout the pendency of the case, which is at
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`odds with 37 C.F.R. § 42.104(b)(3)’s requirement that “the petition must set
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`forth… [h]ow the challenged claim[s are] to be construed.”
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`In any case, Petitioner’s negative-space arguments regarding the meaning of
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`the term “wherein a seeking computer contacts a fully connected portal computer”
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`are irrelevant, incorrect, or misleading. For example, as Petitioner is well aware,
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`the ‘069 Patent is directed to “incomplete networks” in which each participant is
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`connected to fewer than all of the other participants in the network. See, e.g. ‘069
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`Patent, Fig. 4A (showing the incomplete “broadcast channel of FIG. 1 with an
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`added computer.”). Thus its statement that the term “‘fully connected’ does not
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`appear to be limited to what that term would often mean in the field of computer
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`networking, i.e., a node or process that has a connection to every other node on the
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`network,” appears designed to obfuscate rather than elucidate by suggesting that
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`the term is somehow ambiguous despite it being defined in the specification of the
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`‘069 Patent. Petition at 35.
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`Petitioner also suggests that because the claims cover m-regular and m-
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`irregular network configurations that the term “fully connected” does not require
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`any particular degree of connectivity. See id. However, independent claim 1 itself
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`defines the minimum degree of connectivity for a participant in the network. See
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`‘069 Patent, claim 1 (reciting “each participant being connected to three or more
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`other participants”).
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`Petitioner’s statement about Gilbert’s ring topology also appears calculated
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`to muddy the waters rather than define the term “wherein a seeking computer
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`contacts a fully connected portal computer.” Petition at 35. In Gilbert, “the
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`additional node first contacts a node it knows to be already connected on the
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`network.” Gilbert at 6:31–34. However, that “already connected” node is
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`connected to an m=2 network, not one that is fully connected to a network in
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`which each participant has at least three neighbors.
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`Accordingly, the Board should deny the Petition under 37 C.F.R.
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`§ 42.104(b)(3). In the event that the Board does not deny the Petition on this basis,
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`the term “wherein a seeking computer contacts a fully connected portal computer”
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`should be construed as “wherein a seeking computer contacts a portal computer
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`participant of the network that is currently, or has been, previously connected to
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`the three or more other participants.”
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`IV.
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` FRANCIS IS NOT PRIOR ART
`As threshold matter, the claims of the ‘069 Patent should be found
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`patentable because the inventors of the ‘069 Patent conceived and reduced their
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`invention to practice no later than September 16, 1999, which predates Francis.
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`Based on the exhaustive evidence in the record, there is no doubt that the
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`inventors of the ‘069 Patent conceived and reduced to practice the ‘069 Patent
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`before the earliest publication date of Francis. This evidence includes the
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`Invention Disclosure Form detailing the SWAN system, the testimony of both
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`inventors, the testimony of the manager overseeing the production of the SWAN
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`system, testimony from a third-party who was part of the group that witnessed the
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`demonstration of SWAN, contemporaneous notes detailing the creation of SWAN
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`from 1997 through 1999, and even source code of the SWAN system dated before
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`September 16, 1999. See generally, Ex. 2010 (IDF); Holt Decl.; Bourassa Decl.;
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`Abarbanel Decl.; Smith Decl.; see also Cooper v. Goldfarb, 154 F.3d 1321, 1330
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`(Fed. Cir. 1998); Fleming v. Escort, Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014).
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`The SWAN project initially began in November of 1996 when Robert
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`Abarbanel, Virgil Bourassa’s supervisor in the Computer Science Group, asked
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`Mr. Bourassa to create a peer-to-peer communication platform that would support
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`more than two users. By March 27, 1997, the inventors had developed utility
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`software to calculate the diameter of a SWAN session, to array the nodes
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`according to their reference node, and to estimate the reliability of this session.
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`Holt Decl. ¶ 19. The following month, they had implemented the code necessary
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`to maintain regular graphs based on local information. Holt Decl. ¶ 20; Bourassa
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`Decl. ¶ 39. The