Trials@uspto.gov
`571.272.7822
`
`Paper No. 7
`Filed: November 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TALARI NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS IlIDIA LHvfiTED,
`Patent Owner.
`
`Case IPR2016-00977
`Patent 7,406,048 B2
`
`Before STACEY G. WHITE, MICHELLE N. WOR.Ml\1EESTER, and
`CHRJSTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 USC§ 314(a) and 37 C.F.R. § 42.108
`
`Cisco Systems, Inc.
`Exhibit 1004
`Page 1 of 150
`
`
`571.272.7822
`
`Paper No. 7
`Filed: November 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TALARI NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS IlIDIA LHvfiTED,
`Patent Owner.
`
`Case IPR2016-00977
`Patent 7,406,048 B2
`
`Before STACEY G. WHITE, MICHELLE N. WOR.Ml\1EESTER, and
`CHRJSTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 USC§ 314(a) and 37 C.F.R. § 42.108
`
`Cisco Systems, Inc.
`Exhibit 1004
`Page 1 of 150
`
`
`
`IPR2016-00977
`Patent 7 ,406,048 B2
`
`I. INTRODUCTION
`
`A. Background
`Talari Networks, Inc. ("Petitioner") filed a Petition (Paper 1, "Pet.")
`
`seeking to institute an inter partes review of claims 1-24 of U.S. Patent No.
`
`7,406,048 B2 (Ex. 1003, ''the '048 patent") pursuant to 35 U.S.C. §§ 311-
`
`319. FatPipe Networks India Limited ("Patent Owner") filed a Preliminary
`
`Response. (Paper 6, "Prelim. Resp."). We have jurisdiction under 35
`
`U.S.C. § 314(a), which provides that an inter partes review may not be
`
`instituted "unless ... there is a reasonable likelihood that the petitioner
`'
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition."
`
`Petitioner contends the challenged claims are unpatentable under
`
`35 U.S.C. §§ 102 and 103 on the following specific grounds (Pet. 10-60):
`
`Reference(s)
`
`Karol 1
`
`Karol and Stallings2
`Karol
`
`§ 102
`
`Basis Claims Challenged
`1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18, 19,
`21, 22, and 24
`§ 103 1-5, 7-11, 13-17, and 19-23
`§ 103 1-24
`
`Our factual findings and conclusions at this stage of the proceeding are
`
`based on the evidentiary record developed thus far (prior to Patent Owner's
`
`Response). This is not a final decision as to patentability of claims for
`
`which inter partes review is instituted. Our final decision will be based on
`
`1 U.S. Patent No. 6,628,617 Bl ("Karol," Ex. 1006).
`2 William Stallings, Data and Computer Communications, Prentice-Hall, 5th
`Ed, 1997, ISBN-81-203-1240-6 ("Stallings," Ex. 1011).
`
`2
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`Cisco Systems, Inc.
`Exhibit 1004
`Page 2 of 150
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`
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`IPR2016-00977
`Patent 7 ,406,048 B2
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`the record as fully developed during trial. For reasons discussed below, we
`
`institute inter partes review of claims 1-24 of the '048 patent.
`
`B. Related Proceedings
`The parties inform us FatPipe, Inc. v. Talari Networks, Inc., No.
`
`5:16-CV-54-BO (E.D.N.C.), may be impacted by this proceeding. Pet. 1,
`
`Paper 5, 1-2. In addition, Petitioner seeks inter partes review of a related
`
`patent, U.S. Patent No. 6,775,235 B2 (IPR2016-00976). Id.
`
`C ThP. 'n4R PntP.nt
`
`The '048 patent describes a system and method for communicating
`
`using two or more disparate networks in parallel. Ex. 1003, 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.
`
`INTERNET 500
`
`ROUTERX
`104
`
`ROUTERZ
`104
`
`SITE A
`1Q2.
`
`CONTROLLER
`A~
`
`CONTROLLER
`B Q.Q2.
`
`SITE B
`1Q2.
`
`ROUTERY
`105
`
`ROUTERW
`105
`
`FRAME RELAY NETWORK 106
`Fig. 10
`
`3
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`Cisco Systems, Inc.
`Exhibit 1004
`Page 3 of 150
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`IPR2016-00977
`Patent 7,406,048 B2
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`Figure 10 depicts an example of the network topology described in the '048
`
`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(cid:173)
`
`balancing, redundancy, or other criteria to be used dynamically, on a
`
`granularity as fine as packet-by-packet, to direct packets to an Internet router
`
`and/or frame relay/point-to-point router according to the criteria." Id. at
`
`9:12-17.
`
`Figure 7 of the '048 patent is reproduced below.
`
`SITE w
`
`MULTIPLE DISPARATE NETWORK ACCESS
`CONTROLLER 602
`
`SITE INTERFACE 702
`PACKET PATH SELECTOR (E.G .• LOAD
`BALANCING, REDUNDANCY. SECURITY) 704
`
`INTERFACE
`706
`
`INTERFACE
`706
`
`INTERFACE
`706
`
`TOA
`NETWORK
`BY PATI I
`A1
`
`TOA
`NETWORK
`BY PATH
`A2
`
`TOA
`NETWORK
`BY PATH
`A3
`
`Fig. 7
`
`Figure 7 depicts controller 602. Id. at 10:59-60. Controller 602 is
`
`connected to site 102 via site interface 702. Id. at 10:60-63. Packet path
`
`selector 704 is hardware or software that determines which path a given
`
`packet is to travel. Id. at 11 :2-6. The criteria used to determine which path
`
`a packet travels may be based on concerns such as redundancy,
`
`load-balancing, or security. Id. at 11 :9-63. Controller 602 also has two or
`
`4
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`Cisco Systems, Inc.
`Exhibit 1004
`Page 4 of 150
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`IPR2016-00977
`Patent 7,406,048 B2
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`more network interfaces 706 (at least one per each network for which
`
`controller 602 controls access). Id. at 11 :64--67.
`
`D. Illustrative Claims
`As noted above, Petitioner challenges claims 1-24 of the '048 patent,
`
`of which claims 1, 7, 13, and 19 are independent. Claims 1 and 7 are
`
`illustrative of the challenged claims and are reproduced below:
`
`1. A controller which controls access to multiple independent
`disparate networks in a parallel network configuration,
`the dieparate net\vorks comprising at least one private
`network and at least one network based on the Internet,
`the controller comprising:
`a site interface connecting the controller to a site;
`at least two network interfaces which send packets toward the
`disparate networks; and
`a packet path selector which selects between network
`interfaces, using at least two known location address
`ranges which are respectively associated with disparate
`networks, according to at least: a destination of the
`packet, an optional presence of alternate paths to that
`destination, and at least one specified criterion for
`selecting between alternate paths when such alternate
`paths are present;
`wherein the controller receives a packet through the site
`interface and sends the packet through the network
`interface that was selected by the packet path selector.
`
`7. A method for combining connections for access to disparate
`parallel networks, the method comprising the steps of:
`receiving at a controller a packet which has a first site IP
`address as source address and a second site IP address as
`destination address;
`selecting, within the controller on a per-packet basis, between a
`path through an Internet-based network and a path
`through a private network that is not Internet-based; and
`forwarding the packet along the selected path toward the second
`site.
`
`5
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`Cisco Systems, Inc.
`Exhibit 1004
`Page 5 of 150
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`IPR2016-00977
`Patent 7,406,048 B2
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`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.lOO(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).
`
`Petitioner and Patent Owner both decline to seek construction of any
`
`terms at this time. Pet. 7; Prelim. Resp. 8. We reviewed the asserted
`
`grounds, and, for the purposes of this Decision, we have determined that no
`
`terms require express construction. See Vivid Techs., Inc. v. Am. Sci. &
`
`Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`III. ANALYSIS
`
`We tum to Petitioner's asserted grounds of unpatentability to
`
`determine whether Petitioner has met the threshold of 35 U.S.C. § 314(a).
`
`A. Asserted Ground of Anticipation over Karol
`Petitioner asserts that claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18, 19,
`
`21, 22, and 24 are anticipated by the disclosures of Karol. Pet. 10-30.
`
`Petitioner supports its arguments with a declaration from Dr. Kevin Negus.
`
`Ex. 1005. For the reasons described below, we are persuaded that Petitioner
`
`has made a showing sufficient to satisfy the threshold of§ 314(a) as to its
`
`6
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`Cisco Systems, Inc.
`Exhibit 1004
`Page 6 of 150
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`Patent 7,406,048 B2
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`asserted anticipation of claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18, 19, 21,
`
`22, and 24.
`
`1. Overview of Karol
`Karol is directed to "the intemetworking of connectionless (e.g.,
`
`Internet Protocol or 'IP') and connection oriented (e.g., ATM, MPLS,
`
`RSVP) networks." Ex. 1006, 1 :7-10. Connectionless ("CL") networks
`
`require no explicit connection setup prior to transmitting datagrams. Id at
`
`1: 19-24. In contrast, connection oriented ("CO") networks determine a
`
`route for the connection and allocate bandwidth resources along the route.
`
`Id. at 1:31-39. Figure 1 of Karol is reproduced below.
`FIG. 1
`
`Cl-CO GATEWAY
`
`140
`
`CL-CO GATEWAY
`
`150
`
`160
`
`Figure 1 depicts CO and CL networks in a parallel configuration. Id. at
`
`4: 12-14. Datagrams ultimately destined for endpoint 151 may be sent from
`
`source 101 to node 111 in CL network 110. Id. at 4:39-40. The datagrams
`
`may be routed over either the CO or CL network in order to arrive at
`
`endpoint 151. Id. at 4:40-43. CL-CO gateways 140 and 150 interconnect
`
`the CL and CO networks and "allow[] datagrams (sometimes hereinafter
`
`called messages) originated on the CL network to be transported ... on the
`
`7
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`Cisco Systems, Inc.
`Exhibit 1004
`Page 7 of 150
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`IPR2016-00977
`Patent 7,406,048 B2
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`CO network." Id. at 3:30-37. "When a datagram arrives at CL-CO gateway
`
`140 of FIG. 1, a determination is made if that packet should be carried by
`
`CO network 160." Id. at 5:23-25. CL-CO gateway 140 is described in more
`
`detail in Figure 4, which is reproduced below.
`
`FIG. 4
`
`401
`lfUT
`I.I[ CARDS
`
`- : USERMTA
`·----: CONIRll
`
`Figure 4 illustrates the internal arrangements of CL-CO gateway 140. Id. at
`
`6:31-32.
`
`in
`Generally speaking, each CL-CO gateway arranged
`accordance with the present invention includes hardware and
`software modules that typically comprise (a) a switch fabric for
`CO networking, shown in PIG. 4 as CO switch 410, (b) a CL
`packet forwarding engine, shown in FIG. 4 as CL router/switch
`420, (c) a protocol converter 450, (d) a moderately sized packet
`buffer 440 for temporarily storing packets waiting for CO
`network setup or turnaround; and
`(e) a processor 430 and
`associated database 431 for controlling the gateway packet
`handling operations and for storing forwarding, flow control,
`header translation and other information. Input line cards 401
`and output line cards 402 connect the gateway of FIG. 4 to
`external networks, such that datagrams received in input line
`cards 401 can be directed either to CO switch 410 or CL
`router/switch 420, and such that output line cards 402 can receive
`
`8
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`Exhibit 1004
`Page 8 of 150
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`datagrams from either of the last mentioned elements and direct
`them to external networks.
`
`Id. at 6:32-50. The elements depicted i.n Figure 4 are controlled by
`
`processor 430 and such control is implemented via programs stored in the
`
`processor. Id. at 6:55-59. The routing procedures used by gateway 140
`
`may adjust routing dynamically "to divert connections away from
`
`overloaded call processors." Id. at 17:64-67. In other words, routing "can
`
`be adjusted to reflect bandwidth availability." Id. at 18:1-2.
`
`2. Independent Claims 1 and 13
`Claim 1 recites a controller which controls access to multiple
`
`networks. Independent claim 13 recites limitations similar to those of claim
`
`1, and Petitioner cites similar disclosures from Karol in support of its
`
`contention that claim 13 is anticipated by Karol. Compare Pet. 10-18
`
`(assertions regarding claim 1) with Pet. 27 (assertions regarding claim 13).
`
`In addition, Patent Owner puts forth similar arguments in with respect to
`
`Petitioner's contentions regarding claims 1 and 13. For brevity, we shall
`
`discuss these claims together. Petitioner's arguments as to independent
`
`claims 1 and 13 may be summarized as follows: Petitioner argues in the
`
`alternative that the claimed controller that provides access to multiple
`
`networks may be either Karol's CL-CO gateway alone or the gateway in
`
`combination with one or more routers or switches. Pet. 10-12. If the
`
`controller is the gateway alone, then Petitioner asserts that the site interface
`
`is disclosed by one or more of Karol's input line cards 401 or the network
`
`connection depicted in Figure 1 between source 101 and node 111. Id. at 12.
`
`If the controller is the gateway in combination with routers and/or switches,
`
`then the site interface is a network connection. Id. at 12-13. As to the "at
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`9
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`Exhibit 1004
`Page 9 of 150
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`Patent 7,406,048 B2
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`least two network interfaces," Petitioner relies on Karol's disclosure of at
`
`least two output line cards 402 that receive datagrams from the CO switch or
`
`CL router/switch and directs the datagrams to external networks. Id. at 13-
`
`14. In regard to the packet path selector, Petitioner points to Karol's
`
`gateway processor, CL router/switch, CO switch, packet buffer, protocol
`
`converter and input line cards to disclose this element of the claim. Id. at 14.
`
`These items work together in Karol to determine if a packet ("datagram")
`
`from a source should be forwarded to either the CL or CO network. Id. at
`
`14-15. On the record before us, we find Petitioner's arguments and
`
`evidence to be persuasive.
`
`Patent Owner argues that Karol does not disclose the recited path
`
`selection factors (Prelim. Resp. 51) nor does it disclose the selection of paths
`
`on a per packet basis (id. at 45). Patent Owner supports its contentions with
`
`a declaration from Joel Williams. Ex. 2001. We address each of Patent
`
`Owner's arguments in tum.
`
`Claim 13 recites, in relevant part,
`
`a packet path selector which selects between network
`interfaces, using at least two known location address ranges
`which are respectively associated with disparate networks,
`according to at least:
`[ 1] a destination of the packet,
`[2] an optional presence of alternate paths to that
`destination, and
`[3] at least one specified criterion for selecting between
`alternate paths when such alternate paths are present;
`
`Ex. 1003, 16:64-17:4. Patent Owner asserts that Petitioner failed to
`
`establish that Karol discloses these three factors for path selection. Prelim.
`
`3 Claim 13 contains similar language. Ex. 1003, 18:4-8.
`
`10
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`Cisco Systems, Inc.
`Exhibit 1004
`Page 10 of 150
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`Resp. 35-36, 43-45. Petitioner asserts that Karol's gateway processor, CL
`
`router/switch, CO switch, packet buffer, protocol converter and input line
`
`cards disclose the packet path selector. Pet. 14. According to Petitioner,
`
`packets are routed by comparing information in each packet received at the
`
`CL-CO gateway with the information in the routing tables (datagram
`
`forwarding database 432 in the CL network and flow database 433 in the CO
`
`network). Id. at 15. As to the three factors, Petitioner asserts that [1]
`
`Karol's gateway processor compares the destination address of each
`
`received packet to fields in both the routing databases; [2] the gateway
`
`processor only forwards a packet to the CO network when a valid
`
`connection exists; and [3] forwarding occurs based upon the needs of a
`
`particular flow or to avoid congested links. Id. at 16-17 (citing Ex. 1005
`
`~~ 183, 184-186).
`
`Patent Owner disputes Petitioner's analysis of Karol and argues that
`
`the path selection is based on flows that have been predefined by service
`
`contracts and not the recited factors. Prelim. Resp. 43. It is Patent Owner's
`
`contention that a node's use of CL-CO gateway 140 to access the CO
`
`network is dependent upon pre-defined, user-specified service requirements.
`
`Id. We note, however, that Karol states that "not all nodes of the CL
`
`network need to have the ability to make redirect decisions." Ex. 1006,
`
`2:33-34. Petitioner's arguments are directed to the nodes that have been
`
`configured to redirect traffic to a CO network. These nodes connect to
`
`CL-CO gateways wherein "decisions [are] made whether to continue
`
`carrying the information in CL mode, or to redirect the traffic to a CO
`
`network." Id. at 2:16-19. These gateways have "a processor containing
`
`11
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`Cisco Systems, Inc.
`Exhibit 1004
`Page 11 of 150
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`logic for controlling the gateway packet handling operations." Id. at 2:26-
`
`28.
`
`Patent Owner argues that the pre-set criteria used by Karol's
`
`processors does not provide dynamic routing. Prelim. Resp. 44. Karol
`
`describes, however, applying pre-set criteria in a dynamic fashion. One of
`
`Karol's purported advantages is that "bandwidth can be dynamically
`
`allocated to flows on an as-needed basis." Ex. 1006, 17:25-26. Thus, on
`
`this record, we are persuaded that Petitioner has made a sufficient showing
`
`that Karol discloses the claimed packet path selection based on the recited
`
`factors.
`
`Patent Owner argues that Karol does not disclose "two known
`
`location address ranges which are respectively associated with disparate
`
`networks." Prelim. Resp. 36-39. Patent Owner argues that when Karol's
`
`gateways redirect traffic to the CL network the routing table is overridden
`
`and source routing is used in place of the routing table. Id. at 36-37 (citing
`
`Ex. 2001~~75-77). In support of its argument, Patent Owner cites a
`
`portion of Karol discussing the processing performed if the connection to the
`
`CO network has not yet been set up. See id. (citing Ex. 1006, 11 :27-31;
`
`8:51-55). In this situation, a datagram may be placed in a packet buffer and
`
`then forwarded to the CL network using source routing. Ex. 1006, 11 :21-
`
`26. This, however, is not the only routing discussed in Karol, which also
`
`discloses "creating routing tables that enable data flow from the CL network
`
`to the CO network." Id. at 8: 1-2. The routing tables used by the gateways
`
`may be either generic or user-specific. Id. at 16:3-9. These routing tables
`
`are maintained at the gateways. Id. at 14:50-51. The gateways use the
`
`information in these tables to "determine[] the shortest paths to IP
`
`12
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`Exhibit 1004
`Page 12 of 150
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`destinations by comparing its path on the two networks for each
`
`destination." Id. at 14:57-59. The gateway maintains a list of the shortest
`
`paths in its routing table. Id. at 14:60-65. Thus, on this record, we are
`
`persuaded that Karol discloses the recited address ranges.
`
`On the current record, we are persuaded by Petitioner's contention
`
`that independent claims 1 and 13 are anticipated by Karol. Thus, Petitioner
`
`has demonstrated a reasonable likelihood of prevailing on its assertion that
`
`independent claims 1 and 13 are unpatentable over Karol.
`
`3. Independent Claims 7 and 19
`Claim 7 recites a method for combining connections for access to
`
`multiple parallel disparate networks. Independent claim 19 recites
`
`limitations similar to those of claim 7, and Petitioner cites similar
`
`disclosures from Karol in support of its contention that claim 19 is
`
`anticipated by Karol. Compare Pet. 22-26 (assertions regarding claim 7)
`
`with Pet. 28-29 (assertions regarding claim 19). In addition, Patent Owner
`
`puts forth similar arguments with respect to Petitioner's contentions
`
`regarding claims 7 and 19. For brevity, we shall discuss these claims
`
`together. Petitioner's allegations regarding independent claims 7 and 19
`
`may be summarized as follows: Karol discloses combining multiple parallel
`
`disparate networks through its discussion of intemetworking CL and CO
`
`networks. Pet. 11-12; see Ex. 1006, 1:7-10. Karol discloses a controller
`
`(CL-CO gateway alone on in combination with routers and/or switches) with
`
`an interface that connects the controller with source and destination
`
`endpoints. Pet. 22. Karol discloses IP addresses for the source and
`
`destination in its discussion of routing tables (datagram forwarding database
`
`432 in the CL network and flow database 433 in the CO network). Id. at 17-
`
`13
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`Cisco Systems, Inc.
`Exhibit 1004
`Page 13 of 150
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`18; Ex. 1005 if 308 (citing Ex. 1006, 7:42-54). According to Petitioner,
`Karol "selects the CL or CO network by comparing information such as the
`
`destination address for each datagram to information in routing tables." Id.
`at 25 (citing Ex. 1005 ifif 324-329). On the record before us, we find
`Petitioner's arguments and evidence to be persuasive.
`
`Patent Owner argues that Karol does not disclose the selection of
`
`paths on a per-packet basis as required by claim 7. Prelim. Resp. 45.
`
`According to Patent Owner, "Karol relies on routing decisions that were
`
`made for a flow of datagrams" and not individual packets. Id. at 46; see Ex.
`
`1006, 15 :29-30 ("user-specific routing then determines which user's flows
`
`are sent to the CO network"). This argument, however, does not take into
`
`account Karol's determinations that are made at the packet level. In Karol,
`
`"[w]hen a datagram arrives at a CO-CL gateway 140 ... a determination is
`
`made if that packet should be carried by CO network 160." Ex. 1006, 5:23-
`
`25 (emphasis added). Some, but not all, traffic flows are configured to
`
`access the CO network. Id. at 5:25-27. Thus, one of the user-specified
`
`criteria to be evaluated is whether a particular packet is part of a traffic flow
`
`that may be redirected. Id. at 5:24-37; see also id. at 7:42-46 (discussing
`
`the flow database's storage of "information used to determine how to handle
`
`packets from flows requiring connection oriented service" (emphasis
`
`added)). Patent Owner cites Figure 5 of Karol in support of its argument.
`
`Prelim. Resp. 47. Step 503 of this Figure, however, examines whether "this
`
`is a packet from a flow that needs CO Service." Ex. 1006, Fig. 5. Thus, on
`
`this record, we are persuaded that Karol discloses examining packets in
`
`order to select the network interface.
`
`14
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`Cisco Systems, Inc.
`Exhibit 1004
`Page 14 of 150
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`On the current record, we are persuaded by Petitioner's contention
`
`that independent claims 7 and 19 are anticipated by Karol. Thus, Petitioner
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`has demonstrated a reasonable likelihood of prevailing on its assertion that
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`independent claims 7 and 19 are unpatentable over Karol.
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`4. Dependent Claims
`Petitioner asserts that dependent claims 3, 4, 6, 9, 10, 12, 15, 16, 18,
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`21, 22, and 24 are anticipated by Karol. Pet. 18-22, 26-30. Claims 3, 4,
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`and 6 depend from claim 1. Claims 9, 10, and 12 depend from claim 7.
`
`Claims 15, 16, and 18 depend from claim 13. Claims 21, 22, and 24 depend
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`from claim 19. The contentions regarding these claims rely on similar
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`disclosures from Karol and, for the purpose of brevity, they shall be
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`discussed together.
`
`Claims 3, 9, 15, and 21 each recite selecting between network
`
`interfaces according to load balancing criterion. Petitioner points out that
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`Karol discloses that ''the advantage to a user is that the user can ask for and
`
`receive a guaranteed quality of service for a specific flow" and in addition
`
`the "advantage to a service provider is that bandwidth utilization in a
`
`packet-switched CO network is better than in a CL network with
`
`precomputed routes since bandwidth can be dynamicallv allocated to flows
`
`on an as-needed basis." Pet. 18 (citing Ex. 1006, 17:18-26; Ex. 1005
`
`~ 222). Patent Owner asserts that load balancing is not taught by Karol
`
`because the CO is the preferred network. Prelim. Resp. 26. According to
`
`Patent Owner, Karol describes the CO network as the faster, preferred
`
`network, and that the gateway should use the CO network if it is available.
`Id. at 28. Mr. Williams testifies that CO connections are shown as faster and
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`thus, the system does not balance between the networks because it favors the
`CO network. Ex. 2001 il 60.
`On this record, we disagree with Patent Owner's analysis of Karol.
`
`The decision whether to set up a connection to a CO network is "based on
`
`user-specified service requirements and the traffic situation in the CL and
`
`CO networks." Ex. 1006, 5:35-38 (emphasis added). Thus, Karol describes
`
`the network load as being part of the decision whether to redirect packets.
`
`On the record before us, we are persuaded that Karol teaches or at least
`
`suggests the recited load balancing. We find persuasive Petitioner's
`
`assertion that Karol teaches load balancing through its discussion of
`
`diverting connections away from overloaded call processors and diverting
`
`connections away from congested links. Ex. 1006, 17:65-18:2. Thus, we
`
`are persuaded that Petitioner made a sufficient showing in regards to this
`
`limitation. Therefore, we are persuaded that Petitioner has put forth a
`
`sufficient showing for claims 3, 9, 15, and 21.
`
`As to dependent claims 4, 6, 10, 12, 16, 18, 22, and 24, on this record,
`
`we also are persuaded that Petitioner has met the threshold of§ 314(a) for
`
`these claims. Claims 4, 10, 16, and 22 each recite selecting between
`
`network interfaces according to reliability criterion. Petitioner asserts that
`
`Karol discloses the routing based on "reliability associated with bandwidth
`availability." Pet. 19-20 (citing Ex. 1005 il 243). In regards to claims 6, 12,
`18, and 24, which further recite ''wherein the controller sends packets from a
`
`selected network interface to a point-to-point network," Petitioner relies on
`
`Karol's disclosure of a CO network with "point-to-point links" to disclose
`
`this limitation. Pet. 21 (citing Ex. 1006, 6:25-28, 13:62--67; Ex. 1005
`il 2 81 ). At this time, Patent Owner has not put forth any additional
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`arguments directed to the assertions of unpatentability directed to claims 4,
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`6, 10, 12, 16, 18, 22, and 24. Based on our review of the current record, we
`
`are persuaded that Petitioner has made a sufficient showing as to the
`
`unpatentability of claims 3, 4, 6, 9, 10, 12, 15, 16, 18, 21, 22, and 24 over
`
`the disclosures of Karol.
`
`For all of the foregoing reasons, we institute inter partes review of
`
`claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18, 19, 21, 22, and 24 on the
`
`asserted ground of anticipation over the disclosures of Karol.
`
`B. Asserted Obviousness over Karol
`Petitioner asserts that claims 1-24 would have been obvious over the
`
`teachings of Karol. Pet. 42-60. Petitioner supports its arguments with a
`
`declaration from Dr. Negus. Ex. 1005. For the reasons described below, we
`
`are persuaded that Petitioner has made a showing sufficient to satisfy the
`
`threshold of§ 314( a) as to its asserted obviousness of claims 1-24.
`
`Petitioner relies upon similar disclosures from Karol in support of
`
`both its asserted anticipation and obviousness grounds for claims 1, 3, 4, 6,
`
`7, 9, 10, 12, 13, 15, 16, 18, 19, 21, 22, and 24. Compare Pet. 10-30
`
`(asserted anticipation) with id. at 42-60 (asse11ed obviousness). Petitioner
`
`provides additional argument to support its contention that the challenged
`
`claim limitations would have been obvious over the disclosures of Karol.
`
`For example, Petitioner explains how Karol, when viewed in conjunction
`
`with knowledge of one of ordinary skill in the art, would have taught the
`
`limitations of claim 1 even if this Board were to construe the term "private
`
`network" to mean "a frame relay or point-to-point network." Id. at 43. We
`
`decline to construe this term because it is at least as broad as the possible
`
`construction discussed in regards to this ground and for the purposes of this
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`decision, we do not need an explicit construction of the scope and meaning
`
`of this term.
`
`Dependent claims 2, 5, 8, 11, 14, 17, 20, and 23 were not asserted to
`
`be anticipated by Karol, but they are asserted to be obvious over this
`
`reference. Pet. 48, 52, 56, 58-60. Claims 2, 8, 14, and 20 respectively
`
`depend from claims 1, 3, 13, and 19. These dependent claims specify that
`
`the recited disparate networks are a frame relay network and the Internet.
`
`As to claims 5, 11, 17, and 23 these claims respectively depend from claims
`
`1, 3, 13, and 19. These dependent claims recite sending packets to a VPN.
`
`Petitioner asserts that one of ordinary skill in the art would have substituted
`
`a well-known frame relay network (Pet. 48-49) or VPN (id. at 49) in place
`
`of Karol's CL network. Petitioner asserts that it would have been obvious to
`
`try this substitution because there were "only a finite number of CL
`
`networks appropriate to the disclosures in Karol." Id. at 49 (citing Ex. 1005
`if 212); Id. at 53 (citing Ex. 1005 if 271). At this time, Patent'Owner makes
`no separate arguments directed to these contentions.
`
`We are persuaded that Petitioner has made a sufficient showing as to
`
`the asserted obviousness of claims 1-24. Patent Owner puts forth the same
`
`arguments regarding the alleged insufficiency of Petitioner's arguments and
`
`evidence with a few additional points. The points that we believe merit
`
`additional discussion are addressed below.
`
`First, Patent Owner argues that this asserted ground is defective
`
`because it relies on alternative constructions. Prelim. Resp. 55-58.
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`Alternative legal arguments, however, are permissible under Federal Rule of
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`Civil Procedure§ 8(d). See FRCP § 8(d)(2) (allowing "2 or more statements
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`of a claim of defense alternatively or hypothetically"); see also id. at
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`Page 18 of 150
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`§ 8( d)(2) ("A party may state as many separate claims or defenses as it has,
`
`regardless of consistency"). Such arguments applying different potential
`
`constructions to the asserted challenges are proper and could be helpful if
`
`they provide us with the benefit of Petitioner's arguments as to why its
`
`challenges should succeed under different possible claim constructions.
`
`Second, Patent Owner argues that Petitioner has not provided a proper
`
`obviousness analysis. Prelim. Resp. 51-54. According to Patent Owner,
`
`Petitioner "failed to describe the scope and content of the prior art and the
`
`differences between the prior art and the claims at issue as required." Id. at
`
`51. We disagree. Petitioner argues in the alternative that the challenged
`
`claims are anticipated or at least obvious over Karol. See Pet. 42-48.
`
`Petitioner maintains that the limitations of the challenged claims are
`
`disclosed by Karol, but Petitioner also includes arguments in its Petition
`
`contending that certain claim limitations are obvious if the Board were to
`
`require a more narrow construction for certain claim terms. Id. As
`
`discussed above, we find such an argument strategy to be proper and helpful.
`
`Third, Patent Owner argues that Karol teaches away from the address
`
`ranges recited in claims 1 and 13. Prelim. Resp. 41-42. This argument is
`
`based on Patent Owner's analysis of Karol's disclosures related to the
`
`routing of packets during the setup of the connection to the CO network.
`
`See id. As noted above in Section II.A.2, this is not the portion of Karol that
`
`is relied upon to teach this limitation. We disagree with Patent Owner's
`
`arguments and find persuasive Petitioner's evidence and arguments as to
`
`these claims.
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`For all of the foregoing reasons, we institute inter partes review of
`
`claims 1-24 on the asserted ground of obviousness over the disclosures of
`
`Karol.
`
`C. Asserted Obviousness over Karol and Stallings
`1. Overview of Stallings
`Stallings is a book
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