Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 14
` Entered: February 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS PRIVATE LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01845
`Patent 6,775,235 B2
`____________
`
`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 14
` Entered: February 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS PRIVATE LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01845
`Patent 6,775,235 B2
`____________
`
`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-01845
`Patent 6,775,235 B2
`
`
`I. INTRODUCTION
`
`A. Background
`Cisco Systems, Inc. (“Cisco,” “Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1, 4–15, and 19–24 (“the
`challenged claims”) of U.S. Patent No. 6,775,235 B2 (Ex. 1001, “the ’235
`patent”). FatPipe Networks Private Ltd. (“Patent Owner”)1 filed a
`Preliminary Response (Paper 9, “Prelim. Resp.”). Cisco Systems filed a
`Reply to the Preliminary Response (Paper 11, “Reply”), and FatPipe
`Networks filed a sur-reply (Paper 12, “Sur-Reply”).
`Upon consideration of the Petition, Preliminary Response, Reply, and
`Sur-Reply, we are persuaded, under 35 U.S.C. § 314(a), that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in showing the
`unpatentability of the challenged claims of the ’235 patent. Accordingly, we
`institute an inter partes review of those claims.
`
`B. Related Matters
`Petitioner identifies the following as matters that could affect, or be
`affected by, a decision in this proceeding: FatPipe, Inc. v. Viptela, Inc.,
`Case No. 1:16-cv-00182 (D. Del.); FatPipe, Inc. v. Talari Networks, Inc.,
`Case No. 5:16-cv-00054 (E.D.N.C.); FatPipe, Inc. v. Talari Networks, Inc.,
`Case No. 6:16-cv-00458 (E.D. Tex.); Talari Networks, Inc. v. FatPipe
`Networks Private Ltd., Case IPR2016-00976 (PTAB); Viptela, Inc. v.
`FatPipe Networks Private Ltd., Case IPR2017-00684 (PTAB); Viptela, Inc.
`v. FatPipe Networks Private Ltd., Case IPR2017-01125 (PTAB). Pet. 7.
`
`
`1 FatPipe Networks Private Ltd. identifies FatPipe, Inc. as a real party-in-
`interest. Paper 3, 2.
`
`2
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`Patent 6,775,235 B2
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`Patent Owner identifies the same matters and, in addition, identifies
`the following matters that are directed toward related U.S. Patent No.
`7,406,048: Talari Networks, Inc. v. FatPipe Networks Private Ltd., Case
`IPR2016-00977 (PTAB); Viptela, Inc. v. FatPipe Networks Private Ltd.,
`Case IPR2017-00680 (PTAB); Viptela, Inc. v. FatPipe Networks Private
`Ltd., Case IPR2017-01126 (PTAB); Cisco Systems, Inc. v. FatPipe Networks
`Private Ltd., Case IPR2017-01846 (PTAB). Paper 3, 2–3.
`
`C. Evidence Relied Upon2
`
`Reference
`
`The ’235 Patent
`(“AAPA”)3
`Guerin
`
`Monachello
`
`Date
`US 6,775,235 B2 pre-Dec. 29,
`2000
`Jan. 8, 1999
`Aug. 6, 1999
`
`US 6,243,754
`
`US 6,748,439
`
`Exhibit
`
`Ex. 1001
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Vijay Bollapragada et al., Inside Cisco IOS
`Software Architecture (2000)
`(“Bollapragada”)
`Shaffer
`
`US 6,122,743
`
`July 28, 20004
`
`Mar. 31, 1998 Ex. 1012
`May 7, 19995 Ex. 1014
`
`Dennis Fowler, Virtual Private Networks
`(1999) (“Fowler”)
`
`2 Petitioner also relies on the Declaration of Narasimha Reddy, Ph.D. Ex.
`1005.
`3 Petitioner identifies Figures 1–5 of the ’235 patent, all of which are
`labelled “PRIOR ART,” as applicant admitted prior art (“AAPA”). See Pet.
`21; Ex. 1001, 5:8–28, Figs. 1–5.
`4 See Ex. 1009 ¶ 2 (declaration of David Bader, testifying the copyright
`registration for Bollapragada identifies its publication date as July 28, 2000).
`5 See Ex. 1009 ¶ 3 (declaration of David Bader, testifying the copyright
`registration for Fowler identifies its publication date as May 7, 1999).
`
`3
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`IPR2017-01845
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`Reference
`
`Smith
`
`
`
`Date
`
`Exhibit
`
`US 7,296,087 B1 Mar. 17, 2000 Ex. 1015
`
`D. The Asserted Grounds of Unpatentability
`
`Reference(s)
`
`Basis
`
`Claim(s) Challenged
`
`Guerin and AAPA
`
`§ 103(a) 5, 6, 8, 10, 14, and 22
`
`Guerin, AAPA, and Monachello § 103(a) 7
`Guerin, AAPA, and
`Bollapragada
`Guerin, AAPA, Bollapragada,
`and Smith
`Guerin
`
`§ 103(a) 4, 9, 19, and 24
`
`§ 103(a) 11–13 and 23
`
`§ 103(a) 20
`
`Guerin, AAPA, and Fowler
`Guerin, AAPA, Bollapragada,
`and Shaffer
`
`
`§ 103(a) 21
`
`§ 103(a) 1 and 15
`
`II. ANALYSIS
`
`A. The ’235 Patent
`The ’235 patent describes a communications system and method that
`uses two or more disparate, parallel, networks. Ex. 1001, Abstract. For
`example, the communications system can use an Internet-based virtual
`private network (“VPN”) in parallel with a frame relay network to provide
`communications. Id. at 1:19–24. Providing communications over disparate,
`parallel, networks allows the system to provide load-balancing, increased
`security, and disaster recovery in the event one of the parallel networks fails.
`Id. An embodiment of the system is depicted in Figure 10, which is
`reproduced below.
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`Figure 10 is a diagram illustrating an exemplary topology for the network
`described in the ’235 patent. Id. at 5:52–58. Two sites 102 A/B transmit
`data to and/or receive data from one another. Id. at 2:38–40, Fig. 10. Sites
`102 A/B are connected by two disparate, parallel, networks, for example,
`Internet 500 via routers 104 X/Z, and frame relay network 106 via routers
`105 Y/W. Id. at 8:30–33. “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 frame relay/point-to-point router
`according to the criteria.” Id. at 9:12–17. Although controllers 602 and
`routers 104 X/Z and 105 Y/W are shown as separate devices in Figure 10,
`“the software and/or hardware implementing these devices . . . may be
`housed in a single device and/or reside on a single machine.” Id. at 8:40–45.
`A diagrammatic illustration of controller 602 is shown in Figure 7 of
`the ’235 patent, which is reproduced below.
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`Patent 6,775,235 B2
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`
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`Figure 7 is a schematic illustration of the multiple disparate network access
`controller 602. Ex. 1001, 5:37–38. Controller 602 is connected to site 102
`via site interface 702, which can be any local network area interface such as
`a 10/100Base-T Ethernet interface. Id. at 10:60–65. Controller 602 also is
`connected to the plurality of disparate networks via network interfaces 706.
`Id. at 11:64–67. Controller 602 includes path selector 704, implemented as
`hardware or software, which determines the path or network interface 706
`down which a given packet is routed to its destination. Id. at 11:2–6. The
`criteria used to determine the packet path or network interface 706 may be
`based on redundancy, load-balancing, or security. Id. at 11:6–63. The
`redundancy criteria is used to avoid sending packets down network paths
`that are not currently available. Id. at 11:11–20. The load-balancing criteria
`is used to send packets down network paths to balance the communications
`load among the plurality of disparate networks. Id. at 11:21–40. This can be
`done, for example, by selecting disparate network paths in a round-robin
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`fashion or based on a network latency, throughput, or performance
`algorithm, and can be done on a per packet or per TCP/UDP session basis.
`Id. The security criteria is used to send packets down network paths such
`that a given message (e.g., a session, file, or webpage) is divided among two
`or more disparate networks. Id. at 11:41–63.
`Of the challenged claims, claims 1, 4, 5, and 19–22 are independent.
`Other challenged claims depend directly or indirectly from claims 5 and 22.
`Claim 4 is reproduced below.
`4. A controller which controls access to multiple
`networks in a parallel network configuration,
`suitable networks
`comprising
`Internet-based
`networks and private networks from at least one
`more provider, in combination, the controller
`comprising:
`a site interface connecting the controller to a site;
`at least two network interfaces which send packets
`toward the networks; and
`a packet path selector which selects between
`network interfaces on a per-packet basis 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 inter-face and sends the packet through the
`network interface that was selected by the packet
`path selector.
`Ex. 1001, 17:38–55. Independent claim 1 differs from claim 4 in that it
`further requires the packet path selector to select between network interfaces
`according to a security criterion to promote the use of multiple disparate
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`networks to carry different pieces of a given message. Compare id. at
`17:38–55, with id. at 17:8–32. Claim 5 is reproduced below.
`5. A method for combining connections for access
`to multiple parallel disparate networks, the method
`comprising the steps of:
`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; [and]
`forwarding the packet on the selected network path.
`Ex. 1001, 17:56–18:9. Independent claim 22 differs from claim 5 in that it
`recites a computer storage medium having data and instructions that cause
`performance of the method recited in claim 5, including performance of the
`additional step of modifying the packet destination address to lie within a
`known location address range associated with the selected network if it does
`
`8
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`Patent 6,775,235 B2
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`not already do so. Compare id. at 17:56–18:9, with id. at 19:31–20:25.
`Claim 20 is reproduced below.
`20. A method for combining connections for access
`to parallel networks, the method comprising the
`steps of:
`receiving at a first controller a packet which has a
`first site IP address as source address and a second
`site IP address as destination address;
`modifying the packet to have an IP address of the
`first controller as the source address and an IP
`address of a second controller as the destination
`address; and
`forwarding the modified packet along a selected
`path toward the second site.
`Ex. 1001, 19:10–20. Independent claim 21 differs from claim 20 in that it
`requires the source and destination addresses of the first packet to be VPN
`(virtual private network) IP addresses, and requires the second site to be a
`VPN. Compare id. at 19:10–20, with id. at 19:21–31.
`B. Claim Construction
`The Board interprets the claims of an unexpired patent using the
`broadest reasonable interpretation in light of the specification of the patent.
`See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2142–46 (2016). Consistent with the rule of broadest reasonable
`interpretation, claim terms are generally given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Only those terms which are in controversy
`need to be construed and only to the extent necessary to resolve the
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`controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`Petitioner proposes the express construction of several claim terms,
`including “parallel network configuration,” “disparate networks,” “private
`network,” and “independent networks.” Pet. 14–17. Patent Owner does not
`propose express constructions for these or any other terms. We agree with
`Petitioner that the Specification defines “independent networks” to mean
`“networks in which routing information need not be shared between the
`networks,” and thus construe that term the same way. See Pet. 17 (citing Ex.
`1001, 6:5–6).6 As for the other constructions proposed by Petitioner, we are
`not persuaded of the need to expressly construe them at this stage of the
`proceeding. See Vivid Techs., 200 F.3d at 803.
`C. Estoppel under 35 U.S.C. § 315(b)
`Section 315(b) of Title 35 of the United States Code states:
`An inter partes review may not be instituted if the
`petition requesting the proceeding is filed more than
`1 year after the date on which the petitioner, real
`party in interest, or privy of the petitioner is served
`with a complaint alleging infringement of the
`patent.
`Patent Owner argues Cisco is estopped from filing this Petition
`pursuant to 35 U.S.C. § 315(b) because Viptela, Inc. (“Viptela”) was a privy
`of Petitioner Cisco when this Petition was filed on July 24, 2017, and
`Viptela was served with a complaint alleging infringement of the ’235 patent
`more than 1 year earlier, namely, on March 22, 2016. Prelim. Resp. 1.
`
`
`6 Petitioner cites to column 6, lines 2–3, although the definition occurs on
`lines 5–6. See Ex. 1001, 6:2–6.
`
`10
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`IPR2017-01845
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`Patent Owner presents a timeline on page 19 of its Preliminary Response,
`reproduced below, in support of its privity argument.
`
`
`
`
`Patent Owner’s timeline, reproduced above, shows various dates Patent
`Owner relies upon to support its argument that Cisco is barred as a privy of
`Viptela from filing this Petition. Patent Owner argues that because Viptela
`was served with a complaint alleging infringement of the ’235 patent on
`March 22, 2016, Viptela and its privies were barred from filing a petition for
`inter partes review of that patent after March 22, 2017. Id. Patent Owner
`further argues that because Cisco signed a formal, binding purchase
`agreement to acquire Viptela on May 2, 2017, Cisco became a privy of
`Viptela on that date. Id. at 10–11 (citing Ex. 2001, 2; Ex. 2002, 1).
`Therefore, Patent Owner argues, Cisco was barred as a privy of Viptela from
`filing the Petition on July 24, 2017, more than four months after Viptela’s
`March 22, 2017, statutory bar date. Id.
`Patent Owner argues the equities favor barring Cisco as a privy of
`Viptela because: Cisco has no apparent interest in the ’235 patent apart from
`its relationship with Viptela; Cisco has the same exposure to the ’235 patent
`as Viptela; Viptela has adequately represented Cisco’s interests by
`
`11
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`previously challenging the patentability of the ’235 patent in inter partes
`review petitions; Viptela’s interest in challenging the patentability of the
`’235 patent aligns with Cisco’s; and Cisco was aware of Patent Owner’s
`lawsuit against Viptela when it acquired Viptela. Prelim. Resp. 14–16; Sur-
`Reply 6. Patent Owner further argues that allowing Cisco to proceed with
`this Petition would be tantamount to granting Viptela an unwarranted
`extension of time to file a petition for inter partes review after having been
`served with a complaint alleging infringement of the ’235 patent. Prelim.
`Resp. 14–16.
`Cisco argues that although it announced its intent to acquire Viptela
`on May 2, 2017, that transaction had not closed when Cisco filed the Petition
`on July 24, 2017. Pet. 7–8; Pet. Reply 6–7. As a result, Cisco argues that
`when the Petition was filed: Cisco did not have a pre-existing substantive
`legal relationship with Viptela; Cisco did not exercise control over Viptela’s
`lawsuit with Patent Owner; Cisco did not exercise control over Viptela’s
`previously filed petitions for inter partes review of the ’235 patent; and
`Cisco was not a privy of Viptela. Id. Therefore, Cisco argues, it was not
`barred under 35 U.S.C. § 315(b) from filing this Petition. Id.
`
`At this stage of the proceeding, having considered the evidence and
`arguments presented in the Petition, Preliminary Response, Reply, and Sur-
`Reply, we agree with Cisco that it was not a privy of Viptela when this
`Petition was filed, and, therefore, was not barred under 35 U.S.C. § 315(b)
`from filing this Petition. When Cisco announced its intention to acquire
`Viptela, it indicated that “[t]he acquisition is expected to close in the second
`half of calendar 2017, after having completed all of the customary closing
`conditions and regulatory review.” Ex. 2001, 2. In a section in the
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`announcement entitled “Forward-Looking Statements,” Cisco cautioned that
`“the expected completion of the acquisition and time frame in which this
`will occur . . . . are only predictions and may differ materially from actual
`future events or results due to a variety of factors, including . . . that other
`conditions to the closing of the transaction may not be satisfied.” Id. at 2–3.
`The parties do not dispute that Cisco completed its acquisition of Viptela on
`August 1, 2017, eight days after Cisco filed this Petition. Prelim. Resp. 14;
`Pet. Reply 6. Thus, when the Petition was filed, Cisco did not have a
`cognizable pre-existing legal relationship with Viptela, and was not barred
`from filing the Petition. See Arris Group, Inc. v. TQ Delta, LLC, Case
`IPR2016-00430, slip op. at 6–7 (PTAB July 1, 2016) (Paper 9) (finding
`Arris Group was not estopped from filing a petition two days before
`acquiring a third party that was barred under 35 U.S.C. § 315(b) from filing
`a petition, even though Arris Group had announced its intention to acquire
`the third party prior to filing the petition); see also Semiconductor
`Components Indus., LLC v. Power Integrations, Inc., Case IPR2016-00995,
`slip op. at 8–16 (PTAB Oct. 8, 2017) (Paper 26).
`D. Discretion under 35 U.S.C. § 314(a)
`Patent Owner argues Cisco’s filing of this Petition “represents a
`brazen attempt to correct the deficiencies of Viptela’s previous [p]etitions,”
`namely, the petitions filed in IPR2017-00684 and IPR2017-01125. Prelim.
`Resp. 16. Patent Owner argues that because Cisco filed this Petition after
`preliminary responses were filed in IPR2017-00684 and IPR2017-01125,
`and after the Board’s decision on institution was filed in IPR2017-00684,
`Cisco was able to assess and address the key weaknesses of Viptela’s
`previously-filed petitions. Id. at 16–17. Therefore, Patent Owner argues,
`the Board should exercise its discretion to deny Cisco’s Petition under 35
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`U.S.C. § 325(d). Id. at 20.
`Section 325(d) of Title 35 of the United States Code gives the
`Director the discretion to reject a petition for inter partes review when “the
`same or substantially the same prior art or arguments previously were
`presented to the Office.” Cisco’s Petition does not present the same or
`substantially the same prior art or arguments that Viptela presented in
`IPR2017-00684 and IPR2017-01125, and Patent Owner does not allege that
`it does. Thus, we interpret Patent Owner’s request as a request to deny
`institution pursuant to the discretion granted to the Director under 35 U.S.C
`§ 314(a). See Gen. Plastics Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357, slip op. at 15–19 (PTAB Sept. 6, 2017) (Paper 19)
`(precedential).
`In General Plastics, the Board delineated a non-exhaustive list of
`factors to consider when exercising discretion to deny institution of a later-
`filed petition after having considered a previously-filed petition challenging
`the same patent. Gen. Plastics, IPR2016-01357, slip op. at 15 (Paper 19).
`These factors include: (1) whether the same petitioner filed the previously-
`filed petition challenging the same claims; (2) whether the same petitioner
`knew of or should have known of the prior art cited in the later-filed petition
`when the previously-filed petition was filed; (3) whether the later-filed
`petition was filed after receiving the patent owner’s preliminary response or
`the Board’s decision in the previously-filed petition; (4) the time period
`between discovering the prior art relied upon in the later-filed petition and
`the filing date of that petition; (5) whether the petitioner adequately explains
`the time period between the later and previously-filed petitions; (6) the
`Board’s finite resources; and (7) the need to issue a final written decision on
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`a previously-filed petition within 1 year of its institution date. Id. at 16.
`Factor 1 weighs in favor of considering the merits of the Petition
`because Cisco did not file any of the previously-filed petitions challenging
`the claims of the ’235 patent. See Pet. Reply 2.
`Factor 2 is a neutral factor because it only considers whether a
`petitioner should have discovered the prior art relied on in the later-filed
`petition when the same petitioner filed the previously-filed petition. See
`NetApp, Inc. v. Realtime Data, LLC, Case IPR2017-01354, slip op. at 11
`(PTAB Nov. 14, 2017) (Paper 16). Here, a different petitioner filed the
`later-filed petition. Moreover, Cisco avers that the principle reference it
`relies on in the Petition, Guerin, was discovered without the assistance of
`Viptela. Pet. Reply 2 (citing Ex. 1021 ¶¶ 3, 5–6).
`Factor 3 weighs in favor of considering the merits of the Petition
`because although the Petition was filed after the filing of preliminary
`responses in IPR2017-00684 and IPR2017-01125 and the Board’s institution
`decision in IPR2017-00684, the preliminary responses and institution
`decision did not address the merits of the arguments presented in those
`petitions. Rather, as the parties agree, the preliminary responses and
`institution decision addressed whether it was appropriate to deny institution
`of those petitions because they relied on the same prior art and presented
`substantially the same arguments that were presented in an even earlier-filed
`petition for inter partes review: IPR2016-00976. Prelim. Resp. 17; Pet.
`Reply 3–4.
`Factor 4 weighs in favor of considering the merits of the Petition
`because Cisco avers that two months lapsed between its discovery of Guerin
`and the filing of the Petition, and that two months is a typical period required
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`to prepare a petition for inter partes review. Pet. Reply. 4 (citing Ex. 1021
`¶ 7). We are not persuaded by Patent Owner’s argument that factor 4
`weighs in favor of denying institution because Guerin is a U.S. patent that
`Cisco could have discovered earlier. Sur-Reply 5. Factor 4 is not concerned
`with when a reference should have been discovered by a party; that is the
`purview of factor 2. As discussed supra, factor 2 is neutral here because
`Cisco did not file the previously-filed petitions and did not find Geurin with
`Viptela’s assistance. Factor 4 is concerned with the time period between the
`discovery of a reference and its use in a petition for inter partes review.
`Here, the two months Cisco avers lapsed between its discovery of Guerin
`and the filing of the Petition does not indicate Cisco needlessly delayed
`filing the Petition.
`Factor 5 is a neutral factor because Cisco did not file the previously-
`filed petitions, and therefore does not need to explain any filing delay
`between the previously-filed petitions and the Petition. We are not
`persuaded by Patent Owner’s argument that factor 5 favors denying
`institution because Cisco failed to explain the time period between the filing
`of the preliminary responses and institution decision in IPR2017-00684 and
`IPR2017-01125 and the filing of the Petition. See Sur-Reply 5. First, factor
`5 is not concerned with such delays. Second, to the extent such a period is
`relevant, Cisco avers that it filed the Petition within two months of finding
`the Guerin reference, which is a reasonable amount of time to prepare and
`file a petition. Pet. Reply. 2, 4–5 (citing Ex. 1021 ¶¶ 3, 5–7).
`Factor 6 weighs in favor of denying the petition because the Board has
`previously considered three petitions by two different parties challenging the
`patentability of the ’235 patent. See Sur-Reply 5. We are not persuaded by
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`
`Petitioner’s argument that this factor weights in favor of considering the
`merits of the Petition because the Petition does not raise duplicative grounds.
`Pet. Reply 5. Although we agree that raising new grounds is a factor to
`consider when weighing the evidence for and against denying institution, the
`simple fact remains that this is the fourth petition that has been filed
`challenging the claims of the ’235 patent, which has required the Board to
`spend considerable resources considering the patentability of that patent’s
`claims.
`Factor 7 is a neutral factor because Petitioner has not sought joinder,
`and Petitioner and Patent Owner agree that deciding the Petition on the
`merits will not impact the Board’s ability to render Final Written Decisions
`in any of the previously-filed cases. See Sur-Reply 6; Pet. Reply 5.
`In sum, we find factors 1, 3, and 4 weigh in favor of considering the
`Petition on its merits, factors 2, 5, and 7 are neutral, and factor 6 favors
`denying the Petition under 35 U.S.C. § 314(a). Accordingly, we decline to
`exercise our discretion to deny the Petition under 35 U.S.C. § 314(a).
`E. Level of Skill in the Art
`Petitioner, relying on the testimony of Dr. Reddy, argues a person of
`ordinary skill in the art would have had a Bachelor’s degree in computer
`science or engineering, electrical engineering, or equivalent training, and
`two years of experience working in the field of computer networking
`architecture. Pet. 20 (citing Ex. 1005 ¶ 32). Patent Owner does not dispute
`this definition, and does not propose a counter definition. See Prelim. Resp.;
`Sur-Reply. We find Petitioner’s definition reasonable, and for purposes of
`this Decision, adopt it as our own.
`
`17
`
`
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`IPR2017-01845
`Patent 6,775,235 B2
`
`
`F. The patentability of claims 5, 6, 8, 10, 14, and 22
`over Guerin and AAPA
`Petitioner argues claims 5, 6, 8, 10, 14, and 22 of the ’235 patent
`would have been obvious under 35 U.S.C. § 103(a) over Guerin and AAPA.
`Pet. 20–40. In its Preliminary Response, Patent Owner does not challenge
`Petitioner’s mapping of the prior art to the challenged claims. Instead, as
`discussed in sections II.C and II.D, supra, Patent Owner argues the Petition
`should be denied as time barred under 35 U.S.C. § 315(b), or alternatively
`that we should exercise our discretion to deny institution because the claims
`of the ’235 patent have been repeatedly challenged in previously-filed
`petitions. See Prelim. Resp. 1–21; Sur-Reply 1–7. We considered Patent
`Owner’s arguments in sections II.C and II.D, supra, and found them
`unpersuasive for the reasons discussed there.
`Accordingly, upon reviewing the Petition, Preliminary Response,
`Reply, and Sur-Reply, and for the reasons discussed below, we are
`persuaded at this stage of the proceeding that Petitioner has met its burden of
`demonstrating a reasonable likelihood of establishing the unpatentability of
`claims 5, 6, 8, 10, 14, and 22 over the combination of Guerin and AAPA.
`1. Overview of Guerin (Ex. 1006)
`Guerin discloses a system and method whereby two or more end-users
`of the Internet or other networks can dynamically select and use a single
`Internet service provider (ISP) from among a plurality of ISPs based on
`application requirements. Ex. 1006, Abstract. Figure 1 of Guerin’s system
`is reproduced below.
`
`18
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`IPR2017-01845
`Patent 6,775,235 B2
`
`
`
`Figure 1 of Guerin is a block diagram of a network in which an ISP selection
`scheme can be implemented. Id. at 2:15–17. Two network sites 101 and
`103 having respective routers 109 and 117 are connected in parallel by two
`ISP networks 105 and 107. Id. at 2:39–42. ISP networks 105 and 107 may
`have different characteristics, such as cost and latency. Id. at 2:42–47. The
`network addresses of devices in site networks 101/103 may be allocated
`from the address space of ISP networks 105/107, or from the operators of
`site networks 101/103. Id. at 2:47–3:6.
`
`When information is exchanged between sites 101 and 103, routers
`109 and 117 select a specific ISP 105 or 107 to exchange specific sets of
`application data. Ex. 1006, 3:7–9. To facilitate this selection, routers 109
`and 117 first establish a control channel over which control information is
`exchanged. Id. at 3:14–17. The control information can include a list of
`ISPs available at each of sites 101 and 103, and the cost and performance
`characteristics of the available ISPs. Id. at 3:17–20. Using that information,
`the source site router (e.g., router 109) selects an ISP for carrying
`communications to the destination site router (e.g., router 117) based on
`criteria such as cost, quality of service, or contractual obligations, and
`communicates the ISP selection to the destination site router. Id. at 3:20–25.
`
`19
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`IPR2017-01845
`Patent 6,775,235 B2
`
`The destination site router confirms the selection, and sends configuration
`parameters to the source site router for establishing a local data connection
`between a source device in site 101 and a destination device in site 103 over
`the selected ISP network. Id. at 3:30–37. The configuration parameters
`include a mapping of the source/destination device addresses assigned by the
`operators of site networks 101/103 to the source/destination device addresses
`assigned by the selected ISP network. Id. at 4:35–54. Once established, the
`source router can forward packets from a source device in site 101 to a
`destination device in site 103 by changing the source/destination addresses
`of the devices assigned by the operators of sites 101/103 to the
`source/destination addresses assigned by the selected ISP. Id. at 3:35–40,
`4:54–58.
`
`2. Overview of AAPA (Ex. 1001)
`The ’235 patent discloses “[v]arious architectures involving multiple
`networks are known in the art.” Ex. 1001, 2:34–35. One such architecture
`is shown in Figure 5 of the ’235 patent, which is reproduced below.
`
`
`Figure 5 “is a diagram illustrating a prior art approach having a frame relay
`network configured in parallel with a VPN or other Internet-based network
`
`20
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`IPR2017-01845
`Patent 6,775,235 B2
`
`that is disparate to the frame relay network.” Id. at 5:25–29. As shown in
`Figure 5, sites 102–1 and 102–2 can be connected in parallel by multiple
`disparate networks including frame relay network 106 and Internet 500 /
`VPN 502.
`3. Claims 5, 6, and 22
`Claim 5 recites a method for combining connections for access to
`multiple parallel disparate networks that includes obtaining at least two
`known location address ranges which have associated networks. Ex. 1001,
`17:56–60. Petitioner demonstrates a reasonable likelihood of showing this
`preamble and limitation are taught by the combination of Guerin and AAPA.
`See Pet. 21–29. In particular, Petitioner demonstrates that Guerin teaches a
`method for connecting two sites 101/103 via two parallel ISPs 105/107
`having different characteristics. Id. at 21–22 (citing Ex. 1006, 2:35–47,
`Fig. 1; Ex. 1005 ¶¶ 63–66). Similarly, Petitioner demonstrates that AAPA
`teaches connecting two sites 102–1/102–2 via two disparate parallel
`networks in the form of frame relay network 106 and Internet/VPN network
`500/502. Id. at 23 (citing Ex. 1001, 5:20–24, Fig. 5; Ex. 1005 ¶¶ 67–68).
`Claim 5 further requires the method to include obtaining topology
`information which specifies associate
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