UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`CISCO SYSTEMS, INC.,
`
`Petitioner
`
`- vs. -
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`FATPIPE NETWORKS PRIVATE LIMITED
`
`Patent Owner
`
`———————
`
`PETITION FOR INTER PARTES REVIEW
`
`OF U.S. PATENT NO. 6,775,235
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
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`TABLE OF CONTENTS
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`
`
`  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ..................................... 7 I.
`
`A.  Real Party-in-Interest ................................................................................. 7 
`
`B.  Related Matters .......................................................................................... 7 
`
`C.  Lead and Back-up Counsel and Service Information ............................... 8 
`
`
`
`  GROUNDS FOR STANDING .......................................................................... 8 II.
`
`
`
`  REQUESTED RELIEF ..................................................................................... 9 III.
`
`IV.
`
`  REASONS FOR THE REQUESTED RELIEF ................................................ 9 
`
`A.  Summary of the ’235 Patent .................................................................... 10 
`
`B.  Prosecution History ................................................................................. 10 
`
`C.  Priority Date ............................................................................................ 11 
`
`D.  Challenged Claims ................................................................................... 13 
`
`E.  Discretionary Denial Under § 325(d) or § 314 is Not Warranted ........... 13 
`
`V.
`
`  CLAIM CONSTRUCTION............................................................................. 14 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`“parallel network configuration” / “parallel” .......................................... 15 
`
`“disparate networks” ............................................................................... 15 
`
`“private network” .................................................................................... 17 
`
`“independent…networks” ....................................................................... 17 
`
`VI.
`
`  Statutory Grounds for Challenges ................................................................... 17 
`
`
`
`  Level of ordinary skill in the art ...................................................................... 20 VII.
`
`A.  Summary .................................................................................................. 20 
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
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` Note Regarding Page Citations and Emphasis ................................................ 20 VIII.
`
`IX.
`
`  CLAIMS 1, 4-15, and 19-24 ARE UNPATENTABLE .................................. 20 
`
`A.  Challenge 1: Claims 5-6, 8, 10, 14, and 22 are obvious under 35
`U.S.C. § 103(a) over Guerin in view of the Admitted Prior Art ............. 20 
`
`1.  Overview of Guerin ......................................................................... 20 
`
`2.  Overview of Admitted Prior Art ..................................................... 21 
`
`3.  Analysis ........................................................................................... 21 
`
`B.  Challenge 2: Claim 7 is obvious under 35 U.S.C. § 103(a) over
`Guerin in view of the Admitted Prior Art further in view of
`Monachello .............................................................................................. 40 
`
`1.  Overview of Monachello ................................................................. 40 
`
`2.  Analysis ........................................................................................... 40 
`
`C.  Challenge 3: Claims 4, 9, 19, and 24 are obvious under 35 U.S.C. §
`103(a) over Guerin in view of the Admitted Prior Art further in view
`of Bollapragada ....................................................................................... 42 
`
`1.  Overview of Bollapragada .............................................................. 42 
`
`2.  Analysis ........................................................................................... 43 
`
`D.  Challenge 4: Claims 11-13 and 23 are obvious under 35 U.S.C. §
`103(a) over Guerin in view of the Admitted Prior Art in view of
`Bollapragada further in view of Smith .................................................... 63 
`
`1.  Overview of Smith .......................................................................... 63 
`
`2.  Analysis ........................................................................................... 63 
`
`E.  Challenge 5: Claim 20 is obvious under 35 U.S.C. § 103(a) over
`Guerin. ..................................................................................................... 68 
`
`F.  Challenge 6: Claim 21 is obvious under 35 U.S.C. § 103(a) over
`Guerin in view of the Admitted Prior Art further in view of Fowler. ..... 70 
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
`1.  Overview of Fowler ........................................................................ 70 
`
`2.  Analysis ........................................................................................... 70 
`
`G.  Challenge 7: Claims 1 and 15 are obvious under 35 U.S.C. § 103(a)
`over Guerin in view of the Admitted Prior Art in view of
`Bollapragada further in view of Shaffer. ................................................. 74 
`
`1.  Overview of Shaffer ........................................................................ 74 
`
`X.
`
`  CONCLUSION ................................................................................................ 80 
`
`XI.
`
`  CERTIFICATE OF WORD COUNT .............................................................. 81 
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
`
`PETITIONER’S EXHIBIT LIST
`
`July 24, 2017
`
`EX1001 U.S. Patent No. 6,775,235 by Sanchaita Datta and Ragula Bhaskar
`
`entitled “Tools and Techniques for Directing Packets Over
`
`Disparate Networks”
`
`EX1002
`
`File History of U.S. Patent No. 6,775,235
`
`EX1003 U.S. Patent No. 7,406,048 by Sanchaita Datta and Ragula Bhaskar
`
`entitled “Tools and Techniques for Directing Packets Over
`
`Disparate Networks”
`
`EX1004
`
`File History of U.S Patent No. 7,406,048
`
`EX1005 Declaration of Dr. Narasimha Reddy
`
`EX1006 U.S. Patent No. 6,243,754 to Guerin et al.
`
`EX1007 U.S. Patent No. 6,748,439 to Monachello et al.
`
`EX1008
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`“Inside Cisco IOS Software Architecture” by Bollapragada et al.
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`EX1009 Declaration of David Bader
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`EX1010 Dictionary Definition of “disparate”
`
`EX1011
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`File History of U.S. Application No. 10/034,197
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`EX1012 U.S. Patent No. 6,122,743 to Shaffer et al.
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`EX1013
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`Frame Relay Technology and Practice by Jeff T. Buckwalter
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
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`EX1014
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`“Virtual Private Networks” by Fowler
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`EX1015 U.S. Patent No. 7,296,087 to Peter J. Ashwood Smith
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`EX1016
`
`The Case for Persistent-Connection HTTP by Jeffrey C. Mogul
`
`EX1017
`
`File History of U.S. Provisional Application No. 60/355,509
`
`EX1018 Microsoft Computer Dictionary Definition of “load balancing”
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`EX1019 RFC1918
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`EX1020
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`Internetworking with TCP/IP by Douglas E. Comer
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`
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
` MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`I.
`
`A. Real Party-in-Interest
`
`The Petitioner and real party in interest is Cisco Systems, Inc. (“Cisco”).
`
`B. Related Matters
`
`To the best knowledge of the Petitioner, U.S. Patent No. 6,775,235 (“the
`
`’235 Patent”) is or has been involved in the following matters:
`
`Name
`
`Number
`
`Court Filed
`
`Petition for Inter Partes Review by
`Viptela, Inc.
`
`IPR2017-01125 PTAB March 21,
`2017
`
`Petition for Inter Partes Review by
`Viptela, Inc.
`
`IPR2017-00684 PTAB January 13,
`2017
`
`Petition for Inter Partes Review by
`Talari Networks, Inc.
`
`FatPipe, Inc. v. Viptela, Inc.
`
`IPR2016-00976 PTAB April 29, 2016
`
`1:16-cv-00182 DED March 22,
`2016
`
`FatPipe, Inc. v. Talari Networks, Inc. 5:16-cv-00054 NCED February 1,
`2016
`
`FatPipe, Inc. v. Talari Networks, Inc. 6:15-cv-00458
`
`On May 2, 2017, Cisco announced its intent to acquire Viptela, Inc., the
`
`TXED May 6, 2015
`
`petitioner in IPR2017-01125 and IPR2017-00684. As of the filing of the instant
`
`Petition, that transaction has not closed. As a result, Viptela, Inc. is not a real
`
`party-in-interest to the instant proceeding. Viptela does not, and cannot control the
`
`instant Petition, and likewise, Cisco does not, and cannot control Viptela’s
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
`proceedings. Accordingly, Viptela is also not a privy of Cisco. Cisco has not been
`
`served with a complaint alleging infringement of the ’235 Patent, and is therefore
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`not barred under 35 U.S.C. § 315(b).
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`David L. McCombs
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`Theodore M. Foster
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`David O’Brien
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Raghav Bajaj
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`214-651-5533
`Phone:
`214-200-0853
`Fax:
`
`david.mccombs.ipr@haynesboone.com
`USPTO Reg. No. 32,271
`
`
`972-739-8649
`Phone:
`214-200-0853
`Fax:
`
`ipr.theo.foster@haynesboone.com
`USPTO Reg. No. 57,456
`
`515-867-8457
`Phone:
`214-200-0853
`Fax:
`
`david.obrien.ipr@haynesboone.com
`USPTO Reg. No. 40,107
`
`512-867-8520
`Phone:
`214-200-0853
`Fax:
`
`raghav.bajaj.ipr@haynesboone.com
`USPTO Reg. No. 66,630
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service.
`
` GROUNDS FOR STANDING
`II.
`
`Petitioner certifies that the ’235 Patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes review
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
`challenging the patent claims on the grounds identified in this Petition.
`
` REQUESTED RELIEF
`III.
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for an inter partes review of claims 1, 4-15, and 19-24 of
`
`the ’235 Patent (“the challenged claims”), and cancel them as unpatentable.
`
`IV.
`
` REASONS FOR THE REQUESTED RELIEF
`
`The challenged claims of the ’235 Patent would have been obvious to a
`
`person of ordinary skill in the art and are therefore unpatentable. The ’235 Patent
`
`generally describes communications
`
`techniques employing
`
`two “disparate
`
`networks in parallel” to provide load balancing and wide-area network (WAN)
`
`redundancy. However, load balancing and WAN redundancy techniques were
`
`well-known at the time of the ’235 Patent, and further, as the patent admits, the use
`
`of disparate networks in parallel was also known at the time. Accordingly, the
`
`prior art presented herein renders obvious all of the limitations of the challenged
`
`claims.
`
`As explained below and in the declaration of Cisco Systems’ expert, Dr.
`
`Narasimha Reddy, the challenged claims of the ’235 Patent are unpatentable.
`
`Accordingly, the Board should institute trial and thereafter cancel claims 1, 4-15,
`
`and 19-24.
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
`
`A.
`
`Summary of the ’235 Patent
`
`The ’235 Patent relates to “tools and techniques for communications using
`
`disparate parallel networks, such as a virtual private network…or the Internet in
`
`parallel with a point-to-point, leased line, or frame relay network.” EX1001, 1:17-
`
`23. The ’235 Patent “focuses on architectures involving disparate networks in
`
`parallel, such as a proprietary frame relay network and the Internet,” whereas prior
`
`solutions (such as those disclosed in its parent application) “involve[e] two or more
`
`‘private’ networks in parallel.” EX1001, 2:11-19. However, as the Applicants
`
`themselves admitted, and as shown herein, the use of disparate networks in parallel
`
`was well-known at the time of the ’235 Patent’s priority date.
`
`B.
`
`Prosecution History
`
`The application that led to the ’235 Patent (U.S. Application No. 10/361,837
`
`(“the ’837 Application”)) was filed on February 7, 2003, and claimed priority as a
`
`continuation-in-part of U.S. Application No. 10/034,197 (“the ’197 Application”),
`
`filed December 28, 2001, and also claimed benefit of U.S. Provisional Application
`
`No. 60/355,509, filed February 8, 2002. The ’197 Application itself claimed
`
`benefit of U.S. Provisional Application No. 60/259,269, filed December 29, 2000.
`
`The ’197 Application was abandoned after an adverse Decision on Appeal.
`
`EX1011, pp. 754-761.
`
`On December 10, 2003, the Applicants submitted a Petition for Special
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
`Examining Procedure, describing 24 references and alleging that those references
`
`did not teach various features of the claims. EX1002, p. 361. In the first Office
`
`Action, the Examiner rejected some claims, and noted that certain claims were
`
`allowed. EX1002, pp. 377-389. In response, the Applicants amended the rejected
`
`claims to include the limitations of the allowed subject matter (EX1002, pp. 394-
`
`402), and the Examiner then allowed all claims. EX1002, p. 404.
`
`C.
`
`Priority Date
`
`All of the references cited in the instant Petition qualify as prior art based on
`
`the earliest-claimed priority date of December 29, 2000, the alleged priority date of
`
`the ’197 Application. However, at least challenged claims 1, 5-15, and 22-24 are
`
`not entitled to claim priority to the ’197 Application.
`
`Each of those challenged claims recites a “disparate networks” in parallel
`
`limitation, but the prior ’197 Application does not provide written description
`
`support for the recited “disparate networks” employed in parallel. EX1005, ¶¶49-
`
`50. In particular, the ’197 Application does not expressly disclose “disparate
`
`networks” used in parallel nor would a person of skill in the art have understood a
`
`configuration for “disparate networks” in parallel to necessarily follow from
`
`anything actually disclosed. EX1005, ¶50. Indeed, the ’235 Patent itself admits
`
`that the ’197 Application “focuses on architectures involving two or more ‘private’
`
`networks in parallel, whereas the present application focuses on architectures
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
`involving disparate networks in parallel…” EX1001, 2:16-20.
`
`The ’235 Patent provides an example of “disparate…networks” such as a
`
`“virtual private network (‘VPN’) or the Internet in parallel with a point-to-point,
`
`leased line, or frame relay network.” EX1001, 1:17-24. Admitted Prior Art FIG. 5
`
`of the ’235 Patent depicts such a VPN in parallel with a frame relay network.
`
`
`
`EX1001, FIG. 5
`But FIG. 5 of the ’235 Patent, or any similar figure disclosing a frame relay
`
`network in parallel with a VPN or the Internet, does not appear in the ’197
`
`Application. In the ’197 Application, the figures depicting two networks in
`
`parallel depict either:
`
` two frame relay networks in parallel (EX1011, pp. 34, 36 (FIG. 1,
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
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`FIG. 5, FIG. 6)),
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` a frame relay network in parallel with a point-to-point network
`
`(EX1011, p. 34 (FIG. 2); see also EX1001, 3:27-28 (characterizing
`
`an ISDN link as an example of a point-to-point network link, which
`
`is a “private network” and therefore not “disparate” from a frame
`
`relay network)), or
`
` multiple private networks in parallel (EX1011, p. 37 (FIG. 7)).
`
`Thus, a POSITA would not have recognized the ’197 Application as
`
`disclosing “disparate networks” in parallel as recited in challenged claims 1, 5-15,
`
`and 22-24. Accordingly, those claims of the ’235 Patent are not entitled to claim
`
`priority to the ’197 Application. The earliest possible priority date of those claims
`
`of the ’235 Patent is therefore no earlier than February 8, 2002, the filing of the
`
`’509 Provisional to which the ’235 Patent claims priority. The ’509 Provisional, in
`
`FIG. 1, depicts a frame relay connection in parallel with an Internet connection
`
`between two locations, Location 1 and Location 2. EX1017, p. 9; EX1005, ¶¶49-
`
`51.
`
`D. Challenged Claims
`
`Claims 1, 4-15, and 19-24 of the ’235 Patent are challenged.
`
`E. Discretionary Denial Under § 325(d) or § 314 is Not Warranted
`
`Although other parties have petitioned for inter partes review of the ’235
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
`Patent, the instant Petition presents references and analysis that have never been
`
`presented or considered by the Office. Additionally, the instant Petition provides
`
`the analysis of Dr. Reddy in addition to the prior art, which has likewise not been
`
`presented to the Office. Thus, the same or similar arguments have not been
`
`presented to the Office, and respectfully, discretionary denial under § 325(d) is not
`
`warranted here.
`
`Likewise, denial under § 314 is also not warranted here, again, as all of the
`
`references, arguments, and evidence presented herein are entirely new and have
`
`never been considered by the Board, and additionally, the instant Petition
`
`challenges claims not at issue in those other proceedings (i.e., claims 1, 20, and
`
`21). Further, Cisco has not been involved in any previous review of the ’235
`
`Patent. Thus, the Board should proceed to institute trial on the instant Petition, as
`
`doing so would not be duplicative of any previous efforts or unnecessarily
`
`consume the Board’s resources.
`
`V.
`
` CLAIM CONSTRUCTION
`
`This Petition analyzes the claims consistent with the broadest reasonable
`
`interpretation in light of the Specification. See 37 C.F.R. § 42.100(b); Cuozzo
`
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). Terms not specifically
`
`construed below have their plain and ordinary meaning under the broadest
`
`reasonable interpretation. See id.
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
` “parallel network configuration” / “parallel”
`
`A.
`
`The ’235 Patent does not explicitly define the phrase “parallel network
`
`configuration” or the lesser included term “parallel.” In an example, the ’235
`
`Patent describes in prior art FIG. 1 two “frame relay networks in parallel, so that an
`
`alternate path is available if either (but not both) of the frame relay networks fails.”
`
`EX1001, 3:64-66. FIG. 1 depicts that Site 1 can reach Site 2 via either Frame
`
`Relay Network A 106 or Frame Relay Network B 108.
`
`EX1001, FIG. 1
`Thus, a POSITA would have understood
`
`the broadest reasonable
`
`interpretation of “parallel network configuration” or “parallel” to be “providing an
`
`
`
`alternate path to a destination.” EX1005, ¶¶37-38.
`
`B.
`
`“disparate networks”
`
`The ’235 Patent does not explicitly define the term “disparate networks.”
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
`Instead, the ’235 Patent gives examples of networks that are disparate from the
`
`Internet or Internet-based VPNs. For example, the ’235 Patent states that “[v]irtual
`
`private networks are Internet-based, and hence disparate from private networks,
`
`i.e., from frame relay and point-to-point networks.” EX1001, 2:23-26. The ’235
`
`Patent likewise states “[f]rame relay networks are an example of a network that is
`
`‘disparate’ from the Internet.” EX1001, 1:56-60. A dictionary defines “disparate”
`
`as “distinct in kind; essentially different; dissimilar.” EX1012. Furthermore, the
`
`’235 Patent describes FIG. 5 as “illustrating a prior art approach having a frame
`
`relay network configured in parallel with a VPN or other Internet-based network
`
`that is disparate to the frame relay network…” EX1001, 5:25-29.
`
`
`
`EX1001, FIG. 5
`Thus, a POSITA would have understood
`
`the broadest reasonable
`
`interpretation of “disparate networks” to be “networks that are dissimilar or distinct
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
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`in kind.” EX1005, ¶¶40-41.
`
`C.
`
`“private network”
`
`The ’235 Patent does not explicitly define the term “private network.” To
`
`the extent construction of this term is necessary, Petitioner submits that “private
`
`network” should encompass at least frame relay networks, point-to-point networks,
`
`and similar technologies, but should expressly exclude Internet-based solutions.
`
`This is clear from the ’235 Patent, which states “Virtual private networks [VPNs]
`
`are Internet-based, and hence disparate from private networks, i.e., from frame
`
`relay and point-to-point networks.” EX1001, 2:23-25. Accordingly, the patentee’s
`
`lexicographic carve-out excludes Internet-based networks, including Internet-based
`
`VPNs from “private networks.” EX1005, ¶43.
`
`D.
`
`“independent…networks”
`
`The ’235 Patent explicitly defines the term “independent”: “routing
`
`information need not be shared between the networks.” EX1001, 6:2-3.
`
`Accordingly, a POSITA would have understood
`
`the broadest reasonable
`
`interpretation of the phrase “independent…networks” to mean a configuration in
`
`which routing information need not be shared between networks. EX1005, ¶45.
`
`VI.
`
` STATUTORY GROUNDS FOR CHALLENGES
`
`Challenge #1: Claims 5-6, 8, 10, 14, and 22 of the ’235 Patent are obvious
`
`under 35 U.S.C. § 103(a) over Guerin in view of the Admitted Prior Art.
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
`Guerin was filed January 8, 1999 and issued June 5, 2001. Guerin is prior art
`
`under at least 35 U.S.C. § 102(e) by virtue of its January 8, 1999 filing date.
`
`The Admitted Prior Art includes at least FIGs. 1-5 of the ’235 Patent (each
`
`labeled “Prior Art”) and the corresponding description thereof, including column 1,
`
`line 28 to column 4, line 25.
`
`Challenge #2: Claim 7 is obvious under 35 U.S.C. § 103(a) over Guerin in
`
`view of the Admitted Prior Art further in view of U.S. Patent No. 6,748,439 to
`
`Monachello et al. (“Monachello”).
`
`Monachello was filed August 6, 1999 and issued June 9, 2004. Monachello
`
`is prior art under at least 35 U.S.C. § 102(e) by virtue of its August 6, 1999 filing
`
`date.
`
`Challenge #3: Claims 4, 9, 19, and 24 are obvious under 35 U.S.C. § 103(a)
`
`over Guerin in view of the Admitted Prior Art, further in view of “Inside Cisco
`
`IOS Software Architecture” by Bollapragada et al. (“Bollapragada”).
`
`Bollapragada is a printed publication that was published in book form
`
`bearing ISBN 1-57870-181-3 and a 2000 copyright notice and, as evidenced by its
`
`Library of Congress catalog entry, was published on July 28, 2000. See EX1009,
`
`¶2. Bollapragada is prior art under 35 U.S.C. § 102(a) by virtue of its July 28,
`
`2000 publication.
`
`Challenge #4: Claims 11-13 and 23 of the ’235 Patent are obvious under 35
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`Inter Partes Review Petition
`U.S. Patent 6,775,235
`U.S.C. § 103(a) over Guerin in view of the Admitted Prior Art in view of
`
`Bollapragada further in view of U.S. Patent No. 7,296,087 to Peter J. Ashwood
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`Smith (“Smith”).
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`Smith was filed March 17, 2000 and issued November 13, 2007. Smith is
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`prior art under 35 U.S.C. § 102(e) by virtue of its March 17, 2000 filing date.
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`Challenge #5: Claim 20 of the ’235 Patent is obvious under 35 U.S.C. §
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`103(a) over Guerin.
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`Challenge #6: Claim 21 of the ’235 Patent is obvious under 35 U.S.C. §
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`103(a) over Guerin in view of the Admitted Prior Art further in view of “Virtual
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`Private Networks” by Fowler (“Fowler”).
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`Fowler is a printed publication that was published in book form bearing
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`ISBN 1-55860-575-4 and a 1999 copyright notice and, as evidenced by its Library
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`of Congress catalog entry, was published on May 7, 1999. See EX1009, ¶3.
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`Fowler is prior art under 35 U.S.C. § 102(b) by virtue of its May 7, 1999
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`publication.
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`Challenge #7: Claims 1 and 15 of the ’235 Patent are obvious under 35
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`U.S.C. § 103(a) over Guerin in view of the Admitted Prior Art in view of
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`Bollapragada further in view of U.S. Patent No. 6,122,743 to Shaffer et al.
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`(“Shaffer”).
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`Shaffer was filed March 31, 1998 and issued September 19, 2000. Shaffer is
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`prior art under 35 U.S.C. § 102(b) by virtue of its September 19, 2000 publication.
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`Shaffer is also prior art under 35 U.S.C. § 102(a).
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` LEVEL OF ORDINARY SKILL IN THE ART
`VII.
`
`A.
`
`Summary
`
`A person of ordinary skill in the art (“POSITA”) in the field of the ’235
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`Patent as of December 29, 2000 would have been someone knowledgeable in the
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`design of networks or network architecture. That person would have (i) a
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`Bachelor’s degree in Computer Science, Electrical and/or Computer Engineering,
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`or equivalent training, and (ii) approximately two years of experience working in
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`the field of network architecture. EX1005, ¶32.
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` NOTE REGARDING PAGE CITATIONS AND EMPHASIS
`VIII.
`
`Petitioner’s citations to the exhibits used below use the page, paragraph, or
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`column numbers in their original publication. Unless otherwise specified, all bold
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`italics emphasis below has been added. Quoted text in italics is used to signify
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`claim language.
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`IX.
`
` CLAIMS 1, 4-15, AND 19-24 ARE UNPATENTABLE
`
`A. Challenge 1: Claims 5-6, 8, 10, 14, and 22 are obvious under 35
`U.S.C. § 103(a) over Guerin in view of the Admitted Prior Art
`
`1. Overview of Guerin
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`Guerin is titled “Dynamic Selection of Network Providers” and discloses a
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`system in which two users “can dynamically select and use a single Internet or
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`other network service provider (ISP) from among a multitude of ISPs based on the
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`application requirements.” EX1006, Abstract. Guerin “provides a mechanism for
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`the end-user to take advantage of different rates or services that might be provided
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`by competing Internet and/or other network service providers.” Id.
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`2. Overview of Admitted Prior Art
`
`The ’235 Patent describes “[v]arious architectures involving multiple
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`networks” as “known in the art,” in FIGS. 1-5. EX1001, 2:34-35. As one
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`example, FIG. 5, labeled as PRIOR ART, depicts a Site 1 connected to Site 2 via
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`Router A1, Frame Relay Network A, and Router A2. Site 1 is also connected to
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`Site 2 via Router B1, Internet/Virtual Private Network, and Router B2. EX1001,
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`FIG. 5. FIG. 5 is described as “illustrating a prior art approach having a frame
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`relay network configured in parallel with a VPN or other Internet-based network
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`that is disparate to the frame relay network.” EX1001, 5:25-29.
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`3. Analysis
`
`Claim 5
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`[5.0] A method for combining connections for access to disparate parallel
`networks, the method comprising the steps of:
`Guerin and the Admitted Prior Art teach the preamble of claim 5.
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`Guerin is directed to networks in which “communication between two
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`communicators may be accomplished using more than one network provider,” and
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`FIG. 1 shows networks at two sites “connected together by means of two Internet
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`(and/or other network) Service Provider networks, 105 and 107.” EX1006, 1:5-9,
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`2:35-42. Thus, Guerin teaches “combining connections for access.” EX1005, ¶63.
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`A POSITA would have understood that Guerin teaches “parallel networks,”
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`because networks 105 and 107 provide alternate paths to destination site network
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`103. EX1005, ¶¶64-65. Guerin states that “ISP network 105 provides an
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`expensive but low-delay service between sites 101 and 103, while ISP network 107
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`provides a cheaper but higher-delay service between the same sites.” EX1006,
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`2:39-47. Thus, Guerin teaches “combining connections for access to … parallel
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`networks.” EX1005, ¶¶64-65.
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`EX1006, FIG. 1
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`
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`A POSITA would have further understood Guerin’s networks 105 and 107
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`to be suggestive of “disparate parallel networks” as construed, as Guerin states
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`that “characteristics of ISP networks 105 and 107 are assumed to be quite
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`different.” EX1006, 2:42-44; EX1005, ¶66. Thus, the networks are suggested to
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`be “dissimilar or distinct in kind” consistent with the construction of the phrase
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`“disparate networks.”
`
`The Admitted Prior Art teaches “disparate parallel networks” in FIG. 5, as
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`the frame relay network and the Internet or a VPN are “networks which are
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`dissimilar or distinct in kind.” EX1001, FIG. 5; EX1005, ¶67. Specifically, FIG. 5
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`of the ’235 Patent depicts an Internet-based network (“Internet/Virtual Private
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`Network 500/502”)and a private network (“Frame Relay Network A 106”) serving
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`as alternate paths from site 1 to site 2:
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`
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`’235 Patent, FIG. 5 (EX1001) – Admitted Prior Art
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`FIG. 5 is described as an “approach having a frame relay network configured
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`in parallel with a VPN or other Internet-based network that is disparate to the
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`frame relay network.” EX1001, 5:20-24. Thus, the Admitted Prior Art teaches
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`“disparate parallel networks.” EX1005, ¶68.
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`The combination of Guerin and the Admitted Prior Art would have been
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`obvious for several reasons. First, Guerin and the Admitted Prior Art are
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`analogous prior art, and in the same field of endeavor. EX1005, ¶69. Both
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`references are explicitly directed to data transmission over multiple networks.
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`Guerin describes “dynamically select[ing] different providers,” while the Admitted
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`Prior Art describes “[v]arious architectures involving multiple networks…known
`
`in the art.” EX1006, Abstract; EX1001, 2:34-35. “Art is analogous when it is: (1)
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`from the same field of endeavor as the claimed invention.” In re Bigio, 381 F.3d
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`1320, 1325-1326 (Fed. Cir. 2004).
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`Second, the Admitted Prior Art suggests the combination. The Admitted
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`Prior Art describes FIG. 5 as providing a solution which is “advantageous in the
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`flexibility and choice [it] offer[s] in cost, in service providers, and in vendors.”
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`EX1001, 4:5-14. Thus, a POSITA would have been motivated to use Guerin’s
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`techniques of selecting a network service provider from amongst multiple
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`providers in an environment in which an Internet-based solution and frame relay
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`network were offered as possible network service providers. EX1005, ¶70.
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`As Dr. Reddy notes, a POSITA would have been motivated to utilize a VPN
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`in parallel with a frame relay network, as shown in FIG. 5, because the use of
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`network interfaces to networks having dissimilar congestion and failure modes was
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`well understood at the time of the invention to provide reliability benefits.
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`EX1005, ¶71. A contemporaneous frame relay textbook teaches the arrangement
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`of FIG. 5 as a potential solution if a company wishes to use a VPN: “a company
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`[may need] a frame relay backup for a VPN application.” EX1013 (Buckwalter),
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`p. 19; EX1005, ¶71. Thus, incorporating the teachings of the Admitted Prior Art
`
`of using an Internet-based VPN with a frame relay network, as suggested by
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`Buckwalter, into Guerin would have been no more than the combination of known
`
`elements according to known methods (e.g., network architecture design), and
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`would have been obvious to a POSITA at the time of the ’235 Patent. EX1005,
`
`¶71.
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`Third, a POSITA would have recognized certain benefits of
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`the
`
`combination. For example, a POSITA would have recognized that, as informed by
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`Buckwalter, frame relay networks are typically more reliable than Internet-based
`
`VPNs, but would have also recognized that Internet-based VPNs are comparatively
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`less expensive than a frame relay network. EX1013 (Buckwalter), p.19. Thus, a
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`POSITA would have recognized that a frame relay network serving as a backup to
`
`an Internet-based VPN would have provided a balance between reliability and cost,
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`and would have been an obvious solution to a POSITA at the time of the ’235
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`Patent. EX1005, ¶72. To the extent there are also detriments, “obviousness must
`
`be determined in light of all the facts, and there is no rule that a single reference
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`that teaches away will mandate a finding of nonobviousness…a given course of
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`action often has simultaneous ad