Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 8
`Filed: July 14, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIPTELA, INC.,
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS INDIA LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-00680
`Patent 7,406,048 B2
`____________
`
`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`Fatpipe Exhibit 2010, pg. 1
`Cisco v. Fatpipe
`IPR2017-01845
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`

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`IPR2017-00680
`Patent 7,406,048 B2
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`A. Background
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`I. INTRODUCTION
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`Viptela, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) seeking to
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`institute an inter partes review of claims 1–24 of U.S. Patent No. 7,406,048
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`B2 (Ex. 1003, “the ’048 patent”) pursuant to 35 U.S.C. §§ 311–319. FatPipe
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`Networks India Limited1 (“Patent Owner”) filed a Preliminary Response.
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`(Paper 6, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a),
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`which provides that an inter partes review may not be instituted “unless . . .
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`there is a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.”
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`Petitioner contends the challenged claims are unpatentable under
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`35 U.S.C. §§ 102 and 103 on the following specific grounds (Pet. 10–60):
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`Reference(s)
`
`Karol2
`
`§ 102
`
`Basis Claims Challenged
`1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18, 19,
`21, 22, and 24
`Karol and Stallings3 § 103 1–5, 7–11, 13–17, and 19–23
`Karol
`§ 103 1–24
`
`
`1 The panel takes notice that the caption in Patent Owner’s Preliminary
`Response (Paper 6) reads “FATPIPE NETWORKS PRIVATE LIMITED,”
`which is a change from what Patent Owner stated as the Real Party-In-
`Interest in its Mandatory Notices (Paper 5, 1). The panel reminds Patent
`Owner that pursuant to 37 C.F.R. § 42.8(a)(3), new mandatory notices must
`be filed within 21 days if there are any changes to the information required
`under 37 C.F.R. § 42.8(b).
`
`2 U.S. Patent No. 6,628,617 B1 (“Karol,” Ex. 1006).
`
`3 William Stallings, Data and Computer Communications, Prentice-Hall, 5th
`Ed., 1997, ISBN-81-203-1240-6 (“Stallings,” Ex. 1011).
`
`2
`
`Fatpipe Exhibit 2010, pg. 2
`Cisco v. Fatpipe
`IPR2017-01845
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`IPR2017-00680
`Patent 7,406,048 B2
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`For reasons discussed below, we decline to institute inter partes review of
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`claims 1–24 of the ʼ048 patent.
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`B. Related Proceedings
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`The parties inform us FatPipe, Inc. v. Viptela, Inc., No. 1:16-CV-182
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`(D. Del.), may be impacted by this proceeding. Pet. 1; Paper 5, 1–2. In
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`addition, Petitioner seeks inter partes review of a related patent, U.S. Patent
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`No. 6,775,235 B2 (IPR2017-00684). Id. We also note that Talari Networks,
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`Inc. and Patent Owner are involved in inter partes reviews regarding both
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`the ’048 patent (IPR2016-00977) and the related 6,775,235 patent (IPR2016-
`
`00976). Pet. 2; Paper 5, 2.
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`C. The ʼ048 Patent
`
`The ’048 patent describes a system and method for communicating
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`using two or more disparate networks in parallel. Ex. 1003, Abstract. For
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`example, an embodiment of this system could be composed of a virtual
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`private network (“VPN”) in parallel with a frame relay network. Id. at 1:19–
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`24. These parallel networks back each other up in case of failure and when
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`both networks are operational their loads are balanced between the parallel
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`networks. Id. at Abstract. An embodiment of this system is depicted in
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`Figure 10, which is shown below.
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`3
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`Fatpipe Exhibit 2010, pg. 3
`Cisco v. Fatpipe
`IPR2017-01845
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`IPR2017-00680
`Patent 7,406,048 B2
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`Figure 10 depicts an example of the network topology described in the ’048
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`patent. Id. at 8:22–23. Two sites 102 transmit and/or receive data from one
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`another. Id. at 2:38–40. These sites are connected by two disparate
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`networks, Internet 500 and frame relay network 106. Id. at 8:30–32. Each
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`location has frame relay router 105 and Internet router 104. Id. at 8:23–26.
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`“Access to the disparate networks at site A and site B is through an inventive
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`controller 602 at each site.” Id. at 6:30–31. Controller 602 “allows load-
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`balancing, redundancy, or other criteria to be used dynamically, on a
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`granularity as fine as packet-by-packet, to direct packets to an Internet router
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`and/or frame relay/point-to-point router according to the criteria.” Id. at
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`9:4–9.
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`
`
`Figure 7 of the ’048 patent is reproduced below.
`
`4
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`Fatpipe Exhibit 2010, pg. 4
`Cisco v. Fatpipe
`IPR2017-01845
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`IPR2017-00680
`Patent 7,406,048 B2
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`
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`Figure 7 depicts controller 602. Id. at 10:48–49. Controller 602 is
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`connected to site 102 via site interface 702. Id. at 10:49–51. Packet path
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`selector 704 is hardware or software that determines which path a given
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`packet is to travel. Id. at 10:54–57. The criteria used to determine which
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`path a packet travels may be based on concerns such as redundancy,
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`load-balancing, or security. Id. at 10:61–11:50. Controller 602 also has two
`
`or more network interfaces 706 (at least one per each network for which
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`controller 602 controls access). Id. at 11:51–53.
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`D. Illustrative Claims
`
`As noted above, Petitioner challenges claims 1–24 of the ʼ048 patent,
`
`of which claims 1, 7, 13, and 19 are independent. Claims 1 and 7 are
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`illustrative of the challenged claims and are reproduced below:
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`1. A controller which controls access to multiple independent
`disparate networks in a parallel network configuration,
`the disparate networks 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
`
`5
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`Fatpipe Exhibit 2010, pg. 5
`Cisco v. Fatpipe
`IPR2017-01845
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`IPR2017-00680
`Patent 7,406,048 B2
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`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.
`
`Id. at 16:56–17:7.
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`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.
`
`Id. at 17:29–39.
`
`II. CLAIM CONSTRUCTION
`
`In an inter partes review, “[a] claim in an unexpired patent shall be
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`given its broadest reasonable construction in light of the specification of the
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`patent in which it appears.” 37 C.F.R. § 42.100(b). Under this standard, we
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`construe claim terms using “the broadest reasonable meaning of the words in
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`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
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`otherwise that may be afforded by the written description contained in the
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`6
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`Fatpipe Exhibit 2010, pg. 6
`Cisco v. Fatpipe
`IPR2017-01845
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`IPR2017-00680
`Patent 7,406,048 B2
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`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
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`1997).
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`Petitioner submits a list of terms for which Patent Owner has
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`proposed construction in a co-pending district court case. Pet. 7–8.
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`Petitioner, however, asserts that for the purposes of this Decision no terms
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`need to be construed. Id. Patent Owner does not address claim construction
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`in its Preliminary Response. See generally Prelim. Resp. We reviewed the
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`asserted grounds, and, for the purposes of this Decision, we have determined
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`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
`
`Patent Owner’s Preliminary Response focuses on the issue of whether
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`the Board should exercise its discretion and deny institution of Petitioner’s
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`asserted grounds under 35 U.S.C. § 325(d). Prelim. Resp. 1–10. As noted
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`by Patent Owner, we instituted IPR2016-00977 on November 2, 2016, and
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`in that proceeding we instituted inter partes review of all of the challenged
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`claims on the same art and the same grounds now asserted in this Petition.
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`Id. at 2. Thus, Patent Owner argues that substantially the same arguments
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`are before the office and, therefore, we should exercise our discretion and
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`decline institution of the instant Petition. Id.
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`Petitioner characterizes its Petition as having substantial identity with
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`the previously instituted proceeding, specifically stating that “[t]he‘048
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`Patent is also subject to a separate proceeding before the Board in IPR2016-
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`00977, filed by Talari Networks, Inc. (the ‘’977 IPR’).” Pet. 2. Petitioner
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`acknowledges that we instituted review in that proceeding and describes its
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`Petition as “substantially identical to the Petition in the ’977 IPR.” Id.
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`7
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`Fatpipe Exhibit 2010, pg. 7
`Cisco v. Fatpipe
`IPR2017-01845
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`IPR2017-00680
`Patent 7,406,048 B2
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`Institution of an inter partes review is discretionary. See 35 U.S.C.
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`§ 314(a) (authorizing institution of an inter partes review under particular
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`circumstances, but not requiring institution under any circumstances);
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`37 C.F.R. § 42.108(a) (“the Board may authorize the review to proceed”)
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`(emphasis added); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
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`(Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but
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`never compelled, to institute an IPR proceeding”). Therefore, the question
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`before us is whether we should exercise our discretion and decline to go
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`forward with this Petition in light of the “substantially identical” proceeding
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`that is already before us. Our concern is not only whether “the same or
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`substantially the same prior art or arguments previously were presented to
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`the Office” as expressed in § 325(d), but also managing the resources of the
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`Office in order to secure the just, speedy, and inexpensive resolution of the
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`challenges to the patentability of the ’048 patent. See 37 C.F.R. § 42.1(b);
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`see also 35 U.S.C. § 316(b) (regulations for inter partes review proceedings
`
`take into account “the efficient administration of the Office” and “the ability
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`of the Office to timely complete [instituted] proceedings”); and see H.R.
`
`Rep. No. 112-98, pt.1, at 48 (2011) (post-grant proceedings conducted under
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`the AIA “are not to be used as tools for harassment or a means to prevent
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`market entry through repeated litigation and administrative attacks on the
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`validity of a patent. Doing so would frustrate the purpose of the section as
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`providing quick and cost effective alternatives to litigation.”). We review
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`the facts and analyze the issues before us in light of the discretion afforded
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`to us pursuant to §§ 314(a) and 325(d).
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`First, we note that the ’977 IPR is in an advanced state. The Patent
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`Owner Response (’977 IPR Paper 22, filed Feb. 8, 2017) was filed nearly six
`
`8
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`Fatpipe Exhibit 2010, pg. 8
`Cisco v. Fatpipe
`IPR2017-01845
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`IPR2017-00680
`Patent 7,406,048 B2
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`months ago, the Petitioner’s Reply was filed approximately two months ago
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`(’977 IPR Paper 26, filed May 18, 2017), and the proceeding is set for final
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`oral hearing in a few weeks (’977 IPR Paper 29, setting the proceeding for
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`oral hearing on August 14, 2017). A final decision is due in the ’977 IPR by
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`November 2, 2017. Thus, the ’977 IPR is in its final stages and the grounds
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`asserted in the instant Petition, which are “substantially identical” to those in
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`the ’977 IPR, are set for a final disposition in the near term. This is a fact
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`that weighs in favor of us exercising discretion not to move forward with the
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`instant Petition because the issues raised herein are fully briefed and ripe for
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`a final decision in the ’977 IPR.
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`Second, we are mindful of the fact that Petitioner is not involved in
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`the ’977 IPR. It is important that we not extinguish Petitioner’s access to the
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`proceedings before this body just because another party has sought review of
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`the same claims. This is significant because a second petitioner has no
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`control over the decision to see a review through a determination on the
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`merits if the second petitioner is not a party in that matter. We must
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`examine the facts of the matter before us to take care that we do not impose
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`a strict bright line determination barring petitions from entities that are not
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`party to the original proceeding. Therefore, we need to examine the facts of
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`the case before us to determine whether it is appropriate to exercise our
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`discretion in this particular circumstance. As discussed previously, the
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`parties to the ’977 IPR have fully briefed that matter and it is set for final
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`oral hearing in a matter of weeks. At this point, the decision in the ’977 IPR
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`as to whether to see the matter through to final determination is squarely in
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`our hands, regardless of whether any settlement is reached between the
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`parties. See 37 C.F.R. § 42.74(a) (“The parties may agree to settle any issue
`
`9
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`Fatpipe Exhibit 2010, pg. 9
`Cisco v. Fatpipe
`IPR2017-01845
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`IPR2017-00680
`Patent 7,406,048 B2
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`in a proceeding, but the Board is not a party to the settlement and may
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`independently determine any question of jurisdiction, patentability, or Office
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`practice.”). Thus, if we deem it appropriate, we can reach a final decision on
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`the grounds presented in the ’977 IPR with or without participation from the
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`petitioner in that matter. Therefore, the fact that Petitioner is not a party to
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`the ’977 IPR is at best neutral to our analysis due to the identity of the issues
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`presented in the two petitions.
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`Third, Petitioner makes no argument as to why we should go forward
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`with this Petition in light of the ’977 IPR. Petitioner knew of the previous
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`petition and described the two petitions as “substantially identical.” Pet. 2.
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`The instant Petition was filed January 13, 2017, more than two months after
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`the institution of the ’977 IPR. See ’977 IPR Paper 7 (instituting the ’977
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`IPR on November 2, 2016). Thus, Petitioner had the benefit of reviewing
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`Patent Owner’s Preliminary Response and our Decision on Institution prior
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`to filing its Petition. Petitioner did not seek to join the prior proceeding, but
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`instead decided to go forward with its own “substantially identical” Petition.
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`We are not persuaded that it would be an efficient use of our resources to
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`address duplicative grounds that raise no new art or arguments. See
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`Samsung Elec. Co. v. Rembrandt Wireless Techs., LP, Case IPR2015–
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`00114, slip op. at 6 (PTAB Jan. 28, 2015) (Paper 14) (“[I]t is more efficient
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`for the parties and the Board to address a matter once rather than twice.”).
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`This is especially true in light of the advanced stage of the ’977 IPR.
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`Therefore, we find these facts also weigh against proceeding with the instant
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`Petition.
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`10
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`Fatpipe Exhibit 2010, pg. 10
`Cisco v. Fatpipe
`IPR2017-01845
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`

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`IPR2017-00680
`Patent 7,406,048 B2
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`As discussed above, the facts of this case support exercising our
`
`discretion under §§ 314(a) and 325(d). Thus, we decline Petitioner’s request
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`to institute inter partes review of claims 1–24 of the ’048 patent.
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`IV. CONCLUSION
`
`After due consideration of the record before us and for the foregoing
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`reasons, we conclude that the circumstances of this case justify exercising
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`our discretion under 35 U.S.C. §§ 314(a) and 325(d) to deny institution of an
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`inter partes review.
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`V. ORDER
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`Accordingly, it is:
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`ORDERED that the Petition is denied as to all challenged claims of
`
`the ’048 patent and no trial is instituted.
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`
`
`
`
`PETITIONER:
`
`Robert Hilton
`George Davis
`MCGUIREWOODS LLP
`rhilton@mcguirewoods.com
`gdavis@mcguirewoods.com
`
`PATENT OWNER:
`
`Robert Mattson
`Thomas Yebernetsky
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketmattson@oblon.com
`tyebernetsky@oblon.com
`
`11
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`Fatpipe Exhibit 2010, pg. 11
`Cisco v. Fatpipe
`IPR2017-01845
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