Case 3:19-cv-04741-WHO Document 71 Filed 08/05/20 Page 1 of 8
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`Alan M. Fisch (pro hac vice)
`alan.fisch@fischllp.com
`R. William Sigler (pro hac vice)
`bill.sigler@fischllp.com
`Jeffrey M. Saltman (pro hac vice)
`jeffrey.saltman@fischllp.com
`Adam A. Allgood (SBN: 295016)
`adam.allgood@fischllp.com
`FISCH SIGLER LLP
`5301 Wisconsin Avenue NW
`Fourth Floor
`Washington, DC 20015
`Tel: 202.362.3500
`Fax: 202.362.3501
`
`Ken K. Fung (SBN: 283854)
`ken.fung@fischllp.com
`FISCH SIGLER LLP
`400 Concar Drive
`San Mateo, CA 94402
`Tel: 650.362.8207
`Fax: 202.362.3501
`
`Counsel for Defendant
`Juniper Networks, Inc.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
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`PACKET INTELLIGENCE LLC,
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`Case No. 3:19-cv-04741-WHO
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`Plaintiff,
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`JUNIPER’S SUR-REPLY CLAIM
`CONSTRUCTION BRIEF
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`v.
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`JUNIPER NETWORKS, INC.,
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`Defendant.
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`JUNIPER’S SUR-REPLY
`CLAIM CONSTRUCTION BRIEF
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`CASE NO. 3:19-cv-4741-WHO
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`Packet Intelligence LLC Exh 2072
`Juniper Networks, Inc., et al v. Packet Intelligence LLC
`IPR2020-00486
`Page 1 of 8
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`Case 3:19-cv-04741-WHO Document 71 Filed 08/05/20 Page 2 of 8
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`Per the parties’ stipulation,1 Juniper respectfully submits this sur-reply claim construction
`brief to address the arguments that Packet Intelligence raised in its reply brief regarding the Fed-
`eral Circuit’s July 14, 2020 NetScout opinion.2
`I.
`INTRODUCTION
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`Neither Packet Intelligence nor NetScout argued on appeal that the district court had in-
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`correctly construed any disputed terms. Indeed, the portion of the Federal Circuit’s opinion that
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`Packet Intelligence features in its reply brief addresses NetScout’s non-infringement theory, not
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`the district court’s claim construction. Thus, the NetScout decision is neither a referendum on the
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`NetScout claim construction nor a binding repudiation of Juniper’s claim construction positions
`here, contrary to what Packet Intelligence asserts.3
`II.
`BACKGROUND ON THE NETSCOUT OPINION
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`The Eastern District of Texas presided over two jury trials where Packet Intelligence pre-
`viously asserted some of the same patents asserted here, as detailed in Juniper’s response brief.4
`Sandvine’s jury returned a non-infringement verdict, which was not appealed.5 But NetScout’s
`jury found it liable, which precipitated the appeal that is this briefing’s focus. On appeal,
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`NetScout argued that its products do not infringe because they do not “associate” flow entries for
`connection flows into “conversational flows.”6 Although Packet Intelligence described that argu-
`ment as “claim construction in disguise,”7 NetScout’s appeal did not contend that the district
`court erred in construing any claim terms, much less any of the disputed terms here.8 On July 14,
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`1 Dkt. #70 (Joint Stipulation).
`2 Dkt. #68 (citing Packet Intelligence LLC v. NetScout Sys., Inc., No. 2019-2041, 2020 WL
`3966973 (Fed. Cir. July 14, 2020) (“NetScout opinion”)).
`3 Dkt. #68 at 1, 5–8 (arguing that NetScout opinion is controlling here on the two disputed terms
`“flow-entry database” and “the flow/new flow/existing flow”).
`4 See Dkt. #62 at 9–13.
`5 Packet Intelligence dismissed its appeal shortly after filing it. See Fed. Cir. Case 2019-1069.
`6 E.g., Fed. Cir. Case 2019-2041, Dkt. #20 at 22–23.
`7 Fed. Cir. Case 2019-2041, Dkt. #27 at 11; see also id. at 12 (arguing “PI’s expert applied the
`district court’s unappealed claim constructions”); id. at 20–21 (arguing that if NetScout desired a
`narrower construction of conversational flow, “it could (and should) have sought [one]”).
`8 As previously noted, the NetScout parties agreed on the court’s construction of “conversational
`flow,” see Dkt. #62 at 11, so it is unsurprising that NetScout did not argue that this was error.
`And although the NetScout parties disputed “flow-entry database,” the court found it unnecessary
`JUNIPER’S SUR-REPLY
`CLAIM CONSTRUCTION BRIEF
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`2020, the Federal Circuit decided the NetScout appeal, eliminating more than 40% of Packet In-
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`telligence’s awarded damages but otherwise affirming the judgment. The Federal Circuit’s deci-
`sion issued about two weeks after Juniper filed its responsive claim construction brief here.9
`III. ARGUMENT
`Because claim construction is an issue of law, stare decisis may require a district court to
`adhere to a prior Federal Circuit construction of a disputed claim term.10 But the application of
`stare decisis requires an actual prior decision. And here, there is not one, as the Federal Circuit
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`did not (and was not asked to) construe any terms, much less any at issue in this case.
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`As Judge Gilliam recently ruled in In re Koninklijke Philips Patent Litigation, “stare de-
`cisis applies only to legal issues that were actually decided in a prior action.”11 Thus, in that case,
`the Court rejected arguments about how a Federal Circuit decision was binding on constructions
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`of the disputed “identifying,” “determining,” and “retrieving” terms, since “there was no evi-
`dence” that the Federal Circuit had actually addressed the proper constructions of those terms.12
`Other courts have reached similar conclusions, including in situations where the Federal Circuit
`discusses but does not construe disputed claim terms.13
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`to specify that stored flow entries “describe a previously encountered flow involving more than
`one connection” because “‘conversational flows’ appear in surrounding claim language,” and
`thus “such limitations are [already] recited by other claim language.” E.D. Tex. Case 2:16-cv-
`230-JRG, Dkt. #66 at 10; see also E.D. Tex. Case 2:16-cv-147-JRG, Dkt. #91 at 7 (emphasizing
`that a conversational flow “requires ‘more than one connection’” when denying Packet Intelli-
`gence’s post-trial motions in Sandvine) (emphasis in original).
`9 2020 WL 3966973, at *9–12 (reversing $3.5 million in damages for pre-suit infringement).
`10 See Ottah v. Fiat Chrysler, 884 F.3d 1135, 1139–40 (Fed. Cir. 2018); but see Teva Pharm.
`USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (holding that claim construction involves underly-
`ing factual disputes that are reviewed for clear error); Helvering v. Hallock, 309 U.S. 106, 119
`(1940) (explaining that “stare decisis is a principle of policy and not a mechanical formula of ad-
`herence to the latest decision”).
`11 No. 18-cv-1885-HSG, 2020 WL 2733931, at *1 (N.D. Cal. May 26, 2020) (quoting Beacon
`Oil Co. v. O’Leary, 71 F.3d 391, 395 (Fed. Cir. 1995)).
`12 2020 WL 2733931, at *1 (further noting that the Federal Circuit expressly declined to address
`a fourth term, and concluding that all these “claim construction issues were not actually ad-
`dressed and decided by the Federal Circuit”).
`13 See, e.g., Icon Health & Fitness, Inc. v. Hoist Fitness Systems, Inc., 2015 WL 4077739, at *4
`(D. Utah 2015) (finding that stare decisis did not apply where Federal Circuit mentioned but did
`not adopt construction for disputed term); Noah Sys., Inc. v. Intuit Inc., 2011 WL 6090697, at *4
`(W.D. Pa. Dec. 7, 2011) (finding stare decisis did not apply where Federal Circuit “has not con-
`ducted a de novo review” of claim constructions that party argued were binding); Kinetic Con-
`cepts, Inc. v. Wake Forest Univ. Health Scis., 2013 WL 6164592, at *10 (W.D. Tex. Nov. 25,
`JUNIPER’S SUR-REPLY
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`Indeed, there are no accidental, implicit, or inadvertent claim constructions at the Federal
`Circuit14—and for good reason. The Federal Circuit has recognized that because its claim con-
`struction decisions are precedential, basing such decisions on undeveloped records may prejudice
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`parties in future litigation involving the same patents. In Key Pharmaceuticals v. Hercon Labor-
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`atories Corp., the Federal Circuit stated: “We do not take our task lightly in this regard, as we
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`recognize the national stare decisis effect that this court’s decisions on claim construction
`have.”15 So when the Federal Circuit does rule on the construction of a disputed term, it does so
`clearly and formally.16 And even in those situations, the construction is not binding for other pa-
`tents, or even other claims in the same patent, that the Federal Circuit did not address.17
`The NetScout opinion includes none of the touchstones of a formal and binding claim
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`construction, and its limited holding does not bind this Court on any disputed claim terms here.
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`To be sure, NetScout agreed that claim 19 of the ’789 patent was representative for purposes of
`infringement,18 and the Federal Circuit explained that NetScout’s non-infringement theory relied
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`2013) (noting stare decisis does not attach to observations about patent subject matter); Ultradent
`Prod., Inc. v. Hayman, 2002 WL 34477127, at *20 (C.D. Cal. Jan. 11, 2002) (rejecting argu-
`ments that Federal Circuit implicitly construed term “not necessary for the disposition”).
`14 See Miken Composites, L.L.C. v. Wilson Sporting Goods Co., 515 F.3d 1331, 1338, n.* (Fed.
`Cir. 2008) (indicating stare decisis only applies to claim construction issue if it was a “necessary
`predicate” to an earlier ruling) (quoting Zenith Radio Corp. v. United States, 783 F.2d 184, 187
`(Fed. Cir. 1986)); Omaha Pub. Power Dist. v. United States, 44 Fed. Cl. 383, 387 (1999) (“[A]
`case will not be treated as binding precedent on a point of law where the holding is only implicit
`or assumed in the decision but is not announced.”), aff’d 271 F.3d 1357 (Fed. Cir. 2001).
`15 161 F.3d 709, 716 (Fed. Cir. 1998); see also Metro. Life Ins. Co. v. Bancorp Servs., LLC, 527
`F.3d 1330, 1336 (Fed. Cir. 2008) (declining to resolve claim construction issue district court had
`not “expressly” addressed); Wavetronix LLC v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1355
`(Fed. Cir. 2009) (noting potential prejudice and detailing three reasons why, in that case, the
`court would “accept the parties’ invitation” to construe a term “in the first instance”); Apex Inc.
`v. Raritan Computer, Inc., 325 F.3d 1364, 1374–75 (Fed. Cir. 2003) (where record had not been
`sufficiently developed, declining to construe terms because this “could be prejudicial”).
`16 See, e.g., Rambus Inc. v. Hynix Semiconductor Inc., 569 F. Supp. 2d 946, 964 (N.D. Cal. 2008)
`(relying on stare decisis to adopt Federal Circuit’s express constructions of five disputed terms,
`and quoting each of those express constructions for ease of reference); SpeedTrack, Inc. v. Ama-
`zon.com, Inc., No. 4:09-cv-4479-JSW, 2019 WL 5864630, at *2 (N.D. Cal. Nov. 8, 2019) (“The
`Federal Circuit affirmed Judge Hamilton’s construction of ‘category description’ …. Accord-
`ingly, [that] construction of ‘category description’ governs.”).
`17 See, e.g., Virginia Innovation Scis., Inc. v. Amazon.com, Inc., 2019 WL 4259020, at *37 (E.D.
`Tex. Sept. 9, 2019); Ultradent, 2002 WL 34477127, at *20.
`18 NetScout, 2020 WL 3966973, at *2.
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`solely on that claim’s “memory limitation”:
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`NetScout’s two-step theory concerning why it is not an infringer relies entirely on
`claim 19’s memory limitation. First, NetScout argues that the limitation requires
`correlating connection flows into conversational flows. Then, under NetScout’s un-
`derstanding of the claim language, NetScout submits that its products cannot in-
`fringe because [they] track connection flows but never join them together.19
`The Federal Circuit rejected that theory because the memory limitation only recites storing con-
`versational flow entries, not the action of “joining” stored connection flow entries.20 As the court
`emphasized, “a limitation requiring memory for storing flow entries for previously encountered
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`conversational flows does not require the added action of correlating connection flow entries into
`conversational flows.”21 And “[e]ven if NetScout were correct,” substantial evidence would still
`support the verdict.22
`Further, the Federal Circuit confirmed that it did not independently construe any claim
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`terms, explicitly noting that, by failing to timely object at trial, NetScout had waived any argu-
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`ment that Packet Intelligence’s evidence was inconsistent with the district court’s claim construc-
`tions.23 As such, the Federal Circuit’s analysis was “confined to whether substantial evidence
`support[ed] the jury’s verdict under the undisputed claim construction at trial.”24
`Here, by contrast, Juniper has not waived any arguments. Nor has Juniper agreed that the
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`infringement analysis depends entirely on the “memory limitation” in claim 19 of the ’789 pa-
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`tent, or argued that this limitation requires an “added action.” Indeed, despite what Packet Intelli-
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`gence implies, the Federal Circuit did not address whether any other limitations in claim 19 (or
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`19 2020 WL 3966973, at *3 (emphasis in original, internal citation omitted); see also id. at *4
`(reaching conclusion based on “the evidence presented to the jury on claim 19’s memory limita-
`tion and because NetScout has challenged no other aspect of the jury’s infringement finding”).
`20 Id. (quoting “claim 19’s memory limitation,” which recites “a memory for storing a database
`comprising none or more flow-entries for previously encountered conversational flows, each
`flow-entry identified by identifying information stored in the flow entry”).
`21 Id. (emphasis in original). Both times that Packet Intelligence quotes this sentence in the
`NetScout opinion, Packet Intelligence obscures the court’s emphasis on the word “storing.” See
`Dkt. #68 at 6 (bolding and italicizing last 27 words, without noting what the Federal Circuit
`chose to emphasize); id. at 7 (quoting with emphasis omitted).
`22 2020 WL 3966973, at *4 (noting, inter alia, the example that “NetScout’s products use the in-
`formation in memory to create a ‘key performance index’”).
`23 See id. at *8.
`24 Id.
`JUNIPER’S SUR-REPLY
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`another claim) might perform such an action, or whether the database’s flow entries for conver-
`sational flows nonetheless must involve more than one connection flow.25 Juniper’s arguments
`on “conversational flow” (which “flow-entry database” recites) and how that term cannot be sat-
`isfied with only connection flows also were not before the Federal Circuit.26 Nor were all the
`limiting statements about those terms that Packet Intelligence made during prosecution and IPRs,
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`which are binding as a matter of law, before that court.
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`Thus, contrary to Packet Intelligence’s arguments, nothing in the NetScout opinion is
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`binding on the “flow-entry database” and “the flow/new flow/existing flow” terms, or any other
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`disputed claim term here. And even if that were otherwise, Juniper’s proposals are entirely con-
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`sistent with the Federal Circuit’s opinion.
`IV. CONCLUSION
`Juniper agrees that the principles of stare decisis undergird our nation’s system of justice.
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`But stare decisis requires an actual prior decision, and the NetScout opinion did not construe any
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`of the terms that are disputed here. As such, it does not change the efficacy of any of Juniper’s
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`prior submitted claim construction briefing or expert reports. Accordingly, Juniper respectfully
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`asks the Court to give meanings to the disputed terms that are consistent with Packet Intelli-
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`gence’s declarations, thus protecting the public, including Juniper, from Packet Intelligence’s ef-
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`forts to expand its monopoly rights to include that which is already in the public domain.
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`25 Twice, the Federal Circuit expressly stated that NetScout’s arguments relied entirely on the
`“memory limitation.” Given that, there is nothing surprising about the court’s conclusion that the
`“memory,” i.e., a component for storing information, did not perform an “added action” of corre-
`lating connection flow entries together. Contrary to what Packet Intelligence suggests, the Fed-
`eral Circuit never addressed other “flow-entry database limitations,” see Dkt. #68 at 6, much less
`the “lookup engine” or “flow insertion engine” limitations that Packet Intelligence quotes. See id.
`at 7–8. Indeed, the Federal Circuit noted that “[t]he claim” as a whole “solves a technological
`problem by identifying and refining a conversational flow such that different connection flows
`can be associated with each other.” See 2020 WL 3966973, at *7 (emphasis added).
`26 Notably, Packet Intelligence continues to misstate the issue on this term. E.g., Dkt. #68 at 2
`(“Juniper refuses to accept that ‘the sequence of packets that are exchanged in any direction as a
`result of an activity’ might include only a single connection.”). As Juniper explained, even if a
`“conversational flow” may be a single connection, then that is, at best, an “optional element
`[that] would not define the scope of the invention.” Dkt. #62 at 3. Construing “conversational
`flow” to require multiple connection flows simply limits the invention consistent with how the
`specifications and Packet Intelligence distinguished the prior art. See id. at 3–17.
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`Case 3:19-cv-04741-WHO Document 71 Filed 08/05/20 Page 7 of 8
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` Dated: August 5, 2020 By: /s/ R. William Sigler
`Alan M. Fisch (pro hac vice)
`alan.fisch@fischllp.com
`R. William Sigler (pro hac vice)
`bill.sigler@fischllp.com
`Jeffrey M. Saltman (pro hac vice)
`jeffrey.saltman@fischllp.com
`Adam A. Allgood (SBN: 295016)
`adam.allgood@fischllp.com
`FISCH SIGLER LLP
`5301 Wisconsin Avenue NW
`Fourth Floor
`Washington, DC 20015
`Tel: 202.362.3500
`Fax: 202.362.3501
`
`Ken K. Fung (SBN: 283854)
`ken.fung@fischllp.com
`FISCH SIGLER LLP
`400 Concar Drive
`San Mateo, CA 94402
`Tel: 650.362.8207
`Fax: 202.362.3501
`
`Counsel for Defendant
`Juniper Networks, Inc.
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 5, 2020, I caused the foregoing document to be served via
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`the Court’s CM/ECF system on all counsel of record per Local Rule CV-5(5).
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`/s/ R. William Sigler
`R. William Sigler
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`CASE NO. 3:19-cv-4741-WHO
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`Packet Intelligence LLC Exh 2072
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