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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`CISCO SYSTEMS, INC.,
`Petitioner
`
`———————
`
`IPR2021-00618
`U.S. Patent No. 8,458,784
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`1
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 7
`
`GROUNDS FOR STANDING ........................................................................ 7
`
`
`
`I.
`
`II.
`
`III. NOTE ............................................................................................................... 7
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`IV. BACKGROUND ............................................................................................. 8
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`V.
`
`SUMMARY OF THE ’784 PATENT ............................................................. 9
`
`VI. PROSECUTION HISTORY .........................................................................11
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART ...........................................12
`
`VIII. CLAIM CONSTRUCTION ..........................................................................12
`
`IX. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................13
`
`X. DISCRETIONARY DENIAL IS INAPPROPRIATE ..................................13
`
`A. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate .... 13
`
`B.
`
`Discretionary denial under the Fintiv factors is not appropriate ........ 14
`
`1. Whether evidence exists that a stay may be granted if a
`proceeding is instituted ............................................................ 14
`
`2.
`
`3.
`
`4.
`
`Proximity of the Court’s trial date to the Board’s
`projected statutory deadline for a final written decision ......... 15
`
`Investment in the parallel proceeding by the Court and
`the parties ................................................................................. 16
`
`Overlap between issues raised in the petition and in the
`parallel proceeding ................................................................... 17
`
`5. Whether the petitioner and the defendant in the parallel
`proceeding are the same party .................................................. 17
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`6.
`
`Other circumstances that impact the Board’s exercise of
`discretion, including the merits ................................................ 18
`
`C.
`
`Discretionary denial under General Plastic is not appropriate .......... 18
`
`XI.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....18
`
`A.
`
`B.
`
`Challenged Claims and Statutory Grounds for Challenges ............... 18
`
`Ground 1: Claims 1-3 and 16-17 are obvious under 35 U.S.C.
`§ 103(a) in view of Carter and Maria. ................................................ 20
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
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`Summary of Carter ................................................................... 20
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`Summary of Maria ................................................................... 23
`
`Reasons to Combine Carter and Maria .................................... 25
`
`Claim 1 ..................................................................................... 31
`
`Claim 2 ..................................................................................... 47
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`Claim 3 ..................................................................................... 47
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`Claim 16 ................................................................................... 50
`
`Claim 17 ................................................................................... 51
`
`C.
`
`Ground 2: Claims 4-9 and 11-12 are obvious under 35 U.S.C.
`§ 103(a) in view of Carter, Maria, and Salim. ................................... 51
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Summary of Salim ................................................................... 51
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`Reasons to Combine Salim with Carter and Maria ................. 52
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`Claim 4 ..................................................................................... 54
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`Claim 5 ..................................................................................... 58
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`Claim 6 ..................................................................................... 58
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`6.
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`7.
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`8.
`
`9.
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`Claim 7 ..................................................................................... 60
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`Claim 8 ..................................................................................... 61
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`Claim 9 ..................................................................................... 61
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`Claim 11 ................................................................................... 62
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`10. Claim 12 ................................................................................... 63
`
`D. Ground 3: Claims 13-15 are obvious under 35 U.S.C. § 103(a) in
`view of Carter, Maria, Salim, and Loschke. ...................................... 64
`
`1.
`
`2.
`
`1.
`
`2.
`
`3.
`
`Summary of Loschke ............................................................... 64
`
`Reasons to Combine Loschke with Carter, Maria, and
`Salim ........................................................................................ 65
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`Claim 13 ................................................................................... 68
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`Claim 14 ................................................................................... 70
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`Claim 15 ................................................................................... 72
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`XII. MANDATORY NOTICES ...........................................................................73
`
`A.
`
`B.
`
`C.
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`Real Party-in-Interest ......................................................................... 73
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`Related Matters ................................................................................... 73
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`Lead and Back-up Counsel and Service Information ........................ 74
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`XIII. CONCLUSION ..............................................................................................75
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`CERTIFICATE OF WORD COUNT ......................................................................76
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`CERTIFICATE OF SERVICE ................................................................................77
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`4
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`
`
`Ex.1001
`Ex.1002
`
`Ex.1003
`
`Ex.1004
`Ex.1005
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`Ex.1006
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`Ex.1007
`Ex.1008
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`Ex.1009
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`Ex.1010
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`Ex.1011
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`Ex.1012
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`Ex.1013
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`Ex.1014
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`Ex.1015
`Ex.1016
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`Ex.1017
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`Petitioner’s Exhibit List
`
`U.S. Patent No. 8,458,784
`Prosecution History of U.S. Patent No. 8,458,784
`
`Declaration of Dr. Henry Houh under 37 C.F.R. § 1.68
`
`Curriculum Vitae of Dr. Henry Houh
`U.S. Patent No. 5,386,470 to Carter et al. (“Carter”)
`
`U.S. Patent No. 6,092,110 to Maria et al. (“Maria”)
`
`U.S. Patent No. 6,628,653 to Salim et al. (“Salim”)
`U.S. Patent No. 6,556,574 to Pearce et al. (“Pearce”)
`
`U.S. Patent No. 6,728,885 to Taylor et al. (“Taylor”)
`
`Complaint, 802 Systems Inc. v. Cisco Systems, Inc., No. 2-20-cv-
`00315, Dkt. 1 (E.D. Tex. filed Sept. 28, 2020)
`Plaintiff’s Disclosure of Infringement Contentions, 802 Systems
`Inc. v. Cisco Systems, Inc., No. 2-20-cv-00315 (E.D. Tex. served
`Jan. 6, 2021)
`E.D. Tex. Trial Delay Order, Infernal Tech. LLC v. Sony Interactive
`Entertainment LLC, No. 2:19-cv-00248, Dkt. No. 261 (Nov. 20,
`2020)
`U.S. Patent No. 6,219,706 to Fan et al. (“Fan”)
`
`Prosecution History of U.S. Patent No. 7,013,482
`
`U.S. Patent No. 5,956,336 to Loschke et al. (“Loschke”)
`Docket Control Order, 802 Systems Inc. v. Cisco Systems, Inc., No.
`2-20-cv-00315, Dkt. No. 25 (E.D. Tex. filed Feb. 29, 2021)
`
`Lex Machina analysis of event timing for the U.S. District Court
`for the Eastern District of Texas (prepared March 11, 2021)
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`Interconnections: Bridges and Routers, Radia Perlman, pp. 1-7, 33,
`201.
`Building Internet Firewalls, Elizabeth Zwicky, pp. 3-5.
`
`U.S. Patent No. 5,720,032 to Picazo, Jr. et al. (“Picazo”)
`Docket Control Order, NorthStar Systems LLC v. Macy's Inc, 2:20-
`cv-00309-JRG (E.D. Tex.)
`Docket Control Order, Estech Systems, Inc. v. Oliver Street
`Dermatology Management, LLC d/b/a U.S. Dermatology Partners
`et al., 2:20-cv-00311-JRG (E.D. Tex.)
`Docket Control Order, Liberty Patents, LLC v. Lenovo Group
`Limited et al., 2:20-cv-00314-JRG-RSP (E.D. Tex.)
`Docket Control Order, United Services Automobile Association v.
`PNC Bank N.A., 2:20-cv-00319-JRG (E.D. Tex.)
`
`
`Ex.1018
`
`Ex.1019
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`Ex.1020
`Ex.1021
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`Ex.1022
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`Ex.1023
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`Ex.1024
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`I.
`
`INTRODUCTION
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`Pursuant to 35 U.S.C. §§ 311, 314(a), and 37 C.F.R. § 42.100, Cisco
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`Systems, Inc. (“Petitioner”) respectfully requests that the Board review and cancel
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`as unpatentable under (pre-AIA) 35 U.S.C. § 103(a) claims 1-9 and 11-17
`
`(hereinafter, the “Challenged Claims”) of U.S. Patent No. 8,458,784 (the “’784
`
`patent,” Ex.1001).
`
`The ’784 patent describes and claims concepts relating to packet filtering.
`
`See Ex.1001, claim 1. As shown below and confirmed in the Declaration of Dr.
`
`Henry Houh (Ex.1003), these concepts were well known at the time the ’784 patent
`
`was filed. The references presented in this Petition teach and render obvious the
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`Challenged Claims.
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`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’784 Patent is eligible for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR challenging the patent claims. 37
`
`C.F.R. § 42.104(a).
`
`III. NOTE
`Petitioner cites to exhibits’ original page numbers where possible. Emphasis
`
`in quoted material has been added throughout, unless otherwise noted. Claim terms
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`are presented in italics.
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`IV. BACKGROUND
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`The ’784 Patent describes and claims well-known concepts related to packet
`
`filtering. In a computer network, information is generally transmitted between and
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`among computers in data packets. Data packets may be in variety of forms
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`including “ATM (Asynchronous transfer Mode) cells, frame relay frames, ethernet
`
`frames, T1 data units, and IP packets.” Ex.1007, 6:17-19. A data packet usually
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`includes a header and a payload. The payload includes the substantive data that is
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`being communicated, and the header includes information about the packet. This
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`information may include source address, destination address, and other metadata
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`for the packet that may be used to facilitate delivering the packet to its destination.
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`Ex.1003, ¶ 27.
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`The header may be composed of multiple parts relating to different
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`protocols. Most packet data transmission networks use multiple protocols arranged
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`in an organized hierarchy. “Starting with the raw data from a top level application,
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`each protocol adds its own header information to that added previously by
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`preceding (higher) protocols.” Ex.1007, 1:17-20. “In the course of transmission
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`through the network, the packet may pass through and be routed, forwarded
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`switched or processed according to information stored in various parts of the
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`packet header, depending on which level of the various levels of protocols, is being
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`used.” Ex.1007, 1:20-25; Ex.1003, ¶ 28. Computer networks are often described in
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`terms of the Open Systems Interconnection (OSI) model and the Transmission
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`Control Protocol/Internet Protocol (TCP/IP). See Ex.1008, 2:13-26, 3:38-52;
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`Ex.1018, 1, 201; Ex.1003, ¶ 28.
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`It has long been common in computer networks to filter (e.g., to selectively
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`allow or deny) data packets. Packet filtering was used, for example, to prevent
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`unauthorized access to the network or to prevent undesirable content from being
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`accessed. See Ex.1013, 1:8-52; Ex.1019, 3-5; Ex.1005, 1:48-51 (insecure networks
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`are susceptible to eavesdropping). As of at least 1997, “data packet filters [were]
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`currently available which filter out data packets from certain Internet sites.”
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`Ex.1006, 1:19-21; Ex.1003, ¶ 29.
`
`As will be explained in more detail below, the ’784 Patent describes and
`
`claims no more than commonly known packet filtering concepts. Ex.1003, ¶ 30.
`
`V.
`
`SUMMARY OF THE ’784 PATENT
`
`The ’784 Patent generally relates to “Methods and systems for firewall/data
`
`protection that filters data packets in real time and without packet buffering.”
`
`Ex.1001, Abstract. The ’784 Patent describes passing packets between “two PHY
`
`[physical] interfaces, one for the Internet or other external network connection, and
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`one (or more) for the internal network.” Ex.1001, 5:56-60. The packets pass
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`through a repeater core 16, which “functions as an Ethernet repeater (as defined by
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`the network protocols of the IEEE standard 802.3) and serves to receive packets
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`from external PHY 14, reshape the electrical signals thereof, and transmit the
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`packets to internal PHY 18, which is coupled to internal network 20.” Ex.1001,
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`5:66-6:3. “While the packet is being received, reshaped, and transmitted between
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`PHYs 14 and 18, however, it is simultaneously being evaluated in parallel with
`
`filtering rules to determine if it should be allowed to pass as a valid packet.”
`
`Ex.1001, 6:4-7. Ex.1003, ¶ 31.
`
`With application of the filtering rules, “by the time that the entire packet
`
`reaches repeater core 16… the packet will either be allowed to pass as a valid
`
`packet or will be failed and junked as a suspect (or otherwise invalidated) packet.”
`
`Ex.1001, 6:39-43. “Junking is defined as changing bits or truncating data,
`
`depending on the type of link, in a manner such that the packet is corrupted or
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`otherwise will be detected by the receiving computers as invalid or unacceptable,
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`etc.” Ex.1001, 5:3-7; Ex.1003, ¶ 32. Fig. 2 is shown below.
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`Ex.1001, Fig. 2.
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`
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`As will be explained below, the concept of a repeater that corrupts data in
`
`packets that do not meet filtering criteria was not new when the ’784 Patent was
`
`filed. Ex.1003, ¶ 33.
`
`VI. PROSECUTION HISTORY
`
`The ’784 Patent was filed September 10, 2010 and ultimately claims priority
`
`to U.S. Patent No. 7,013,482 filed July 7, 2000. After the originally filed claims
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`were rejected, the applicants cancelled all claims and drafted new claims that were
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`similar to those that had been allowed in the parent case. See Ex.1002, 62-65, 76-
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`87. In the parent case, the applicants amended the independent claims to
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`incorporate a limitation from a dependent claim the Examiner had indicated as
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`allowable: “wherein the packet is selectively altered to be invalid if a
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`determination has not been made as to whether the packet is valid or invalid by the
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`time the end portion of the packet is received.” Ex.1014, 69. The claims in the
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`present case were then allowed with no specific reason for allowance provided. See
`
`Ex.1002, 21-24. The ’784 Patent issued on June 4, 2013.
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`VII. LEVEL OF ORDINARY SKILL IN THE ART
`
`A Person of Ordinary Skill in The Art (“POSITA”) in July 2000 would have
`
`had a working knowledge of the network security art that is pertinent to the ’784
`
`Patent. That person would have a master’s degree in electrical engineering, or
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`equivalent training, and approximately two years of experience working in the
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`field of data networking, data networking protocols, and network security. Lack of
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`work experience can be remedied by additional education, and vice versa. Ex.1003,
`
`¶¶ 20-22.
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`VIII. CLAIM CONSTRUCTION
`
`The Challenged Claims are construed “using the same claim construction
`
`standard that would be used to construe the claim in a civil action under 35 U.S.C.
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`§ 282(b).” 37 C.F.R. § 42.100(b). Claim terms in IPR are construed according to
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`their “ordinary and customary meaning” to those of skill in the art. 37 C.F.R.
`
`§ 42.100(b). Petitioner submits that, for the purposes of this proceeding and the
`
`grounds presented herein, no claim term requires express construction. Nidec
`
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`
`Cir. 2017). Ex.1003, ¶ 34.
`
`IX. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board institute a trial for inter partes review and
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`cancel the Challenged Claims for unpatentability in view of the prior art as
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`explained below.
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`X. DISCRETIONARY DENIAL IS INAPPROPRIATE
`A. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate
`
`The combinations of references presented in the grounds below have not
`
`previously been presented to the Office. None of the relied-upon prior art was cited
`
`by the Examiner during prosecution of the ’784 patent. The Salim reference, which
`
`is a secondary reference in Ground 2 of this petition, was submitted in an IDS
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`during prosecution. However, Salim was not discussed or cited by the Examiner.
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`Accordingly, discretionary denial under 35 U.S.C. § 325(d) is not appropriate.
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`B. Discretionary denial under the Fintiv factors is not appropriate
`
`The six factors considered for § 314 denial strongly favor institution. Apple
`
`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`
`(precedential). The district court case is at an early stage, and Petitioner has
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`diligently prepared and filed this petition following Patent Owner’s infringement
`
`contentions (January 6, 2021) and Petitioner’s invalidity contentions (March 3,
`
`2021). Ex.1011, 2, 14. The petitions is also well within the one-year timeframe
`
`allowed by Congress.
`
`1. Whether evidence exists that a stay may be granted if a
`proceeding is instituted
`
`If an IPR is instituted, a stay would be appropriate under the legal standard
`
`in the Eastern District of Texas. See Cypress Lake Software, Inc. v. Samsung Elecs.
`
`Am., Inc., No. 6:18-cv-00030 (E.D. Tex. Aug. 28, 2019) (order granting stay).
`
`However, given that a motion to stay has not yet been filed, the Board should not
`
`infer the outcome of that motion. Sand Revolution II LLC v. Continental
`
`Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16,
`
`2020) (informative); see also Dish Network L.L.C. v. Broadband iTV, Inc.,
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`IPR2020-01359, Paper 15 (Feb. 12, 2021) (“It would be improper to speculate, at
`
`this stage, what the Texas court might do regarding a motion to stay…”). Thus, this
`
`factor is neutral on discretionary denial.
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`Inter Partes Review of U.S. Patent 8,458,784
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`2. Proximity of the Court’s trial date to the Board’s projected
`statutory deadline for a final written decision
`
`As of the filing of this petition, the district court has issued its first docket
`
`control order setting jury selection for trial to begin on March 7, 2022. Ex.1016, 1.
`
`A claim construction hearing is scheduled for July 27, 2021. Ex.1016, 4. The
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`expected date for a Final Written Decision in this case is Q3 2022.
`
`Even though trial is scheduled to begin before a Final Written Decision is
`
`expected, this factor weighs against discretionary denial because the Petitioner has
`
`worked expeditiously to prepare this petition within approximately two and a half
`
`months after receiving infringement contentions on January 6, 2021. Fintiv, Paper
`
`11 at 11–12. And the Board should not rely excessively on the court of dates that,
`
`as of this filing, are nearly a year away. The current average time-to-trial for the
`
`district court hearing the co-pending litigation is over two years. Ex.1017 (showing
`
`E.D. Texas median time-to-trial for patent cases of 760 days). The Federal Circuit
`
`has noted that “a court’s general ability to set a fast-paced schedule is not
`
`particularly relevant… where, like here, the forum itself has not historically
`
`resolved cases so quickly.” In re Apple Inc., 979 F.3d 1332, 1344 (Fed. Cir. 2020).
`
`The presiding judge in the co-pending litigation recently postponed all jury
`
`trials previously scheduled from December 2020 through February 2021. See
`
`Ex.1012, 1. These postponements are likely to cause cascading delays to other
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`cases on the court’s docket throughout 2021 and into 2022. It is a fair possibility
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`that the scheduled trial date involving Petitioner and Patent Owner will be moved
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`back. Notably, the court presently has four other patent cases scheduled for jury
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`trials on the same day. Ex.1021-1024. Because of the uncertainty of the current
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`trial date, this factor weighs against discretionary denial. See Sand Revolution II,
`
`LLC v. Continental Intermodal Grp.—Trucking LLC, IPR2020-01393, Paper 24
`
`(June 16, 2020) (panel granting institution on rehearing based on finding that
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`uncertainty over district court’s trial date weighed against discretionary denial); see
`
`also Verizon Bus. Network Servs., Inc. v. Huawei Techs. Co, Ltd., IPR2020-01079,
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`Paper 10 at 35 (Jan. 14, 2021) (stating that a trial date that is months before
`
`expected Final Written Decision “does not weight against discretionary denial”).
`
`3. Investment in the parallel proceeding by the Court and the
`parties
`
`The co-pending litigation is in its early stages, and the investment in it has
`
`been minimal. As mentioned above, a claim construction hearing has not yet
`
`occurred, fact discovery will not close until October 2021, and expert discovery
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`will not close until November 2021. Ex.1016, 3-4; See PEAG LLC v. Varta
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`Microbattery GMBH, IPR2020-01214, Paper 8 at 17 (Jan. 6, 2021) (finding that
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`since no claim construction hearing had yet been held and discovery was not
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`completed, the little investment in the parallel proceeding weighed against
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`discretionary denial).
`
`4. Overlap between issues raised in the petition and in the
`parallel proceeding
`
`The prior art addressed in the Petition is also part of Petitioner’s invalidity
`
`contentions in the litigation. Instituting a proceeding will allow the Board to
`
`address the art, and the issues will be narrowed in the litigation due to the estoppel
`
`provisions of 35 U.S.C. § 315(e)(2).
`
`If the Board institutes trial, Petitioner will cease asserting in the district court
`
`litigation any invalidity contention based in whole or in part on the Carter, Maria,
`
`Salim, and Loschke references presented in this petition. Institution will not result
`
`in any overlapping consideration of invalidity arguments. This factor weighs
`
`against discretionary denial.
`
`5. Whether the petitioner and the defendant in the parallel
`proceeding are the same party
`
`Petitioner is a defendant in the litigation. Ex.1010. That is true of most
`
`Petitioners in IPR proceedings. While the Fintiv case indicates that a difference
`
`between the district court defendant and the petitioner may way against
`
`discretionary denial, nothing within the Fintiv case suggests that the same party
`
`between the proceedings weighs in favor of discretionary denial. Accordingly, this
`
`factor should not be a basis for denying institution.
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`IPR2021-00618 Petition
`Inter Partes Review of U.S. Patent 8,458,784
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`6. Other circumstances that impact the Board’s exercise of
`discretion, including the merits
`
`As discussed in detail below, the prior art presented in this Petition renders
`
`the Challenged Claims unpatentable as obvious. The merits of Petitioner’s
`
`arguments are strong, and this factor weighs against discretionary denial.
`
`As such, because the Fintiv factors are either neutral or weigh against
`
`discretionary denial, and because this Petition was filed more than six months
`
`before the statutory bar date, institution should not be denied on discretionary
`
`factors.
`
`C. Discretionary denial under General Plastic is not appropriate
`
`The ’784 patent has not been challenged in any prior IPR petition, so none of
`
`General Plastic discretionary institution factors apply to this Petition. See General
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`Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at
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`16 (PTAB Sept. 6, 2016) (Section II.B.4.i. precedential).
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`XI.
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`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
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`A. Challenged Claims and Statutory Grounds for Challenges
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`This petition challenges claims 1-9 and 11-17, which correspond to the
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`claims asserted in the co-pending district court case. See Ex.1011, 2.
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`Ground
`#1
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`Claims
`1-3 and 16-17
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`#2
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`#3
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`4-9 and 11-12
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`13-15
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`Basis
`35 U.S.C. § 103 (Pre-AIA) over Carter and
`Maria
`35 U.S.C. § 103 (Pre-AIA) over Carter,
`Maria, and Salim
`35 U.S.C. § 103 (Pre-AIA) over Carter,
`Maria, Salim, and Loschke
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`U.S. Patent No. 5,386,470 to Carter et al. (“Carter”) was filed August 24,
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`
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`
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`1993. It issued on January 31, 1995. Carter is thus prior art under 35 U.S.C.
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`§ 102(b).
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`U.S. Patent No. 6,092,110 to Maria et al. (“Maria”) was filed October 23,
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`1997. It issued on July 18, 2000. Carter is thus prior art under 35 U.S.C. § 102(e).
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`U.S. Patent No. 6,628,653 to Salim et al. (“Salim”) was filed June 4, 1998. It
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`issued on September 30, 2003. Salim is thus prior art under 35 U.S.C. § 102(e).
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`U.S. Patent No. 5,956,336 to Loschke et al. (“Loschke”) was filed
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`September 27, 1996. It issued on September 21, 1999. Loschke is thus prior art
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`under 35 U.S.C. § 102(a) and (e).
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`Petitioner’s analysis also cites additional prior art to demonstrate the
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`background knowledge of a POSITA and to provide contemporaneous context to
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`support Petitioner’s assertions regarding what a POSITA would have understood
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`from the prior art. See Yeda Research v. Mylan Pharm. Inc., 906 F.3d 1031, 1041-
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`1042 (Fed. Cir. 2018) (affirming the use of “supporting evidence relied upon to
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`support the challenge”); 37 C.F.R. § 42.104(b); see also K/S HIMPP v. Hear-Wear
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`Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014); Arendi S.A.R.L. v. Apple
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`Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016).
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`The books excerpted in Exhibits 1018 and 1019 were published and publicly
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`available before the priority date of the ’784 Patent, as evidenced by citations to
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`such references in patents that pre-date the ’784 Patent. See Ex.1008, 2:39-44;
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`Ex.1013, 1:25-29; Ex.1003, ¶¶ 35-37.
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`B. Ground 1: Claims 1-3 and 16-17 are obvious under 35 U.S.C. § 103(a) in
`view of Carter and Maria.
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`1.
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`Summary of Carter
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`Carter describes a packet repeater like the one described in the ’784 Patent.
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`Carter’s repeater has “means for storing access rules for the items of equipment
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`connected to it.” Ex.1005, Abstract. The repeater “reads a portion of each frame,
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`which may be all or part of the destination address segment and/or of the source
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`address segment and/or of the control segment of each incoming data frame, or it
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`could be a frame or protocol identifier incorporated in opening bytes of the data
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`segment.” Ex.1005, Abstract. The repeater then filters the frames by comparing
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`“the data that it reads with the stored access rules to determine whether the frame is
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`permitted or not.” Ex.1005, Abstract. If a packet is not permitted based on the
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`access rules, then “the repeater modifies the frame which it is in the course of re-
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`transmitting, for example by overwriting it with meaningless digits.” Ex.1005,
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`Abstract; Ex.1003, ¶ 38.
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`Carter illustrates a “block diagram of those parts of a multiport repeater that
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`are relevant to the understanding of the present invention,” as shown in Fig. 2
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`below. Ex.1005, 3:67-4:2; Ex.1003, ¶ 39.
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`filtering circuitry
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`input
`MUX
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`output MUX
`Ex.1005, Fig. 2 (annotated); Ex.1003, ¶ 39.
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`The repeater receives frames “on any one of ports 1 to 4 passing via
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`
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`respective port interface units 5.” Ex.1005, 4:23-25. Incoming data from a frame is
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`passed through an input [multiplexer] MUX 6, through selection MUX 7, and
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`placed in a first in/first out memory 8. See Ex.1005, 4:23-30. Simultaneously, the
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`packet is passed through filtering circuitry, which extracts source and destination
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`addresses from the incoming data: “[T]he incoming signal is also passed via a shift
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`register 13 which extracts the destination address and the source address in parallel
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`form to latches 14 and 15 which are switched by counters 16 enabled by the start
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`of frame signal from detector 9.” Ex.1005, 4:40-45; Ex.1003, ¶ 40.
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`The repeater then passes the source destination addresses “to comparators 17
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`and [compares them] with the access rules previously stored in a database 18.”
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`Ex.1005, 4:45-47. “If the comparators indicate that the frame is not in accordance
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`with the rules contained in the database, then a signal is output via a delay 19
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`(serving to ensure that the source address will never be corrupted) to the
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`multiplexer 7.” Ex.1005, 4:54-58. This causes the multiplexer 7 “to transmit, for
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`the remainder of the length of the frame, a meaningless sequence of digits (such as
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`all 1's, all 0's, a cyclically repeated sequence or a pseudo-random sequence)
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`available to it from a sequence generator 20 instead of the incoming signal.”
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`Ex.1005, 4:58-62. In other words, “Data may be modified, when required, by
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`corrupting it, as by overwriting a series of binary digits selected from all 1’s, all
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`0’s, cyclically repeated sequences and pseudo-random sequences.” Ex.1005, 3:17-
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`20; Ex.1003, ¶ 41.
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`The data from the frames, modified or not, are then transmitted through
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`output multiplexer 11 to all ports: “Provided there are then at least 3 bits of data in
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`the memory 8, the multiplexer 11 is switched to begin reading out the data stored
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`in the memory, and in the ordinary way will continue to do so until the complete
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`frame has been received into and then read from the memory 8.” Ex.1005, 4:34-39.
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`Accordingly, Carter shows that it was well known to use a repeater to filter frames
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`as they are being received and transmitted, as well as to corrupt the frames when
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`they do not meet filtering criteria. Ex.1003, ¶ 42.
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`2.
`
`Summary of Maria
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`Maria relates to data packet filtering. See Ex.1006, Abstract. Maria describes
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`a “dedicated data packet filtering processor” that looks “at the source IP address of
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`each received data packet to determine if the source IP address matches one of the
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`stored source IP addresses.” Ex.1006, 2:34-36. Maria’s packet filter then “either
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`discard[s] or forward[s] the data packet depending on the processor configuration.”
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`Ex.1006, 2:37-39. Maria’s packet filter is shown below in Fig. 1. Ex.1003, ¶ 43.
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`Ex.1006, Fig. 1.
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`
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`Maria’s packet filter “may be used in conjunction with a local area network
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`and many end users (such as in a commercial or business environment), or a single
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`end user computer (such as in a home environment). The packet filter may also be
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`connected to the Internet.” Ex.1006, 2:41-45. As shown in Fig. 1, the packet
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`filtering processor 14 is placed between an external network (such as the Internet
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`on the other side of router 12) and a local network 16 or local computer. See e.g.,
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`Ex.1006, 3:18-30; Ex.1003, ¶ 44.
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`Maria’s “[p]acket filter processor 14 has a restrictive mode and a permissive
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`
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`mode.” Ex.1006, 6:20-21. “In restrictive mode, the packet is passed if the source IP
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`address does match an address from list 33, and is dropped otherwise.” Ex.1006,
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`6:28-30. Restrictive mode thus offers “a condition where a select number of
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`packets are to be passed, and all others blocked.” Ex.10