Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CLOUDFLARE, INC. AND SONICWALL INC.,
`Petitioner,
`
`v.
`
`SABLE NETWORKS, INC.,
`Patent Owner
`
`____________
`
`
`
`Case IPR2021-00909
`Patent 8,243,593
`
`
`
`____________
`
`PATENT OWNER’S RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`Page
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. FACTUAL BACKGROUND ............................................................................. 4
`
`A. The ’593 Patent ........................................................................................... 4
`
`B. References Cited In The Petition ................................................................ 8
`
`1. Yung ...................................................................................................... 8
`
`2. Copeland ................................................................................................ 9
`
`3. Four-Steps Whitepaper ........................................................................10
`
`III. DISCLAIMED CLAIMS ARE NOT PART OF THIS PROCEEDING. .........11
`
`IV. PETITIONER FAILS TO SHOW BY A PREPONDERANCE OF THE
`EVIDENCE THAT THE CLAIMS CHALLENGED IN GROUND 1 ARE
`OBVIOUS OVER YUNG (CLAIMS 17, 18, 37, 38, GROUND 1). ................12
`
`V. PETITIONER FAILS TO SHOW BY A PREPONDERANCE OF THE
`EVIDENCE THAT YUNG IN VIEW OF COPELAND DISCLOSES OR
`RENDERS OBVIOUS THE CALCULATION OF A BADNESS FACTOR
`AS CLAIMED (CLAIMS 9-13, 19-24, 29-33, 39-44, GROUND 2). ..............16
`
`A. Copeland Does Not Disclose The Claimed “Badness Factor” For Each
`Flow. .........................................................................................................16
`
`B. The Petition Does Not Sufficiently Establish A Reason For The POSITA
`To Have Combined Yung And Copeland As Proposed. ..........................24
`
`VI. PETITIONER FAILS TO SHOW BY A PREPONDERANCE OF THE
`EVIDENCE THAT THE FOUR-STEPS WHITEPAPER WAS PUBLICLY
`ACCESSIBLE QUALIFIED PRIOR ART (CLAIM 3, GROUND 3). ............28
`
`VII.
`
`CONCLUSION .....................................................................................45
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`Page
`
`COURT DECISIONS
`
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) ............................................................................30
`
`Enzo Biochem, Inc. v. Applera Corp.,
`599 F.3d 1325 (Fed. Cir. 2010) ............................................................................18
`
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ..................................................................... 30, 31
`
`In re Klopfenstein,
`380 F.3d 1345 (Fed. Cir. 2004) ............................................................................30
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................15
`
`PGS Geophysical AS v. Iancu,
`891 F.3d 1354 (Fed. Cir. 2018) ............................................................................15
`
`Sirona Dental Sys. GMBH v. Institut Straumann AG,
`892 F.3d 1349 (Fed. Cir. 2018) ............................................................................15
`
`Suffolk Techs., LLC v. AOL Inc.,
`752 F.3d 1358 (Fed. Cir. 2014) ............................................................................30
`
`Voter Verified, Inc. v. Premier Election Sols., Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) ............................................................................30
`
`
`
`AGENCY DECISIONS
`
`Adobe Sys. Inc. v. Grecia,
`IPR2018-00418, Paper 7 (June 21, 2018) ............................................................33
`
`ii
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`Adobe Sys. Inc. v. Grecia,
`IPR2018-00418, Paper 9 (Sept. 7, 2018) .............................................................33
`
`Adobe Sys. Inc. v. Grecia,
`IPR2018-00419, Paper 9 (Sept. 7, 2018) .............................................................31
`
`Asetek Danmark A/S v. CoolIT Sys., Inc.,
`IPR2020-00747, Paper 42 (PTAB Sept. 30, 2021) ..............................................12
`
`Baker Hughes v. LiquidPower Specialty Prods., Inc.,
`IPR2016-01903, Paper 74 (PTAB Mar. 8, 2019) ................................................12
`
`Celltrion, LLC v. Biogen, Inc.,
`IPR2017-01230, Paper 10 (Oct 12, 2017) ...........................................................31
`
`Coal. for Affordable Drugs VIII, LLC v. Trustees of the Univ. of Pa.,
`IPR2015-01836, Paper 58 (PTAB Mar. 6, 2017) ................................................35
`
`Elec. Frontier Found. v. Pers. Audio, LLC,
`IPR2014-00070, Paper 21 (April 18, 2014) .........................................................41
`
`Facebook, Inc. v. Sound View Innovations, LLC,
`IPR2017-00985, Paper 17 (Sep. 5, 2017),
`reh’g denied, Paper 30, 10 (PTAB Oct. 19, 2017) ..............................................18
`
`Google LLC v. IPA Techs. Inc.,
`IPR2018-00384, Paper 11 (July 3, 2018).......................................... 31, 32, 33, 40
`
`Gracenote, Inc. v. Iceberg Indus. LLC,
`IPR2013-00551, Paper 6 (Feb. 28, 2014) ............................................................29
`
`IBM Corp. v. Rigetti & Co., Inc.,
`IPR2020-00494, Paper 13 (Aug. 11, 2020) .........................................................15
`
`Intel Corp. v. Parkervision, Inc.,
`IPR2020-01302, Paper 35 (PTAB Jan. 21, 2022) ................................................12
`
`Intel Corp. v. VLSI Tech. LLC,
`IPR2018-01040, Paper 36 (PTAB Feb. 12, 2020) ...............................................12
`
`Kinetic Techs., Inc. v. Skyworks Sols., Inc.,
`IPR2014-00529, Paper 8 (Sept. 23, 2014) ...........................................................20
`
`iii
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`Kingston Tech. Co., Inc. v. Memory Techs., LLC,
`IPR2019-00654, Paper 9 (Aug. 13, 2019) .................................................... 31, 32
`
`Laird Techs., Inc. v. A.K. Stamping Co. Inc.,
`IPR2017-02038, Paper 6 (Mar. 14, 2018)..................................................... 34, 35
`
`OpenSky Indus., LLC v. VLSI Techn. LLC,
`IPR2021-01064, Paper 17 (Dec. 23, 2021) ..........................................................36
`
`Power Integrations, Inc. v. Semiconductor Components Indus., LLC,
`IPR2017-01975, Paper 9 (Mar. 12, 2018)............................................................42
`
`Schlumberger Tech. Corp. v. Integrated Drive Sys. LLC,
`IPR2018-00603, Paper 40 (PTAB Sept. 3, 2019) ......................................... 29, 41
`
`Shenzhen Zhiyi Tech. Co. v. iRobot Corp.,
`IPR2017-02133, Paper 8 (Mar. 28, 2018)..................................................... 34, 39
`
`Unified Patents Inc. v. Uniloc 2017 LLC,
`IPR2019-00480, Paper 10 (Aug. 16, 2019) .........................................................20
`
`
`
`STATUTES
`
`35 U.S.C. § 102(e) ...................................................................................................11
`
`35 U.S.C. § 253(a) ...................................................................................................11
`
`35 U.S.C. § 311(b) ...................................................................................................29
`
`35 U.S.C. § 316(e) ...................................................................................................29
`
`
`
`REGULATIONS
`
`37 C.F.R. § 1.321(a) .................................................................................................11
`
`37 C.F.R. § 42.104(b)(4) ..........................................................................................19
`
`37 C.F.R. § 42.107(e) ...............................................................................................11
`
`iv
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`
`
`RULES
`
`Fed. R. Evid. 802(a) .......................................................................................... 37, 38
`
`
`
`OTHER AUTHORITIES
`
`77 Fed. Reg. 48,680 (Aug. 14, 2012).......................................................................11
`
`
`
`
`
`
`
`v
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`EXHIBIT LIST
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`Josh McHugh, “The n-Dimensional SuperSwitch,” WIRED (May 1,
`2001, 12:00 am) (available at https://www.wired.com/2001/05/caspian/
`(last visited Aug. 16, 2021))
`
`Email from Jun Zheng, U.S. District Court for Western District of
`Texas staff, to counsel for parties, with Subject “Sable Networks, Inc.,
`et al. v. Riverbed Technology, Inc., No. 6:21‐cv‐00175‐ADA and
`Sable Networks, Inc., et al. v. Cloudflare, Inc., No. 6:21‐cv‐00261‐
`ADA – Request for Telephone Conference” (Aug. 20, 2021, 9:04 am)
`
`Scheduling Order, Dkt. 21, Sable Networks, Inc., et al. v. Cloudflare,
`Inc., No. 6:21‐cv‐00261‐ADA (June 24, 2021)
`
`Declaration of Daniel P. Hipskind in Support of Motion for Pro Hac
`Vice Admission
`
`Declaration of Erin McCracken in Support of Motion for Pro Hac Vice
`Admission
`
`2006
`
`
`March 4, 2022 Disclaimer in U.S. Patent No. 8,243,593 Under 37
`C.F.R. §1.321(a)
`
`2007
`
`Deposition Transcript of Kevin Jeffay, Ph.D. [Jeffay Transcript]
`
`2008
`
`Declaration of Erin McCracken [McCracken Declaration]
`
`2009
`
`Cloudflare, Inc. Opening Claim Construction Brief, Dkt. 29, Sable
`Networks, Inc., et al. v. Cloudflare, Inc., No. 6:21‐cv‐00261‐ADA
`(Nov. 12, 2021) [Cloudflare Opening Claim Construction Brief]
`
`vi
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`I.
`
`INTRODUCTION
`
`The grounds raised in the Petition should be rejected because Petitioner fails
`
`to demonstrate by a preponderance of the evidence that the challenged claims1 are
`
`unpatentable.
`
`The Petition raises grounds 1, 2, and 3,2 each of which fails. First, as to
`
`ground 1, alleged obvious over Yung alone, the Petition fails to show that claims
`
`17, 18, 37, and 38 of the ’593 patent are taught or suggested by Yung. As the
`
`Board already stated in the Institution Decision, “Petitioner has not demonstrated a
`
`reasonable likelihood it would prevail in establishing the unpatentability of any of
`
`dependent claims 17, 18, 37, or 38 as obvious over Yung alone.” Institution
`
`Decision, 38 (citing Pet., 1 (table of grounds) and 42-43 (addressing these
`
`independent claims). These dependent claims depend from independent claims
`
`
`
`1 As explained below, to streamline this proceeding, Patent Owner has filed
`
`a statutory disclaimer of originally challenged claims 1, 2, 4-8, 14-16, 25-28, and
`
`34-36. Claims 3, 9-13, 17-24, 29-33, and 37-44 remain at trial, challenged by one
`
`or more of grounds 1, 2 or 3. See infra § III.
`
`2 Ground 4 of the Petition is now moot, as no claims presently in the ’593
`
`patent are challenged under that ground. See infra § III.
`
`1
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`that each recite computing a “badness factor for the flow, wherein the badness
`
`factor provides an indication of whether the flow is exhibiting undesirable
`
`behavior.” Ex. 1001 [’593 Patent] 9.2; 29.2. As Petitioner concedes, and the
`
`Board confirmed, Yung does not teach or suggest the claimed “badness factor.”
`
`Pet., 49; Institution Decision, 38.
`
`Second, as to ground 2 of the petition, alleged obviousness of claims 9–13,
`
`19–24, 29–33, and 39–44 over Yung and Copeland, Petitioner fails to show by a
`
`preponderance of evidence that Copeland and Yung teach the calculation of a
`
`“badness factor” for each flow as recited in the claims. Every challenged claim in
`
`ground 2 includes the limitations associated with computing this “badness factor.”
`
`The Petition concedes that Yung does not disclose these “badness factor”
`
`limitations, relying on Copeland to try to fill this gap and asserting that Copeland’s
`
`“flow-based ‘concern index’ (or CI) value represents the claimed badness factor.”
`
`Id. (citing Ex. 1003 [Jeffay Decl.] ¶ 210). But the only supposed support for this
`
`contention is the conclusory testimony of Dr. Jeffay, Petitioner’s technical opinion
`
`declarant. And at deposition Dr. Jeffay testified that he could not articulate what
`
`the term “badness factor” means. At the same time, he stated that whatever it
`
`means, even though he could not articulate what it means, Copeland would fit that
`
`meaning. This sort of untestable, and indeed impenetrable, opinion testimony is
`
`entitled to no weight for showing alleged unpatentability. As such, Petitioner has
`
`2
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`failed to carry its burden of establishing at trial by a preponderance of the evidence
`
`that Copeland, alone or in combination, renders obvious the claims challenged in
`
`ground 2. Moreover, in any event, Petitioner also fails to establish that the
`
`ordinary artisan in the art at the time of the invention would have been motivated
`
`to combine Yung and Copeland to meet the claims challenged this ground. See
`
`infra § V.B.
`
`Third, ground 3, which challenges only independent claim 3, fails at least
`
`because Petitioner has not carried its burden to establish by a preponderance at trial
`
`that the Four-Steps Whitepaper was publicly available as printed publication prior
`
`art at the time of the invention. In the Institution Decision, the Board correctly
`
`“question[ed] whether Petitioner introduced sufficient evidence to show that an
`
`ordinary artisan would have been able to locate the Four-Steps Whitepaper with
`
`reasonable diligence.” Institution Decision, 50. Among other things, as the Board
`
`explained, “even if we assume that an ordinary artisan was aware of the company
`
`(Packeteer) and its website,” an assumption Patent Owner refutes below, “we
`
`query whether the Petition sufficiently shows that an ordinary artisan would have
`
`been able to locate the Four-Steps Whitepaper on that website with reasonable
`
`diligence.” Id. at 51. Petitioner knew full well that it had to show that any alleged
`
`prior art on which it relies was available as a prior art patent or printed publication.
`
`Yet Petitioner has put forth no evidence showing that the ordinary artisan at the
`
`3
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`time would have been able to locate the Four-Steps Whitepaper on the Packeteer
`
`website. Nothing has changed, and with Patent Owner’s right to introduce
`
`evidence now closed, it is far too late for Petitioner to now attempt to introduce its
`
`first such evidence. Petitioner has therefore fallen far short of its burden to prove
`
`the public accessibility of the Four-Steps Whitepaper. That is fatal to ground 3.
`
`This Response is timely pursuant to the parties’ stipulation. Paper 22.
`
`For at least these and other reasons provided herein, Patent Owner
`
`respectfully requests that the Board deny the Petition and confirm the patentability
`
`of the claims.
`
`II.
`
`FACTUAL BACKGROUND
`
`To assist the Board in a correct understanding of the prior art and the
`
`claimed invention, this Section briefly describes certain background facts of the
`
`patent and the petitioned art references.
`
`A. The ’593 Patent
`
`U.S. Patent No. 8,243,593, entitled Mechanism for Identifying and
`
`Penalizing Misbehaving Flows in a Network, was filed on December 22, 2004. Ex.
`
`1001. The ’593 patent is subject to a 35 U.S.C. § 154(b) term extension of 1,098
`
`days.
`
`The original assignee was Caspian Networks, Inc. Dr. Lawrence G.
`
`Roberts—one of the founding fathers of the Internet, best known for his work as
`
`4
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`the Chief Scientist of the Advanced Research Projects Agency (ARPA) where he
`
`designed and oversaw the implementation of ARPANET, the precursor to the
`
`internet—founded Caspian Networks in 1998. At Caspian Networks, Dr. Roberts
`
`developed a new kind of internet router to efficiently route packets over a network,
`
`which was aimed at addressing concerns about network “gridlock.” Further
`
`development work at Caspian led to, among other inventions, the patent-at-issue in
`
`this proceeding. In a 2001 interview with Wired Magazine, for example, Dr.
`
`Roberts discussed the router he was then developing at Caspian Networks—the
`
`Apeiro. He told Wired:
`
`the Apeiro will... create new revenue streams for the carriers by solving
`
`the ‘voice and video problem.’ IP voice and video, unlike email and
`
`static Web pages, breaks down dramatically if there’s a delay - as little
`
`as a few milliseconds - in getting packets from host to recipient.”
`
`Ex. 2001.3 The Apeiro debuted in 2003.
`
`At its height, Caspian Networks, Inc. raised more than $300 million and
`
`grew to more than 320 employees in the pursuit of developing and
`
`commercializing Dr. Roberts’ groundbreaking networking technologies. Despite
`
`
`
`3 John McHugh, The n-Dimensional Superswitch, WIRED MAGAZINE
`
`(May 1, 2001).
`
`5
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`early success with its technology, Caspian’s business ran into shoals when the
`
`telecommunications bubble burst. The legacy of the work at Caspian continues to
`
`exist, however, in the form of the inventions that were created and patented in the
`
`process.
`
`Sable Networks, Inc., the current assignee, was formed by Dr. Sang Hwa
`
`Lee to further develop and commercialize the flow-based networking technologies
`
`developed by Dr. Roberts and his team members at Caspian Networks. Sable
`
`Networks, Inc. has continued its product development efforts based on the patented
`
`technology and has gained commercial success with customers in Japan, South
`
`Korea, and China. Customers of Sable Networks, Inc. have included: SK Telecom,
`
`NTT Bizlink, Hanaro Telecom, Dacom Corporation, USEN Corporation, Korea
`
`Telecom, China Unicom, China Telecom, and China Tietong. The ’593 patent is
`
`one of several Caspian Networks patents now assigned to Sable Networks, Inc.
`
`The ’593 patent discloses and claims novel methods and systems for
`
`processing a flow of a series of information packets on a single router. These
`
`technologies permit a single router to identify and control less desirable network
`
`traffic. Because the characteristics of data packets in undesirable network traffic
`
`can sometimes be disguised, the ’593 patent improves the operation of computer
`
`networks by disclosing technologies that can pierce such a disguise by monitoring
`
`6
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`the characteristics of flows of data packets rather than ancillary factors such as port
`
`numbers or signatures.
`
`As the ’593 patent explains, “[w]ith the advent of file sharing applications
`
`such as KaZaA, Gnutella, BearShare, and Winny, the amount of peer-to-peer (P2P)
`
`traffic on the Internet has grown immensely in recent years. … This is so despite
`
`the fact that the number of P2P users is quite small compared to the number of non
`
`P2P users. For this and other reasons, P2P traffic is viewed by ISP’s (Internet
`
`service providers) and others as being abusive/misbehaving traffic that should be
`
`controlled and penalized.” Ex. 1001 [’593 Patent] 1:7-18. The ’593 patent
`
`recognizes that to control misbehaving traffic such as P2P traffic, it must be
`
`identified. Id. at 1:19-20. At the time, “P2P protocols ha[d] gotten quite
`
`sophisticated,” making it more difficult to identify misbehaving traffic. Id. at 1:46-
`
`49.
`
`The ’593 patent is directed toward “a mechanism for effectively identifying
`
`and penalizing misbehaving information packet flows in a network. This
`
`mechanism may be applied to any type of network traffic including, but certainly
`
`not limited to, P2P traffic.” Id. at 1:54-58. “Because misbehaving flows are
`
`identified based upon their observed behavior, and because their behavior cannot
`
`be hidden, misbehaving flows cannot avoid detection.” Id. at 1:61-64.
`
`7
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`The ’593 patent discloses tracking the behavioral statistics of a flow of data
`
`packets that can be used to determine whether the flow is undesirable. “These
`
`behavioral statistics reflect the empirical behavior of the flow.” Id. at 2:4-5. The
`
`behavioral statistics are updated as information packets belonging to the flow are
`
`processed by a single router. Id. at 2:14-17. Based at least in part on the
`
`behavioral statistics, “a determination is made as to whether the flow is exhibiting
`
`undesirable behavior.” Id. at 2:18-20. This determination is made by calculating a
`
`“badness factor” for each flow, which is computed based on the flow’s behavioral
`
`characteristics. Id. at 2:21-23. “If the flow is exhibiting undesirable behavior, then
`
`a penalty may be enforced on the flow.… This penalty may be an increased drop
`
`rate.” Id. at 2:28-31. In one embodiment, for example, enforcing the penalty on a
`
`flow rehabilitates the flow by causing its badness factor to improve. Id. at 2:42-45.
`
`“Once the flow is no longer misbehaving, it is no longer subject to penalty. In this
`
`manner, a misbehaving flow can be identified, penalized, and even rehabilitated
`
`….” Id. at 2:47-50.
`
`B. References Cited In The Petition
`
`1.
`
`Yung
`
`U.S. Patent No. 7,664,048 to Yung et al., is entitled Heuristic Behavior
`
`Pattern Matching of Data Flows in Enhanced Network Traffic Classification. Ex.
`
`1005 (“Yung”).
`
`8
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`Yung is Petitioner’s primary cited reference, relied on under 35 U.S.C.
`
`§ 102(e) with respect to all three grounds remaining in the Petition. In ground 1,
`
`Yung is the sole reference. The only claims challenged in ground 1 that have not
`
`been disclaimed are claims 17, 18, 37, and 38. See infra § III. In the Institution
`
`Decision, the Board correctly concluded that “Petitioner has not demonstrated a
`
`reasonable likelihood it would prevail in establishing the unpatentability of any of
`
`dependent claims 17, 18, 37, or 38 as obvious over Yung alone.” Institution
`
`Decision, 38 (citing Pet., 1 (table of grounds) and 42-43 (addressing these
`
`independent claims)). Because claims 17, 18, 37, and 38 are the only remaining
`
`challenged claims in ground 1 and Yung is ground 1’s only alleged prior art,
`
`ground 1 fails and cannot invalidate claims 17, 18, 37, and 38.
`
`2.
`
`Copeland
`
`U.S. Patent No. 7,185,368 to Copeland is entitled Flow-Based Detection of
`
`Network Intrusions. Ex. 1007 (“Copeland”). Copeland is relied on by Petitioner
`
`as a secondary reference in combination with Yung as alleged prior art under 35
`
`U.S.C. § 102(e) in ground 2 of the Petition.
`
`Copeland teaches “an intrusion detection system that inspects all inbound
`
`and outbound network activity and identifies suspicious patterns that may indicate
`
`a network system attack or intrusion.” Ex. 1007 [Copeland] 1:45-48. Because
`
`Yung concededly does not disclose calculating a “badness factor” for each flow as
`
`9
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`claimed, Petitioner relies on Copeland in combination with Yung to supposedly
`
`supply this missing limitation. Pet., 49-51. Petitioner alleges that Copeland’s
`
`“concern index” discloses the ’593 patent’s “badness factor.” Id. But given that
`
`Petitioner’s expert testified at his deposition that he cannot even say what the term
`
`“badness factor” means, as explained in Section V.A. below, it is illogical for
`
`Petitioner to rely on his testimony as its sole alleged evidence for its allegation that
`
`Copeland discloses this limitation, and in fact Petitioner fails to show that it does.
`
`Notably, Copeland’s “concern index” is for “suspicious activity” in contrast
`
`to legitimate traffic. Ex. 1007 [Copeland] Abstract. By way of comparison, the
`
`’593 patent’s “badness factor” is concerned with “undesirable” behavior or
`
`“misbehavior” associated with P2P traffic which is not necessarily suspicious
`
`behavior. Ex. 1001 [’593 Patent] 1:10-18. See supra § II.A; infra V.A.
`
`3.
`
`Four-Steps Whitepaper
`
`Exhibit 1006 is a paper entitled “Four Steps to Application Performance
`
`Across the Network with Packeteer’s PacketShaper®” (the “Four-Steps
`
`Whitepaper”). This secondary reference is relied on by Petitioner as alleged prior
`
`art under 35 U.S.C. § 102(e) in combination with Yung with respect to ground 3.
`
`As the Board preliminarily found and as explained in detail below, Petitioner
`
`has not shown by the requisite preponderance of the evidence that the Four-Steps
`
`10
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`Whitepaper was publicly available so as to qualify as a “printed publication” under
`
`35 U.S.C. § 102(e). See infra § VI.
`
`III.
`
`DISCLAIMED CLAIMS ARE NOT PART OF THIS PROCEEDING.
`
`To streamline this proceeding, Patent Owner elected to disclaim challenged
`
`claims 1, 2, 4-8, 14-16, 25-28, and 34-36 of the ’593 patent. These claims are not
`
`being asserted in the co-pending litigation. In compliance with 37 C.F.R.
`
`§ 1.321(a), Patent Owner has filed a statutory disclaimer under 35 U.S.C. § 253(a)
`
`of claims 1, 2, 4-8, 14-16, 25-28, and 34-36 (the “Disclaimed Claims”). Ex. 2006.
`
`See 77 Fed. Reg. 48,680, 48,689 (Aug. 14, 2012) (codified at 37 C.F.R.
`
`§ 42.107(e)). This disclaimer was filed only to streamline the proceeding and
`
`Patent Owner does not request adverse judgment on the disclaimed claims. As a
`
`matter of law, claims 1, 2, 4-8, 14-16, 25-28, and 34-36, should be treated as
`
`though they never existed:
`
`The Federal Circuit has held that claims disclaimed under § 253(a)
`
`should be treated as though they never existed. See Vectra Fitness, Inc.
`
`v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has
`
`interpreted the term ‘considered as part of the original patent’ in section
`
`253 to mean that the patent is treated as though the disclaimed claims
`
`never existed.”); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)
`
`(“A statutory disclaimer under 35 U.S.C. § 253 has the effect of
`
`canceling the claims from the patent and the patent is viewed as though
`
`the disclaimed claims had never existed in the patent.”); see also
`
`11
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d
`
`1291, 1299 (Fed. Cir. 2011) (holding that the Board’s interference
`
`jurisdiction under 35 U.S.C. § 291 required “the existence of an
`
`interference, and a claim that ‘never existed’ [due to a statutory
`
`disclaimer] cannot form the basis for an interference”).
`
`Baker Hughes v. LiquidPower Specialty Prods., Inc., IPR2016-01903, Paper 74,
`
`11-12 (PTAB Mar. 8, 2019); see Intel Corp. v. VLSI Tech. LLC, IPR2018-01040,
`
`Paper 36, 16 (PTAB Feb. 12, 2020) (similar).
`
`Accordingly, claims 1, 2, 4-8, 14-16, 25-28, and 34-36 of the ’593 patent are
`
`“no longer part of this proceeding.” Intel Corp. v. Parkervision, Inc., IPR2020-
`
`01302, Paper 35, at 2 (PTAB Jan. 21, 2022) (final written decision explaining that
`
`claims the patent owner disclaimed following institution of inter partes review
`
`were no longer part of the proceeding). See also Asetek Danmark A/S v. CoolIT
`
`Sys., Inc., IPR2020-00747, Paper 42, 6 (PTAB Sept. 30, 2021) (determining that a
`
`statutory disclaimer removed a disclaimed claim from an inter partes review
`
`proceeding). Claims 1, 2, 4-7, and 25-27 are therefore eliminated from ground 1 of
`
`the Petition. Because claims 8, 14-16, 28, and 34-36 are the only claims subject to
`
`ground 4 of the Petition, and are all disclaimed, ground 4 is now moot.
`
`IV.
`
`PETITIONER FAILS TO SHOW BY A PREPONDERANCE OF THE
`EVIDENCE THAT THE CLAIMS CHALLENGED IN GROUND 1
`ARE OBVIOUS OVER YUNG (CLAIMS 17, 18, 37, 38, GROUND 1).
`
`12
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`In the Institution Decision, the Board correctly concluded that “Petitioner
`
`has not demonstrated a reasonable likelihood it would prevail in establishing the
`
`unpatentability of any of dependent claims 17, 18, 37, or 38 as obvious over Yung
`
`alone.”4 Institution Decision, 38 (citing Pet., 1 (table of grounds) and 42-43
`
`(addressing these independent claims). As the Board explained, “claims 17 and 18
`
`both depend indirectly from independent claim 9 … , and claims 37 and 38 depend
`
`indirectly from independent claim 29.” Id. (citing Ex. 1001 [’593 Patent]).
`
`Independent claims 9 and 29 each recite computing a “badness factor for the flow,
`
`wherein the badness factor provides an indication of whether the flow is exhibiting
`
`undesirable behavior.” Ex. 1001 [’593 Patent] 9.2; 29.2. The Petition concedes
`
`that Yung does not disclose these “badness factor” limitations. Pet., 49. Yet, the
`
`only ground challenging dependent claims 17, 18, 37, and 38 is ground 1 of the
`
`Petition. Pet., 1, 42-43 (alleging that “Yung discloses claims 17 and 37”; “Yung
`
`discloses claims 18 and 38”). And ground 1 is based on Yung alone. Id.
`
`As a result, the Board concluded that “Petitioner does not demonstrate that
`
`Yung teaches or suggests ‘computing . . . a badness factor for the flow,’ as required
`
`
`
`4 As explained above, with respect to ground 1, other than claims 17, 18, 37,
`
`and 38, the challenged claims have been statutorily disclaimed.
`
`13
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`by claim 9, or ‘means for computing . . . a badness factor for the flow,’ as required
`
`by claim 29.” Institution Decision, 38-39 (citations omitted). “Thus, Petitioner
`
`does not demonstrate that Yung teaches or suggests all limitations of dependent
`
`claims 17, 18, 37, and 38.” Id., 39. The Board was correct, and its analysis must
`
`and should end there. Because Yung does not teach or suggest all limitations of
`
`dependent claims 17, 18, 37, or 38 of the ’593 patent, and Yung is the only basis
`
`for ground 1 of the Petition, Petitioner has failed to carry its burden of proving by a
`
`preponderance of the evidence that dependent claims 17, 18, 37, and 38 are
`
`obvious in view of Yung.
`
`Despite the Petition’s clear failure to prove the obviousness of claims 17, 18,
`
`37, and 38 of the ’593 patent in view of Yung, the Institution Decision continues
`
`on to speculate that perhaps “the inclusion of claims 17, 18, 37, and 38 in the
`
`Yung-only ground may be a typographical error” even though there is no evidence
`
`of any such alleged error. Institution Decision, 39. The Board should not further
`
`consider such a suggestion, and should not so find, as it would violate well
`
`established Federal Circuit precedent. Even if the Board were to conclude,
`
`contrary to the lack of evidence supporting such a conclusion, that Petitioner
`
`intended to challenge claims 17, 18, 37, and 38 under ground 2, but inadvertently
`
`failed to state such anywhere in the petition, this would be a clear example of a
`
`deficiency in the petition that the Supreme Court, the Federal Circuit, and the
`
`14
`
`

`

`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
`
`
`Board have repeatedly made clear the Board is not empowered to correct. The
`
`Federal Circuit and Board have repeatedly overruled prior decisions to the
`
`contrary.
`
`The Federal Circuit has explained, “the petitioner’s petition … is supposed
`
`to guide the life of the litigation,” and the “petitioner’s contentions . . . define the
`
`scope of the litigation all the way from institution through to conclusion.” PGS
`
`Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). Accordingly, in
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016), the
`
`Federal Circuit found that the Board erred in making an obviousness argument on
`
`behalf of the petitioner that could have been, but was not, made in the petition.
`
`The Federal Circuit concluded that there is no support for the argument that “the
`
`Board is free to adopt arguments on behalf of petitioners that could have been, but
`
`were not, raised by the petitioner during an IPR.” Id. at 1381. The Board must
`
`apply the Federal Circuit’s precedent in this regard, and should do the same here.
`
`See, e.g., IBM Corp. v. Rigetti & Co., Inc., IPR2020-00494, Paper 13 at 34 (Aug.
`
`11, 2020) (decision denying institution of inter partes review and explaining “our
`
`role is not to remedy the deficiencies in Petitions that fall short”) (citing Sirona
`
`Dental Sys. GMBH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir.
`
`2018) (“It would … not be proper for the Board to deviate from the grounds in the
`
`15
`
`

`

`Case IPR2021-0