Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Date: September 20, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`v.
`ORCKIT CORPORATION,
`Patent Owner.
`
`IPR2023-00554
`Patent 10,652,111 B2
`
`
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, NATHAN A. ENGELS, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 8
`Date: September 20, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`v.
`ORCKIT CORPORATION,
`Patent Owner.
`
`IPR2023-00554
`Patent 10,652,111 B2
`
`
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, NATHAN A. ENGELS, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2023-00554
`Patent 10,652,111 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Petitioner, Cisco Systems, Inc., requests that we institute an inter
`partes review challenging the patentability of claims 1–9, 12–24, and 27–31
`(the “challenged claims”) of U.S. Patent 10,652,111 B2 (Ex. 1001, “the ’111
`patent”). Paper 1 (“Petition” or “Pet.”). Patent Owner, Orckit Corp., argues
`that Petitioner’s request is deficient and should not be granted. Paper 6
`(“Preliminary Response” or “Prelim. Resp.”).
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we institute an inter partes review.1
`B. Related Matters
`The parties identify the following related district court litigation:
`Orckit Corp. v. Cisco Systems, Inc., No. 2:22-cv-00276 (E.D. Tex.)
`(“parallel district court proceeding”). Pet. 78; Paper 7, 2.
`C. The ’111 Patent
`The ’111 patent is titled “Method and System for Deep Packet
`Inspection in Software Defined Networks.” Ex. 1001, code (54). Deep
`Packet Inspection (“DPI”) is a technique for examining network
`communications that can be used to extract data patterns from a data
`communication channel. Id. at 1:21–25. The extracted data patterns are
`useful for a variety of purposes, including network security and data
`analytics. Id.
`
`
`1 Our findings and conclusions at this stage are preliminary, and thus, no
`final determinations are made.
`
`2
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`IPR2023-00554
`Patent 10,652,111 B2
`A software defined network (“SDN”) is a networking architecture that
`provides for centralized management of the nodes in a network, as opposed
`to the distributed architecture utilized by conventional networks. Id.
`at 1:30–38. For example, a SDN may utilize a controller to manage network
`nodes such as vSwitches. Id. SDN-based architectures typically decouple the
`data forwarding (e.g., data plane) from control decisions (e.g., control
`plane), such as routing, resources, and other management functionalities. Id.
`at 1:39–49. The decoupling may allow the data plane and the control plane
`to operate on different hardware, in different runtime environments, and/or
`operate using different models. Id.
`Figure 1 shows a method for DPI in an SDN.
`
`
`In the embodiment of Figure 1, above, a network system 100 includes
`a controller 111 “configured to perform deep packet inspection on
`designated packets from designated flows or TCP sessions” by “instruct[ing]
`each of the network nodes 112 which of the packets and/or sessions should
`be directed to the controller 111 for packet inspections.” Id. at 4:5–11. The
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`IPR2023-00554
`Patent 10,652,111 B2
`network node may be instructed to either redirect the packet to
`controller 111 or send the packet to the destination server 140. Id. For
`example, the controller may send a “probe” instruction to a network node
`such that, when the network node receives a packet that matches a “packet-
`applicable criterion,” the network node will “mirror” (i.e., send) some or all
`of the packet to a security component for inspection. Id. at 2:3–44.
`D. Illustrative Claim(s)
`Of the challenged claims, claim 1 is the only independent:
`1. A method for use with a packet network including a network
`node for transporting packets between first and second entities
`under control of a controller that is external to the network node,
`the method comprising:
`sending, by the controller to the network node over the
`packet network, an instruction and a packet-applicable
`criterion;
`receiving, by the network node from the controller, the
`instruction and the criterion;
`receiving, by the network node from the first entity over
`the packet network, a packet addressed to the second
`entity;
`checking, by the network node, if the packet satisfies the
`criterion;
`responsive to the packet not satisfying the criterion,
`sending, by the network node over the packet network, the
`packet to the second entity; and
`responsive to the packet satisfying the criterion, sending
`the packet, by the network node over the packet network,
`to an entity that is included in the instruction and is other
`than the second entity.
`Ex. 1001, 10:52–11:4.
`
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`IPR2023-00554
`Patent 10,652,111 B2
`E. Evidence
`Petitioner’s grounds of unpatentability rely on the following evidence:
`Name
`Patent Document
`Exhibit
`Lin
`US 9,264,400 Bl (Feb.16, 2016)
`1005
`Swenson
`US 2013/0322242 Al (Dec. 5, 2013)
`1007
`Shieh
`US 2013/0291088 Al (Oct. 31, 2013)
`1006
`
`
`
`F. Prior Art and Asserted Grounds
`Petitioner asserts the following grounds of unpatentability (Pet. 4–5),
`supported by the declaration of Samrat Bhattacharjee, Ph.D. (Ex. 1004):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–9, 12–24, 27–31
`103
`Lin, Swenson
`1, 5–9, 12–24, 27–30
`103
`Shieh, Swenson
`
`
`
`II. DISCRETION UNDER 35 U.S.C. § 314(A)
`Patent Owner contends the Board should exercise its discretion to
`deny institution under 35 U.S.C. § 314, citing the discretionary-denial
`factors articulated in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
`(PTAB Mar. 20, 2020) (precedential) (“Fintiv”). See Prelim. Resp. 23–36.
`More specifically, Patent Owner contends that consideration of the Fintiv
`factors weigh in favor of discretionary denial. Id. Petitioner disagrees. Pet.
`74–77.
`Under § 314(a), the Director has discretion to deny institution of an
`inter partes review, and that discretion has been delegated to the Board. See
`37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the
`Director.”); SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section]
`314(a) invests the Director with discretion on the question whether to
`institute review . . . .” (emphasis omitted)).
`
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`IPR2023-00554
`Patent 10,652,111 B2
`In Fintiv, the Board articulated the following factors for consideration
`when determining whether to exercise discretion to deny institution in view
`of a parallel proceeding:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv at 5–6. “These factors relate to whether efficiency, fairness, and the
`merits support the exercise of authority to deny institution in view of an
`earlier trial date in the parallel proceeding.” Id. at 6. In evaluating these
`factors, we take “a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review.” Id. (citing Patent
`Trial and Appeal Board Consolidated Trial Practice Guide November 2019,
`58).
`
`Subsequently, the Director issued additional guidance on the
`application of Fintiv. See Vidal, Interim Procedure for Discretionary Denials
`in AIA Post-Grant Proceedings with Parallel District Court Litigation (June
`21, 2022) (“Fintiv Memo”). The application of this guidance is further
`guided by the precedential decisions of the Director in OpenSky Indus., LLC
`v. VLSI Tech. LLC, IPR2021-01064, Paper 102, 49–50 (Oct. 4, 2022)
`(precedential) and CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-
`
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`IPR2023-00554
`Patent 10,652,111 B2
`01242, Paper 23 (Feb. 27, 2023) (precedential) (“CommScope”).
`Accordingly, we are instructed to consider compelling merits under the sixth
`Fintiv factor only after a determination that the first five Fintiv factors favor
`discretionary denial. CommScope, 4–5. “Compelling, meritorious challenges
`are those in which the evidence, if unrebutted in trial, would plainly lead to a
`conclusion that one or more claims are unpatentable by a preponderance of
`the evidence.” Fintiv Memo 4.
`For the reasons that follow, although we find that the considerations
`of the first five Fintiv factors weigh in favor of denying institution in this
`case, we determine that the Petition presents compelling merits as to the
`challenged claims, and thus, we decline to exercise our discretion to deny
`the Petition.
`A. Factor 1: Whether the Court Granted a Stay
`Patent Owner contends that Petitioner’s motion to stay filed in the
`parallel district court proceeding was promptly denied, which strongly
`favors discretionary denial. See Prelim. Resp. 25–26; Ex. 2005, 3.
`According to Fintiv, the existence of a district court stay pending Board
`resolution of an inter partes review has weighed strongly against
`discretionary denial, although a denial of such a request sometimes weighs
`in favor of discretionary denial. Fintiv at 6–8. Due to the denial of
`Petitioner’s motion to stay in the parallel district court proceeding, we
`determine that the considerations of the first Fintiv factor weigh in favor of
`discretionary denial.
`B. Factor 2: Proximity of Trial Date
`Patent Owner asserts that the second Fintiv factor weighs heavily in
`favor of discretionary denial because trial in the parallel district court
`proceeding is scheduled to begin March 4, 2024 and a final written decision
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`is expected no later than September 262, 2024. See Prelim. Resp. 26–27
`(citing Ex. 2001, 1). Patent Owner further indicates that the most recent
`statistics indicate a time-to-trial in the Eastern District of Texas of 19
`months, and using these statistics, the projected trial date would be around
`February 2024, which is roughly 7 months before an expected final written
`decision. See id. at 27–29.
`Due to the projected trial date based on time-to-trial statistics and the
`actual trial date being more than six months before an expected final written
`decision, we determine that the considerations of the second Fintiv factor
`weigh in favor of discretionary denial.
`C. Factor 3: Investment in the Parallel Proceeding
`Petitioner contends that the third Fintiv factor favors institution
`because the parallel district court proceeding is in its very early stages and
`the investment in it has been minimal. See Pet. 76. Petitioner also asserts that
`it filed preliminary invalidity contentions on February 2, 2023 and that the
`claim construction hearing is not scheduled until September 7, 2023. See id.
`Patent Owner asserts that the third Fintiv factor favors denial of
`institution because significant work in the parallel district court proceeding
`has already taken place, noting that the parties have produced over 2.4
`million pages of discovery and, that infringement and invalidity contentions
`have been served and supplemented several times. See Prelim. Resp. 30
`(citing Exs. 2002, 2003, 2007, 2011, 2012, 2014, 2015–2020). Patent Owner
`contends that by the time of institution, discovery will be nearly complete,
`and the Markman hearing is scheduled for September 7, 2023. See id. at 30–
`31 (citing Ex. 2001, 3–4).
`
`
`2 Patent Owner mistakenly lists September 13 instead of September 26.
`
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`IPR2023-00554
`Patent 10,652,111 B2
`After consideration of the substantial investment in the parallel district
`court proceeding by the parties and district court, we determine that the
`considerations of the third Fintiv factor weigh in favor of discretionary
`denial.
`D. Factor 4: Overlap Between the Issues Raised in the Petition and in
`the Parallel Proceeding
`Patent Owner contends that the fourth Fintiv factor weighs in favor of
`denying institution because each claim at issue in the parallel district court
`proceeding is at issue in the Petition, and same references (Lin, Shieh, and
`Swenson) are identified in Petitioner’s invalidity contentions. Prelim.
`Resp. 32.
`The Petition includes the following stipulation:
`if the Board institutes trial, Petitioner will cease asserting in the
`parallel litigation the combination of references on which trial is
`instituted for the claims on which trial is instituted.
`Pet. 77.
`Patent Owner correctly contends that this stipulation is a Sand
`Revolution – style stipulation, which the Board has routinely found to weigh
`only marginally in favor of not exercising discretion to deny institution.
`Prelim. Resp. 33 (case citations omitted). Accordingly, we determine the
`considerations of the fourth Fintiv factor weigh only marginally against
`discretionary denial. See Sand Revolution II LLC v. Continental Intermodal
`Group–Trucking LLC, IPR2019 01393, Paper 24 at 12 (PTAB June 16,
`2020) (informative)).
`E. Factor 5: Whether Petitioner and Defendant are the Same Party
`There is no dispute that Petitioner and the defendant in the parallel
`district court proceeding are the same. Pet. 77; Prelim. Resp. 35. Thus, we
`determine that the fifth Fintiv factor weighs in favor of discretionary denial.
`
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`IPR2023-00554
`Patent 10,652,111 B2
`F. Factor 6: Other Circumstances, Including the Merits
`In view of the above, we determine that the first five Fintiv factors
`favor discretionary denial. Thus, under the sixth factor we must consider
`whether the Petition presents compelling merits. CommScope, 4–5.
`Neither party addresses the compelling merits standard in any detail.
`Petitioner asserts that “the analysis in Grounds 1-2 provides a compelling
`unpatentability challenge.” Pet. 77. Patent Owner argues that the grounds are
`not compelling because they do not show how the combination of prior art
`teaches all of the elements of the claims. Prelim. Resp. 35–36.
`We agree with Petitioner that the Petition presents compelling merits
`at least as to unpatentability of claim 1 over Lin and Swenson. As part of our
`analysis below in Section III.D, we discuss the merits of the Petition under
`the standard required for institution and then discuss our conclusion that the
`merits are compelling.
`G. Conclusion
`Under the Director’s guidance, we cannot “discretionarily deny
`institution in view of parallel district court litigation where a petition
`presents compelling evidence of unpatentability.” Fintiv Memo 2. Because
`that is the case here, as explained below in Section III.D.4, we determine
`that we should not exercise discretion to deny institution in this proceeding
`under 35 U.S.C. § 314(a).
`
`
`III. ANALYSIS
`
`A. Legal Standards
`Petitioner bears the burden to demonstrate unpatentability. Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015). At this preliminary stage, we determine whether the information
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`IPR2023-00554
`Patent 10,652,111 B2
`presented in the Petition shows a reasonable likelihood that Petitioner would
`prevail in establishing that at least one of the challenged claims would have
`been obvious over the proposed combinations of prior art. See 35 U.S.C.
`§ 314(a).
`A claim is unpatentable as obvious if “the differences between the
`subject matter sought to be patented and the prior art are such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
`(quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based
`on underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the prior art and the claims; (3) the
`level of skill in the art; and (4) when in evidence, objective indicia of
`nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We apply these principles to the Petition’s challenges.
`B. Level of Ordinary Skill in the Art
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in
`the art (POSA)
`would have had a bachelor’s degree in computer science,
`computer engineering, or an equivalent, and two years of
`professional experience, and a POSA would have had a working
`knowledge of hardware and software for packet-switched
`networking. EX1004, ¶¶48-49. Lack of work experience can be
`remedied by additional education and vice versa. Id., ¶48.
`Pet. 5.
`
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`IPR2023-00554
`Patent 10,652,111 B2
`“Patent Owner does not dispute Petitioner’s definition, except noting
`that other majors, such as electrical engineering and other similar majors
`could be equivalent to computer science or computer engineering.” Prelim.
`Resp. 14.
`We are persuaded, on the present record, that Petitioner’s proposal is
`consistent with the problems and solutions in the ’111 patent and prior art of
`record. We adopt Petitioner’s definition of the level of skill for the purposes
`of this Decision.
`C. Claim Construction
`In inter partes review, we construe claims using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. § 282(b), including construing the claim in
`accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2022).
`Petitioner provides constructions of “controller” and “instruction.”
`Pet. 5–8. Patent Owner “takes no positions regarding these constructions,”
`and does not offer any other constructions. Prelim. Resp. 13.
`We determine that no terms need to be construed at this time. See
`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The
`Board is required to construe ‘only those terms . . . that are in controversy,
`and only to the extent necessary to resolve the controversy.’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`D. 35 U.S.C. § 103 – Lin and Swenson
`Petitioner argues that the combination of Lin and Swenson renders
`obvious the subject matter of claims 1–9, 12–24, and 27–31. Pet. 13–54.
`Patent Owner argues Petitioner has not demonstrated a reasonable likelihood
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`Patent 10,652,111 B2
`of success in showing that at least claim 1 is unpatentable. Prelim.
`Resp. 14–17.
`For the reasons expressed below, we determine that Petitioner has
`established a reasonable likelihood of succeeding in showing that at least
`claim 1 is unpatentable over the combination of Lin and Swenson.
`In the below analysis, we first review the cited prior art of Lin and
`Swenson, and then address the parties’ arguments with respect to the claims.
`1. Lin
`Lin is titled “Software Defined Networking Pipe for Network Traffic
`Inspection.” Ex. 1005, code (54). Lin teaches an “SDN controller inserts
`flow rules in a flow table of [an] SDN switch to create an SDN pipe between
`a sender component and a security component.” Id. at 1:60–62. “The SDN
`pipe allows outgoing packets sent by the sender component to be received
`by the security component” for inspection. Id. at 1:64–2:2. Further the SDN
`controller includes a flow policy database with flow policies that are
`enforced by the controller on network traffic transmitted over the SDN
`computer network. Id. at 4:12–16.
`2. Swenson
`Swenson discloses a system and method for “selectively monitoring
`traffic in a service provider network.” Ex. 1007, Abstr. Swenson teaches
`“[t]he network 120 is a communication network that transmits data between
`the user devices 110, the steering devices 130 and the origin server 160
`and/or the video optimizer 150.” Id. ¶ 23. In one embodiment, “the network
`controller 140 interfaces with the steering device 130 to coordinate the
`monitoring and characterization of network traffic.” Id. ¶ 26. “[T]he steering
`device 130 receives instructions from the network controller 140 based on
`
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`the desired criteria for characterizing flows of interest for further
`inspection.” Id.
`3. Claim 1
`Petitioner argues that independent claim 1 is taught by the
`combination of Lin and Swenson. Pet. 13–33.
`The preamble of claim 1 defines the physical components of claim 1,
`namely “a packet network including a network node for transporting packets
`between first and second entities under control of a controller that is external
`to the network node.” Ex. 1001, 10:52–55. We determine that Petitioner has
`shown by a reasonable basis that both Lin and Swenson disclose the physical
`components of claim 1. Pet. 13–23. For example, Petitioner identifies Lin as
`teaching a software defined network that transmits packets over the network
`with the use of an SDN controller (610) and an SDN switch (620) (i.e., the
`network node), where the packets pass between two entities (sender 622 and
`Next hop). Id. at 13–17 (citing e.g., Ex. 1005, 1:7–9, 4:8–31, 4:33–67,
`Figs. 1, 6; Ex. 1004 ¶¶ 75–78); see also id. at 20–22 (discussing similar
`teachings in Swenson). Petitioner further argues that Lin and Swenson have
`“substantially similar . . . architecture” and function in similar ways. Id.
`at 19–22.
`The first method step of claim 1 requires “sending, by the controller to
`the network node over the packet network, an instruction and a packet-
`applicable criterion.” Ex. 1001, 10:56–58. Concerning this limitation, Patent
`Owner argues that that “[t]he Petition . . . fails to explain how Lin’s SDN
`controller 610 and SDN switch 620 are discrete elements on a packet
`network such that controller 610 sends the instruction and criterion to switch
`620 over the packet network as claimed.” Prelim. Resp. 15. In making this
`argument, Patent Owner cites to page 25 of the Petition which states: “Lin
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`explains that a controller (i.e., the SDN controller) controls network nodes
`(i.e., the SDN switches) in a packet network for the reasons stated above for
`Element [1.0].” Pet. 25. Patent Owner does not address the discussion of the
`packet network in the prior section (e.g., Pet. 13–17 (discussing Lin)
`and 20–25 (discussing Lin in combination with Swenson)). Thus, Patent
`Owner’s argument amounts to an assertion that does not address the
`positions outlined in the Petition.
`The Petition identifies that Lin teaches that in its system, “[t]he SDN
`controller 610 and the SDN switch 620 are logically separate components.”
`Pet. 17 (quoting Ex. 1005, 3:51–52). The Petition identifies that Lin teaches
`the “transmission of packets over the SDN computer network 600.” Id. at 14
`(quoting Ex. 1005, 4:19–21). And the Petition provides evidence that one of
`skill in the art “would have known that [Lin’s] computer network is a packet
`network.” Id. (citing Ex. 1004 ¶¶ 75–76). The Petition further specifies how
`the controller provides instructions and criterion to the switch (id. at 25–27),
`which are separate components connected over the network (id. at 14, 17). In
`view of these arguments and evidence, we determine that the Petition
`provides a reasonable basis to find that the prior art teaches a packet network
`where the controller sends the instruction and criterion to a network node
`over the packet network as claimed.
`Patent Owner does not otherwise contest Petitioner’s arguments that
`independent claim 1 is taught by the combination of Lin and Swenson.
`We also determine that Petitioner has shown by a reasonable basis
`that the combination of Lin and Swenson discloses the remaining method
`steps of claim 1. See Pet. 25–33 (citing e.g., Ex. 1005, 1:58–2:4, 4:14–31,
`4:33–67, 7:24–8:18, Figs. 6–9; Ex 1004 ¶¶ 88–114). For example, for the
`first “receiving” step, the Petition relies on the same teachings of Lin
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`discussed above with respect to the “sending” step. Id. at 27–28. Concerning
`the second “receiving” step, the Petition discusses how both Lin and
`Swenson receive packets in accordance with the claim language. Id.
`at 28–29; see also id. at 14–24 (discussing Lin and Swenson with respect to
`similar language in the preamble, addressed above). Finally, concerning the
`“checking” and two “responsive” steps, the Petition identifies how Lin
`teaches that the SDN switch implements flow rules which check if the rules
`are met and then “responsive” to the answer, controls the flow of packets
`accordingly. Id. at 29–33.
`We have reviewed the Petition and supporting evidence and determine
`that the Petition demonstrates a reasonable likelihood that Petitioner would
`prevail in showing claim 1 unpatentable over the combination of Lin and
`Swenson.
`4. Compelling Merits
`Having determined that Petitioner is likely to succeed in its challenge
`to claim 1, and that the first five Fintiv factors favor discretionary denial, we
`now consider whether the Petition presents compelling merits. CommScope,
`4–5.
`
`“Compelling, meritorious challenges are those in which the evidence,
`if unrebutted in trial, would plainly lead to a conclusion that one or more
`claims are unpatentable by a preponderance of the evidence.” Fintiv
`Memo, 4. We determine that Petitioner’s challenge as to claim 1 based on
`Lin and Swenson meets this standard. As set forth in the previous section,
`Petitioner demonstrates that at this stage all elements of claim 1 are
`disclosed, taught, or suggested by the combination of Lin and Swenson. If
`unrebutted at trial, we would conclude by a preponderance of the evidence
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`that at least claim 1 is unpatentable over the combination of Lin and
`Swenson.
`Petitioner relies on various portions of Lin and Swenson for
`disclosing, teaching, or suggesting the limitations of claim 1. See Pet. 13–33;
`see also infra § III.D.3 (detailing Petitioner’s arguments). At this stage,
`Patent Owner has not produced persuasive rebuttal evidence. For most of the
`claim limitations, Patent Owner provides no rebuttal to Petitioner’s analysis.
`Patent Owner’s arguments addressed above do not even address the full
`arguments made in the Petition. Further, most, if not all, of the positions set
`forth in the Petition for claim 1 are based on the explicit teachings in the
`prior art. In short, we determine that, on this preliminary record, Petitioner’s
`challenge to claim 1 meets the “compelling merits” standard as set forth in
`the Fintiv Memo.
`5. Claims 2–9, 12–24, 27–31
`Claims 2–9, 12–24, and 27–31 all depend from claim 1. The Petition
`provides argument and supporting evidence to support its position that these
`claims are also unpatentable over the combination of Lin and Swenson.
`Pet. 33–54. Patent Owner does not separately address these claims. See
`generally, Prelim. Resp.
`We have reviewed the Petition and supporting evidence and determine
`that the Petition demonstrates a reasonable likelihood that Petitioner would
`prevail in showing these claims unpatentable over the combination of Lin
`and Swenson.
`E. 35 U.S.C. § 103 – Shieh and Swenson
`Petitioner argues that the combination of Shieh and Swenson renders
`obvious the subject matter of claims 1, 5–9, 12–24, and 27–30. Pet. 54–73.
`
`17
`
`
`
`IPR2023-00554
`Patent 10,652,111 B2
`Patent Owner argues Petitioner has not demonstrated a reasonable likelihood
`of success showing that at least claim 1 is unpatentable. Prelim. Resp 17–23.
`For the reasons expressed below, we determine that Petitioner has not
`established a reasonable likelihood of succeeding in showing that at least
`claim 1 is unpatentable over the combination of Shieh and Swenson.
`In the below analysis, we first review Shieh, and then address the
`parties’ arguments with respect to the claims.
`1. Shieh
`Shieh is titled “Cooperative Network Security Inspection.” Ex. 1006,
`code (54). Shieh relates to a network security system where a network access
`device inspects a packet received from a source node which is destined to a
`destination node. Id. at Abstr. If the network access device determines the
`packet needs to “undergo security processing” it “is transmitted to a security
`device . . . to perform content inspection.” Id. Alternatively, “[t]he packet is
`routed to the destination node without forwarding . . . to the security device.”
`Id.
`
`2. Claim 1
`Petitioner argues that independent claim 1 is taught by the
`combination of Shieh and Swenson. Pet. 54–66. Similar to the ground based
`on Lin and Swenson, Petitioner argues that Shieh and Swenson have similar
`architecture and function in similar ways. Id. at 55–62.
`Concerning the “packet-applicable criterion,” which is relevant to
`almost all of the method steps, the Petition relies on Shieh for “disclos[ing]
`separate packet-applicable criterion to determine which packets should be
`forwarded to the security device pursuant to the filtering rules.” Id. at 62
`(citing Ex. 1004 ¶ 224). The Petition then states that specific examples in
`Shieh include the identification of “TCP FIN or TCP RST packets” and that
`
`18
`
`
`
`IPR2023-00554
`Patent 10,652,111 B2
`“These correspond to the claimed packet-applicable criterion.” Id. at 63
`(citing Ex. 10063 ¶¶ 35, 36, 49) (emphasis omitted).
`Petitioner’s position concerning the “packet-applicable criterion” is
`unclear. For example, it is unclear how identification of “TCP FIN or TCP
`RST packets” corresponds to the teachings surrounding filtering rules in
`Shieh. Further, Shieh does not appear to teach what happens to a packet in a
`special event such as a TCP FIN or TCP RST packet is identified. See
`Ex. 1006 ¶ 36. As discussed by Patent Owner, “Shieh discloses that packet
`destinations are determined by the bypass flag—which is separate from the
`TCP FIN or TCP RST packet.” Prelim. Resp. 19 (citing Ex. 1006 ¶¶ 36–37);
`see also id. at 19–21. The Petition asserts that they are related, but does not
`explain how. See e.g., Pet. 62–63, 65.
`As the Petition relies on identification of TCP FIN and TCP RST
`packets in Shieh for the “packet-applicable criterion,” we cannot say that
`Petitioner at this time has provided a reasonable basis for us to determine
`that claim 1 is unpatentable over the combination of Shieh and Swenson.
`3. Claims 5–9, 12–24, 27–30
`Claims 5–9, 12–24, and 27–30 all depend from claim 1. Thus, the
`Petition does not provide a reasonable basis for us to determine that these
`claims are unpatentable over Shieh and Swenson for the same reasons as
`claim 1.
`
`
`
`3 The citation in the Petition uses “id.” in error, pointing to Ex. 1004 instead
`of listing Ex. 1006.
`
`19
`
`
`
`IPR2023-00554
`Patent 10,652,111 B2
`
`IV. CONCLUSION
`For the foregoing reasons, we have determined that there is a
`reasonable likelihood that the Petitioner would prevail with respect to at
`least one claim challenged in the Petition. We, therefore, institute trial as to
`all challenged claims on all grounds stated in the Petition.
`
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, inter partes review as to claims 1–9, 12–24,
`and 27–31 of U.S. Patent 10,652,111 B2 is instituted; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`will commence on the entry date of this decision.
`
`
`PETITIONER:
`Jeffrey Blake
`jblake@merchantgould.com
`Daniel McDonald
`dmcdonald@merchantgould.com
`
`
`PATENT OWNER:
`James Carmichael
`jim@carmichaelip.com
`Stephen McBride
`stevemcbride@carmichaelip.com
`
`20
`
`
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