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`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________________
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`CISCO SYSTEMS, INC.,
`
`Petitioner,
`
`- vs. -
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`ORCKIT IP, LLC,
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`Patent Owner.
`_________________________
`
`Case IPR2023-00554
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`U.S. Patent No. 10,652,111
`
`_________________________
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`DECLARATION OF SAMRAT BHATTACHARJEE, Ph.D.
`IN SUPPORT OF PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 10,652,111
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`TABLE OF CONTENTS
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`I.
`II.
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`INTRODUCTION AND QUALIFICATIONS ............................................... 1
`UNDERSTANDING OF THE GOVERNING LAW ..................................... 4
`Invalidity by Obviousness ......................................................................... 4
`Interpreting Claims Before the Patent Office ........................................... 8
`Materials Relied on in Forming My Opinions .......................................... 8
`III. BACKGROUND DISCUSSION COMPUTER NETWORKING
`TECHNOLOGY .............................................................................................. 9
`IV. OVERVIEW OF THE ’111 Patent ................................................................14
`Specification of the ’111 Patent ..............................................................14
`The Claims of the ’111 Patent .................................................................18
`The Prosecution History of the ’111 Patent ............................................19
`The Priority Date of the ’111 Patent .......................................................25
`STATE OF THE ART PRIOR TO THE ’111 Patent ...................................25
`The Person of Ordinary Skill in the Art ..................................................25
`Lin ...........................................................................................................26
`Shieh ........................................................................................................30
`Swenson ..................................................................................................35
`VI. CLAIM CONSTRUCTION ..........................................................................40
`VII. GROUNDS OF INVALIDITY .....................................................................44
`Ground 1: Claims 1-9, 12-24 and 27-31 of the ’111 Patent are obvious
`over Lin in view of Swenson. .................................................................44
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`V.
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`a. Claim 1 ..............................................................................................44
`b. Claim 2 ..............................................................................................74
`c. Claim 3 ..............................................................................................75
`d. Claim 4 ..............................................................................................78
`e. Claim 5 ..............................................................................................81
`f. Claim 6 ..............................................................................................82
`g. Claim 7 ..............................................................................................84
`h. Claim 8 ..............................................................................................85
`i. Claim 9 ..............................................................................................85
`j. Claim 12 ............................................................................................87
`k. Claim 13 ............................................................................................88
`l. Claim 14 ............................................................................................88
`m. Claim 15 ............................................................................................89
`n. Claim 16 ............................................................................................91
`o. Claim 17 ............................................................................................92
`p. Claim 18 ............................................................................................93
`q. Claim 19 ............................................................................................95
`r. Claim 20 ............................................................................................95
`s. Claim 21 ............................................................................................97
`t. Claim 22 ............................................................................................98
`u. Claim 23 ............................................................................................98
`v. Claim 24 ............................................................................................99
`w. Claim 27 ..........................................................................................100
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`x. Claim 28 ..........................................................................................101
`y. Claim 29 ..........................................................................................101
`z. Claim 30 ..........................................................................................102
`aa. Claim 31 ..........................................................................................103
` Ground 2: Claims 1, 5-9, 12-24 and 27-30 of the ’111 Patent are obvious
`over Shieh in view of Swenson. ............................................................104
`a. Claim 1 ............................................................................................104
`b. Claim 5 ............................................................................................127
`c. Claim 6 ............................................................................................128
`d. Claim 7 ............................................................................................129
`e. Claim 8 ............................................................................................130
`f. Claim 9 ............................................................................................131
`g. Claim 12 ..........................................................................................132
`h. Claim 13 ..........................................................................................133
`i. Claim 14 ..........................................................................................134
`j. Claim 15 ..........................................................................................135
`k. Claim 16 ..........................................................................................136
`l. Claim 17 ..........................................................................................138
`m. Claim 18 ..........................................................................................139
`n. Claim 19 ..........................................................................................140
`o. Claim 20 ..........................................................................................141
`p. Claim 21 ..........................................................................................141
`q. Claim 22 ..........................................................................................142
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`r. Claim 23 ..........................................................................................143
`s. Claim 24 ..........................................................................................144
`t. Claim 27 ..........................................................................................145
`u. Claim 28 ..........................................................................................145
`v. Claim 29 ..........................................................................................146
`w. Claim 30 ..........................................................................................146
`VIII. OBJECTIVE INDICIA OF NON-OBVIOUSNESS ...................................148
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`iv
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`I, Samrat Bhattacharjee, Ph.D., hereby declare as follows:
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`I.
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`INTRODUCTION AND QUALIFICATIONS
`I have been retained on behalf of Cisco Systems, Inc. (“Cisco”) to
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`1.
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`provide my technical review, analysis, insights, and opinions concerning the validity
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`of the claims of U.S. Patent No. 10,652,111 (EX1001; “the ’111 Patent”) entitled
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`“Method and System for Deep Packet Inspection in Software Defined Networks.”
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`The patent is assigned to Orckit IP, LLC (“Orckit”).
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`2.
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`I am a tenured professor in the Computer Science Department and the
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`Institute for Advanced Computer Studies at the University of Maryland. I am also
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`an Affiliate Professor with the Department of Electrical and Computer Engineering
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`at the University of Maryland. I have been an appointed faculty member at the
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`University of Maryland since 1999.
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`3.
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`I received a Ph.D. in computer science from the Georgia Institute of
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`Technology in 1999. Before that I received a B.S. degree in Mathematics and
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`Computer Science with Highest Distinction (Summa Cum Laude) and was
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`recognized as the Outstanding Department Major at Georgia College and State
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`University, Milledgeville, Georgia in 1994.
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`4.
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`I have been involved in the research and development of computing
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`systems for over two decades. I perform research and I teach in the areas of computer
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`networks, distributed systems, computer security and operating systems, among
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`others. A major theme of my research has been the development of technology to
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`improve the performance and security of data transfers on the Internet. My research
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`has examined problems ranging from network and operating system support audio
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`and video streaming, large scale Internet video distribution, the design of novel
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`network architectures for better and secure content distribution, efficiency of content
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`distribution over wireless networks, and so on.
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`5.
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`For example, starting in the late 1990s, the focus of my research was
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`the development of network and operating system technology to design a new
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`network architecture that allowed for more efficient data transfer. Part of my Ph.D.
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`research was to develop new and more efficient architectures for video delivery on
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`the Internet, and I have published papers on this architecture during my graduate
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`studies. I continued to work on video delivery as a faculty member, and have
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`published various papers on video streaming, content delivery architectures, and on
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`resilient large scale content delivery. During 2007, I was a visiting researcher at
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`AT&T Labs, and one of the projects I focused on was a video content delivery
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`platform. This work resulted in both publications and a granted US patent
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`(US8,752,100 B2).
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`6.
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`Along with working on research problems related to video distribution,
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`I routinely taught this material in both graduate and undergraduate courses. A
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`number of my papers in this domain are with students at the University of Maryland,
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`many of whom started in this area after taking my classes.
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`7.
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`I have authored or co-authored over 100 articles in peer-reviewed
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`journals, conference proceedings, and workshops in the aforementioned areas of
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`computer science and others. Over the years I have received several fellowships,
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`prizes, and awards for teaching excellence and technical papers, including an Alfred
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`P. Sloan Jr. Fellowship in 2004 and the National Science Foundation CAREER
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`award in 2001. I have also received an award from the SIGCOMM foundation for a
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`“Test of Time” paper (that is given to an influential paper published ten years ago).
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`My research work has been supported by multiple grants from the US National
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`Science Foundation, and the Department of Defense. I have also started a Joint Ph.D.
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`program with the University of Maryland and the Max Planck Society in Germany,
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`and co-founded the annual Cornell, Maryland, Max Planck Research School that
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`provides research exposure to about 80 students from across the world during a week-
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`long school.
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`8.
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`I have served on numerous paper and proposal review panels and
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`participated on program committees for ACM/IEEE groups, technical journals, and
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`conferences in Networking, Security and Systems in the aforementioned areas of
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`computer science. I have created research software for all of my projects, much of
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`which is available online for others to build on.
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`9.
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`I am a named inventor on three U.S. Patents. These patents are
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`generally related to computer networking and the delivery of services over networks
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`and video delivery systems.
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`10.
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`I have served as an expert witness and technical consultant in litigation
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`and Inter Partes Review matters concerning videoconferencing, data conferencing
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`and screen sharing, voice over IP (VoIP) telephony, multimedia networking,
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`distributed systems, operating systems, computer networks, and datacenter
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`networking, among others. I have testified in several trials and depositions as an
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`expert witness.
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`11.
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`I attach as Exhibit 1003 my curriculum vitae, which includes a more
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`detailed list of my qualifications. My curriculum vitae also contains a list of all other
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`cases in which, during the previous 4 years, I testified as an expert at trial or by
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`deposition. My work on this case is being billed at a rate of $700 per hour, with
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`reimbursement for actual expenses. I have no direct financial interest in the dispute
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`between the Cisco and Orckit, and my compensation is not contingent upon the
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`outcome of this Inter Partes review.
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`II. UNDERSTANDING OF THE GOVERNING LAW
`
`Invalidity by Obviousness
`12.
`I understand that obviousness is analyzed from the perspective of a
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`person of ordinary skill in the art (“POSA”) at the time of the alleged invention. I
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`also understand that a POSA is presumed to have been aware of all pertinent prior
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`art at the time of the alleged invention.
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`13.
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`I understand that an obviousness analysis involves comparing a claim
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`to the prior art to determine whether the claimed invention as a whole would have
`
`been obvious to a POSA in view of the prior art, and in light of the general
`
`knowledge in the art at the time the invention was made. I also understand that the
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`invention may be deemed obvious when a POSA would have reached the claimed
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`invention through routine experimentation.
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`14.
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`I understand that obviousness can be established by combining or
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`modifying the disclosures of the prior art to achieve the claimed invention. It is also
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`my understanding that where there is a reason to modify or combine the prior art to
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`achieve the claimed invention, there must also be a reasonable expectation of success
`
`in so doing to render the claimed invention obvious. I understand that the reason to
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`combine prior art references can come from a variety of sources, not just the prior
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`art itself or the specific problem the patentee was trying to solve. I also understand
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`that the references themselves need not provide a specific hint or suggestion of the
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`alteration needed to arrive at the claimed invention; the analysis may include
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`recourse to logic, judgment, and common sense available to a POSA.
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`15.
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`I understand that when there is some recognized reason to solve a
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`problem, and there are a finite number of identified, predictable solutions, a POSA
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`has good reason to pursue the known options within his or her technical grasp. If
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`such an approach leads to the anticipated success, it is likely the product not of
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`innovation but of ordinary skill and common sense. In such a circumstance, when a
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`patent simply arranges old elements with each performing the same function it had
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`been known to perform and yields no more than one would expect from such an
`
`arrangement, the combination is obvious.
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`16.
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`I understand that when considering the obviousness of an invention,
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`one should also consider whether there are any objective indicia that support the
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`non-obviousness of the invention. I further understand that objective indicia of non-
`
`obviousness include failure of others, copying, unexpected results, information that
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`“teaches away” from the claimed subject matter, perception in the industry,
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`commercial success, and long-felt but unmet need. I also understand that in order for
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`objective indicia of non-obviousness to be applicable, the indicia must have some
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`sort of nexus to the subject matter in the claim that was not known in the art. I
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`understand that this nexus includes a factual connection between the patentable
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`subject matter of the claim and the objective indicia alleged. I also understand that
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`an independently made invention that is made within a comparatively short period
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`of time is evidence that the claimed invention was the product of ordinary skill.
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`17.
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`Finally, I understand that patent examiners at the U.S. Patent and
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`Trademark Office (“USPTO”) rely upon certain exemplary rationales in reviewing
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`patent applications to understand whether the subject matter of the claims is obvious.
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`I understand that the following is the list of exemplary rationales relied upon by
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`patent examiners at the USPTO:
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`(A) Combining prior art elements according to known methods to
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`yield predictable results;
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`(B) Simple substitution of one known element for another to obtain
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`predictable results;
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`(C) Use of a known technique to improve similar devices (methods,
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`or products) in the same way;
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`(D) Applying a known technique to a known device (method, or
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`product) ready for improvement to yield predictable results;
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`(E) “Obvious to try” – Choosing from a finite number of identified,
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`predictable solutions, with a reasonable expectation of success;
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`(F) Known work in one field of endeavor may prompt variations of
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`it for use in either the same field or a different one based on
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`design incentives or other market forces if the variations are
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`predictable to one of ordinary skill in the art; and
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`(G) Some teaching, suggestion, or motivation in the prior art that
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`would have led one of ordinary skill to modify the prior art
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`reference or to combine prior art reference teachings to arrive at
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`the claimed invention.
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`18.
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`Interpreting Claims Before the Patent Office
`I understand that Inter Partes Review is a proceeding before the United
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`States Patent & Trademark Office (“USPTO”) for evaluating the validity of issued
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`patent claims. I understand that, in an Inter Partes Review, a claim term is
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`interpreted in a manner consistent with the standard used in patent litigation, as set
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`forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). That
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`standard generally construes the claims according to their “ordinary and customary”
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`meaning in view of the claim language, specification, and file history, and where
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`applicable, relevant other evidence.
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`19.
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`I understand that a patent’s “specification” includes all the figures,
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`discussion, and claims within the patent. I understand that the USPTO will look to
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`the specification and prosecution history to see if there is a definition for a given
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`claim term, and if not, will apply the ordinary and customary meaning from the
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`perspective of a POSA at the time in which the alleged invention was made.
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` Materials Relied on in Forming My Opinions
`20.
`In forming the opinions expressed in this declaration, I have relied on
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`my own knowledge, experience, and expertise, as well as the knowledge of a POSA
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`in the relevant timeframe. In addition, I have reviewed and relied upon all documents
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`referenced in this declaration and the following list of materials:
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`• U.S. Patent No. 10,652,111 (“the ’111 Patent”) (EX1001);
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`• Prosecution History of the ’111 Patent (EX1002);
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`• U.S. Patent No. 9,264,400 (“Lin”) (EX1005);
`
`• U.S. Patent Application Publication No. 2013/0291088 (“Shieh”)
`(EX1006);
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`• U.S. Patent Application Publication No. 2013/0322242 (“Swenson)
`(EX1007);
`
`• RFC 2460, Internet Protocol, Version 6 (IPv6) Specification
`(EX1008); and
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`• Nunes, A., et al., A Survey of Software-Defined Networking: Past,
`Present, and Future of Programmable Networks (EX1009).
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`III. BACKGROUND DISCUSSION COMPUTER NETWORKING
`TECHNOLOGY
`To better understand my opinions on the validity of the claims of the
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`21.
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`’111 Patent, I provide below some background on computer networking with a
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`particular focus on software defined networking (“SDN”). All of the concepts
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`discussed in this section were well known and used prior to the April 22, 2014
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`priority date for the ’111 Patent.
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`A. Software Defined Networks (“SDN”)
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`22.
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`“Computer networks are typically built from a large number of network
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`devices such as routers, switches and numerous types of middleboxes (i.e., devices
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`that manipulate traffic for purposes other than packet forwarding, such as a firewall)
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`with many complex protocols implemented on them.” EX1009 at 1. “Network
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`operators are responsible for configuring policies to respond to a wide range of
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`network events and applications.” EX1009 at 1. As computer networks have
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`evolved, “programmable networks” have been developed to help keep up with the
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`pace of that evolution. EX1009 at 1.
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`23. One programmable networking concept that became popular before the
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`priority date for the ’111 Patent was filed is SDN. EX1005, Col. 1:11-12 (“Software
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`defined networking (SDN) is an emerging architecture for computer networking.”);
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`see EX1009 at 1. SDN is a “networking paradigm in which the forwarding hardware
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`[in a network] is decoupled from control decisions.” EX1009 at 1. “In SDN, the
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`network intelligence is logically centralized in software-based controllers (the
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`control plane), and network devices become simple packet forwarding devices (the
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`data plane) that can be programmed via an open interface (e.g., ForCES, OpenFlow,
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`etc.).” EX1009 at 1; see EX1005, Col. 1:12-14 (“Unlike traditional computer
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`network architectures, SDN separates the control plane from the data plane.”).
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`24. SDN “was developed to facilitate innovation and enable simple
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`programmatic control of the network data-path.” EX1009 at 3. As shown in the
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`figure below, “the separation of the forwarding hardware from the control logic
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`allows easier deployment of new protocols and applications, straightforward
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`network visualization and management, and consolidation of various middleboxes
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`into software control.” EX1009 at 3; see EX1005, Col. 1:14-17 (stating that the
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`separation of the control plane from the data plane “provides many advantages,
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`including relatively fast experimentation and optimization of switching and routing
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`policies.”). “Instead of enforcing policies and running protocols on a convolution of
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`scattered devices, the network is reduced to ‘simple’ forwarding hardware and the
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`decision-making network controllers.” EX1009 at 3.
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`Figure 1 of EX1009
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`25.
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`“The underlying network infrastructure may involve a number of
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`different physical network equipment, or forwarding devices such as routers,
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`switches, virtual switches, wireless access points, to name a few.” EX1009 at 5. “In
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`a [SDN], such devices are often represented as basic forwarding hardware accessible
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`via an open interface at an abstraction layer, as the control logic and algorithms are
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`off-loaded to a controller.” EX1009 at 5. “Such forwarding devices are commonly
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`referred to, in SDN terminology, simply as ‘switches, as illustrated in [the figure
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`reproduced below].’” EX1009 at 5.
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`Figure 3 of EX1009
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`26.
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`“Traditionally, the basic unit of networking has been the packet.”
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`EX1009 at 7. “Each packet contains address information necessary for a network
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`switch to make routing decisions.” EX1009 at 7. “However, most applications send
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`data as a flow of many individual packets.” EX1009 at 7. “A network that wishes to
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`provide [Quality of Service] or service guarantees to certain applications may benefit
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`from individual flow-based control.” EX1009 at 7.
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`27. However, “[i]n a [SDN] network where network elements are
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`controlled remotely, overhead is caused by traffic between the data-plane and the
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`control-plane.” EX1009 at 7. “As such, using packet level granularity would incur
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`additional delay as the controller would have to make a decision for each arriving
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`packet.” EX1009 at 7-8. “When controlling individual flows, the decision made for
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`the first packet of the flow can be applied to all subsequent packets of that flow.”
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`EX1009 at 8. “The overhead may be further reduced by grouping flows together,
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`such as all traffic between two hosts, and performing control decisions on the
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`aggregated flows.” EX1009 at 8.
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`28. Among the functionalities that can be implemented when using SDN
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`are “network security services, such as firewall or deep packet inspection (DPI).”
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`EX1005, Col. 3:11-12; see EX1006, ¶[0021].
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`B. The OpenFlow™ Protocol
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`29. As discussed above, the OpenFlow™ protocol can be used to
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`implement SDN. EX1009 at 1; see EX1005, Col. 1:18-32. “The OpenFlow™
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`protocol is an open protocol for remotely controlling forwarding tables of network
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`switches that are enabled for SDN.” EX1005, Col. 1:18-20. “Generally speaking, the
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`OpenFlow protocol allows direct access to and manipulation of the forwarding plane
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`of network devices, such as switches and routers.” EX1005, Col. 1:20-22. “A control
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`plane of an OpenFlow™ protocol-compliant computer network (also referred to as
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`an ‘OpenFlow™ controller’) may communicate with OpenFlow™ switches (i.e.,
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`network switches that are compliant with the OpenFlow™ protocol) to set flow
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`policies that specify how the switches should manipulate packets of network traffic.”
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`EX1005, Col. 1:22-28. “Example packet manipulation actions include forwarding a
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`packet to a specific port, modifying one or more fields of the packet, asking the
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`controller for action to perform on the packet, or dropping the packet.” EX1005, Col.
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`1:28-32.
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`IV. OVERVIEW OF THE ’111 PATENT
`Specification of the ’111 Patent
`The methods and systems described in the ’111 Patent relate to “deep
`
`30.
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`packet inspection (DPI) in a software defined network (SDN).” EX1001, Abstract;
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`see EX1001, Col. 1:14-16. The method disclosed in the ’111 Patent “is performed
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`by a central controller of the SDN.” EX1001, Col. 2:27-30. The method comprises
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`“configuring a plurality of network nodes operable in the SDN with at least one
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`probe instruction.” EX1001, Col. 2:3-32. The method further comprises “receiving
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`from a network node a first packet of a flow, wherein the first packet matches the at
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`least one probe instruction” and “wherein the first packet includes a first sequence
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`number.” EX1001, Col. 2:32-35. The method also comprises “receiving from a
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`network node a second packet of the flow, wherein the second packet matches the at
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`least one probe instruction” and “the second packet includes a second sequence
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`number. EX1001, Col. 2:35-38. “[T]he second packet is a response of the first
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`packet.” EX1001, Col. 2:38-39. The method further includes “computing a mask
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`value respective of at least the first and second sequence numbers, wherein the mask
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`value indicates which bytes to be mirrored from subsequent packets belonging to the
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`same flow.” EX1001, Col. 2:39-44. The method also includes “generating at least
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`one mirror instruction based on at least the mask value.” EX1001, Col. 2:45-46. The
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`method further includes “configuring the plurality of network nodes with at least one
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`mirror instruction.” EX1001, Col. 2:46-47. Finally, “the mirrored bytes are
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`inspected.” EX1001, Col. 2:44.
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`31.
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`“[T]he central controller 111 [shown below in Figure 1 of the ’111
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`Patent] is configured to perform deep packet inspection on designated packets from
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`designated flows or TCP sessions.” EX1001, Col. 4:5-7. “To this end, the central
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`controller 111 is further configured to instruct each of the network nodes 112 which
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`of the packets and/or sessions should be directed to the controller 111 for packet
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`inspections.” EX1001, Col. 4:8-11. “The determination [of whether a packet requires
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`inspection] is performed based on a set of instructions provided by the
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`controller 111.” EX1001, Col. 4:14-15. “A packet that requires inspection is either
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`redirected to the controller 111 or mirrored and a copy thereof is sent to the
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`controller 111.” EX1001, Col. 4:15-18. “It should be noted that traffic flows that are
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`inspected are not affected by the operation of the network node 112.” EX1001, Col.
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`4:18-19.
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`Figure 1 of the ’111 Patent
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`32. F[igure] 6 [of the ’111 Patent, shown below] shows an exemplary and
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`non-limiting
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`flowchart 600 illustrating
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`the
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`operation
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`of
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`the
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`central
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`controller 111 according to one embodiment.” EX1001, Col. 9:40-42. “At S[tep]
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`610, all network nodes 112 are configured with a set of probe instructions utilized
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`to instruct each node 112 to redirect a TCP packet having at least a flag value as
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`designated in each probe instruction.” EX1001, Col. 9:42-45. “At S[tep] 620, a first
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`TCP packet with at least one TCP FLAG SYN value equal to 1 is received.” EX1001,
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`Col. 9:47-48. “This packet may have a sequence number M and may be sent from a
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`client device 130.” EX1001, Col. 9:48-50. “At S630, a second TCP packet with at
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`least one TCP FLAG ACK value equal to 1 is received.” EX1001, Col. 9:50-51.
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`“This packet may have a sequence number N and may be sent from a destination
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`server 140 in response to the first TCP packet.” EX1001, Col. 9:51-53. “In an
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`embodiment, the flow table is updated with the respective flow ID and the state of
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`the first and second packets.” EX1001, Col. 9:53-55.
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`Figure 6 of the ’111 Patent
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`33.
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`“At S[tep] 640, using at least the sequence numbers of the first and
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`second packets a mask value is computed.” EX1001, Col. 9:56-57. “The mask value
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`is utilized to determine which bytes from the flow respective of the sequence
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`numbers N and M should be mirrored by the nodes.” EX1001, Col. 9:40-42. “At
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`S[tep] 650, a set of mirroring instructions are generated using the mirror value and
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`sent to the network nodes.” EX1001, Col. 9:62-63. “Each such instruction defines
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`the packets (designed at least by a specific source/destination IP addresses, and TCP
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`sequences), the number of bytes, and the bytes that should be mirrored.” EX1001,
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`Col. 9:63-67. At S[tep] 660, the received mirror bytes are inspected using a DPI
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`engine in the controller 111.” EX1001, Cols. 9:67-10:1. “In addition, the flow table
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`is updated with the number of the received mirror bytes.” EX1001, Col. 10:1-3.
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`The Claims of the ’111 Patent
`The ’111 Patent includes 54 claims. EX1001, Cols. 10:52-14:60.
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`34.
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`Claims 1 and 32 are independent claims. EX1001, Cols. 10:52-11:4, 13:8-23.
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`Representative Claim 1 recites:
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`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