`571-272-7822
`
`Paper 27
`Entered: December 21, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JUNIPER NETWORKS, INC. and PALO ALTO NETWORKS, INC.,
`Petitioner,
`v.
`PACKET INTELLIGENCE LLC,
`Patent Owner.
`
`IPR2020-00337
`Patent 6,771,646 B1
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`Before STACEY G. WHITE, CHARLES J. BOUDREAU, and
`JOHN D. HAMANN, Administrative Patent Judges.
`BOUDREAU, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`35 C.F.R. § 42.71(d)
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`IPR2020-00337
`Patent 6,771,646 B1
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`INTRODUCTION
`I.
`Packet Intelligence LLC (“Patent Owner”) filed a Request for
`Rehearing (Paper 24, “Req. Reh’g”) of our Decision granting institution of
`inter partes review (Paper 20, “Institution Decision” or “Inst. Dec.”) of
`claims 1–3, 7, 16, and 18 of U.S. Patent No. 6,771,646 B1 (“the ’646
`patent”). For the following reasons, Patent Owner’s Request for Rehearing
`is denied.
`
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that a
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`all matters it believes the Board misapprehended or overlooked, and the
`place where each matter was addressed previously in a motion, an
`opposition, or a reply. Id. When rehearing a decision on petition, we review
`the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion occurs when a “decision was based on an erroneous conclusion of
`law or clearly erroneous factual findings, or . . . a clear error of judgment.”
`PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
`(Fed. Cir. 1988) (citations omitted).
`III. ANALYSIS
`Patent Owner requests that we rehear our Institution Decision and
`“deny institution as to the ’646 Patent.” Req. Reh’g. 8. In particular, Patent
`Owner argues that the Board’s construction of the claim term
`“conversational flow” created ambiguity “and has led to confusion about the
`meaning of” that term. Id. at 7–8. Patent Owner requests that the Board
`adopt Patent Owner’s construction of “conversational flow,” which Patent
`Owner argues “has been relied on by this Board, multiple district courts, and
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`the Federal Circuit.” Id. at 7. Patent Owner also requests that we reverse
`our Decision granting institution, which, Patent Owner argues, relies on a
`misunderstanding of the types of transmissions that may constitute a
`“conversational flow.” Id. at 6–8.
`A. “Conversational Flow”
`At the outset, we disagree with Patent Owner that we incorrectly
`construed “conversational flow.” In our Institution Decision, we
`acknowledged that, in prior inter partes review proceedings involving the
`’646 patent and related patents, the Board preliminarily construed
`“conversational flow” as
`the sequence of packets that are exchanged in any direction as a
`result of an activity (for instance, the running of an application
`on a server as requested by a client), where some conversational
`flows involve more than one connection, and some even involve
`more than one exchange of packets between a client and a server.
`Inst. Dec. 26–27 (citing, e.g., IPR2017-00450, Paper 8 at 9–10 (PTAB
`July 26, 2017) (Ex. 1056)). We also acknowledged that the district court in
`Packet Intelligence LLC v. NetScout Systems, Inc., No. 2:16-cv-230 (E.D.
`Tex.) and Packet Intelligence LLC v. Sandvine Corp., No. 2:16-cv-00147
`(E.D. Tex.) adopted the same construction with only non-substantive
`punctuation changes. Id. at 27.
`We nevertheless preliminarily construed “conversational flow” as a
`“sequence of packets that are exchanged in any direction as a result of an
`activity.” Inst. Dec. 29. We explained that we saw no “reason to include the
`additional phrases of the prior Board and district court constructions”—
`namely, the phrases “for instance, the running of an application on a server
`as requested by a client,” “where some conversational flows involve more
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`than one connection,” and “some even involve more than one exchange of
`packets between a client and a server.” Id. (emphases added).
`We maintain, at this stage of the proceeding, that the construction of
`conversational flow should not include “(for instance, the running of an
`application on a server as requested by a client), where some conversational
`flows involve more than one connection, and some even involve more than
`one exchange of packets between a client and a server.” As we explained in
`the Institution Decision, phrases beginning with “for instance,” “where
`some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 29.
`Patent Owner does not persuade us, on this record, that omission of these
`phrases from our definition of “conversational flow” is, as a matter of claim
`construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
`Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language
`“introduces an example of a broader genus rather than limiting the genus to
`the exemplary species”).
`Nor does Patent Owner persuade us that our preliminary construction
`is erroneous because other panels of “this Board, multiple district courts, and
`the Federal Circuit” have allegedly relied on the exemplary language in
`construing “conversational flow.” Req. Reh’g 7; see also id. at 1–3. We
`observe that neither the District Court nor the Court of Appeals for the
`Federal Circuit appears to have expressly analyzed “conversational flow” as
`necessarily including the “for instance,” “where some,” and “some” phrases.
`The District Court, for example, adopted Patent Owner’s construction
`without analysis after the parties “reached agreement” at a hearing dated
`March 2, 2017, but that hearing does not appear to be of record in these
`proceedings. See id. at 2 (citing Ex. 1067, 6). And the Federal Circuit, if
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`anything, appears to have relied on a definition of “conversational flow”
`lacking the additional phrases Patent Owner advances here. See id. (citing
`Ex. 2060, 3). Specifically, in describing “conversational flows,” the court
`stated that:
`The specifications explain that it is more useful to identify and
`classify “conversational flows,” defined as “the sequence of
`packets that are exchanged in any direction as a result of an
`activity.”
`Ex. 2060, 3 (citing Ex. 1001, 2:45–47) (emphasis added). We also observe
`that the Board’s previous constructions of “conversational flow” were, like
`here, merely preliminary. See, e.g., IPR2017-00450, Paper 8 at 10
`(interpreting “conversational flow” “for purposes of this Decision”). Patent
`Owner does not point us to any analysis where the prior panels relied on the
`exemplary language to, for example, deny institution in any proceeding. See
`generally Reh’g Req. For these reasons, the mere fact that other panels or
`tribunals have adopted certain claim constructions does not, without more,
`persuade us that a mistake in claim construction has occurred here.
`B. Alleged Ambiguity
`We also disagree with Patent Owner that our construction of
`“conversational flow” introduced ambiguity into this proceeding. In this
`regard, Patent Owner argues that our “more concise construction” fails to
`take into account who is involved in the conversation and, thus, “ignore[s]
`the ‘conversational’ portion of ‘conversational flow.’” Reh’g Req. 4. Patent
`Owner argues that the prior art Riddle “treats packets corresponding to the
`same type of activity identically regardless of whether it is part of a
`‘conversational flow.’” Id. (emphases omitted). Patent Owner argues that
`“conversational flow must be examined in the context of the client or clients
`participating in the conversation.” Id. at 5. The Board’s abbreviated
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`construction, Patent Owner argues, “ignores this concept” and
`“unintentionally expands the meaning of conversational flow . . . to instead
`correspond to any activity, regardless of the participants involved in a
`particular conversation.” Id.
`At bottom, we understand Patent Owner’s argument to be that the
`Board’s construction improperly expands a “conversational flow” to
`encompass a multitude of activities between unrelated parties. See Reh’g
`Req. 5–7. But even if we included the exemplary language in the
`construction of “conversational flows,” that language would not limit the
`number of activities nor the parties involved in that conversation. Put
`differently, because the language is exemplary, none of the phrases (“for
`instance, the running of an application on a server as requested by a client,”
`“where some conversational flows involve more than one connection,” and
`“some even involve more than one exchange of packets between a client and
`a server”) appear—at least on this record—to exclude multiple activities and
`multiple parties.
`Thus, we do not agree with Patent Owner, at this stage of the
`proceeding, that our construction of “conversational flow” is the result of a
`misunderstanding or misapprehension of the claimed invention or the prior
`art. The parties are encouraged to fully brief this issue during trial, keeping
`in mind the appropriate burdens, and setting forth the most applicable claim-
`construction canons and case law.
`IV. CONCLUSION
`On this record, Patent Owner neither persuades us that we overlooked
`or misapprehended any matter, nor sufficiently shows that instituting an
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`inter partes review of claims 1–3, 7, 16, and 18 of the ’646 patent was an
`abuse of discretion.
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`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Request for Rehearing is denied.
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`IPR2020-00337
`Patent 6,771,646 B1
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`FOR PETITIONER:
`
`Joseph F. Edell
`Adam A. Allgood
`FISCH SIGLER LLP
`joe.edell.ipr@fischllp.com
`adam.allgood@fischllp.com
`
`Scott A. McKeown
`Mark D. Rowland
`James R. Batchelder
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`mark.rowland@ropesgray.com
`james.batchelder@ropesgray.com
`
`
`FOR PATENT OWNER:
`
`R. Allan Bullwinkel
`Michael F. Heim
`HEIM PAYNE & CHORUSH, LLP
`abullwinkel@hpcllp.com
`mheim@hpcllp.com
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