Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 46
`Entered: January 9, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CLOUDFLARE, INC. and
`SPLUNK INC.
`Petitioner,
`v.
`SABLE NETWORKS, INC.,
`Patent Owner.
`____________
`
`IPR2021-009091
`Patent 8,243,593 B2
`____________
`
`
`Before KRISTEN L. DROESCH, STACEY G. WHITE, and
`GARTH D. BAER, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`1 Splunk, Inc., which filed a petition in IPR2022-00228, has been joined as
`a petitioner in this proceeding.
`
`
`571-272-7822
`
`
`
`
`
`Paper 46
`Entered: January 9, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CLOUDFLARE, INC. and
`SPLUNK INC.
`Petitioner,
`v.
`SABLE NETWORKS, INC.,
`Patent Owner.
`____________
`
`IPR2021-009091
`Patent 8,243,593 B2
`____________
`
`
`Before KRISTEN L. DROESCH, STACEY G. WHITE, and
`GARTH D. BAER, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`1 Splunk, Inc., which filed a petition in IPR2022-00228, has been joined as
`a petitioner in this proceeding.
`
`
`
`IPR2021-00909
`Patent 8,243,593 B2
`
`
`I.
`
`INTRODUCTION
`
`Cloudflare, Inc. and Splunk Inc. (“Petitioner”) filed a Request for
`Rehearing (Paper 44, “Request” or “Req. Reh’g”) of our Final Written
`Decision (Paper 42, “Final Decision” or “Dec.”) in which we determined
`that Petitioner did not demonstrate2 that claims 17, 18, 37, and 38 of U.S.
`Patent No. 8,243,593 B2 (Ex. 1001, “the ’593 patent”) are unpatentable. For
`the reasons explained below, we deny Petitioner’s Request for Rehearing.
`
`II. DISCUSSION
`
`On request for rehearing, “[t]he burden of showing a decision should
`be modified lies with the party challenging the decision.” 37 C.F.R.
`§ 42.71(d). “The request must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, reply, or a sur-
`reply.” Id. We have reviewed Petitioner’s Request and carefully considered
`all of the arguments presented. We are not persuaded that we
`misapprehended or overlooked any arguments or evidence, and thus, we
`decline to modify the Decision.
`In the Decision on Institution, we stated that the Petition alleged that
`dependent claims 17, 18, 37, and 38 would have been obvious over the Yung
`reference alone. Paper 16 (“Inst. Dec.”), 38 (citing Paper 1 (“Petition” or
`“Pet.”) 1 (table of grounds), 42–43 (addressing these dependent claims). We
`noted that claims 17 and 18 depend indirectly from independent claim 9 and
`
`2 We also determined that Petitioner had demonstrated that claims 3, 9–13,
`19–24, 29–33, and 39–44 of the ’593 were unpatentable, but that portion of
`the Final Decision is not at issue here. See Dec. 47.
`
` 2
`
`
`
`
`
`IPR2021-00909
`Patent 8,243,593 B2
`
`claims 37 and 38 depend indirectly from independent claim 29. Id. (citing
`Ex. 1001, 12:9–16, 12:29–30, 12:33, 13:45–52, 14:9–10, 14:14). Thus, each
`of these dependent claims includes the requirements of the respective
`independent claims, including limitations requiring “computing . . . a
`badness factor for the flow.” Dec. 32 (citing Ex. 1001, 12:5–6, 13:41–42).
`Claims 9 and 29 were alleged and found to be unpatentable over the
`teachings of Yung and Copeland and the “computing . . . a badness factor”
`recited in claims 9 and 29 was alleged to have been taught by Copeland. See
`Inst. Dec. 38; see also Dec. 18–32. In the Institution Decision, we raised the
`possibility that “the inclusion of claims 17, 18, 37, and 38 in the Yung-only
`ground may be a typographical error.” Inst. Dec. 39. We then invited the
`parties to address whether we should consider whether claims 17, 18, 37,
`and 38 would have been obvious over Yung and Copeland. Id.
`The parties accepted our invitation and briefed the question as to
`whether these dependent claims should be considered against the teachings
`of Yung and Copeland. See Paper 30 (“PO Resp.”), 13–16; Paper 33
`(“Reply”), 26–29; Paper 36 (“PO Sur-Reply”), 3–15. In addition, this issue
`was discussed at the oral hearing. Paper 41, 21:17–24:7; 25:1–41:12. In the
`Final Written Decision, we addressed this issue and “decline[d] to evaluate a
`combination of references that was not advanced in the Petition, and so we
`decline[d] to consider whether claims 17, 18, 37, and 38 would have been
`obvious over Yung and Copeland.” Dec. 38.
`On Rehearing, Petitioner asserts that we erred in refusing to consider
`whether claims 17, 18, 37, and 38 would have been obvious over Yung and
`Copeland due to our alleged misapprehension of two Federal Circuit
`decisions: Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330 (Fed. Cir.
`
` 3
`
`
`
`
`
`IPR2021-00909
`Patent 8,243,593 B2
`
`2020) and Apple Inc. v. MPH Technologies Oy, 2022 WL 4103286 (Fed.
`Cir. Sept. 8, 2022) (non-precedential). Req. Reh’g 2. Petitioner asserts that
`[i]n both Federal Circuit decisions, the Board was asked to
`modify or create a new ground of unpatentability rather than
`applying the grounds as expressly recited. In contrast here, the
`Board is asked to correct a typographical error that was first
`raised in the institution decision and immediately
`acknowledged as such by Petitioners at the outset of the trial
`phase.
`Id. at 2. We disagree with Petitioner’s assertion of a typographical error.
`
`In its Reply, Petitioner asserted that it had “inadvertently included the
`arguments addressing dependent claims 17, 18, 37, and 38 under Ground 1
`(Yung alone) rather than Ground 2 (Yung and Copeland).” Reply 26.
`Petitioner maintains that assertion in its Rehearing Request, stating that we
`need only “resolve an obvious and admitted typographical error that placed
`two paragraphs in the wrong section of the petition.” Req. Reh’g 4. In the
`Final Written Decision, however, we determined that
`[t]he Petition consistently contends that claims 17, 18, 37, and
`38 would have been obvious in light of Yung alone. The
`summary table includes these claims in the Yung-only ground
`(Pet. 1); the organizational structure includes these claims in
`that ground (id. at ii–iii); and the substantive discussion of the
`claims refers to Yung and to other claims included in the Yung-
`only ground (id. at 42–43 (citing id. at 41–42)). Petitioner fails
`to identify (and we do not perceive) any portion of the Petition
`that can be read as affirmatively stating that these claims would
`have been obvious in light of Yung and Copeland. See Pet.;
`Pet. Reply 26–29. Consequently, we do not agree with
`Petitioner’s contention that the omission of Copeland was a
`“typographical error.” Pet. Reply 26–27. The problem is not
`an isolated typographical error (or two), but rather one that
`pervades the Petition.
`
` 4
`
`
`
`
`
`IPR2021-00909
`Patent 8,243,593 B2
`
`Dec. 35–36. As such, we were not persuaded that the Petition contained a
`typographical error. We determined that the Petition repeatedly and
`expressly challenged claims 17, 18, 37, and 38 over Yung alone. Nothing in
`Petitioner’s Request for Rehearing persuades us that that determination was
`in error.
`
`In addition, we are not persuaded by Petitioner’s arguments on
`rehearing regarding the cited case law. The Apple case is particularly
`instructive. In Apple, the petitioner asserted that claim 5 was unpatentable
`over Ishiyama, Murakawa, and Ahonen. Apple, 2022 WL 4103286, at *3
`(emphasis added). Claims 6 and 7 depend from claim 5 and were alleged to
`have been obvious over Ishiyama and Murakawa. Id. The Federal Circuit
`held that the Board “properly declined to consider Ahonen” in its evaluation
`of claims 6 and 7, explaining that “[t]he Board did not err by declining to
`consider arguments that [the petitioner] did not make.” Id. at *7.
`On Rehearing, Petitioner asserts that the instant case is distinguishable
`because “[t]he parties in . . . Apple never did what Petitioner[] did in this
`case, i.e., request resolution of an obvious typographical error in a manner
`that makes sense as a matter of logic and patent law based on the contentions
`recited in the petition itself.” Req. Reh’g 5. According to Petitioner,
`“[l]ogic dictates that because claim 17 includes every limitation of claim 12,
`then the portion of the petition showing how the prior art discloses claim 12
`must also apply to claim 17.” Id. at 6. Petitioner further argues that because
`claim 17 “begins by reciting ‘[t]he method of claim 12 . . . ,’” we should
`interpret that as “explicitly referring to the petition’s argument addressing
`claim 12.” Id. This argument fails because every dependent claim includes
`a reference to the claim it depends from, and by Petitioner’s logic we should
`
` 5
`
`
`
`
`
`IPR2021-00909
`Patent 8,243,593 B2
`
`always include allegations made against a base claim in the patentability
`analysis of a dependent claim. In Apple, however, the Federal Circuit
`refused to follow similar logic noting that “Apple only raised Ahonen in
`Ground 2, which challenged claims 3 and 5 of the ’581 patent. Even though
`claims 6–8 depend from claim 5, Apple did not include Ahonen in Grounds
`1 and 3 challenging those claims, nor did it address or reference Ahonen in
`its substantive analysis.” Apple, 2022 WL 4103286, at *7 (internal citations
`omitted). Here, we were similarly faced with a Petition that did not include
`Copeland in the ground challenging claims 17, 18, 37, and 38, nor did it
`address or reference Copeland in its substantive analysis of those dependent
`claims. In both Apple and the instant case, the pieces were there to make an
`argument, but Petitioner failed to put those pieces together. Petitioner’s
`arguments on rehearing do not convince us of error in our decision to not put
`the pieces together on Petitioner’s behalf. As such, we are not persuaded of
`error in our determinations.
`
`
`III. CONCLUSION
`
`We have reviewed and considered the arguments in Petitioner’s
`Rehearing Request and conclude that Petitioner has not carried its burden of
`demonstrating that the Board misapprehended or overlooked any matters in
`rendering the Final Written Decision. 37 C.F.R. § 42.71(d). Thus,
`Petitioner’s challenge does not meet the standard set forth for a request for
`rehearing.
`The Request for Rehearing is denied.
`
`
`
` 6
`
`
`
`
`
`IPR2021-00909
`Patent 8,243,593 B2
`
`
`9–13, 19–24,
`29–33, 39–44
`
`3
`
`103(a)
`
`3
`
`In summary:
`Outcome of Decision on Rehearing:
`References
`Claims Shown
`Claim(s) 35
`U.S.C. §
`/ Basis
`Unpatentable
`17, 18,
`103(a) Yung
`
`37, 38
`9–13, 19–
`103(a) Yung,
`24, 29–
`Copeland
`33, 39–44
`Yung,
`Four-Steps
`Whitepaper
`
`
`3, 9–13, 19–24,
`29–33, 39–44
`
`Claims Not Shown
`Unpatentable
`17, 18, 37, 38
`
`
`
`
`
`17, 18, 37, 38
`
`Overall
`Outcome
`
`Final Outcome of Final Written Decision after Rehearing
`References
`Claims Shown
`Claims Not Shown
`Claim(s) 35
`U.S.C. §
`/ Basis
`Unpatentable
`Unpatentable
`17, 18,
`103(a) Yung
`
`17, 18, 37, 38
`37, 38
`9–13, 19–
`103(a) Yung,
`24, 29–
`Copeland
`33, 39–44
`Yung,
`Four-Steps
`Whitepaper
`
`
`9–13, 19–24,
`29–33, 39–44
`
`3
`
`103(a)
`
`3
`
`
`
`
`
`3, 9–13, 19–24,
`29–33, 39–44
`
`17, 18, 37, 38
`
` 7
`
`
`
`Overall
`Outcome
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-00909
`Patent 8,243,593 B2
`
`For PETITIONER:
`James L. Day
`Daniel Callaway
`Winston Liaw
`FARELL BRAUM + MARTEL LLP
`jday@fbm.com
`dcallaway@fbm.com
`wliaw@fbm.com
`
`David C. Dotson
`DUANE MORRIS LLP
`dcdotson@duanemorris.com
`
`Alex S. Yap
`Mehran Arjomand
`Rose S. Lee
`MORRISON & FOERSTER LLP
`ayap@mofo.com
`marjomand@mofo.com
`roselee@mofo.com
`
`
`For PATENT OWNER:
`Kenneth J. Weatherwax
`Parham Hendifar
`Patrick Maloney
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`endifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`
` 8
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
