Ex Parte 7716370 et alDownload PDFPatent Trial and Appeal BoardSep 4, 201495001805 (P.T.A.B. Sep. 4, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,805 11/04/2011 7716370 11517.0021-00000 3722 87916 7590 09/05/2014 2nd Reexam Group - Novak Druce + Quigg LLP 1000 Louisiana Street Fifty-Third Floor Houston, TX 77002 EXAMINER WOOD, WILLIAM H ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/05/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ______________ BROCADE COMMUNICATIONS SYSTEMS, INC., Appellant and Patent Owner v. A10 NETWORKS, INC., Requester ______________ Appeal 2014-006002 1 Reexamination Control No. 95/001,805 United States Patent US 7,716,370 B1 2 Technology Center 3900 ______________ Before JOHN C. MARTIN, JAMES T. MOORE, and STANLEY M. WEINBERG, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 This is a Decision on Appeal in four related reexamination appeals, in which all of the Decisions on Appeal are being mailed concurrently. The other three appeals are 2013-010933, 2014-001671, and 2014-002493. The decision in Appeal 2014-001671 is the principal decision. 2 This patent (hereinafter “’370 patentâ€) issued on May 11, 2010, based on Application 11/657,981, which was filed on January 24, 2007, as a divisional of Application 10/273,657, filed on October 18, 2002 (now patent (Continued on next page.) Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 2 Brocade Communications Systems, Inc. (hereinafter “Appellantâ€) appeals the Examiner’s rejection of original claims 1-32. Appeal Br. 11-12. 3 Requester A10 Networks, Inc., (hereinafter “A10 Networksâ€) withdrew from further participation in this proceeding on June 13, 2013, and did not file a respondent brief. 4 Appellant filed a rebuttal brief 5 in response to the Examiner’s Answer, which was mailed on February 7, 2014. We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315. We AFFIRM-IN-PART. I. STATEMENT OF THE CASE A. Related Reexamination Proceedings and Litigation This inter partes reexamination proceeding is one of four related reexamination proceedings that are the subjects of the PTAB appeals identified in the following table and referred to hereinafter as the ’671 Ex 7,647,427 B1, hereinafter “’427 patentâ€). 3 Patent Owner’s Appeal Brief Pursuant to 37 C.F.R. § 41.67, filed on July 9, 2013. 4 The Notice of Withdrawal of Third Party Requester A10 Networks, Inc., filed on June 13, 2013, states (at page 1): “Third Party Requester, A10 Networks, Inc. (‘A10’), has entered into a settlement agreement with the Patent Owner, Brocade Communications Systems, Inc., and as such is withdrawing from this proceeding. A10 will make no further comment or otherwise participate in the proceeding and further withdraws any pending petition and/or opposition A10 filed.†5 Patent Owner’s Rebuttal Brief Pursuant to 37 C.F.R. § 41.71, filed on March 7, 2014. Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 3 Parte Appeal, ’493 Inter Partes Appeal, ’933 Ex Parte Appeal, and ’002 Inter Partes Appeal: Patent No. 7,647,427 B1 (parent) 7,716,370 B1 (divisional) Ex parte reexamination No. Appeal No. 90/011,775 2014-001671 90/011,773 2013-010933 Inter partes reexamination No. Appeal No. 95/001,803 2014-002493 95/001,805 2014-006002 The related litigation and Appellant’s unsuccessful petitions to terminate the inter partes reexamination proceedings based on a final decision in that litigation are also described in section I.A (at pages 2-5) of the Decision on Appeal in the ’671 Ex Parte Appeal (hereinafter “’671 Ex Parte Appeal Decisionâ€). As also explained therein, we are addressing the principal issues in the four appeals as follows in only the following two decisions (both involving the ’427 patent): 1. The ’671 Ex Parte Appeal Decision: (a) Whether Biswas 6 and Zwieback 7 have been antedated by the evidence submitted under 37 C.F.R. § 1.131. 6 Biswas, et al., US 7,227,872 B1, issued on June 5, 2007, based on Application 10/235,523, filed on September 4, 2002, as a divisional of Application 10/187,168, filed on June 28, 2002. 7 Dave Zwieback, high availability firewall/VPN with VRRP, 8 ;login: The Magazine of Usenix & Sage 41-46 (Dec. 2001). Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 4 (b) The rejection of independent claims 1 and 8 for anticipation by Biswas. 2. The ’493 Inter Partes Appeal Decision: (a) The rejection of dependent claims 9 and 10 for obviousness over Biswas in view of Nair. 8 (b) The rejection of independent claims 1 and 8 for anticipation by Hunt. 9 (c) The rejection of dependent claims 4-6, 9, and 10 for obviousness over Hunt as in view of Nair. The ’671 Ex Parte Appeal Decision, ’493 Inter Partes Appeal decision, and ’933 Ex Parte Appeal Decision hereby are incorporated by reference in this Decision on Appeal. Oral argument by Appellant was heard in this inter partes appeal and the ’493 Inter Partes Appeal on June 18, 2014. 10 B. The Claims on Appeal 8 Nair, et al., US 6,337,863 B1, issued on January 8, 2002. 9 Guerney D.H. Hunt, et al., Network Dispatcher: a connection router for scalable Internet services, 30 Computer Networks and ISDN Systems 347- 57 (1998). 10 Record of Oral Hearing, Appeal Nos. 2014-002493 and 2014-006002, heard June 18, 2014. Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 5 Claim 1, which is representative of independent claims 1, 10, 18, and 27, reads as follows: 1. A method in a first network device, the method comprising: associating to said first network device a base address corresponding to a first pool of first addresses that are not owned by said first network device; while said first network device does not said own said first pool of first addresses, performing network address translation (NAT), by said first network device, for a second pool of second addresses; detecting, by said first network device, a failure of a second network device; and asserting ownership, by said first network device, of a plurality of said first addresses of said first pool corresponding to said base address, in response to detection by said first network device of said failure. ’370 patent col. 9. 11 Appellant’s arguments for the patentability of claim 1 over Hunt are based on the first and second paragraphs of claim 1, which are similar to second and third paragraphs, respectively, of claim 1 of the ’427 patent. These paragraphs of the ’427 patent read as follows: 11 The claims as reproduced in the Claim Appendix (Appeal Br. 39-45) lack the paragraph structure employed in the patent claims. Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 6 share, by said back-up device with a master device, a base address corresponding to a first pool of first addresses that are owned by said master device; perform network address translation (NAT) and routing, by said back-up device, for a second pool of second addresses while said master device is active; ’427 patent col. 9. D. The Rejections To Be Reviewed in This Appeal 1. Rejections Under 35 U.S.C. § 102 (RAN pages 4-5) Prior Art Statutory Basis Claims Rejected RAN Pages Hunt § 102(b) 1-3, 7-12, 16-21, 25-27, and 30- 32 4, Ground IX.A Biswas § 102(e) 2, 7-9, 11, 16, 17, 19, 20, 25, 26, 30, and 31 5, Ground IX.E 2. Rejections Under 35 U.S.C. § 103(a) (RAN pages 4-6) Prior Art Claims Rejected RAN Pages Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 7 Hunt in view of Nair 4-6, 13-15, 22-24, 28, and 29 4, Ground IX.B Hunt in view of Zwieback 27 and 30-32 4, Ground IX.C Hunt in view of Zwieback and Nair 28 and 29 5, Ground IX.D Biswas in view of Nair 4-6, 13-15, 22-24, 28, and 29 5, Ground IX.F Biswas in view of Hunt 3, 12, and 21 5-6, Ground IX.G Biswas in view of Zwieback 27 and 30-32 12 6, Ground IX.H Biswas in view of Zwieback and Nair 28 and 29 6, Ground IX.I II. DISCUSSION A. Neither of Biswas And Zwieback Has Been Antedated (Appeal Br. 11-19 secs. VII.C, VII.E, and VII.F) For the reasons given in section II.A (at pages 19-46) of the ’671 Ex Parte Decision, the evidence submitted under 37 C.F.R. § 1.131 is insufficient to antedate either of Biswas and Zwieback. B. Anticipation by Biswas (Claims 2, 7-9, 11, 16, 17, 19, 20, 25, 26, 30, and 31) (Appeal Br. 30-32 sec. VII.K) 12 We have sustained a rejection of claims 27 and 32 on this ground in ex parte reexamination proceeding 90/011,773. ’933 Ex Parte Appeal Decision sec. II.C (at 8). Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 8 Appellant’s arguments (Appeal Br. 30-32; Reb. Br. 15-16) against anticipation of dependent claims 2, 7-9, 11, 16, 17, 19, 20, 25, 26, 30, and 31 by Biswas are the same as the arguments made against anticipation by Biswas of independent claims 1, 10, 18, and 27 in the ’933 Ex Parte Appeal (at Appeal Br. 18-22; Reply Br. 7-9). The rejection of the claims 2, 7-9, 11, 16, 17, 19, 20, 25, 26, 30, and 31 for anticipation by Biswas therefore is sustained for the same reasons that we have sustained the rejection of the independent claims on this ground at section II.B, pages 45-55 of the ’933 Ex Parte Appeal Decision. C. Obviousness over Biswas in View of Nair (Claims 4-6, 13-15, 22-24, 28, and 29) (Appeal Br. 33-36 sec. VII.M) Claims 4 and 5, reproduced below, are representative of rejected claims 4-6, 13-15, 22-24, 28, and 29, which recite receiving “heartbeat messages†(claim 4) or “session synchronization information†(claim 5) “on a separate virtual local area network (VLAN) connection different from a VLAN connection used to carry trafficâ€: 4. The method of claim 1, further comprising: receiving, by said first network device from said second network device, heartbeat messages while said first network device does not said own said first pool of first addresses, said heartbeat messages being received by said first network device on a separate virtual local area network (VLAN) connection Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 9 different from a VLAN connection used to carry traffic. 5. The method of claim 1, further comprising: receiving, by said first network device from said second network device, session synchronization information while said first network device does not said own said first pool of first addresses, said session synchronization information being received by said first network device on a separate virtual local area network (VLAN) connection different from a VLAN connection used to carry traffic. ’370 patent col. 9 (emphasis added). Claims 4 and 5 thus are similar to ’427 patent claims 9 and 10, respectively, rejected in the ’493 Inter Partes Appeal for obviousness over Biswas in view of Nair (and also for obviousness over Hunt in view of Nair). For reasons like those given in section II.C (at pages 9-17) of the ‘493 Inter Partes Appeal Decision, we do not sustain the rejection of any of claims 4-6, 13- 15, 22-24, 28, and 29 for obviousness over Biswas in view of Nair. D. Obviousness over Biswas in View of Zwieback (Claims 27 and 30-32) (Appeal Br. 36-37 sec. VII.N) The rejection of claims 27 and 32 on this ground, which also was made in ex parte proceeding 90/011,773 (the subject of the ’933 Ex Parte Appeal), is sustained for the reasons given in section II.C (at page 8) of the Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 10 ’933 Ex Parte Appeal Decision (i.e., for anticipation of these claims by Biswas). Inasmuch as Appellant does not argue the rejection of either of claims 30 and 31 separately from parent independent claim 27, we also sustain this rejection of claims 30 and 31. E. Obviousness over Biswas in View of Zwieback and Nair (Claims 28 and 29) (Appeal Br. 36-37 sec. VII.N) The subject matter relied on in Zwieback by the Examiner does not cure the above-noted deficiency in the rejection for obviousness based on Biswas in view of Nair. The rejection of claims 28 and 29 for obviousness over Biswas in view of Zwieback and Nair is not sustained. F. Anticipation by Hunt (Claims 1-3, 7-12, 16-21, 25-27, and 30-32) (Appeal Br. 21-26 sec. VII.H) Appellant when addressing this ground of rejection argues independent claims 1, 10, 18, and 27 together as a group. Appeal Br. 21-26. We elect to limit our analysis of the independent claims to claim 1 pursuant to 37 C.F.R. § 41.67(c)(1)(vii). Furthermore, Appellant treats the rejected dependent claims as standing or falling with the independent claims. Appeal Br. 26. Appellant’s arguments against anticipation by Hunt in this inter partes proceeding are the same as the arguments against anticipation by Hunt of Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 11 similar claim limitations in inter partes proceeding 95/001,803 (the subject of the ’493 Inter Partes Appeal). We accordingly sustain the rejection of claims 1-3, 7-12, 16-21, 25-27, and 30-32 for anticipation by Hunt in this proceeding for the reasons given in section II.F (at pages 18-31) of the ’493 Inter Partes Appeal Decision. G. Obviousness over Hunt in View of Nair (Claims 4-6, 13-15, 22-24, 28, and 29) (Appeal Br. 26-29 sec. VII.I) For reasons like those given above for not sustaining the rejection of claims 4-6, 13-15, 22-24, 28, and 29 for obviousness over Biswas in view of Nair, we also do not sustain the rejection of these claims for obviousness over Hunt in view of Nair. H. Obviousness over Hunt in View of Zwieback (Claims 27 and 30-32) (Appeal Br. 30 sec. VII.J) The rejection of claims 27 and 30-32 for obviousness over Hunt in view of Zwieback is sustained because we have sustained the rejection of these claims for anticipation by Hunt (supra, sec. II.F, at 10). Anticipation is the epitome of obviousness. In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002). Zwieback is therefore cumulative to Hunt in this ground of rejection. Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 12 I. Obviousness over Hunt in View of Zwieback and Nair (Claims 28 and 29) (Appeal Br. 30 sec. VII.J) For reasons like those given above for not sustaining the rejection of claims 4-6, 13-15, 22-24, 28, and 29 for obviousness over Biswas in view of Zwieback and Nair, we also do not sustain the rejection of 28 and 29 for obviousness over Hunt in view of Zwieback and Nair. J. Obviousness over Biswas in View of Hunt (Claims 3, 12, and 21) (Appeal Br. 32-33 sec. VII.L) Appellant in arguing against this rejection of dependent claims 3, 12, and 21 (Appeal Br. 32-33, section VII.L) merely cites Appeal Brief sections VII.H and VII.K (at 21-26, 30-32), which respectively address the rejection of claims 1-3, 7-12, 16-21, 25-27, 30, and 30-32 for anticipation by Hunt and the rejection of claims 2, 7-9, 11, 16, 17, 19, 20, 25, 26, 30, and 31 for anticipation by Biswas. The rejection of claims 3, 12, and 31 for obviousness Biswas in view of Hunt is sustained because we have sustained the anticipation rejection of these claims based on Hunt. Anticipation is the epitome of obviousness. III. SUMMARY A. Sustained Rejections Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 13 1. Claims 2, 7-9, 11, 16, 17, 19, 20, 25, 26, 30, and 31 under 35 U.S.C. § 102(e) for anticipation by Biswas. 2. Claims 1-3, 7-12, 16-21, 25-27, and 30-32 under 35 U.S.C. § 102(b) for anticipation by Hunt. 3. Claims 3, 12, and 21 under 35 U.S.C. § 103(a) for obviousness over Biswas in view of Hunt. 4. Claims 27 and 30-32 for under 35 U.S.C. § 103(a) for obviousness over Biswas in view of Zwieback. 5. Claims 27 and 30-32 for under 35 U.S.C. § 103(a) for obviousness over Hunt in view of Zwieback. B. Rejections Not Sustained 1. Claims 4-6, 13-15, 22-24, 28, and 29 under 35 U.S.C. § 103(a) for obviousness over Biswas in view of Nair. 2. Claims 4-6, 13-15, 22-24, 28, and 29 under 35 U.S.C. § 103(a) for obviousness over Hunt in view of Nair. 3. Claims 28 and 29 under 35 U.S.C. § 103(a) for obviousness over Biswas in view of Zwieback and Nair. 4. Claims 28 and 29 under 35 U.S.C. § 103(a) for obviousness over Hunt in view of Zwieback and Nair. IV. DECISION Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 14 The Examiner’s decision that claims 1-32 are unpatentable over the prior art therefore is affirmed-in-part (i.e., affirmed with respect to claims 1- 3, 7-12, 16-21, 25-27, and 30-32 and reversed with respect to claims 4-6, 13- 15, 22-24, 28, and 29. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79 and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED-IN-PART Appeal 2014-006002 Reexamination Control 95/001,805 Patent US 7,716,370 B1 15 ack For Appellant/Patent Owner: 2nd Reexam Group - Novak Druce + Quigg LLP 1000 Louisiana Street Fifty-Third Floor Houston TX 77002 For Third Party Requester: Finnegan Henderson Farabow Garrett & Dunner LLP 901 New York Avenue, N.W. Washington, DC 20001-4413 Copy with citationCopy as parenthetical citation