Packet Intelligence LLC

Patent Trials and Appeals Board

Dec 8, 2020

IPR2020-00339 (P.T.A.B. Dec. 8, 2020)

Trials@uspto.gov Paper 27
571-272-7822 Date: December 8, 2020

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.

IPR2020-00339
IPR2020-00486
Patent 6,954,789 B2

Before CHARLES J. BOUDREAU, JOHN D. HAMANN, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
SAWERT, Administrative Patent Judge.
DECISION
Denying Patent Owner’s Requests1 for Rehearing
35 C.F.R. § 42.71(d)

1 We exercise our discretion to issue a single Decision to be entered in
each case using a joint caption. For efficiency, we cite to the papers filed in
IPR2020-00339 unless otherwise indicated. The parties are not permitted to
use this caption.
IPR2020-00339
IPR2020-00486
Patent 6,954,789 B2

2
I. INTRODUCTION
In IPR2020-00339, Packet Intelligence LLC (“Patent Owner”) filed a
Request for Rehearing (Paper 25, “Req. Reh’g”) of our Decision granting
institution of inter partes review (Paper 21, “Institution Decision” or “Inst.
Dec.”) of claims 1, 2, 13–17, 19, 20, 42, 44, 48, and 49 of U.S. Patent
No. 6,954,789 B2 (“the ’789 patent”). In IPR2020-00486, Patent Owner
filed a Request for Rehearing (Paper 24) of our Decision granting institution
of inter partes review (Paper 20) of claims 31, 33, and 34 of the ’789 patent.
For the following reasons, Patent Owner’s Requests for Rehearing are
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 ’789 [p]atent.” 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
IPR2020-00339
IPR2020-00486
Patent 6,954,789 B2

3
meaning of” that term. Id. at 7. 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 the
Federal Circuit.” Id. 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
’789 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. 28 (citing, e.g., IPR2017-00629, Paper 8 at 7–9 (PTAB July 26,
2017) (Ex. 1058)). We also acknowledged that the district court in Packet
Intelligence LLC v. NetScout Sys., 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.
We nevertheless preliminary construed “conversational flow” as a
“sequence of packets that are exchanged in any direction as a result of an
activity.” Id. at 30. We explained that we saw no “reason to include the
IPR2020-00339
IPR2020-00486
Patent 6,954,789 B2

4
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
than one connection,” and “some even involve more than one exchange of
packets between a client and a server.” Id. at 30 (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.” Id. 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
IPR2020-00339
IPR2020-00486
Patent 6,954,789 B2

5
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
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., IPR2017-00629, Paper 8 at 9
(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
IPR2020-00339
IPR2020-00486
Patent 6,954,789 B2

6
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
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.
IPR2020-00339
IPR2020-00486
Patent 6,954,789 B2

7
IV. CONCLUSION
On this record, Patent Owner neither persuades us that we overlooked
or misapprehended any matter, nor sufficiently shows that instituting an
inter partes review of claims 1, 2, 13–17, 19, 20, 42, 44, 48, and 49 of the
’789 patent in IPR2020-00339 and an inter partes review of claims 31, 33,
and 34 of the ’789 patent in IPR2020-00486 was an abuse of discretion.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Requests for Rehearing are denied.
IPR2020-00339
IPR2020-00486
Patent 6,954,789 B2

8
FOR PETITIONER:
Joseph F. Edell
Adam A. Allgood
FISCH SIGLER LLP
joe.edell.ipr@fischllp.com
adam.allgood@fischllp.com

Scott McKeown
James Batchelder
Mark Rowland
ROPES & GRAY LLP
Scott.mckeown@ropesgray.com
James.batchelder@ropesgray.com
Mark.rowland@ropesgray.com

FOR PATENT OWNER:
R. Allan Bullwinkel
Michael F. Heim
HEIM PAYNE & CHORUSH, LLP
abullwinkel@hpcllp.com
mheim@hpcllp.com