IPR2020-00337 (P.T.A.B. Dec. 21, 2020)

Packet Intelligence LLC

Patent Trials and Appeals BoardDec 21, 2020

IPR2020-00337 (P.T.A.B. Dec. 21, 2020)

Trials@uspto.gov Paper 27 571-272-7822 Entered: December 21, 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. IPR2020-00337 Patent 6,771,646 B1 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) IPR2020-00337 Patent 6,771,646 B1 2 I. INTRODUCTION 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 IPR2020-00337 Patent 6,771,646 B1 3 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 IPR2020-00337 Patent 6,771,646 B1 4 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 IPR2020-00337 Patent 6,771,646 B1 5 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 IPR2020-00337 Patent 6,771,646 B1 6 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 IPR2020-00337 Patent 6,771,646 B1 7 inter partes review of claims 1–3, 7, 16, and 18 of the ’646 patent was an abuse of discretion. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is denied. IPR2020-00337 Patent 6,771,646 B1 8 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