Packet Intelligence LLC

Patent Trials and Appeals Board

Jan 12, 2021

IPR2020-00485 (P.T.A.B. Jan. 12, 2021)

Trials@uspto.gov Paper 22
571-272-7822 Date: January 12, 2021

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.

IPR2020-00335
IPR2020-00485
Patent 6,651,099 B1

Before STACEY G. WHITE, CHARLES J. BOUDREAU, and
JOHN D. HAMANN, Administrative Patent Judges.

HAMANN, Administrative Patent Judge.
DECISION
Denying Petitioner’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 in light of Petitioner’s Requests for Rehearing in
both cases presenting the same substantive arguments. For efficiency, we
cite to the papers filed in IPR2020-00335 unless otherwise indicated. The
parties are not permitted to use this caption.
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INTRODUCTION
In IPR2020-00335, Juniper Networks, Inc. and Palo Alto Networks,
Inc. (collectively “Petitioner”) filed a Request for Rehearing (Paper 21,
“Req. Reh’g”) of our Decision denying institution of inter partes review
(Paper 19, “Dec. on Inst.”) of claims 1 and 2 of U.S. Patent
No. 6,651,099 B2 (“the ’099 patent”). In IPR2020-00485, Petitioner filed a
Request for Rehearing (Paper 21) of our Decision denying institution of
inter partes review (Paper 19) of claims 4 and 5 of the ’099 patent. For the
following reasons, Petitioner’s Requests for Rehearing are denied.
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).
ANALYSIS
Petitioner requests that we rehear our Decisions on Institution and
institute inter partes review as to the ’099 patent. Req. Reh’g. 15. In
particular, Petitioner argues that we “improperly interpreted the plain and
ordinary meaning of ‘state transition patterns,’ and overlooked or
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misapprehended Petitioner’s testimonial evidence showing that Riddle and
Yu teach that limitation.” Id.
State Transition Patterns
Petitioner argues that we improperly interpreted the plain and ordinary
meaning of state transition patterns. Id. at 3–8. These arguments relate to
claim 1’s limitation of “a set of predefined state transition patterns . . . such
that traversing a particular transition pattern as a result of a particular
conversational flow-sequence of packets indicates that the particular
conversational flow-sequence is associated with the operation of a particular
application program.” Ex. 1001, 35:31–39; Req. Reh’g 3–8. In particular,
Petitioner argues that “the Board’s [D]ecision[s] interpret[] the claim term
‘state transition pattern(s)’ to require ‘state transitions across multiple
packets,’ . . . [which] runs contrary to the claim language.” Req. Reh’g 1
(citing Dec. on Inst. 18–20). According to Petitioner, “[t]he claim is
agnostic on whether traversal is triggered by a single packet, or by more than
one packet, in a flow-sequence of packets.” Id.
We disagree. Claim 1 explicitly recites that “traversing a particular
transition pattern as a result of a particular conversational flow-sequence of
packets indicates” the associated application program. Ex. 1001, 35:31–39
(emphases added). In other words, the claim requires “classifying a flow
based on . . . a state transition pattern of a sequence of packets (i.e., across
multiple packets) in the flow.” Dec. on Inst. 19. In the context of the
limitation, the “particular transition pattern” is one of the “set of predefined
state transition patterns.” Ex. 1001, 35:31–39. Hence, state transition
patterns include state transition patterns that involve multiple packets,
contrary to Petitioner’s arguments. Put differently, and as we stated in our
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Decisions on Institution, “the plain and ordinary meaning of ‘state transition
patterns,’ in the context of a sequence of packets, comprises state transitions
across packets in a flow.” Dec. on Inst. 18 (citing Ex. 1001, 35:31–39)
(emphasis added). Petitioner’s Requests for Rehearing fail to address
directly that the limitation recites “of packets” (i.e., packet in the plural form
or multiple packets) for the particular conversational flow-sequence that
results in the traversal of the particular transition pattern. See generally Req.
Reh’g.
Moreover, this limitation’s plain and ordinary “meaning is consistent
with the Specification’s disclosure that a current packet is ‘analyzed in the
context of the sequence of previously encountered packets (the state).’”
Dec. on Inst. 18 (quoting Ex. 1001, 11:16–20). The Specification is replete
with support for this plain and ordinary meaning requiring patterns involving
multiple packets. For example, the Specification discloses:
In a complex analysis, state transitions are traversed as more and
more packets are examined. Future packets that are part of the
same conversational flow have their state analysis continued
from a previously achieved state. When enough packets related
to an application of interest have been processed, a final
recognition state is ultimately reached, i.e., a set of states has
been traversed by state analysis to completely characterize the
conversational flow.

Ex. 1001, 16:10–20; Dec. on Inst. 19 (quoting same); see also Ex. 1001,
9:14–23 (disclosing that an application program “will produce an exchange
of a sequence of packets over” a network that is characteristic of the
program, but “[s]uch characteristics may not be completely revealing at the
individual packet level[, and] . . . may require the analyzing of many
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packets . . . to have enough information needed to recognize particular
application programs”); Dec. on Inst. 19 (quoting same).
We are not persuaded by Petitioner’s argument that we “conflate[d]
the terms ‘state transition pattern(s)’ and ‘sequence of packets.’” Req.
Reh’g 4. To that end, Petitioner argues that we improperly “replace[d] the
words ‘as a result of’ with ‘for’ or ‘of’ . . . [, which] altered this limitation’s
meaning to require a sequence of transitions, which is contrary to the claim.”
Id. at 4 (citing Dec. on Inst. 18–19). We disagree. Rather, our phrasing
regarding this limitation remains consistent with requiring that state
transition patterns, including at least the traversed particular transition
pattern, are patterns which involve multiple packets — having one or more
transitions is separate from this requirement. Ex. 1001, 35:31–39; see also
id. at 34:27–32 (discussing single state transitions versus a sequence of state
transitions, rather than the number of packets). Again, the limitation recites
“traversing a particular transition pattern as a result of a particular
conversational flow-sequence of packets.” Id. at 35:31–39 (emphases
added).
We also are not persuaded by Petitioner’s argument that our view of
the plain and ordinary meaning of the claimed state transition patterns is
incorrect because it excludes embodiments (e.g., “a single packet can
provide the state transition information indicating association of a flow-
sequence with operation of a particular application program”) disclosed in
the Specification. Req. Reh’g 5–6 (citing SynQor, Inc. v. Artesyn Techs.,
Inc., 709 F.3d 1365, 1378–79 (Fed. Cir. 2013)). The Specification clearly
contrasts embodiments that require patterns covering multiple packets with
patterns that allow for a single packet. See, e.g., Ex. 1001, 9:14–23, 10:48–
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63, 16:10–20. As we discuss above, claim 1 and its limitation requiring “a
particular conversational flow-sequence of packets” clearly requires multiple
packets, and thus, is directed to the former embodiment. Id. at 35:31–39.
Contrary to Petitioner’s argument, it is not necessary for claim 1 to cover all
disclosed embodiments, particularly when the clear language of the
limitation shows that it does not. See Baran v. Med. Device Techs., 616 F.3d
1309, 1316 (Fed. Cir. 2010) (“It is not necessary that each claim read on
every embodiment.”); Helmsderfer v. Bobrick Washroom Equip., Inc., 527
F.3d 1379, 1383 (Fed. Cir. 2008) (“It is often the case that different claims
are directed to and cover different disclosed embodiments.”).
We also are not persuaded by Petitioner’s argument that Patent Owner
agrees with Petitioner’s understanding of state transition patterns because
“Patent Owner has stated that . . . [certain] quotes from the ’903 Provisional
[that discuss both embodiments] provide sufficient written description
support for” this limitation. Req. Reh’g 6–7 (citing Ex. 1112,2 3–4); see
also id. at 6 (quoting Ex. 1001, 10:51–63, 34:27–29; Ex. 1016, 16:19–25,
36:10–12). First, Petitioner bases its argument on selecting a few cites from
a lengthy string cite, which we find is too speculative to establish that Patent
Owner’s understanding of state transition patterns differs from our view.
Req. Reh’g 6–7; Ex. 1112, 3–4. Second, Petitioner fails to address how
litigation positions taken by Patent Owner as support for claim limitations
can serve to contradict the plain language of the limitation (e.g., “of
packets”).

2 We do not address whether Petitioner has shown good cause to admit
Exhibit 1112, as we find unavailing Petitioner’s arguments based on this
exhibit.
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Lastly, we find inapposite Petitioner’s argument concerning Sun’s
RPC (Remote Procedure Call) Bind Lookup application. Req. Reh’g 7–8.
The gist of Petitioner’s argument appears to be that this application “may be
identified by examining a single packet used to transmit a request.” Id. at 7.
For example, Petitioner argues that “transition in state is recognized from
information in the packet (including identification of a particular port) and is
sufficient to identify the associated application.” Id. (citing Ex. 1001, 33:6–
55). At most, this discussion is an example of an embodiment that allows
for application identification based on a single packet. Ex. 1001, 33:6–55.
As we discuss above, however, claim 1 is directed to multiple packet
embodiments for application identification. Additionally, we note that
Petitioner’s arguments based on Sun’s RPC (Remote Procedure Call) Bind
Lookup application are new, and do not appear in the Petition. See generally
Pet.
In light of the above, we are not persuaded that there was an erroneous
conclusion of law concerning our view of the plain and ordinary meaning of
state transition patterns.
Alleged Obviousness over Riddle and Ferdinand
Petitioner argues that we overlooked or misapprehended that “Dr.
Weissman’s declaration explains that a POSITA would understand Riddle
classifies a flow based on traversal of a state transition pattern across packets
in the flow, rather than based solely on a single flow packet.” Req. Reh’g 9.
We disagree. Our Decisions on Institution considered the arguments
and testimony as presented and developed in the Petitions, and properly
determined that Petitioner failed to show that Riddle discloses “a set of
predefined state transition patterns . . . such that traversing a particular
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transition pattern as a result of a particular conversational flow-sequence of
packets indicates that the particular conversational flow-sequence is
associated with the operation of a particular application program.” Dec. on
Inst. 18–22.
Petitioner’s Requests cite Dr. Weissman’s testimony (largely without
identifying where in the Petitions this testimony was cited) to make
arguments that it did not make in the Petitions. Req. Reh’g 9–13. First, for
example, Petitioner’s Requests repeatedly rely on paragraph 351 of
Dr. Weissman’s declaration to argue that “Riddle discloses that traversing a
particular state transition pattern for a flow-sequence of packets indicates the
flow’s associated application program.” Id. at 9, 12 (citing Ex. 1006 ¶ 351).
In the Petitions, however, Petitioner only cites paragraph 351 in describing
Riddle’s Figure 2A and arguing that “[a] POSITA would have understood
that transitioning from one class to the next in this hierarchy involves
predefined patterns and operations.” Pet. 66 (citing Ex. 1006 ¶ 351). Hence,
Petitioner’s argument here is untimely. A request for rehearing is not a
supplemental petition. Nor is it an opportunity to present new arguments or
evidence that could have been presented and developed in the first instance
in the Petitions. We could not have misapprehended or overlooked
arguments or evidence that were not presented or developed in the Petitions.
Notably, Petitioner’s Requests fail to identify any specific factual
error in our factual findings concerning Riddle’s Figure 2A. Req. Reh’g 9–
10, 12 (citing Ex. 1006 ¶ 351). Put differently, Petitioner’s Requests ignore
the reasoning for our factual findings about Figure 2A’s teachings, including
that Figure 2A’s tree
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classifies a flow based on an individual packet’s information and
“multiple orthogonal classification attributes” (e.g., department
and application). Ex. 1008, Fig. 2A, 9:16–18, 10:20–39. Put
differently, Riddle uses the information contained in an
individual packet in the flow to test for multiple traffic classes
(e.g., which department and application the packet belongs, if
any). Id. The application (e.g., FTP) is indicated by information
within the individual packet, and an orthogonal classification
attribute (i.e., application), rather than a pattern. Id. In addition,
although Riddle teaches classifying multiple packets in a flow,
this classification occurs serially on an individual packet by
packet basis, rather than relying on state transitions across
multiple packets. See generally Ex. 1008.
Dec. on Inst. 19–20.
Second, Petitioner argues that by finding that Riddle is limited to
“‘classifying a flow based on an individual packet in a flow,’ the Board
overlooked or misapprehended Dr. Weissman’s uncontested testimony,”
including paragraphs 360–361 and 366–369. Req. Reh’g 10 (quoting Dec.
on Inst. 19); see also id. (citing Pet. 71–72) (arguing that these paragraphs
were cited in the Petition). In the Petitions, however, Petitioner cites these
paragraphs only in regard to state operations. See Pet. 71–72. Hence,
Petitioner’s arguments in its Rehearing Requests as they relate to state
transition patterns and these paragraphs are untimely. Again, a request for
rehearing is not a supplemental petition.
Third, Petitioner’s Requests argue, in the context of service
aggregates, that Riddle’s claim 5 supports its argument that Riddle teaches
this limitation. Req. Reh’g 11 (citing Ex. 1008, 16:40–48; Pet. 62–63). In
the Petitions, however, Petitioner cites Riddle’s claim 5 for a different
limitation in arguing that Riddle’s Figure 4B “looks up whether a flow
matches a traffic class in relation to classifying a service aggregate based on
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a plurality of indicators.” Pet. 62–63 (citing Ex. Ex. 1008, 16:40–48).
Hence, this argument is untimely. Moreover, like above, Petitioner’s
Requests fail to identify any specific error in our factual findings concerning
Riddle’s service aggregates. See Dec. on Inst. 20 (making factual findings
about Riddle’s service aggregates). Not finding Dr. Weissman’s testimony
(e.g., paragraphs 356–357) persuasive in light of Riddle’s teachings is not
evidence of clear error. Id.
Fourth, Petitioner argues that “Riddle makes clear [that] Fig[ure] 4A’s
flowchart may operate on state transitions across multiple packets” because
“Riddle specifies this flowchart ‘may execute on multiple instances of list
308’” and “teaches ‘a flow specification is parsed from the flow being
classified.’” Req. Reh’g 11 (citing Ex. 1008, 12:42–63) & n.4 (quoting Ex.
1008, 12:37–39). These arguments are new, and hence are untimely.
Compare Req. Reh’g 11–12, with Pet. 68–69. Moreover, Petitioner’s
argument that “Dr. Weissman also opines that Riddle’s Fig 4A flowchart
teaches examining state transitions across multiple packets to indicate a
particular program” is conclusory and untethered to our specific factual
findings so as to sufficiently allege error. See Req. Reh’g 12 (citing Ex.
1006 ¶¶ 120–121, 132, 299, 330, 332, 354–355, 361, 367–368). Moreover,
Petitioner’s argument cites numerous paragraphs from Dr. Weissman’s
declaration that were not cited in the Petitions’ discussion of Riddle’s Figure
4A for this limitation. Id.; Pet. 68–69. Again, a request for rehearing is not
a supplemental petition.
Lastly, Petitioner argues that Riddle’s FTP example teaches
“progression from establishing a TCP connection to establishing FTP
command and data channels to permit exchange of FTP data is a pattern of
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state transitions that occurs across multiple packets, is predefined by the
classification tree, and leads to the recognition of an FTP program associated
with the flow.” Req. Reh’g 12–13 (citing Pet. 66). Petitioner, however, fails
to identify any specific factual error in our findings regarding Riddle’s
teachings regarding FTP. Id.; Dec. on Inst. 19–20 (finding that Riddle’s
teachings regarding the FTP application fail to teach this limitation). These
findings explain why Riddle’s FTP application discussion fails to teach the
disputed limitation. Dec. on Inst. 19–20.
Simply put, the fact that we did not find Dr. Weissman’s testimony, as
developed in the Petitions, persuasive does not mean we overlooked or
misapprehended his testimony, or that our Decisions were based on clearly
erroneous factual findings. We are not persuaded that our Decisions were
based on clearly erroneous factual findings or a clear error of judgment.
Alleged Obviousness over Riddle, Ferdinand, and Yu
In our Decisions on Institution, we found that “Petitioner d[id] not
provide any detailed mapping of claim 1’s limitations for th[e] asserted
ground[s] [based on Riddle, Ferdinand, and Yu], leaving any such mapping
unclear, or worse, speculative,” and that “[f]or example, Petitioner d[id] not
explain what, if anything, in Yu maps to the recited ‘set of predefined state
transition patterns’ — Petitioner d[id] not even use the phrase in its showing
for this ground.” Dec. on Inst. 23 (citing Pet. 80–87). Furthermore, “[w]e
decline[d] to speculate as how Yu’s teachings, if at all, relate to the[]
limitations of claim 1[, and] . . . we f[ound] the Petition[s] d[id] not ‘set
forth . . . where each element of the claim is found in the prior art . . . relied
upon,’” as required by 37 C.F.R. § 42.104(b)(4). Id. at 23–24.
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Petitioner argues in its Requests that we “overlook[ed] Petitioner’s
analysis of Yu and misapprehend[ed] Dr. Weissman’s testimony regarding
Yu.” Req. Reh’g 13–15. More specifically, Petitioner argues that “[b]oth
Petitioner and Dr. Weissman explain that a POSITA would have understood
Yu teaches using a pattern across multiple packets as a flow classification
criterion, as shown in” cited passages from Yu and Dr. Weissman’s
declaration in the Petitions. Id. at 13–14 (citations omitted).
Petitioner’s arguments now try to map, at least for some limitations,
the passages from Yu and Dr. Weissman that Petitioner cited in the Petitions
to limitations of claim 1. Id. This attempted mapping comes too late. A
request for rehearing is not a supplemental petition. The Petitions did not set
forth where each element of the claim is found in the prior art relied upon,
and Petitioner’s Requests cannot cure this failing. See Pet. 80–84; 37 C.F.R.
§ 42.104(b)(4). We are not persuaded that this was an abuse of discretion.
CONCLUSION
On this record, Petitioner neither persuades us that we overlooked or
misapprehended any matter, nor sufficiently shows that denying institution
of an inter partes review of claims 1 and 2 of the ’099 patent in IPR2020-
00335 and denying institution of an inter partes review of claims 4 and 5 of
the ’099 patent in IPR2020-00485 was an abuse of discretion.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Requests for Rehearing are denied.
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For PETITIONER:
Joseph Edell
Adam 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:
Robert Bullwinkel
Michael Heim
HEIM PAYNE & CHORUSH, LLP
abullwinkel@hpcllp.com
mheim@hpcllp.com