Ex Parte 7647427 et al

Patent Trial and Appeal Board

Sep 4, 2014

90011775 (P.T.A.B. Sep. 4, 2014)

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.
90/011,775 06/27/2011 7647427 11517.0020 3230
65761 7590 09/05/2014
SAN FRANCISCO OFFICE OF
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
1000 LOUISIANA STREET
FIFTY-THIRD FLOOR
HOUSTON, TX 77002
EXAMINER
BONSHOCK, DENNIS G
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
______________

Ex parte BROCADE COMMUNICATIONS SYSTEMS, INC.
______________

Appeal 2014-001671
1

Reexamination Control No. 90/011,775
Patent 7,647,427 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
This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s
rejection of original claims 1-6, 8, and 11 of the ’427 patent, which are all of
the claims subject to reexamination in this ex parte reexamination

1
This is the principal 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, 2014-002493, and
2014-006002.
2
This patent (hereinafter “’427 patent”), was issued on January 12, 2010,
based on Application 10/273,657, filed October 18, 2002. Two of the
related reexamination appeals are directed to Patent US 7,716,370 B1 (“’370
patent”), which is a divisional patent of the ’427 patent.
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proceeding. Appeal Br.
3
4; Final Office Action (hereinafter “Final Action”),
mailed June 27, 2012, at Form PTOL-466, Part II, l. 1a.
We have jurisdiction under 35 U.S.C. §§ 6(b) and 306.
A rejection of claims 4-6 (Final Action 4, para. 9) under 35 U.S.C.
§ 103(a) for obviousness over Biswas
4
in view of Nair
5
was withdrawn at
page 3 of the Answer, mailed on June 13, 2013. As this was the sole ground
of rejection of claims 4-6, the appeal is hereby dismissed with respect to
these claims, leaving only the rejections of claims 1-3, 8, and 11 for our
consideration.
We AFFIRM.

I. STATEMENT OF THE CASE
A. Related Litigation and Reexamination Proceedings
The ’427 and ’370 patents were the subject of litigation (no longer
pending) styled Brocade Communications Systems, Inc. v. A10 Networks,
Inc., Case No. 10-CV-03428-LHK (N.D. Cal.). Appeal Br. 3.
Each of the ’427 and ’370 patents is the subject of both ex parte and
inter partes reexamination proceedings, all initiated by A10 Networks, Inc.

3
Patent Owner’s Appeal Brief Pursuant to 37 C.F.R. § 41.37, filed on
December 31, 2012.
4
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.
5
Nair, et al., US 6,337,863 B1, issued on January 8, 2002.
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These four proceedings are the subjects of the pending PTAB appeals
identified in the following table and referred to hereinafter as the ’671 Ex
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

In each of the inter partes proceedings, Patent Owner filed a petition
to terminate the respective inter partes proceeding as a result of a final
decision in the above-identified litigation.
6
Both petitions were dismissed.
7

Decisions in all four appeals are being mailed concurrently. In view
of the similarity of the issues in all four appeals, we are specifically
addressing certain issues in detail in only the two decisions that involve the
’427 patent (namely, this ’671 Ex Parte Appeal Decision and the ’493 Inter

6
See, e.g., inter partes proceeding 95/001,803, Patent Owner’s Petition
Under 37 C.F.R. § 1.182 to Terminate the Reexamination Proceedings, filed
on July 10, 2013.
7
See, e.g., inter partes proceeding 95/001,803, Decision Dismissing
Petition To Terminate Inter Partes Reexamination Proceeding, mailed on
August 30, 2013.
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Partes Appeal Decision). The principal issues are addressed in these two
decisions follows:
1. The ’671 Ex Parte Appeal Decision (this decision):
(a) Whether Biswas and Zwieback
8
have been
antedated by the evidence submitted under 37 C.F.R.
§ 1.131.
(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.
(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.
Other obviousness rejections rely on Zwieback in combination with the
above-identified references. As explained infra and in the ’493 Inter Partes

8
Dave Zwieback, high availability firewall/VPN with VRRP, 8 ;login: The
Magazine of Usenix & Sage 41-46 (Dec. 2001). Initially cited in this ex
parte reexamination proceeding in the Notice of References Cited (Form
PTO-892) that accompanied the Non-Final Office Action, mailed
February 15, 2012.
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).
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Appeal Decision, Zwieback is cumulative to these other references. Also,
Appellant’s sole argument against the Examiner’s reliance on Zwieback is
that it has been removed as a reference pursuant to 37 C.F.R. § 1.131. See,
e.g., ’671 Ex Parte Appeal, Appeal Br. 29 sec. IV.K; ’493 Inter Partes
Appeal, Appeal Br. 28 and 33-34, secs. VII.J and VII.M.
The analyses set forth in the ’671 Ex Parte Appeal Decision (this
decision) and the ’493 Inter Partes Appeal Decision are incorporated by
reference in the other two Decisions on Appeal.
Oral argument by Appellant was heard in the two related inter partes
appeals on June 18, 2014.
10

B. The Description in the ’427 and ’370 Patents
The specifications (excluding claims) of the ’370 patent and the parent
’427 patent are identical, except that the ’370 patent includes (at 1:7-12) a
cross-reference to the ’427 patent.
The invention described in these patents relates to providing
redundancy support for network address translation (NAT) devices (such as
routers or switches) in the event of a failover. ’427 patent 1:8-12.
NAT is the translation of an Internet Protocol (IP) address used within
one network to a different IP address known within another network. Id. at

10
Record of Oral Hearing, Appeal Nos. 2014-002493 and 2014-006002,
heard June 18, 2014. A transcript of the Oral Hearing was made of record in
both inter partes proceedings on July 31, 2014.
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1:15-17. One network is designated as the inside network and the other
network is designated as the outside network. Id. at 1:17-19. Generally, a
company maps its local inside network addresses to one or more global
outside IP addresses and unmaps the global IP addresses on incoming
packets back into local IP addresses. Id. at 1:20-24. Thus, the internal local
IP addresses are kept hidden from outsiders. Id. at 1:28-30. NAT also
conserves on the number of global IP addresses that a company needs by
permitting the company to use a single global IP address or a few global IP
addresses in its communications with outsiders. Id. at 1:30-34.
NAT typically is included as part of a router or other network device,
which in turn may form part of a firewall. Id. at 1:35-36. System
administrators create NAT tables for performing the global-to-local and
local-to-global IP address mapping. Id. at 1:36-38. As explained in greater
detail below, NAT can be statically defined (i.e., in a fixed one-to-one
relationship) or can be configured to dynamically translate to and from a
“pool” of IP addresses. Id. at 1:38-40. The claims before us are directed to
dynamic NAT, which uses a pool of IP addresses.
The problem addressed by the invention is that in the event of a failure
(caused by a power outage, device malfunction, virus, etc.), the NAT device
will be unable to perform address translation and to forward traffic. Id. at
1:42-48. This down time will continue until the NAT device (or another
network device that caused the failover) is repaired to bring it back online.
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Id. at 1:48-51.
11
Even in situations where the network employs a backup
NAT device, there will still be some down time and lost traffic (from current
connections that were broken at the time of the failover) between the time
when the failover occurs and the time when the backup NAT device is
brought online. Id. at 1:51-57.
In an embodiment of the invention, redundancy support for NAT is
provided by using techniques based on protocols related to the Virtual
Router Redundancy Protocol (VRRP). Id. at 3:13-15. More particularly,
such support is implemented in the invention by applying VRRP-Extended
(VRRP-e), used by Foundry Networks, Inc. of San Jose, Cal., to NAT. Id. at
3:15-18.
12
In contrast to VRRP, which uses “owners,” in VRRP-e “all
routers are backups for a given IP address—the router with the highest
priority becomes master and its back-up will respond to communications to
that IP address if the master goes down.” Id. at 3:21-26 (emphasis added).
In further contrast to VRRP, in VRRP-e the virtual IP address is not a real IP
address configured on the interface (i.e., the virtual IP address is not bound
to a particular interface). Id. at 3:26-30.
When VRRP-e is defined on an IP address used by two NAT devices,
the two NAT devices share the same virtual Media Access Control (MAC)

11
The ’427 patent uses the terms “failure” and “failover” interchangeably.
12
Foundry Networks, Inc. was acquired by Appellant, Brocade
Communications Systems, Inc. See Affidavit Under 37 CFR 1.131, by
Prajakta Joshi, para. 3. Appeal Br. Ex. E.
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address for that IP address. Id. at 3:31-33. However, only one of the NAT
devices “owns” the virtual MAC address at any point in time. Id. at 3:34-35.
Specifically, the NAT device with the higher priority (e.g., the “master” or
“primary” NAT device) owns the MAC address and keeps sending the
following data to its peer or peers (e.g., a back-up or secondary NAT
device): (i) communication messages to indicate that it is still “alive” and
(ii) session synchronization information. Id. at 3:35-40. When the master
NAT device fails, the back-up NAT device detects a gap or other
interruption in the communication, takes ownership of the MAC address,
and starts forwarding the traffic destined for that address. Id. at 3:40-44.
Figure 1 of the ’427 patent is reproduced below.
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Figure 1 illustrates a system 100 that provides redundancy support for NAT
in accordance with an embodiment of the invention. Id. at 3:50-52. NAT
devices 102 and 104 have outside ports for communicating with an outside
router 108 (“Router 1”) that is coupled to Internet 110. For example,
Figure 1 shows NAT devices 102 and 104 having outside ports with IP
addresses of 192.168.2.78 and 192.168.2.79, respectively. Id. at 4:3-7.
With VRRP-e, these outside port IP addresses point to a virtual IP address
that belongs to a “pool of global virtual IP addresses” (collectively referred
to as “NAT addresses”). Id. at 4:7-13. In this Figure 1 example, IP address
192.168.2.20 is the “base address in the pool (indicated symbolically by a
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broken line 112 in FIG.1.)” Id. at 4:10-13 (misidentifying the base address
as “192.168.20”). A packet sent to outside router 108 from NAT device 102
or 104 will have a NAT address from the pool as its source address, and a
return packet received from outside router 108 will have the same NAT
address as its destination address (and will in turn be received by the NAT
device that currently owns that virtual IP address for translation back into
the appropriate internal IP address). Id. at 4:14-21.
The NAT addresses in the pool are the global outside IP addresses to
which the internal (or inside) IP addresses are translated (and vice-versa).
Id. at 4:12-14. NAT devices 102 and 104 have inside ports for
communicating with an inside router 114 (“Router 2”) that is
communicatively coupled to one or more clients 116, which may be servers,
hosts, personal computers (PCs), switches, workstations, and the like. Id. at
4:25-30. For example, Figure 1 shows NAT devices 102 and 104 having
inside ports with IP addresses of 10.10.10.1 and 10.10.10.2, respectively. Id.
at 4:23-25.
With VRRP-e, these inside port IP addresses are mapped to a virtual IP
address that belongs to a “list” of virtual IP addresses (indicated
symbolically by a broken line 118). Id. at 4:31-35. Virtual IP address
10.10.10.20 on this list is shared by NAT devices 102 and 104. Id. Thus,
packets from the inside router 114 will be sent to 10.10.10.20 to be received
by the NAT device 102 or 104 that currently owns that address. Id. at 4:35-
38.
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Two NAT devices can be configured to provide “active-active”
redundancy support for NAT, which means that “even though one of [the
two NAT devices] may be the master NAT device for performing all or most
of the address translation and also forwarding traffic, the back-up NAT
device may also be performing some address translation and/or forwarding
its own traffic, as well as receiving session synchronization information
from the master NAT device.” Id. at 3:1-8.
13

VRRP-e can be configured for “static” NAT or “dynamic” NAT. An
example of static NAT is “inside source static NAT.” Id. at 5:13-14. In this
example, the “configuration commands may be used to provide redundancy
support for a single NAT IP address that is statically mapped to a single
inside source IP address.” Id. at 5:15-17. A set of such configuration
commands is set forth at column 5, lines 21-31, and includes the following
first command: “ServerIron(config)# ip nat inside source static 10.10.10.10
192.168.2.78.” Id. at 5:21-22. This command “specifies a 1 to 1 mapping
(or translation) from an inside address of 10.10.10.10, which is the source of
a packet, to a NAT address of 192.168.2.78.” Id. at 5:32-35.
Dynamic NAT, in contrast, involves translating between an inside IP
address and an address selected from a pool of outside NAT IP addresses.

13
Other embodiments provide “active-standby” redundancy support for
NAT, in which the back-up NAT device does not forward its own traffic
while the master NAT device is active, although the back-up NAT device
can receive session synchronization information. ’427 patent 3:8-12.
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For example, the following configuration commands can be used to
configure the NAT devices for “inside source dynamic NAT”:
ServerIron(config)# ip nat inside source list 1 pool test.
ServerIron(config)# ip nat pool test 192.168.2.1 192.168.2.40
prefix-length 24
Id. at 6:1-3. The first of these configuration commands “defines the
mapping of one of the inside addresses to any one of the NAT addresses in
the pool.” Id. at 6:4-6. The second configuration command “defines the
NAT pool, where 192.168.2.1 is the base address in the pool.” Id. at 6:6-8
(emphasis added). Configuring redundancy support for the base address of
the NAT pool also provides redundancy support for other addresses in the
pool:
[O]ne embodiment of the invention applies configuring
redundancy support for only this base address 192.168.2.1, and
in so doing, also provides redundancy support for other
addresses in its pool that have the subnet address of 192.168.2.
That is, one embodiment of the invention need not configure
VRRP-e for every address in the pool--rather, VRRP-e is
applied to the base address in the pool, and in the event of a
failure affecting any address in the pool, that address is
identified as belonging to the pool and failover support can be
provided from the back-up NAT device that has been associated
to the base address.
Id. at 6:8-19 (emphasis added).
Figure 2 of the ’427 patent is reproduced below.
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Figure 2 is a flow chart 200 illustrating operations associated with providing
redundancy support for NAT in accordance with one embodiment. Id. at
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7:19-22. At block 202, address configuration is performed to provide
redundancy support for the NAT addresses. Id. at 7:29-30. For instance,
if there is a pool of NAT addresses, the base address is
associated to a back-up NAT device during the configuration,
and if there is a failover involving any of the IP addresses in the
same pool, such IP address(es) are “hooked” to the back-up
NAT device by way of the base address. The back-up NAT
device can thus perform address translation to and from this IP
address, and can also forward traffic associated with this IP
address.
Id. at 7:35-42 (emphasis added). At block 204, the master NAT device is
designated, thereby giving it initial ownership over the NAT address pool
and ownership over the virtual IP addresses for the inside interfaces/ports
that communicate with inside router 114. Id. at 7:43-47. The designation of
the master can be performed using priority determination schemes familiar
to those skilled in the art. Id. at 7:49-52.
At block 206, “sessions” are conducted (e.g., the master NAT device
forwards traffic). Id. at 7:53-54. In an active-active configuration, the back-
up NAT device is also forwarding its own traffic at block 206. Id. at 7:54-
57. Concurrently with these sessions, the master NAT device sends “session
synchronization information” to the back-up NAT device via the
communication link 106 (Fig.1). Id. at 7:58-61. This session
synchronization information permits the back-up NAT device, inter alia, to
continue the same (i.e., an ongoing) session in the event of a failover. Id. at
7:67-8:3. The master NAT device also sends “heart beat” communication
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messages to the back-up NAT device, indicating that it is still “alive” or
otherwise active and performing properly. Id. at 8:12-16. Communication
of the “alive” (i.e., heart beat) messages and session synchronization
information over communication link 106 is the subject of appealed
dependent claims 4-6. As already noted, the Examiner withdrew the sole
rejection of these claims in this appeal.
If at block 210 the back-up NAT device detects a failure of the master
NAT device, the back-up NAT device asserts itself as the new master at
block 212. Id. at 8:27-29. In one embodiment, the back-up NAT device
becomes the master by asserting ownership over the addresses that were
owned by the master NAT device. Id. at 8:29-32. Asserting ownership
involves, in one embodiment, having the back-up NAT device send one or
more messages to all of its peers to notify them that it now owns the
addresses and that it is to receive all traffic destined for these addresses. Id.
at 8:32-36.

C. The Claims on Appeal
The only rejected independent claims are original claims 1 and 8,
which are the only independent claims in the ’427 patent. Claim 1, which is
representative of these two claims, reads as follows:
1. An article of manufacture, comprising:
a storage medium having instructions stored thereon that
are executable by a back-up device to:
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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;
detect, by said back-up device, a failure of said master
device; and
assert ownership, by said back-up device, of all of said
first addresses of said first pool corresponding to said
base address, in response to detection by said back-up
device of said failure.
’427 patent col. 9.
14

D. The Rejections
The following grounds of rejection are now before us in this ex parte
proceeding:

14
The claims as reproduced in the Claim Appendix (Appeal Br. 32-33) lack
(Continued on next page.)
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Prior Art Statutory
Basis
Claim(s)
Rejected
Final Action
Pages
Biswas § 102(e) 1, 2, 8, and 11 3-4, paras. 7 &
10
Biswas in view of
Li
15

§ 103(a) 3 3, para. 8
Biswas in view of
Zwieback
§ 103(a) 8 and 11 4, para. 10
In view of the Examiner’s above-noted withdrawal (Answer 3) of the
rejection of claims 4-6 for obviousness over Biswas in view of Nair, it is not
necessary to consider the Rubin Report,
16
which is relied on in the Appeal
Brief (at 27-29) (e.g., to establish commercial success) with respect to only
the withdrawn ground of rejection.
Appellant argues in this proceeding that:
(1) Biswas and Zwieback have been removed as references by the
evidence submitted under 37 C.F.R. § 1.131; and

the paragraph structure employed in the patent.
15
T. Li, et al., Cisco Hot Standby Router Protocol (HSRP), RFC-2281,
pages 1-18 (Mar. 1998), available at http://tools.ietf.org/pdf/rfc2281.pdf
(cited in Request for Ex Parte Reexamination (hereinafter “Request”) at 3).
16
Rebuttal Expert Report of Izhak Rubin (undated), which has a caption
indicating filing in the above-identified litigation. Appeal Br. Ex. F. The
Rubin Report was considered but deemed unpersuasive by the Examiner in
this ex parte proceeding for the reasons given in the last page of the
Advisory Action, mailed September 18, 2012. As explained in greater detail
in the ’493 Inter Partes Appeal Decision, the Rubin Report was refused
consideration in related inter partes proceedings 95/001,803 and
95/001,805.
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(2) Biswas does not disclose or suggest the active-active redundancy
support for NAT recited in claim 1’s third paragraph (“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”).

II. DISCUSSION
A. Whether Either of Biswas And Zwieback Has Been Antedated (Appeal
Br. 9-19 secs. IV.C-G)
Appellant contends (Appeal Br. 11) that the evidence submitted under
37 C.F.R. § 1.131 antedates Biswas and Zwieback by establishing an actual
reduction to practice of the claimed invention prior to the effective dates of
Biswas and Zwieback.
17
Biswas’s effective filing date is June 28, 2002.
The Zwieback article appears in the December 2001 issue of “;login: The
Magazine of Usenix & Sage.”
“[R]eduction to practice is a question of law predicated on subsidiary
factual findings.” z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1352
(Fed. Cir. 2007) (citing Taskett v. Dentlinger, 344 F.3d 1337, 1339 (Fed.
Cir. 2003)).

17
37 C.F.R. § 1.131(b) (2012) provides in relevant part:
(b) The showing of facts shall be such, in character and
weight, as to establish reduction to practice prior to the
effective date of the reference, or conception of the invention
prior to the effective date of the reference coupled with due
diligence from prior to said date to a subsequent reduction to
(Continued on next page.)
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In order to establish actual reduction to practice, the
inventor must prove that he constructed an embodiment or
performed a process that met all the limitations of the claim,
and that he determined that the invention would work for its
intended purpose. Cooper [v. Goldfarb], 154 F.3d [1321,] 1327
[(Fed. Cir. 1998)]. Determining that the invention will work for
its intended purpose may require testing, depending on the
character of the invention and the problem that it solves. Id. . . .
“The adequacy of a reduction to practice is to be tested by what
one of ordinary skill in the art would conclude from the results
of the tests.” Winter v. Lebourg, 394 F.2d 575, 581 . . . (CCPA
1968).
Slip Track Systems, Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1265 (Fed. Cir.
2002).
“Complex inventions and problems in some cases require laboratory
tests that ‘accurately duplicate actual working conditions in practical use.’”
Scott v. Finney, 34 F.3d 1058, 1062 (Fed. Cir. 1994) (quoting Elmore v.
Schmitt, 278 F.2d 510, 513 (CCPA 1960)). “[T]he inquiry is not what kind
of test was conducted, but whether the test conducted showed that the
invention would work as intended in its contemplated use.” Slip Track,
304 F.3d at 1267 (quoting Eastern Rotorcraft Corp. v. United States,
384 F.2d 429, 431 (Fed. Cir. 1967)). The sufficiency of evidence of a
reduction to practice is judged using a reasonableness standard. Scott,
34 F.3d at 1062 (citing Holmwood v. Sugavanam, 948 F.2d 1236, 1238 (Fed.
Cir. 1991)).

practice or to the filing of the application.
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The standard of proof required to show unpatentability over the prior
art during a reexamination proceeding is proof by a preponderance of the
evidence:
In a reexamination proceeding . . . there is no presumption of
validity and the “focus” of the reexamination “returns
essentially to that present in an initial examination,” In re Etter,
756 F.2d [852,] 857 [(Fed. Cir. 1985) (en banc)], at which a
preponderance of the evidence must show nonpatentability
before the PTO may reject the claims of a patent application. In
re Caveney, 761 F.2d 671, 674 . . . (Fed. Cir. 1985).
Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988).
Appellant does not deny that an actual reduction to practice of the
claimed subject matter requires proof of successful testing. Appellant’s case
for an actual reduction to practice, including the required testing, is based on
the following testimony of the inventor (Mr. Sridhar Devarapalli) and two
other witnesses:
(a) The “Affidavit Under 37 CFR 1.131” executed by Mr. Devarapalli
on April 23, 2012 (hereinafter “Devarapalli Affidavit”). Appeal Br. Ex. D.
18

(b) The inventor’s deposition testimony dated February 10, 2012
(hereinafter “Devarapalli Dep. Tr.”). Appeal Br. Ex. 1; Devarapalli Aff.
Ex. 1.

18
Initially submitted with Appellant’s (untitled) May 15, 2012, response to
the Non-Final Office Action, mailed on February 15, 2012.
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(c) The “Affidavit Under 37 CFR 1.131” executed by Ms. Prajakta
Joshi on August 27, 2012 (hereinafter “Joshi Affidavit”). Appeal Br. Ex.
E.
19

(d) The “Declaration of Marty Azarani Pursuant to 37 CFR § 1.131,”
executed on December 28, 2012 (hereinafter “Azarani Declaration”).
20

Appellant asserts that an actual reduction to practice occurred on two
different dates:
The invention claimed in the ‘427 patent was actually reduced
to practice based on the following activities occurring on the
following dates:
(1) The date of actual implementation of the invention in
a [ServerIron 8.0] product in a product manual and
commercially released [i]n February of 2002; and
(2) The date source code embodying the invention was
checked into a corporate database according to
established business practices on October of 2001.
Reply Br. 2-3.
21

19
Initially submitted with Patent Owner’s Response to Final Office Action,
filed on August 27, 2012. Indicated as entered in the Advisory Action
mailed September 18, 2012, Form PTOL-467, box 9.
20
Initially submitted with the Appeal Brief (filed on December 31, 2012)
together with two petitions requesting its consideration: (a) Petition/Request
for Continued Reexamination Under 37 C.F.R. § 1.182 and (b) Petition for
Waiver of 37 C.F.R. § 41.33 Under 37 C.F.R. § 1.183. Consideration of the
Azarani Declaration was approved in a Decision Granting Petition Under
§ 1.183 And Dismissing Petition Under § 1.182, mailed on April 24, 2013.
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We begin our analysis with the source code that was checked in
during October 2001.

1. The Source Code Checked in During October 2001
The source code checked in during October 2001 is relied on to
antedate each of Biswas and Zwieback. Appeal Br. 29 sec. IV.K.
The image reproduced below is relied on in the testimony of the
inventor and Ms. Joshi:

21
Patent Owner’s Reply Brief Pursuant to 37 C.F.R. § 41.41, filed on
August 13, 2013.
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Appeal Br. Ex. 2; Devarapalli Aff. Ex. 2; Joshi Aff. Ex. A. This image,
which includes redacted areas, is “a screenshot of Foundry Networks’
database record system showing that the source code of filename
‘vrrpcmds.c’ was checked into the database in October 2001.” Devarapalli
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Aff. para. 6. The Joshi Affidavit explains (at para. 9) that this database is
called “ClearCase.” An unshaded block in the screenshot includes the
following text:
22

\main\[illegible]\1
Created By : Sridhar
Created On : Thursday, October 18, 2001 12:09:53 AM,
Description : support for NAT and VRRP.
For the reasons described below, the Examiner correctly found the
testimony fails to establish that source code file “vrrpcmds.c” was
(i) sufficient to implement the claimed invention as of the October 2001
check-in date or (ii) successfully tested to prove its operability under the
intended conditions by that date.
In the first place, as pointed out by the Examiner (Final Action 9), the
testimony is contradictory regarding whether this source code file alone was
used to implement the claimed invention as of the October 2001 check-in
date, as stated in the inventor’s affidavit testimony:
4. Upon my information and belief, the inventions
claimed in the ‘427 and ‘370 patents were implemented in
source code at least as early as October 2001. Specifically, the
invention recited in each of claims 1-11 of the ‘427 patent, and
each of claims 1-32 of the ‘370 patent was implemented in the
source code. I checked-in a file named “vrrpcmds.c” into
Foundry Networks’ source code database that embodied the
invention recited in the ‘427 and ‘370 patents.

22
The text in the shaded blocks is not legible.
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5. Upon my understanding and belief, Exhibit 1 is a
transcript of my deposition that was conducted on February 10,
2012. In this deposition transcript (pages 20-21; 44-45; 66-67),
I testify under oath that the claimed subject matter of the ‘427
and ‘370 patents is implemented in the source code file named
“vrrpcmds.c” at least as early as October 2001.
6. The source code of filename “vrrpcmds.c” was
checked into the database system at least as early as October
2001, as stated in my deposition transcript on pages 22 and 44-
45. Upon my understanding and belief, Exhibit 2 is a
screenshot of Foundry Networks’ database record system,
showing that the source code of filename “vrrpcmds.c” was
checked into the database in October 2001.
7. Upon my belief, the source code of filename
vrrpcmds.c, which was checked into the source code database in
October 2001 as shown in Exhibit 2, was operable.
Devarapalli Aff. paras. 4-7. However, the inventor’s above-quoted sole
reliance on the “vrrpcmds.c” file is contradicted by his following deposition
testimony (which appears in two of the deposition transcript pages cited in
above-quoted paragraph 5 of his affidavit):
24 Q So if I can go back, what I’m asking for
25 is the identity of the documents that Brocade
Page 44
1 contends are related to your creation of an
2 embodiment of the invention claimed in the ’427
3 patent.
4 A I won’t be able to give you an exhaustive
5 list, but I can tell you a few files. They would be
6 vrrp_cmds.c. That’s one file. m5_sw_nat.c.
. . . .
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14 THE WITNESS: vrrp_cmds.c. m5_sw_nat.c.
15 Yeah. let’s just leave it at those two.
Page 45
Devarapalli Dep. Tr. 44:24-25; 45:1-6, 14-15 (clock times omitted).
Furthermore, the Joshi Affidavit, which describes source code file
“vrrpcmds.c” as one of three files used to implement the claimed invention:
6. . . . I have . . . reviewed and understood the source
code file named “vrrpcmds.c” and also the source code files
named “m5_sw_nat_data.c” and “sw_14_redundancy.c” that
are included/called/linked to by the source code file named
“vrrpcmds.c,” and I am familiar with the products in which
these source code files are included. The source code files
“vrrpcmds.c,” “m5_sw_nat_data.c,” and
“sw_14_redundancy.c” implement the inventions claimed in
claims 1-11 of the ‘427 patent and claims 1-32 of the ‘370
patents.
Joshi Aff. para. 6.
The Examiner also faulted the inventor’s testimony about source code
file “vrrpcmds.c” for the following additional reasons:
[T]here are no statements in the deposition transcript describing
the contents of the file “vrrpcmds.c.” It is also not clear
whether the file that was checked in was subsequently edited or
what those edits may have been (Exhibit 1, pp. 79, 85-87).
Therefore, it has not been established that the source code
file “vrrpcmds.c” is commensurate in scope with the
claimed invention of the ‘427 patent.
Final Action 9.
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We agree with the Examiner that the evidence of record fails to
support the conclusory testimony that the claimed invention was
implemented by the source code file or files checked in during October
2001. See Devarapalli Aff. para. 4 (“I testify under oath that the claimed
subject matter of the ‘427 and ‘370 patents is implemented in the source
code file named ‘vrrpcmds.c’ at least as early as October 2001.”); Joshi Aff.
para. 6 (“The source code files ‘vrrpcmds.c,’ ‘m5_sw_nat_data.c,’ and
‘sw_14_redundancy.c’ implement the inventions claimed in claims 1-11 of
the ‘427 patent and claims 1-32 of the ‘370 patents.”).
As already noted, reduction to practice is a question of law predicated
on subsidiary factual findings. z4 Techs., 507 F.3d at 1352. Thus, “[t]he
affidavit or declaration and exhibits must clearly explain which facts or data
applicant is relying on to show completion of his or her invention prior to
the particular date.” MPEP § 715.07(I) (rev. Aug. 2012).
Vague and general statements in broad terms about what the
exhibits describe along with a general assertion that the
exhibits describe a reduction to practice “amounts essentially
to mere pleading, unsupported by proof or a showing of facts”
and, thus, does not satisfy the requirements of 37 CFR 1.131(b).
In re Borkowski, 505F.2d 713, 184 USPQ 29 (CCPA 1974).
Applicant must give a clear explanation of the exhibits pointing
out exactly what facts are established and relied on by
applicant. 505 F.2d at 718-19, 184 USPQ at 33. See also In re
Harry, 333 F.2d 920, 142 USPQ 164 (CCPA 1964) (Affidavit
“asserts that facts exist but does not tell what they are or when
they occurred.”).
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Id. (emphasis added; hyperlink underlining omitted) (quoted in Final
Action 10).
However, the details of source code file “vrrpcmds.c” and the other
source code files or files relied on in the deposition testimony, affidavits,
and declaration do not appear in the record. To the contrary, Ms. Joshi
explained: “The source code files named ‘vrrpcmds.c,’ ‘m5_sw_nat_data.c,’
and ‘sw_14_redundancy.c’ contain/are proprietary information and so are
not being submitted herewith.” Joshi Aff. para. 6 (emphasis added). In the
absence of a copy or a detailed description of the contents of the source code
file or files and an explanation of how the claim language is being read on
those contents, we cannot judge the correctness of the conclusory testimony
that the claimed invention was implemented by the source code file or files.
Appellant’s argument that “[t]he Examiner failed to accord the proper
weight to the evidence and sworn testimony of three declarants
demonstrating the actual reduction to practice of the claimed invention”
(Reply Br. 2) overlooks the requirement for factual support in the record.
The absence of sufficient factual support for the testimony that the
claimed invention was implemented by the source code file or files checked
in during October 2001 makes it unnecessary to address whether the source
code file or files were tested prior to check-in, as stated in testimony
(discussed below) by the inventor and Ms. Joshi. Nevertheless, in the
interest of completeness, we will also address this question.
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Mr. Devarapalli testified that “the source code of filename
vrrpcmds.c, which was checked into the source code database in October
2001 . . . , was operable.” Devarapalli Aff. para. 7. The Examiner is
unpersuaded by this testimony for the following reasons:
There does not appear to be evidence that testing was
performed, much less under what conditions or that [the] results
would be repeatable. Furthermore, in the deposition transcript,
Mr. Devarapalli states that he is unsure whether testing was
conducted and whether such testing showed that the source
code worked for its intended purpose (Exhibit 1, pp. 61-63, 78-
79). Mr. Devarapalli goes on to state, per the deposition
transcript, that live testing of the software was not performed to
see if it ran properly (Exhibit 1, pp. 94-95).
Answer 8. Appellant contends that the required testing is established by the
following exchange during the inventor’s deposition testimony:
4 Q -- did you then test the software to see
5 if it was running correctly?
6 A I don’t remember. It was probably yes . . .
Appeal Br. 17 (quoting Devarapalli Dep. Tr. 95:4-6).
When this exchange instead is considered in context, it fails to
establish the performance of any testing (let alone testing sufficient to prove
an actual reduction to practice) was performed:
14 Q How did you test -- so looking at the
15 October 2001 change orders again, how did you test
16 the software?
17 A How did I test the software --
18 MR. De BLANK: Objection. Vague.
19 THE WITNESS: -- or do you want to be more
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20 specific?
21 BY MR. MULCAHY:
22 Q All right. Well, after you made these
23 changes, did you then test the software to see if it
24 worked correctly?
25 A Repeat that again.
Page 94
1 Q After you made these changes in
2 October 2001 --
3 A Uh-huh.
4 Q -- did you then test the software to see
5 if it was running correctly?
6 A I don’t remember. It was probably yes,
7 but I can’t say for sure because I don’t remember.
8 Q If you had tested it, how would you have
9 tested it?
10 MR. De BLANK: Objection. Vague.
11 Incomplete hypothetical. Compound. Assumes facts.
12 THE WITNESS: Yeah. I mean, I don’t know
13 how I would have tested it. It’s so far back, and,
14 you know, the way I would conceive of testing
15 something now would be so different from how I
16 thought about it then. So I don’t know if I can
17 answer your question
18 BY MR. MULCAHY:
19 Q Okay, I mean, would you -- were there any
20 times when you would, like, reprogram a router with
21 the software you were working on and then hook it up
22 to the Internet and see if it performed correctly?
23 A No. Yeah, no.
24 Q So you would do -- you wouldn’t do, like,
25 live testing of a router at that stage?
Page 95
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Devarapalli Dep. Tr. 94:14-95:25 (clock times omitted).
The answer (if any) to the last question above is unknown because all
of the text at pages 96-98 has been redacted. The deposition testimony
therefore fails to establish that the source code file or files allegedly used to
implement the claimed invention were tested on or before the October 16,
2001, check-in date, let alone successfully tested using a router or equivalent
device under the intended conditions.
The above-identified deficiencies in the inventor’s testimony are not
remedied by the Joshi Affidavit or the Azarani Declaration. Ms. Joshi
testified that “[u]pon my understanding and belief, it was Foundry
Networks, Inc.’s (now Brocade Communications Systems, Inc.) routine
practice to check source code files into ClearCase when the source code
becomes/is operable.” Joshi Aff. para. 10; emphasis added.
This testimony is unpersuasive because she does not demonstrate how
her “understanding and belief” is based upon her first-hand knowledge. She
does not testify how she knows it was Foundry’s routine practice to test for
operability. Nor does she testify how operability would have been
determined. We are likewise unpersuaded by the testimony of Mr. Azarani,
who testified that “[w]hile I do not have specific knowledge of such event, it
was the usual practice for source code to be tested in a prototype by the
engineer who[] checked the source code into Foundry’s source code
database.” Azarani Decl. para. 7 (emphasis added). Mr. Azarani does not
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testify how he knows it was Foundry’s routine practice to test for operability
or testify how operability would have been determined.
For the above reasons, we agree with the Examiner that the evidence
fails to demonstrate an actual reduction to practice of the claimed invention
on or before the October 2001 check-in date of source code file
“vrrpcmds.c.”

2. The ServerIron 8.0 Product
In the testimony, the terms “’ServerIron 8.0’ product” (Devarapalli
Aff. para. 7; Joshi Affidavit para. 11) and “ServerIron 800/Ironware 8.0
products” (Azarani Decl. para. 3) are used to refer to the software product
described in “Release Notes for ServerIron
®
400 and ServerIron 800 --
TrafficWorks™ IronWare 8.0” (hereinafter “Release Notes”). Appeal Br.
Ex. B. Release Notes, which is 106 pages long, explains:
These release notes describe TrafficWorks
TM
IronWare 8.0 for
the following ServerIron
®
switch products:
• ServerIron 400
• ServerIron 800
Release Notes iii.
The cover page of Release Notes gives the release date for the
ServerIron 8.0 product as February 20, 2002, which is about four months
prior to Biswas’s June 28, 2002, effective date but about two months
subsequent to Zweiback’s December 2001 date. Appellant thus relies on
the ServerIron 8.0 product to antedate only Biswas.
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Appellant makes two arguments for why the testimony establishes that
the ServerIron 8.0 product implements the claimed invention. The first
argument relies on the “vrrpcmds.c” file checked in during October 2001:
“The Devarapalli Affidavit . . . states that the source code of filename
vrrpcmds.c checked into the ClearCase Foundry Networks source code
database on October 2001 was released in a ‘ServerIron 8.0’ product on
February 2002, and the source code worked before the product release.”
Appeal Br. 13 (quoting Devarapalli Aff. para. 7).
Specifically, the inventor testified:
7. Upon my belief, the source code of filename
vrrpcmds.c, which was checked into the source code database in
October 2001 as shown in Exhibit 2, was operable. Further, the
source code was released in a “ServerIron 8.0” product on
February 2002, and the source code worked before the product
release.
Devarapalli Aff. para. 7.
This argument is unpersuasive because, as explained above, the
evidence of record fails to establish that the claimed invention was
implemented by source code file “vrrpcmds.c.” The evidence of record also
fails to support Ms. Joshi’s testimony, quoted below, that the claimed
invention was implemented by source code files “vrrpcmds.c,”
“m5_sw_nat_data.c,” and “sw_14_redundancy.c”:
11. Upon my understanding and belief, the source
code file named “vrrpcmds.c” and the source code files named
“m5_sw_nat_data.c” and “sw _14_redundancy.c” that are
included/called/linked to by the source code file named
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“vrrpcmds.c” were included in the “ServerIron 8.0” product
released on February 2002.
Joshi Aff. para. 11 (cited in Appeal Br. 18).
Appellant’s second argument for why the ServerIron 8.0 product
implements the claimed invention is based on the contents of Release Notes.
The claims of the ’427 patent are compared to Release Notes in a Claim
Chart provided by Ms. Joshi (hereinafter “Joshi Claim Chart”). Appeal Br.
Ex. C; Joshi Aff. Ex. C (discussed in Joshi Aff. paras. 12, 14). The Joshi
Claim Chart (at 1-6) reads claim 1’s first paragraph (“a storage medium
having instructions stored thereon that are executable by a back-up device
to:”) on page 4 of Release Notes and reads claim 1’s remaining paragraphs
on the configuration example entitled “Active-Active Inside Source NAT
with VRRPE, which is described in Release Notes at pages 88-92 and
includes (at 89) Figure 15.
23
The Joshi Claim Chart (at 17-20) reads
independent claim 8 on the same configuration example.
Figure 15 of Release Notes (at page 89) is reproduced below:

23
We note that Release Notes also describes two other configuration
examples that provide active-active support for NAT: “Active-Active Inside
Source NAT with SLB and VRRPE” (at pages 93-94) and “Active-Active
Inside Destination NAT with VRRPE” (at pages 95-98).
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Figure 15 shows an example of a NAT configuration that also uses VRRPE.
Id.
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The Examiner does not question Appellant’s argument that claims 1
and 8 were implemented by the “Active-Active Inside Source NAT with
VRRPE” configuration example but finds the evidence of record insufficient
to establish successful testing of the ServerIron 8.0 product on or before its
release date:
Appellant argues that the relevant source code along with the
product within which it was implemented were tested and
operable prior to the February 2002 release. Again, the
Examiner asserts that this is not sufficient to show actual
reduction to practice, as there is no [e]vidence of such testing or
the[] results, as is required by MPEP 2138.05.
Answer 6. Appellant offers three arguments for why the evidence of record
is sufficient to establish successful testing of the ServerIron 8.0 software
product (including the features that correspond to the claimed subject
matter) on or before the February 20, 2002, release date. For the following
reasons, none of these arguments is persuasive.

(a) The Argument That Release of the ServerIron Product Implies an
Actual Reduction to Practice
Appellant argues that successful testing is implied by the fact that the
ServerIron 8.0 product was released on February 20, 2002:
“Actual reduction to practice might be established in patent
interference proceeding by showing commercial production,
adequate field tests under proper conditions, suitability of
product for purpose intended, or laboratory tests which
simulate actual service conditions with sufficient clearness to
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render it reasonably certain that subject matter will perform its
intended function in actual service.”
23

Appeal Br. 18. Footnote 23 reads as follows:
23
Morway v. Bondi, 203 F.2d 742[, 745] (CCPA 1953) (“An
actual reduction to practice might have been established by
showing commercial production.” citing Harrison v. Cadwell,
39 F.2d 704 (CCPA 1930)).
Id. at 18 n.23. Appellant’s reliance on the Morway sentence quoted in
footnote 23 is misplaced for the following reasons. This sentence must be
interpreted in context, wherein it follows a discussion of the requirement of
an actual reduction to practice that the claimed lubricant composition work
for its intended purpose:
[T]he mere mixing of ingredients to form a lubricant
composition meeting the counts can not, without more, be
considered an actual reduction to practice of a lubricant
intended to meet a certain problem. . . . The problem facing
Morway et al. in the invention herein was to produce a grease,
through the use of proper additives, which would be suitable for
use as a high temperature, heavy duty wheel bearing grease.
For these reasons, the mere production by Morway et al. on
January 30, 1945 of a grease mixture meeting the counts does
not establish an actual reduction to practice. It is necessary that
there be something more, such as demonstration by tests that
this grease mixture possessed the properties desired.
An actual reduction to practice might have been
established by showing commercial production. Likewise,
adequate field tests under proper conditions, showing suitability
of the grease for the purpose intended, may be relied on.
Laboratory tests may also constitute a reduction to practice
under some circumstances, but such tests must simulate actual
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service conditions with sufficient clearness to render it
reasonably certain that the subject matter will perform its
intended function in actual service.
Morway, 203 F.2d 745-46 (emphasis added; citations and footnotes
omitted).
Appellant’s reliance on the Morway statement in question is
misplaced for two reasons. First, this statement is dictum and thus not
controlling. Second, the court did not give its reasons for stating that
commercial production of the claimed grease might have been sufficient to
establish an actual reduction to practice. Third, the court did not explain
what it meant by “commercial production,” such as the quantity that would
be required in order to demonstrate “commercial production.”
Consequently, we cannot determine the extent, if any, that such reasons are
applicable to the commercial release of a software product, such as the
ServerIron 8.0 product. Also, Appellant has not provided evidence of how
many copies of the released software product were produced.
We also note that in the context of proving an on-sale bar under
35 U.S.C. § 102(b) (2012) (an issue not before us), a commercial offer for
sale of a product, standing alone, is not sufficient to prove that the product
has been actually reduced to practice. As stated in Pfaff v. Wells Elec., Inc.,
525 U.S. 55, 67 (1998):
[T]he on-sale bar applies when two conditions are
satisfied before the critical date. First, the product must be the
subject of a commercial offer for sale. . . .
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Second, the invention must be ready for patenting. That
condition may be satisfied in at least two ways: by proof of
reduction to practice before the critical date; or by proof that
prior to the critical date the inventor had prepared drawings or
other descriptions of the invention that were sufficiently
specific to enable a person skilled in the art to practice the
invention.
(Emphasis added.) As this discussion in Pfaff shows, a commercial offer for
sale and a reduction to practice can be considered to be two separate
conditions and the existence of one condition does not necessarily prove the
existence of the other condition.
For the foregoing reasons, we are not persuaded that prior testing
sufficient to establish an actual reduction to practice of the claimed invention
is implied by the commercial release of the ServerIron 8.0 product in
February 2002.

(b) The “routine practice” argument
Appellant’s second argument regarding testing is that the testimony
demonstrates “it was the ‘routine practice’ of Foundry Networks, Inc. [now
Brocade Communications Systems, Inc.] to describe features in released
product literature only after the features have been tested and confirmed
operable.” Appeal Br. 19 (citing testimony to this effect in Joshi Aff.
para. 13). This testimony is unpersuasive because Ms. Joshi does not
provide sufficient details about this “routine practice” to establish that they
would have included “tests that ‘accurately duplicate actual working
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conditions in practical use.’” Scott, 34 F.3d at 1062. That is, her testimony
fails to establish that the routine tests of software products for routers would
have been performed using a router or equivalent apparatus under the
intended working conditions (i.e., routing messages to and from the
Internet).
Furthermore, Ms. Joshi did not testify that the routine testing would
have been used test every software feature and thus necessarily would have
been used to test the “Active-Active Inside Source NAT with VRRPE”
configuration example, on which she reads the third paragraph of claim 1.
We note that this configuration example is only one of a number of different
“CONFIGURATION EXAMPLES” and “ADDITIONAL ENHANCEMENTS” described
at pages 11-100 of Release Notes, which are listed in the portion of the table
of contents that is reproduced below:
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Release Notes iv.
For the above reasons, we are also unpersuaded by Appellant’s
argument, unsupported by evidence, that “[c]ompanies generally do not
release software manuals describing inoperable products that have not been
tested as dictated by common sense and business practices.” Appeal Br. 19
(emphasis added). This assertion leaves open the possibility that pre-release
tests, when performed, may be less rigorous than the tests required to prove
an actual reduction to practice of a claimed invention and the possibility that
companies (including Appellant) sometimes do, in fact, release software
manuals describing inoperable products.
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(c) The Tests Described in the Azarani Declaration
The necessary testing details also are not supplied by the Azarani
Declaration, which describes testing performed by a colleague, Donald
Montague (who did not testify). Mr. Azarani testified as follows:
3. Upon information and belief, prior to February 2002 a
colleague of mine, Mr. Donald Montague[,] who[] sat
at the work station next to me, did test the redundancy
support for the network address translation feature of
the commercial embodiment of the ServerIron
800/Ironware 8.0 products described in the “Release
Notes” attached hereto as Exhibit B.
4. The ServerIron 800/Ironware 8.0 products represent
the commercial embodiment of the invention described
in claims 1-11 of the ‘427 and 1-32 of the ‘370 patent
as described in the Joshi Affidavit attached hereto as
Exhibit E.
5. It is my belief that the entire invention described in
Exhibit E[] existed, was tested in physical form, and
worked for its intended purpose at least prior to the
February 2002 ServerIron 800/Ironware 8.0 product
release because the invention described in the
“Release Notes”, recited in claims 1-11 of the ‘427
patent and claims 1-32 of the ‘370 patent and
embodied in the February 2002 ServerIron
800/Ironware 8.0 product release was tested by a
colleague of mine, Mr. Donald Montague, prior to
release. The product would not have been released
had it not worked for its intended purpose.
6. I have specific knowledge of such an event, because
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my colleague, Mr. Donald Montague, sat at the work
station next to me when the invention described in the
“Release Notes”, recited in claims 1-11 of the ‘427
patent and claims 1-32 of the ‘370 patent and
embodied in the February 2002 ServerIron
800/Ironware 8.0 product release was tested.

7. Furthermore, it was also the usual practice at Foundry
Networks, Inc. in the years 2001- 2002 for source code
to be tested in a prototype well before the commercial
release. While I do not have specific knowledge of
such event, it was the usual practice for source code to
be tested in a prototype by the engineer who[] checked
the source code into Foundry’s source code database.
Azarani Decl. paras 3-7 (emphasis added).
The paragraph 7 testimony about the “usual practice” using a
“prototype” is unpersuasive for the reason given above in the discussion of
Ms. Joshi’s testimony to the same effect. Mr. Azarani’s testimony about the
testing performed by Mr. Montague is unpersuasive because it fails to:
(i) describe the equipment used to perform the tests, (ii) describe the
conditions under which the tests were performed, or (iii) establish that the
tests included testing of “Active-Active Inside Source NAT with VRRPE”
(Release Notes 88-92), on which the Joshi Claim Chart reads claim 1 (or
another configuration example that provides active-active support for NAT).

3. Conclusion Regarding the Alleged Actual Reduction to Practice
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For the above reasons, Appellant has not demonstrated an actual
reduction to practice (including successful testing) of the claimed invention
on or before the effective date of either Biswas or Zwieback. Because
successful testing has not been demonstrated, Appellant also has not shown
error in the Examiner’s additional finding that the evidence fails to
demonstrate a “recognition or appreciation” that a successful test occurred.
Answer 7-8 (citing MPEP § 2138.05(IV) (rev. Aug. 2012), and Estee Lauder
Inc. v. L’Oreal, S.A., 129 F.3d 588, 593 (Fed. Cir. 1997) for the proposition
that “when testing is necessary to establish utility, there must be recognition
and appreciation that the tests were successful for [a] reduction to practice to
occur.”).
B. Anticipation by Biswas (Claims 1, 2, 8, and 11) (Appeal Br. 19-23
sec. IV.H)
In addressing this ground of rejection, Appellant argues independent
claims 1 and 8 together as a group. Appeal Br. 19-23. We elect to limit our
analysis of the independent claims to claim 1 pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant treats dependent claims 2 and 11 as standing or
falling with claims 1 and 8. Id. at 23.
We begin our analysis by noting that Appellant does not deny that
Biswas describes “[a]n article of manufacture” (claim 1, preamble) that
includes “a storage medium having instructions stored thereon that are
executable by a back-up device . . .” (claim 1, first paragraph). See
Request 6, limitations 1.0 and 1.1.
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The invention described in Biswas relates to a technique for
implementing asymmetric routing and resource allocation in a network
address translation (NAT) environment implemented on a data network.
Biswas 1:28-32. Biswas expressly describes NAT as employing a “pool” of
IP addresses:
NAT is based on the concept of address reuse by private
networks, and operates by mapping the reusable IP addresses of
the leaf domain to the globally unique ones required for
communication with hosts on the Internet. Further, to
implement NAT, a translation system must be provided
between the enterprise private network and the Internet. In
implementation, a local host wishing to access the Internet
receives a temporary [global] IP address from a pool of such
addresses available to the enterprise (e.g., Class C 254
addresses). While the host is sending and receiving packets on
the Internet, it has a global IP address which is unavailable to
any other host.
Id. at 2:13-22 (emphasis added).
Biswas’s Figure 1, which is discussed in the “Background of the
Invention,” is reproduced below.
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Figure 1 shows a portion 100 of a private network (id. at 2:28) that is shown
coupled to a public network that includes external nodes N1 and N2 (112a,
112b) and a wide area network (WAN) 110. Id. at 2:32-35; 6:14-17. NAT
gateway routers 104a and 104b in private network 100 can be configured as
“active” and “standby” routers, respectively, using a Hot Standby Router
Protocol (HSRP) such as that described in U.S. Pat. No. 6,108,300. Id. at
2:36-39. The HSRP protocol provides redundancy and fail-over support for
NAT routers 104a and 104b. Id. at 2:40-42. For example, if the active NAT
router (e.g., NAT1) fails, the standby NAT router (e.g., NAT2) takes over
the responsibilities of the failed NAT router. Id. at 2:42-45.
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Biswas’s invention addresses, inter alia, the following problem:
Generally, conventional NAT routers manage and
translate address/port information as packets travel from one
realm to another. For continuous flows, this translation
information is stored in a repository until that flow expires. As
applications become more complex, the flow attachment
records include additional context sensitive information that
may be necessary while the flow is unexpired. Typically, NAT
routers record all such information. However, if, for any
reason, a NAT router fails or has to be restarted, the translation
repository and context information on that router will be lost,
thereby isolating the end points and making the flow
unrecoverable due to loss of NAT Table information for these
flows.
Id. at 2:51-63.
Biswas uses a “first portion” of a “plurality of peer routers” to
perform NAT and a “second portion” of the “plurality of peer routers” to
perform a failover function. Id. at 4:6-14. A local Peer Resource
Assignment Table generated at a first peer router includes NAT resource
assignment information relating to selected global address assignments and
selected global port assignments allocated to selected peer routers. Id. at
4:14-18.
When a first packet relating to a flow between a private
network node and a public network node is received a[t] the
first peer router, the first peer router may dynamically allocate a
selected global address and a selected global port for the flow
using information from the Peer Resource Assignment Table.
A first NAT entry may be created and associated with the flow.
According to a specific embodiment, the first NAT entry may
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include information relating to the selected global address and
the selected global port allocated for the flow. At least one
NAT Entry Update message [Fig. 6A], which includes
information relating to the first NAT entry, may then be sent to
at least one other peer router.
Id. at 4:23-30.
Figure 2 of Biswas is reproduced in part below.

Figure 2 shows a specific embodiment of a NAT Entry Management Flow
for implementing various aspects of Biswas’s invention. Id. at 6:9-11.
Initially, it is assumed that an ingress-to-egress packet (at 1) is to be sent
from a node inside the private network (e.g., node H1, 102a) to a node
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external to the private network (e.g., node N1, 112a). Id. at 6:14-17. The
active NAT router (NAT1, 104a) then creates (at 3) a NAT entry for the
traffic flow associated with the received packet. Id. at 6:22-23. The
information contained in the NAT entry can include, for example, network
address translation information, session information, application specific
information, etc. Id. at 6:23-27. The created NAT entry includes
information relating to the global address and global port assigned by NAT1
to that particular flow. Id. at 13:59-61. Active NAT router NAT1 (104a)
next sends to standby NAT router (NAT2, 104b) a NAT Entry message (at
5) that includes information relating to the Router ID and NAT Entry ID
associated with the newly created NAT entry. Id. at 7:2-6. Upon receiving
the NAT Entry message, standby NAT router NAT2 (104b) creates (at 7) a
NAT entry in its local NAT Table using information from the received NAT
Entry message. Id. at 7:7-9.
Biswas’s Figure 5, on which the anticipation rejection specifically is
based, is reproduced below.
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Figure 5 shows an embodiment of a private network 500 that can be
configured to provide asymmetric traffic flow for egress-to-ingress packets
and ingress-to-egress packets. Id. at 10:48-51. In this embodiment, private
network 500 includes a plurality of peer NAT routing devices 504a-c, each
of which is configured to take over the functionality of one or more of the
other peer NAT routers in case of failovers or for other reasons. Id.
at 10:51-55.
As shown in Figure 5, each of peer NAT routers 504a-c is configured
to implement (i.e., in an active or a standby capacity) a plurality of HSRP
groups 509a-c. Id. at 10:58-60. Each of these different HSRP groups can be
associated with one or more virtual IP addresses 513 within the private
network. Id. at 10:60-62. For example, Figure 5 shows HSRP Groups 1-3
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(509a-c) respectively associated with virtual IP addresses 10.1.1.1, 10.1.1.2,
and 10.1.1.3. Id. at 10:63-67. These virtual IP addresses, which are the
private network addresses of the routers, are associated with the hosts/nodes
502a-c as follows: “Each host or node (502a, 502b, 502c) within the private
network may be configured to utilize a particular virtual IP address as its
primary gateway 503.” Id. at 11:16-18. Figure 5 shows hosts 502a-c
configured to respectively utilize virtual IP addresses 10.1.1.1, 10.1.1.2, and
10.1.1.3 as their primary gateways 503. Id. at 11:20-24.
The Examiner reads claim 1’s first and second pools of addresses on
Biswas in two different ways. In the Final Action (at page 3, para. 7), the
Examiner adopted the anticipation rationale set forth at pages 6-11 of the
Request, which reads the recited “master device” and “back-up device” on
NAT routers 504a and 504b, respectively, and reads the “first pool of first
addresses” (owned by the master device) on HSRP Group 1 (509a):
Figure 5 . . . discloses that NAT routing device 504b (the
claimed back-up device) shares with a NAT routing device
504a (the claimed master device) a virtual IP address (the
claimed base address) corresponding to an “HSRP Group 1
(509a)” (the claimed first pool of first addresses) that is owned
by NAT routing device 504a [i.e., the claimed master device].
Request 7, limitation 1.2.
The Request in discussing (at 8-9, limitation 1.3) claim 1’s third
paragraph (“perform network address translation (NAT) and routing, by said
back-up device, for a second pool of second addresses while said master
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device is active”), reads (at 8) the recited “second pool of second addresses”
on HSRP Group 2 (509b) and quotes (at 9) the following passage of Biswas:
For example, according to one implementation, each peer NAT
router may be assigned a different range of addresses and ports
from a common NAT pool to be used for performing NAT
operations handled by that peer NAT router.
Biswas 11:41-44 (our emphasis). Because claim 1’s third paragraph recites
performing NAT, we understand the Request’s position to be that a NAT
router performs a NAT operation when translating the router’s virtual IP
(i.e., private network) address to a global address (i.e., an address in the
router’s global address range).
Appellant argues that the Examiner erred in reading the recited first
and second pools of addresses on Biswas’s virtual IP addresses (i.e., private
network addresses) because they are not global outside IP addresses:
The passages of Biswas . . . relied on by the Examiner
never disclose translating an address for a pool of addresses.
The passages . . . only disclose that a host utilizes or is assigned
a virtual IP address (e.g., 10.1.1.1) as its primary gateway.
There is no disclosure of translating an address to one of the
addresses in a pool or translating one of the addresses in the
pool. . . .
The specification of the ‘427 patent specifically states
that “[t]he NAT addresses in the pool are the global outside IP
addresses to which the internal IP addresses are translated.”
‘427 patent at col. 4, lines 13-15. The specification and claims
require[] the NAT device [to] translate the source address by
translating an internal address to one of the global addresses
contained in a pool of global addresses (for an outgoing server-
to-client packet) or translating a global address contained in a
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pool of global addresses to one of the internal addresses (for an
incoming client-to-server packet). See ‘427 patent at col. 4,
lines 13-15; col. 4, lines 15-22; col. 4, lines 57-60; col. 5, lines
32-35; col. 6, lines 25-28; col. 7, lines 35-42.
Appeal Br. 21 (emphasis added).
This argument is unpersuasive because the claim language, when
given its broadest reasonable interpretation, does not require the recited first
or second “pool” of addresses to be a pool of global addresses. “[D]uring
reexamination, claims are given the broadest reasonable interpretation
consistent with the specification and limitations in the specification are not
read into the claims (In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed.
Cir. 1984)).” See also Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed.
Cir. 2005) (en banc) (“[A]lthough the specification often describes very
specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments. . . . In particular, we have
expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to
that embodiment.”).
Furthermore, as pointed out in the Answer (at 11), Appellant’s
proposed narrower claim interpretation reads on Biswas’s above-quoted
description of assigning global address ranges to the routers. Biswas 11:41-
44 (quoted in Request 9). Biswas further explains:
According to one implementation, the NAT resources (e.g.,
global address ranges, global port ranges) may be statically
provisioned to each of the peer NAT routers as part of the local
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configuration information stored at each peer NAT router. In
an alternate implementation, each of the peer NAT devices may
be dynamically assigned or allocated NAT resources from a
common NAT pool.
Biswas 11:45-51 (emphasis added). This global address range feature is
depicted in Biswas’s Figures 7A and 7B, which are reproduced below.

Figure 7A depicts an example of a local peer resource assignment table that
has been generated using information from Elect Master messages. Id. at
12:37-39. Peer Resource Assignment Table 700 include separate entries
701a-c corresponding to each (or selected ones) of on-line peers 504a-c. Id.
at 12:40-43. Figure 7B shows an updated Peer Resource Assignment Table
750 that also includes the following information for each on-line peer:
current master information 708, global address information (e.g., global
address ranges) 710 allocated to each respective on-line peer, and the global
port information (e.g., global port ranges) 712 allocated to each respective
on-line peer. Id. at 13:30-36.
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The Examiner found that “the NAT routers of Biswas are utilized to
perform NAT operations (i.e. address translation) for addresses taken from a
pool of global address ranges, commensurate with the scope of the
limitations of claim 1.” Answer 11 (emphasis added). We understand the
Examiner to be reading the recited first and second pools of addresses on the
global address ranges assigned to active and standby routers, respectively.
Thus, router NAT1, in its capacity as the active router for HSRP Group 1,
will perform NAT between gateway address 10.1.1.1 (NAT1’s virtual IP
address in the private network) and an address in NAT1’s assigned pool of
global addresses.
Appellant’s response in the Reply Brief appears to be that Biswas fails
to describe performing NAT between the original host addresses and the
virtual IP addresses (i.e., private network addresses) of the routers:
The disclosure of Biswas relied on by the Examiner
never states that a pool of original addresses is translated.
Although Biswas discloses “each peer NAT router may be
assigned a different range of addresses and ports from a
common NAT pool to be used for performing NAT operations”,
the NAT operations never occur on the pool of original host
addresses in the private network. The hosts (e.g., H1, H2 and
H3) in the private network shown in Figure 5 of Biswas below
are preconfigured to utilize a particular virtual IP address as
the primary gateway. . . .
The host or node addresses in the private network of
Biswas are never translated. The host or node is preconfigured
at the host to utilize a particular gateway. Therefore, the host
addressees in a private network do not need to be translated,
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because the host itself is only preconfigured to use a particular
gateway. . . .
Biswas never discloses that the original host addresses in
the private network are translated. Therefore Biswas fails to
anticipate performing network address translation (NAT) for
the pool of addresses as recited in independent claims 1 and 11
and dependent claims 2 and 8.
Reply Br. 8-9 (emphasis added; footnote omitted; font altered). This
argument is unpersuasive because we do not understand the Examiner to be
reading the recited NAT on the relationship between the original host
addresses and the virtual IP addresses (i.e., private network addresses) of the
routers. Instead, the Examiner is reading the recited NAT function on the
translation that occurs (in both directions) between a NAT device’s virtual
IP (i.e., private network) address (e.g., 10.1.1.1) and a global address in its
assigned pool of global addresses. These NAT operations occur within a
router whether its global address range was assigned thereto statically or
dynamically. Consequently, we also do not agree with Appellant’s
following argument:
Biswas discloses that the global address ranges are
statically provisioned to each peer NAT router as part of a local
configuration. Biswas never discloses that the global address
ranges are translated.
Id. at 9.
During oral argument in the related inter partes reexamination
appeals, Appellant also argued that Biswas fails to describe the claimed
“base address corresponding to a first pool of first addresses” (claim 1):
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21 And then the other thing I wanted to mention on
22 Biswas is that it does have those global address ranges, Your
23 Honor, but Biswas never talks about the base address
24 corresponding to those global address ranges.
25 And so while it might have the global address
31
1 range, it never describes, it never discusses using a base
2 address that corresponds to those address ranges.
Hr’g Tr. 31:21-32:2. This argument does not appear in a brief and therefore
is entitled to no consideration on the merits.
24

For the above reasons, the rejection of claims 1, 2, 8, and 11 for
anticipation is sustained.

C. Obviousness over Biswas in View of Li (Claim 3) (Appeal Br. 23
sec. IV.I)
Appellant treats the obviousness rejection of dependent claim 3 as
standing or falling with the anticipation rejection of parent claim 1, which

24
See 37 C.F.R. § 41.73(e)(1) (2013) (“At the oral hearing, each appellant
and respondent may only . . . present argument that has been relied upon in
the briefs except as permitted by paragraph (e)(2) of this section.”). See also
MPEP § 1205.02 (rev. 9 Aug. 2012) (“[A]rguments not presented in the
brief or reply brief and made for the first time at the oral hearing are not
normally entitled to consideration.”) (citing In re Chiddix, 209 USPQ 78
(Comm’r Pat. 1980) and Rosenblum v. Hiroshima, 220 USPQ 383 (Comm’r
Pat. 1983)). “The purpose of oral argument at final hearing is to emphasize
and clarify written argument in the brief.” Rosenblum, 220 USPQ at 384.
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we have sustained. Appeal Br. 23. The rejection of claim 3 for obviousness
over Biswas in view of Li accordingly is sustained.

D. Obviousness over Biswas in View of Zwieback (Claims 8 and 11)
(Appeal Br. 29-30 sec. IV.K)

Because we have sustained the rejection of claims 8 and 11 for
anticipation by Biswas, we also sustain the rejection of these claims for
obviousness over Biswas in view of Zwieback.
25
“[A]nticipation is the

25
This rejection of claims 8 and 11 was not proposed in the Request (filed
June 27, 2011) in this ex parte proceeding. Instead, it was initially described
at pages 55-61 (including some improperly shaded text) of the November 4,
2011, Request for Inter Partes Reexamination of the ’427 patent in
reexamination proceeding 95/001,803 (the subject of the ’493 Inter Partes
Appeal). In this ex parte proceeding, this rejection was initially made in the
Non-Final Office Action mailed February 15, 2012, which at page 4,
paragraph 4 relies on Zwieback as follows:
[T]o the extent that Biswas does not explicitly disclose what
type of failure with respect to “HSRP Group 1 509a” would
result in ownership of “HSRP Group 1 509a” changing from
NAT routing device 504a to NAT routing device 504b, those
features would have been obvious. Zwieback, for example,
discloses that “[a] router can be configured to constantly
monitor its physical interfaces . . . , and in case any of them fail,
all the affected VRIDs [(Virtual Router Identifiers, each of
which is associated with a plurality of users)] are transferred to
[a] backup.” See Zwieback, pages 42-43. Zwieback therefore
discloses that, if there is a failure of a router with respect to any
address of a VRID, ownership of all affected addresses belongs
to a backup router.
(Continued on next page.)
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epitome of obviousness.” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir.
2002). Thus, Zwieback is cumulative to Biswas.

III. SUMMARY
This appeal is dismissed with respect to claims 4-6, whose sole
rejection (for obviousness over Biswas in view of Nair) was withdrawn at
page 3 of the Answer.
All of the Examiner’s remaining rejections, which are listed below,
are sustained:
1. Claims 1, 2, 8, and 11 under 35 U.S.C. § 102(e) for anticipation by
Biswas.
2. Claim 3 under 35 U.S.C. § 103(a) for obviousness over Biswas in
view of Li.
3. Claims 8 and 11 under 35 U.S.C. § 103(a) for obviousness over
Biswas in view of Zwieback.

IV. DECISION

(Brackets in original.)
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The Examiner’s decision that claims 1-3, 8, and 11 are unpatentable
over the prior art is affirmed.
AFFIRMED
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ack

For Appellant/Patent Owner:

SAN FRANCISCO OFFICE OF
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
1000 LOUISIANA STREET
FIFTY-THIRD FLOOR
HOUSTON TX 77002

For Third Party Requester:

TIMOTHY J. MAY
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