Ex Parte Joshi et al

Patent Trial and Appeal BoardMay 28, 2014

95001812 (P.T.A.B. May. 28, 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. 95/001,812 11/08/2011 Prajakta S. JOSHI 11517.0018-00000 1342 87916 7590 05/28/2014 2nd Reexam Group - Novak Druce + Quigg LLP 1000 Louisiana Street Fifty-Third Floor Houston, TX 77002 EXAMINER DESAI, RACHNA SINGH ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/28/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ______________ BROCADE COMMUNICATIONS SYSTEMS, INC., Patent Owner and Appellant v. A10 NETWORKS, INC., Requester ______________ Appeal 2014-001264 Reexamination Control No. 95/001,812 United States Patent 7,584,301 B1 1 Technology Center 3900 ______________ Before JOHN C. MARTIN, JOHN A. JEFFERY, and DAVID M. KOHUT, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 This patent (hereinafter “’301 patent”) issued on September 1, 2009, based on Application 10/839,919, filed on May 6, 2004. Claims 1, 2, 9, 15, 24, and 28 were canceled by Ex Parte Reexamination Certificate US 7,584,301 C1 (discussed infra), which issued on April 25, 2014. Appeal 2014-001264 Reexamination Control 95/001,812 Patent 7,584,301 B1 2 Brocade Communications Systems, Inc., (hereinafter “Appellant”) has appealed the Examiner’s rejections of claims 1-31 of the ’301 patent. Appeal Br. 3. 2 Although Requester A10 Networks, Inc. (hereinafter “A10 Networks”) filed a Respondent Brief on April 22, 2013, A10 Networks on June 13, 2013, withdrew from further participation in this proceeding. 3 Appellant filed a Rebuttal Brief 4 in response to the Examiner’s Answer, which was mailed on June 20, 2013. We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315. Inasmuch as claims 1, 2, 9, 15, 24, and 28 have been canceled by Ex Parte Reexamination Certificate US 7,584,301 C1 (Apr. 25, 2014), this appeal is dismissed with respect to these claims, leaving the rejections of only claims 3-8, 10-14, 16-23, 25-27, and 29-31 for our consideration. We AFFIRM. 2 Patent Owner’s Appeal Brief Pursuant to 37 C.F.R. § 41.67, filed on March 22, 2013. 3 The Notice of Withdrawal of Third Party Requester A10 Networks, Inc., states (at page 1): “A10 Networks, Inc. (‘A10’), has entered into a settlement agreement with the Patent Owner, Brocade Communications Systems, Inc., and as such is withdrawing from this proceeding. A10 will make no further comment or otherwise participate in the proceeding and further withdraws any pending petition and/or opposition A10 filed.” 4 Patent Owner’s Rebuttal Brief Pursuant to 37 C.F.R. § 41.71, filed on July 22, 2013. Appeal 2014-001264 Reexamination Control 95/001,812 Patent 7,584,301 B1 3 I. STATEMENT OF THE CASE A. This Inter Partes Reexamination Proceeding This inter partes reexamination proceeding was initiated by a Request for Inter Partes Reexamination (hereinafter “Request”), filed by A10 Networks on November 8, 2011. B. Related Litigation and Reexamination Proceedings The ’301 patent was the subject of litigation styled: Brocade Communications Systems, Inc. v. A10 Networks, Inc., Case No. 10-CV- 03428-LHK (N.D. Cal.). Appeal Br. 2. A petition 5 by Patent Owner to terminate this inter partes reexamination proceeding as a result of a final decision in the above- identified litigation was dismissed in a USPTO decision mailed August 30, 2013. 6 The aforementioned Ex Parte Reexamination Certificate US 7,584,301 C1 was issued in ex parte reexamination proceeding 90/011,765 (hereinafter “’765 ex parte proceeding”). In the ‘765 ex parte proceeding, reexamination was requested and granted with respect to independent claims 1, 15, 24 and dependent claims 2, 9, and 28. See Request 5 Patent Owner’s Petition Under 37 C.F.R. § 1.182 to Terminate the Reexamination Proceedings, filed July 10, 2013. 6 Decision Dismissing Petition to Terminate Inter Partes Reexamination Proceeding. Appeal 2014-001264 Reexamination Control 95/001,812 Patent 7,584,301 B1 4 for Ex Parte Reexamination, filed on July 27, 2011, at 1; Order Granting/Denying Ex Parte Reexamination, mailed on August 8, 2011, at 5. The cancelation of claims 1, 2, 9, 15, 24, and 28 by the reexamination certificate was based on a Board decision affirming a rejection of these claims under 35 U.S.C. § 102(b) for anticipation by 3-DNS Reference Guide, ver. 4.2 (2002) (hereinafter “3-DNS”). 7 See PTAB Appeal 2013-008244, Decision on Appeal (hereinafter “Ex Parte Decision”), mailed December 23, 2013, at 1, 16, 43 (identifying the reference as “Reference Guide”). The rejections before us in this inter partes proceeding are based on 3-DNS and the following references: Skene, 8 Delgadillo, 9 Config. Guide, 10 and Wang. 11 The following reexamination proceedings involve U.S. Patent 7,840,678 B2, which is a continuation of the ’301 patent: (1) Ex parte reexamination proceeding 90/011,763, in which Ex Parte Reexamination Certificate US 7,840,678 C1 (canceling independent claims 1, 11, and 15) issued on January 15, 2014; and 7 This reference is also identified in the Answer as “3DNS” (e.g., at page 3) and “3-DNS Ref Guide” (e.g., at page 9). 8 Bryan D. Skene, et al., US 7,441,045 B2, issued on October 21, 2008. 9 Kevin Delgadillo, Cisco DistributedDirector Cisco Systems (1999). See IDS (Information Disclosure Statement) filed with the Request. 10 Foundry ServerIron Installation and Configuration Guide (May 2000). See IDS filed with the Request. 11 Wei Wang, et al., US 7,584,262 B1, issued on September 1, 2009. Appeal 2014-001264 Reexamination Control 95/001,812 Patent 7,584,301 B1 5 (2) Inter partes reexamination proceeding 95/001,822, which is the subject of PTAB Appeal No. 2014-001644, in which a Decision on Appeal affirming an Examiner’s rejections of dependent claims 2-10, 12-14, and 16-19 was mailed on April 29, 2014. B. The Claims on Appeal Of the claims that remain on appeal (viz., claims 3-8, 10-14, 16-23, 25- 27, and 29-31), only claims 11 and 19 are independent claims. Claim 11, which is representative of these independent claims, reads as follows: 11. A method, comprising: associating, by a load balance switch, a first load balancing policy to a first domain associated with a first site switch, wherein said first load balancing policy specifies an order in which a first plurality of metrics of said first load balancing policy are to be applied; associating, by said load balance switch, a second load balancing policy to a second domain associated with a second site switch and different from said first domain; and using said first and second load balancing policies at said load balance switch to respectively rank addresses associated with said first and second domains, wherein said metrics of said first load balancing policy each include at least one parameter, wherein said at least one parameter includes at least one of a tolerance, limit, Appeal 2014-001264 Reexamination Control 95/001,812 Patent 7,584,301 B1 6 threshold, DNS parameter, preference, and alternative tie- breaker metric use. ’301 patent col. 12. 12 C. The Rejections The claims that remain on appeal stand rejected as follows: 1. Claims 3-8, 10-14, 16-23, 25-27, and 29-31 under 35 U.S.C. § 102(b), which are all of the claims on appeal, for anticipation by 3-DNS. See Right of Appeal Notice (RAN), mailed December 19, 2012, at 5 (Issue 1). 13 2. Claims 4-8, 11-13, 16, 18-23, 25, 30, and 31 under 35 U.S.C. § 102(e) for anticipation by Skene. Id. at 5 (Issue 2). 3. Claims 5-7, 10, 19, 21-23, 25, and 30 under 35 U.S.C. § 102(b) for anticipation by Delgadillo. Id. at 5 (Issue 3). 4. Claims 3-8, 10-14, 16-23, 25-27, and 29-31 under 35 U.S.C. § 103(a) for obviousness over Config. Guide in view of Wang. Id. at 6 (Issue 4). 12 Claim 1 as reproduced in the Claim Appendix (Appeal Br. 42) lacks the paragraph format used in the ’301 patent. 13 The RAN does not apply this ground of rejection to claims 1, 2, 9, 15, 24, and 28, which were rejected on this ground in the ’765 ex parte proceeding. Appeal 2014-001264 Reexamination Control 95/001,812 Patent 7,584,301 B1 7 II. DISCUSSION A. The Rejection for Anticipation by 3-DNS Appellant’s argument (Appeal Br. 15-17) that 3-DNS is not prior art with respect to the appealed claims is unpersuasive for the reasons given at pages 17-26 of the Ex Parte Decision, which are incorporated herein by reference. As explained below, Appellant does not argue that either of independent claims 11 and 19 is separately patentable with respect to (now canceled) independent claims 1, 15, and 24 insofar as anticipation by 3-DNS is concerned. Instead, Appellant argues all five of these independent claims as a group. Specifically, in arguing that “3-DNS does not anticipate associating a load balancing policy with a domain or applying the load balancing policy to rank addresses of a domain as recited in claims 1, 11, 15, 19 and 24” (Appeal Br. 17, heading 4 (bold font omitted)), Appellant argues the relevant limitations of all five of these claims as a group as follows: At least the following analogous limitations recited in independent claims 1, 11, 15, 19 and 24 are not anticipated by 3- DNS: Claim 1: a first load balancing policy associated with a first domain and a second load balancing policy associated with a second domain different from the first domain . . . and load balancing traffic, by said load balance switch, to network addresses associated with the first and second domains, using corresponding said first and second load balancing Appeal 2014-001264 Reexamination Control 95/001,812 Patent 7,584,301 B1 8 policies that are respectively associated to the first and second domains Claim 11: a first load balancing policy to a first domain associated with a first site switch . . . a second load balancing policy to a second domain associated with a second site switch and different from said first domain . . . using said first and second load balancing policies at said load balance switch to respectively rank addresses associated with said first and second domains Claim 15: associating, by said load balance switch, a first load balancing policy to a first domain associated with a first site switch . . . associating, by said load balance switch, a second load balancing policy to a second domain associated with a second site switch and different from said first domain . . . and using said first and second load balancing policies by the load balance switch to respectively rank addresses associated with said first and second domains Claim 19: storing a plurality of load balancing polices that are respectively associated to a plurality of domains . . . means in said load balance switch for load balancing traffic to network addresses associated with each domain based on at least one of said metrics of a respective one of said load balancing policies respectively associated to each domain Claim 24: a first storage unit to store a plurality of load balancing policies, which are to be applied by said load balance switch to rank addresses of different domains . . . and a controller coupled to the first storage unit to use a respective one of said stored Appeal 2014-001264 Reexamination Control 95/001,812 Patent 7,584,301 B1 9 load balancing policies to rank addresses of each one of said domains Appeal Br. 17-18 (alterations in original). Similarly, in arguing that “3-DNS cannot simultaneously disclose both a load balancing policy and a domain as recited in claims 1, 11, 15, 19 and 24” (id. at 24, heading 5 (bold font omitted)), Appellant argues the relevant limitations of all five of these claims as a group as follows: At least the following analogous limitations recited in independent claims 1, 11, 15, 19 and 24 are not anticipated by 3- DNS: Claim 1: a first load balancing policy associated with a first domain and a second load balancing policy associated with a second domain different from the first domain . . . Claim 11: a first load balancing policy to a first domain associated with a first site switch . . . a second load balancing policy to a second domain associated with a second site switch and different from said first domain Claim 15: associating, by said load balance switch, a first load balancing policy to a first domain associated with a first site switch . . . associating, by said load balance switch, a second load balancing policy to a second domain associated with a second site switch and different from said first domain Claim 19: storing a plurality of load balancing polices that are respectively associated to a plurality of domains Appeal 2014-001264 Reexamination Control 95/001,812 Patent 7,584,301 B1 10 Claim 24: a first storage unit to store a plurality of load balancing policies, which are to be applied by said load balance switch to rank addresses of different domains Id. at 24 (alterations in original). Although Appellant has separately argued the phrase “associating, by said load balance switch” in (canceled) independent claim 15 (id. at 25), Appellant does not separately argue any specific language in independent claim 11 or 19. 14 The rejection of independent claims 11 and 19 for anticipation by 3-DNS is therefore sustained for the same reasons that the rejection of (canceled) claims 1, 15, and 24 on this ground was sustained at pages 26-43 of the Ex Parte Decision. Appellant when discussing of the rejection for anticipation by 3-DNS does not separately argue the merits of the dependent claims. Instead, Appellant concludes each of the arguments for the patentability of 14 Appellant’s argument regarding claim 15 reads as follows: The fact that the domain and load balancing policy are separate is even more evident when looking at the claims. For example, in claim 15, the step of “associating, by said load balance switch” is performed by the load balancing switch, which requires that the load balancing policy and domain are separately defined before they are associated. Appeal Br. 25. The same argument was made in the ’765 ex parte proceeding and found to be unpersuasive for the reasons given at page 41 of the Ex Parte Decision. Appeal 2014-001264 Reexamination Control 95/001,812 Patent 7,584,301 B1 11 independent claims 1, 11, 15, 19, and 24 over 3-DNS with the following statement: “Therefore, the Examiner erred by maintaining the rejections of claims 3-8, 10-14, 16-23, 25-27 and 29-31 under 35 U.S.C. § 102(b) as being anticipated by 3-DNS.” Appeal Br. 23, 26. Consequently, we are sustaining the rejection of the dependent claims for anticipation by 3-DNS for the same reasons that we sustained this ground of rejection with respect to (canceled) independent claims 1, 15, and 24 in the Ex Parte Decision (at pages 26-43), which are also the reasons relied on supra to sustain this rejection with respect to independent claims 11 and 19. Thus, we have sustained the rejection for anticipation by 3-DNS with respect to claims 3-8, 10-14, 16-23, 25-27, and 29-31, which are all of the claims remaining on appeal. B. The Other Grounds of Rejection Because we have sustained the rejection for anticipation by 3-DNS with respect to all of the claims remaining on appeal, it is not necessary to consider the merits of the other grounds of rejection. III. SUMMARY We have dismissed this appeal with respect to claims 1, 2, 9, 15, 24, and 28, which were canceled by Ex Parte Reexamination Certificate US 7,584,301 C1 (Apr. 25, 2014). Appeal 2014-001264 Reexamination Control 95/001,812 Patent 7,584,301 B1 12 We have sustained the Examiner’s rejection of claims 3-8, 10-14, 16- 23, 25-27, and 29-31, which are all of the claims that remain on appeal, for anticipation by 3-DNS. We therefore found it unnecessary to decide the merits of the following rejections: 1. Claims 4-8, 11-13, 16, 18-23, 25, 30, and 31 under 35 U.S.C. § 102(e) for anticipation by Skene. 2. Claims 5-7, 10, 19, 21-23, 25, and 30 under 35 U.S.C. § 102(b) as for anticipation by Delgadillo. 3. Claims 3-8, 10-14, 16-23, 25-27, and 29-31 under 35 U.S.C. § 103(a) for obviousness over Config. Guide in view of Wang. IV. DECISION The Examiner’s decision that claims 3-8, 10-14, 16-23, 25-27, and 29- 31 are unpatentable over the prior art is affirmed. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2014-001264 Reexamination Control 95/001,812 Patent 7,584,301 B1 13 alw For Patent Owner/Appellant: 2ND REEXAM GROUP - NOVAK DRUCE + QUIGG LLP 1000 LOUISIANA STREET FIFTY-THIRD FLOOR HOUSTON TX 77002 For Third Party Requester: Timothy J. May FINNEGAN, HENDERSON, FARABOW, GARRETT AND DUNNER, LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413