Cisco Systems, Inc.v.Constellation Technologies LLC

Patent Trial and Appeal Board

Feb 4, 2015

09603355 (P.T.A.B. Feb. 4, 2015)

Trials@uspto.gov Paper 7
571-272-7822 Entered: February 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CISCO SYSTEMS, INC.,
Petitioner,

v.

CONSTELLATION TECHNOLOGIES LLC,
Patent Owner.
____________

Case IPR2014-01179
Patent 6,901,048 B1
____________

Before MICHAEL R. ZECHER, TREVOR M. JEFFERSON, and
PATRICK R. SCANLON, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner, Cisco Systems, Inc. (“Cisco”), filed a Petition (“Pet.”)
requesting an inter partes review of claims 1–36 of U.S. Patent No.
6,901,048 B1 (“the ’048 patent,” Ex. 1001). Paper 2. Patent Owner,
Constellation Technologies LLC (“Constellation”), timely filed a
Preliminary Response (“Prelim. Resp.”). Paper 6. We have jurisdiction
under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a), which provides:
THRESHOLD.—The Director may not authorize an inter
partes review to be instituted unless the Director determines
that the information presented in the petition filed under section
311 and any response filed under section 313 shows that there
is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
Taking into account the arguments presented in Constellation’s
Preliminary Response, we conclude that the information presented in the
Petition does not establish that there is a reasonable likelihood that Cisco
will prevail in challenging claims 1–36 of the ’048 patent as unpatentable
under 35 U.S.C. § 103(a). We, therefore, deny the Petition.
A. Related Matters
The parties indicate that the ’048 patent is involved in the following
proceedings: (1) Charter Commc’ns., Inc. v. Rockstar Consortium US LP,
No. 1-14-cv-00055 (D. Del.); (2) Constellation Techs. LLC v. Time Warner
Cable Inc., No. 2-13-cv-01079 (E.D. Tex.); (3) Bockstar Techs. LLC v.
Cisco Systems, Inc., No. 1-13-cv-02020 (D. Del.); and (4) In Re:
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Constellation Techs. LLC Patent Litig., MDL No. 2558, United States
Judicial Panel On Multidistrict Litigation. Pet. 1; Paper 4, 2–3. In addition
to this Petition, Cisco filed five other Petitions challenging the patentability
of a certain subset of claims in the following patents owned by
Constellation: (1) U.S. Patent No. 6,845,389 B1 (Cases IPR2014-00871 and
IPR2014-01085); (2) U.S. Patent No. 8,134,917 B2 (Case IPR2014-00911);
(3) U.S. Patent No. 8,464,299 B1 (Case IPR2014-00914); and (4) U.S.
Patent No. 7,154,879 B1 (Case IPR2014-01180).
B. The ’048 Patent
The ’048 patent, titled “Link-Level Protection of Traffic in a Packet-
Switched Network,” issued May 31, 2005, from U.S. Patent Application
No. 09/603,355, filed June 26, 2000. Ex. 1001, at [54], [45], [21], and [22].
The ’048 patent is a continuation-in-part of U.S. Patent Application No.
09/378,141, filed on Aug. 20, 1999, now U.S. Patent No. 6,535,481. Id. at
[63].
The ’048 patent generally relates to a computer network that provides
automatic protection switching to re-route data packets in the event of a
network link failure. Ex. 1001, 1:15–18. According to the ’048 patent, the
time taken by a network node to detect a failure is known as the “‘detection
time,’” whereas the time taken by all network nodes to converge to an
alternate route is known as the “‘hold-down time.’” Id. at 2:5–8. These
times may vary depending on the routing algorithm used to calculate an
alternative route. Id. at 2:8–9. The time it takes to calculate an alternative
route does not account for the additional delay due to congestion on all
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network nodes or links encountered in the alternate route. Id. at 2:13–16.
As such, the ’048 patent discloses that there is a need in the industry of
computer networks for a protection switching mechanism that is fast enough
to prevent the loss of high-priority traffic ordinarily traveling through one or
more failed network links, without unpredictably overloading the remaining
operational network links during a protection mode. Id. at 2:47–51.
The ’048 patent purportedly addresses this need by providing a
method and router for routing packets, which results in faster automatic
protection switching of traffic that ordinarily travels across a network link
that recently was found to have failed. Ex. 1001, 2:54–58. The ’048 patent
accomplishes this through the use of datagram encapsulation in combination
with the concept of protection paths, otherwise known as protection cycles
or “‘p-cycles,’” in a packet-switched environment. Id. at 2:61–65. Each
protection path consists of a closed loop passing through network nodes
across network links. Id. at 2:65–66. Network links that are part of the
protection paths, or network links whose end nodes are part of a given
protection path, are protected by that protection path. Id. at 2:66–3:2.
Figure 1 of the ’048 patent, reproduced below, illustrates a computer
network that uses Multi-Protocol Label Switching (“MPLS”) protection
cycles to achieve automatic protection switching. Ex. 1001, 4:20–22, 5:28–
30.
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As shown in Figure 1, network nodes P10 through W17 are linked
normally via the dashed lines that route data packets from node to node. Id.
at 5:30–32. In addition, Figure 1 shows that the network links between P10
and T14, P10 and U15, Q11 and S13, Q11 and T14, and W17 and U15 also
are protected by p-cycle 18 (represented in Figure 1 by the solid line that
passes through each of the aforementioned network links). Id. at 5:32–35.
P-cycle 18 forms a loop through the network so that a data packet sent
through the p-cycle eventually will come back to its origination network
node if it is not taken out of the p-cycle by one of the network nodes it
passes through. Id. at 5:35–38.
C. Illustrative Claim
Of the challenged claims, claims 1, 13, 20, 26, and 30 are the only
independent claims. Claims 2–12 directly or indirectly depend from
independent claim 1; claims 14–19 directly or indirectly depend from
independent claim 13; claims 21–25 directly or indirectly depend from
independent claim 20; claims 27–29 directly or indirectly depend from
independent claim 26; and claims 31–36 directly or indirectly depend from
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independent claim 30. Independent claim 1 is illustrative of the challenged
claims and is reproduced below:
1. A method for routing packets intended to be
transmitted across a network link protected by a protection path
defined by a closed loop of nodes and links through the
network, the method comprising the steps of:
determining whether the protected link has failed; and if
the protected link has not failed, sending the packets across the
protected link; otherwise, encapsulating the packets within
tunnel packets and sending the tunnel packets along the
protection path; and
wherein each packet comprises a header specifying the
identity of a source node and a destination node associated with
the packet and the source and destination nodes associated with
each tunnel packet correspond to the nodes at either end of the
protected link.

Ex. 1001, 17:12–25.
D. Prior Art Relied Upon
Cisco relies upon the following prior art references:
Grover US 6,914,880 B1 July 5, 2005 Ex. 1006
(“Grover ’880”) (filed May 19, 1999)
Swallow US 6,751,190 B1 June 15, 2004 Ex. 1012
(filed May 18, 1999)
Fee US 6,285,475 B1 Sept. 4, 2001 Ex. 1013
(filed Dec. 29, 1995)
Chan US 6,301,254 B1 Oct. 9, 2001 Ex. 1014
(filed Mar. 15, 1999)
Teraslinna US 5,623,492 Apr. 22, 1997 Ex. 1015

Applicant’s Admitted Prior Art (“AAPA”)—Ex. 1001, 9:42–60
(citing Grover et al., U.S. Patent No. 5,850,505, issued Dec. 15, 1998).

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Wayne D. Grover & Demetrios Stamatelakis, Cycle-Oriented
Distributed Preconfiguration: Ring-like Speed with Mesh-like Capacity
for Self-planning Network Restoration, IEEE INTERNATIONAL
CONFERENCE ON COMMUNICATION 537–43 (1998) (Ex. 1007, “Grover
1998”).

C. Perkins, IP Encapsulation within IP, Network Working Group,
Request for Comment: 2003, 1–14 (Oct. 1996) (Ex. 1008, “RFC 2003”).

J. Reynolds & J. Postel, Assigned Numbers, Network Working Group,
Request for Comments: 1700, 1–230 (Oct. 1994) (Ex. 1009, “RFC
1700”).

F. Baker ed., Requirements for IP Version 4 Routers, Network
Working Group, Request for Comments: 1812, 1–175 (June 1995)
(Ex. 1010, “RFC 1812”).

A. Conta & S. Deering, Generic Packet Tunneling in IPv6
Specification, Network Working Group, Request for Comments: 2473,
1–36 (Dec. 1998) (Ex. 1011, “RFC 2473”).

E. Asserted Grounds of Unpatentability
Cisco challenges claims 1–36 of the ’048 patent based on the asserted
grounds of unpatentability set forth in the table below. Pet. 9–59.

References Basis Challenged Claims
Grover ’880, AAPA, Grover 1998, and
RFC 2003
§ 103(a) 1, 11, 12, 20–22, 25, 26,
29, 30, and 34
Grover ’880, AAPA, Grover 1998,
RFC 2003, and RFC 1700
§ 103(a) 2–4, 23, 24, 27, and 28
Grover ’880, AAPA, Grover 1998,
RFC 2003, RFC 1700, and RFC 2473
§ 103(a) 5
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References Basis Challenged Claims
Grover ’880, AAPA, Grover 1998,
RFC 2003, and RFC 1812
§ 103(a) 13–16, 19, 23, and 36
1

Grover ’880, AAPA, Grover 1998,
RFC 2003, RFC 1812, and RFC 1700
§ 103(a) 17, 18, and 35
Grover ’880, AAPA, Grover 1998,
RFC 2003, RFC 1812, and Fee
§ 103(a) 6 and 7
Grover ’880, AAPA, Grover 1998,
RFC 2003, and Chan
§ 103(a) 31
Grover ’880, AAPA, Grover 1998,
RFC 2003, RFC 1812, and Chan
§ 103(a) 8–10
Grover ’880, AAPA, Grover 1998,
RFC 2003, and Swallow
§ 103(a) 32
Grover ’880, AAPA, Grover 1998,
RFC 2003, Swallow, and Teraslinna
§ 103(a) 33

II. ANALYSIS
A. Claim Construction
Cisco proposes a claim construction for each of the following claim
terms or phrases: (1) “encapsulated/encapsulating” (all challenged claims);
(2) “tunnel packet” (all challenged claims); (3) “protection path” (all
challenged claims); (4) “routing protocol” (claim 31); (5) “protection cycle
packet manager” (claims 30–36); (6) “packeter” (claims 30–36); (7) “ATM

1
Although Cisco omits dependent claim 36 in the statement of the ground of
unpatentability (Pet. 37), Cisco nonetheless includes dependent claim 36 in
the corresponding analysis (id. at 45–46). We will treat the incorrect
statement of the ground of unpatentability as a typographical error and
presume Cisco intended to assert that claims 13–16, 19, 23, and 36 are
unpatentable under 35 U.S.C. § 103(a) over the combination of Grover ’880,
AAPA, Grover 1998, RFC 2003, and RFC 1812.
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VCC and ATM VPC” (claim 10); and (8) “logical layer” (claims 8–10).
Pet. 5–9. With the exception of the claim phrases “ATM VCC and ATM
VPC” (claim 10), Constellation only presents arguments directed to why the
claim constructions identified by Cisco in its Petition should not be adopted
for purposes of this decision. Prelim. Resp. 15–22. Constellation does not
propose alternative claim constructions for each of the claim phrases
reproduced above. Id.
We need not assess the claims constructions for the claim terms or
phrases identified by Cisco in its Petition and opposed by Constellation in its
Preliminary Response because, as we discuss below, the dispositive issue in
this proceeding is whether Cisco has provided a sufficient rationale to
combine RFC 2003 with the teachings of Grover ’880, AAPA, and Grover
1998.
B. Obviousness Based, in Whole or in Part, on the Combination of
Grover ’880, AAPA, Grover 1998, and RFC 2003
The grounds of unpatentability asserted by Cisco in its Petition are
each based, in whole or in part, on the combination of Grover ’880, AAPA,
Grover 1998, and RFC 2003. Pet. 12–59. Cisco explains how the various
combinations of cited prior art references teach the claimed subject matter of
each challenged claim and relies upon the Declaration of Dr. Leonard J.
Forys (Ex. 1004 ¶¶ 101–92) to support its positions. Id. We have
considered Cisco’s explanations and supporting evidence, but we are not
persuaded that Cisco has presented a sufficient rationale to combine RFC
2003 with the teachings of Grover ’880, AAPA, and Grover 1998.
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We begin our analysis with the principles of law that generally apply
to a ground of unpatentability based on obviousness, followed by a brief
discussion of RFC 2003, and then we address the parties’ contentions
regarding whether Cisco has presented a sufficient rationale to combine RFC
2003 with the teachings of Grover ’880, AAPA, and Grover 1998.
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR, 550 U.S. at 418. Instead, a determination of
unpatentability on a ground of obviousness must include “‘articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.’” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The obviousness evaluation “should be made explicit” and it “can be
important to identify a reason that would have prompted a person of
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ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” Id. We analyze each ground of
unpatentability with the principles identified above in mind.
2. RFC 2003
RFC 2003 is a “Request for Comment” memorandum dated October
1996 from the Network Working Group that addresses an Internet standards
track protocol for the Internet Community. Ex. 1008, 1. In particular, RFC
2003 discloses a method by which an Internet Protocol (“IP”) datagram may
be encapsulated, or carried as payload, within an IP datagram. Id.
Encapsulation is suggested as a means to alter the normal IP routing for
datagrams by delivering them to an intermediate destination node that would
otherwise not be selected based on the IP destination address field in the
original IP header. Id. When the encapsulated datagram arrives at the
intermediate destination node, it is decapsulated, which, in turn, yields the
original IP datagram. Ex. 1008, 1. The original IP datagram then is
delivered to the destination indicated by the original destination address
field. Id. According to RFC 2003, this use of encapsulation and
decapsulation of a datagram frequently is referred to as “‘tunneling’” the
datagram, and both the encapsulator and decapsulator are considered to be
the “‘endpoints’” of the tunnel. Id.
3. Rationale to Combine RFC 2003 with the Teachings of
Grover ’880, AAPA, and Grover 1998
Cisco relies upon essentially the same rationale to combine RFC 2003
with the teachings of Grover ’880, AAPA, and Grover 1998 for each of
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independent claims 1, 13, 20, 26, and 30. See Pet. 16–17, 23–25, 27–28, 30,
and 39–43. Our analysis below focuses solely on Cisco’s rationale to
combine RFC 2003 with the teachings of Grover ’880, AAPA, and Grover
1998 to satisfy the limitations of independent claim 1.
With respect to independent claim 1, specifically the limitation of
“encapsulating the packets within tunnel packets” in the event that the
protected link has failed, Cisco states that “[i]t would have been obvious to
encapsulate packets within tunnel packets using the technique of RFC
2003.” Pet. 20 (citing Ex. 1004 ¶¶ 71, 72.) Regarding the limitation of “the
source and destination nodes associated with each tunnel packet correspond
to the nodes at either end of the protected link,” Cisco asserts that “[t]hose of
skill in the art would have recognized the advantage of using RFC 2003’s
tunnel packet when routing packets over the p-cycle of Grover ’880. Id. at
22 (citing Ex. 1004 ¶¶ 76, 77.)
To support combining RFC 2003 with the teachings of Grover ’880,
AAPA, and Grover 1998, Cisco further contends that:
One of skill in the art would have known that simpler,
standards-based approaches existed for tunneling packets along
alternative routes. For examples, RFC 2003 teaches the
encapsulation of IP packets and sending them along a tunnel
whose endpoints are known. Ex. 1008 at 1. . . . RFC 2003
further teaches that the encapsulating packet is also an IP
packet. Ex. 1008 at 1. Thus, in the IP-in-IP encapsulation of
RFC 2003, each of the intervening routers between the
encapsulator and the decapsulator need only treat the
encapsulating packet in the same fashion the intervening router
would handle another IP packet the intervening router is asked
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to route and would obviate the special packet handling
described by Grover ’880. Ex. 1004 ¶¶ 115–18.
One of ordinary skill in the art would have further
recognized that by locating the encapsulator and decapsulator of
RFC 2003 at the respective ends of a failed link, that the
alternate path of the tunnel created by RFC 2003 could be used
to implement the alternative path around a failed link
characterized by the p-cycle of Grover 1998. Thus, RFC 2003
provides a simpler, standards-based approach to implementing
Grover ’880’s p-cycles for link protection.

Pet. 16–17.
In response, Constellation contends that Cisco engages in
impermissible hindsight reconstruction by piecing together teachings from
Grover ’880, AAPA, Grover 1998, and RFC 2003 to arrive at the claimed
invention. Prelim. Resp. 43. In particular, Constellation argues that Cisco
and its expert witness, Dr. Forys, relies upon conclusory statements to
combine RFC 2003 with the teachings of Grover ’880, AAPA, and Grover
1998. Id. at 43–45, 47. Constellation further argues that Cisco does not
explain adequately why one of ordinary skill in the art would have looked to
RFC 2003’s IP-in-IP encapsulation techniques to address network link
failures. Id. at 44.
We agree with Constellation that Cisco’s rationale to combine RFC
2003’s IP-in-IP encapsulation techniques with the teachings of Grover ’880,
AAPA, and Grover 1998 is predicated on conclusory statements. See
Prelim. Resp. 43–43, 47. For instance, Cisco’s assertions that “[i]t would
have been obvious to encapsulate packets within tunnel packets using the
technique of RFC 2003” (Pet. 20), “[t]hose of skill in the art would have
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recognized the advantage of using RFC 2003’s tunnel packet when routing
packets over the p-cycle of Grover ’880” (id. at 22), and “RFC 2003
provides a simpler, standards-based approach to implementing Grover
’880’s p-cycles for link protection” (id. at 17), are nothing more than
conclusory statements. It is well settled that obviousness cannot be
sustained by mere conclusory statements. Kahn, 441 F.3d at 998
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements”) (quoted with approval in KSR, 550 U.S. at 418). In
our view, what is missing from Cisco’s obviousness evaluation is a
convincing rationale as to why one of ordinary skill in the art would have
looked to RFC 2003’s IP-in-IP encapsulation techniques when considering
how to implement an alternative route, through the use of a protection path
or p-cycle, in the event of a network link failure.
We also are not persuaded by the supporting testimony of Dr. Forys.
With respect to paragraphs 71, 72, 76, and 77 of Dr. Forys’ Declaration,
these paragraphs simply address Cisco’s proposed claim construction for the
claim terms “encapsulated/encapsulating” and “tunnel packet.” They do not
address why one of ordinary skill in the art would have looked to RFC
2003’s IP-in-IP encapsulation techniques when considering how to
implement an alternative route, through the use of a protection path or p-
cycle, in the event of a network link failure.
With respect to paragraphs 115 through 118 of Dr. Forys’ Declaration,
these paragraphs essentially repeat the arguments advanced by Cisco on
pages 16 and 17 of the Petition. Similar to the obviousness evaluation
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offered by Cisco in its Petition, we agree with Constellation that Dr. Forys’
supporting testimony in this regard is predicated on conclusory statements.
See Prelim. Resp. 45. For instance, Dr. Forys testifies that:
Thus, in the IP-in-IP encapsulation of RFC 2003, each of the
intervening routers between the encapsulator and the
decapsulator need only treat the encapsulating packet in the
same fashion the intervening router would handle any other IP
packet the intervening router is asked to route. This is
consistent with the approach of Grover 1998.

Ex. 1004 ¶ 118. Dr. Forys does not direct us to, nor can we find, a
disclosure in Grover 1998 that addresses encapsulation techniques, much
less the IP-in-IP encapsulation techniques disclosed in RFC 2003. Absent
some underlying facts or data to support this testimony, it is entitled to little,
if any, weight. See 37 C.F.R. § 42.65 (“Expert testimony that does not
disclose the underlying facts or data on which the opinion is based is entitled
to little or no weight.”).
Dr. Forys further testifies that:
One of ordinary skill in the art would have understood the
advantages of using the IP-in-IP encapsulation of RFC 2003 to
implement the p-cycles of Grover ’880 and Grover 1998 as the
routing of the encapsulating IP packets along the tunnel as
taught by RFC 2003 obviates the special packet handling
requirements imposed by the unmodified routing of Grover
’880 on the intervening routers of each p-cycle.

Ex. 1004 ¶ 118. Notably absent from this cited testimony is an explanation
of how the teachings of the Grover ’880, AAPA, Grover 1998, and RFC
2003 might be combined to arrive at the claimed invention, e.g., by
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combining and applying specific teachings of RFC 2003 with Grover ’880,
AAPA, and Grover 1998 to account for all the features of the challenged
claims. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d
1312, 1328 (Fed. Cir. 2012) (“This testimony is generic and bears no
relation to any specific combination of prior art elements. It also fails to
explain why a person of ordinary skill in the art would have combined
elements from specific references in the way the claimed invention does.”).
Based on the record before us, Cisco has not demonstrated a
reasonable likelihood that it will prevail on its assertion that claims 1–36
would have been obvious over the various combinations of cited prior art
references that are based, in whole or in part, on the combination of Grover
’880, AAPA, Grover 1998, and RFC 2003.

III. CONCLUSION
Taking into account the arguments presented in Constellation’s
Preliminary Response, we conclude that the information presented in the
Petition does not demonstrate that there is a reasonable likelihood that Cisco
will prevail in challenging claims 1–36 of the ’048 patent as unpatentable
under 35 U.S.C. § 103(a).

IV. ORDER
In consideration of the foregoing, it is ORDERED that the Petition is
DENIED and no trial is instituted.
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For PETITIONER:
David L. McCombs
John Russell Emerson
Theodore M. Foster
Haynes and Boone, LLP
david.mccombs.ipr@haynesboone.com
russell.emerson.ipr@haynesboone.com
ipr.theo.foster@haynesboone.com

For PATENT OWNER:
Ellisen Turner
Irell & Manella LLP
eturner@irell.com
patents@irell.com