Ex Parte 7428573 et al

Patent Trial and Appeal Board

Mar 31, 2015

95002308 (P.T.A.B. Mar. 31, 2015)

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. 95/002,308 09/14/2012 7428573 25275-21691 8930 27683 7590 03/31/2015 HAYNES AND BOONE, LLP IP Section 2323 Victory Avenue Suite 700 Dallas, TX 75219 EXAMINER LEE, CHRISTOPHER E ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/31/2015 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 ____________ SILVER PEAK SYSTEMS, INC. Requester and Respondent, v. Patent of RIVERBED TECHNOLOGY, INC. Patent Owner and Appellant, ____________ Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 Technology Center 3900 ____________ Before BRADLEY W. BAUMEISTER, DENISE M. POTHIER, and ANDREW J. DILLON, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 2 I. STATEMENT OF CASE Silver Peak Systems, Inc. (Requester) made a third party request for inter partes reexamination of U.S. Patent No. 7,428,573 B2 (“the ’573 patent”) issued to Steven McCanne and Michael J. Demmer, entitled Transaction Accelerator for Client-Server Communications Systems, issued September 23, 2008, and assigned to Riverbed Technology, Inc. Both Patent Owner and Requester indicate that the ’573 patent is the subject of litigation, styled as Riverbed Technology Inc. v. Silver Peak Systems Inc., Civil No. 11-484-RGA (Del.). PO App. Br. 4; 3PR Resp. Br. 2. At oral hearing, Patent Owner indicated this proceeding has been stayed. Additionally, both Patent Owner and Requester indicate that the ’573 patent relates to U.S. Patent No. 7,849,134 B2, which is the subject of inter partes reexamination having been assigned Control No. 95/002,310. PO App. Br. 4; 3PR Resp. Br. 2. Patent Owner appeals from the decision in the Examiner’s Right of Appeal Notice (RAN) rejecting claims 1, 27, and 35 of the ’573 patent. The remaining claims are not subject to reexamination. PO App. Br. 5; RAN 1. Requester filed a responsive brief disputing the contentions by Patent Owner and supporting the Examiner’s decision. 3PR Resp. Br. 3-26. Patent Owner also filed a rebuttal brief, responding to Requesters’ position. PO Reb. Br. 2-6. The Examiner’s Answer relies on the RAN, incorporating it by reference. See Ans. 1. An oral hearing was conducted on March 18, 2015. The transcript of the oral hearing will be made of record. We have jurisdiction under 35 U.S.C. §§ 134(b) and 315. We AFFIRM. Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 3 Illustrative claims 1 and 27 on appeal reads as follows: 1. In a network wherein clients initiate transactions with servers and the network carries transactions including a request message from a client to a servers and a response message from the server to the client and wherein at least one of the request messages and the response messages contains a payload to be transported over the network between a sender and a receiver, a method of accelerating transactions comprising: segmenting the payload into at least one segment according to a segmentation process that is based on content of the payload; for each of the at least one segments, determining whether to send the segment data in the payload as an unreferenced segment or as a referenced segment; for each of the referenced segments, replacing at least some of the segment data with a reference to the replaced data and storing the replaced reference data associated with its reference; sending the payload from the sender to the receiver as an accelerated payload comprising at least one of a segment reference and symbols corresponding to an unreferenced segment; receiving the accelerated payload over the network; identifying segment references, if any, in the accelerated payload; replacing the segment references in the accelerated payload with segment data available to the receiver, to form a reconstructed payload; and providing the reconstructed payload to the receiver as the transported payload. 27. In a network wherein nodes initiate transactions with other nodes and the network carries transactions including a request message from a first node to a second node and a response message from the second node to the first node and wherein at least one of the request messages and the response messages contains a payload to be transported over the network between the first node and the second node, a method of accelerating transactions comprising: Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 4 terminating the transport connection for traffic between the first node and the second node at a first-node proxy and at a second-node proxy; receiving a payload from the first node at the first-node proxy; segmenting the payload into one or more segments based on the content of the payload; replacing at least one segment of the one or more segments with a segment reference to a matching data pattern that is stored in a first- node auxiliary data store, to form a modified payload; sending the modified payload from the first-node proxy to the second-node proxy; receiving the modified payload at the second-node proxy; replacing the segment reference in the modified payload with a matching data pattern retrieved from a second-node auxiliary data store, to form a reconstructed payload; and sending the reconstructed payload from the second-node proxy to the second node. PO App. Br. 33, 38, Claims App’x. A. Prior Art Relied Upon The Examiner relies on the following as evidence of unpatentability: Singh US 6,856,651 B2 Feb. 15, 2005 (filed May 31, 2001) J. Border et al., Performance Enhancing Proxies Intended to Mitigate Link-Related Degradations 1-451 (2001), available at https://tools.ietf.org/html/rfc3135 (“Border”) (also known as Request for Comments (RFC) 3145). Admitted Prior Art (“APA”) (known network transactions discussed at the ’573 patent 2:28-47) 1 The reference includes embedded page numbers one through forty-five. For the most part in this decision, we will refer to section number. Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 5 B. The Adopted Proposed Rejections The Examiner maintains the following proposed rejections: Reference(s) Basis Claims RAN Singh, Border, and APA § 103(a) 1, 27, 35 4-12 PO App. Br. 11. II. ISSUES ON APPEAL Patent Owner presents several arguments. First, Patent Owner contends that Border teaches away from moving Singh’s compression and decompression operations to proxies. PO App. Br. 20-27. Patent Owner further asserts that Singh, Border, and APA do not teach or suggest the recited “segmenting the payload into at least segment” as recited in claim 1. PO App. Br. 27-29. Patent Owner even further argues Singh, Border, and APA do no teach or suggest the step of “identifying” and “replacing” segment references with segment data as recited in claim 1. PO App. Br. 29-31. Lastly, Patent Owner asserts that there is sufficient evidence of commercial success to weigh in favor of nonobviousness. PO App. Br. 12-20; PO Reb. Br. 1-6. Based on these arguments, the main issues on appeal are: (1) Whether Border teaches away from combining with Singh; (2) Whether Singh, Border and APA collectively teach or suggest “segmenting the payload into at least one segment” as recited in claim 1; (3) Whether Singh, Border and APA collectively teach or suggest “identifying segment references, if any, in the accelerated payload” and “replacing Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 6 the segment references in the accelerated payload with segment data available to the receiver, to form a reconstructed payload” recited in claim 1; and (4) Does the evidence of secondary considerations outweigh the case for obviousness based on Singh, Border, and APA? III. ANALYSIS 1. Does Border Teach Away from Combining with Singh as Proposed? As stated above, Patent Owner contends that Border teaches away from moving Singh’s compression and decompression operations to proxies. PO App. Br. 20-27. More particularly, Patent Owner asserts Singh teaches compression techniques are performed only at end points and thus end-to-end principles, as discussed by Border, apply to Singh. PO App. Br. 21-22. Patent Owner further notes Border teaches application-specific functions and certain end-to-end functions can only be performed by a network’s end hosts. See PO App. Br. 23-24 (citing Border §§ 1, 4.1). According to Patent Owner, compression and decompression techniques are both application-specific functions and end-to-end functions that must be performed by the end hosts, and thus, Border teaches away from moving Singh’s compression techniques to proxies as the Examiner proposes. See PO App. Br. 24-25. We are not persuaded. Figure 1 in Singh shows “a computer system in which one embodiment of the present invention may operate.” Singh 8:11-12, 45-46 (emphasis added). As such, even if we accept that Singh’s systems 102A and 102B in Figure 1 are end points (see PO App. Br. 21-22), this does not demonstrate that Singh failed to contemplate other embodiments where the compression and decompression operations are performed at other parts of a system. For example, when Singh Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 7 discusses the general purpose loss-less compression algorithm, Singh states “[t]he invention can be used to improve bandwidth utilization across any two communicating nodes in a network.” Singh 21: 17-19; see also 3PR Resp. Br. 12 n. 45, 46 and 3PR Resp. Br. 15. This phrase, “any two communicating nodes in a network,” includes nodes other than end nodes that may exist in a network. Dr. Johnson, who is an undisputed person of at least ordinary skill in the art, also holds this view. See Johnson Decl. ¶ 16 (stating that Singh “discloses no restriction on where its technique may be deployed.”) In contrast, Mr. Steven Landauer, who also is an undisputed person of at least ordinary skill in the art, states “Singh teaches a compression method for use in the endpoints of a communication channel.” Landauer’s Decl. ¶ 14. Yet, Mr. Landauer does not address specifically column 21 or explain what Singh meant when stating any two network communicating nodes can use the discussed compression technique to improve bandwidth usage. See id. Moreover, the Rebuttal Brief and Dr. Day’s declaration fail to discuss this portion of Singh. See generally PO Reb. Br. and Day Decl.2 Requester (3PR Resp. Br. 13) and the Examiner (RAN 14-15 (citing Singh 21:26-29)) also note that Singh describes a decompression algorithm obtaining the compressed stream “at a site closer to the ends users and expand[ing the stream] to its original size before sending the data to the users.” Singh 21:28-30. Obtaining and expanding (e.g., decompressing) the stream prior to sending the data to the “end user” as taught by Singh suggests that Singh contemplates performing 2 We have considered the declaration evidence to the extent raised by Patent Owner and Requester. This opinion only addresses arguments presented. Arguments not made are considered waived. See 37 C.F.R. § 41.67(c)(1)(vii). Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 8 decompression techniques at a site in the network between where the data is obtained and the end user (e.g., an intermediary node). Moreover, Singh states that the invention can be used to converge and compress data prior to that data being sent to different users. See Singh 21:24-27. Thus, Singh teaches converging data prior to sending the data to different users. See id. Singh further suggests to one skilled in the art that all the data will be converged prior to compression so that the compression technique can be performed collectively on the converged data. See id. As such, Singh suggests compression techniques occurring at a location downstream from convergence, such as downstream from an end user, so as to allow for data convergence. See Singh 21:24-27; see also 3PR Resp. Br. 20. Patent Owner disputes that Singh teaches the compression could function at intermediary nodes. PO App. Br. 25-26. We accept that Singh does not use the word, “proxy,” “accelerator,” or “intermediary node.” See id; see also PO App. Br. 22. Additionally, we do not find that Singh states that the “‘site closer to the end users’ is a proxy” as Dr. Johnson states. Johnson Decl. ¶ 16. Nonetheless, as previously explained, Singh at least teaches decompressing prior to sending the data to an end user (e.g., an end point) and suggests to an ordinarily skilled artisan converging data prior to compression. See Singh 21:23-30. Both these scenarios suggests compression and decompression occurring somewhere other than the end user, whether it be after the end user sends data for transmission to permit convergence and then compression or prior to sending data to the end users after decompression. Given that Singh suggests these alternative embodiments, this does not constitute a teaching away from performing compression or decompression at locations other than the system’s endpoints. See In re Fulton, Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 9 391 F.3d 1195, 1201 (Fed. Cir. 2004) (indicating a reference’s disclosure of more than one alternative does not constitute a teaching away from any of these alternatives). Furthermore, as Requester notes (3PR Resp. Br. 12 n. 47), only independent claim 27 recites a “proxy.” Claim 1 does not recite a proxy, and claim 35 recites “a transaction accelerator.” PO App. Br. 33, 39-40, Claims App’x. Telling, for claims 1 and 35, is that the recitations to do not require a proxy, a first or client- side accelerator, or a second or server-side accelerator to perform the “segmenting” or “replacing” steps. See id. Thus, Patent Owner argument concerning end-to-end point principles and Border is more tenuous for these claims. Even more notably, the Examiner does not rely on Singh exclusively to teach that using a proxy to perform various operations, including compression (e.g., receiving a payload from a first node at a first-node proxy, segmenting the payload, and replacing a segment of the payload), was known to an ordinarily skilled artisan. See, e.g., RAN 6-9. Border teaches using performance enhancing proxies (PEPs) to split connections with accelerated proxies to improve network path performance. RAN 7-8 (citing Border §§ 2.1.1, 2.4, 3.1.2, and 3.2). When combining Border’s teaching with Singh, the Examiner finds one skilled in the art would have recognized that the resulting system moves the compression technique to a proxy and effectively shifts the “receiving a payload,” “segmenting the payload,” and “replacing at least one segment” steps of claim 27 to the recited “first-node proxy.” See RAN 7-9; see also 3PR Resp. 12-13, 15. Patent Owner counters that Border teaches away from moving compression techniques to a proxy for two main reasons. PO App. Br. 23-27. First, Patent Owner argues that Border discusses end-to-end functions “can only be correctly Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 10 performed by the end systems themselves” and in specific “circumstances where end-to-end mechanisms providing similar performance enhancements are not available.” PO App. Br. 23-24 (citing Border §§ 1, 4.1; Landauer Decl. ¶¶ 12-15). Second, Patent Owner asserts that Border further requires application-specific functions to reside in end hosts and not intermediary nodes, such as a proxy. PO App. Br. 24-26. Patent Owner contends that Singh’s compression algorithms are end-to-end and application level functions and thus must be retained at the end points. PO App. Br. 21-25 (citing Border §§ 4.1; Landauer Decl. ¶¶ 12-15). As to the first contention, we agree with Requester that this argument starts with the incorrect premise that Singh teaches that compression techniques must be performed at end points only. See 3PR Resp. 12-13 (citing Singh 21:8-9, 17-19). As previously explained, we disagree. And because Singh does not teach compression operations must be performed at the end points, the alleged end-to- end operations that should be retained does not apply to compression-type operations in Singh. Border § 1. Furthermore, although Singh may demonstrate that the compression may occur at endpoints, Singh also teaches that compression operations can occur across any two network communicating node. See Singh 21:17-19; Fig. 1. As such, even though Border states generally that “PEPs should be used only in specific environments and circumstances where end-to-end mechanisms providing similar performance enhancements are not available,” this statement does not account for situations where the specific environment teaches or suggests similar performance enhancements (e.g., compression) are available at Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 11 nodes other than end points, such as Singh. Border § 1. In fact, Singh’s teaching may even suggest combining with Border. See 3PR Resp. Br. 13, 17.3 For the reasons discussed above, we also are not persuaded by Mr. Landauer’s statements that Border teaches the following: (1) “if there is functionality that occurs at the endpoints of a connection between two nodes using Internet protocols, that the end-to-end principle discourages moving this functionality away from the endpoints, and into an intermediate node of the connection,” (2) “if there is compression in the endpoints, then one should not move the compression out of the endpoints and into an intermediate node, or a performance enhancing proxy (PEP),” and (3) “not to move Singh’s application level compression from the endpoints to a PEP, except in situations where it is not possible to do otherwise.” Landauer Decl. ¶¶ 12-13, 15. Additionally, Border states that “certain required end-to-end functions can only be correctly performed by the end systems themselves.” Border § 4.1. We emphasize that Border states certain and required end-to-end functions - not all end-to-end functions - must be performed by end systems. Id. Border also fails to list which end-to-end functions are the ones that must be performed by end points and, as discussed 3Border teaches specifically proxies support compression and may be the only mechanism used for performance improvement. Border further discusses the benefits of the proxies implementing compression, including improved link efficiency, reduced latency, and decrease overhead. Border § 3.3; 3PR Resp. 17 n. 61. Although not relied upon by the Examiner explicitly in formulating the rejection, the Examiner states the rejection is adopted essentially as proposed by the Requester at pages 15-51 of Exhibit A of the Request. RAN 12; see also Request, Ex. A, pp. 17--18 (citing Border 10-11 and discussing Border’s proxies use compression for bandwidth efficiency and higher effective link utilization). This further illustrates that Border does not teach away from performing compression operations on proxies. Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 12 above, even states proxies can performed compression. As such, we find insufficient evidence to demonstrate compression operations are those certain required end-to-end functions that can only be performed by end points. Regarding Patent Owner’s second contention, we find Requester’s evidence more persuasive. Quoting from Border, Patent Owner finds “[c]orrectly designed PEPS do not attempt to replace any application level end-to-end function . . . .” PO App. Br. 24-25 (quoting Border §4.1). However, Singh teaches using a “general-purpose loss-less compression algorithm.” 3PR Resp. Br. 12 (citing Singh 21:8-9); see RAN 14. “General-purpose” algorithms suggest to one skilled in the art that such compression techniques can be used generally and not only for application level functions. Dr. Johnson, an undisputed ordinarily skilled artisan, also draws this conclusion. Johnson Decl. ¶¶ 16 (further citing Singh 8:4-5), 21. Patent Owner provides evidence from another undisputed ordinarily skilled artisan, Mr. Steven Landauer, to counter that Singh’s compression algorithm is an application-level function. Landauer Decl. ¶ 15. Yet, Mr. Landauer merely concludes that Singh performs “application level compression” with no further evidence to support this conclusion. We find inadequate evidence to support that compression techniques are “application-level” functions. For the reasons discussed previously, we conclude that Border does not teach away or discourage an ordinarily skilled artisan from combining its teaching with Singh. 2. Does Singh, Border, and APA Teach or Suggest “Segmenting the Payload Into At Least One Segment” as Recited in Claim 1? Patent Owner next argues that Singh’s compression mechanism does not segment the payload as recited in claim 1. PO App. Br. 27-29. Specifically, Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 13 Patent Owner acknowledges that Singh identifies and eliminates repeated phrases/terms anywhere in a continuous data input stream but does not segment a payload into segments and then decide which segment should be a reference segment or an unreferenced segment as recited. Id. (citing Singh 9:5-26, 20:23- 29). We are not persuaded. The Examiner finds that Singh teaches both segmenting the accelerated payload and replacing segments with a reference. RAN 4-5 (citing Singh 2:34-39, 3:59-62, 4:26-32, 8:51-67, 9:5-8, 16-32, 50-67, 9:17-29,10:36-46, 20:33-35). For example, Singh teaches a detector component 202 that compresses an input stream by identifying repeated phrases or terms in an input stream. Singh 9:17-19, 24-29; Fig. 2. As explained by Requester, the repeated phrase or terms are “segments” and detecting these phrases and terms maps to the “segmenting” step. 3PR Resp. Br. 21-22. We find this position reasonable. That is, Singh teaches identifying phrases and terms within a data stream, which effectively isolates identified phrases or terms in a stream and thus segments portions of a stream into separate portions (e.g., those portions of the data stream with the detected phrases or terms). See Singh 9:18-19, 24-29; Fig. 2. Additionally, we note that the recited term, “payload” is not defined by the ’573 patent’s disclosure and thus, an input stream can be considered reasonably a “payload” as broadly as recited. Regarding the other disputed limitation that Singh does not decide which segment should be a referenced segment or unreferenced segment as recited in claim 1, the Examiner finds Singh teaches this limitation at various portions when using a dictionary phrase number as referenced segment. RAN 4 (citing Singh 12:36-65; Fig. 5). Namely, Singh teaches that the first two times that a repeated phrase occurs, it is transmitted unmodified (e.g., unreferenced segment), but after Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 14 which, the phrase can be transmitted more efficiently by sending content as phrase numbers or symbols (e.g., a referenced segment). See Singh 12:37-56; Fig. 5. Thus, Singh teaches both identifying repeated phrase in a data stream (e.g., segmenting a payload into segment data) and then determining whether to send the segment data as unreferenced or referenced segments (e.g., unmodified or modified to two symbols). See id. Lastly, although claims 1 and 35 do recite the disputed “segmenting” step or some variation, claims 1 and 35 do not recite a “determining” step with similarities to claim 1. Thus, for these claims, the arguments concerning the “determining” step are not commensurate in scope. For the above-stated reasons, we are not persuaded that Singh, Border, and the APA fail to teach “segmenting the payload” or “determining whether to send the segment data in the payload as an unreferenced segment or as a reference segment” as recited in claim 1. 3. Does Singh, Border, and APA Teach or Suggest “Identifying Segment References, If Any, in the Accelerated Payload” and “Replacing the Segment References in the Accelerated Payload with Segment Data Available to the Receiver” as Recited in Claim 1? Patent Owner further argues that the segmenting process in the ’573 patent recites a “receiving unit . . . identifies segment references, ‘if any,’ in an accelerated payload and replaces the segment references in the accelerated payload with segment data if ‘available to the receiver.’” PO App. Br. 29 (underlining omitted). Patent Owner contends that these recitations require the receiving unit to determine whether there are any reference segments and then whether the segment data is available that corresponds to the segment reference. Specifically, Patent Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 15 Owner argues that Singh’s decompression unit discussed at Figure 6 only determines whether a symbol is a reference to a dictionary phrase and not whether any dictionary phrase number exists or is available before generating the original input sequence. PO App. Br. 30-31. We are not persuaded. At the outset, we note that claim 1 does not recite a “receiving unit” that identifies segment references and replaces segment references. PO App. Br. 33, Claims App’x. Claim 1 further does not recite identifying segment references at the receiver, as Patent Owner contends. PO App. Br. 29 n. 51. Also, claims 27 and 35 do not include any limitation to a “receiving unit.” Nor do claims 27 and 35 have an “identifying” step or a similar limitation to claim 1. Requester further notes and we agree that claim 1 does not include an explicit “determining” step that determines whether segment data is available to the receiver or “if” segment data is available prior to recreating the payload as Patent Owner contends. 3PR Resp. Br. 25. Turning to Singh, Singh teaches, at step 604, determining whether a symbol (e.g., a segment reference) is a reference to a dictionary phrase number. Singh 13:8-13; Fig. 6. As explained by Requester, this step involves identifying segment references in the accelerated payload. 3PR Resp. Br. 24. Singh further teaches that, if a symbol (e.g., a segment reference) is identified (YES at step 604), the contents of the phrase number are extracted and the original sequence is generated at step 606. Singh 13:8-13; Fig. 6. This step reasonably maps to the recited “replacing the segment references . . . with segment data available to the receiver.” See 3PR Resp. Br. 24-25. Notably, claim 1 requires segment references to be replaced with data available at the receiver, which as discussed above, is taught by Singh, but does not Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 16 require a determination of the “question of availability.” See 3PR Resp. Br. 25. Although not recited, we further disagree that Singh fails to determine whether or not segment data is available at the receiver. That is, Singh in Figure 6 shows a NO path at step 604. Singh 13:17-21; Fig. 6. This at least suggests to one skilled in the art that some determination is made whether segment data (e.g., a symbol) is available at the receiver. See id. Moreover, we refer to and adopt the Requester’s unrebutted findings concerning this purported limitation in claim 1. See 3PR Resp. Br. 26 (citing Singh 14:17-23, 15:55-63); see generally PO Reb. Br. For the above reasons, we are not persuaded that Singh fails to teach or suggest “identifying segment references, if any, in the accelerated payload” and “replacing the segment references in the accelerated payload with segment data available to the receiver” as recited in claim 1. 4. Does the Evidence of Secondary Considerations Outweigh the Case for Obviousness? The “obviousness inquiry centers on whether ‘the claimed invention as a whole’ would have been obvious . . . .” Rambus Inc. v. Rea, 731 F.3d 1248, 1257-58 (Fed. Cir. 2013). 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). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406-07 (2007). Additionally, “[t]he obviousness assessment depends on what the prior art teaches and on what the non-prior-art evidence of ‘secondary considerations’ (or objective evidence) may indicate about whether the invention would have been obvious at the relevant Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 17 time.” See Institut Pasteur and Universite Pierre et Marie Curie v. Focarino and Precision Biosciences, Inc., 738 F.3d 1337, 1344 (Fed. Cir. 2013). Patent Owner presents evidence of nonobviousness in the form of commercial success and industry praise. PO App. Br. 12-20; PO Reb. Br. 1-6. Specifically, Patent Owner asserts that its “Steelhead Appliance” has been recognized in the industry by numerous magazines as a “leader” and has been awarded the “Technology Innovation Award” by the Wall Street Journal. PO App. Br. 13, 15-17. Additionally, Patent Owner contends that Riverbed’s sole product at that time, the Steelhead Appliance, obtained more than fifty (50) percent market share within a few years of its launch. PO App. Br. 13, 17-20. Patent Owner further states that its Steelhead Appliance is a “segmentation proxy server” and that the award is “directly attribute[ed] . . . to the storing of data on local servers (which corresponds to the claimed data segmentation process being performed at proxies).” PO App. Br. 13. The Examiner and Requester both counter Patent Owner’s evidence, arguing that there is insufficient nexus between the commercial success and the claimed invention. RAN 12- 14; 3PR Resp. Br. 3-6. “Evidence of secondary considerations must be reasonably commensurate with the scope of the claims.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). As such, we agree with Patent Owner that the evidence need not be “a verbatim repeat of every element of the claimed invention.” PO App. Br. 14 (discussing Apple, Inc. v. Int’l Trade Comm’n, 725 F.3d 1356 (Fed. Cir. 2013)). We further recognize that an institution, when describing a product’s technical merits or awarding a company for its technical product, would most likely not use the precise language of a patent’s claims. Even so, “[f]or objective evidence to be accorded substantial weight, its proponent must establish a nexus between the Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 18 evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir.1995). Accordingly, “[t]o the extent that the patentee demonstrates the required nexus, his objective evidence of nonobviousness will be accorded more or less weight.” Id. (citing Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 306 (Fed.Cir.1985)). The Wall Street Journal article4 describes Riverbed’s “Steelhead network appliances” as the winner in the “Network/Broadband/Internet” category. PO App. Br., Evidence App’x, Ex. D, p. 4. This article states that the appliance “speed[s] the transfer of data and use of applications between remote office and central servers” and reduces delays “by storing redundant commands and data on local servers, slashing the amount of traffic that goes back and forth over the network and increasing overall network speed.” Id. Thus, the article focuses on the Steelhead appliance’s feature of “storing redundant commands and data on local servers” to speed data transfer and reduce delays over a network. Id. The Examiner finds and we agree that there is no clear nexus between (1) the Wall Street Journal’s award to the Steelhead network appliance for its “storing redundant commands and data on local servers” and “speed[ing] the transfer of data . . . between remote office and central servers,” and (2) the claimed segmenting step of the ’573 invention. RAN 12-14; see also 3PR Resp. Br. 6. That is, the features described in the article of “storing redundant commands and data on local servers” or “speed[ing] the transfer of data . . . between remote office 4 PO App. Br., Evidence App’x, Ex. D (Michael Totty, “Technology (A Special Report); A better Idea: The Wall Street Journal’s 2005 Technology Innovation Award” 1-7 (Oct. 24, 2005)). Seven pages were provided for this reference, and the page numbers correspond sequentially to these pages. Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 19 and central servers,” have little relationship to “segmenting [a] payload into one or more segments” as recited in claim 27. We further agree with the Examiner and Requester that this storing feature is more akin to a description of a cache or a caching proxy server, which Patent Owner acknowledges was known in the art as of 2002 (PO App. Br. 19). RAN 13; see also 3PR Resp. Br. 4. Based on what was known in the art, Patent Owner attempts to rebut the Examiner’s findings, urging that the article “must have been “speaking of something different, not just a regular old caching proxy server.” PO App. Br. 20. To support this position, Patent Owner quotes other portions of the article that indicate the awards are for “a breakthrough from conventional ideas or methods in its field” and go “beyond incremental improvements on technologies that already exist.” PO App. Br. 19 (citing PO App Br., Evidence App’x, Ex. D, p. 2); PO Reb. Br. 2, 6. Patent Owner also relies Dr. Day’s statement that the reason the judges gave the Riverbed’s Steelhead appliance an award “is attribut[ed to] our use of proxies (payload accelerators) to perform our segmentation process.” PO Reb. Br. 3 (citing PO App. Br., Evidence App’x. Ex. A ¶ 16). The relevant portion of the article discusses how the judges for the Wall Street Journal selected the gold, silver, and bronze winners as well as the winners in each of twelve (12) categories, including the Network/Broadband/Internet category awarded to Riverbed’s Steelhead appliance. PO App Br., Evidence App’x, Ex. D, p. 2. Even presuming Patent Owner is correct that the article must have been discussing something other than a caching proxy server, we are still not persuaded that the article’s discussion of storing redundant data on a local server and speeding data transfer between a remote location and central servers relates to the recited “segmenting” a payload step or even using a proxy to perform this step. Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 20 Noticeably absent from the article is a description of what breakthrough from conventional ideas and “beyond incremental improvements” the Steelhead appliance performs, such that the award articulates a connection to the claimed “segmenting” step. Also, the article further states that some judges considered “the utility of the invention.” Id. As such, there is evidence that the awards are based factors other than deviations from convention. Moreover, Dr. Day concludes that the discussed “local servers” in the article are proxies or payload accelerators. Day Decl. ¶ 16. Even if true, this fails to demonstrate how the statement that the Steelhead appliance “reduces these delays by storing redundant command and data on local servers” relates to the claimed “segmenting the payload into at least one segment” step. Additionally, we note that Dr. Day is an employee at Riverbed Technology, Inc. since 2004 and has some interest in the outcome of this appeal. Day Decl. ¶¶ 1, 4. This weighs against the persuasive value of his declaration. See Ashland Oil, 776 at 306. Based on the record, there is insufficient evidence that the award is related to the claimed “segmenting” feature found in claim 27. Patent Owner also contends that the claimed “receiving a payload from the first node at the first-node proxy” is a component of the “data segmentation process.” See PO App. Br. 12. However, the recitation of receiving a payload has little relationship to storing commands and data on a local server described by the Wall Street Journal article. Claim 27 also recites “replacing at least one segment of the one or more segments with a segment reference to a matching data pattern that is stored in a first-node auxiliary data store.” Dr. Day states the discussed “local servers” discussed in the Wall Street Journal article are the same as a proxy or payload Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 21 accelerator. Day Decl. ¶ 16. Even presuming that one finds a connection between the article’s discussion and claim 27’s “stored in a first-node auxiliary data store,” we find the connection does not establish the requisite nexus to be accorded substantial weight. [T]here is a more fundamental requirement that must be met before secondary considerations can carry the day. “For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (quotation omitted). Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention. Kao, 639 F.3d at 1068 (emphases in original). We are not persuaded there is sufficient evidence that the article is discussing the details of a proxy beyond a caching server proxy. Given that Patent Owner admits storing data at a local server (i.e., caching proxy server) was known in 2002 (PO App. Br. 19), we find that the offered secondary considerations do not result from something both claimed and novel in the claim. See Kao, 639 F.3d at 1068. Additionally, as noted above, Dr. Day has an interest in the outcome of this appeal. Accordingly, we agree with the Requester that the evidence provides an inadequate nexus “to its purported novel use of proxies.” 3PR Resp. Br. 4. For the first time in the Rebuttal Brief, Patent Owner attempts to map all the language in claim 27 to the Wall Street Journal article to establish a nexus. PO Reb. Br. 4-6. Patent Owner has not shown good cause why this argument was not presented earlier in the brief and consequently may be refused consideration. See 37 C.F.R. §41.67(c)(1)(vii). Nonetheless, Patent Owner’s mapping adds no further statements from the article other than those previously discussed to address the Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 22 data segmentation process performed at a proxy between the client and a server. As indicated, we fail to find a sufficient nexus between what the article awarded the Steelhead appliance for and the purported merits of the claimed invention (e.g., the claimed “data segmentation process” that performs the segmenting and replacing steps). See PO App. Br. 12-13; PO Reb. Br. 4-6. We further agree with Requester it takes more than a single award to demonstrate sufficient commercial success to outweigh the evidence for obviousness. 3PR Resp. Br. 6. Patent Owner provides two additional articles to bolster the case for nonobviousness. First, Patent Owner discusses the Gartner report,5 which describes the Steelhead appliance as a leader in the Wide Area Network (WAN) Optimization Controller market. PO App. Br. 16-17, Evidence App’x, Ex. E, pp. 3, 9. Second, Patent Owner presents an InfoWorld article6 that awarded the Steelhead appliance a “Technology of the Year - Best WAN Accelerator” for many years. See PO App. Br. 16, Evidence App’x, Ex. F, p. 1; PO Reb. Br. 6. Yet, Patent Owner fails to establish the recognition in this report and article is tied to the claimed “receiving,” “segmenting,” “replacing,” or any other steps in claim 27. For example, as Requester notes, the Gartner report does not discuss proxies, segmentation, or what hardware or software of the Steelhead appliance provides its “Strengths,” such that the recognition for the appliance has some nexus to claimed 5 Andy Rolfe et al., “Magic Quadrant for WAN Optimization Controllers, 2009” 1-16 (June 30, 2009). PO App. Br., Evidence App’x, Ex. E. 6 “InfoWorld 2011 Technology of the Year Awards, Best WAN accelerator,” including a companion article by Keith Shultz, “InfoWorld Review: Riverbed Steelhead rules the WAN,” 1-8 (May 5, 2010). Eight pages were provided for this reference, and the page numbers correspond sequentially to these pages. Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 23 invention. See 3PR Resp. Br. 5; see generally PO App. Br., Evidence App’x, Ex. E. Additionally, Requester indicates that the commercial recognition or success of the Steelhead appliance is due to other factors, including brand recognition, ease of installation, encryption techniques, and partnerships with others. 3PR Resp. Br. 5 (discussing PO App. Br., Evidence App’x, Ex. E, p. 13). As for the InfoWorld article, we also agree that this article fails to establish a connection between the recognized technology discussed and the claimed invention. 3PR Resp. Br. 5-6 (discussing PO App. Br., Evidence App’x, Ex. F). We acknowledge that the article discusses some Steelhead appliance technologies for a WAN accelerator, including application-specific and protocol-specific optimizations, an adjustable compression and data deduplication engine, and operation system RIOS 6 which transfers files quicker than un-optimized links. However, Patent Owner has not tied these discussions to the claimed invention sufficiently to establish the requisite nexus. PO App. Br. 16; see also PO App. Br., Evidence App’x, Ex. F, p. 1-4. Patent Owner further relies upon the declaration of Dr. Day to establish that these exhibits demonstrate a nexus between the claimed invention and the commercial success. PO App. Br. 16-17 n. 19-20 (citing PO App. Br., Evidence App’x, Exhibit A ¶¶ 14, 18). However, the declaration discusses the WAN Optimization Controllers (WOC) market in general and does not add any further findings to establish a nexus with the claimed invention. Day Decl. ¶¶ 14, 18. We agree with Requester that this evidence of industry praise is generalized to Steelhead Appliance products in their entirety (e.g., the WOC market) and not specifically to the claimed features to establish the required nexus. See 3PR Resp. Br. 5-6. Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 24 Regarding the market share evidence, we find an inadequate nexus to the claimed invention. For example, Patent Owner states that Riverbed’s Steelhead appliance “product family, including software that runs on or interfaces therewith,” was its sole product from 2002 through 2008 and the Riverbed had about thirty percent of the WOC market by 2008. See PO App. Br. 17 and PO Reb. Br. 2, 6; see also Day Decl. ¶ 15. The market share grew to nearly fifty-three (53) percent by 2012. See id. Yet, once again, the evidence is directed to the Riverbed’s WOC products in general. Moreover, there is other evidence in the record that Riverbed’s commercial success may be derived from other factors, such as excellent product reputation and brand recognition. 3PR Resp. Br. 7 n. 21 (citing PO App. Br., Evidence App’x , Ex. E, p. 13)). On balance, we conclude that the evidence of secondary considerations does not outweigh the reasonably strong case of obviousness, such that the claimed invention is nonobvious. Accordingly, we sustain the rejection of claims 1, 27, and 35 based on Singh, Border, and APA. IV. CONCLUSION The Examiner’s decision to reject claims 1, 27, and 35 is affirmed. V. TIME PERIOD FOR RESPONSE Requests for extensions of time in this proceeding are governed by 37 C.F.R. §§ 1.956 and 41.79(e). 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 Appeal 2015-000188 Reexamination Control 95/002,308 Patent 7,428,573 B2 25 serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED FOR PATENT OWNER: HAYNES AND BOONE, LLP IP Section 2323 Victory Avenue Suite 700 Dallas TX 75219 FOR THIRD-PARTY REQUESTER: FENWICK & WEST LLP SILICON VALLEY CENTER 801 CALIFORNIA ST. MOUNTAIN VIEW, CA 94041