Ex Parte 7558195 et al

Patent Trial and Appeal Board

Apr 29, 2014

95001815 (P.T.A.B. Apr. 29, 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.
95/001,815 11/10/2011 7558195 11517.0011-01 1559
105348 7590 04/30/2014
Fountainhead Law Group P.C
Fountainhead Law Group P.C. Chad R. Wals
900 Lafayette Street Suite 301
SUITE 301
Santa Clara, CA 95050
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/30/2014 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 2014-002797
Reexamination Control No. 95/001,815
United States Patent 7,558,195 B1
1

Technology Center 3900
______________

Before JOHN C. MARTIN, HOWARD B. BLANKENSHIP, and
MAHSHID D. SAADAT, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1
This patent (hereinafter “’195 patent”) was granted on July 7, 2009, based
on Application 11/695,458, filed on April 2, 2007, as a continuation of
Application 10/124,449, filed on April 16, 2002 (now Patent 7,209,435).
Claim 1 of the ’195 patent was canceled by Ex Parte Reexamination
(Continued on next page.)
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Brocade Communications Systems, Inc. (hereinafter “Patent Owner”)
appeals the Examiner’s rejections of original claims 1, 2, 4, 5, and 14-17 of
the ’195 patent. P.O. Appeal Br. 4.
2
Requester, A10 Networks, Inc. has
withdrawn from further participation in this proceeding and did not file a
respondent brief.
3
Patent Owner did not file a rebuttal brief in response to
the Examiner’s Answer, which was mailed on December 17, 2013.
Inasmuch as claim 1 has been canceled by Ex Parte Reexamination
Certificate US 7,840,678 C1 (Feb. 24, 2014), this appeal is dismissed with
respect to claim 1, leaving the rejections of only dependent claims 2, 4, 5,
and 14-17 for our consideration.
We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315.
We AFFIRM.

Certificate US 7,558,195 C1, which issued on February 24, 2014.
2
Appellant’s Appeal Brief Pursuant to 37 C.F.R. § 41.67, filed
August 26, 2013.
3
Specifically, Requester on June 13, 2013, filed a Notice of Withdrawal of
Third Party Requester A10 Networks, Inc., stating (at page 1): “Third Party
Requester, 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.”
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I. STATEMENT OF THE CASE
A. Related Litigation and Reexamination Proceedings
The ’195 patent was the subject of litigation styled: Brocade
Communications Systems, Inc. v. A10 Networks, Inc., Case No. 10-CV-
03428-LHK (N.D. Cal.). P.O. Appeal Br. 36 (“XII. Related Proceedings
Appendix”).
A petition
4
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.
5

The above-noted ex parte reexamination certificate terminated
ex parte reexamination proceeding 90/011,771 (hereinafter “the ex parte
proceeding”), which was initiated by a Request for Ex Parte Reexamination
filed by A10 Networks, Inc. on June 27, 2011. In a non-final Office action
mailed in the ex parte proceeding on November 18, 2011, the Examiner (at
page 6) rejected claim 1 for anticipation by Guess,
6
which is one of the

4
Patent Owner’s Petition Under 37 C.F.R. § 1.182 to Terminate the
Reexamination Proceedings, filed July 10, 2013.
5
Decision Dismissing Petition to Terminate Inter Partes Reexamination
Proceeding.
6
Guess, et al., Patent Publication US 2003/0048501 A1, published
March 13, 2003. Guess is referred to in the Request for Inter Partes
Reexamination (hereinafter “Request”), filed on November 10, 2011, as
“Guess ’501.” Request 4.
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references relied on in the rejections before us in this appeal. This rejection
was maintained (at page 2) in a final Office action mailed July 19, 2012, and
affirmed by the Patent Trial and Appeal Board in a November 22, 2013,
Decision on Appeal in Appeal 2013-009039 (at page 36). That Decision on
Appeal, which was not appealed by Patent Owner, is the basis for the
cancelation of claim 1 by Ex Parte Reexamination Certificate
US 7,840,678 C1.

B. Claim 1 (Now Canceled)
Claim 1 (now canceled), from which claims 2, 4, 5, and 14-17 depend,
reads as follows:
1. A switch for use in a system of switches, the system of
switches acting as a virtual switch, the switch comprising:
a memory; and
a plurality of ports, each for communicatively coupling
the switch to a Layer 2 network,
wherein the switch is configured to act in concert with
one or more other switches in the system of switches to provide
route redundancy for the Layer 2 network, and
wherein the switch is configured to communicate its
status to the one or more other switches by transmitting, via at
least one of the plurality of ports, redundancy control packets
for flooding throughout the Layer 2 network.
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Claims App. (P.O. Appeal Br. 34) (altered to have a paragraph structure
similar to that employed in the ’195 patent).

C. The Rejections
As noted above, the rejected claims that remain before us are
dependent claims 2, 4, 5, and 14-17. The grounds of rejections, which rely
on Guess, Yip,
7
ExtremeWare,
8
and Tech Brief,
9
are listed as follows at
pages 3-4 of Patent Owner’s Appeal Brief:

7
Yip, et al., US 6,954,436 B1, issued October 11, 2005.
8
Extreme Networks, Inc., ExtremeWare Software User Guide (April 1999).
Request for Inter Partes Reexamination (hereinafter “Request”), filed
November 10, 2011, at 4.
9
Extreme Networks, Inc., Tech Brief, Redundancy in the Application-Aware
Data Center (© 2001). Request 4.
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II. DISCUSSION
A. The Rejection for Anticipation by Guess (Claims 2, 4, 5, and 14-17)
Patent Owner’s sole argument against the rejection of claims 2, 4, 5,
and 15-17 for anticipation by Guess treats these claims as standing or falling
with claim 1: “The Examiner failed to show that every element of claim 1 is
expressly or inherently disclosed by Guess. Therefore, claims 1 [sic, 2], 4-5
and 14-17 of the [’]195 patent are patentable over Guess.” P.O. Appeal
Br. 16. The rejection of claims 2, 4, 5, and 15-17 for anticipation by Guess
is therefore sustained for the same reasons that the rejection of claim 1 on
this ground was affirmed in the Board’s November 22, 2013, Decision on
Appeal in Appeal 2013-009039, which resulted in the cancelation of claim 1
by Ex Parte Reexamination Certificate US 7,558,195 C1 .
Patent Owner separately argues the patentability over Guess of
claim 14, which reads as follows: “14. The switch of claim 1, wherein the
Layer 2 network is a loop free network.” Claims App. (P.O. Appeal Br. 34).
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The separate argument for claim 14 reads as follows: “Guess is also directed
only to ‘Collector and Feeder’ loop networks and therefore does not
anticipate claim 14, which requires the Layer 2 network to be loop-free.”
P.O. Appeal Br. 11. This quoted sentence concludes with footnote 32:
“See Guess at [0044]-[0053] and elsewhere in Guess.” This argument is
unpersuasive because it fails to address the Examiner’s reliance on
Guess’s paragraph 0087 in the rejection of claim 14. Specifically, the non-
final Office Action (hereinafter “Non-final Action”), mailed on
December 16, 2011, states:
1. Claims 2, 4-5, and 14-17 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Guess [’]501. This rejection
for claims 2, 4-5, and 14-17 is adopted for the reasons set forth
in the November 10, 2011 request for reexamination, on
pages 6-7 and 10-19, which are incorporated by reference.
Non-final Action 6. The Request in these cited pages describes the proposed
rejection of claim 14 for anticipation by Guess as follows:
Guess ’501 discloses that the Layer 2 network is a loop free
network. For example, Guess ’501 discloses:
“When a switch is in standby, it does not perform Layer 2
switching services for the VLAN. From a Layer 2
switching perspective, no forwarding occurs between the
member ports of the VLAN. This prevents loops and
maintains redundancy.” Guess ’501 at ¶ [0087].
Request 17, limitation 14.1 (our emphasis). The Examiner’s incorporation
by reference of Requester’s reliance on paragraph 0087 for the rejection of
claim 14 as anticipated by Guess was not subsequently modified or
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withdrawn by the Examiner, who did not specifically address this rejection
of claim 14 in the Action Closing Prosecution (mailed December 19, 2012),
the Right of Appeal Notice (mailed May 24, 2013), or the Examiner’s
Answer.
Patent Owner has not addressed (let alone shown error in) the
Examiner’s reliance on paragraph 0087 for the claimed loop-free operation.
Furthermore, Patent Owner’s citation to “Guess at [0044]-[0053] and
elsewhere in Guess” (P.O. Appeal Br. 11 n.32) is not supported by an
explanation of why these paragraphs demonstrate that Guess fails to describe
the claimed loop-free operation. We therefore also sustain the rejection of
claim 14 for anticipation by Guess.
For the above reasons, we have sustained the rejection for anticipation
by Guess with respect to each of claims 2, 4, 5, and 14-17, which constitute
all of the claims that remain on appeal.

B. The Other Grounds of Rejection
Because we are sustaining the rejection of claims 2, 4, 5, and 14-17
for anticipation by Guess, it is unnecessary to reach the merits of any of the
other grounds of rejection of these claims.

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III. SUMMARY
1. We have dismissed this appeal with respect to claim 1, which
was canceled by Ex Parte Reexamination Certificate US 7,558,195 C1
(Feb. 24, 2014).
2. We have sustained the rejection of claims 2, 4, 5, and 14-17, which
are all of the claims remaining on appeal, under 35 U.S.C. § 102(e) for
anticipation by Guess.
3. We therefore found it unnecessary to address the merits of the
Examiner’s other rejections of these claims.

III. DECISION
The Examiner’s decision that claims 2, 4, 5, and 14-17 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

ak

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For Patent Owner:

Fountainhead Law Group P.C
Fountainhead Law Group P.C. Chad R. Wals
900 Lafayette Street Suite 301
SUITE 301
Santa Clara CA 95050

For Third Party Requester:

TIMOTHY J. MAY
FINNEGAN HENDERSON FARABOW ET AL.
901 NEW YORK AVE., NW
WASHINGTON, DC 20001-4413