Ex Parte HSU et al

Patent Trial and Appeal Board

Feb 27, 2015

95001807 (P.T.A.B. Feb. 27, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,807 11/04/2011 Ivy Pei-Shan HSU 11517.0012-00000 5375
87916 7590 03/02/2015
2nd Reexam Group - Novak Druce + Quigg LLP
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/02/2015 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
____________

A10 NETWORKS INC.
Requester

v.

BROCADE COMMUNICATIONS SYSTEMS, INC.
Patent Owner and Appellant
____________

Appeal 2014-007998
Reexamination Control 95/001,807
Technology Center 3900
Patent 7,581,009
____________

Before RAE LYNN P. GUEST, ERIC B. CHEN, and
JENNIFER L. MCKEOWN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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Patent Owner Brocade Communications Systems, Inc. appeals under
35 U.S.C. § 134(b) and 35 U.S.C. § 315(a) (pre-AIA) the Examiner’s final
decision to reject claims 1–10, 12–22, and 24–28.
Third-Party Requester A10 Networks, Inc. filed a notice of
withdrawal from the inter partes reexamination proceeding, dated
June 13, 2013, and thus, did not file any Respondent Briefs.
An oral hearing was held on January 28, 2015. The record includes a
written transcript of the oral hearing.
We have jurisdiction under 35 U.S.C. §§ 134 and 315 (pre-AIA). We
affirm-in-part.

STATEMENT OF THE CASE
A previous request for ex parte reexamination of U.S. Patent
No. 7,581,009 B1 (the ’009 patent) was filed on June 27, 2011 and assigned
Reexamination Control No. 90/011,770, resulting in the issuance of an
Ex Parte Reexamination Certificate (9294th) on September 11, 2012,
US 7,581,009 C1, in which the patentability of claims 1, 12, 13 and 24–26
were confirmed. Claims 2–11, 14–23, 27 and 28 were not reexamined.
A request for inter partes reexamination of U.S. Patent
No. 7,581,009 B1 (the ’009 patent), assigned Reexamination Control
No. 95/001,807, was filed on November 4, 2011, by Third-Party Requester
A10 Networks, Inc.
The ’009 patent, entitled “Global Server Load Balancing,” issued
August 25, 2009, to Ivy Pei-Shan Hsu, David Chun-Ying Cheung, and
Rajkumar Ramniranjan Jalan, based on Application No. 11/741,480, filed
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April 27, 2007. The ’009 patent is also a continuation of Application
No. 09/670,487, filed September 26, 2000, now U.S. Patent No. 7,454,500.
The ’009 patent is assigned to Brocade Communications Systems, Inc.
(formerly Foundry Networks, Inc.), the real party in interest.

Related Litigation
The ’009 patent has been asserted in Brocade Communication
Systems, Inc. v. A10 Networks, Inc., No. 10-cv-03428-LHK (N.D. Cal.
Aug. 10, 2010). (PO App. Br. 3.) This case ended in a Stipulated Final
Judgment in favor of the Plaintiffs, Patent Owner.

The Claims
Claims 26 and 27 are exemplary, with disputed limitations in italics,
and minor changes in formatting:
26. A method performed by a load balancing switch, the
method comprising:
performing, at the load balancing switch, a first ordering of a
plurality of network addresses based upon a first set of performance
metrics for a set of servers, the plurality of network addresses
generated in response to a domain name query; and
performing, based upon a result of the first ordering, a second
ordering of the plurality of network addresses based upon a second set
of performance metrics for the set of servers;
wherein the second set of performance metrics is different from
the first set of performance metrics, wherein the first set of
performance metrics comprises one of:
round trip time information associated with a plurality of
site switches associated with one or more servers from the set of
servers, wherein the round trip time information associated with
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a site switch is indicative of time for exchanging messages
between the site switch and a client machine generating the
domain name query;
available session capacity associated, with network
addresses in the plurality of network addresses;
a flashback speed associated with each of the plurality of
site switches, wherein a flashback speed associated with a site
switch is indicative of a time required for the site switch to
respond to a health check performed by the load balancing
switch on the site switch;
geographical locations of the set of servers; or
previous selections of network addresses in the plurality
of network addresses as the best network address in response to
a domain name query.

27. The method of claim 26 wherein the one or more host
servers associated with a site switch are reachable via the site switch
using a virtual address configured at the site switch.

The Rejections
Patent Owner appeals the Examiner’s decision to reject all the
pending claims as follows:
1. Claims 1–10, 12–22, and 24–28 stand rejected under 35 U.S.C.
§ 102(a) as anticipated by Configuration Guide (Foundry Networks, Inc.,
Foundry ServerIron Installation and Configuration Guide (May 2010)).
2. Claims 26 and 28 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Johnson (US 6,205,477 B1; Mar. 20, 2001).
3. Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as
obvious over Johnson and Cisco LocalDirector (Cisco Systems, Inc., Cisco
LocalDirector Version 1.6.3 Release Notes (1997)).
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Patent Owner relied upon the following declaration in rebuttal to the
Examiner’s proposed rejection:
Declaration under 37 C.F.R. § 1.131 of Ivy Pei-Shan Hsu, dated
April 27, 2012 (“Hsu Declaration”), accompanied by Exhibit A.
1

ANALYSIS
Claims 1–10, 12–22, and 24–28 stand rejected under 35 U.S.C.
§ 102(a) as anticipated by Configuration Guide. Patent Owner attempts to
antedate Configuration Guide by relying upon the Hsu Declaration,
accompanied by Exhibit A, chapter 7 of a draft product manual for Foundry
Networks’ ServerIron, entitled “Configuring Global Server Load
Balancing,” dated February 2010 (“draft Configuration Guide”). (PO App.
Br. 13–18; see also PO Reb. Br. 2–12.)

Work and Invention of the Named Inventors
The Examiner determined that the Hsu Declaration was insufficient to
establish that Configuration Guide was the work and invention of the named
inventors. (Ans. 3–5.) In particular, the Examiner determined that
“[n]either Conf. Guide nor the alleged draft Conf. Guide chapter identify the
authorship as including Hsu or the other inventors.” (Ans. 4.) We do not
agree with the Examiner’s determination.

1
The Examiner did not enter the following declarations, which were
submitted after the Action Closing Prosecution: (i) Declaration under
37 C.F.R. § 1.131 of Ivy Pei-Shan Hsu, dated February 1, 2013;
(ii) Declaration under 37 C.F.R. § 1.131 of Marty Azarani, dated January 24,
2013; and (iii) Declaration under 37 C.F.R. § 1.132 of Brian D’Andrade,
dated February 4, 2013.
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The inventors of the ’009 patent are Ivy Pei-Shan Hsu, David Chun-
Ying Cheung, and Rajkumar Ramniranjan Jalan and the ’009 patent is
assigned to Foundry Networks, Inc. (now Brocade Communications
Systems, Inc.). Figure 1 of the ’009 patent illustrates a global server load
balancing configuration. (Col. 1, ll. 54–55.) The ’009 patent further states:
As shown in FIG. 1, global server load balancing (GSLB)
switch 12 is connected to Internet 14 and acts as a proxy to an
authoritative Domain Name System (DNS) server 16 for the
domain “foundrynet.com” (for example). . . . . GSLB switch 12
communicates, via Internet 14, with site switches 18A and 18B
at site 20, site switches 22A and 22B at site 24, and any other
similarly configured site switches. Site switch 18A, 18B, 22A
and 22B are shown, for example, connected to routers 19 and
21 respectively and to servers 26A, . . . , 26I, . . . 26N. Some or
all of servers 26A, . . . , 26I, . . . , 26N may host application
server programs (e.g., http and ftp) relevant to the present
invention. These host servers are reached through site switches
18A, 18B, 22A and 22B using one or more virtual IP addresses
configured at the site switches, which act as proxies to the host
servers. A suitable switch for implementing either GSLB switch
12 or any of site switches 18A, 18B, 22A and 22B is the
“ServerIron” product available from Foundry Networks, Inc.
(Col. 2, l. 55 to col. 3, l. 11 (emphases added).) Thus, the ’009 patent
discloses that, in one example, GSLB switch 12 and site switches 18A, 18B,
22A and 22B are implemented by the “ServerIron” system, manufactured by
Foundry Networks, Inc. and that such GSLB switch 12 acts as a proxy to
DNS server 16 for the domain “foundrynet.com.” (See id.)
Paragraph 7 of the Hsu Declaration states that:
Upon information and belief, Exhibit A is a draft chapter from a
product manual for Foundry Networks, Inc.’s ServerIron
product. The draft chapter is from an earlier version of the
Conf. Guide product manual submitted as prior art in this
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reexamination. Substantially similar passages are present in
this version of the manual in Exhibit A as were cited in the
Reexamination request.
Furthermore, paragraph 8 of the Hsu Declaration states that “[u]pon
information and belief, the Conf. Guide describes the work that is the subject
of the claims of the ’009 patent application; i.e., this chapter describes the
work of the named inventors.” The Examiner has presented no evidence or
reasoning to call into question the veracity of the Hsu Declaration,
particularly in light of the corroborating details provided in the draft
Configuration Guide, as discussed in detail below.
For example, the draft Configuration Guide (i.e., Exhibit A) is
chapter 7 of a draft product manual for Foundry Networks’ ServerIron,
entitled “Configuring Global Server Load Balancing,” dated February 2010.
The claimed invention is illustrated in Figure 7.1, an exemplary GSLB
configuration, and described in detail on pages 7-2 to 7-6, 7-22, 7-27, 7-38,
7-40, and 7-42 of the draft Configuration Guide. Furthermore, Figure 1 of
the ’009 patent, as described in column 2, line 54 to column 3, line 40, is
substantially identical to Figure 7.1 of the draft Configuration Guide.
Furthermore, the draft Configuration Guide, dated February 2010, is nearly
identical to the Configuration Guide, dated May 2010, with the exception of
several newly added sections (e.g., “Modifying GSLB Protocol Parameters
(pp. 7-29 to 7-38), “Configuring Affinity” (pp. 7-38 to 7-44), and
“Configuring Transparent DNS Query Intercept” (pp. 7-44 to 7-49)).
Because the ’009 patent discloses that one example of GSLB
switch 12 and site switches 18A, 18B, 22A and 22B are implemented by the
“ServerIron” system, manufactured by Foundry Networks, Inc., and the
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claimed invention is described in the draft Configuration Guide, which also
refers to “GSLB ServerIron,” the preponderance of the evidence supports
Patent Owner’s argument that the inventors of the ’009 patent also authored
the draft Configuration Guide, as well as the Configuration Guide cited as
prior art. See Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998)
(“[A] ‘rule of reason’ analysis is applied to determine whether an inventor’s
testimony regarding reduction to practice has been sufficiently corroborated
. . . sufficient circumstantial evidence of an independent nature can satisfy
the corroboration requirement.”) (citations omitted).

Actual Reduction to Practice
The Examiner also determined that the Hsu Declaration was
insufficient to establish actual reduction to practice before May 2010, the
publication date of Configuration Guide. (Ans. 5–7.) In particular, the
Examiner determined:
There is absolutely no evidence that any element of the claim
language was actually reduced to practice. . . . There is no
evidence of the alleged “routine business practice”. . . . There is
no evidence of the recited software functions or code
implementing the functions. There is no evidence of the recited
files or the “source code system” into which they were
allegedly checked.
(Ans. 6.) We do not agree with the Examiner’s determination.
Paragraph 12 of the Hsu Declaration states that:
Upon information and belief, the product described in
Exhibit A was reduced to practice in the United States of
America before the draft chapter presented in Exhibit A was
written, i.e., Foundry Networks, Inc. had a working prototype
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of the features claimed in at least claims 1–10, 12–22, and 24–
23 of the ’009 patent before February 2000.
Furthermore, paragraph 13 of the Hsu Declaration states that “[u]pon
belief, it was routine business practice at Foundry Networks, Inc. in at least
the years 1999 and 2000 to not describe a product feature in a product
manual until after the feature was reduced to practice in a working
prototype.”
As discussed previously, the draft Configuration Guide (i.e.,
Exhibit A) is a draft product manual for Foundry Networks’ ServerIron,
entitled “Configuring Global Server Load Balancing,” dated February 2010.
This draft Configuration Guides is a 51-page technical manual that provides
detailed instructional sections, including “GSLB Overview” (pp. 7-2 to 7-7),
“Configuring GSLB” (pp. 7-7 to 7-26), “Modifying GSLB Control
Parameters” (pp. 7-26 to 7-34), “Displaying GSLB Information” (pp. 7-34 to
7-48) and “SNMP Traps and Syslog Messages” (pp. 7-49 to 7-51). The draft
Configuration Guides further includes screen shots of a Web management
interface for text entry or pull-down menus, as well as command lines. (See
e.g., pp. 7-10 to 7-17.)
Because the draft Configuration Guide is a detailed technical manual
of the “ServerIron” product that includes screen shots of the operational
product, the preponderance of the evidence supports Patent Owner’s
argument that draft Configuration Guide was written after a working
prototype of the “ServerIron” system was reduced to practice, according to
routine business practice, and that “SeverIron” functioned for its intended
purpose. See Cooper, 154 F.3d at 1330.
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Thus, because Patent Owner has antedated the Configuration Guide,
published May 2010, this reference is unavailable as prior art.
Accordingly, we reverse the Examiner’s decision to reject claims 1–
10, 12–22, and 24–28 under 35 U.S.C. § 102(a) as anticipated by
Configuration Guide.

§ 102 Rejection—Johnson
The Examiner found that Johnson discloses all the limitations of
independent claims 26 and 28. (Ans. 2, 13–14.) In particular, the Examiner
found that “[t]he term [site switch] only appears in the claim as one of
several options after the clause ‘wherein the first set of performance metrics
comprises one of’” and accordingly, “claim 26 does not require a ‘site
switch.’” (Ans. 13.) We agree with the Examiner’s determination.
Independent claim 26 recites “wherein the first set of performance
metrics comprises one of : [i] round trip time information associated with a
plurality of site switches . . . [ii] available session capacity . . . [iii] a
flashback speed associated with each of the plurality of site switches . . . [iv]
geographical locations of the set of servers . . . or [v] previous selections of
network addresses” (emphases added). Thus, claim 26 requires a choice of
“one of” five performance metrics, rather than all five performance metrics.
Thus, claim 26 only requires that “the first set of performance metrics” to be
either “[ii] available session capacity” or “[iv] geographical locations of the
set of servers,” neither of which recites “site switches.”
Johnson relates to “redirecting traffic among a number of servers
using a portion metric for each server.” (Col. 1, ll. 20–22.) Figure 2 of
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Johnson illustrates distributed system 70 that includes client 76 connected to
Internet 74, such that client 76 can access San Jose web server 78 or Paris
web server 80 (col. 5, ll. 20–30) and “[a]n information gathering block 82
may be utilized to gather metric information such as the distance to each
server” (col. 5, ll. 43–44). Johnson explains that “the distributed director 72
may query the information gathering block 82 for distance metrics between
the distributed servers 78, 80 and the client 76.” (Col. 5, ll. 47–50.) Thus,
Johnson discloses the limitation “geographical locations of the set of
servers.” Johnson further explains that “[f]or each server, the metric value is
determined using the server request percentage for the server, the portion
metric for the server, and the total number of server requests received.”
(Col. 7, ll. 55–58.) Thus, Johnson further discloses the limitation “previous
selections of network addresses in the plurality of network addresses as the
best network address in response to a domain name query.”
Patent Owner argues that “[t]his claim limitation [of a “site switch”] is
not found in Johnson, because the information gathering blocks 82 (i.e. DRP
agents) in Figure 2 of Johnson are not site switches.” (PO App. Br. 22; see
also PO Reb. Br. 17–18.) However, as discussed previously, because
claim 26 recites “performance metrics comprises one of” five performance
metrics, claim 26 does not require a performance metric having a “site
switch.” As discussed previously, Johnson discloses the limitations
“geographical locations of the set of servers” and “previous selections of
network addresses in the plurality of network addresses as the best network
address in response to a domain name query.”
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Accordingly, we affirm the Examiner’s decision to reject independent
claim 26 under 35 U.S.C. § 102(a) as anticipated by Johnson. Claim 28
depends from independent claim 26, and Patent Owner had not presented
any substantive arguments with respect to this claim. Therefore, we affirm
the Examiner’s decision to reject dependent claim 28 under 35 U.S.C.
§ 102(a) for the same reasons discussed above with respect to independent
claim 26.

§ 103 Rejection—Johnson and Cisco LocalDirector
Claim 27
The Examiner found that the combination of Johnson and Cisco
LocalDirector teaches the limitation “a site switch . . . reachable via the site
switch using a virtual address configured at the site switch.” (Ans. 16–17.)
In particular, the Examiner found that gathering block 82 of Johnson, which
includes a router, corresponds to the limitation “site switch.” (See Ans. 13–
14.) We do not agree with the Examiner’s determination.
Johnson explains that “information gathering block 82 may include a
router and therefore must have access to all routing tables relating to the
geographically distributed Web servers” (col. 5, ll. 44–47) and that “the
invention can be implemented in numerous ways, including . . . an
apparatus such as a switching element (e.g., router or brouter)” (col. 4,
ll. 56–59).
Although the Examiner cited the “switching element (e.g., router or
brouter)” of Johnson as the “site switch” recited in claim 27, we are
persuaded by Patent Owner’s argument that “[t]his functionality [of the ’009
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patent identifying the site switches as proxies for the host servers, and that
the IP addresses of the host servers are configured at the site switches] is
part of what makes a site switch specific to a particular site” and “Johnson
does not disclose this functionality being associated with information
gathering blocks 82.” (PO App. Br. 23.) Therefore, the Examiner has
provided insufficient evidence to support a finding that Johnson teaches the
“site switch,” as recited in claim 27.
Accordingly, we reverse the Examiner’s decision to reject dependent
claim 27 under 35 U.S.C. § 103(a) as obvious over Johnson and Cisco
LocalDirector.

Claims 28
Appellants’ traversal of this ground of rejection does not raise any
arguments which differ substantively from those arguments made in
traversing the rejection based on anticipation by Johnson. (App. Br. 25.)
Therefore, we also affirm the Examiner’s rejection of claim 28 as obvious
over Johnson and Cisco LocalDirector. See In re McDaniel, 293 F.3d 1379,
1385 (Fed. Cir. 2002) (“[A]nticipation is the epitome of obviousness.”)
(citations omitted).

DECISION
The Examiner’s decision to reject claims 1–10, 12–22, 24, 25, and 27
under 35 U.S.C. § 102(a) as anticipated by Configuration Guide is reversed.
The Examiner’s decision to reject claims 26 and 28 under 35 U.S.C.
§ 102(a) as anticipated by Johnson is affirmed.
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The Examiner’s decision to reject claim 27 under 35 U.S.C. § 103(a)
over Johnson and Cisco LocalDirector is reversed.
The Examiner’s decision to reject claims 28 under 35 U.S.C. § 103(a)
over Johnson and Cisco LocalDirector is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED-IN-PART

PATENT OWNER:

2
nd
Reexam Group
Novak Druce + Quigg, LLP
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002

THIRD PARTY REQUESTER:

Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
901 New York Avenue, NW
Washington, DC 20001-4413