Verizon Business Network Services Inc v. Huawei Technologies Co Ltd

1. Case Identification

• Case #: IPR2020-01141
• Patent #: 7,965,709
• Filed: June 22, 2020
• Petitioner(s): Verizon Business Network Services Inc.
• Patent Owner(s): Huawei Technologies Co., Ltd
• Challenged Claims: 1, 4, 7, and 16

2. Patent Overview

• Title: Bridge Forwarding Method and Apparatus
• Brief Description: The ’709 patent discloses a network bridge forwarding method and apparatus designed to manage cross-VLAN (Virtual Local Area Network) frame forwarding. The system uses a combination of a frame's input port and input VLAN identifier (ID) to determine a corresponding Virtual Switching Instance (VSI), which is then used to look up forwarding information, such as an output port and output VLAN ID.

3. Grounds for Unpatentability

Ground 1: Obviousness over Carrie and Hawthorne - Claims 1, 4, and 16 are obvious over Carrie in view of Hawthorne.

• Prior Art Relied Upon: Carrie (Patent 7,693,158) and Hawthorne (Application # 2003/0152075).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Carrie taught the central concept of the ’709 patent that the Examiner previously found patentable: determining a virtual switch instance using a combination of an input port and an input VLAN ID. Carrie explicitly disclosed using a "virtual switch identifier" to segregate traffic from different customers on a Layer 2 switch, where the identifier is determined from the unique combination of the frame's port identifier and VLAN identifier. While Carrie taught obtaining an output port based on this virtual switch and the frame’s destination MAC address, Petitioner contended that Hawthorne supplied the missing element of translating the input VLAN ID to a different output VLAN ID. Hawthorne described a VLAN translation technique where an input port and input VLAN ID pair are used to determine an output port and a new, "translated" output VLAN ID.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references to solve a known problem that both address: managing networks where different customers use the same VLAN IDs. Petitioner asserted that while Carrie’s system segregated traffic within the switch, it did not solve the issue when traffic from different customers using the same VLAN ID needed to be forwarded to a common output port, such as to a single service provider network. Hawthorne provided a known, predictable solution for this exact scenario by translating input VLAN IDs to unique output VLAN IDs, thereby preventing data collision or misdirection in the downstream network. A POSITA would have been motivated to augment Carrie’s system with Hawthorne’s VLAN translation to create a more robust and complete traffic management solution.
  • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success. The combination involved applying a known VLAN translation technique (Hawthorne) to a standard Layer 2 switch (Carrie). Both references operated on the same principles and used the same input parameters (input port, input VLAN ID, destination MAC address), making the integration straightforward and the results predictable.

Ground 2: Obviousness over Carrie, Hawthorne, and Dobbins - Claim 7 is obvious over Carrie in view of Hawthorne and Dobbins.

• Prior Art Relied Upon: Carrie (Patent 7,693,158), Hawthorne (Application # 2003/0152075), and Dobbins (Patent 6,711,171).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Carrie and Hawthorne to address the additional limitation in claim 7, which required "abandoning the received frame" if the determined output port and output VLAN ID are the same as the input port and input VLAN ID, respectively. Petitioner argued this was a well-known anti-looping feature taught by Dobbins. Dobbins disclosed a packet filtering technique in a switching fabric where a packet is "filtered" or "dropped" (i.e., abandoned) if the source and destination are on the same port and share the same VLAN-ID. This prevents a frame from being unnecessarily forwarded back to the same physical and virtual network from which it was received.
  • Motivation to Combine: The motivation to add Dobbins’ teaching to the Carrie/Hawthorne combination was to increase network efficiency and prevent wasteful network loops, a fundamental goal in network switch design. A POSITA, having already created an improved switch by combining Carrie and Hawthorne, would have recognized the benefit of incorporating this standard, efficiency-enhancing filtering feature. Adding the logic taught by Dobbins would represent a simple, obvious improvement to further refine the switch’s performance and conserve network bandwidth.
  • Expectation of Success: Success would have been highly predictable. Dobbins’ filtering technique was designed for Layer 2 switches handling VLAN traffic, the same type of device as the combined Carrie/Hawthorne switch. Implementing this logic was a routine task for a POSITA, and since Carrie's switch was already designed to make connections between input and output ports, it was functionally configured to incorporate the filtering/dropping logic taught by Dobbins.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors was inappropriate. The core arguments were that the parallel district court litigation was in its very early stages with minimal investment from the parties, and discovery was largely stayed. Petitioner also offered to stipulate that it would not pursue the same invalidity grounds in the district court if the IPR was instituted, which would reduce overlap and streamline the parallel proceeding. Critically, Petitioner emphasized that the primary reference, Carrie, disclosed the very limitation the Examiner found patentable and was never considered during prosecution, meaning the petition presented new, material art and arguments not cumulative to those previously before the Office.

5. Relief Requested

• Petitioner requested the Board institute an inter partes review (IPR) and cancel claims 1, 4, 7, and 16 of Patent 7,965,709 as unpatentable under 35 U.S.C. §103.