Apcon Inc v. Gigamon Inc

1. Case Identification

• Case #: IPR2020-01579
• Patent #: 8,570,862
• Filed: September 4, 2020
• Petitioner(s): Apcon, Inc.
• Patent Owner(s): Gigamon Inc.
• Challenged Claims: 1, 8, 12, 13, 18, 25, 29, 30, 39, and 40

2. Patent Overview

• Title: Mapping a Port on a Packet Switch Appliance
• Brief Description: The ’862 patent relates to a packet switch appliance for providing visibility of network traffic. The system uses a port map with at least two rules, each having a criterion and an action, to process ingress packets received at a network port based on packet values.

3. Grounds for Unpatentability

Ground 1: Obviousness over Junos 7.4 - Claims 1, 8, 12, 13, 18, 25, 29, 30, 39, and 40 are obvious over Junos 7.4

• Prior Art Relied Upon: Junos 7.4 (JUNOS™ Internet Software Feature Guide, Release 7.4).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Junos 7.4, a user manual for Juniper Networks routing platforms, discloses all limitations of the challenged claims. Junos 7.4 teaches a packet switch device (a Juniper router) with a processing unit (Physical Interface Cards), network ports for receiving traffic, and instrument ports for sending monitored traffic to analyzers. Petitioner contended that Junos 7.4’s use of a "tunnel-interface-filter" to process packets meets the limitations of applying a first rule with a first criterion and a second rule with a second criterion. This filter differentiates traffic based on packet values (e.g., TCP or UDP protocol) and applies different actions—forwarding TCP traffic to one routing instance, UDP traffic to another, and discarding the rest. This process of filtering and forwarding based on packet characteristics was argued to render the independent claims obvious.
  • Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
  • Expectation of Success (for §103 grounds): Not applicable (single reference ground).

Ground 2: Obviousness over Junos 7.4 and Gallatin - Claims 1, 8, 12, 13, 18, 25, 29, 30, 39, and 40 are obvious over Junos 7.4 in view of Gallatin

• Prior Art Relied Upon: Junos 7.4 (JUNOS™ Internet Software Feature Guide, Release 7.4) and Gallatin (Application # 2005/0265364).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground relied on the disclosures of Junos 7.4 as established in Ground 1 and added the teachings of Gallatin. Gallatin discloses a packet switch that can aggregate packets from multiple network ports and send them to a single instrument port. Petitioner asserted that Gallatin also teaches applying multiple filters (pre-filter and post-filter) based on various criteria and configuring a packet switch for out-of-band monitoring, where the switch is outside the primary path of network traffic.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Junos 7.4 with Gallatin to add the known benefit of packet aggregation to Junos 7.4's sophisticated rule-based filtering system. This would allow a network administrator to consolidate traffic from multiple sources into a single monitoring tool, which was a well-known and desirable feature for improving network visibility and efficiency.
  • Expectation of Success (for §103 grounds): A POSITA would have an expectation of success because combining aggregation (Gallatin) with filtering (Junos 7.4) was a predictable integration of known network management techniques that would yield the expected result of a more capable monitoring system.

Ground 3: Obviousness over Orr and Gallatin - Claims 1, 8, 12, 13, 18, 25, 29, 30, 39, and 40 are obvious over Orr in view of Gallatin

• Prior Art Relied Upon: Orr (Patent 7,769,024) and Gallatin (Application # 2005/0265364).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Orr teaches a packet switch apparatus with a processor and a packet classifier that selects packets satisfying one or more classification rules. These rules describe packet characteristics and trigger actions, such as detecting specific attack patterns (e.g., a Trojan using ICMP) or illegal TCP flag combinations. This mapping satisfied the claimed limitations of using multiple rules with different criteria. Gallatin was again cited for its teaching of aggregating packets from multiple network ports to a single instrument port and its disclosure of an out-of-band configuration.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Orr's advanced, rule-based packet classification and security-focused analysis with Gallatin’s traffic aggregation capabilities. This combination would allow for the efficient security monitoring of traffic from multiple network segments, consolidating the analysis into a single, more powerful tool, representing a common design goal in network engineering.
  • Expectation of Success (for §103 grounds): Success would be expected as Orr already teaches applying rules to classify packets received via multiple ports, and integrating Gallatin’s method of aggregating those inputs to a single output was a straightforward engineering task with predictable results.

4. Key Claim Construction Positions

• Petitioner adopted the claim constructions from the parallel district court litigation for the purpose of the IPR. Key constructions included:
  • “out of band”: Construed as “outside the path of network traffic.” This was central to arguments that the prior art systems, which used taps or splitters to copy traffic, operated in an out-of-band manner as required by dependent claims 8 and 25.
  • “network port”: Construed as “a port configured to be connected to a network (and not configured to be connected to an instrument).”
  • “instrument port”: Construed as “a port configured to be connected to an instrument (and not configured to be connected to a network).” These definitions were used to map the distinct ingress and egress ports shown in the prior art references.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. The core reasons provided were:
  • Different Issues: The IPR challenges a broader set of claims (1, 8, 12, 13, 18, 25, 29, 30, 39, 40) than the parallel district court case (1, 8, 13, 18, 25).
  • Different Prior Art: The petition relies on a primary reference, Orr, that was not at issue in the district court case, meaning the PTAB would be considering substantially different invalidity arguments.
  • Strong Merits: Petitioner characterized its invalidity grounds as an "open-and-shut case," arguing that the strong merits weigh heavily in favor of institution to correct the error of granting the patent.
  • Timing: Although a district court trial was scheduled, Petitioner argued that the Final Written Decision would likely issue before any appeal of the verdict concluded, positioning the PTAB to efficiently resolve the invalidity questions first.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 8, 12, 13, 18, 25, 29, 30, 39, and 40 of the ’862 patent as unpatentable.