Google LLC v. Jenam Tech LLC

1. Case Identification

• Case #: IPR2021-00867
• Patent #: 10,306,026
• Filed: April 29, 2021
• Petitioner(s): Google LLC
• Patent Owner(s): Jenam Tech, LLC
• Challenged Claims: 1, 17, 21-22, 31-33, 43, 45-48, and 51

2. Patent Overview

• Title: Networking and Information Sharing
• Brief Description: The ’026 patent describes methods and systems for detecting an idle Transmission Control Protocol (TCP) connection between two network nodes. The technology involves exchanging idle time period (ITP) information to modify a timeout associated with the TCP connection, preventing premature termination.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1 and 33 by Eggert

• Prior Art Relied Upon: Eggert (an April 2004 IETF Internet-Draft titled "TCP Abort Timeout Option").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Eggert discloses every limitation of claims 1 and 33. Eggert teaches a new "Abort Timeout Option" (ATO) that allows hosts to negotiate a per-connection abort timeout to maintain TCP connections across long disconnection periods. Petitioner mapped Eggert's ATO negotiation during a TCP three-way handshake to the claimed method. The claimed "TCP-variant packet" is Eggert's TCP segment containing the non-standard ATO. The claimed "idle time period parameter" is Eggert's ATO field, which contains "metadata" (the timeout value in seconds). Petitioner asserted that detecting and identifying this metadata occurs when a receiving node processes the ATO to either accept or shorten the proposed timeout, thereby "modifying" a timeout attribute as claimed.
  • Key Aspects: This ground asserted that Eggert’s ATO mechanism is a direct analog to the ’026 patent’s ITP header functionality, performing the same function (negotiating an idle timeout) in the same way (via a TCP option during connection setup).

Ground 2: Obviousness of Claims 1, 17, 21-22, 33, 43, 45-48 over Eggert and Abdolbaghian

• Prior Art Relied Upon: Eggert and Abdolbaghian (Patent 6,981,048).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that Eggert teaches the base method of claims 1 and 33, while Abdolbaghian teaches the additional limitations of the dependent claims related to keep-alive packets. Abdolbaghian addresses application timeouts over network connections by using a keep-alive mechanism (sending a "ping" or message) at a frequency based on, but shorter than, the application timeout period. Petitioner argued a POSITA would have combined these references to add a well-known keep-alive function to Eggert's connection timeout mechanism. For example, claim 17's limitation of communicating keep-alive packets based on the idle time period was allegedly met by incorporating Abdolbaghian's keep-alive timer, set to expire before Eggert's negotiated abort timeout, to ensure the connection remains active.
  • Motivation to Combine: A POSITA would combine these references to enhance the robustness of the connection taught by Eggert. While Eggert allows a connection to survive long disconnections, incorporating Abdolbaghian's keep-alive mechanism would proactively prevent timeouts and verify peer availability, a common and complementary networking strategy.
  • Expectation of Success: The combination involved implementing a well-understood keep-alive mechanism within a standard TCP-based protocol. A POSITA would have had a high expectation of success in integrating these known networking principles to achieve the predictable result of a more resilient connection.

Ground 3: Obviousness of Claims 31-32 and 51 over Eggert and Tucker

• Prior Art Relied Upon: Eggert and Tucker (Patent 7,389,512).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims requiring that the idle time period be configured by an application "via an analog of a socket." Petitioner argued that while Eggert's protocol requires an interface for an application to configure the abort timeout, it does not specify the exact mechanism. Tucker discloses various standard Inter-Process Communication (IPC) mechanisms used in operating systems to facilitate communication between an application and a protocol layer, including sockets and "analogs" such as shared memory segments, message queues, and pipes.
  • Motivation to Combine: A POSITA implementing Eggert's protocol would need to select a mechanism for the application to communicate with the TCP stack. Tucker provides a finite and well-known set of such IPC mechanisms. A POSITA would combine Eggert with Tucker by selecting one of Tucker's disclosed IPC analogs (e.g., a message queue) to serve as the interface, which was presented as a simple and conventional design choice.
  • Expectation of Success: Combining a network protocol (Eggert) with a standard IPC mechanism (Tucker) to enable application control is a fundamental aspect of network programming. A POSITA would have routinely performed such an integration with a reasonable expectation of success.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 31-32 and 51 over the combination of Eggert, Abdolbaghian, and Tucker, relying on similar theories.

4. Key Claim Construction Positions

• Petitioner argued that no express claim constructions were necessary. For the terms "TCP-variant packet" and "TCP-variant connection," Petitioner contended the Board should apply their plain and ordinary meaning. It was argued that the ’026 patent provides little guidance on these terms and that Eggert’s protocol, which varies slightly from standard TCP by adding a new timeout option, falls squarely within any reasonable interpretation of a "TCP-variant." This position was supported by citing preliminary findings from related IPRs on a parent patent where the Board found Eggert disclosed these limitations.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that Eggert is not cumulative to any prior art considered during prosecution. Specifically, Petitioner contended that Eggert is materially different from RFC 5482 (cited in an IDS) because Eggert teaches a binding negotiation for a common timeout value, whereas RFC 5482 explicitly states its option exchange is not a binding negotiation.
• Petitioner also argued against discretionary denial under Fintiv. The primary arguments were that the parallel district court litigation (Jenam Tech, LLC v. Google, LLC, W.D. Tex.) was in its earliest stages and had been stayed pending resolution of Google's motion to transfer. Crucially, no trial date had been set, meaning the trial was highly unlikely to occur before the Board’s FWD deadline. Petitioner asserted this fact weighed heavily in favor of institution, and that other Fintiv factors, such as minimal investment in the parallel case and the strength of the petition's grounds, also favored institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 17, 21-22, 31-33, 43, 45-48, and 51 of the ’026 patent as unpatentable.