Google LLC v. Jenam Tech LLC

1. Case Identification

• Case #: IPR2021-00870
• Patent #: 10,069,945
• Filed: April 29, 2021
• Petitioner(s): Google LLC
• Patent Owner(s): Jenam Tech, LLC
• Challenged Claims: 7-8 and 11-12

2. Patent Overview

• Title: Sharing Information for Detecting an Idle TCP Connection
• Brief Description: The ’945 patent describes networking methods for detecting and managing idle Transmission Control Protocol (TCP) connections. The claimed invention involves using a first protocol (TCP) to provide a client with code that enables the establishment of a second, separate protocol connection, which includes mechanisms for detecting idle periods.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wookey and Berg - Claims 7-8 are obvious over Wookey in view of Berg.

• Prior Art Relied Upon: Wookey (Application # 2007/0171921) and Berg (Patent 6,674,713).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Wookey disclosed the foundational elements of independent claim 1, including a client computer and server computer communicating over a TCP and Hypertext Transfer Protocol (HTTP) connection. In Wookey, the server provides the client with an HTML page containing encoded URLs (the claimed “code”). A user action on the client causes it to use an encoded URL to establish a second connection to another server. However, Petitioner contended Wookey does not explicitly detail a protocol for this second connection that is separate from TCP and includes idle-timeout negotiation. Petitioner asserted that Berg remedied this deficiency by teaching a Reliable User Datagram Protocol (RUDP), a non-TCP protocol designed to ensure reliable connections. Berg’s RUDP protocol explicitly supports negotiating connection parameters, including a "null segment timeout" value, which corresponds to the claimed "idle time period parameter." The combination of Wookey’s client-server framework and Berg’s RUDP protocol for the second connection allegedly rendered the limitations of claims 1, 7, and 8 obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Wookey and Berg to improve the reliability of the second connection described in Wookey. Petitioner argued that Wookey identifies the need for robust connections, particularly in mobile environments where disconnections are common. Berg addresses this exact problem by providing a protocol (RUDP) with features like negotiable timeouts to manage connection state and prevent unintentional terminations. Therefore, a POSITA would have been motivated to implement Berg’s RUDP to fulfill the desired reliability characteristics for the second connection in Wookey’s system.
  • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success. The combination involved implementing a known reliable protocol (Berg's RUDP) within a known client-server architecture (Wookey's) to achieve the predictable result of a more stable network connection.

Ground 2: Obviousness over Wookey, Berg, and Eggert - Claims 11-12 are obvious over Wookey in view of Berg and Eggert.

• Prior Art Relied Upon: Wookey (Application # 2007/0171921), Berg (Patent 6,674,713), and Eggert (TCP Abort Timeout Option, IETF Internet-Draft, April 14, 2004).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the Wookey and Berg combination to address the limitations of claims 11 and 12, which relate to global and connection-specific timeout settings. Petitioner argued that while the Wookey-Berg combination teaches negotiating a timeout value, it does not specify what should happen if the client and server fail to agree on a value. Petitioner introduced Eggert to supply this teaching. Eggert discloses a protocol for negotiating a connection-specific abort timeout where, if the nodes fail to agree, the connection is established using a default timeout value. Petitioner contended this default value in Eggert corresponds to the "global setting" recited in claim 11. Claim 12, which requires a "connection-specific setting that is capable of overriding a global setting," was allegedly met because the primary negotiation process described in Berg and Eggert results in a connection-specific value that, if agreed upon, would naturally override any default (global) value.
  • Motivation to Combine: A POSITA, having combined Wookey and Berg, would have sought to make the timeout negotiation process more robust. Berg’s protocol leaves ambiguity if negotiation fails. A POSITA would have been motivated to consult a reference like Eggert, which addresses the same technical problem space of connection parameter negotiation, to find a solution. Eggert provides a simple and logical fix: use a default value to prevent connection failure. This would ensure the connection could be established even without a successfully negotiated custom timeout, thereby improving the overall system.
  • Expectation of Success: Success would have been reasonably expected, as this modification involved adding a well-understood fallback mechanism (a default setting from Eggert) to a known negotiation protocol (from Berg). This was a straightforward design choice to improve system resilience.

4. Key Claim Construction Positions

• "a second protocol that is separate from the TCP": Petitioner argued that no express construction was necessary for this term. However, a central pillar of its invalidity argument was that Berg's RUDP protocol, which is built on the User Datagram Protocol (UDP) rather than TCP, plainly meets the limitation of being "separate from the TCP." Petitioner noted that the Board had previously agreed in a related case that Berg's RUDP is a non-TCP protocol.

5. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments that discretionary denial under either 35 U.S.C. §325(d) or §314(a) would be inappropriate.
  • Not Cumulative (§325(d)): Petitioner argued that Eggert, a key reference for Ground 2, was not cumulative to prior art considered during prosecution. Although an RFC document (RFC 5482) with some topical overlap was cited in an Information Disclosure Statement, Petitioner asserted Eggert is materially different because it teaches a binding negotiation for timeout values and a default fallback mechanism, features absent from RFC 5482.
  • Fintiv Factors Not Met (§314(a)): Petitioner argued the factors from Apple Inc. v. Fintiv, Inc. weigh in favor of institution. The parallel district court litigation was stayed pending a motion to transfer, meaning no trial date was set and the court's schedule was highly speculative. Consequently, the Board’s Final Written Decision would likely issue long before any potential trial. Petitioner also asserted that investment in the parallel litigation had been minimal, there was little overlap in arguments, and the petition presented strong grounds for unpatentability.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 7-8 and 11-12 of Patent 10,069,945 as unpatentable.