PTAB

IPR2023-00927

Google LLC v. Jenam Tech LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Networking and Information Sharing for Detecting an Idle TCP Connection
  • Brief Description: The ’217 patent is directed to methods and systems for detecting an idle Transmission Control Protocol (TCP) connection between two network nodes. The technology involves sharing information during connection setup to configure and manage timeouts for deactivating idle connections.

3. Grounds for Unpatentability

Ground 1: Obviousness over Morris and SIP - Claims 1, 6, 12, 14, 17, and 20 are obvious over Morris in view of SIP.

  • Prior Art Relied Upon: Morris (Application # 2011/0213820) and SIP (IETF RFC 3261).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Morris, which is a pre-grant publication of an application in the ’217 patent’s priority chain, discloses most features of the challenged claims. Specifically, Morris taught a system where a first node sends metadata in a packet to a second node during connection setup. This metadata is used to determine an Idle Time Period (ITP) or "second duration" for detecting an idle connection after the connection is established. If the connection is idle for this duration, it is deactivated.

    • Petitioner contended that Morris does not expressly disclose detecting a time period based on a "first duration" during the connection setup itself. To supply this missing element, Petitioner turned to SIP. SIP, an application-layer protocol for managing communication sessions, taught an INVITE Client Transaction (ICT) that used a timer (Timer B) during the initial three-way handshake. This timer initiated upon sending an INVITE request and, if no response was received within the timer's duration, the transaction would time out and terminate. Petitioner argued this directly taught detecting a time period during connection setup and closing the connection in response, as claimed. The combination of Morris's post-setup idle detection with SIP's setup-phase timeout detection rendered the claims obvious.

    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine SIP with Morris to address a known problem. Morris was concerned with wasting network resources on established but idle connections. SIP addressed the analogous problem of wasting resources on connection attempts that receive no response. A POSITA would have recognized that incorporating SIP's timeout-during-setup mechanism into Morris's system was a logical step to make the connection management process more robust and efficient from the very beginning. Both references operated in the same technical field of network protocol management, making the combination a predictable solution to a known problem.

    • Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success. The proposed modification involved combining known technologies—a timeout mechanism during setup (from SIP) and idle-period management after setup (from Morris)—to achieve a predictable result. The use of timers to manage different phases of a network connection was a well-understood and common practice in the field, ensuring the integrated system would function as expected.

4. Key Technical Contentions (Beyond Claim Construction)

  • Challenged Patent Not Entitled to Earlier Priority Date: A central contention of the petition was that the ’217 patent was not entitled to the benefit of its claimed priority date of February 27, 2010. Petitioner argued that the priority applications failed to provide adequate written description support under §112 for two key features required by the challenged claims.
    • Lack of Support for "Non-TCP" Connections: The challenged claims broadly recite a "first connection," which Petitioner, supported by claim 20 and the patent owner's infringement contentions, argued encompassed non-TCP protocols (like UDP). However, Petitioner asserted that the priority applications, including the earliest ’454 application, were exclusively limited to TCP-based embodiments, repeatedly referencing TCP, TCP headers, and the RFC 793 handshake, without providing any disclosure of how the invention would apply to a non-TCP environment.
    • Lack of Support for Timeout "During Connection Setup": Petitioner also argued that the priority applications only disclosed detecting idle time periods after a TCP connection was fully established. The applications allegedly failed to describe the claimed feature of detecting a timeout and closing the connection during the setup phase (i.e., during the three-way handshake).
    • Because these features were allegedly not supported until the application that issued as the ’217 patent was filed on January 14, 2021, Petitioner contended this was the effective filing date. This later date would make Morris (published 2011) and SIP (published 2002) valid prior art references.

5. Arguments Regarding Discretionary Denial

  • Fintiv Factors Favor Institution: Petitioner argued that discretionary denial under Fintiv would be inappropriate. The key reasons asserted were that the parallel district court litigation involving the ’217 patent had been stayed pending the outcome of IPRs on related patents and was still in the very early stages. No significant investment had been made in the district court case, with no claim construction or significant discovery having occurred. Petitioner also argued that the petition presented compelling merits for unpatentability, which, combined with the low risk of overlap and inefficiency, strongly favored institution.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 6, 12, 14, 17, and 20 of the ’217 patent as unpatentable.