PTAB

IPR2023-00931

Google LLC v. Jenam Tech LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Methods and Systems for Sharing Information for Detecting an Idle Transmission Control Protocol Connection
  • Brief Description: The ’058 patent is directed to networking methods and systems for sharing information between nodes to detect and deactivate an idle Transmission Control Protocol (TCP) connection, thereby conserving network resources.

3. Grounds for Unpatentability

Ground 1: Obviousness over Morris and SIP - Claims 1, 9, 11, 17, 18, 43, 46, and 52 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 asserted that Morris, a publication of an application in the ’058 patent’s own priority chain, discloses most elements of claim 1. Morris teaches a system where two nodes establish a connection and then use negotiated idle time period (ITP) information to detect inactivity after the connection is set up (the claimed "second duration"). However, Petitioner argued Morris does not expressly teach detecting a timeout during the initial connection setup (the claimed "first duration") or using a setup packet for a protocol "different from" standard TCP.

      Petitioner contended that SIP, an application-layer protocol for creating and terminating communication sessions, remedies these deficiencies. SIP explicitly discloses using a timeout mechanism (Timer B) during the initial three-way handshake to determine if a connection attempt has failed. Petitioner mapped this teaching to the claimed "first duration" for detecting a time period "during at least a portion of the first connection set up." Regarding the "protocol that is different from" TCP limitation, Petitioner argued that modifying Morris's TCP-based system with SIP's timeout-during-setup feature would create a new, TCP-variant protocol distinct from standard TCP as defined by RFC 793. Petitioner further noted that the Patent Owner has characterized similar TCP-variant protocols as meeting this limitation in related litigation. The remaining limitations, such as detecting a "third duration" for a keep-alive mechanism, were argued to be expressly taught by Morris.

    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Morris and SIP to improve the functionality of the Morris system. Both references address establishing and managing connections between network nodes. Morris is concerned with wasting resources due to idle connections. SIP provides a well-known solution to the analogous problem of wasting resources on failed connection attempts by implementing a timeout during the setup phase. A POSITA would combine SIP’s setup-timeout mechanism with Morris's post-setup idle detection to create a more robust and efficient system that conserves resources at all stages of the connection lifecycle.

    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these known networking principles. Implementing a timeout mechanism during connection setup was a well-understood technique, and integrating it into the Morris framework would have been a predictable modification to achieve the desired result of improved resource management.

4. Key Technical Contentions (Beyond Claim Construction)

  • Challenge to Effective Filing Date: A central contention of the petition is that the challenged claims of the ’058 patent are not entitled to the claimed priority date, and their effective filing date is no earlier than March 18, 2021. Petitioner asserted that the patent’s priority applications lack written description support for two key features required by all challenged claims:
    • Non-TCP Protocol: The priority applications are allegedly limited to TCP-based embodiments. The introduction of "non-TCP" or "different from TCP" language in the summary and claims of later applications was not accompanied by any disclosure explaining how the taught TCP-specific techniques could be applied to a different protocol (e.g., UDP).
    • Timeout During Connection Setup: The priority applications exclusively describe detecting idle periods after a TCP connection is fully established. Petitioner argued they provide no support for the claimed feature of detecting a time period and potentially closing the connection during the initial setup phase.
  • Consequence of Filing Date: Because the effective filing date is argued to be in 2021, Morris (published in 2011) and SIP (published in 2002) qualify as prior art under 35 U.S.C. §102.

5. Arguments Regarding Discretionary Denial

  • Fintiv Factors Favor Institution: Petitioner argued that discretionary denial under Fintiv is unwarranted. The parallel district court litigation involving the ’058 patent has been stayed pending resolution of IPRs on related patents, and there is no scheduled trial date. The district court case is in its earliest stages, with no significant investment or discovery having occurred. Petitioner contended that the petition presents compelling merits, as most claim features are taught by an earlier application in the patent’s own family (Morris), and the combination with SIP is a straightforward application of well-known networking concepts. The significant public interest in cancelling invalid patent claims further weighs in favor of institution.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 9, 11, 17, 18, 43, 46, and 52 of the ’058 patent as unpatentable.