PTAB

PGR2022-00013

Google LLC v. Jenam Tech LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Networking and Information Sharing
  • Brief Description: The ’742 patent is directed to networking systems and methods for sharing information to detect an idle Transmission Control Protocol (TCP) connection between nodes. The technology involves exchanging an Idle Time Period (ITP) header during connection setup to modify timeout parameters associated with the connection.

3. Grounds for Unpatentability

Ground 1: Lack of Written Description - All Challenged Claims are unpatentable under 35 U.S.C. § 112(a).

  • Prior Art Relied Upon: This ground does not rely on prior art but rather on the intrinsic record of the ’742 patent and its priority applications, including the ’454 application (Application # 12/714,454) and the ’402 application (Application # 13/477,402).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the challenged claims fail the written description requirement of §112(a) because the specification does not demonstrate that the inventor was in possession of the claimed subject matter. The core of the argument is that claims 1, 75, and 78 recite key features related to “non-TCP,” “non-TCP connection,” or “TCP-variant” connections and packets. However, the specification of the ’742 patent and its entire chain of priority applications, stretching back to 2010, exclusively describe the invention in the context of standard TCP connections and packets.
    • Key Aspects: Petitioner contended that the pre-AIA priority applications (’454 and ’402 applications) focus entirely on TCP, using the term hundreds of times without once mentioning a "non-TCP" or "TCP-variant" alternative. The petition asserted that a person of ordinary skill in the art (POSITA) would understand that protocols that do not utilize TCP (such as UDP) operate in a fundamentally different environment with distinct rules for connection setup, packet structure, and timeout detection, and the specification provides no guidance on how the disclosed TCP-based methods would apply to such different protocols.
    • Key Aspects: The terms “non-TCP” and “TCP-variant” were allegedly introduced for the first time in later applications within the patent family (e.g., the ’802 application filed in 2017) and only in the summary and claims, without any corresponding support or explanation in the detailed description. Petitioner further argued that a specific claimed feature—detecting a time period “during at least a portion of the...connection set up”—also lacks written description support, as the specification and its cited references (like RFC 793) only describe detecting timeouts after a connection is fully established, not during the setup handshake.

Ground 2: Indefiniteness - Claims 78, 83, 86, 159, 167, 168, and 171 are unpatentable under 35 U.S.C. § 112(b).

  • Prior Art Relied Upon: This ground does not rely on prior art but on the intrinsic record.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that claims centered around the terms “TCP-variant connection” and “TCP-variant packet” are indefinite because the claim language, specification, and file history fail to inform a POSITA about the scope of these terms with reasonable certainty. The petition identified three main ambiguities. First, the specification provides no baseline for what constitutes the “current TCP” from which a “variant” is measured. It references RFC 793 (from 1981) but also acknowledges “various implementations” of TCP, leaving the standard for comparison unclear.
    • Key Aspects: Second, the intrinsic record allegedly provides no objective guidance on the type or degree of variation required for a protocol to qualify as a “TCP-variant.” It is unclear if a variant requires modifying existing TCP functionality or adding new features. Third, other claims in the ’742 patent family introduce further ambiguity, with some claims reciting that a “TCP-variant connection is not a TCP connection,” while Patent Owner’s infringement contentions map both “non-TCP” and “TCP-variant” terms to the same UDP-based protocol. This conflicting usage, Petitioner argued, makes it impossible for a POSITA to ascertain the boundaries of the claims.

4. Arguments Regarding Discretionary Denial

  • The petition argued that discretionary denial under §324(a) and the Fintiv factors would be inappropriate. The related district court litigation involving the ’742 patent was recently transferred and is stayed, with no trial date or schedule set. Consequently, the Board’s Final Written Decision (FWD) would issue long before any potential trial. Petitioner asserted that investment in the parallel litigation has been minimal, no Markman hearing has occurred, and the petition presents strong grounds for unpatentability, all of which weigh heavily in favor of institution.

5. Relief Requested

  • Petitioner requested institution of a Post Grant Review and cancellation of claims 1, 65, 73-78, 83, 86, 159, 167, 168, and 171 of the ’742 patent as unpatentable.