APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,815 11/10/

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1 UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,815 11/10/ /30/2014 Fountainhead Law Group P.C Fountainhead Law Group P.C. Chad R. Wals 900 Lafayette Street Suite 301 SUITE 301 Santa Clara, CA EXAMINER STEELMAN, MARY J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/30/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07)

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD BROCADE COMMUNICATIONS SYSTEMS, INC., Patent Owner and Appellant v. A10 NETWORKS, INC., Requester Appeal Reexamination Control No. 95/001,815 United States 1 Technology Center 3900 Before JOHN C. MARTIN, HOWARD B. BLANKENSHIP, and MAHSHID D. SAADAT, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 This patent (hereinafter 195 patent ) was granted on July 7, 2009, based on Application 11/695,458, filed on April 2, 2007, as a continuation of Application 10/124,449, filed on April 16, 2002 (now Patent 7,209,435). Claim 1 of the 195 patent was canceled by Ex Parte Reexamination (Continued on next page.)

3 Brocade Communications Systems, Inc. (hereinafter Patent Owner ) appeals the Examiner s rejections of original claims 1, 2, 4, 5, and of the 195 patent. P.O. Appeal Br Requester, A10 Networks, Inc. has withdrawn from further participation in this proceeding and did not file a respondent brief. 3 Patent Owner did not file a rebuttal brief in response to the Examiner s Answer, which was mailed on December 17, Inasmuch as claim 1 has been canceled by Ex Parte Reexamination Certificate US 7,840,678 C1 (Feb. 24, 2014), this appeal is dismissed with respect to claim 1, leaving the rejections of only dependent claims 2, 4, 5, and for our consideration. We have jurisdiction under 35 U.S.C. 6, 134, and 315. We AFFIRM. Certificate US 7,558,195 C1, which issued on February 24, Appellant s Appeal Brief Pursuant to 37 C.F.R , filed August 26, Specifically, Requester on June 13, 2013, filed a Notice of Withdrawal of Third Party Requester A10 Networks, Inc., stating (at page 1): Third Party Requester, A10 Networks, Inc. ( A10 ), has entered into a settlement agreement with the Patent Owner, Brocade Communications Systems, Inc., and as such is withdrawing from this proceeding. A10 will make no further comment or otherwise participate in the proceeding and further withdraws any pending petition and/or opposition A10 filed. 2

4 I. STATEMENT OF THE CASE A. Related Litigation and Reexamination Proceedings The 195 patent was the subject of litigation styled: Brocade Communications Systems, Inc. v. A10 Networks, Inc., Case No. 10-CV LHK (N.D. Cal.). P.O. Appeal Br. 36 ( XII. Related Proceedings Appendix ). A petition 4 by Patent Owner to terminate this inter partes reexamination proceeding as a result of a final decision in the aboveidentified litigation was dismissed in a USPTO decision mailed August 30, The above-noted ex parte reexamination certificate terminated ex parte reexamination proceeding 90/011,771 (hereinafter the ex parte proceeding ), which was initiated by a Request for Ex Parte Reexamination filed by A10 Networks, Inc. on June 27, In a non-final Office action mailed in the ex parte proceeding on November 18, 2011, the Examiner (at page 6) rejected claim 1 for anticipation by Guess, 6 which is one of the 4 Patent Owner s Petition Under 37 C.F.R to Terminate the Reexamination Proceedings, filed July 10, Decision Dismissing Petition to Terminate Inter Partes Reexamination Proceeding. 6 Guess, et al., Patent Publication US 2003/ A1, published March 13, Guess is referred to in the Request for Inter Partes Reexamination (hereinafter Request ), filed on November 10, 2011, as Guess 501. Request 4. 3

5 references relied on in the rejections before us in this appeal. This rejection was maintained (at page 2) in a final Office action mailed July 19, 2012, and affirmed by the Patent Trial and Appeal Board in a November 22, 2013, Decision on Appeal in Appeal (at page 36). That Decision on Appeal, which was not appealed by Patent Owner, is the basis for the cancelation of claim 1 by Ex Parte Reexamination Certificate US 7,840,678 C1. B. Claim 1 (Now Canceled) Claim 1 (now canceled), from which claims 2, 4, 5, and depend, reads as follows: 1. A switch for use in a system of switches, the system of switches acting as a virtual switch, the switch comprising: a memory; and a plurality of ports, each for communicatively coupling the switch to a Layer 2 network, wherein the switch is configured to act in concert with one or more other switches in the system of switches to provide route redundancy for the Layer 2 network, and wherein the switch is configured to communicate its status to the one or more other switches by transmitting, via at least one of the plurality of ports, redundancy control packets for flooding throughout the Layer 2 network. 4

6 Claims App. (P.O. Appeal Br. 34) (altered to have a paragraph structure similar to that employed in the 195 patent). C. The Rejections As noted above, the rejected claims that remain before us are dependent claims 2, 4, 5, and The grounds of rejections, which rely on Guess, Yip, 7 ExtremeWare, 8 and Tech Brief, 9 are listed as follows at pages 3-4 of Patent Owner s Appeal Brief: 7 Yip, et al., US 6,954,436 B1, issued October 11, Extreme Networks, Inc., ExtremeWare Software User Guide (April 1999). Request for Inter Partes Reexamination (hereinafter Request ), filed November 10, 2011, at 4. 9 Extreme Networks, Inc., Tech Brief, Redundancy in the Application-Aware Data Center ( 2001). Request 4. 5

7 II. DISCUSSION A. The Rejection for Anticipation by Guess (Claims 2, 4, 5, and 14-17) Patent Owner s sole argument against the rejection of claims 2, 4, 5, and for anticipation by Guess treats these claims as standing or falling with claim 1: The Examiner failed to show that every element of claim 1 is expressly or inherently disclosed by Guess. Therefore, claims 1 [sic, 2], 4-5 and of the [ ]195 patent are patentable over Guess. P.O. Appeal Br. 16. The rejection of claims 2, 4, 5, and for anticipation by Guess is therefore sustained for the same reasons that the rejection of claim 1 on this ground was affirmed in the Board s November 22, 2013, Decision on Appeal in Appeal , which resulted in the cancelation of claim 1 by Ex Parte Reexamination Certificate US 7,558,195 C1. Patent Owner separately argues the patentability over Guess of claim 14, which reads as follows: 14. The switch of claim 1, wherein the Layer 2 network is a loop free network. Claims App. (P.O. Appeal Br. 34). 6

8 The separate argument for claim 14 reads as follows: Guess is also directed only to Collector and Feeder loop networks and therefore does not anticipate claim 14, which requires the Layer 2 network to be loop-free. P.O. Appeal Br. 11. This quoted sentence concludes with footnote 32: See Guess at [0044]-[0053] and elsewhere in Guess. This argument is unpersuasive because it fails to address the Examiner s reliance on Guess s paragraph 0087 in the rejection of claim 14. Specifically, the nonfinal Office Action (hereinafter Non-final Action ), mailed on December 16, 2011, states: 1. Claims 2, 4-5, and are rejected under 35 U.S.C. 102(e) as being anticipated by Guess [ ]501. This rejection for claims 2, 4-5, and is adopted for the reasons set forth in the November 10, 2011 request for reexamination, on pages 6-7 and 10-19, which are incorporated by reference. Non-final Action 6. The Request in these cited pages describes the proposed rejection of claim 14 for anticipation by Guess as follows: Guess 501 discloses that the Layer 2 network is a loop free network. For example, Guess 501 discloses: When a switch is in standby, it does not perform Layer 2 switching services for the VLAN. From a Layer 2 switching perspective, no forwarding occurs between the member ports of the VLAN. This prevents loops and maintains redundancy. Guess 501 at [0087]. Request 17, limitation 14.1 (our emphasis). The Examiner s incorporation by reference of Requester s reliance on paragraph 0087 for the rejection of claim 14 as anticipated by Guess was not subsequently modified or 7

9 withdrawn by the Examiner, who did not specifically address this rejection of claim 14 in the Action Closing Prosecution (mailed December 19, 2012), the Right of Appeal Notice (mailed May 24, 2013), or the Examiner s Answer. Patent Owner has not addressed (let alone shown error in) the Examiner s reliance on paragraph 0087 for the claimed loop-free operation. Furthermore, Patent Owner s citation to Guess at [0044]-[0053] and elsewhere in Guess (P.O. Appeal Br. 11 n.32) is not supported by an explanation of why these paragraphs demonstrate that Guess fails to describe the claimed loop-free operation. We therefore also sustain the rejection of claim 14 for anticipation by Guess. For the above reasons, we have sustained the rejection for anticipation by Guess with respect to each of claims 2, 4, 5, and 14-17, which constitute all of the claims that remain on appeal. B. The Other Grounds of Rejection Because we are sustaining the rejection of claims 2, 4, 5, and for anticipation by Guess, it is unnecessary to reach the merits of any of the other grounds of rejection of these claims. 8

10 III. SUMMARY 1. We have dismissed this appeal with respect to claim 1, which was canceled by Ex Parte Reexamination Certificate US 7,558,195 C1 (Feb. 24, 2014). 2. We have sustained the rejection of claims 2, 4, 5, and 14-17, which are all of the claims remaining on appeal, under 35 U.S.C. 102(e) for anticipation by Guess. 3. We therefore found it unnecessary to address the merits of the Examiner s other rejections of these claims. III. DECISION The Examiner s decision that claims 2, 4, 5, and are unpatentable over the prior art is affirmed. In the event neither party files a request for rehearing within the time provided in 37 C.F.R , and this decision becomes final and appealable under 37 C.F.R , a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R and AFFIRMED ak 9

11 For Patent Owner: Fountainhead Law Group P.C Fountainhead Law Group P.C. Chad R. Wals 900 Lafayette Street Suite 301 SUITE 301 Santa Clara CA For Third Party Requester: TIMOTHY J. MAY FINNEGAN HENDERSON FARABOW ET AL. 901 NEW YORK AVE., NW WASHINGTON, DC