Federal Circuit to PTAB: Again, Explain Your Reasoning

Arista Networks v. Cisco Systems (Fed. Cir. 2018)

In what is mecoming a more regular outcome, the Federal Circuit has again vacated a PTAB IPR holding — holding that the USPTO’s panel of Administrative Patent Judges failed to “adequately explain its reasoning on a point that was central to its analysis.”

This time the case involves a PTAB finding for the patentee — that the IPR challenger Arista had not proven obviousness (for several challenged claims of Cisco’s Patent No. 8,051,211).  The identified failure was in addressing a particular argument for how the prior art taught the claimed invention.

Tunneling of Packets: Here, Cisco’s secure networking claims include, inter alia, “tunneling” through an intermediate network – where tunneling is defined as “transmitting a frame without examination, including in layer 2 and layer 3 communications.”  Based upon some claim differentiation, the Board also found that “encapsulation and de-encapsulation” of a frame don’t count as “examination” in this scenario.

In short, while “transmitting a frame” during “tunneling” must be “without examination,” certain kinds of activities involving encapsulation and de-encapsulation are not part of the excluded “examination”—hence may be present in what still qualifies as “tunneling” under the ’211 patent.

Opinion at *5.  The proposed prior art reference (Kunzinger) taught something akin to tunneling, but the PTAB concluded that its intermediary examined the packets.  Arista argued that Kunzinger’s was working with the outer-header of an encapsulated frame — and thus was not examining the frame itself.  The Board did not particularly address this argument.

Unlike the Federal Circuit itself, the PTAB is required to write final written decisions “to ensure that their [judgments] are not ‘arbitrary, capricious, an abuse of discretion, . . . otherwise not in accordance with law . . .[or] unsupported by substantial evidence.’” Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 992 (Fed. Cir. 2017) (quoting the APA).   The record must include all factual findings, and a “full and reasonable explanation” their foundation and reasoning.

Here, the court finds:

[T]he Board did not adequately explain why “transmission of the IPSec packet” in Kunzinger includes an “examination” excluded from the “tunneling” claimed in the ’211 patent, even while the described use of fields and tags in the ’211 patent is not such an excluded “examination.”

On remand, it will be interesting to see how the Board responds — likely adding a bit more to its 30 page opinion.

33 thoughts on “Federal Circuit to PTAB: Again, Explain Your Reasoning

  1. 9

    “Unlike the Federal Circuit itself, the PTAB is required to write final written decisions “to ensure that their [judgments] are not ‘arbitrary, capricious, an abuse of discretion, . . . otherwise not in accordance with law . . .[or] unsupported by substantial evidence.’””

    Thank you Professor Crouch for continuing to highlight the Federal Circuit’s practice of making decisions without explanation. Recorded explanations of outcomes is fundamental to any system of justice.

  2. 8

    PTAB opinions, win or lose, tend to be superficial, copy-and-paste jobs that are generally of the quality one might expect of a mediocre first year law student. Which is not to demean 1Y law students, as they do not arrogate to themselves the fiction of expertise.

    1. 8.1

      PTAB opinions, win or lose, tend to be superficial, copy-and-paste jobs that are generally of the quality one might expect of a mediocre first year law student.

      Totally different from the patent specifications, claims and briefs that they are forced to read which are of the most awesomest high quality evah.

    2. 8.2

      Don’t confuse PTAB decisions on ex parte appeals from ex parte examinations of applications with inter partes PTAB trial decisions.

  3. 7

    Is The US Patent System In Trouble? Part 2
    “No,” say its defenders, because raising the bar for patent holders has curbed abusive litigation.

    This is the crux of the argument of the anti-patent group. “Curbed abusive litigation”–I would say made it impossible to litigate almost any patent.

    1. 7.1

      impossible to litigate almost any patent.

      Very very serious stuff, folks!

      LOLOLOLOL

  4. 6

    footnote 1:

    Cisco has, however, cross-appealed the Final Written Decision, but it has done so only to preserve a constitutional challenge to the inter partes review regime, recognizing that our precedent forecloses the challenge but that the issue is pending before the Supreme Court in Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, No. 16-712, cert. granted, 137 S. Ct. 2239 (2017).

  5. 5

    Note the unintended irony of those asserting below that the APA holds IPRs to higher standards for opinions than Article III trial courts.

    1. 5.1

      ?

      Unintended irony?

      Please.

      We are talking that what SHOULD be happening – not what HAS been happening, oh cheerleading one.

      (and note that this one single “tougher” aspect does NOT make up for the boatload of infirmities)

  6. 4

    Seems like the board might have missed that argument. Unless they had some slick reasoning.

    1. 4.1

      I would say the drafting of the patent may have been unclear, which allowed the petitioner to cast doubt in the mind of the judges. The petioner cites a portion of the description that describes the actions performed by a bridge. The petitioner then tries to have tunneling defined as including these actions, although these actions do not seem to be in agreement with the definition of tunneling given somewhere else in the specification. I think the PTAB simply did not realize that the petioner could make a point that would stick.

  7. 3

    “Tunneling”.

    LOL

    There is no tunnel, folks.

    1. 3.1

      It’s a metaphor.

      1. 3.1.1

        It’s a metaphor.

        It’s logic applied to data.

        1. 3.1.1.1

          It’s logic applied to data.

          “It’s logic” – how goes your project to obtain a copyright on logic?
          “to data” – how goes the Big Box of Protons, Neutrons and Electrons “logic”?
          “applied to” – gee, sort of like the critical difference between “just math” and “applied math,” eh?

          Three strikes in six words. Go back to the bench now, boy.

        2. 3.1.1.2

          while I laughed (a little) when I read the claims, these claims are not simply “processing” information to end with “different” information, and *should* go through extensive claim construction before anyone could be found to infringe.

    2. 3.2

      Actually, MM, yes there is a tunnel. There is something physical and they are calling it a tunnel.

      But it is physical. It takes time, energy, and space to implement the tunnel.

      1. 3.2.1

        There is something physical and they are calling it a tunnel.

        Why not just call it what it is?

        That’s a rhetorical question. We all know the answer.

        1. 3.2.1.1

          Call it what?

          Your game is to act like the “tunnel” is some ethereal construct of the mind. It is not. It is a physical machine that requires space, time, and energy.

        2. 3.2.1.2

          “Why not just call it what it is?

          That’s a rhetorical question. We all know the answer.”

          The bit above about we all know the answer appears to be in error. It implies that at least one of us thinks “tunneling” is patent attorney scrivenering. It is not.

          Tunnel is what it is called throughout the networking industry. It often refers to transporting a packet assembled according to a first protocol through a network that operates on another protocol. I believe the essential elements involve adding headers and the like to make the packet look as if it were native to the transporting network and stripping those headers and the like off at the receiving end.
          So, that’s why its called tunneling… the packet “tunnels” through a non-native network…The payload and its original overhead information may also be encrypted/decrypted, but I’m not sure that is a requirement for it to be called tunneling.

          1. 3.2.1.2.1

            It’s already been well-established that Minnie Mouse doesn’t understand anything when it comes to technology given his rants on this site. I’m sure this explanation goes right over his head. Expect some personal attacks and filter-evading profanity in response.

            1. 3.2.1.2.1.1

              Minnie Mouse doesn’t understand anything when it comes to technology

              ROTFLMAO

              And this is why you keep getting your – – – handed to you.

              Your “technology” is about as “techno” as my butt gas.

              1. 3.2.1.2.1.1.1

                Stay classy, San Diego.

              2. 3.2.1.2.1.1.2

                Called it. Can’t help yourself can you.

          2. 3.2.1.2.2

            “Tunnel is what it is called throughout the networking industry. It often refers to transporting a packet assembled according to a first protocol through a network that operates on another protocol. I believe the essential elements involve adding headers and the like to make the packet look as if it were native to the transporting network and stripping those headers and the like off at the receiving end.”

            Yeah I thought that term rung a bell from classes I had long ago in a land far away. I remember it now.

            “The payload and its original overhead information may also be encrypted/decrypted, but I’m not sure that is a requirement for it to be called tunneling.”

            Nah doesn’t have to be encrypted I don’t believe for the term to apply. The tunneling is just refering to the fact that the original packet never gets fully converted to the different protocol, it just has a bit added to it when it comes in and then stripped from when it leaves it to make it look like it was and properly behave on the network with the different protocol. Tunneling is an alternative to just deconstructing the original packet and repackaging it under the different protocol, sending it through that network using that protocol and then potentially having to reconvert it again back to the first protocol (or still yet another third protocol).

      2. 3.2.2

        ” There is something physical and they are calling it a tunnel.”

        That’s not technically correct, as the poster below noted, it’s a process, tunneling, of converting packets from one protocol format to another.

        1. 3.2.2.1

          The poster below? That’s cold bro…that’s cold….

  8. 2

    “In what is mecoming [sic] a more regular outcome” could be a bit miss-leading to anyone not aware of the quite small percentage of Fed. Cir. remands or reversals of IPRs.

    1. 2.1

      Note the unintended irony of those asserting below that the APA holds IPRs to higher standards for opinions than Article III trial courts.

  9. 1

    I would posit that the more interesting aspect here is that the administrative agency under the executive branch MUST abide by different rules than a (true) Article III court.

    The necessity of abiding by the APA not only applies to the PTAB, but also applies to the examination function in the first place.

    Examination is a difficult job (to do it right).
    The emphasis on doing it right cannot succumb to an emphasis on “doing it easier.”

    1. 1.1

      This is very good point anon. It is huge.

    2. 1.2

      How is any of that an “aspect” “here”?

      1. 1.2.1

        the APA aspect 6 – please tell me that I don’t have to hold your hand on that point….

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