The classic children’s fairy tale The Three Billy Goats Gruff tells the story of three goats trying to cross a bridge to a field of yummy grass, despite the monstrous troll that lives underneath the bridge and threatens to eat them. To beat the troll, the goats played on his greed and proceeded across the bridge in order from smallest to largest – and holding the troll at bay each time with promises of a larger meal if he waited for the larger goat to follow. In the end, the troll passed on attacking the smaller goats and was left to do battle with the largest goat who was able to defeat the troll, toss him off the bridge, and watch him float downstream. The goats were then able to enjoy the yummy grass, troll-free. In our fight against Sable Networks (patent troll), we plan on being that third goat, and our recent wins suggest we might be on track to do just that.
$10,000 to our second round of Project Jengo winner!
We started Project Jengo 2 last year as a prior art search contest, so we could enlist your help in the battle against Sable Networks. We committed $100,000 in cash prizes to be shared by the winners who were successful in finding such prior art, and last quarter, we gave out $20,000 to three lucky winners. This quarter, we are excited to announce our second round winner who will take home $10,000! The winner submitted prior art related to the asserted ’431 patent.
“I do not master enough English to express how happy I am.”
We are happy to announce the winner for this round is Jean-Pierre Le Rouzic. Although Jean-Pierre is retired and living in Rennes, France, he decided to put his patent knowledge to work when he saw Project Jengo discussed on Hacker News. Jean-Pierre is a former telecommunications R&D engineer who wrote twelve patents in the 2000s that relate to online authentication and identity management. Impressively, he was one of the first users of Java at his company, and recalls using Java as early as 1996!
Jean-Pierre’s career experience certainly helped in his research – his Jengo submission was 24 pages and included a meticulously detailed claim chart. In particular, he addressed vulnerabilities in Sable’s extremely large scope for the ’431 patent addressing “micro-flow management.” You can read more detailed information about Jean-Pierre’s findings in the appendix to this blog post or all of the findings of Jean-Pierre and other submissions are available to anyone who may face a challenge from Sable’s claims here.
We enjoyed Jean-Pierre’s response to the good news:
I do not master enough English to express how happy I am, and how happy I am for Cloudflare if my work is useful. I find the idea of patent trolls hideous. The patent regulations should really be updated to enter the XXI century.
Jean-Pierre’s reasons for participating in Jengo were different from most other participants. As his current interest is in neurodegenerative diseases, specially ALS, and he said part of his motive stemmed from what he has seen in the medical industry:
The challenge faced by Cloudflare is close to my heart, because of its similarity to what is happening in the world of medical drugs. Cloudflare is facing an entity which is unreasonably stretching the meaning of their patent claims.
We could not agree more -- we think Sable is beyond unreasonable, which is why we intend to change the incentive structure that makes things so easy for them, and we are so grateful for Jean-Pierre’s support (and all the other Jengo participants).
Also, worth noting, we were excited to see that both he and one of his daughters is a current user of Cloudflare!
My blog (padiracinnovation.org) uses Cloudflare, and I am a very satisfied user. The online shop of one of my daughter’s also uses Cloudflare.
Two patents at grave risk – U.S. Patent and Trademark Office rules that Cloudflare is likely to be successful invalidating two Sable patents in IPR proceeding!
Last year, we announced that we were facing a challenge from a patent troll called Sable Networks that was trying to weaponize decades-old and unused patents against us. With your help through the relaunch of Project Jengo, we became determined to outsmart the troll.
One of the steps we are taking, as Ethan mentioned in our August blog post, is seeking to invalidate the four asserted patents in the lawsuit through a procedure with the U.S. Patent and Trademark Office (Patent Office) known as inter partes review (IPR). As we previously explained, IPR is a trial proceeding that lasts for one year, conducted before the Patent Office, to determine whether or not a patent (or some of its constituent claims) should be invalidated. Importantly, the IPR process is only instituted after a party files an extensive petition that is reviewed by a panel of three administrative patent judges -- who will only institute an IPR, if they believe a petitioner has a reasonable likelihood of succeeding in invalidating at least one claim from the challenged patent.
In December, after months of hard work and considerable attorney’s fees and expenses, we found out the efforts Ethan described last August had paid off -- the first two of our four IPR petitions were granted by the Patent Office! For each of the challenged patents -- the ’593 and the ’932 patents -- an IPR proceeding has been instituted on every single claim -- a total of 76 claims between the two patents. This is exceptional news for us, as the Patent Office has made a preliminary determination that we are likely to succeed on invalidating a vast majority of those claims, giving us a chance to invalidate those two patents in their entirety. This provides an independent path for defeating Sable’s lawsuit, because if the Patent Office declares a patent to be invalid -- meaning that patent never should have been issued in the first place -- the patent no longer exists, and we have effectively pushed the troll off the bridge. Now that we have two IPRs instituted, the Patent Office has one year from the date of institution to make their final decision on whether the challenged claims are valid or not.
And, by the way, it was pretty nice to see our diligence recognized:
“Moreover, the undisputed evidence here shows that [Cloudflare] acted diligently, filing its Petition only seven weeks after service of the complaint and well before preliminary infringement contentions were served.”
Decision Granting Institution of Inter Partes Review at p. 12 (IPR2021-00909) (Nov. 19, 2021)
Two more patents significantly trimmed back – Sable voluntarily abandons 34 of 38 claims in its other two patents before the Patent Office.
But this was only half the battle. There are four Sable patents at issue in the litigation. For the ’919 and ’431 patents, we filed separate IPR petitions on all 38 claims from those two patents last year. In response to our petitions, Sable voluntarily canceled 34 out of 38 claims from its own patents, which says a lot about what they think about the quality of their decades-old patents. The Patent Office subsequently declined to institute IPR on the four remaining claims. Sable is now left with only 4 out of the 38 claims to pursue in the litigation, and those four claims are far removed from Cloudflare’s products and services.
Bringing trolls out from under the bridge and into the light.
We are happy to see some more press coverage on the fight against Sable Networks. More press means that more people become aware of this issue and can help put a stop to future patent trolls. Most trolls merely send threatening letters and hope they can get a quick settlement from their threats without having to see the light of day by going to court or to the Patent Office to defend their claims. We are just one entity (that has enlisted your help) fighting against a villainous patent troll -- but would it not be great to see other big companies fight back when they encounter their next troll?
- “Cloudflare Lands Tribunal Review of Data Transmission Patent” -- Bloomberg Law
- “PTAB To Eye Patent Cloudflare Offered 'Bounty' To Help Kill” -- Law 360
- “Recently, Cloudflare Inc. succeeded in convincing the PTAB to institute in IPR2021-00969 against a Sable Network, Inc.’s patent directed toward data flow” -- JD Supra
Please keep your submissions coming!
We could not have gotten to this point without the help of the many Project Jengo participants. We have received hundreds of prior art references on Sable’s ten patents, and we have used many of those references to help kill off the four patents that Sable asserted against us. While we have made some great progress together, we cannot let our guard down now. We will continue to fight vigorously, but just as in the Three Billy Goats Gruff, we need your support to take down a ravenous troll. Please consider submitting to our prior art contest, and please share the contest with co-workers, family and friends. On behalf of the Cloudflare community, thanks to everyone who has participated so far!
Appendix – Jean-Pierre’s findings (US-6954431 compared to US-7406098)
The ’431 patent leveraged by Sable is titled “Micro-Flow Management” and concerns Internet switching technology for network service providers. The patent claims priority all the way back to April 19, 2000. The ’431 patent discloses a router that puts a label on packets for a given “microflow,” and forwards all the packets in that same microflow based on the label.
Our first blog post about Sable’s claims explained that the ’431 patent assertions were so broad, they could stretch to possibly even the “conventional routers” from the 2000s that routed each packet independently.
Thankfully, Jean-Pierre noted some similarities between the asserted ’431 patent and the patent he tracked down. US Patent No. 7,406,098 was first publicly available as early as 1999. The ’098 patent is related to the allocation of communication resources of a single node among a multitude of subscribers. In Jean-Pierre’s words, both the asserted patent and the ’098 patent concern “the need to allocate switched packets resources to a single communication among many.”
The first claim in ’431 is for “a method for managing data traffic through a network”, while the first claim in the ’098 is for “a method of allocating a resource in a communication system” -- both of which Jean-Pierre found to read quite similar. As he described, in both cases there is a need to “allocate Internet (switched packets) resources to a single communication among many, this allocation is based on a classification.” Ultimately, the ’098 patent is noteworthy in that it demonstrates the obviousness of what Sable claims the ’431 patent covers. People of skill in the art (like the Qualcomm inventors from the ’098 patent), long before the ’431 patent, knew how to manage the flow of data using queues.
Take a look at the snapshot from the claim chart Jean-Pierre submitted:
The language in Claim 1 of the ’431 patent deals with the “delegating” of “microflows”, while Claim 14 of the ’098 patent deals with the “assigning” of “application flows”. We have hardly scraped the surface here, as there are plenty of other similarities between the two patents -- take a look for yourselves!
We are grateful for Jean-Pierre’s participation in Project Jengo, and we are looking forward to receiving more prior art as we continue to fight Sable Networks!