- Sony Mobile Communications Inc. v. SSH Communications Security OyjRehearing grantedPTAB · Jul 21, 2016 · IPR2015-01869 · APJ Bryan F Moore · IPR · Rehearing
The Board granted rehearing in part, declining institution on specified Bellovin-based grounds for claims 4, 11, 21, and 28 and the Shuen/RFC 1234 ground for claim 26.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Carmichael teaches using keepalive datagrams to “preserve communications that involve address mapping.” Pet. 20. We are not persuaded that this conclusory statement is a sufficient showing of a reasonable rationale to combine Bellovin and the keepalive packets without meaningful payload of Carmichael. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Carmichael teaches using keepalive datagrams to “preserve communications that involve address mapping.” Pet. 20. We are not persuaded that this conclusory statement is a sufficient showing of a reasonable rationale to combine Bellovin and the keepalive packets without meaningful payload of Carmichael. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner also asserts Keepalive datagrams were thus a well-known solution to the problem of avoiding communication session (and address mapping) timeouts. A person of skill in the art, seeing Bellovin’s system and knowing of the potential to use keepalives, would have found it obvious to do so for NAT mappings just as with other phone call resources. The relevant field is predictable, and the implementation of keepalives was well within ordinary skill (as evidenced by the keepalive references), and could have been accomplished without surprising results. Indeed, the ’079 patent reports no surprising results. See KSR Int’l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1739–40 (2007). (Ex. 1002, ¶¶ 165–166). Pet. 24. Petitioner has not identified sufficient support for the predictability of the art. Although Petitioner presents references that disclose keepalive messages, Petitioner has not explained sufficiently why, or identified evidence that shows, that the invention described in the ’079 Patent falls into a very predictable field, that one of ordinary skill in the art would have possessed the requisite skills to make the proposed combination with Carmichael, or that one of ordinary skill in the art reasonably would have anticipated the combination to function in an ordinary and expected way. See Rothman v. Target Corp., 556 F.3d 1310, 1319–20 (Fed. Cir. 2009). Additionally, the payload in Bellovin contains meaningful information. Req. Reh’g 4 (citing Ex. 1003, 20:29–32; Ex. 1004, 32, 103, 1114). Petitioner has not explained how Carmichael’s teaching of keepalives having no meaningful information in the payload could be combined with Bellovin’s system in which the keepalive payload has meaningful information. See KSR, 550 U.S. at 418 (“A patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); see also Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013): Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (Citation omitted). Although, as stated above, Petitioner relies on the combination of Bellovin and Carmichael, we also determine Petitioner has not presented sufficient motivation to modify Ballovin alone to meet this limitation. 4 Patent Owner cites to the page numbers added to Ex. 1004 instead of the internal page numbers of the Bellovin Provisional. Thus, we are not persuaded that Petitioner has shown a reasonable likelihood of success as to its challenge to claims 4, 11, 21, and 28 based on the combination of Bellovin and Carmichael. Thus, we amend the Decision to Institute such that we do not institute as to the challenge to claims 4, 11, 21, and 28 as unpatentable in view of Bellovin and the knowledge of a person having ordinary skill in the art.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“3 Petitioner cites without explanation to paragraphs in its Declarant’s testimony related to how Bellovin could teach keepalives without a meaningful payload but does not present this argument in the Petition. Pet. 29 (citing Ex. 1002, ¶¶200–04). The Petition purports to rely only on Carmichael for the limitation of claims 4, 11, 21, and 28 to keepalives without a meaningful payload. Pet. 29. The Petition merely cites the Bradner Declaration and does not explain sufficiently the significance of the cited testimony. Id.; see also 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Therefore, we do not consider that testimony.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 8,544,079
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.