- Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Oct 19, 2015 · IPR2015-00973 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 1. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that independent claim 1, or claims 2, 5, 7–10, 12–16, 18–22, 25, 28, 29, and 31 that depend therefrom, are anticipated by Hendel.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 1 U.S. Patent No. 6,081,522, filed June 30, 1997, issued June 27, 2000 (Ex. 1007, “Hendel”). 2 U.S. Patent No. 5,938,736, filed June 30, 1997, issued Aug. 17, 1999 (Ex. 1008, “Muller”). 3 U.S. Patent No. 5,867,495, filed Nov. 18, 1996, issued Feb. 2, 1999 (Ex. 1019, “Elliot”). 2007). An inventor may provide a meaning for a term that is different from its ordinary meaning by defining the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner proposes constructions for the terms “access control,” “associative memory,” “packet label,” “responsive,” and “megapacket.” Pet. 5–9. We determine that the terms “associative memory,” “packet label,” “responsive,” and “megapacket” do not require express construction for purposes of our Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As to the term “access control,” Petitioner asserts that “[a] person of skill in the art would have understood ‘access control’ to encompass restrictions or modifications of the transmission of a packet.” Pet. 5. Petitioner relies on the following passage from the Specification: [T]he invention can be used to augment or override routing decisions otherwise made by the router, using the access control element 120. In addition to specifying the packet 130 is to be dropped or forwarded to the higher-level processor, the access control element 120 can alter the output interface, which was selected by the routing element 110, to another selected output interface. The invention can thus be used to implement QOS (quality of service), and other administrative policies. Ex. 1001, 6:9–18. Patent Owner asserts “the plain and ordinary meaning of ‘access control’ is ‘restriction of packets from being transmitted from selected source devices to selected destination devices.’” Prelim. Resp. 10. Patent Owner relies on the following passage from the Specification (id.): In a computer network for transmitting information, messages can be restricted from being transmitted from selected source devices to selected destination devices. In known computer networks, this form of restriction is known as “access control” and is performed by routers, which route messages (in the form of individual packets of information) from source devices to destination devices.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“‘discarding’ packets does not concern access control,” that Hendel’s “packets are only filtered or discarded as part of the packet forwarding process when there is a problem with the packet,” and thus, “Hendel refers to such filtering or discarding occurring when packets are ‘ill-formed’ or have ‘no appropriate destination[s]’ or ‘unsupported’ headers.” Prelim Resp. 21–22 (citing Ex. 1007, 8:39–40, 10:51–52, 13:9–11). We agree. Although we did not adopt Patent Owner’s proposed construction of the claim term “access result,” Patent Owner nevertheless makes a salient argument. We find Petitioner has not shown that the filtering decision is done “in response to [] at least one selected match” as required by claim 1. The Specification supports that a successful match leading to an access result is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 21 (“the ‘matching entry,’ at most, provides a destination for Hendel’s system to forward the packet . . . [but,] where a destination is found, the packet is forwarded; there is no disclosure to generate any access result to possibly restrict access to the destination.”). Neither Petitioner, nor Petitioner’s Declarant, has tied an actual match in Hendel to a decision whether to forward the packet or make some modification to the intended transmission of the packet.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,377,577 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Oct 19, 2015 · IPR2015-00976 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because the patent did not disclose sufficient structure for certain means-plus-function limitations and Hendel did not show claim 63’s required access-control matching.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has not shown that Hendel’s filtering decision is determined based on “matching one or more characteristics of said packet with one or more access control specifiers.” Petitioner simply states that the packet is “filtered.” Petitioner’s Declarant relies on the following text from Hendel: “In a preferred embodiment, the merge logic 66 directs the input port 50i to take one of the following actions on a packet: filter the packet; forward the packet at layer 2; forward the packet at layer 2; forward the packet as a layer 3 flow; process the packet as a layer 3 route; and forward the packet as multicast router.”) Ex. 1003 ¶ 132 (citing Ex. 1007, 13:4–8.) This citation does not specify, however, that a characteristic of the packet was matched to anything in order to make the filtering decision, only that the decision was the result of “merge logic.” Petitioner’s Declarant also relies on the following text from Hendel: “After the forwarding logic 52 has determined what to do with the packet, it passes that information to the input port 50i. If the input port 50i does not filter the packet, then it [takes actions to forward the packet].” Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25.) However, this statement does not even say that forwarding logic tells input port 50i to filter the packet, and certainly does not explain how forwarding logic 52 would make a filtering decision. Finally, Petitioner’s declarant relies on Hendel’s discussion of sending the packet to a firewall for further processing if no match occurs (Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25)), but the claim does not recite what happens if there is not a match. The specification confirms that a successful match is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by “determining all of the successful matches”). Neither Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet. For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Hendel.” slip op. at 14
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Other
“The corresponding structure need not be explicitly identified but must disclose to a person of ordinary skill in the art what structure is identified in the specification. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999). It is unclear from the Specification whether the CPU, shown in Figure 2 as part of access control element 120, is the “higher-level processor” which is described at Ex. 1001, 5:21–25, or some other processor running IOS described at Ex. 1001, 1:33–37. It is also unclear which part of the access control element 120 is composed of “circuits adapted to particular process steps and data structures” as described at 3:36–39. Here, the patent is at best unclear whether the claimed function is implemented in software executed on a general purpose CPU or in hardware as a collection of circuits. See Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘means-plus-function’ form must disclose the particular structure that is used to perform the recited function.”). We also find that it is equally unclear whether the following means- plus-function limitations in claim 46, which appear to involve access control element 120, are implemented in hardware or in software structure (or some combination of both): means for matching matchable information, said matchable information being responsive to said packet label, with said set of access control patterns in parallel; means for making a routing decision in response to said access result; means for permitting or denying access for said packet; and means for receiving a packet label responsible to a packet, said packet label being sufficient to perform access control processing for said packet. Because the Specification of the challenged patent lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, the scope of independent claim 46, and claims 47–52, 54, 56, and 59–62 that depend therefrom, cannot be determined without speculation and, consequently, the differences between the claimed invention and the prior art cannot be ascertained. Thus, we decline to institute an inter partes review as to any ground challenging claims 46–52, 54, 56, and 59–62.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner has not shown that Hendel’s filtering decision is determined based on “matching one or more characteristics of said packet with one or more access control specifiers.” Petitioner simply states that the packet is “filtered.” Petitioner’s Declarant relies on the following text from Hendel: “In a preferred embodiment, the merge logic 66 directs the input port 50i to take one of the following actions on a packet: filter the packet; forward the packet at layer 2; forward the packet at layer 2; forward the packet as a layer 3 flow; process the packet as a layer 3 route; and forward the packet as multicast router.”) Ex. 1003 ¶ 132 (citing Ex. 1007, 13:4–8.) This citation does not specify, however, that a characteristic of the packet was matched to anything in order to make the filtering decision, only that the decision was the result of “merge logic.” Petitioner’s Declarant also relies on the following text from Hendel: “After the forwarding logic 52 has determined what to do with the packet, it passes that information to the input port 50i. If the input port 50i does not filter the packet, then it [takes actions to forward the packet].” Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25.) However, this statement does not even say that forwarding logic tells input port 50i to filter the packet, and certainly does not explain how forwarding logic 52 would make a filtering decision. Finally, Petitioner’s declarant relies on Hendel’s discussion of sending the packet to a firewall for further processing if no match occurs (Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25)), but the claim does not recite what happens if there is not a match. The specification confirms that a successful match is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by “determining all of the successful matches”). Neither Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet. For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Hendel.” slip op. at 14
Claim construction§ 102 anticipationPatents in suitUS 7,023,853 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Oct 6, 2015 · IPR2015-00974 · APJ Matthew R Clements · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving unpatentability under the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Systems, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims 1–10, 12, 13, 15–28, 30, 31, 33–43, 45–49, 51–64, 66, 67, and 69–72 of the ’668 patent. Accordingly, pursuant to 35 U.S.C. § 314, we do not institute an inter partes review of claims 1–10, 12, 13, 15–28, 30, 31, 33–43, 45–49, 51–64, 66, 67, and 69–72 of the ’668 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“interpreted according to their “broadest reasonable construction in light of the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Applying that standard, we interpret the claim terms according to their ordinary and customary meaning in the context of the patent’s written description. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for ten terms. Pet. 9–14. Patent Owner disputes some of those constructions and proposes an additional term for construction. Prelim. Resp. 9–19. For purposes of this Decision, we determine that we need not expressly construe any of the terms for which the parties have proposed constructions.” slip op. at 6
- Skill levelOther
“expressly disclose a limitation, may nevertheless anticipate if a person of ordinary skill in the art would understand the prior art to disclose the limitation and could combine the prior art description with his own knowledge to make the claimed invention. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000). After reviewing the arguments of the parties and the testimony of Dr. Lin, however, we are not persuaded that a person of ordinary skill in the art1 would understand the cited sentence in Amara as necessarily disclosing that the network interface ports of Amara’s internetworking device are configurable by its internal applications. Dr. Lin relies on pages 132 to 134 of Habraken, which is a textbook that describes, inter alia, configuring the interfaces of a Cisco router through a Setup dialog. While this passage describes configuring a port, it is not clear what aspect of the Cisco router is providing the Setup dialog. Nothing, for example, attributes the Setup dialog to “control plane processes” or “internal applications” or the like of the Cisco router. Even assuming that the Setup dialog is provided by an “internal application” of the Cisco router, 1 Petitioner asserts, and Patent Owner does not dispute, that a person of ordinary skill as of the critical date would have had a Master of Science Degree in an academic area emphasizing computer networking or, alternatively, a Bachelor Degree in an academic area emphasizing the design of electrical, computer, or software engineering and several years of experience in computer network engineering and the design of computer networks. Pet. 7. nothing in Habraken supports the determination that the network interface ports of all routers, such as the 3Com router described in Amara, are configurable by “internal applications” of that router. At best, Habraken establishes that a person of ordinary skill in the art at the time would have known that Cisco routers include a Setup dialog for configuring router interfaces. This is not sufficient, however, to persuade us that a person of ordinary skill in the art would have read Amara as necessarily disclosing that the network interface ports of the “device” are configurable by the internal applications.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Amara’s express disclosure is not sufficient. Amara’s disclosure that internal applications control or configure the device only “typically” suggests that they do not necessarily serve that purpose and, therefore, that another component of device 100 may serve that purpose. Moreover, Amara’s disclosure that internal applications control or configure the “device” is not sufficiently specific as to whether the interface ports are an aspect of the device being controlled or configured by the internal applications. Our reviewing court has held that a prior art reference that does not expressly disclose a limitation, may nevertheless anticipate if a person of ordinary skill in the art would understand the prior art to disclose the limitation and could combine the prior art description with his own knowledge to make the claimed invention. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000). After reviewing the arguments of the parties and the testimony of Dr. Lin, however, we are not persuaded that a person of ordinary skill in the art1 would understand the cited sentence in Amara as necessarily disclosing that the network interface ports of Amara’s internetworking device are configurable by its internal applications. Dr. Lin relies on pages 132 to 134 of Habraken, which is a textbook that describes, inter alia, configuring the interfaces of a Cisco router through a Setup dialog. While this passage describes configuring a port, it is not clear what aspect of the Cisco router is providing the Setup dialog. Nothing, for example, attributes the Setup dialog to “control plane processes” or “internal applications” or the like of the Cisco router. Even assuming that the Setup dialog is provided by an “internal application” of the Cisco router, 1 Petitioner asserts, and Patent Owner does not dispute, that a person of ordinary skill as of the critical date would have had a Master of Science Degree in an academic area emphasizing computer networking or, alternatively, a Bachelor Degree in an academic area emphasizing the design of electrical, computer, or software engineering and several years of experience in computer network engineering and the design of computer networks. Pet. 7.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,224,668 - Apple Inc. v. Virnetx Inc.Some claims unpatentablePTAB · Aug 24, 2015 · IPR2014-00482 · APJ Stephen C Siu · IPR · Final written decision
Claims 1, 4, 6, 10, 13–15, 17, 20, 22, 26, 29–31, 33, 35, and 37 are unpatentable; claims 12 and 28 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We previously determined that, under a broad but reasonable construction, one of skill in the art would have understood the term “virtual private network communication link,” in light of the Specification, to include “a transmission path between two devices that restricts access to data, addresses, or other information on the path, generally using obfuscation methods to hide information on the path, including, but not limited to, one or more of authentication, encryption, or address hopping.” Dec. on Inst. 6–7. 1 Patent Owner disputes this interpretation and argues that the term “virtual private network communication link” must be “a communication path between computers in a virtual private network” (PO Resp. 8), “requir[es] computers within a VPN to communicate directly” (PO Resp. 10), and requires a “network of computers,” which, according to Patent Owner must be “more than a ‘path between two devices.’” PO Resp. 14. We decline to modify our previous construction of this term in the manner suggested by Patent Owner because such a modification is immaterial in this proceeding for reasons set forth below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed to the extent necessary to resolve the case).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“understood that a “secure computer network address” must be “associated with a computer capable of virtual private network communications” because a claim recites “sending an access request message to the secure computer network address using a virtual private network communication link.” PO Resp. 16. We agree with Patent Owner that claim 1, for example, recites “sending an access request message to the secure computer network address using a virtual private network communication link.” However, Patent Owner does not explain sufficiently why an explicitly recited claim limitation must be incorporated into the construction of an associated claim term. Indeed, if one of ordinary skill in the art would have understood that all secure computer network addresses must be associated with a computer capable of VPN communications and that any computer network address that is associated with computers that are incapable of VPN communications would be understood by one of ordinary skill in the art not to be a “secure computer network address” (even if authorization for access is required), then any such recited claim limitation would be superfluous. Patent Owner also argues that “VirnetX’s proposed construction has been agreed to by its litigation adversaries and has been adopted by a district court.” PO Resp. 17. Even if Patent Owner’s proposed construction “has been agreed to by” parties in litigation and the district court, Patent Owner does not assert or demonstrate persuasively that one of ordinary skill in the art would have broadly but reasonably construed the term “secure computer network address” in light of the Specification to require association with a computer capable of virtual private network communications. In any event, Patent Owner does not appear to contend that the cited references fail to disclose a secure computer network address that is associated with a computer capable of VPN communications and, therefore, does not demonstrate sufficiently that the construction of “secure computer network address” will bear on the outcome of the issues in this inter partes review. We decline to modify our construction of this term.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“computer network address” of “the server-side proxy” (and not the “host”). PO Resp. 32 (emphasis omitted). In other words, Patent Owner argues that, in contrast to claim 1, which requires sending a query message requesting an address and receiving a response message containing the address requested in the query message, Kiuchi discloses sending a query message requesting an address of “the host” but receiving a response message containing an address of “the server-side proxy,” rather than “the host.” Based on this presumption that “the host” of Kiuchi differs from the “server-side proxy” of Kiuchi, Patent Owner argues that Kiuchi fails to disclose the claimed invention and also that “the Board has exceeded its statutory authority by instituting in part on rationales that were not before it.” PO Resp. 30. However, Patent Owner does not explain sufficiently a difference between “the host” and the “server-side proxy” of Kiuchi. Kiuchi discloses that a client-side proxy “asks the C-HTTP name server whether it can communicate with the host” and that, in response, the C-HTTP name server examines “the requested server-side proxy” and responds by sending the IP address of the server-side proxy. Ex. 1004, 65 (emphasis added). In other words, Kiuchi discloses that “the host” that is requested is the requested “server-side proxy.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableMixed
“of ordinary skill in the art would have combined Kiuchi with the other references.” PO Resp. 3. Petitioner provides reasons with supporting factual underpinnings to support the conclusion that the combination of Kiuchi and Bhatti (and/or Tavs) would have been obvious to one of ordinary skill in the art. Pet. 34–35, 38–39. For example, Petitioner states that one of ordinary skill in the art would implement Kiuchi’s user agent such that the user agent sends an access request for content stored on the origin server, in the same manner that Bhatti describes sending an access request from a user terminal for content stored [on] a content server. Pet. 38. Petitioner also states that “[i]t would have been obvious to one of ordinary skill at the time of the ’180 patent to modify the client-side proxy and server-side proxy described by Kiuchi to support the service-level categorization and differentiation described by Tavs in order to give priority to business-relevant traffic during peak network congestion.” Pet. 34. Patent Owner does not dispute the reasons provided by Petitioner as to why it would have been obvious to one of ordinary skill in the art to have combined teachings of Kiuchi and Bhatti (and/or Tavs) but argues that this obviousness ground “is critically flawed because the Petition relies solely on missing expert testimony for its rationale for combining” the references. PO Resp. 54, 56. However, Patent Owner does not explain why Petitioner is required to provide expert testimony in support of a proposed ground of unpatentability. Nor does Patent Owner explain the supposed flaws in the rationale provided by Petitioner.” slip op. at 21
Patent outcomesUS 7,188,180 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,188,180 - Apple Inc. v. Virnetx Inc.All claims unpatentablePTAB · Aug 24, 2015 · IPR2014-00481 · APJ Karl D Easthom · IPR · Final written decision
Claims 1, 10, 12–15, 17, 26, 28–31, and 33 are unpatentable as anticipated by Provino; claims 4, 6, 20, 22, 35, and 37 are unpatentable as obvious over Provino and Guillen.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“It does not recite “recogniz[ing] that the query message is requesting a secure computer address.” “[T]he claims themselves provide substantial guidance as to the meaning of particular claim terms” and “the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314. “The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.” Phillips, 415 F.3d at 1316 (citations omitted). Based on the context of the claim, the Specification, and the prosecution history, claim 1 does not require “recogniz[ing]” as argued by Patent Owner. As explained in the Background section supra, the Specification describes an “SDNS 3313” that “contains a cross-reference database of secure domain names and corresponding secure network addresses. That is, for each secure domain name, SDNS 3313 stores a computer network address corresponding to the secure domain name.” Ex. 1001, 52:4–8. This disclosure comes closest to aligning with the claim term by explaining how a “secure domain name service” (i.e., an SDNS as set forth in the disclosure) operates. Patent Owner does not point the panel to a disclosure in the Specification that clearly supports the requirement of an SDNS to “recognize that the query message is requesting a secure computer address.”” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“6. Access Request Message As Patent Owner explains, the construction of this term “do[es] not appear to be relevant to the parties’ disputes.” PO Resp. 23.” slip op. at 27
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“that under the claim construction of a “secure domain name” as “a name that corresponds to a secure computer network address,” “Patent Owner . . . concedes Provino discloses this limitation.” Pet. Reply 6–7 (citing Ex. 1003, 13:31–40, 10:45–67; Resp. 26; Ex. 2024 ¶ 28; Ex. 1011 ¶¶ 29–33; Inst. Dec. 8). Petitioner’s argument and showing is persuasive. The claim element does not require any verification that the name is secure.7 Patent Owner also argues that Provino does not teach “receiving a secure domain name” because Provino uses “standard” domain names. PO Resp. 29. Patent Owner points to its Specification that allegedly discusses “an exemplary ‘standard’ domain name ending in ‘.com’ and an exemplary ‘non-standard’ domain name ending in ‘scom.’” PO Resp. 28 (citing Ex. 1001, 51:16–17; Ex. 2024 ¶ 31). These exemplary embodiments do not alter the broadest reasonable claim construction of a “secure domain name.” See supra Section I.E.3., I.E.4. (Claim Construction). As also noted above (id.), Patent Owner made the opposite argument to a district court, and argued that a “non-standard” distinction “is not supported by the specification or the prosecution history.” Ex. 1018, 18.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner responds to Patent Owner’s argument as follows: [I]n Provino, before this path between device 12(M) and server 31(s) can exist, nameserver 32 must provide server 31(s)’s secure address. . . . If, in the same response message, a modified nameserver 32 provides QoS parameters, that would necessarily be before the relevant path is established, contrary to Patent Owner’s assertions. Pet. Reply 14 (citing Ex. 1003, 10:56–11:45; Ex. 1011 ¶ 39; Ex. 1089, 58:17–59:16; Ex. 2019, 51:21–55:6). Similarly, according to the Petition, “a person of ordinary skill in the art would have modified the VPN name server 32 of Provino to store, in part, topology dependent QoS parameters, as described by Guillen,” and “[s]uch a modified VPN name server 32 would . . . respond to requests by device 12(m) to resolve the human-readable network addresses of servers 31(S) with both the integer Internet address of the servers 31(S) and the QoS parameters for the servers 31(S).” Pet. 38 (citing Ex. 1011 ¶ 43, Ex. 1005, 82, § 2.3). Petitioner adds that “one of skill would combine Guillen and Provino based on the parallel uses of DNS servers.” Pet. Reply 14 (quoting Ex. 1011 ¶ 42). At the cited paragraph, Dr. Guerin reasons that “Provino relies upon DNS servers to perform address resolution in the context of VPNs in the same manner as Guillen describes their use in the context of ATM communications.” Ex. 1011 ¶ 42 (citing Ex. 1003, 10:45–67). Dr. Guerin also relies on Guillen’s disclosure of using DNS directory servers for address resolution and storing values of QoS parameters to suggest providing indications of feasible QoS levels during address resolution. Ex. 1011 ¶ 41 (citing Ex. 1005, 82, § 2.3). Dr. Guerin also cites Guillen as teaching that QoS parameters relate to guarantees such as bandwidth, and other service requirements, required for multimedia applications, so that “the multimedia application can properly function.” Id. ¶ 40 (citing Ex. 1005, Abstract, 80–82, §§ 2.1, 2.3, 2.4). As outlined above, the parties agree that if the modification would have been obvious, it would apply during address resolution to set up Provino’s tunnel. The parties do not disagree materially, if at all, about what Guillen teaches. On balance, Guillen supports Petitioner’s rationale. See Ex. 1005, 80–82. However, according to Patent Owner, the proposed modification of Provino’s’ nameserver could not work, because “by the time Provino’s device 12(m) accesses nameserver 32, device 12(m) and firewall 30 have already cooperated to establish the tunnel.” PO Resp. 50. Patent Owner’s argument about “access[]” confounds the claim terms” slip op. at 43
Patent outcomesUS 7,188,180 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,188,180 - Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Aug 19, 2015 · IPR2014-00631 · APJ Richard E Rice · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, and 15–23 under specified obviousness combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundTerm construed board ownDecided for petitioner
“[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. The statement on which Patent Owner relies is only part of a sentence; the full sentence reads as follows: In amended Claim 1, a trigger condition and associated threshold [are] selected by a user in a step prior to image capture, the image capture device then monitors a signal corresponding to the trigger condition so that the image capture device can automatically determine when an image should he captured without intervention by a user. Ex. 1015, 6 (emphasis added). The thrust of that sentence, as explained in the paragraph that follows it in the prosecution history, is that, in claim 1, “the timing of image capture[] is determined automatically by the image capture device without the involvement of the user.” Id. (emphasis added). The Beck reference is not distinguished by the applicant on the basis of how the threshold level is selected, but rather on how an image is captured “after a trigger condition and associated threshold ha[ve] been satisfied.” Id. As such, whether “a trigger condition and associated threshold” are selected by a user, or by the device itself, is not central to applicant’s argument distinguishing the Beck reference. Accordingly, the statement that “a trigger condition and associated threshold [are] selected by a user” does not evidence a clear intent to disavow claim scope, contrary to Patent Owner’s contention. For the reasons discussed above, we determine that the broadest slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In opposition, Patent Owner argues that Mishima fails to disclose entering a threshold level corresponding to the automatic trigger condition, because, as asserted by Dr. Bovik, “the user is not involved in setting the threshold in any way.” PO Resp. 31 (citing Ex. 2006 ¶ 72). As discussed above, however, the user does not need to be involved in setting the threshold level under our interpretation of “entering.” See supra Section II.A.4. That is, the term “entering” is not limited to acts of entering performed by a user, but encompasses acts of entering performed by the image capture device itself. See id. We determine that Petitioner has made a sufficient showing that Mishima discloses “entering a threshold level.” See PO Resp. 32. In particular, Petitioner has shown that, when the user sets Mishima’s device in the automatic mode and selects a reference image for comparison with a captured image or photographic subject, the device sets or selects a threshold level, such as Kn, P, or 40%, and, thus, satisfies the “entering a threshold level” requirement under our claim construction. See Pet. 13–15; Pet. Reply 13–15; Ex. 1002 ¶ 43; Ex. 1016 ¶¶ 13, 48–50; Ex. 1005 ¶ 40 (describing “setting a threshold value Kn” based on reference brightness value K0), ¶ 90 (setting or selecting “X < P” to determine a match, where P is a threshold value and X is the average square of differences between the part that is subject to recognition and the user-selected image pattern); ¶ 114 (describing setting a threshold level as “40%” of “the number of pixels that produce 1”). Moreover, we are not persuaded by Dr. Bovik’s testimony that “the user [in Mishima] is not involved in setting the threshold in any way.” See Ex. 2006 ¶ 72. Dr. Bovik does not address adequately Mishima’s disclosure that the user places the camera in the automatic imaging mode and selects a reference image6 for comparison with a captured image or photographic subject. See, e.g., Ex. 1005 ¶¶ 26, 37, 38, 83, 85, 87, 97, 98, 107, 108; see Pet. Reply 14 (citing Ex. 1005 ¶¶ 37, 83). Those acts satisfy “selecting an automatic image trigger condition.” See Pet. 14; Ex. 1002 ¶ 42. Dr. Bovik does not discuss whether those acts also satisfy “entering a threshold level corresponding to the automatic image trigger condition.” As such, Dr. Bovik’s analysis of Mishima is inconsistent with his” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In opposition, Patent Owner argues that a person of skill in the art would not have combined the teachings of Mishima and Misawa because: (1) the devices of Mishima and Misawa are not similar as Petitioner contends and, in fact, operate in fundamentally different ways, (2) the reasons Petitioner provides for combining Mishima and Misawa are undermined by the teachings of those references, and (3) Misawa would discourage one of ordinary skill from combining it with Mishima to arrive at the inventions of claims 3-6. PO Resp. 34. Patent Owner argues, for example, that Misawa “has nothing to do with automatic image trigger conditions, thresholds, or automatic image capture.” Id. at 35 (citing Ex. 2006 ¶ 91). We are persuaded by Petitioner, however, that Patent Owner’s argument is largely unresponsive to Petitioner’s asserted reason to combine, which “does not rely on Misawa for automatic image capture, but for an example user interface for creating an image database.” See Pet. Reply 15. We also are persuaded that a person of ordinary skill “would have looked to Misawa’s user interface as an example of how to construct/control image feature database 80 used in Mishima’s camera.” Id. at 16 (citing Ex 1005 ¶¶ 80, 94); see Ex. 1016 ¶¶ 53–55. Patent Owner has not persuaded us that using Misawa’s selection/extraction process in Mishima’s camera would have been outside the skill in the art, or yielded an unpredictable result. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Further, we are not persuaded by Patent Owner’s argument that Misawa would have led one in a divergent direction and, thus, teaches away from the recited method. See PO Resp. 44–45 (citing Ex. 2006 ¶¶ 108–111). Patent Owner has not shown that Misawa criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009 (“A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed.”) (emphases added; citation omitted). Patent Owner makes essentially the same arguments for claims 4–6 as” slip op. at 37
Patent outcomesUS 7,817,914 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,817,914 - Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Aug 19, 2015 · IPR2014-00632 · APJ Richard E Rice · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, 15–18, 22, and 23 as obvious over specified combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“7 Patent Owner does not dispute Petitioner’s definition of the level of skill in the art as “(1) a Bachelor’s degree in electronics, computer science, or a related discipline and 2-3 years of camera electronics design and implementation experience, or (2) a Master’s degree or higher in a field such as electronics, computer science, or a related discipline with some concentration in imaging systems or image processing.” PO Resp. 5 n.2 (citing Ex. 1002 ¶¶ 16–17; Ex. 2006 ¶¶ 25–27). We adopt that definition for purposes of this Final Written Decision. 8 Patent Owner does not contend in the Patent Owner Response that any secondary considerations are present that would render the challenged claims patentable over the combined teachings of these references.” slip op. at 35
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“electronic device.” See Pet. Reply 2 (citing Ex. 1016 ¶¶ 9–16). We credit Dr. Stevenson’s testimony on this point: Data entry in electronic devices occurs through a variety of different mechanisms. For instance, in the context of electronic devices, including digital cameras, “entering” of data encompasses the electronic input of data into a component of the electronic device, such as a processor or memory. An electronic device’s operating instructions may cause the device to input data into a processor or memory. The entered data may be data from another memory (e.g., read-only memory (“ROM”)), a removable memory card, or a network.” slip op. at 19
Patent outcomesUS 7,817,914 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,817,914 - Apple Inc. v. Virnetx Inc.All claims unpatentablePTAB · Jul 29, 2015 · IPR2014-00403 · APJ Karl D Easthom · IPR · Final written decision
The Board held claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18 unpatentable: Provino anticipated claims 1, 7, 8, 10, 12, 13, 15, and 17; combinations with Kosiur and Xu rendered claims 2–5 …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDecided for petitioner
“proceeding somehow limits the claims here that Patent Owner otherwise could have moved to amend under a broadest reasonable construction, Patent Owner’s arguments were not “unambiguous,” and do not “call for the application of prosecution history disclaimer.” See PO Resp. 17–18. There was no “express disclaimer,” Bigio, 381 F.3d at 1325, or “unambiguous disavowal[],” Grober, 686 F.3d at 1341.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“5. Access Request Message As Patent Owner explains, the construction of this term “do[es] not appear to be relevant to the parties’ disputes.” PO Resp. 24. 6. Secure Network Address As Patent Owner explains, the construction of this term “do[es] not appear to be relevant to the parties’ disputes.” PO Resp. 24.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“dispute that Provino’s SDNS resolves secure domain names into secure network addresses, thereby satisfying the claim construction of a secure domain service, as discussed above and further below. See Pet. Reply 8. Further, Provino’s VPN nameserver 32 resides behind a firewall, which controls access to secure devices 31(s), indicating it is secure for that additional reason.10 Ex. 1003, Fig. 1, 9:6–17. The fact that nameservers 17 and 32 perform similar functions simply demonstrates that they are both nameservers. In addition, Provino’s SDNS 32 “is generally similar to . . . nameserver [17], except that the integer Internet address will be provided by the nameserver 32 in a message packet directed to the firewall 30, and the firewall 30 will thereafter transmit the message packet over the secure tunnel to the device 12(m).” Ex. 1003, 11:20–25. In other words, even under Patent Owner’s narrow claim construction that requires an SDNS to perform an additional function (i.e., in addition to resolving a secure domain name (see PO Resp. 16–18)), unlike conventional nameserver 17, secure nameserver 32 directs a message packet to firewall 30, and thereby performs” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“artisans would have recognized that Provino’s scheme could have been used to transmit videoconferencing. Pet. Reply 14–15 (citing Ex. 1011 ¶ 42; Ex. 1006, 9, 249, 254; Ex. 1003, 4:35–49, 5:28–35). For example, Petitioner points out that “[a]lthough Provino does not specifically address these [videoconferencing and other claimed applications], it does describe device 12(m) as a system unit having the requisite capabilities, including a video display ‘to display processed data,’ and explains that message packets received ‘contain information such as web pages or the like, . . . to be displayed on the device’s video display unit.’” Id. at 15 (quoting Ex. 1003, 4:35–49, 5:28–35). This record indicates that videoconferencing simply constitutes similar packet data traffic to the traffic that Provino’s system implements. Petitioner also points out that “even Patent Owner’s expert admitted that ‘[Provino is] generally saying that you can send data, and one such type of data is video;’ and could not identify any reason why sending video data on the Provino system would present insoluble problems.” Id. (citing Ex. 1090, 46:12–13, 48:2–7). Dr. Monrose’s deposition testimony supports Petitioner’s characterization of it. For example, Dr. Monrose states that “he didn’t opine on whether or not there’s anything in Provino that would explicitly not allow the sending of video data. This is not in my declaration, as far as I recall.” Ex. 1090, 48:2–7. Dr. Monrose also did not “reflect on . . . whether [data packets that represent video] will be processed differently or not, and how that could impact the operations of Provino.” See id. at 46:17–47:3 (responding to a question during cross-examination). Petitioner further points out that Kosiur provides a “‘background on VPN technologies and products,’ Ex. 1006 at 9, and explain[s] that VPNs can support ‘newer applications, such as interactive multimedia and videoconferencing,’ id. at 254, as well as ‘file transfers, Web browsing, and e-mail,’ id. at 249.” Pet. Reply 14 (quoting Ex. 1006, citing Ex. 1011 ¶ 42). The record suggests that an ordinarily skilled artisan would have recognized that Provino’s system, which sends packets of data over a VPN, including webpages for viewing on a display, could have been modified in a beneficial and predictable fashion, as Kosiur suggests, to send similar packet data to provide videoconferencing on a similar display. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).” slip op. at 36
Patent outcomesUS 7,987,274 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,987,274 - Apple Inc. v. Virnetx Inc.All claims unpatentablePTAB · Jul 29, 2015 · IPR2014-00404 · APJ Stephen C Siu · IPR · Final written decision
Claims 1–5, 7, 8, 10, 12, 15, and 17 are unpatentable: claims 1–4, 7, 8, 10, 12, 15, and 17 under § 102 and § 103; claim 5 under § 103.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“seeking an inter partes review of claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18 of the ’274 patent pursuant to 35 U.S.C. §§ 311–319. On September 15, 2014, the Board instituted an inter partes review of claims 1–5, 7, 8, 10, 12, 15, and 17 (IPR2014-00484) and joined IPR2014-00484 with IPR2014- 00404 pursuant to 35 U.S.C. § 315(c) (IPR2014-00484, Paper 11 – Dec. on Inst.). On April 16, 2015, the present proceeding was terminated with respect to Microsoft Corporation only. Paper 38.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“domain service” requesting a secure network address and receiving “a response message from the secure domain name service containing the secure network address.” Claim 1 does not recite “recogniz[ing] that the query message is requesting a secure computer address.” “[T]he claims themselves provide substantial guidance as to the meaning of particular claim terms” and “the context in which a term is used in the asserted claim can be highly instructive.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). At least based on the context of the claim, we cannot agree with Patent Owner that one of ordinary skill in the art would have understood that “recogniz[ing]” is required by claim 1 in the absence of a recitation of this alleged requirement. Based on the context of the claim, the Specification, and the prosecution history, claim 1 does not require “recogniz[ing]” as argued by Patent Owner. The Specification describes an “SDNS 313” that “contains a cross-reference database of secure domain names and corresponding secure network addresses. That is, for each secure domain name, SDNS 3313 stores a computer network address corresponding to the secure domain name.” Ex. 1001, 47:15–18. This disclosure comes closest to aligning with the claim term, “secure domain service” (i.e., an SDNS as set forth in the disclosure). Patent Owner does not point the panel to a disclosure in the Specification that clearly supports the requirement of an SDNS to “recognize that the query message is requesting a secure computer address.” Hence, further based on the context of the Specification, we cannot agree with Patent Owner that one of ordinary skill in the art would have understood that “recogniz[ing]” is required by claim 1 in the absence of such a disclosure in the Specification of this alleged requirement.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that one of ordinary skill in the art would have understood the term “tunnel packeting” to mean “forming a packet to be transmitted that contains data structured in one protocol format within the format of another protocol.” PO Resp. 19. However, Patent Owner does not demonstrate sufficiently that the construction of “tunnel packeting” will bear on the outcome of the issues in this inter partes review. Hence, we decline to modify our construction of this term.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Claim 1 recites sending a message from a first network device for an address for a second network device and, in response, receiving at the first network device the address for the second network device. Kiuchi discloses that a client-side proxy “asks the C-HTTP name server whether it can communicate with the host” and that, in response, the C-HTTP name server examines “the requested server-side proxy.” In response to the request from the client-side proxy, the client-side proxy (i.e., “first network device”) receives “the IP address and public key of the server-side proxy.” Ex. 1004, 65. In other words, Kiuchi discloses a first network device (or a client-side proxy) sending a message to the C-HTTP name server (or secure domain service) to request a secure network address (e.g., an “IP address and public key”) for a second network device (i.e., server-side proxy) and then, in response, receiving at the client-side proxy the requested secure network address for the second network device (i.e., “the IP address and public key of the server-side proxy”). Patent Owner does not demonstrate persuasively a difference between Kiuchi and the claimed invention. Patent Owner argues that Kiuchi discloses that the client-side proxy sends a request for a network address for the “origin server” but not for the server-side proxy. However, Kiuchi discloses that in response to the request to communicate with “the host,” the name server examines “the requested server-side proxy” and returns “the IP address . . . of the server-side proxy.” Ex. 1004, 65 (emphasis added). Thus, contrary to Patent Owner’s contention, “the host” of Kiuchi corresponds to the “server-side proxy” (or second network device, as recited in claim 1).” slip op. at 11
Patent outcomesUS 7,987,274 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,987,274 - Apple Inc. v. Virnetx Inc.All claims unpatentablePTAB · Jul 29, 2015 · IPR2014-00484 · APJ Stephen C Siu · IPR · Final written decision
Claims 1–5, 7, 8, 10, 12, 15, and 17 are unpatentable: claims 1–4, 7, 8, 10, 12, 15, and 17 over Kiuchi; claim 5 over combinations including Kiuchi and Lindblad.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“the term “secure domain (name) service,” in light of the Specification, to require “recogniz[ing] that a query message is requesting a secure computer address.” PO Resp. 16. Petitioner proposes that a secure domain (name) service (SDNS) should be construed as “[a] service that can resolve secure computer network addresses for a secure domain name for which a conventional domain name service [(“DNS”)] cannot resolve addresses.” See Pet. 13; PO Resp. 15 (discussing Petitioner’s proposed construction). Claim 1, for example, recites sending a query message to “a secure domain service” requesting a secure network address and receiving “a response message from the secure domain name service containing the secure network address.” Claim 1 does not recite “recogniz[ing] that the query message is requesting a secure computer address.” “[T]he claims themselves provide substantial guidance as to the meaning of particular claim terms” and “the context in which a term is used in the asserted claim can be highly instructive.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). At least based on the context of the claim, we cannot agree with Patent Owner that one of ordinary skill in the art would have understood that “recogniz[ing]” is required by claim 1 in the absence of a recitation of this alleged requirement. Based on the context of the claim, the Specification, and the prosecution history, claim 1 does not require “recogniz[ing]” as argued by Patent Owner. The Specification describes an “SDNS 313” that “contains a cross-reference database of secure domain names and corresponding secure network addresses. That is, for each secure domain name, SDNS 3313 stores a computer network address corresponding to the secure domain name.” Ex. 1001, 47:15–18. This disclosure comes closest to aligning with the claim term, “secure domain service” (i.e., an SDNS as set forth in the disclosure). Patent Owner does not point the panel to a disclosure in the Specification that clearly supports the requirement of an SDNS to “recognize that the query message is requesting a secure computer address.” Hence, further based on the context of the Specification, we cannot agree with Patent Owner that one of ordinary skill in the art would have understood that “recogniz[ing]” is required by claim 1 in the absence of such a disclosure in the Specification of this alleged requirement.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“domain service” requesting a secure network address and receiving “a response message from the secure domain name service containing the secure network address.” Claim 1 does not recite “recogniz[ing] that the query message is requesting a secure computer address.” “[T]he claims themselves provide substantial guidance as to the meaning of particular claim terms” and “the context in which a term is used in the asserted claim can be highly instructive.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). At least based on the context of the claim, we cannot agree with Patent Owner that one of ordinary skill in the art would have understood that “recogniz[ing]” is required by claim 1 in the absence of a recitation of this alleged requirement. Based on the context of the claim, the Specification, and the prosecution history, claim 1 does not require “recogniz[ing]” as argued by Patent Owner. The Specification describes an “SDNS 313” that “contains a cross-reference database of secure domain names and corresponding secure network addresses. That is, for each secure domain name, SDNS 3313 stores a computer network address corresponding to the secure domain name.” Ex. 1001, 47:15–18. This disclosure comes closest to aligning with the claim term, “secure domain service” (i.e., an SDNS as set forth in the disclosure). Patent Owner does not point the panel to a disclosure in the Specification that clearly supports the requirement of an SDNS to “recognize that the query message is requesting a secure computer address.” Hence, further based on the context of the Specification, we cannot agree with Patent Owner that one of ordinary skill in the art would have understood that “recogniz[ing]” is required by claim 1 in the absence of such a disclosure in the Specification of this alleged requirement.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Claim 1 recites sending a message from a first network device for an address for a second network device and, in response, receiving at the first network device the address for the second network device. Kiuchi discloses that a client-side proxy “asks the C-HTTP name server whether it can communicate with the host” and that, in response, the C-HTTP name server examines “the requested server-side proxy.” In response to the request from the client-side proxy, the client-side proxy (i.e., “first network device”) receives “the IP address and public key of the server-side proxy.” Ex. 1004, 65. In other words, Kiuchi discloses a first network device (or a client-side proxy) sending a message to the C-HTTP name server (or secure domain service) to request a secure network address (e.g., an “IP address and public key”) for a second network device (i.e., server-side proxy) and then, in response, receiving at the client-side proxy the requested secure network address for the second network device (i.e., “the IP address and public key of the server-side proxy”). Patent Owner does not demonstrate persuasively a difference between Kiuchi and the claimed invention. Patent Owner argues that Kiuchi discloses that the client-side proxy sends a request for a network address for the “origin server” but not for the server-side proxy. However, Kiuchi discloses that in response to the request to communicate with “the host,” the name server examines “the requested server-side proxy” and returns “the IP address . . . of the server-side proxy.” Ex. 1004, 65 (emphasis added). Thus, contrary to Patent Owner’s contention, “the host” of Kiuchi corresponds to the “server-side proxy” (or second network device, as recited in claim 1). Patent Owner also argues that Kiuchi fails to disclose an access request message, as recited in claim 1. In particular, Patent Owner argues that Kiuchi discloses a “user agent” sending a query message for a secure domain service, rather than a “first network device” (i.e., a client-side proxy of Kiuchi) sending a request to a secure domain service. PO Resp. 36 (citing Ex. 2041 ¶ 42 (“Declaration of Fabian Monrose, Ph.D.” or “Monrose Dec.”). We are not persuaded by Patent Owner’s arguments. Dr. Monrose testifies that Kiuchi discloses an “HTTP/1.0 message [that] is sent ‘from the user agent’ and reaches neither the host/origin server nor the server-side proxy.” Ex. 2041 ¶ 42. However, as previously discussed, Kiuchi discloses a step of “sending . . . requests to the server-side proxy” in which “a client-side proxy forwards HTTP/1.0 requests from the user agent” to the server-side proxy. Ex. 1004, 66. Neither Patent Owner nor Patent Owner’s declarant (Dr. Monrose) explains sufficiently how an “HTTP/1.0 request” that is “forwarded” by a client-side proxy to a server-side proxy fails to reach the server-side proxy in Kiuchi or that the forwarded request in Kiuchi is somehow diverted prior to reaching the server-side proxy and does not arrive at its intended destination. Patent Owner also argues that Kiuchi discloses that the client-side proxy “dispatches a new C-HTTP request” but Kiuchi fails to disclose that the client-side proxy sends “an HTTP/1.0 request.” PO Resp. 37. First, we note that claim 1 recites “sending an access request message.” Claim 1 does not recite or otherwise require “sending an HTTP/1.0 request.” For at least this reason, we are not persuaded by Patent Owner’s argument. Also, as previously discussed, Kiuchi discloses “sending . . . requests to the server-side proxy” in which “a client-side proxy forwards HTTP/1.0 requests” to the server-side proxy. Ex. 1004, 66. Patent Owner does not demonstrate persuasively a material difference between the client-side proxy “sending” a request to a server-side proxy and a client-side proxy “forwarding” a request to a server-side proxy. In both cases, a request is transmitted from the client-side proxy to the server-side proxy. Patent Owner argues that Kiuchi discloses an “HTTP/1.0 request” that “is not an access request message [as recited in claim 1] at least because it does not seek any ‘communication, information, or services’ with the serverside proxy.” PO Resp. 38 (citing Ex. 2041 ¶¶ 44, 46). Kiuchi discloses a client-side proxy “[s]ending C-HTTP request to the server-side proxy” in which the “client-side proxy forward HTTP/1.0 request” to the server-side proxy for communication and exchange of services between devices. Ex. 1004, 66. For example, Kiuchi discloses one example in which “patient information” is “transfer[red]” “among hospitals and related institutions.” Ex. 1004, 64. Patent Owner does not indicate sufficiently how Kiuchi’s request for communication between network devices for communication or information (e.g., patient information) exchange, for example, differs from a device seeking “any communication, information, or services.” Hence, to the extent that claim 1 requires seeking “any communication, information, or services,” we disagree with Patent Owner that Kiuchi fails to disclose this feature. PO Resp. 38. Patent Owner argues that Kiuchi fails to disclose sending an “HTTP/1.0 message” using a “virtual private network communication link.” PO Resp. 39. In particular, Patent Owner argues that Kiuchi discloses sending a message from a client-side proxy to a server-side proxy, which, according to Patent Owner, is “a point-to-point connection, not a network as claimed.” PO Resp. 39–40. Patent Owner also argues that Kiuchi fails to disclose sending a request “using a virtual private network communication link” because “the request [of Kiuchi] lacks the ‘network’ aspect of a VPN communication link and further because [Kiuchi merely discloses] a point-to-point message [instead of] a VPN communication link.” PO Resp. 42–43 (citing Ex. 2041 ¶ 52). Hence, Patent Owner argues that Kiuchi fails to disclose a “network.” We disagree with Patent Owner’s argument. For example, Kiuchi discloses one embodiment of the use of a C- HTTP name server (and client-side and server-side proxies) in “networks among hospitals and related institutions.” Ex 1004, 64. At least in view of this explicit disclosure of “networks,” we are not persuaded by Patent Owner that Kiuchi fails to disclose a “network.” Patent Owner argues that Kiuchi discloses sending an HTTP/1.0 request but that “the request must pass through both the client-side and server-side proxies to reach the origin server.” PO Resp. 41 (citing Ex. 2041 ¶ 51). According to Patent Owner, this indicates that “Kiuchi fails to disclose direct communications to any host server and any message from the client-side proxy . . . is not sent using a VPN communication link.” PO Resp. 41–42. Hence, Patent Owner argues that Kiuchi fails to disclose a “direct communication.” Claim 1, for example, recites sending an access request from a first” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“B. Kiuchi and Bhatti/Lindblad Regarding claims 1–5, 7, 8, 10, 12, 15, and 17, Patent Owner argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Kiuchi and Bhatti because Kiuchi discloses an “origin server” that, according to Patent Owner, corresponds to the “second network device,” as recited in claim 1, for example. PO Resp. 47–49. Even if the “origin server” of Kiuchi would somehow render the combination of Kiuchi and Bhatti improper, we need not consider Patent Owner’s argument further because, as previously discussed, Petitioner relies on the “server-side proxy” and not the “origin server” of Kiuchi as the recited second network device. Patent Owner also argues that Bhatti fails to disclose “using a virtual private network communication link.” PO Resp. 50. However, as discussed above, we agree with Petitioner that Kiuchi discloses this feature. No additional issues with respect to Bhatti or the Lindblad reference are identified. PO Resp. 50–51.” slip op. at 16
Patent outcomesUS 7,987,274 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,987,274
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.