• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,188,180
• Ricoh Americas Corporation / Xerox Corporation et al. v. MPHJ Technology Investments, LLCAll claims unpatentable
  PTAB · Aug 14, 2015 · IPR2014-00539 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1, 2, 4, 6–9, 11, 13–16, 18, 20–23, 25, 27, 28, 34–35, 37, 39–42, 44, and 46–47 were held unpatentable as anticipated by XNS and Harkins and obvious over Harkins and Motoyama.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Decision on Institution.7 Petitioner argues we should adopt the construction from the final decision in the ’302 IPR, set forth above. Pet. Reply 3. Patent Owner proposes the term be construed as “a discrete software program executable on an operating system for the purpose of accomplishing a task.” PO Resp. 8–10 (citing Ex. 2001 ¶ 17). In support of its proposed construction, Patent Owner points to the Specification’s description of “Input and Output Module registers.” PO Resp. 6–7 (citing Ex. 1001, 9:35–37). Patent Owner contends that because the modules register with the operating system means they cannot be the operating system. Id. at 7 (citing Ex. 2001 ¶ 21). Patent Owner argues the ’410 patent uses the term “‘application’ so that it does not bleed into the concept of ‘Windows’ or any other operating system.” Id. We are not persuaded that the citation to the Specification, including the testimony of Dr. Kaliski, supports Patent Owner’s argument that our prior construction in the Institution Decision, or those after trial in the final decisions in the ’302 and ’309 IPRs,8 are too broad. The patents at issue in the ’302 and ’309 IPRs have the same Specification as the ’410 patent and the analysis there is equally applicable here. Patent Owner does not present any other arguments specific to this case that require further analysis. We agree with the constructions set forth in the ’302 and ’309 IPRs. We therefore adopt the construction of “application” from the final decisions in those cases. 7 “[A] program that may or may not be stored on a device such as a printer or scanner.” Dec. 11. 8 The Patent Owner’s Response was filed November 25, 2014, after the November 19, 2014, filing date of the final decisions in the ’302 and ’309 IPRs.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Patent Owner does not dispute Petitioner’s technical description of XNS and GIS 150. PO Resp. 12–13. Patent Owner’s argument is that “[w]hile the GIS 150 may copy images between physical devices over a network (e.g., a scanner and a printer server, a scanner and a file server), the GIS 150 does not disclose copying images between physical devices, applications, and the Internet using a single ‘GO’ operation.” Id. at 12 (citing Ex. 2001 ¶¶ 42–43). Thus, Patent Owner relies on its construction of “application” as limited to software, and not hardware. Id. at 13. Petitioner argues the construction of application includes hardware as well as software. Pet. Reply 8–9. Petitioner is correct, as we determined, in part, “an application may include software and hardware and performs a function or functions.” Thus, we are not persuaded by Patent Owner’s argument. Based on the foregoing discussion and the record evidence, Petitioner shows by a preponderance of evidence that the XNS anticipates claims 15, 34, and 41.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “It is appropriate to look to interrelated teachings of multiple patents as part of the obviousness analysis. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner has provided a listing of the interrelated teachings between Motoyama and Harkins. We also agree that the field of endeavor, communicating with, and monitoring, diagnosis and control of machines using multiple communication protocol of Motoyama is sufficiently similar to the office document storage and transmission system of Harkins that the person of ordinary skill would combine Motoyama with Harkins to “yield predictable results.” KSR, 550 U.S. at 416. Moreover, Dr. Melen testifies that a person of ordinary skill in the art “would understand Motoyama’s database of communication protocols to provide an office network, such as the Harkins’s network, with the ability to interact with different protocols automatically, and in a manner that is transparent to end users.” Ex. 1006 ¶ 73 (citing Ex. 1005, 1:59–2:57). Conversely, the circumstances surrounding Dr. Kaliski’s testimony are such that giving it any substantial weight on the obviousness issue is problematic. See Pet. Reply 12–14.17 Thus, we determine that the preponderance of the evidence supports a person of ordinary skill in the art would have combined Motoyama and Harkins.” slip op. at 27

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Moreover, Dr. Melen testifies that a person of ordinary skill in the art “would understand Motoyama’s database of communication protocols to provide an office network, such as the Harkins’s network, with the ability to interact with different protocols automatically, and in a manner that is transparent to end users.” Ex. 1006 ¶ 73 (citing Ex. 1005, 1:59–2:57). Conversely, the circumstances surrounding Dr. Kaliski’s testimony are such that giving it any substantial weight on the obviousness issue is problematic. See Pet. Reply 12–14.17 Thus, we determine that the preponderance of the evidence supports a person of ordinary skill in the art would have combined Motoyama and Harkins.” slip op. at 27

  Patent outcomesUS 7,477,410 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,477,410
• Ricoh Americas Corporation / Xerox Corporation et al. v. MPHJ Technology Investments, LLCAll claims unpatentable
  PTAB · Aug 12, 2015 · IPR2014-00538 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–8 are unpatentable as anticipated by XNS and Harkins and as obvious over Harkins and Motoyama.

  RulingsFinal written decision

  • Prior constructionTerm construed petitioner constructionDecided for petitioner

    “We are not persuaded that the citation to the Specification, including the testimony of Dr. Kaliski, supports Patent Owner’s argument that our prior construction in the Institution Decision, or those after trial in the final decisions in the ’302 and ’309 IPRs,7 are too broad. The patents at issue in the ’302 and ’309 IPRs have the same Specification as the ’173 patent and 6 “‘[A] program that may or may not be stored on a device such as a printer or scanner.’” Dec. 11. 7 The Patent Owner’s Response was filed November 25, 2014, after the November 19, 2014, filing date of the final decisions in the ’302 and ’309 IPRs. the analysis there is equally applicable here. Patent Owner does not present any other arguments specific to this case that require further analysis. We agree with the constructions set forth in the ’302 and ’309 IPRs. We therefore adopt the construction of “application” from the final decisions in those cases.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “According to the ’173 patent, “[t]his GO button can copy paper, whether physical or electronic, from one device and[/]or application to another device and/or application,” Ex. 1001, 6:46–48; 70:12–15, and “the user simply has one sequence to execute: select From, select To, and then press GO,” id. at 7:2–3; 70:36–37. The VC of the ’173 patent does act like a photocopier in that the user simply “press[es] a GO button to actually carry out the photocopy process.” Id. at 46:50–57. The “process feels familiar because the sequence is the same.” Id. We credit Petitioner’s expert that the person of ordinary skill in the art would understand the “Go button” to be equivalent to pushing the button on a prior art copier to make a copy. Ex. 1006 ¶ 39. The additional language proposed by Patent Owner is unnecessary for the construction, because, on this record, the Specification does not preclude a sequence of actions, manual or otherwise, that would limit the term as Patent Owner proposes. See, e.g., In re Paulsen, 30 F.3d at 1480 (omitting an extraneous limitation unnecessary for the purpose of making sense of the claim). Furthermore, the plain and ordinary meaning of “Go button” as used in the claims does not support Patent Owner’s proposed construction. For example, claim 1 recites that an electronic image is rendered “in response to a selection of a Go button.” Ex. 1001, 86:15–19. This language does not suggest that the “Go button” does anything more than start the process. The ’173 patent Specification and claim language support our prior” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “The Specification does not specifically define “interface” or “interfacing.” Several parts of the Specification describe “interface” as being connected to multiple hardware and software components. Figure 16 is a block diagram depicting an “interface” connected to multiple components (keyboard 50, mouse 52, among others). The Summary section describes the “need to provide a single consistent interface to many different engines with the ability to access the unique features of each engine.” Ex. 1001, 4:12–14. The Specification also describes a “computer implemented method includes the steps of defining a substantially consistent interface for individual object components that represent diverse technologies, and migrating a plurality of engines to the consistent interface.” Id. at 11:31–35. One described “interface . . . enables copying images between physical devices, applications, and the Internet using a single ‘GO’ operation.” Id. at 13:11–15. The preceding is a non-exhaustive list of how “interface” is described in the Specification. The Specification is replete with descriptions of various interfaces interconnecting more than one component, including both hardware and software. Conversely, nothing limits an “interface” to a connection between two components. In addition, the claim limitations which recite “interface” or “interfacing” are in broad language. See, e.g., Ex. 1001, claim 4(d)(“interfacing between at least one of said scanner, digital copier or other multifunction peripheral and email application software using a first of said interface protocols”)(emphasis added). Our construction includes indirect connection. Applying the broadest reasonable interpretation, we construe “interface” or “interfacing” to mean “making a direct or indirect connection between two elements so they can work with each other or exchange information.”” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Given our construction of “Go button,” we are not persuaded by Patent Owner’s argument that claim 1 requires “rendering and transmitting a document” in a single step. All that our construction requires is that the Go button is “an operation that begins a process.” Thus, the “Go button” or START button of GIS 150 can initiate a scan in one step and send a document via email in another. The evidence produced shows, and Patent Owner acknowledges, that XNS discloses scanning and distribution of documents two steps. In addition, our construction of “software application/application” includes both the GIS 150 hardware as well as the XNS software. Our construction of “application” included hardware and software as well as “a program, or group of programs.” Accordingly, contrary to Patent Owner’s position, XNS and GIS 150 are a “single application” that performs both scanning and distribution of electronic documents by email.” slip op. at 24

  Patent outcomesUS 8,488,173 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,488,173
• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,987,274
• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,987,274
• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,987,274
• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · Jul 29, 2015 · IPR2014-00483 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1, 7, 8, 10, 12, 13, 15, and 17 are unpatentable as anticipated by Provino; claims 2–5 and 18 are unpatentable as obvious over Provino with Kosiur and Xu, respectively.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Apple Incorporated (“Petitioner”) also filed a Petition (Paper 2) 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 in Case IPR2014- 00483 (“’483 IPR”). Noting that Microsoft Corporation’s Petition and Apple Incorporated’s Petition were substantially identical in material aspects, the Board instituted an inter partes review of claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18, and joined IPR2014-00483 with IPR2014-00403 pursuant to 35 U.S.C. § 315(c). See ’483IPR, Paper 11, 6–9.2 Thereafter, pursuant to a settlement agreement, the present proceeding was terminated with respect to Microsoft Corporation only. Paper 38.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDisclaimer not foundDecided 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)Term construed board ownDecided for petitioner

    “As the latter two sentences show, the ’274 patent Specification describes placing field hopping data (i.e., an address hopping technique, see id. at 46:64–47:11), into a payload portion of a data packet. The Specification does not tie “tunneled” packets into a specific requirement that requires a change in formatting––above and apart from any protocol formatting or structural change that may happen to, or does, occur by placing one type of data field (header) into another type of data field (payload). After discussing the insertion of the field hopping data into the payload portion, the Specification then describes that these “modified message packets preferably conform to the UDP protocol,” or “[a]lternatively . . . can conform to the TCP/IP protocol or the ICPM protocol.” Id. at 50:30–35. In other words, if there is a change in a protocol in these disclosed examples––for example, from one protocol format to a UDP protocol format––any change appears to come in preferred embodiments and after the packets have been modified (i.e., tunneled). Accordingly, based on the foregoing discussion, we modify our construction as set forth in the Institution Decision, such that “tunnel packeting” means “placing data or information from one field, such as a header, into another packet field, such as a payload, wherein the two fields normally have different structures or formats, or placing data structured in one format within the format of another protocol.”” slip op. at 22

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “In any event, to the extent it is material, the ’274 patent Specification employs the term “user’s computer” in a “conventional scheme . . . shown in FIG 25. A user’s computer 2501 includes a client application 2504 (for example a web browser) . . . .” Ex. 1001, 38:61–63. Although Patent Owner refers to this “conventional” computer as “another embodiment,” the ’274 patent Specification disparages the “conventional architecture” that employs a user’s computer, because it is not secure enough. See Ex. 1001, 39:4–13; PO Resp. 21. In general, the ’274 patent Specification states that “[t]he present invention” involves a “client computer” with a “client application” that “communicates with a server.” See Ex. 1001, 7:40–44. This description of “[t]he present invention” does not mention a “user’s computer.” Therefore, the ’274 patent Specification does not repeatedly treat a “client computer” and a “user’s computer” as the same. The broadest reasonable construction of a client computer is a computer associated with a client.” slip op. at 23

  Patent outcomesUS 7,987,274 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,987,274
• Jack Henry And Associates, Inc. v. Datatreasury Corp.Some claims unpatentable
  PTAB · Jul 8, 2015 · CBM2014-00057 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 26, 27, 42, and 46 are unpatentable: Campbell anticipates five claims, and Campbell with Blackwell renders five claims obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “stamp . . . , an identification number to identify the merchant originating the scan and any additional useful information.” Ex. 1001, 8:14–17 (emphasis added). The DAT_TERMINAL_ID, which is part of the unencrypted tag, “uniquely identifies the DAT 200 which is used by the customer.” Id. at 10:27–33. The DAT 200, also known as the remote data access terminal (id. at 4:62–63) is shown in Figure 2 and is a collection of components found at the merchant (e.g., bank). Id. at 5:20–38. Thus, in this particular example, the SSID (which is not encrypted) identifies the remote data access terminal, for example, the subsystem that scans and sends images at a bank. Nothing about the term “subsystem identification information,” as set forth in the claims or specification, indicates that only the remote data access subsystems can have an SSID; this is merely an example. Accordingly, we construed SSID in a manner that encompassed a preferred embodiment but, because the specification provided no indication that the term should be read more narrowly, we did not limit SSID to the particular embodiment identified by Patent Owner. See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “Regarding Petitioner’s improper use of sub-exhibits within an exhibit, we note that, although parties are not permitted to file combined documents as Petitioner has done in Exhibit 1026, see 37 C.F.R. § 42.6(a)(3), exclusion would be too extreme a remedy in this instance, where there is insufficient prejudice to Patent Owner. A more reasonable remedy would be to have Petitioner re-file the documents, but at this late stage of the proceeding, where briefing has closed, there is no compelling reason to have Petitioner re-file the documents.” slip op. at 13

  • BurdenMixed

    “We agree with Petitioner that Campbell discloses a plurality of sending and receiving banks. Ex. 1018, 6:9–14 (describing subscribing and non-subscribing banks using the system). Petitioner, however, relied on the node in Campbell to show the central location limitation of independent claim 26, not the remote bank. Pet. 31. Petitioner does not explain how Campbell describes a plurality of nodes (or, conversely, how the receiving bank describes each feature of the central location). Accordingly, Patent Owner’s observation that Petitioner has failed to address the claim limitations is persuasive. We determine that Petitioner has failed to show by a preponderance of the evidence that Campbell anticipates the subject matter of claim 29.” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “With a full record, we find that the preponderance of the evidence supports Petitioner’s position. Campbell does not state that only the image is encrypted. Instead, Campbell states that “information [is] encrypted . . . to provide security for the images transported.” Ex. 1018, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image for different things. Earlier in that column, Campbell also explains what it means by “information,” and it is clear that this information is not just images but rather includes “information that accompan[ies] those images.” Id. at 5:25– 26 (emphasis added). For example, the information identifies the “sending institution,” “receiving institution,” and “the disposition of the check.” Id. at 5:26–31. As we discussed above in our claim construction section, we are persuaded that information that identifies the sending institution is an SSID. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1026, 14 (Petitioner’s expert, Dr. Michalson, testifying that the encrypted information in Campbell identifies the receiving institution). Reviewing the record before us, we are persuaded that Campbell discloses transmitting an encrypted SSID.” slip op. at 17

  Patent outcomesUS 5,910,988 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,910,988
• Jack Henry And Associates, Inc. v. Datatreasury Corp.All claims unpatentable
  PTAB · Jul 8, 2015 · CBM2014-00056 · APJ William V Saindon · CBM · Final written decision

  Claims 42 and 43 are unpatentable as anticipated by Campbell.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Regarding Petitioner’s improper use of sub-exhibits within an exhibit, we note that, although parties are not permitted to file combined documents as Petitioner has done in Exhibit 1023, see 37 C.F.R. § 42.6(a)(3), exclusion would be too extreme a remedy in this instance, where there is insufficient prejudice to Patent Owner. A more reasonable remedy would be to have Petitioner re-file the documents, but at this late stage of the proceeding, 3 “system. A collection of components organized to accomplish a specific function or set of functions.” IEEE Standard Glossary of Software Engineering Terminology 73 (IEEE Std 610.12-1990, 1990) (Ex. 3001). 4 “subsystem. A secondary or subordinate system with a larger system.” Id. at 72. where briefing has closed, there is no compelling reason to have Petitioner re-file the documents. Regarding Patent Owner’s arguments that Exhibit 1023 goes beyond the scope of Patent Owner’s Response, we find this argument unpersuasive. As an initial matter, a motion to exclude is not a proper vehicle for use by a party to raise the issue of a reply exceeding the proper scope in violation of 37 C.F.R. § 42.23(b). See Vibrant Media Inc. v. General Electric Co., Case IPR2013-00170, slip op. at 31 (PTAB June 26, 2014) (Paper 56) (“Whether a reply contains arguments or evidence that are outside the scope of a proper reply under 37 C.F.R. § 42.23(b) is left to our determination.”). Moreover, the evidence cited by Dr. Michalson in his testimony is encouraged by our rules. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). The documents supplied in the sub-exhibits are the underlying facts that the opinion relies upon. See, e.g., Ex. 1023, 10 (citing the sub-exhibits in support of his testimony). Further, Dr. Michalson’s testimony is in response to particular arguments Patent Owner made in its Response. Specifically, Dr. Michalson’s testimony is limited to the LAN/WAN (id. at 7–11), storage (id. at 11–13), and encryption (id. at 13–15) disclosures in Campbell. Patent Owner argues that Campbell does not disclose encryption in the Response. See, e.g., PO Resp. 29 (encryption). As such, Dr. Michalson’s testimony is, on its face, in response to Patent Owner’s arguments. Patent Owner does not set forth a persuasive argument that Dr. Michalson’s testimony is improper in this instance. As to Dr. Michalson’s testimony on storage (Ex. 1023, 11–13), it is not clear to us whether this testimony is in response to Patent Owner’s arguments in the Response. Further, Dr. Michalson’s testimony on LANs/WANs (id. at 7–11) appears to be present because of its relevance in another proceeding (CBM2014- 00057); Petitioner is merely re-using the same testimony for multiple proceedings. Our Decision does not rely on this testimony, however, so there is no need to exclude this portion of the testimony. In view of the above, Patent Owner’s Motion to Exclude Exhibit 1023 is denied.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Tr. 50:14–20. We agree that nothing in the claims, as would be understood by a person of ordinary skill in the art in view of the specification, requires any form of ownership or other type of corporate relationship between the various subsystems; only that they function in the manner set forth in the claims. Indeed, the ordinary meaning of “system” involves something organized around function, not ownership.3 A subsystem is merely a sub-component of a system.4 In view of the above, we retain our initial construction of “subsystem identification information” as “information that identifies a subsystem.”” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Ex. 1012, 2:18–20 (“FIG. 1 shows an example of a system for transporting images of checks”). As such, we are persuaded by Petitioner’s position that the various separately identifiable objects operating within this system— namely, the first bank, the node, and the second bank—are subsystems within this system.5 Except for the “encryption” aspect of the claim, discussed below, Patent Owner raises no cogent argument that the first bank, the node, or the second bank in Campbell fail to disclose any element of 5 See supra notes 3, 4. claim 42. Instead, Patent Owner’s argument is that one or more entities in Campbell are not commonly owned. See, e.g., PO Resp. 21, 23. We determined in our claim construction section, however, that there is no ownership requirement to be a “subsystem” of the claimed system. Accordingly, Patent Owner’s argument is unpersuasive. Reviewing the record before us, we are persuaded that Petitioner has established that the “remote data access subsystem” reads on the first bank in Campbell and the “central data processing system” reads on the node.” slip op. at 15

  • BurdenFwd all claims unpatentableUnpatentable

    “With a full record, we find that the preponderance of the evidence supports Petitioner’s position. Campbell does not state that only the image is encrypted. Instead, Campbell states that “information [is] encrypted . . . to provide security for the images transported.” Ex. 1012, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image for different things. Earlier in that column, Campbell also explains what it means by “information,” and it is clear that this information is not just images but rather includes “information that accompan[ies] those images.” Id. at 5:25– 26 (emphasis added). For example, the information identifies the “sending institution,” “receiving institution,” and “the disposition of the check.” Id. at 5:26–31. As we discussed above in our claim construction section, we are persuaded that information that identifies the sending institution is an SSID. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1023, 15 (Petitioner’s expert, Dr. Michalson, testifying that the encrypted information in Campbell identifies the receiving institution). Reviewing the record before us, we are persuaded that Campbell discloses transmitting an encrypted SSID. c. Conclusion Regarding Claim 42 In view of the above, we determine that Petitioner has shown, by a preponderance of the evidence, that Campbell anticipates the subject matter of claim 42.” slip op. at 17

  Patent outcomesUS 6,032,137 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,032,137
• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · May 11, 2015 · IPR2014-00238 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1–3, 8–11, 14–17, 22–25, and 28–30 are unpatentable as anticipated by Wesinger; claims 4–7 and 18–21 are unpatentable over Wesinger and RFC 2543.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Patent Owner argues that the term “secure communication link” must include encryption. See, e.g., PO Resp. 11, 13–19. Patent Owner, however, does not demonstrate sufficiently that the construction of this term impacts any issue in this proceeding. Therefore, we decline to construe this term. Virtual Private Network” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Patent Owner does not explain sufficiently a difference between the determination of whether a requested connection with a device is “allowed” or not and the determination of whether a device is “available” for a connection. One of ordinary skill in the art would have understood that if a connection with a virtual host is determined to be allowed if all rules are satisfied (as Wesinger discloses), then the virtual host would be determined to be “available” for the connection, the connection being formed with the virtual host based on the determination. Under an ordinary and customary construction of the term “available” as would have been understood by one of ordinary skill in the art in light of the Specification as being accessible for use, at hand, or usable,1 we do not discern a substantial difference between determining whether a device is allowed to connect (and connecting only if the device is allowed) and determining whether a device is available (or accessible for use, at hand, or usable) for a connection (and connecting only if the device is accessible for use, at hand, or usable). In both cases, a determination is made as to whether a connection will be made with a device and the connection is created based on this determination.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “As previously discussed, Wesinger discloses a system in which a client sends a connection request for connection with a device and, if access is granted and “[i]f all the rules are satisfied, then the connection [with the device] is allowed.” Ex. 1008, 16:66–67. Petitioner does not indicate that Wesinger discloses a specific type of connection or session between devices. The RFC 2543 reference discloses a similar system in which a client “send[s] a request” in order to “establish . . . multimedia sessions or calls.” Ex. 1012 at 7, 13. Thus, RFC discloses that one of ordinary skill in the art would have known that different types of connections or sessions that may be established between devices include, for example, multimedia session or calls. We agree with Petitioner that the combination of such known features, performing their known functions, would have resulted in the mere predictable result of a system in which a connection or session is established between devices (Wesinger and RFC 2543), the connection or session being, for example, a multimedia session or call (RFC 2543).” slip op. at 12

  • Expert testimonyOther

    “C. Declaration of Michael Fratto Patent Owner argues that the Declaration of Michael Fratto Regarding U.S. Patent No. 8,504,697 (Ex. 1003) should not be given any weight. See, e.g., PO Resp. 1–8. We did not rely on the testimony of Mr. Fratto in this decision. Therefore, Patent Owner’s argument is moot.” slip op. at 14

  Patent outcomesUS 8,504,697 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,504,697

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.