• Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLCNo claims unpatentable
  PTAB · Nov 2, 2015 · IPR2014-01002 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claim 10 was not shown unpatentable under § 103 over Balmuth1, the Starke Reference, or ’662 Balmuth combined with ’910 Pickens.

  RulingsFinal written decision

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

    “Claim Interpretation We interpret claims of an unexpired patent using the “broadest reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b). Under this standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of our Decision to Institute, we determined that the terms in the challenged claims did not need to be construed expressly, and we see no reason to modify that determination in light of the record developed at trial. B.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “Given the complexities involved in developing a thick plate composition from a thin sheet, and the breadth of potential applications within the aerospace industry, we determine that Mr. Balmuth and Dr. Starke fail to provide sufficient reasoning as to why one of ordinary skill in the art would have attempted to manufacture thick plates having the claimed properties from the thin sheets described in the prior art. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (holding expert testimony to be impermissible hindsight for failing to explain what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place the prior art together). In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”). Petitioner’s contentions that it would have been obvious to try to manufacture thick plates having the claimed properties and that “one of ordinary skill in the art had a ‘good reason to pursue the known options within his . . . technical grasp’” to do so similarly are insufficient. See Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of identified, predictable solutions” may support an inference of obviousness, but “[t]o the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these ‘identified, predictable solutions’ may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue known options within this or her technical grasp.”)). As set forth above, we credit Dr. Pickens’s testimony that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable. Accordingly, Petitioner has not shown sufficiently that a person having ordinary skill in the art would have considered it obvious to try to manufacture a thick plate composition with the properties recited in claim 10 of the ’509 patent.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable

    “In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”). Petitioner’s contentions that it would have been obvious to try to manufacture thick plates having the claimed properties and that “one of ordinary skill in the art had a ‘good reason to pursue the known options within his . . . technical grasp’” to do so similarly are insufficient. See Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of identified, predictable solutions” may support an inference of obviousness, but “[t]o the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these ‘identified, predictable solutions’ may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue known options within this or her technical grasp.”)). As set forth above, we credit Dr. Pickens’s testimony that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable. Accordingly, Petitioner has not shown sufficiently that a person having ordinary skill in the art would have considered it obvious to try to manufacture a thick plate composition with the properties recited in claim 10 of the ’509 patent.” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “to be persuasive. In order to rely on inherency to establish the existence of a missing claim limitation in an obviousness analysis, “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” PAR Pharma., Inc. v. TWI Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). Neither Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties of a thick plate with the same chemistry as a thin sheet are supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate. Mr. Balmuth and Dr. Starke simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case. See Ex. 1006 ¶ 13; Ex. 1008 ¶ 32. Mr. Balmuth, for example, states that “it is generally understood that the strength and fracture toughness properties of a plate are less than those of a sheet having similar chemistry,” but that “one of ordinary skill in the art would predict improved properties for a plate upon a showing of improved properties in a sheet having similar chemistry,” and does not expound upon the reasons why a person skilled in the art would understand that to mean that the thick plate would display the same mechanical properties as the thin sheet. See Ex. 1006 ¶ 14. Based upon the evidence presented, we find that the opinions of Mr. Balmuth and Dr. Starke are not persuasive as they are not supported by the evidence of record. 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.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in [a patentability] determination”). Patent Owner, in contrast, provides reasoning as to why a person having ordinary skill in the art would not have understood that a thick plate would have similar properties to a thin sheet having the same chemistry. PO Resp. 13–14, 34–35, 37–40, 42–44. For example, Patent Owner notes that since according to Mr. Balmuth you ‘don’t have the ability’ or ‘any interest’ in measuring toughness in the S-T direction in sheet, Petitioner has not established that the strength and toughness properties in sheet would necessarily be predictive of the strength and toughness properties of plate, such as described in Claim 10. Id. at 14. Dr. Pickens also testified to the complexities involved in developing thick plate aluminum-lithium alloys: For example, quench sensitivity, stress-corrosion cracking resistance, in plane anisotropy, through thickness heterogeneity, and lower short transverse fracture toughness are a few factors that make developing thick plate aluminum-lithium alloys very complicated. Furthermore, lithium lowers the thermal conductivity of aluminum which is problematic in several areas. Heat is more difficult to extract during direct-chill casting thereby exacerbating metallurgical segregation problems. Hot rolling can break down segregation, such as heterogeneous segregations at grain boundaries, so that it may be less harmful, although there is a practical limit on how thick aluminum alloy rolling ingot can be cast. The reduction ratio, i.e. scalped ingot thickness to final product gauge, is an important real-world processing variable when developing a thick plate aluminum lithium alloy. Ex. 2043 ¶ 11; see also PO Resp. 16–17 (discussing the “recognition in the art of complex differences between sheet and thick plate”). Patent Owner further notes that Dr. Pickens testified “that he would not have been motivated to add Mn in the claimed amount to an Al-Cu-Li-Mg-Ag alloy with a thickness of at least about 3 inches, or scale up a sheet alloy to the” slip op. at 11

  Patent outcomesUS 7,229,509 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,229,509
• Fiserv, Inc. v. Datatreasury CorporationSome claims unpatentable
  PTAB · Sep 1, 2015 · CBM2014-00088 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 22, 25, 26, 29, 36, 38–43, 50, 51, 55, 62, and 63 are unpatentable as anticipated by Campbell; the remaining instituted claims were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDecided for petitioner

    “B. Patent Owner’s Motion to Exclude Patent Owner moves to exclude Exhibits 1062–1065, filed by Petitioner on April 7, 2015, over two months after Petitioner filed its Reply and 22 days before oral hearing. PO Mot. Excl. 2–3. Petitioner characterizes its submission as “supplemental information” and “apologizes for its oversight” of the “minor procedural defect” of not seeking authorization to file a motion for supplemental information. Pet. Opp. Mot. Excl. 2. We dismiss as moot Patent Owner’s Motion to Exclude because we hereby order the expungement of Exhibits 1062–1065 for being filed without prior authorization.” slip op. at 8

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

    “before (Jack Henry CBM, Paper 17, 9–10).6 PO Resp. 21–22. Patent Owner notes that, if we do not adopt that construction, it will “abide by the Board’s decision.” Id. at 21. We decline to adopt the district court construction, a construction previously considered and not adopted, in the absence of arguments explaining why we should adopt that construction, and in the presence of a statement that Patent Owner will abide by our construction should we not choose to adopt that construction. Upon consideration of the record before us, we maintain that the broadest reasonable interpretation of “subsystem identification information” is “information that identifies a subsystem.”” slip op. at 11

  • 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. 1019, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image to refer to different collections of data. 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 in a prior claim construction of this term, we are persuaded that information identifying the sending institution is a SSID. See Jack Henry CBM, Paper 37, 8–11. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1003 ¶¶ 64–65, 78–84, 91 (Petitioner’s Declarant, Dr. Knox, testifying that the encrypted information in Campbell identifies the receiving institution). Patent Owner argues that Campbell discloses that the controller may be configured to handle encrypted information, which means that it “does not necessarily encrypt subsystem information” and that encryption is not “necessarily always . . . accomplished.” PO Resp. 32–34.14 Patent Owner does not provide an explanation as to how this, even if true, would preclude anticipation: Campbell would still disclose encrypted SSIDs if it disclosed the encryption as a capability but not a necessity of the system. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983) (“The law of anticipation does not require that the reference ‘teach’ what the subject patent teaches. . . . . [I]t is only necessary that the claims under attack, as construed by the court, ‘read on’ something disclosed in the reference, i.e., all limitations of the claim are found in the reference, or ‘fully met’ by it”); see also Pet. Reply 5–6 (arguing that there is no requirement that the prior 14 Later in its Response, Patent Owner argues that, although Campbell may “encrypt the name of th[e] bank,” Campbell does not “encrypt[] identification information that identifies a particular subsystem of the . . . Bank.” PO Resp. 48–49. Thus, Patent Owner appears to recognize that in fact Campbell discloses encrypting the name of the bank (while disputing that the name is sufficient to be a SSID). art mandate the use of a disclosed feature). Notwithstanding, we disagree that Campbell only occasionally encrypts SSIDs, for the reasons explained in the prior paragraph. Reviewing the record before us, we are persuaded that Campbell discloses transmitting an encrypted SSID.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “relay network over a telecommunications company network. Ex. 1002, 12:50–61. Patent Owner’s Declarant, Mr. Ginsberg, acknowledges that Campbell describes transmission of signals over a public switched telephone network, but states that “the ‘central offices’ are not described as being remote from the receiving bank.” Ex. 2004 ¶ 22. Mr. Ginsberg appears to be discussing the portion of Campbell where it describes the signals 16 “Wide Area Network (WAN)[:] A data communications network that covers geographically separated areas, typically containing cities. Thus a WAN is usually composed of Local Area Networks (LAN) interconnected by other communications links hired from a PTT or other common carrier.” Focal Dictionary of Telecommunications (1999) available at http://search.credoreference.com/content/entry/bhfidt/wide_area_network_w an/0 (Ex. 3002). produced by the sending bank being transmitted on network access lines 22 to reach telephone network 10 and, more specifically, that “[t]he signals received by the network on line 22 may be transmitted through the network 10 via . . . one or more central offices to the check image processing node 12.” Ex. 1019, 3:17–43. Mr. Ginsberg does not explain how this passage supports his conclusion. Whether the “central offices” (not relied on by Petitioner for this claim) are remote to the sending bank has no bearing, which we can see, on whether Campbell describes a WAN. Campbell describes transmission of information between the sending bank and the node over a public switched telephone network; it is that communication that Petitioner asserts occurs over a WAN. See Pet. Reply 11–12; Pet. 30–31. A public switched telephone network covers geographically distinct locations. One of ordinary skill in the art would understand that transmitting information over such a network generally involves the sender and receiver being in different locations; likewise, the system of Campbell makes little sense if the banks and the node are all in the same location.17 Accordingly, Mr. Ginsberg’s testimony on this point is unpersuasive. On the other hand, Petitioner’s Declarant, Dr. Knox, explains how the Campbell system uses a public switched telephone network and a frame relay network, which Dr. Knox testifies is a type of WAN. Ex. 1003 ¶ 158. This testimony is persuasive, under its own reasoning and because, as” slip op. at 21

  Patent outcomesUS 6,032,137 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,032,137
• Fiserv, Inc. v. Datatreasury CorporationSome claims unpatentable
  PTAB · Sep 1, 2015 · CBM2014-00087 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 22, 26, 29, 36, 38–42, 46–49, 58–60, 66–69, 73, 74, 80, 82–84, 88–91, 102, 106–110, and 114–123 are unpatentable as anticipated by Campbell; the remaining challenged claims were not shown …

  RulingsFinal written decision

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

    “In our Decision to Institute this trial, we determined the broadest reasonable interpretation of “subsystem identification information” is “information that identifies a subsystem.” Dec. Inst. 8. There, as here, we relied on our prior interpretation of this term in the Jack Henry CBM. See Jack Henry CBM, Paper 17, 9–10; id., Paper 37, 9–12. Notably, we determined, as an ancillary matter to construing the term, 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.” Id., Paper 37, 12.5” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “B. Patent Owner’s Motion to Exclude Patent Owner moves to exclude Exhibits 1062–1065. PO Mot. Excl. 2–3. Petitioner filed the disputed exhibits on April 7, 2015, which was more than two months after Petitioner filed its Reply and 22 days before oral hearing. Id. Petitioner characterizes its submission as “supplemental information” and “apologizes for its oversight” of the “minor procedural defect” of not seeking authorization to file a motion for supplemental information. Pet. Opp. Mot. Excl. 2. We dismiss as moot Patent Owner’s Motion to Exclude because we hereby order the expungement of Exhibits 1062–1065 for being filed without prior authorization.” slip op. at 9

  • 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. 1019, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image to refer to different collections of data. 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 in a prior claim construction of this term, we are persuaded that information identifying the sending institution is a SSID. See Jack Henry CBM, Paper 37, 9–12. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1003 ¶¶ 64–65, 78–84, 91 (Petitioner’s Declarant, Dr. Knox, testifying that the encrypted information in Campbell identifies the receiving institution).” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “bank and the node over a public switched telephone network; it is that communication that Petitioner asserts occurs over a WAN. See Pet. Reply 10; Pet. 21–22. A public switched telephone network covers geographically distinct locations. One of ordinary skill in the art would understand that transmitting information over such a network generally involves the sender and receiver being in different locations; likewise, the system of Campbell makes little sense if the banks and the node are all in the same location. Accordingly, Mr. Ginsberg’s testimony on this point is unpersuasive. On the other hand, Petitioner’s Declarant, Dr. Knox, explains how the Campbell system uses a public switched telephone network and a frame relay network, which Dr. Knox testifies is a type of WAN. Ex. 1003 ¶ 158. This testimony is persuasive, under its own reasoning and because, as we mentioned above, the WAN in the ’988 patent involves a frame relay network over a telecommunications company’s network.” slip op. at 22

  Patent outcomesUS 5,910,988 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 5,910,988
• Apple Inc. v. Virnetx Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,188,180
• 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

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