UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BITDEFENDER INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-1315
`PATENT 6,510,466
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.120
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`i
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BITDEFENDER INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-1315
`PATENT 6,510,466
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.120
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`i
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`I.
`II.
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`Tables of Contents
`INTRODUCTION ......................................................................................... 1
`THE '466 PATENT ....................................................................................... 2
`A.
`Effective Filing Date .......................................................................... 2
`B.
`Overview of the '466 Patent ............................................................... 3
`III. THE PETITION FAILS TO ESTABLISH UNPATENTABILITY ......... 5
`A.
`The Petition Does Not Render Obvious The Limitation
`“receiving at the server a login request form a user at the client”,
`as Claim 1 Requires ............................................................................ 6
`1.
`No Reasoning Or Support For The Proposed “single-
`server” Modification ................................................................ 6
`No Reasoning Or Support For The Proposed “offload”
`Modification ........................................................................... 16
`Claims 2, and 7-9 Are Patentable ..................................................... 19
`B.
`IV. THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW
`PROCEEDINGS .......................................................................................... 20
`V. CONCLUSION ............................................................................................ 20
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`2.
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`ii
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`I.
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`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.120, Uniloc Luxembourg S.A.
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`IPR2017-01315
`U.S. Patent 6,510,466
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`(“Patent Owner”) submits this Response to the Petition for Inter Partes Review (“the
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`Petition”) of U.S. Patent No. 6,728,766 (“the '466 Patent”) filed by BitDefender Inc.
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`(“Petitioner”).
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`In the Institution Decision (IPR2017-01315, Paper No. 7), trial was instituted
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`for Claims 1, 2, and 7-9 of the ’466 Patent. Among other fatal deficiencies, the
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`Petition does not establish obviousness for receiving login requests from users at the
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`server where a plurality of application programs are installed. Rather than identify
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`any disclosure within a printed publication, as required by law, Petitioner instead
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`uses the patent as a blueprint to fundamentally rewrite Kasso’s system architecture.
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`More specifically, Petitioner proposes, without reasoning or support, that a person
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`of ordinary skill in the art would have been motivated to modify Kasso by
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`incorporating the dedicated functionality of one server (the NIS server 230), instead,
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`into an entirely different server (the HTTP server 208).
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`Neither the Petition nor its attached declaration bothers to provide
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`explanation, reasoning, or support for the overall system architecture of its proposed
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`rewrite of Kasso. On the contrary, Petitioner and its declarant, Mr. Day, cannot even
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`envision or articulate the overall system architecture of its proposed modification,
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`much less articulate an explanation of why a person of ordinary skill in the art would
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`1
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`IPR2017-01315
`U.S. Patent 6,510,466
`modify the prior art reference to create the claimed invention. For this reason alone,
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`all challenges to the ’466 Patent should be dismissed.
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`The Petitioner’s so-called “reasons” for the proposed rewrite of Kasso is
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`illusory. While in each instance the Petition purports to rely on expert testimony for
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`support, a review of the declaration reveals that it merely parrots verbatim the
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`conclusory attorney arguments of the Petition. Petitioner cannot merely speculate
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`through its declarant, outside the four corners of the reference, to carry its burden.
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`The Federal Circuit has instructed that determinations of obviousness should be
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`based on evidence rather than on mere speculation or conjecture. And therefore, in
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`addition to the above, the continuing and repeated failings of the petition to carry its
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`burden provide additional reasons to dismiss all challenges to the ’466 Patent.
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`In view of the reasons presented herein, Patent Owner respectfully submits
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`that the Petition fails to meet its burden to prove unpatentability. Consequently, all
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`challenges against the ’466 Patent should be dismissed.
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`II. THE '466 PATENT
`A. Effective Filing Date
`The '466 Patent is titled “Methods, Systems and Computer Program Products
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`for Distribution of Application Programs to a Target Station on a Network.” EX1001
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`at [54]. The '466 Patent issued from U.S. Patent Application No. 09/211,528, filed
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`December 14, 1998. The '466 Patent issued on January 21, 2003, after five years of
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`2
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`IPR2017-01315
`U.S. Patent 6,510,466
`thorough prosecution, and was originally assigned to the International Business
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`Machines Corporation (“IBM”). EX1001 at [45], [73].
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`B. Overview of the '466 Patent
`The '466 Patent relates to centrally managing the provision of application
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`programs within a heterogeneous computer network environment. EX1001, 1:21-
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`23; 3:24-36; 5:37-6:9. An application program (or simply “application”) is software
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`written to perform a particular function for a user and is distinguishable from, for
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`example, the operating system of a particular device, system-level software designed
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`to operate the network, etc.
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`As of 1998, designers of heterogeneous computer networks for large
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`enterprises were confronted with various problems including, for example, users
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`who login at different times from different client devices on the network—i.e., a
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`roaming user. Around that same timeframe, computer network designers were also
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`confronted with the problems of efficiently distributing and updating applications
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`throughout the enterprise network, while maintaining consistency among roaming
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`users as to both application updates and the application of preferences.
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`The '466 teaches innovative solutions to those problems, among others. As
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`disclosed in the ‘466 Patent, for example, the IBM inventors had reduced to practice
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`various embodiments that enable a roaming user to access the user’s authorized
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`applications from any client on the network, while consistently providing the user’s
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`3
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`IPR2017-01315
`U.S. Patent 6,510,466
`own selected preferences for those applications and maintaining application updates
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`in a manner transparent to the user. In certain embodiments, application programs
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`are provided on an as-needed basis and specifically-adapted to the specific client the
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`user happens to be accessing at the time. EX1001, 11:4-8.
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`Claims 1, 15, and 16 are the independent claims of the '466 Patent. For the
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`convenience of the Board, independent Claim 1 is reproduced below:
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`1. A method for management of application programs on a network
`including a server and a client comprising the steps of:
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`installing a plurality of application programs at the server;
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`receiving at the server a login request from a user at the client;
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`establishing a user desktop interface at the client associated with the user
`responsive to the login request from the user, the desktop interface
`including a plurality of display regions associated with a set of the
`plurality of application programs installed at the server for which the
`user is authorized;
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`receiving at the server a selection of one of the plurality of application
`programs from the user desktop interface; and
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`providing an instance of the selected one of the plurality of application
`programs to the client for execution responsive to the selection.
`Figure 1 (copied below) of the '466 Patent illustrates certain features recited
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`in the independent claims.
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`4
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`IPR2017-01315
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`US. Patent 6,510,466
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`III. THE PETITION FAILS TO ESTABLISH UNPATENTABILITY
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`The Board instituted trial on the following grounds presented in the Petition:
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`—@—
`l, 7, and 9 _ Kasso and Rad—licheF
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`_— Kasso Raduchel and Bennetf
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`l EX1009, US. Patent No. 5,832,505 (“Kasso”).
`2 EX1010, US. Patent No. 6,338,138 (“Raduchel”).
`3 EX101 1, US. Patent No. 5,615,367 (“Bennett”).
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`9
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`103
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`IPR2017-01315
`U.S. Patent 6,510,466
`Kasso, Raduchel, and Olsen4
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`A. The Petition Does Not Render Obvious the Limitation “receiving
`at the server a login request form a user at the client”, as Claim 1
`Requires
`1.
`No Reasoning or Support For The Proposed “single-server”
`Modification
`The Petition concedes that Kasso does not disclose the claim element
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`“receiving at the server a login request from a user at the client.” It is undisputed
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`Kasso expressly and specifically discloses at least three separate servers, one of
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`which, the NIS server 230, handles authentication, which is separate and distinct
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`from the HTTP server 208, that delivers applications to clients. See Pet. at 32.
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`Nevertheless, the Petition posits that it “would have been obvious” to “implement
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`the authentication functionality described for the NIS server 230 on the HTTP
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`server 208 of Kasso”. Id. (emphasis added). The Board should not engage in such
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`hindsight and speculative reconstruction outside the four corners of the reference.
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`“[A] patent composed of several elements is not proved obvious merely by
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`demonstrating that each of its elements was, independently, known in the prior art.”
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`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d 705
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`(2007). “In appropriate circumstances, a single prior art reference can render a claim
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`obvious. However, there must be a showing of a suggestion or motivation to modify
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`4 EX1012, U.S. Patent No. 5,905,860 (“Olsen”).
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`U.S. Patent 6,510,466
`the teachings of that reference to the claimed invention in order to support the
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`obviousness conclusion.” SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225
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`F.3d 1349, 1356 (Fed. Cir. 2000), aff'd, 659 F.3d 1109 (Fed. Cir. 2011). The
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`obviousness analysis must focus on the knowledge and motivations of the skilled
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`artisan at the time of the invention. InTouch Techs., Inc. v. VGO Commc'ns, Inc.,
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`751 F.3d 1327, 1348 (Fed. Cir. 2014). In a case of obviousness, there must be an
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`explanation of why a person of ordinary skill in the art would modify the prior art
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`references to create the claimed invention. Cutsforth, Inc. v. MotivePower, Inc., 636
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`Fed. Appx. 575, 577–78 (Fed. Cir. 2016) citing In re Kotzab, 217 F.3d 1365, 1371
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`(Fed.Cir.2000); In re Rouffet, 149 F.3d 1350, 1359 (Fed.Cir.1998).
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`The Petition allegedly proffers “three
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`reasons”
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`for
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`its hindsight
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`reconstruction. However, each “reason” fails at least because (1) the Petition fails to
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`provide reasoning or support for the overall architecture of its proposed modification
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`to Kasso, and (2) there is insufficient reasoning and support for a POSITA to make
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`the alleged modification to Kasso.
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`a)
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`The Petition Provides No Explanation, Reasoning, Or
`Support For The Overall System Architecture Of The
`Proposed Modification Of Kasso
`As a threshold matter, the Petition fails to provide explanation, reasoning, and
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`support for the overall architecture and system of its proposed modification to Kasso.
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`Petitioner argues that it would have been obvious for a POSITA to modify Kasso
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`U.S. Patent 6,510,466
`such that the functionality of one of the at least three servers (the NIS server 230) is
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`incorporated, instead, into a separate server (the HTTP server 208). However, Kasso
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`discloses at least three distinct and separate servers – the JBS server 206, the HTTP
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`server 208, and the NIS server 230. See EX1009, 4:54-5:7. Petitioner provides no
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`explanation, reasoning, or evidence as to why a POSITA would have been motivated
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`to completely redesign the Kasso system, such that the authentication functionality
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`dedicated to a server designed for that purposes is, instead, implemented in an
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`entirely different server having an expressly different purpose.
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`The Petition even admits that it provides no explanation, reasoning, or support
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`for its proposed modification, conceding that it would have “involved a change in
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`the entities involved in intercommunication”, and merely concluding, through its
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`expert, who also provides no reasoning or support, that doing so “would not have
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`fundamentally altered
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`the functioning of
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`the authentication or delivery
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`functionalities.” Pet. at 34; EX1008, Day Decl, ¶ 30. To make a showing of
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`obviousness, there must be an explanation of why a person of ordinary skill in the
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`art would modify the prior art reference to create the claimed invention. Cutsforth,
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`636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet, 149 F.3d
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`at 1359. And here, there is none.
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`Instead of providing the required reasoning and support, the Petition merely
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`remarks that “the ’466 patent itself envisions including multiple entities … on a
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`U.S. Patent 6,510,466
`single machine, and does not deem further explanation of such an approach to be
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`necessary.” Pet. at 34. However, “[c]are must be taken to avoid hindsight
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`reconstruction by using ‘the patent in suit as a guide through the maze of prior art
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`references, combining the right references in the right way so as to achieve the result
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`of the claims in suit.’” Grain Processing Corp., 840 F.2d at 1075 (internal citations
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`omitted). Regardless, the invention of the ’466 Patent is irrelevant to motivation and
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`reasoning to modify the at least three servers of Kasso to implement the
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`authentication functionality from one server into another. Moreover, as will be
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`discussed below, the Petition and Mr. Day cannot even envision or articulate the
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`proposed modification, much less articulate an explanation of why a person of
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`ordinary skill in the art would modify the prior art reference to create the claimed
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`invention. Instead, there is only speculation upon speculation that the proposed
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`modification “would have saved costs and potentially simplified the system
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`architecture.” Pet. at 33-34; EX1008, ¶ 28 (emphasis added).
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`For this reason alone, all challenges against the ’466 Patent should be
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`dismissed. See SIBIA Neurosciences, Inc., 225 F.3d at 1356; see also InTouch
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`Techs., 751 F.3d at 1348.
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`b)
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`Kasso Does Not “Suggest” A Single Server – Instead
`Kasso Distinguishes The Disclosure Of Its Figure 1
`From Its Figure 2
`Next, even considering the Petition’s alleged “three reasons” individually,
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`U.S. Patent 6,510,466
`each fails on the merits. First, contrary to what Petitioner argues, Kasso does not
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`“suggest” in its description of Figure 1 that the alternative embodiment of Figure 2
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`may be modified by combining the distinct servers into a single server. Kasso
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`distinguishes its “computer system” in Figure 1 from the alternative “networked
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`computer model” in Figure 2 at least on the basis that only the latter involves client-
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`server communication over a network. See, e.g., EX1009 (Kasso), 4:46-53. The
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`system of Figure 1 is self-contained and operates locally within the computer itself.
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`Notably, the entire disclosure regarding the system of Figure 1 in Kasso never
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`mentions a user logging in, because there is no network and no server to
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`communicate with. This is confirmed by Kasso’s description of the system of Figure
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`2, which is titled “NETWORK COMPUTER ENVIRONMENT”. EX1009, 4:45.
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`Moreover, Kasso expressly states that the computer system of Figure 1 as
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`corresponding only to a network computer (i.e., client) of Figure 2. Id. (“Each of the
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`network computers may be configured in the form of computer system 100[.]”).
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`Therefore, Kasso expressly distinguishes between its client computer systems and
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`its multiple server systems, which must perform numerous and specific tasks not
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`required or envisioned by the client computer systems. Regardless, to make a
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`showing of obviousness, there must be an explanation of why a person of ordinary
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`skill in the art would modify the prior art reference to create the claimed invention.
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`Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet,
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`10
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`U.S. Patent 6,510,466
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`149 F.3d at 1359. And again, there is none.
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`Additionally, nothing in Figures 1 or 2, alone or together provides
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`explanation, reasoning, or support for a POSITA to modify Kasso such that the
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`functionality of one of the at least three servers (the NIS server 230) be incorporated
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`into a separate server (the HTTP server 208) as Petitioner proposes.
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`c)
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`The Petition Provides No Explanation, Reasoning, Or
`Support For Its Conclusory Argument That
`“implementing two functions … on the same server”
`Would Have “saved costs and potentially simplified
`the system architecture”
`The Petition makes the conclusory argument, without explanation, reasoning,
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`or support, that “implementing two functions … on the same server” would have
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`“saved costs and potentially simplified the system architecture”. See Pet. at 33-34.
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`And the Petition makes the further unsupported conclusory argument that “[a]
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`single-machine implementation … would not have required the additional
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`processing power of a dedicated authentication server.” Id. For all its conclusory
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`propositions, Petitioner cites (without explanation) to a single paragraph in its expert
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`declaration. See Pet. at 33-34. However, its expert declaration merely parrots the
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`Petition’s conclusory statements verbatim, providing no substance or rational
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`underpinning of its own. Petitioner cannot merely speculate through its declarant,
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`outside the four corners of the reference, to carry its burden. The Federal Circuit has
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`instructed that “legal determinations of obviousness, as with such determinations
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`IPR2017-01315
`U.S. Patent 6,510,466
`generally, should be based on evidence rather than on mere speculation or
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`conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006);
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`K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014)
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`(finding the P.T.A.B. correctly rejected conclusory assertions of what would have
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`been common knowledge in the art).
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`Further, the obviousness analysis must focus on the knowledge and
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`motivations of the skilled artisan at the time of the invention. InTouch Techs, 751
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`F.3d at 1348. And there must be an explanation of why a person of ordinary skill in
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`the art would modify the prior art reference to create the claimed invention.
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`Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet,
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`149 F.3d at 1359. There is nothing in the Petition or Mr. Day’s mere conclusory
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`assertion that provides any such analysis. For example, nothing in the Petition or Mr.
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`Day’s mere conclusory assertion provides explanation, reasoning, or support for a
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`POSITA to modify Kasso such that the functionality of one specifically-designed
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`server (the NIS server 230) is implemented, instead, within a distinct server designed
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`for an entirely different purpose (the HTTP server 208), as Petitioner proposes. In
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`fact, Petitioner cannot even envision its own proposed modifications to the system
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`architecture of Kasso, the Petition and Mr. Day can only pile speculation upon
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`speculation that the proposed modification “would have saved costs and potentially
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`simplified the system architecture.” Pet. at 33-34; EX1008, ¶ 28 (emphasis added).
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`The Petition Fails To Show Or Support Its
`Conclusory Argument Of Simple Substitution
`Petitioner undermines its own conclusory argument that “implementing
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`d)
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`authentication and delivery functionality on the same server, as opposed to distinct
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`servers, involves the simple substitution of one known element for another (a server
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`implementing two functions for two servers implementing the functions separately)
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`to obtain predictable results, applying a known technique (authentication) to a
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`known device (delivery server) ready for improvement to yield predictable results,
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`and choosing from a finite number of identified, predictable solutions (single server
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`and multi-server implementations for authentication and application delivery), with
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`a reasonable expectation of success.” Pet. 34 (citing EX1008 ¶ 29, which again,
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`merely repeats verbatim the same conclusory statement). For example, Petitioner
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`concedes “[s]uch a single-machine implementation would have involved a change
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`in the entities involved in intercommunication.” Pet. at 34. As another example,
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`Petitioner cannot even envision its own proposed modifications to the system
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`architecture of Kasso, and can only pile speculation upon speculation that the
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`proposed modification “would have saved costs and potentially simplified the
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`system architecture.” Pet. at 33-34; EX1008, ¶ 28 (emphasis added).
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`In other words, if the Petitioner cannot even understand or articulate the
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`resulting system architecture of its proposed modifications, then Petitioner has not
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`shown that its proposed modifications “apply a known technique”, “obtain
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`IPR2017-01315
`U.S. Patent 6,510,466
`predictable results”, from a “finite number of identified, predictable solutions”, and
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`“with a reasonable expectation of success.”
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`Furthermore, as with the above, Petitioner cannot merely speculate through
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`its declarant, outside the four corners of the reference, to carry its burden. The
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`Federal Circuit has instructed that “legal determinations of obviousness, as with such
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`determinations generally, should be based on evidence rather than on mere
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`speculation or conjecture.” Alza Corp., 464 F.3d at 1290; Hear-Wear Techs., 751
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`F.3d at 1365-66.
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`Finally, the obviousness analysis must focus on the knowledge and
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`motivations of the skilled artisan at the time of the invention. InTouch Techs, 751
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`F.3d at 1348. And there must be an explanation of why a person of ordinary skill in
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`the art would modify the prior art reference to create the claimed invention.
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`Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet,
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`149 F.3d at 1359. None of that is provided here, and nothing in the Petition’s and
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`Mr. Day’s conclusory assertions provide explanation, reasoning, or support for a
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`POSITA to modify such that the functionality of one specifically-designed server
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`(the NIS server 230) is implemented, instead, within a distinct server designed for
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`an entirely different purpose (the HTTP server 208), as Petitioner proposes.
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`e)
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`Kasso’s explicit description of separate, dedicated
`servers would lead a POSITA away from attempting
`to utilize a single server instead
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`Kasso’s explicit description of separate, dedicated servers would lead a
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`POSITA away from attempting to utilize a single server instead. In re Gurley, 27
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`F.3d 551, 553 (Fed. Cir. 1994) (A prior art reference teaches away from the claimed
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`invention when a person of ordinary skill, upon reading the reference, “would be led
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`in a direction divergent from the path that was taken by the applicant.”). Kasso
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`describes Figure 2 as a distributed system in which distinct, specialized servers
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`perform particular tasks. Dr. DiEuliis Decl., EX2001 ¶¶ 64-69, 88. The NIS Server
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`230, for example, controls access to the system by verifying whether usernames and
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`password are correct and valid. Id. ¶ 68 (citing EX1009, 5:4-6, 5:38-39). By using a
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`dedicated server as a security gateway, assets and sensitive information stored on
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`other servers within the system is protected. Id. ¶ 90-92. Petitioner’s proposed
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`“single-server” modification would eliminate that enhanced security aspect of the
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`disclosure. Id. ¶ 93.
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`Petitioner relies on the testimony of Mr. Day (who received no academic
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`degree beyond a “Bachelor’s degree in Business Administration”)5 for the
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`proposition that “implementing two functions such as authentication and delivery on
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`the same server, as opposed to separate dedicated servers, would have saved costs
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`5 See EX1008, Exhibit A. Petition did not provide the requisite page-labeling for any
`of its exhibits. The quoted statement from Mr. Day’s declaration appears on page 1
`of its attached Exhibit A, as originally numbered at the top of the page.
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`and potentially simplified the system architecture.” Pet. 33-34 (citing EX1008 ¶ 28).
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`Dr. DiEuliis disagrees (and evidently so did Kasso). According to Dr. DiEuliis, if a
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`single-server architecture was such an obvious variant of the distributed system
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`disclosed in Kasso, surely Kasso would have said so. EX2001 ¶ 88. The fact that
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`Kasso only describes a distributed-server architecture, with a dedicated NIS Server
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`230 for handling security, suggests to a POSITA that using separate, dedicated
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`servers as disclosed was an intentional and necessary aspect of controlling access to
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`Kasso’s distributed system. Id. ¶ 91.
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`2.
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`No Reasoning Or Support For The Proposed “offload”
`Modification
`For the same reasons as discussed above, the Petition’s alternative “offload”
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`modification also fails. For example, the “three reasons” in this section are again,
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`conclusory attorney argument which purports rely on Mr. Day’s expert declaration,
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`however, as before, the paragraphs in Mr. Day’s declaration are identical to the
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`paragraphs of the Petition. Compare Pet. at 35-36 with EX1008, ¶¶ 32-35. Petitioner
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`cannot merely speculate through its declarant, outside the four corners of the
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`reference, to carry its burden. Alza Corp., 464 F.3d at 1290; Hear-Wear Techs., 751
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`F.3d at 1365-66.
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`Contrary to the express and undisputed disclosure in Kasso that only the NIS
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`Server 230 receives authentication requests from clients, Petitioner argues a
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`POSITA would be motivated to deviate from that disclosure by, instead, receiving
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`authentication requests at the HTTP Server 208 and then “offloading” the
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`authentication process to the NIS Server 230. Petitioner’s concession that a POSITA
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`would need to significantly deviate from the disclosure in Kasso to arrive at certain
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`claim limitations for the “server” only confirms that there is no prima facie
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`obviousness. The Board should reject Petitioner’s improper attempt to use the '466
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`Patent as a blueprint to fundamentally rewrite the disclosure in Kasso. See, e.g., 35
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`U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(4); In re Sang Su Lee, 277 F.3d at 1345; K/S
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`HIMPP, 751 F.3d at 1365-66.
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`First, “having all client requests … directed to a single server”, as Petitioner
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`proposes in the “offload” modification, is contrary to the express disclosure in Kasso
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`and would not simplify communications at either the client side or the server side.
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`Cf. Pet. 35. It is undisputed that Kasso discloses its distributed system, by intended
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`design, uses various distinct servers to handle client requests. That disclosure leads
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`away from directing all client requests to a single server. In re Gurley, 27 F.3d at
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`553. Furthermore, directing all client requests to a single server, as Petitioner
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`proposes, introduces a potential bottleneck concern that is otherwise addressed in
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`Kasso’s distributed system. EX2001 ¶ 89. The proposed “offload” modification also
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`requires additional server-to-server communications that are not required by the
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`simplified design in Kasso. Id. ¶ 102. Implementation of those additional and
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`U.S. Patent 6,510,466
`undisclosed communications would unnecessarily consume bandwidth and
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`processing power, thereby further undermining the alleged motivation to deviate
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`from the disclosure in Kasso. Id.
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`Second, Kasso itself does not suggest its distributed system presents the
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`contrived security concerns identified in the Petition. Kasso expressly provides what
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`it considers to be an adequate solution to security: a dedicated NIS Server 230 having
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`the sole purpose of controlling access to the distributed system. EX1009, 5:34-44.
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`A POSITA would not be motivated by that disclosure to look for some other way to
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`address security. EX2001 ¶ 93. In the case of In re Omeprazole Patent Litigation,
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`536 F.3d 1361 (Fed. Cir. 2008), the Federal Circuit affirmed a finding of
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`nonobviousness because the alleged flaws in the prior art that ostensibly prompted
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`the modification had not been recognized in the art itself. Thus, there would have
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`been no reason to modify as proposed, even though the modification could have been
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`done. Analogous reasoning and the same conclusion of nonobviousness apply here.
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`Third, the Petition and the testimony cited therein provide no cognizable
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`explanation with some rational underpinning in support of the ipse dixit statement:
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`“receiving login requests and application selections at the same server and
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`forwarding the login requests, as distinct from directly receiving login requests at
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`one server and application selections at a different server, involves choosing from a
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`finite number of identified, predictable solutions (direct v. indirect communication
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`U.S. Patent 6,510,466
`with a server), with a reasonable expectation of success.” Pet. 35-36 (citing EX1008
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`¶ 34, which merely repeats verbatim the same conclusory statement). Petitioner’s
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`unexplained incantation of magical obviousness catchphrases is inapposite here at
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`least because Kasso does not leave it to POSITA to decide between two alternatives.
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`Rather, as the Petition acknowledges, Kasso expressly discloses receiving and
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`processing authentication requests at a distinct and separate NIS Server 230
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`dedicated to that sole purpose.
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`Finally, the obviousness analysis must focus on the knowledge and
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`motivations of the skilled artisan at the time of the invention. InTouch Techs, 751
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`F.3d at 1348. And there must be an explanation of why a person of ordinary skill in
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`the art would modify the prior art reference to create the claimed invention.
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`Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet,
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`149 F.3d at 1359. None of that is provided, and nothing in the Petition’s and Mr.
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`Day’s conclusory assertions in that section provide explanation, reasoning, or
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`support for a POSITA to modify Kasso, where Petitioner cannot articulate or
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`envision the resulting system architecture of the proposed modifications.
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`B. Claims 2, and 7-9 Are Patentable
`Because Claims 2, and 7-9 depend directly or indirectly from Claim 1, for all
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`the same reasons above, Claims 2, and 7-9 are also patentable.
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`IV. THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW
`PROCEEDINGS
`The Supreme Court is currently considering the constitutionality of inter
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`partes review proceedings. Oil States Energy Servs., LLC v. Greene’s Energy Grp.,
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`LLC, 137 S. Ct. 2239 (2017). The constitutional challenge is primarily based on the
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`argument that adversarial challenges to an issued patent—like inter partes
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`reviews—are “Suits at common law” for which the Seventh Amendment guarantees
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`a jury trial. U.S. Const. amend. VII; Markman v. Westview Instruments, Inc., 517
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`U.S. 370, 377 (1996). Further, because patents are private property rights, disputes
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`concerning their validity must be litigated in an Article III court, not before an
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`executive branch agency. McCormick Harvesting Mach. Co. v. C. Aultman & Co.,
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`169 U.S. 606, 609 (1898). Out of an abundance of caution, Patent Owner hereby
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`adopts this constitutional challenge now to preserve the issue pending the Supreme
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`Court’s decision.
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`V. CONCLUSION
`For the forgoing reasons, Patent Owner respectfully submits that the Petition
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`fails to meet its burden to prove unpatentability. Consequently, all challenges against
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`the ’466 Patent should be dismissed.
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`Date: December 4, 2017
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`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
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`Brett A. Mangrum
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`Attorney for Patent Owners
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`Reg. No. 64,783
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`Ryan Loveless
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`Attorney for Patent Owners
`Reg. No. 51,970
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`IPR2017-01315
`U.S. Patent 6,510,466
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