UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`PANASONIC AVIONICS CORP.,
`Petitioner
`
`v.
`
`LINKSMART WIRELESS TECHNOLOGY, LLC.,
`Patent Owner
`____________
`
`Case IPR2019-00043
`U.S. Patent No. RE46,459
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`

`

`Table of Contents
`
`I.
`
`Introduction .................................................................................................... 1
`
`II. Overview of the ’459 Patent (Ex. 1001) ......................................................... 2
`
`III. Legal Standards .............................................................................................. 5
`
`IV. Each Deficiency Identified in this Response Applies to All Challenged
`Claims, Thus Any One is an Independent Basis to Deny Institution ............. 7
`
`V. The Petition Fails to show that the Prior Art Teaches the “Redirection
`Server” of the ’459 Patent .............................................................................. 8
`A. The ’459 Patent Teaches that “Redirecting” a User Means
`Modifying the User’s Request for a Network Location to Request
`a Different Network Location ................................................................. 8
`B. Claim Construction of “Redirection Server” ........................................ 11
`C. Malkin Does Not Teach Redirecting the User as Required by
`the ’459 Patent’s “Redirection Server,” Instead Malkin Only
`Teaches Blocking a User from an Internet Service .............................. 16
`
`VI. The Petition Fails to Show that a User’s Rule Set that is Correlated to
`a Temporarily Assigned Network Address and Modified While that
`Rule Set is Correlated to a Temporarily Assigned Network Address .......... 19
`
`VII. The Petition Fails to Show that it Would Have Been Obvious to Combine
`Abraham and Telia at the Time of the Invention ......................................... 24
`
`VIII. Conclusion .................................................................................................... 32
`
`
`
`i
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`

`

`Table of Authorities
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ........................................................................... 25
`Apple Inc. v. Samsung Elecs. Co.,
`839 F.3d 1034 (Fed. Cir. 2016) ........................................................................... 25
`Apple Inc. v. Uniloc Luxembourg S.A.,
`IPR2018-00420, Paper 7 (PTAB, Aug. 6, 2018) ................................................ 13
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) ............................................................................. 7
`Cisco Systems, Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB, Aug. 29, 2014) .............................................. 6
`Edmund Optics, Inc. v. Semrock, Inc.,
`IPR2014-00583, Paper 50 (PTAB, Sep. 9, 2015) ................................................. 6
`Ex parte Levengood,
`28 USPQ2d 1300 (BPAI 1993) ........................................................................... 30
`General Electric Company v. TAS Energy Inc.,
`Case IPR2014-00163, Paper 11 (PTAB May 13, 2014) ..................................... 30
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed.Cir.2016) ............................................................................... 6
`Hyundai Motor Co. v. Blitzsafe Texas, LLC,
`Case IPR2016–01476, Paper 12 (PTAB Jan. 24, 2017) ...................................... 25
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................. 7
`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ........................................................................... 25
`InTouch Techs., Inc. v. VGO Commc'ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ........................................................................... 30
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) ........................................................................... 31
`Pause Tech., LLC v. TiVo, Inc.,
`419 F.3d 1326 (Fed. Cir. 2005) ........................................................................... 31
`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................. 29
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ........................................................................... 14
`Renishaw PLC v. Marposs Societa' per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998) ........................................................................... 16
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .................................................................................. 5, 7, 8
`
`
`
`ii
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`

`

`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ........................................................................... 25
`Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ......................................................................... 8, 13
`W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ........................................................................... 29
`Wasica Finance GMBH v. Continental Auto. Systems,
`853 F.3d 1272 (Fed. Cir. 2017) ............................................................................. 7
`Zoltek Corp. v. United States,
`815 F.3d 1302 (Fed. Cir. 2016) ........................................................................... 29
`Statutes
`35 U.S.C. § 312(a)(3) ............................................................................................... 6
`35 U.S.C. §318(a) ..................................................................................................... 5
`Rules
`37 C.F.R. §42.108 ............................................................................................... 6, 14
`37 C.F.R. §42.6(a)(3) ................................................................................................ 6
`37 C.F.R. §42.65(a) .................................................................................................. 6
`
`
`
`
`iii
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`

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`I.
`
`Introduction
`
`The ’459 patent reissued from U.S. Patent No. 6,779,118. The ’459 patent’s
`
`claims have been extensively vetted. In addition to the prosecution of the ’459
`
`patent’s reissued and amended claims, the claims of the original ’118 patent went
`
`through prior District Court litigation, examination, ex parte and inter parte
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`reexaminations, and two Board appeals. The Patent Office and opposing parties
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`found and asserted a diverse array of prior art. The ’118 patent’s claims were
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`narrowed and corrected through the course of these prior proceedings, and again in
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`prosecution of the ’459 reissue.
`
`With this backdrop, the Petition tries to shoehorn together three prior art
`
`references in its only ground of obviousness. The Petition relies on mischaracterizing
`
`the challenged claims and asserted prior art to create the superficial appearance of a
`
`likelihood of success. But the facts—even when viewed in Petitioner’s favor—do
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`not support the Petition’s argument.
`
`While the Petition is deficient in many ways, the Petition fails at a threshold
`
`level for at least three independent reasons. These are further explained below in
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`turn. Each of these deficiencies applies to all of the challenged claims, and any one
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`is fatal to the Petition on its own. The Petition thus fails demonstrate a reasonable
`
`likelihood of success in invalidating any one challenged claim. Trial should not be
`
`instituted.
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`
`
`1
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`

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`II. Overview of the ’459 Patent (Ex. 1001)
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`Patent Owner Linksmart was founded by Koichuru (“Ko”) Ikudome. He and
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`co-inventor Moon Tai Yeung created the innovation claimed by the ’459 patent.
`
`Ikudome originally founded and was CEO of Auric Web Systems, Inc. (now
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`renamed and operating as AuriQ Systems, Inc.). Ikudome and Yeung, Auric’s
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`Director of Technology, developed and sought to commercialize innovative and
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`fundamental technologies for users and Internet service providers (ISPs) to enable
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`access to information and commerce on the then-nascent Internet and World Wide
`
`Web. The ’459 patent stems from Auric’s innovative product development.
`
`The ’459 patent describes a novel architecture for Internet access through an
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`automatic redirection system to provide a more flexible way to mediate a user’s
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`access to the Internet. Figure 1 of the ’459 patent shows an exemplary ISP
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`environment for Internet access in the absence of redirection:
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`
`
`In such a conventional ISP environment, a user accesses the Internet by
`
`connecting to the ISP, at which point networking software at the user end and the
`
`ISP begin “negotiating.” The ISP authenticates a user’s login information, typically
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`
`
`2
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`

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`from a database. A commercial ISP may also send an accounting request to bill the
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`user for the access. Once the user is authenticated, the system establishes a network
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`connection through the Internet gateway at the ISP. The user is then allowed to
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`access a requested Internet location. If the user cannot be authenticated, then no
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`network connection is established through the gateway. The user is then blocked
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`from the Internet service and cannot access any requested Internet location.
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`Figure 2 of the ’459 patent shows the role of a redirection server, as provided
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`by the ’459 patent, in the ISP environment. Shown here are embodiments that allow
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`redirection to occur at the Internet gateway or before the user can access any remote
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`web servers. See Ex. 1001 at 2:6-11.
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`
`
`The ’459 patent teaches that once the user is connected to the ISP, the user
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`may request a location on the Internet. That request goes to the redirection server.
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`There, the redirection server may allow the request and deliver the user to the user’s
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`requested location, e.g., a particular requested website. Or, the redirection server
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`may modify the user’s request and redirect the user to a different location, e.g., a
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`
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`3
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`different website. Id. at 1:20-22, 5:36-59, 6:20-7:5, 7:38-56, 8:3-29. The ’459 patent
`
`teaches embodiments in which the redirection server’s actions are governed by
`
`authenticating the user on an external server, which may be based on an accounting
`
`request to bill the user. Id. at 4:19-32, 6:4-14.
`
`The ’459 patent describes prior systems, like proxy servers, which were
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`programmed with a list of blocked or allowed addresses and limited to only blocking
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`or allowing specific terminals or sets of terminals’ access to remote sites. In these
`
`prior art systems, the rules for access were static and needed to be reprogrammed,
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`such as by some external server, in order to change which locations specific
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`terminals could access. See Ex. 1001 at 2:65-3:3.
`
`The ’459 patent’s claims are directed to a system for Internet access in a server
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`that dynamically redirects a user requesting access to an Internet site, a “redirection
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`server,” based on rules. See Ex. id. at 5:26-59. These rules are correlated with that
`
`user’s temporarily assigned IP network address. See id. at 5:1-5, 6:5-15, 6:25-35,
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`7:14-36. Based on the rule sets, the redirection server may modify the user’s request
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`for an Internet location to redirect it to a different Internet location. See id. at 5:5-12,
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`6:50-7:5, 7:37-57. The rules can be dynamically and automatically modified by the
`
`redirection server while the rule is correlated with the user’s temporarily assigned
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`network address. See id. at 5:45-59, 8:3-23. The redirection server modifies the rules
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`based on a function of factors that may include, among others, time, user input, data
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`
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`4
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`transmitted to the user, or the Internet location accessed by the user. See, e.g., id. at
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`7:60-8:23. Claim 91 is illustrative:
`
`[0] A system comprising:
`[1] a redirection server programmed with a user's rule set correlated to a
`temporarily assigned network address;
`[2] wherein the rule set contains at least one of a plurality of functions used to
`control data passing between the user and a public network;
`[3] wherein the redirection server is configured to automatically modify at
`least a portion of the rule set while the rule set is correlated to the temporarily
`assigned network address;
`[4] wherein the redirection server is configured to automatically modify at
`least a portion of the rule set as a function of some combination of time, data
`transmitted to or from the user, or location the user accesses; and
`[5] wherein the redirection server is configured to modify at least a portion of
`the rule set as a function of time while the rule set is correlated to the
`temporarily assigned network address.
`The preamble and limitations of Claim 91 are numbered above as they are in
`
`the Petition. The Petition raises one ground, arguing that claims 91-99, 108-120, and
`
`122-125 are rendered obvious by the combination of U.S. Pat. No. 5.983,270
`
`(“Abraham”) (Ex. 1005), U.S. Pat. No. 6,247,054 (“Malkin”) (Ex. 1006), and
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`European Pat. No. EP0762707A2 (“Telia”) (Ex. 1007).
`
`III. Legal Standards
`
`Before instituting review, the Director must determine, based on the parties'
`
`papers, “that there is a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challenged in the petition.” SAS Inst., Inc. v. Iancu,
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`138 S. Ct. 1348, 1361 (2018) (quoting 35 U.S.C. §318(a)). The petitioner has the
`
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`5
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`burden to “demonstrate that there is a reasonable likelihood that at least one of the
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`claims challenged in the petition is unpatentable.” 37 C.F.R. §42.108. The petitioner
`
`also has the burden to clearly set forth the basis for its challenges in the petition.
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.Cir.2016) (citing 35
`
`U.S.C. § 312(a)(3) as “requiring IPR petitions to identify ‘with particularity ... the
`
`evidence that supports the grounds for the challenge to each claim’”).
`
`To the extent that the petition relies on an expert declaration, it must be more
`
`than conclusory and disclose the facts underlying the opinion. 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.”); Edmund Optics, Inc.
`
`v. Semrock, Inc., IPR2014-00583, Paper 50 at 8 (PTAB, Sep. 9, 2015) (affording
`
`little or no weight to “experts’ testimony that does little more than repeat, without
`
`citation to additional evidence, the conclusory arguments of their respective
`
`counsel.”). Nor may the petition rely on the expert declaration to remedy any gaps
`
`in the petition itself. 37 C.F.R. §42.6(a)(3) (“Arguments must not be incorporated
`
`by reference from one document into another document”); see also Cisco Systems,
`
`Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 9 (PTAB, Aug. 29, 2014)
`
`(“This practice of citing the Declaration to support conclusory statements that are
`
`not otherwise supported in the Petition also amounts to incorporation by
`
`reference.”).
`
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`6
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`A petitioner may not rely on the Board to substitute its own reasoning to
`
`remedy the deficiencies in a petition. SAS, 138 S. Ct. at 1355 (“Congress chose to
`
`structure a process in which it's the petitioner, not the Director, who gets to define
`
`the contours of the proceeding.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`
`1381 (Fed. Cir. 2016) (rejecting the Board’s reliance on obviousness arguments that
`
`“could have been included” in the petition but were not, and holding that the Board
`
`may not “raise, address, and decide unpatentability theories never presented by the
`
`petitioner and not supported by the record evidence”); Ariosa Diagnostics v.
`
`Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (holding that “a
`
`challenge can fail even if different evidence and arguments might have led to
`
`success”); Wasica Finance GMBH v. Continental Auto. Systems, 853 F.3d 1272,
`
`1286 (Fed. Cir. 2017) (holding that new arguments in a reply brief are “foreclosed
`
`by statute, our precedent, and Board guidelines”).
`
`IV. Each Deficiency Identified in this Response Applies to All Challenged
`Claims, Thus Any One is an Independent Basis to Deny Institution
`
`The Petition argues only claim 91 in detail. The Petition’s explanation for each
`
`claim refers back to, and incorporates by reference, the discussion of all of [91.0]
`
`through [91.4]. For example, in its discussion of claim 92, the Petition recites
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`elements [92.0] through [92.4] and states, “These limitations are the identical to the
`
`corresponding limitations in claim 91 and are obvious for the reasons provided above
`
`in [91.0]–[91.4].” Pet. at 51. The Petition provides the same recital for each other
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`
`
`7
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`claim. See id. at 52 (claim 93), 53 (claim 94), 55 (claim 95), 57 (claim 96), 59 (claim
`
`97), 60 (claim 98), 63 (claim 99; incorporating by reference claim 98)1, 64 (claim
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`108), 68 (claim 109), 70 (claim 110), 73 (claim 111), and 73-78 (claims 112-120 and
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`122-125, depending on claim 111).
`
`Each of the deficiencies identified below applies to one or more of limitations
`
`[91.1] through [91.4], and thereby equally applies to all challenged claims.
`
`Therefore, each of these deficiencies is a sufficient basis to deny institution of the
`
`Petition. SAS, 138 S. Ct. at 1361.
`
`V. The Petition Fails to Show that the Prior Art Teaches the “Redirection
`Server” of the ’459 Patent
`A. The ’459 Patent Teaches that “Redirecting” a User Means
`Modifying the User’s Request for a Network Location to Request
`a Different Network Location
`
`“Redirection” of a user accessing the Internet is central to the patented
`
`invention. As the Board recognized during reexamination of the originally issued
`
`’118 patent, “redirection” is the redirection server’s “essential function for purposes
`
`of the claim.” Ex. 1009 at 355 (emphasis added).
`
`The ’459 patent teaches that blocking, allowing, and redirection can be three
`
`distinct ways by which a system may handle a user’s request for a particular Internet
`
`
`1 The Petition proposes a claim construction for the term “one or more of the user
`side… and the network side… ” in Claims 99 and 120. See Pet. at 15. Because
`these are dependent claims, and the base claims are challenged on the same
`ground, this construction is not “necessary to resolve the controversy.” Vivid
`Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`
`
`8
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`

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`location or service. See, e.g., Ex. 1001 at 3:29-34 (“The redirection server uses the
`
`filter and redirection information supplied by the authentication accounting server,
`
`for that particular IP address, to either allow packets to pass through the redirection
`
`server unmolested, block the request all together, or modify the request according to
`
`the redirection information.”); 8:12-14.
`
`The ’459 patent teaches that, in particular embodiments, a system may allow
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`or block a user from accessing a particular Internet service, e.g., one of WWW, FTP,
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`or Telnet, as a whole. Id. at 5:26-30.
`
`The ’459 patent further teaches that a redirection server can allow a user
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`limited access to an Internet service, but modify the user’s request for a particular
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`Internet location. The ’459 patent’s redirection server thereby redirects the user to a
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`different Internet location. For example, in an embodiment, a user’s access may be
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`“locked.” Id. at 5:36-38. Then, “[e]ach time a locked user attempts to access another
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`location, the redirection server 280 redirects the user to a default location.” Id. at
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`5:38-40. In another embodiment, “the user will first be redirected to a location
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`regardless of what location the user attempts to reach, then permitted to access other
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`locations, but every ten minutes the user is automatically redirected to the first
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`location.” Id. at 5:47-51. The following diagram, annotating Fig. 2 of the ’459 patent,
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`shows an example of redirecting, as compared to allowing or blocking, a user’s
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`Internet access as taught by the ’459 patent.
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`9
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`
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`The figure at the top shows an example in which a user requests access to any
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`location, e.g., “www.xyz.com,” but the redirection server modifies the request to
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`redirect the user to a default location, “www.widgetsell.com.” After the user is
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`authenticated, the redirection server may modify the rule to then allow the user to
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`proceed to requested location. The diagram at the middle shows the redirection
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`server allowing the user to access to “www.us.com” without redirection. The bottom
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`diagram shows a user that is blocked from access to an FTP site without modifying
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`the user’s request. See, e.g. 7:10-57 (“If the rule set for a particular user (i.e., user
`
`
`
`10
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`

`

`UserID-3) was to force the user to visit the web site www.widgetsell.com, first, then
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`to have unfettered access to other web sites . . . In this situation, if IP address 10.0.0.1
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`(the address assigned to user ID UserID-3) attempts to send a packet containing
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`HTTP data (i.e., attempts to connect to port 80 on any machine) the traffic is
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`redirected by the redirection server 208 to www.widgetsell.com. Once this is done,
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`the redirection server 208 will remove the rule set and the user if free to use the web
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`unmolested.”); see also id. at 6:20-7:5.
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`B. Claim Construction of “Redirection Server”
`
`Petitioner proposes to construe “redirection server” to include a “server
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`operable to control network access by applying the following actions: block, allow,
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`and redirect.” Id. Petitioner’s proposal is 1) unsupported by evidence, and 2) it does
`
`not help resolve issues at this stage of the proceedings.
`
`First, Petitioner’s unsupported importation of limitations into the term
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`“redirection server” should be rejected. The Petition fails to demonstrate that the
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`“redirection server” must apply all three actions: block, allow, and redirect. As an
`
`initial matter, the ’459 patent claims do not require all three actions. Petitioner does
`
`not contend otherwise. Petitioner relies on the previous Board’s decision for support,
`
`asserting that it “noted” that “blocking and allowing are ‘further’ functions of the
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`redirection server.” Pet. at 15 (quoting Ex. 1009 at 355). But Petitioner
`
`mischaracterizes this statement. The Board was in fact referring to the language of
`
`the original dependent claims in the ’118 patent. The ’118 patent’s dependent claims
`
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`11
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`expressly claimed allowing and blocking as “further” functions of a redirection
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`server. See, e.g., Ex. 1001 at 9:1-3 (cancelled claim 3 stating “wherein the redirection
`
`server further blocks the data to and from the user’s computers”) (emphasis added).
`
`The Board never held that the redirection server must include blocking and allowing
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`functions. Rather, the Board made clear that the redirection server must include at
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`least a “redirection” function, even under a broad construction. Ex. 1009 at 354-55
`
`(“The broadest reasonable construction of ‘redirection server’ requires some sort of
`
`redirection functionality.”).
`
`The Petition’s reference to the ’459 patent’s specification is also unavailing.
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`The Petition points to an exemplary embodiment, in which the redirection server “is
`
`programmed to implement the rule set for the IP address, as well as other attendant
`
`logical decisions such as: checking data packets and blocking or allowing the packets
`
`as a function of the rule sets, performing the physical redirection of data packets
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`based on rule sets. . . .” Ex. 1001 at 5:5-12 (quoted by Pet. at 15). There is no
`
`evidence that the description of this embodiment should, alone, limit the definition
`
`of “redirection server.” The patent explicitly uses exemplary language to describe
`
`the embodiment, e.g., phrases like “such as” and “blocking or allowing.” Similarly,
`
`the Petition quotes from the patent stating that a redirection server “may be
`
`implemented to control (block, allow, and redirect) any type of service.” Pet. at 15
`
`
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`12
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`(quoting Ex. 1001 at 8:24-26) (emphasis added).2 Beyond its quotations from
`
`exemplary embodiments, the Petition provides no intrinsic evidence (nor other
`
`evidence) to support importing limitations to the claim. Petitioner therefore fails to
`
`support its proposal to import limitations and require that the ’459 patent’s
`
`“redirection server” both allow and block, in addition to redirecting.
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`Second, the construction of the “redirection server” term in full is unnecessary
`
`at this stage of the proceedings. The Federal Circuit has held that “only those terms
`
`need be construed that are in controversy, and only to the extent necessary to resolve
`
`the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999). This principle applies equally to IPR proceedings. See, e.g., Apple
`
`Inc. v. Uniloc Luxembourg S.A., IPR2018-00420, Paper 7 at 8 (PTAB, Aug. 6, 2018).
`
`Petitioner does not dispute that “redirection” is a necessary element of the
`
`claims. In order to establish the obviousness of any claim, the Petition must
`
`demonstrate that Malkin teaches a “redirection server” that can redirect the user, As
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`explained further below, the Petition fails to do so. The Board therefore does not
`
`need to determine whether the Petition’s ground sufficiently teaches blocking or
`
`allowing. Accordingly, the Board need not address the question of whether a
`
`
`2 The Petition also cites the expert declaration, Ex. 1003 at ¶44-45. However, these
`paragraphs in the declaration merely repeat what is in the Petition and reproduce
`the cited passages from the specification in full.
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`13
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`“redirection server” must also block and allow. Petitioner has, in any event, failed to
`
`present a record that would justify imposing such a construction at this point.
`
`To the extent that the Board decides to construe the term “redirection server,”
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`it should only be to evaluate whether Malkin teaches “redirection” as required by
`
`the ’459 patent. In the prior reexam appeal on this issue, the Board noted that the
`
`claims could still be amended. The Board thus applied a broadest reasonable
`
`interpretation. Ex. 1009 at 354. However, even applying that standard, the Board
`
`distinguished the “redirection” invention from prior art that used a credential server
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`to determine whether a user was authorized (and thus allowed) or unauthorized (and
`
`thus blocked). Id. at 354-55. The Patent Owner, Linksmart, also stated that the prior
`
`art failed to teach a “redirection server” because the credential server did not
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`“redirect a request for one Internet site to a different Internet site.” Id. at 354.
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`In this case, the ’459 patent would expire during trial, if instituted. As
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`Petitioner acknowledges, the claims should now be construed following the
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`principles set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Pet.
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`at 14 (citing 37 C.F.R. §42.108(c)). See Phillips, 415 F.3d at 1314-15 (claims should
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`be construed according to the “ordinary meaning of claim language as understood
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`by a person of skill in the art,” informed by the specification).
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`Consistent with Linksmart’s prior statement to the Board, the ’459 patent
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`uniformly describes “redirection” as modifying a user’s request for an Internet
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`network location to request a different Internet network location. For example, as
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`14
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`explained above, the ’459 patent teaches how the redirection server can be applied
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`to allow a user limited access a requested Internet service. In that case, the
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`redirection server modifies the user’s requests for Internet locations and redirects the
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`requests to other Internet locations. Ex. 1001 at 5:36-51. The ’459 patent states what
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`it means to redirect the user, as distinct from allowing or blocking the user’s access,
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`more generally in the Summary of the Invention:
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`The redirection server uses the filter and redirection information
`supplied by the authentication accounting server, for that particular IP
`address, to either allow packets to pass through the redirection server
`unmolested, block the request all together, or modify the request
`according to the redirection information.
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`Id. at 3:29-34 (emphasis added). The ’459 patent further teaches that “the logic
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`employed by the redirection server to implement the rule set” changes the request
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`for one website to a request for a different website. Id. at 6:53-7:5, 7:38-55. The ’459
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`patent does not disclose or describe any other form of “redirection.”
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`The foregoing description of the ’459 patent’s claimed invention is consistent
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`with the ordinary meaning of the term “redirection”: modifying a user’s request for
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`one Internet location to request another, thus “redirecting” the user’s request.
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`Accordingly, the Board may thus simply use this plain and ordinary meaning, which
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`is consistent with the ’459 patent’s specification, to evaluate the Petition. To the
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`extent, however, that the Board needs to expressly construe the term “redirection
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`server” in the ’459 patent, the “redirection server” must have the functionality of
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`15
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`redirecting the user by modifying the user’s request for a network location or
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`service to request a different network location or service. See Renishaw PLC v.
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`Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (“The
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`construction that stays true to the claim language and most naturally aligns with the
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`patent's description of the invention will be, in the end, the correct construction.”).
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`C. Malkin Does Not Teach Redirecting the User as Required by the
`’459 Patent’s “Redirection Server,” Instead Malkin Only Teaches
`Blocking a User from an Internet Service
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`The Petition relies on Malkin to teach the “redirection server” element of the
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`claims. See Pet. at 31. While Malkin uses the word “redirection,” the Petition must
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`demonstrate that Malkin’s reference to “redirection” in fact teaches redirection as
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`taught and claimed in the ’459 patent. The Petition fails to do so.
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`The Petition’s summary of Malkin confirms that Malkin is directed only to
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`blocking a user’s Internet access. See Pet. at 20 (“Like Abraham, Malkin uses
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`‘filtering’ to deny access to a user ‘attempting to exceed their allowed service
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`level.”) (quoting Ex. 1006 at 1:22-25) (emphasis added). As Petitioner
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`acknowledges, Malkin discloses a system that delivers a “more informative message
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`explaining why they are unable to receive their requested Internet service.” Ex. 1006
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`at 2:12-15 (cited by Pet. at 21).
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`Malkin may use the word “redirection,” but it does not disclose redirecting a
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`user to another location in the user’s requested Internet service. Petitioner instead
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`asserts that Malkin teaches “redirection” only because Malkin discloses that the
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`16
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`network access server (NAS) in the ISP network “may redirect the subscriber's
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`request (in the form of a packet) to a Redirection Server 14 included the ISP network
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`16.” Ex. 1006 at 2:25-27 (quoted by Pet. at 21-22); Pet. at 23 (citing Ex. 1006 at
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`2:25-30). The Petition calls this “Malkin’s packet redirection technique” and argues
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`that it can be combined with Abraham’s network server. See Pet. at 31-32.
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`But the Petition fails to show that Malkin’s disclosure of a “packet redirection
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`technique” teaches the ’459 patent’s claimed “redirection server.” As an initial
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`matter, Petitioner concedes, as it must, that Malkin’s “redirection server 14” does
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`not function at all like the ’459 patent’s redirection server. Pet. 22, n. 14. This
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`exemplifies how Malkin uses the word “redirection” differently from the ’459
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`patent. In contrast to the ’459 patent, Malkin does not teach redirecting a user, nor
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`redirecting the user’s data packets to any locations on the Internet. In Malkin, data
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`packets sent to the “Redirection Server 14” are returned to the user. See 4:56-59 (“In
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`step 216, the reply packet is sent from the Redirection Server to the NAS, which
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`forwards the reply packet to the subscriber's node.”). The user’s data packet never
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`leaves the ISP network to go to the Internet, let alone any other Internet location or
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`service. See Ex. 1006 at Fig. 1 (shown in Pet. at 21) (showing that the “NAS” and
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`“Redirection Server 14” are within “ISP network 16