Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 58
`Date: May 11, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`MPH TECHNOLOGIES OY,
`Patent Owner.
`
`
`
`IPR2019-00819
`Patent 7,620,810 B2
`__________________________
`
`
`
`
`
`
`
`
`Before KEVIN C. TROCK, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Challenged Claims 4–6 Not Shown Unpatentable
`35 U.S.C. §§ 144, 318(a)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 58
`Date: May 11, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`MPH TECHNOLOGIES OY,
`Patent Owner.
`
`
`
`IPR2019-00819
`Patent 7,620,810 B2
`__________________________
`
`
`
`
`
`
`
`
`Before KEVIN C. TROCK, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Challenged Claims 4–6 Not Shown Unpatentable
`35 U.S.C. §§ 144, 318(a)
`
`
`
`
`
`
`
`IPR2019-00819
`Patent 7,620,810 B2
`
`INTRODUCTION
`I.
`This case returns on remand from the United States Court of Appeals
`
`for the Federal Circuit in Apple Inc. v. MPH Techs. OY, Nos. 2021-1355,
`2021-1356, 2022 WL 4103286 (Fed. Cir. Sept. 8, 2022).1 In our prior Final
`Written Decision in this proceeding, we determined that by a preponderance
`of the evidence Apple Inc. (“Petitioner”) (i) did not prove that claims 1–6 of
`U.S. Patent No. 7,620,810 B2 (Ex. 1001, “the ’810 patent”) are
`unpatentable, and (ii) proved that claim 7 of the ’810 patent is unpatentable.
`Paper 37 (“FWD”), 54–55. On Petitioner’s appeal, the Federal Circuit held
`that we erred in our construction for “encrypted” messages, and as a result,
`vacated our judgment of no unpatentability for claims 1–6 and remanded to
`the Board for further proceedings. Apple, 2022 WL 4103286, at *6, 8.
`
`After the Federal Circuit’s decision, and before the mandate issued,
`Patent Owner filed a statutory disclaimer under 37 C.F.R. § 1.321, which
`states that Patent Owner “hereby disclaims and dedicates to the public the
`entirety of claims 1–3 of the ’810 Patent.” Ex. 3003, 1; Paper 50.
`Accordingly, claims 1–3 are no longer part of this proceeding. And for the
`reasons that follow, we determine that Petitioner does not show by a
`preponderance of the evidence that claims 4–6 are unpatentable.
`
`
`1 The Federal Circuit issued a joint decision, addressing Petitioner’s appeal
`from this proceeding, as well as Petitioner’s appeal from Apple Inc. v. MPH
`Techs. Oy, IPR2019-00820 (“the -820 case”). Apple, 2022 WL 4103286, at
`*1. On remand, we issue separate decisions for these cases for purposes of
`clarity.
`
`2
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`Patent 7,620,810 B2
`A. Procedural History
`Petitioner filed a Petition requesting inter partes review of claims 1–7
`of the ’810 patent. Paper 2 (“Pet.”). MPH Technologies Oy (“Patent
`Owner”) filed a Preliminary Response. Paper 8.
`We instituted inter partes review of claims 1–7 of the ’810 patent on
`all of the grounds raised in the Petition. Paper 10 (“Dec. on Inst.”), 7, 40.
`As to the Decision on Institution in this proceeding, Patent Owner filed a
`Request for Rehearing, and requested review by the Precedential Opinion
`Panel (“POP”). Paper 13; Ex. 3001. Patent Owner’s request for POP review
`was denied (Paper 16), and we denied Patent Owner’s Request for
`Rehearing (Paper 24).
`Thereafter, Patent Owner filed a Response to the Petition. Paper 23
`(“PO Resp.”). Petitioner filed a Reply to Patent Owner’s Response. Paper
`26 (“Pet. Reply”). Patent Owner filed a Sur-reply to Petitioner’s Reply.
`Paper 29 (“PO Sur-reply”). An oral hearing was held on June 25, 2020. A
`transcript of the oral hearing is included in the record. Paper 36 (“Tr.”).
`
`After the remand, we authorized a simultaneous exchange of
`additional briefing for the parties to address the legal effect of the statutory
`disclaimer. Paper 52, 6. Pursuant to that authorization, Petitioner filed an
`Opening Brief Post-Remand (Paper 54, “Pet. Rem. Open.”), Patent Owner
`filed an Opening Brief (Paper 55, “PO Rem. Open.”), Petitioner filed a
`Response Brief Post-Remand (Paper 57, “Pet. Rem. Resp.”), and Patent
`Owner filed a Response Brief (Paper 56, “PO Rem. Resp.”).
`B. Related Matters
`The parties identify as related matters the following: (i) MPH Techs.
`Oy v. Apple Inc., No. 5:18-cv-05935-PJH (N.D. Cal.); (ii) Apple Inc. v. MPH
`
`3
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`IPR2019-00819
`Patent 7,620,810 B2
`Techs. Oy, IPR2019-00820 (PTAB) (involving related U.S. Patent No.
`7,937,581 B2); (iii) Apple Inc. v. MPH Techs. Oy, Appeal No. 21-1355 (Fed.
`Cir.); (iv) MPH Techs. Oy v. Apple Inc., Appeal No. 21-1390 (Fed. Cir.);
`(v) Ex Parte Reexamination No. 90/015,174, filed Dec. 14, 2022; and
`(vi) Ex Parte Reexamination No. 90/015,175, filed Dec. 14, 2022. Paper 49,
`1–2; Paper 53, 1.
`C. The Challenged Patent
`The ’810 patent relates to “secur[ing] mobile connections in
`telecommunication networks.” Ex. 1001, 1:13–14. In particular, the ’810
`patent describes reducing the handover latency and computational overhead
`for secure connections, such as those employing Internet Protocol (“IP”)
`Security (“IPSec”) with mobile terminals2 (i.e., terminals that can move
`from one network to another). Id. at 1:13–15, 1:57–64, 4:10–31, 6:48–50,
`7:28–42, 10:34–42.
`IPSec comprises a set of rules defined by the Internet Engineering
`Task Force (“IETF”) to “provide[] the capability to secure communications
`between arbitrary hosts,” according to the ’810 patent. Id. at 1:57–64, 2:3,
`2:6–10. The ’810 patent states that these rules describe, inter alia, providing
`“access control based on the distribution of cryptographic keys.” Id. at
`2:11–20. The ’810 patent also describes the concept of a Security
`Association (“SA”), which according to the ’810 patent is “a one-way
`relationship between a sender and a receiver that offers [negotiated] security
`services to the traffic carried on it.” Id. at 2:21–24.
`
`
`2 The ’810 patent discloses that “the term[s] mobility and mobile terminal
`do[] not only mean physical mobility, . . . [but also] mean[] moving from
`one network to another, which can be performed by a physically fixed
`terminal as well.” Ex. 1001, 4:27–31.
`
`4
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`IPR2019-00819
`Patent 7,620,810 B2
`The ’810 patent discloses that IPSec supports two modes of operation
`(i.e., transport mode and tunnel mode). Id. at 3:8–9. “Typically, transport
`mode is used for end-to-end communication between two hosts.” Id. at
`3:10–13. “Tunnel mode . . . is generally used for sending messages through
`more than two components,” such as “when one or both ends of a SA is a
`security gateway, such as a firewall or a router that implements IPSec.” Id.
`at 3:16–21.
`“IPSec is intended to work with static network topolog[ies],”
`according to the ’810 patent. Id. at 4:10–11. For example, IPSec can secure
`communications between hosts across a local area network (“LAN”), as well
`as across a private or public wide area network (“WAN”). Id. at 1:57–59.
`Figure 1, shown below, “illustrates an example of a telecommunication
`network to be used in the invention” of the ’810 patent. Id. at 8:40–41.
`
`
`
`
`Figure 1 depicts an example telecommunication network comprising
`
`“computer 1 . . . and computer 2[,] a destination computer, to which the
`secure messages are sent . . . by means of an IPSec tunnel established
`between computer 1 and computer 2.” Id. at 8:54–58. The ’810 patent adds:
`“Computer 2 [can] be a security gateway for a third computer 3. Then, the
`
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`Patent 7,620,810 B2
`messages sent from computer 2 to computer 3 are sent in plaintext.” Id. at
`8:53–60.
`
`The ’810 patent discloses that in forming an IPSec tunnel under
`IPSec’s default automated key management protocol (i.e., the Internet Key
`Exchange (“IKE”) protocol), “the tunnel endpoints are fixed and remain
`constant.” Id. at 3:66–4:4, 4:12–17. The ’810 patent adds: “If IPSec is used
`with a mobile host the IKE key exchange will have to be redone from every
`new[ly] visited network. This is problematic, because IKE key exchanges
`involve computationally expensive” calculations and require exchanging
`numerous messages between the endpoints, leading to higher latency. Id. at
`4:15–26.
`
`To address these problems, the ’810 patent discloses avoiding a full
`re-negotiation between the tunnel endpoints, when computer 1 moves
`networks. E.g., id. at 9:33–44 (describing prior art requires a full
`re-negotiation), 9:63–66. More specifically, the ’810 patent discloses
`initially establishing an IPSec tunnel between computer 1 (address A) and
`computer 2 (address X) using IKE, as in the prior art. Id. at 9:48–62, Fig. 5
`(illustrating steps 1a–9a for setting up the tunnel); compare id. at Fig. 5, with
`id. at Fig. 4 (showing the same nine steps as the prior art solution); see also
`id. at 9:12–39 (describing the prior art IKE establishment of the tunnel).
`
`The ’810 patent discloses that, when computer 1 moves from address
`A to address B, computer 1 sends from its new address (address B) to
`computer 2 (address X) at the other end of the established IPSec tunnel, a
`request for computer 2 to register its new address. Id. at 9:63–10:2.
`According to the ’810 patent, this request can be “encrypt[ed] and/or
`
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`Patent 7,620,810 B2
`authenticat[ed] . . . us[ing] the same IPSec SA [that is used] for protecting
`both data and registration traffic.” Id. at 10:4–8.
`
`The ’810 patent thus discloses that the tunnel’s IPSec SA is carried
`over to the new connection point, and computer 1 can send IPSec-protected
`messages to computer 2 after sending the request, which “essentially makes
`the handover latency zero.” Id. at 10:11–19, 10:34–37. “[T]he exact
`method of signalling is not important[;] the essence is to carry over the
`IPSec SA to the new connection point.” Id. at 10:11–13.
`D. The Challenged Claims
`Petitioner challenged claims 1–7 of the ’810 patent in the Petition.
`Pet. 4. Of these, claims 1–6 are the subject of the remand. Apple, 2022 WL
`4103286, at *8. In light of Patent Owner’s statutory disclaimer (Ex. 3003,
`1), however, only claims 4–6 remain for our consideration. Each of claims
`4–6 depend directly from claim 3, which is the focus of our analysis below.
`We thus reproduce claim 3 below, as well as claim 1 from which it depends
`for context.
`1. A method for ensuring secure forwarding of a message in a
`telecommunication network, having at least one mobile terminal
`and another terminal and a security gateway therebetween, the
`method comprising:
`
`a) establishing a secure connection between a first address
`of the mobile terminal and an address of the security gateway,
`the secure connection defined by at least the addresses of the
`mobile terminal and the security gateway,
`
`b) the mobile terminal changing from the first address to a
`second address,
`
`c) while at the second address, the mobile terminal sending
`a request message to the address of the security gateway to
`request the security gateway to change the secure connection to
`be defined between the second address and the address of the
`security gateway,
`
`7
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`IPR2019-00819
`Patent 7,620,810 B2
`
`in response to the request message from the mobile
`terminal, the security gateway changing an address definition of
`the secure connection from the first address to the second
`address, the mobile terminal sending a secure message in the
`secure connection from the second address of the mobile
`terminal to the other terminal via the security gateway,
`
`the secure connection being established by forming a
`Security Association (SA) using IPSec protocols, and the request
`message and/or a reply message being encrypted and/or
`authenticated by using the same SA already established.
`Ex. 1001, 10:48–11:8.
`3. The method of claim 1 wherein the method further comprises
`the security gateway sending back a reply message to the mobile
`terminal at the second address to confirm the address change.
`Id. at 11:12–15.
`E. Instituted Grounds of Unpatentability
`We instituted trial based on the following grounds of unpatentability,
`
`which are all the grounds of unpatentability raised in the Petition:
`
`References
`Basis3 Challenged Claim(s)
`1.
`Ishiyama,4 Murakawa5
`§ 103(a) 1, 4, 5, 7
`2.
`Ishiyama, Murakawa,
`§ 103(a) 2, 3
`Ahonen6
`Ishiyama, Murakawa,
`Forslöw7
`
`§ 103(a) 6
`
`3.
`
`
`3 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’810
`patent issued from an application filed before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`4 US Patent No. 6,904,466 B1 (issued June 7, 2005) (Ex. 1004).
`5 US Patent No. 7,028,337 B2 (issued Apr. 11, 2006) (Ex. 1005).
`6 US Patent No. 6,976,177 B2 (issued Dec. 13, 2005) (Ex. 1006).
`7 US Patent No. 6,954,790 B2 (issued Oct. 11, 2005) (Ex. 1007).
`
`8
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`IPR2019-00819
`Patent 7,620,810 B2
`Pet. 4, 12–69. Petitioner submits in support of its arguments the Declaration
`of David Goldschlag, Ph.D. (Ex. 1002) and an additional Declaration of
`David Goldschlag, Ph.D. (Ex. 1020). Patent Owner submits in support of its
`arguments the Declaration of Professor George N. Rouskas, Ph.D.
`(Ex. 2003).
`F. Prior Final Written Decision
`In our prior Final Written Decision, we disagreed with Petitioner that
`
`Ishiyama taught a “request message . . . being encrypted,” as recited in
`independent claim 1. FWD 16–23; Ex. 1001, 11:6. In particular, we found
`that, as Petitioner admitted, “in Ishiyama the request message’s outer
`packet’s source address is unencrypted,” and “Ishiyama only teaches that the
`encapsulated packet (payload) is encrypted.” FWD 20 (citing Ex. 1004,
`7:56–60; Tr. 27:9–16). We also found that “the outer packet’s source
`address is a part of the request message in Ishiyama.” Id. (citing Ex. 1004,
`Fig. 4, 8:59–65). Thus, we found that these teachings were contrary to “the
`request message . . . being encrypted” because “the plain words of the claim
`state that the message is encrypted—not that a portion of the message is
`encrypted.” Id. In other words, we found that “claim 1 requires that the
`request message (not just a portion thereof) is encrypted, and Petitioner
`fail[ed] to show that Ishiyama’s request message (which includes the
`unencrypted outer packet’s source address) meets this requirement.” Id. at
`21 (citations omitted).
`
`Accordingly, we found that Petitioner did not demonstrate by a
`preponderance of the evidence that claim 1 would have been obvious in
`view of Ishiyama and Murakawa, which is the sole ground challenging claim
`1. FWD 8, 23. Furthermore, we found that the Petition does not present any
`
`9
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`IPR2019-00819
`Patent 7,620,810 B2
`information with respect to claims 2–6—which depend directly or indirectly
`from claim 1—that addresses this deficiency in Ishiyama. Id. at 23, 53–54.
`Thus, we found that Petitioner did not demonstrate by a preponderance of
`the evidence that claims 2–6 would have been obvious in view of the
`asserted unpatentability grounds. Id.
`G. The Federal Circuit’s Decision
`The Federal Circuit held that we construed an encrypted request
`
`message, and erred in doing so. Apple, 2022 WL 4103286, at *4–6. In
`particular, the Federal Circuit held that we “performed a claim construction”
`when we stated that “the plain words of the claim state that the message is
`encrypted—not that a portion of the message is encrypted,” and that “claim
`1 requires that the request message (not just a portion thereof) is encrypted.”
`Id. at *4 (citing FWD 20–21). The Federal Circuit stated that “[i]n doing so,
`the Board ‘establish[ed] the scope and boundaries of the subject matter that
`is patented.’” Id. (citations omitted).
`
`The Federal Circuit, inter alia, addressed the specification of the ’810
`patent and stated that “the specification[] contemplate[s] that ‘encrypted’
`messages can be sent using outer packets with certain unencrypted
`addressing information, contrary to the Board’s construction.” Id. at *6; see
`also id. at *5 (addressing the specification) (citations omitted). The Federal
`Circuit thus held “that the Board adopted an erroneous claim construction of
`‘request message and/or a reply message being encrypted’ within claim 1 of
`the ’810 patent . . . that excludes ‘encrypted’ messages because those
`messages are sent using packets with certain unencrypted addressing
`information.” Id. at *6. The Federal Circuit stated that the ’810 patent
`“contemplate[s] that a message can still be considered ‘encrypted’ if its
`
`10
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`IPR2019-00819
`Patent 7,620,810 B2
`packet has unencrypted ‘outer IP header’ information.” Id. The Federal
`Circuit vacated the portions of our prior Final Written Decision “that rel[ied]
`on that erroneous claim construction and remand[ed] for further
`proceedings.” Id.
`
`In addition, the Federal Circuit noted Patent Owner’s arguments that
`the Federal Circuit could have “nevertheless affirm[ed] the Board’s
`determination as to claims 4–6 of the ’810 patent because [Petitioner] relied
`on Ahonen to meet the intervening limitations in claim 3 and did not include
`Ahonen in its grounds challenging those claims.” Id. at *6 n.4 (citation
`omitted). The Federal Circuit responded to these arguments by stating the
`following:
`The Board did not reach this issue because it found [Petitioner]
`did not demonstrate claim 1 to be unpatentable. [FWD 23, 54].
`Because we vacate the portions of the Board’s decision[] based
`on its construction of an “encrypted” request or reply message in
`claim 1, the Board should decide whether to consider this issue
`on remand.
`
`Id.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`II.
`To determine whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1,
`17 (1966). In assessing the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`11
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`(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
`962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.
`In our Decision on Institution, we adopted Petitioner’s proposed
`definition for one having ordinary skill in the art at the time of the invention
`of the ’810 patent as one who “would have had a B.S. degree in Computer
`Engineering, Electrical Engineering, or an equivalent field, as well as at least
`3–5 years of academic or industry experience in the Internet security
`industry.” Pet. 12 (citing Ex. 1002 ¶¶ 20–21). We maintained this
`definition in our prior Final Written Decision. FWD 9. Patent Owner did
`not dispute our adoption of Petitioner’s definition, nor otherwise address the
`level of ordinary skill at the time of the invention of the ’810 patent. See
`generally PO Resp.
`Petitioner’s definition of the level of skill in the art is consistent with
`the ’810 patent and the asserted prior art, and we maintain Petitioner’s
`definition for purposes of this Final Written Decision. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s definition
`in our analysis below.
`III. CLAIM CONSTRUCTION
`Because the Petition was filed after November 13, 2018, we construe
`the challenged claims by applying “the standard used in federal courts, in
`other words, the claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. [§] 282(b), which is articulated in
`Phillips [v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)].” See
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
`
`12
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`51,340, 51,358, 51,343–44 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)
`effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b)
`(2019)). Under Phillips, the words of a claim are generally given their
`“ordinary and customary meaning,” which is the meaning they would have
`had to a person of ordinary skill in the art at the time of the invention, in
`light of the specification and prosecution history. See Phillips, 415 F.3d at
`1312–13.
`Petitioner does not submit any terms for construction. Pet. 12
`(arguing that “[a]ll claim terms of the ’810 patent should receive their
`ordinary and customary meaning”). Patent Owner submits the term
`“security gateway” for construction, and argues that its meaning is in
`dispute. PO Resp. 11–24. Our below analysis of Petitioner’s unpatentability
`arguments for claims 4–6, however, does not implicate this claim term. See
`supra Section V.C. Thus, we do not provide an express construction for
`“security gateway.” See, e.g., Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))
`(“[W]e need only construe terms ‘that are in controversy, and only to the
`extent necessary to resolve the controversy.’”).
`In addition, we note that the Federal Circuit corrected our construction
`of “the request message and/or a reply message being encrypted,” as recited
`in claim 1 of the ’810 patent. Apple, 2022 WL 4103286, at *4–6; see supra
`Section I.G. This limitation, however, is not implicated in our analysis of
`the parties’ arguments concerning unpatentability of claims 4–6—the claims
`on remand that remain after Patent Owner’s statutory disclaimer.
`
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`
`IV. PRINCIPLES OF LAW
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations, including (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of non-obviousness, if present.8 See Graham, 383 U.S. at 17–18. When
`evaluating a claim for obviousness, we also must “determine whether there
`was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)).
`V. CHALLENGED CLAIMS 4–6
`Petitioner argues that the combination of Ishiyama and Murakawa
`renders claims 4 and 5 obvious. Pet. 54–59; Pet. Reply 22–25. In addition,
`Petitioner argues that the combination of Ishiyama, Murakawa, and Forslöw
`renders claim 6 obvious. Pet. 66–69; Pet. Reply 22–25. Patent Owner
`disputes that these combinations render these claims obvious, respectively.
`PO Resp. 63–64, 73; PO Sur-reply 24–25.
`For the reasons that we discuss below, we determine that Petitioner
`does not show by a preponderance of the evidence that claims 4–6 would
`have been obvious. We first provide a summary of Ishiyama and
`
`
`8 Patent Owner does not present arguments or evidence of such objective
`evidence of non-obviousness in its Response. See generally PO Resp.
`
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`Murakawa, as their teachings are referenced in our analysis below, followed
`by our analysis.
`A. Summary of Ishiyama
`Ishiyama relates to improving a mobile computer’s “capab[ility] of
`
`carrying out communications while moving among a plurality of inter-
`connected networks.” Ex. 1004, 1:9–11. In furtherance of this mobility,
`Ishiyama discloses having the mobile computer notify its correspondent host
`(i.e., the host at the other end of a communication) of its new address when
`the mobile computer moves networks. E.g., id. at 3:43–67, 6:13–18,
`15:37–16:10. The mobile computer makes this notification by changing the
`source address of an outer packet of an encapsulated packet to the mobile
`computer’s new address before sending the packet to the correspondent host.
`Id. When the correspondent host receives the packet from the mobile
`computer, the correspondent host detects the address change and updates its
`stored information to reflect the new address for the mobile computer. E.g.,
`id. at 3:9–14.
`Figure 4, shown below, is a schematic diagram illustrating a mobile
`computer changing locations in an exemplary configuration of a mobile
`communication system, in accordance with an embodiment of Ishiyama’s
`invention. Id. at 5:5–7, 5:11–13.
`
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`
`
`Figure 4 “shows an exemplary situation in which a packet is
`
`transferred from mobile computer 2 to . . . correspondent host 3 using [an]
`IPSEC tunnel.” Id. at 8:33–35. Initially, mobile computer 2 communicates
`with correspondent host 3 via an IPSec tunnel, with mobile computer 2’s
`address (CoA1) indicating its endpoint of the tunnel. Id. at 8:43–49. In
`other words, “mobile computer 2 transmits an encapsulated packet in which
`the outer packet has the source address=‘CoA1’ and the destination
`address=‘CN.’” Id. at 8:50–54. As shown, when mobile computer 2 moves,
`its address changes from CoA1 to CoA2. Id. at 8:55–58, Fig. 4 (showing
`that mobile computer 2 moves networks). To convey this change, mobile
`computer 2 changes the source address of the outer packet to CoA2 and
`transmits the packet to correspondent host 3 via the IPSec tunnel. Id. at
`8:59–63, Fig. 4. Correspondent host 3 detects this change in mobile
`computer 2’s address, and replaces the CoA1 address with CoA2 in its
`database for the IPSec tunnel. Id. at 8:66–9:4; see also id. at Figs. 9B, 9D
`(showing the update of the address in correspondent host 3’s SA database),
`
`16
`
`
`
`IPR2019-00819
`Patent 7,620,810 B2
`12:51–59. Ishiyama discloses that the other SA information “remain[s]
`unchanged, so that there is no need to re-negotiate keys for IPS[ec]
`encryption and authentication.” Id. at 9:5–10.
`B. Summary of Murakawa
`Murakawa relates to allowing a PC outside a LAN to be virtually
`
`regarded as a PC on the LAN and communicate with a terminal on the LAN.
`Ex. 1005, 1:16–24, 3:62–65. Specifically, Murakawa discloses allowing an
`outside terminal to communicate (via a WAN, a security gateway, and a
`LAN) with a terminal on the LAN. Id. at 1:11–24, 3:61–4:16.
`
`Petitioner’s annotated version of Murakawa’s Figure 5, which
`illustrates a “prior art typical network system,” id. at 4:32–33, is shown
`below.
`
`
`Murakawa’s Figure 5 above shows a “prior art typical network
`
`system” and is further annotated by Petitioner to add labels for a mobile
`terminal, security gateway, and other terminals. Pet. 28. According to
`Murakawa, Figure 5 “is a block diagram of a typical network system
`
`17
`
`
`
`IPR2019-00819
`Patent 7,620,810 B2
`including a WAN.” Ex. 1005, 1:51–53. As shown in Figure 5, the network
`system includes “PC 101 [(labeled by Petitioner as ‘Mobile Terminal’)],
`which is located outside . . . LAN [104 and] establish[es] a dialup
`connection to the provider, WAN 102, and security gateway 103 [(labeled
`by Petitioner as ‘Security Gateway’)] that connects WAN 102 and LAN
`104.” Id. at 1:54–58. In addition, “LAN 104[,] being subjected to security
`gateway 103[,] includes . . . client PCs 106, 107” (labeled by Petitioner as
`“Other Terminals”). Id. at 1:59–60. Also shown is virtual private network
`(“VPN”) 108, which is established between PC 101 and security gateway
`103 to perform IPSec communication. Id. at 1:61–63. Murakawa discloses
`that this network system ensures safe communications between PC 101 and
`the terminals on LAN 104. Id. at 2:1–4.
`C. Our Analysis
`Claims 4–6 depend directly from claim 3. Ex. 1001, 11:16–24. Claim
`
`3 recites “[t]he method of claim 1 wherein the method further comprises the
`security gateway sending back a reply message to the mobile terminal at the
`second address to confirm the address change.” Ex. 1001, 11:11–14
`(emphasis added). The Petition does not address claim 3’s reply message in
`its showings for claims 4–6. See Pet. 54–59, 66–69. Nor does the Petition
`allege that (i) the combination of Ishiyama and Murakawa, or (ii) the
`combination of Ishiyama, Murakawa, and Forslöw, renders claim 3
`unpatentable. Id. at 4. Instead, the Petition challenges claim 3 based on
`another ground (Ishiyama, Murakawa, and Ahonen), and relies on Ahonen to
`teach claim 3’s reply message. Id. at 59–66. The Petition does not contend,
`however, that claims 4–6 are obvious over any combination that includes
`Ahonen. Id. at 4.
`
`18
`
`
`
`IPR2019-00819
`Patent 7,620,810 B2
`
`We already addressed the above scenario in IPR2021-00820, where
`Petitioner relied on Ahonen to teach the same limitation as recited in claim
`3, but failed to include Ahonen in another ground challenging dependent
`claims that incorporated this limitation. -820 case, Paper 37 (Final Written
`Decision) at 49–55. We determined that Petitioner did not meet its burden
`to show unpatentability for this scenario. Id. The Federal Circuit upheld
`this determination from the -820 case:
`[W]e agree the Board properly declined to consider Ahonen in
`Grounds 1 and 3 of the [-820] IPR. Apple only raised Ahonen in
`Ground 2, which challenged claims 3 and 5 of the ’581 patent.
`Even though claims 6–8 depend from claim 5, Apple did not
`include Ahonen in Grounds 1 and 3 challenging those claims, nor
`did it address or reference Ahonen in its substantive analysis.
`The Board did not err by declining to consider arguments that
`Apple did not make.
`Apple, 2022 WL 4103286, at *7 (citations omitted); see also id. at *8 (“We
`affirm the Board’s patentability determination that Apple failed to meet its
`burden as to claims 6–8 of the ’581 patent.”).
`
`In addition, the Federal Circuit noted that we “should decide whether
`to consider this issue on remand” for claims 4–6 in this case. Id. at *6–8 &
`*6 n.4; see also id. *6 n.4 (noting that “[t]he Board did not reach this issue
`because it found [Petitioner] did not demonstrate claim 1 to be
`unpatentable”) (citation omitted).
`
`We now consider this issue as it is dispositive of whether Petitioner
`shows that claims 4–6 of the ’810 patent are unpatentable. The parties’
`arguments here are substantively the same as in the -820 case for this
`scenario. Compare Pet. 54–59, 66–69; Pet. Reply 22–25; PO Resp. 63–64,
`73; and PO Sur-reply 24–25, with -820 case, Paper 2, 50–54; Paper 23, 63–
`64; Paper 26, 22–26; and Paper 29, 25–26. And our reasoning that
`
`19
`
`
`
`IPR2019-00819
`Patent 7,620,810 B2
`Petitioner does not show by a preponderance of the evidence that claims 4–6
`would have been obvious is the same reasoning that we provided in the -820
`case for this scenario. Compare infra, with -820 case, Paper 37, 49–55. We
`address the parties’ arguments below, mirroring how we did so for the -820
`case.
` We agree with Patent Owner that “Petitioner’s assertion that claims
`4–5 are unpatentable under [Ishiyama and Murakawa] . . . fails because it
`does not account for the limitations of intervening claim 3.” PO Resp. 64
`(citing Pet. 54–59). We likewise agree with Patent Owner that Petitioner’s
`Ishiyama, Murakawa, and Forslöw asserted ground “fails to address that
`claim 6 also depends on claim 3.” Id. at 73 (citing Pet. 66–69). Moreover,
`we disagree with Petitioner that Patent Owner makes a “form-over-substance
`argument” and “improperly tak[es] too stringent of a reading of the
`Petition.” Pet. Reply 22–23.
`
`The Petition guides the proceeding. See Koninklijke Philips N.V. v.
`Google LLC, 948 F.3d 1330, 1335–36 (Fed. Cir. 2020). The Federal Circuit
`explained that “Congress chose to structure a process in which it’s the
`petitioner . . . who gets to define the contours of the proceeding,” and that
`“the statute envisions that a petitioner will seek an inter partes review of a
`particular kind—one guided by a petition describing ‘each claim challenged’
`and ‘the grounds on which the challenge to each claim is based.’” Id. at
`1335 (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (quoting
`35 U.S.C. § 312(a)(3))) (e
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