Paper 10
`Trials@uspto.gov
`Entered: September 27, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`MPH TECHNOLOGIES OY,
`Patent Owner.
`
`
`
`Case IPR2019-00819
`Patent 7,620,810 B2
`__________________________
`
`Before KAMRAN JIVANI, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`HAMANN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: September 27, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`MPH TECHNOLOGIES OY,
`Patent Owner.
`
`
`
`Case IPR2019-00819
`Patent 7,620,810 B2
`__________________________
`
`Before KAMRAN JIVANI, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`HAMANN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2019-00819
`Patent 7,620,810 B2
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–7 of U.S. Patent No. 7,620,810 B2
`(Ex. 1001, “the ’810 patent”) pursuant to 35 U.S.C. § 311. MPH
`Technologies Oy (“Patent Owner”) filed a Patent Owner Preliminary
`Response (Paper 8, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes
`review may be instituted if “the information presented in the petition filed
`under section 311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). On
`April 24, 2018, the Supreme Court held that a decision to institute under
`35 U.S.C. § 314 may not institute on fewer than all claims challenged in the
`Petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`Upon consideration of the Petition and the Preliminary Response, we
`determine that the information presented shows there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`at least one challenged claim of the ’810 patent. Accordingly, we institute
`inter partes review on all of the challenged claims based on all of the
`grounds identified in the Petition.
`
`A. Related Matter
`The parties identify MPH Techs. Oy v. Apple Inc., Case No. 5:18-cv-
`05935-PJH, in the U.S. District Court for the Northern District of California,
`as a matter that may affect or would be affected by a decision in this
`proceeding. Pet. 2–3; Paper 7, 1. The parties also identify, as a related
`
`2
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`IPR2019-00819
`Patent 7,620,810 B2
`matter, Apple Inc. v. MPH Techs. Oy, IPR2019-00820 (PTAB), involving
`U.S. Patent No. 7,937,581, which claims the benefit of the ’810 patent’s
`filing date. Pet. 2–3; Paper 7, 1.
`
`B. The Challenged Patent (Ex. 1001)
`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 terminals1 (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.
`
`
`
`
`
`1 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.
`
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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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`IPR2019-00819
`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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`IPR2019-00819
`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 signaling is not important[;] the essence is to carry over the IPSec
`SA to the new connection point.” Id. at 10:11–13.
`
`C. The Challenged Claims
`Petitioner challenges claims 1–7 of the ’810 patent, of which claims 1
`and 7 are independent claims. Claim 1 is illustrative of the challenged
`claims and is reproduced below:
`
`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,
`
`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,
`
`6
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`IPR2019-00819
`Patent 7,620,810 B2
`
`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.
`
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`References
`Basis2 Challenged Claim(s)
`1.
`Ishiyama3 and Murakawa4
`§ 103(a) 1, 4, 5, and 7
`2.
`Ishiyama, Murakawa, and
`§ 103(a) 2 and 3
`Ahonen5
`Ishiyama, Murakawa, and
`Forslöw6
`
`§ 103(a) 6
`
`3.
`
`Pet. 4, 12–69. Petitioner submits the Declaration of David Goldschlag,
`Ph.D. (Ex. 1002) in support of its arguments.
`
`35 U.S.C. § 325(d) ARGUMENTS
`II.
`Patent Owner argues that we should exercise our discretion and deny
`
`institution under § 325(d). Prelim. Resp. 1–41. The Director has discretion
`to institute an inter partes review, and has delegated that discretion to the
`Board. See 35 U.S.C.§ 314(a); see also 37 C.F.R. § 42.4(a). In determining
`whether to institute an inter partes review, we “may take into account
`
`
`2 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.
`3 U.S. Patent No. 6,904,466 B1 (issued June 7, 2005) (Ex. 1004).
`4 U.S. Patent No. 7,028,337 B2 (issued Apr. 11, 2006) (Ex. 1005).
`5 U.S. Patent No. 6,976,177 B2 (issued Dec. 13, 2005) (Ex. 1006).
`6 U.S. Patent No. 6,954,790 B2 (issued Oct. 11, 2005) (Ex. 1007).
`
`7
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`IPR2019-00819
`Patent 7,620,810 B2
`whether, and reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`35 U.S.C. § 325(d). To that end, the Director has designated as precedential
`a portion of the Board’s decision in Becton, Dickinson & Co. v. B. Braun
`Melsungen AG, Case IPR2017-01586, slip op. at 17−18 (PTAB Dec. 15,
`2017) (Paper 8) (precedential as to § III.C.5, first para.), which provides six
`non-exclusive factors to consider when deciding whether to exercise
`discretion to deny review under 35 U.S.C. § 325(d). Below we address these
`six factors as they apply to this proceeding. But first, we provide an
`overview of relevant portions of the prosecution history.
`
`A. Summary of Relevant Prosecution History for § 325(d)
`During prosecution of the application that issued as the ’810 patent,
`
`the Examiner rejected the then-pending claims over the combination of
`Ishiyama (which Petitioner now asserts against all claims) and Ala-Laurila.7
`Ex. 1003, 214–20 (Sept. 26, 2008 Office Action) (only Office Action that
`applied Ishiyama). The Examiner relied on Ishiyama only as a secondary
`reference to disclose “sending a request message . . . to change the secure
`connection” and “changing an address definition of the secure connection.”
`In response, the Applicant amended the claims to add a “security gateway”
`between a mobile terminal and another terminal, and other limitations
`related thereto. Id. at 227–29. The Applicant argued, inter alia, that neither
`Ala-Laurila nor Ishiyama disclosed this intervening security gateway. Id. at
`232–38.
`
`
`7 U.S. Patent No. 6,587,680 B1 (issued July 1, 2003).
`
`8
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`IPR2019-00819
`Patent 7,620,810 B2
`
`The Examiner, without further explanation, withdrew the rejection
`and shifted to other references in again rejecting the claims. Id. at 243–50.
`More specifically, the Examiner rejected the amended claims over the
`combination of Ahonen (which Petitioner now asserts against claims 2 and
`3) and Luo.8 Ex. 1003, 243–50 (Mar. 16, 2009 Office Action) (asserting
`Ahonen for the first time). The Applicant responded that Luo was not prior
`art due to the application’s priority date, and that the Examiner should
`withdraw the rejection. Id. at 264.
`
`The Examiner withdrew the rejection, and issued a new rejection
`based on Ahonen and Inoue.9 Id. at 270–76. In response, the Applicant
`argued that Ahonen and Inoue failed to disclose the claimed subject matter,
`as amended. Id. at 286, 290–96. The Examiner, with authorization from the
`Applicant, entered an Examiner’s Amendment to add to claim 1: “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.”
`Id. at 318–19. The Examiner then allowed the claims. Id. at 314–20.
`
`B. Becton Dickinson Factors
`In Becton Dickinson, the Board identified the following six non-
`
`exclusive factors to consider in a § 325(d) analysis:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
`was the basis for rejection; (d) the extent of the overlap between
`
`8 U.S. Patent No. 7,146,428 B2 (issued Dec. 5, 2006).
`9 U.S. Patent No. 6,170,057 B1 (issued Jan. 2, 2001).
`
`9
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`Patent 7,620,810 B2
`the arguments made during examination and the manner in which
`Petitioner relies on the prior art or Patent Owner distinguishes
`the prior art; (e) whether Petitioner has pointed out sufficiently
`how the Examiner erred in its evaluation of the asserted prior art;
`and (f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the prior art
`or arguments.
`Becton Dickinson, Paper 8 at 17–18.
`
`Below we apply these factors to Petitioner’s combination of Ishiyama
`and Murakawa, which challenges claims 1, 4, 5, and 7 as obvious. We note
`that the Petition’s other asserted grounds challenge dependent claims, and
`each asserted ground applies Ishiyama and Murakawa in the same manner,
`as discussed below. Pet. 59–70. Thus, the presence of these other grounds
`does not change our evaluation.
`
`1. Becton Dickinson Factors (a), (b), and (c)
`Becton Dickinson factors (a) and (b) compare the asserted art and the
`
`prior art involved during examination for similarities and material
`differences, and for its cumulative nature. Becton Dickinson, Paper 8 at 17.
`Factor (c) concerns “the extent to which the asserted art was evaluated
`during examination, including whether the prior art was the basis for
`rejection.” Id.
`
`Patent Owner argues that Ishiyama was before the Examiner during
`examination, and was a basis for rejection. Prelim. Resp. 8–12, 24 (citing
`Ex. 1003, 214–20). As to Murakawa, Patent Owner argues that Murakawa
`is not materially different from Ahonen, which was the basis for two
`rejections during examination. Id. at 17–19, 24 (citing Ex. 1003, 243–50,
`270–76). Patent Owner argues that Ahonen and Murakawa both disclose
`
`10
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`IPR2019-00819
`Patent 7,620,810 B2
`securely “forwarding a message to the other terminal via the security
`gateway.” Id. at 17–18.
`
`More specifically, Patent Owner argues that Ahonen discloses “a VPN
`communication scheme that uses the IPSec standard to send secure messages
`from the mobile terminal 1 to the security gateway 3.” Id. at 17 (citing
`Ex. 1006, Fig. 5, 1:43–45, 3:14–16). “Those messages are then forwarded
`by the security gateway to the other terminal,” according to Patent Owner.
`Id. (citing Ex. 1006, 1:61–63, 3:24–26, 3:57–61). Patent Owner argues that
`Murakawa makes these same disclosures. Id. at 17–18 (citing Ex. 1005,
`Fig. 5).
`
`Ishiyama was considered and applied during examination in a limited,
`narrow manner. See Ex. 1003, 270–276. Specifically, the Examiner
`considered and applied Ishiyama only in a single, non-final rejection. Id.
`The Examiner relied on Ala-Laurila as the primary prior art reference in that
`non-final rejection, and in other rejections. Id. at 178–184. As such, the
`Examiner relied on Ishiyama only as a secondary reference in the rejection,
`and applied Ishiyama as disclosing “sending a request message . . . to change
`the secure connection” and “changing an address definition of the secure
`connection,” as recited by then-existing limitation (c). Id.; see Pet. 18.
`Although the Examiner did not assert Ishiyama after the applicant amended
`the claims to include a “security gateway,” there is no evidence in the
`prosecution history as to whether the Examiner considered Ishiyama after
`the amendments. Accordingly, we determine that Ishiyama was narrowly
`considered by the Examiner.
`Murakawa, on the other hand, was not considered during examination.
`Although we agree with Patent Owner that Murakawa and Ahonen disclose
`
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`IPR2019-00819
`Patent 7,620,810 B2
`forwarding messages to other terminals via a security gateway, we find that
`there are material differences between Murakawa and Ahonen such that
`Murakawa is not cumulative to Ahonen. Prelim. Resp. 17–19, 25; see
`Ex. 1005, Fig. 5; Ex. 1006, Figs. 1, 5, 1:43–45, 3:14–16. Specifically,
`Murakawa and Ahonen are materially different as to changing addresses.
`Compare Ex. 1005, 4:3–16 (describing designating the IP address of an
`outside terminal in a tunneled IP packet when establishing VPN
`communication with a security gateway via dialup connection), with
`Ex. 1006, 2:11–37, 3:57–4:1, 9:7–65, Fig. 5 (describing address changing
`and remotely activating preexisting secure connections when a mobile host
`user travels away from an intranet). As discussed below, the Examiner
`relied on Ahonen for address changing limitations, as they related to a
`security gateway. Petitioner, on the other hand, relies on Ishiyama and not
`Murakawa for the address changing limitations of the challenged claims.
`
`Patent Owner argues that a “side-by-side annotated comparison of
`Figure 1 of Ahnonen and Figure 5 of Murakawa shows that they are
`materially equivalent with respect to forwarding a message to the other
`terminal via the security gateway.” Prelim. Resp. 17–18 (citing Ex. 1005,
`Fig 5; Ex. 1006; Fig. 1). We note that Figure 5 of Murakawa is a
`characterization of the prior art and therefore does not represent the features
`of Murakawa. Ex. 1005, Fig. 5. We are not persuaded that two references
`are materially the same or cumulative merely because each teaches a
`common single feature. As discussed above, Murakawa and Ahonen are
`materially different in address changing. Patent Owner does not present
`additional arguments that Murakawa is cumulative to Ahonen. See Prelim.
`
`12
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`IPR2019-00819
`Patent 7,620,810 B2
`Resp. 25. Accordingly, on this record, we determine that Murakawa is not
`cumulative to Ahonen.
`Although we agree with Patent Owner that Ishiyama and Ahonen
`were considered during examination, and that each was relied on in
`combination with other references in the Examiner’s rejections, as we
`discuss below with respect to factor (d), Ishiyama and Ahonen were the
`subject of different rejections, and they were never combined by the
`Examiner. Prelim. Resp. 214–20, 243–50, 270–76.
`
`Based on the above, we find that factors (a), (b), and (c) weigh against
`denying institution.
`
`2. Becton Dickinson Factor (d)
`Factor (d) concerns “the extent of the overlap between the arguments
`
`made during examination and the manner in which Petitioner relies on the
`prior art or Patent Owner distinguishes the prior art.” Becton Dickinson,
`Paper 8 at 17–18. Patent Owner argues that Petitioner relies on Ishiyama
`and Murakawa in a manner that “substantially overlaps” with how the
`Examiner applied the prior art during the original examination. Prelim.
`Resp. 27.
`
`More specifically, Patent Owner argues that Petitioner relies on
`Ishiyama for “teach[ing] the claimed address changing functionality,” just as
`the Examiner did in “rejecting the claims over Ishiyama during the original
`examination.” Id. at 28–29 (citing Pet. 14–18, 24, 29, 44, 53, 58), 38 (citing
`Ex. 1003, 217–19). Similarly, Patent Owner argues that “there is complete
`overlap between Petitioner’s argument for Murakawa and the Examiner’s
`evaluation and discussion of Ahonen.” Id. at 30 (citing Pet. 42–44;
`Ex. 1003, 248, 274).
`
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`
`We are not persuaded by Patent Owner’s arguments. Rather, we find
`that there is little, if any, overlap between the arguments made during
`examination and the manner in which Petitioner now relies on Ishiyama and
`Murakawa. As we discuss above, Petitioner combines Ishiyama’s address
`changing functionality with Murakawa’s security gateway and/or other
`terminal. The Examiner never made this combination. Nor did the
`Examiner combine Ishiyama and Ahonen.10
`
`Instead, the Examiner combined Ala-Laurila and Ishiyama to reject
`the then-pending claims11 before they were amended to add “security
`gateway” limitations. Ex. 1003, 214–20. Once amended, the claims
`required, inter alia, (i) having a “security gateway” between a mobile
`terminal and another terminal, (ii) sending a request message to the address
`of the “security gateway,” (iii) the “security gateway” changing an address
`definition of the secure connection, and (iv) the mobile terminal sending a
`secure message in the secure connection from its new address to the other
`terminal via the “security gateway.” Id. at 228–29. The Applicant focused
`on the security gateway limitations, and argued that Ala-Laurila and
`Ishiyama did not disclose the subject matter of the amended claims. Id. at
`231–33.
`
`
`10 The Examiner’s statement in the Notice of Allowance that “Applicant’s
`arguments with respect to the rejection of the pending claims over prior arts
`of record have been fully considered and are persuasive,” does not evidence
`that the Examiner combined Ishiyama and Ahonen. Ex. 1003, 319.
`11 Before the claims were amended, the only claim that mentioned a security
`gateway was dependent claim 8, which only required that either the mobile
`terminal or the other terminal be a security gateway. Ex. 1003, 205. The
`amended claims instead place a security gateway between the terminals, and
`recite additional limitations for the security gateway. Id. at 228–29.
`
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`
`In response, the Examiner replaced the Ala-Laurila and Ishiyama
`rejection with a rejection over Ahonen and Luo. Id. at 243–50. The
`Examiner cited Ahonen for disclosing a security gateway and many of the
`amended claims’ address changing limitations, as they related to a security
`gateway. Ex. 1003, 246–48 (citing Ex. 1006, 2:11–37, 3:57–4:1, 9:7–65,
`Fig. 5). The Examiner relied on Ahonen in the same fashion when rejecting
`the amended claims over Ahonen and Inoue. Ex. 1003, 272–73 (applying
`Ahonen again to many of the amended claims’ address changing
`limitations). In other words, rather than applying Ishiyama’s address
`changing functionality to the amended claims, the Examiner applied
`Ahonen’s and Luo’s or Ahonen’s and Inoue’s teachings. Id.
`
`Accordingly, for the reasons discussed above, Petitioner relies on
`Ishiyama and Murakawa in a manner different from how Ishiyama and
`Ahonen were applied during examination. Thus, this factor weighs against
`denying institution.
`
`3. Becton Dickinson Factor (e)
`Factor (e) concerns “whether Petitioner has pointed out sufficiently
`
`how the Examiner erred in its evaluation of the asserted prior art.” Becton
`Dickinson, Paper 8 at 18. Petitioner primarily argues that “the Examiner did
`not properly apply Ishiyama’s teachings due to fundamental
`misunderstandings of IPSec, particularly IPSec tunnel mode.” Pet. 18–19.
`In particular, Petitioner contends that the Examiner misapprehended the
`“‘correspondent node’ described in Ishiyama” as representing an endpoint of
`an IPSec tunnel. Id. at 20 (citing Ex. 1002 ¶¶ 33–36). Petitioner argues that
`one of ordinary skill in the art would have understood that a “correspondent
`node,” as Ishiyama discloses, is a security gateway that communicates with a
`
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`Patent 7,620,810 B2
`mobile computer via an established IPSec tunnel. Id. at 20–21. In this
`manner, Petitioner has pointed out sufficiently that the Examiner erred in
`withdrawing a rejection based on Ishiyama after security gateway limitations
`were added to the claims. See id. at 18–21. As discussed in detail below,
`we are persuaded that Petitioner has demonstrated a reasonable likelihood
`that Ishiyama discloses these limitations, and we are persuaded that
`Petitioner has demonstrated that the Examiner erred by not applying
`Ishiyama in the manner Petitioner argues.
`
`Accordingly, we find this factor weighs against denying institution.
`
`4. Becton Dickinson Factor (f)
`Factor (f) concerns “the extent to which additional evidence and facts
`
`presented in the Petition warrant reconsideration of the prior art or
`arguments.” Becton Dickinson, Paper 8 at 18. Here, Petitioner presents
`Dr. Goldschlag’s Declaration (Ex. 1002), which is new evidence not
`considered by the Examiner. Petitioner relies on this new evidence to
`combine Ishiyama and Murakawa, which the Examiner did not do. E.g.,
`Pet. 23–24 (citing Ex. 1002 ¶ 61), 29, 44 (citing Ex. 1002 ¶ 67). For
`example, Petitioner relies on Dr. Goldschlag’s testimony that one of
`ordinary skill in the art “would have understood that Murakawa’s
`description of a well-known security gateway configuration provides the
`relevant context for Ishiyama’s address changing functionality.” Id. at 23–
`24 (citing Ex. 1002 ¶ 61). Furthermore, Dr. Goldschlag testifies that one of
`ordinary skill in the art “would have understood that implementing
`Ishiyama’s correspondent host functionality with the security gateway
`described in Murakawa would be highly desirable in the telecommunication
`context.” Ex. 1002 ¶ 67.
`
`16
`
`
`
`IPR2019-00819
`Patent 7,620,810 B2
`
`Although the mere introduction of declaration testimony alone does
`not strongly support reconsideration of the prior art and arguments, we,
`nonetheless, find Dr. Goldschlag’s testimony slightly weighs against
`denying institution.
`
`5. Conclusion Regarding Becton Dickinson Analysis
`As we discuss above, we find all of the Becton Dickinson disfavor
`
`denying institution.
`
`When considering all the factors together for and against institution,
`the particular circumstances of this case do not indicate that we should
`exercise our discretion under 35 U.S.C. § 325(d) to deny institution. See
`Trial Practice Guide Update (July 2019), 29 (“Whether to deny institution of
`trial on the basis of 35 U.S.C. § 325(d) is a fact-dependent decision, in
`which the Board balances the petitioner’s desire to be heard against the
`interest of the patent owner in avoiding duplicative challenges to its
`patent.”). Put differently, under our particular circumstances, the new
`manner in which Petitioner relies on Ishiyama and Murakawa—the latter of
`which was not considered during examination, coupled with Petitioner’s
`new evidence (i.e., Dr. Goldschlag’s testimony), support institution.
`
`Accordingly, we are not persuaded that we should deny institution
`under 35 U.S.C. § 325(d).
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`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;
`
`17
`
`
`
`IPR2019-00819
`Patent 7,620,810 B2
`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)
`(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.
`Petitioner argues that one of ordinary skill in the art at the time of the
`invention of the ’810 patent “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).
`Patent Owner does not identify a level of skill in the art that one
`would have had at the time of the invention of the ’810 patent or identify any
`shortcoming in Petitioner’s formulation. See generally Prelim. Resp. For
`purposes of this Decision on Institution, and based on the current record, we
`adopt Petitioner’s assessment of the level of skill in the art because it is
`consistent with the ’810 patent and the asserted prior art, and we apply it in
`our obviousness evaluation below.
`
`IV. 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,
`51,343–44 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). Under
`
`18
`
`
`
`IPR2019-00819
`Patent 7,620,810 B2
`Phillips, the words of a claim are generally given their “ordinary and
`customary meaning,” which is the meaning they would have 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.
`The parties do not identify any claim terms requiring explicit
`construction. Pet. 12; see generally Prelim. Resp. For purposes of
`institution, and after review of the current record, we conclude that no
`express claim construction is necessary to determine whether to institute
`review of the challenged claims. 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.’”).
`
`V.
`
`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.12 See Graham, 383 U.S. at 17–18. When
`
`
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