Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper: 24
`Entered: February 11, 2020
`
`
`
`
`
`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)
`IPR2019-00820 (Patent 7,937,581 B2)1
`_______________
`
`
`
`Before KAMRAN JIVANI, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`1 This Order addresses the same issue for the above-identified cases.
`Therefore, we exercise our discretion to issue one order to be filed in each
`case. The parties, however, are not authorized to use this style heading in
`any subsequent papers.
`
`
`Tel: 571-272-7822
`
`Paper: 24
`Entered: February 11, 2020
`
`
`
`
`
`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)
`IPR2019-00820 (Patent 7,937,581 B2)1
`_______________
`
`
`
`Before KAMRAN JIVANI, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`1 This Order addresses the same issue for the above-identified cases.
`Therefore, we exercise our discretion to issue one order to be filed in each
`case. The parties, however, are not authorized to use this style heading in
`any subsequent papers.
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`
`I.
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”) requested an inter partes review of claims 1–
`7 (the “challenged claims”) of U.S. Patent No. 7,620,810 B2 (Ex. 1001, the
`“’810 patent”). Paper 2 (“Petition” or “Pet.”).2 MPH Technologies OY
`(“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`We instituted an inter partes review of all of the challenged claims.
`Paper 10 (“Dec. on Inst.”).
`Patent Owner requests rehearing of our decision to institute review.
`Paper 13 (“Reh’g Req.”). Having considered the Request for Rehearing, we
`determine that Patent Owner has not shown that we abused our discretion in
`declining to deny institution under 35 U.S.C. § 325(d). Accordingly, we
`deny Patent Owner’s request for the following reasons.
`
`II.
`
`STANDARD OF REVIEW
`
`37 C.F.R. § 42.71(d) provides that:
`A party dissatisfied with a decision may file a request for
`rehearing. The burden of showing a decision should be modified
`lies with the party challenging the decision. The request must
`specifically identify all matters the party believes the Board
`misapprehended or overlooked, and where each matter was
`previously addressed in a motion, opposition, or a reply.
`See Office Trial Practice Guide (84 Fed. Reg. 64,280 (Nov. 21, 2019)).
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`panel will review the decision for an abuse of discretion.” An abuse of
`discretion occurs when a “decision was based on an erroneous conclusion of
`
`2 All citations are to IPR2019-00819 unless otherwise noted. Petitioner
`made a similar request for review of claims 1–9 of U.S. Patent
`No. 7,937,581 B2 in IPR2019-00820.
`
`2
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`law or clearly erroneous factual findings, or . . . a clear error of judgment.”
`PPG Indus., Inc. v. Celanese Polymer Specialties Co., Inc., 840 F.2d 1565,
`1567 (Fed. Cir. 1988) (citations omitted).
`
`III. ANALYSIS
`
`In its Request for Rehearing, Patent Owner argues that we erred for
`two reasons. First, Patent Owner contends that we misapprehended or
`overlooked that § 325(d)3 and prior Board decisions interpreting § 325(d)
`establish that the Examiner’s entry of separate rejections based on references
`relied on in the Petition “does not weigh against exercising discretion
`merely because they were not applied together in the exact combination in
`the Petition.” Reh’g Req. 2. Second, Patent Owner contends that we
`misapprehended or overlooked where a difference of opinion with the
`examiner about how a particular reference should be applied “is insufficient
`to supply the type of error contemplated by factor (e) of the Becton,
`Dickinson test4 (‘whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art’).” Id. at 6.
`We address each of these arguments below.
`
`
`3 In determining whether to institute an inter partes review, we “may take
`into account 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); 37 C.F.R. § 42.4(a) (stating that the “Board
`institutes the trial on behalf of the Director”).
`4 Becton, Dickinson & Co. v. B. Braun Melsungen AG, 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).
`
`3
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`
`A. Patent Owner’s arguments regarding whether the Examiner’s
`consideration of references in separate rejections weighs against
`exercising discretion
`According to Patent Owner, our determination that the Examiner’s use
`of Ishiyama and Murakawa in separate rejections, and not in the exact
`combination presented by the Petition, “weighs against denying institution”
`under § 325(d) “is diametrically contrary to Becton, Dickinson, which
`addressed materially the same facts and came to exactly the opposite
`conclusion.” Reh’g Req. 4 (citing Dec. on Inst. 13–14). Patent Owner
`argues that our determination also conflicts with the Board’s informative
`decision in Kayak Software Corp. v. International Business Machines Corp.,
`CBM2016-00075, Paper 16, 8–9 (PTAB Dec. 15, 2016) (informative), in
`which, according to Patent Owner, the Board concluded that to require an
`examiner to have applied the exact combination of references raised in the
`petition in order for denial under § 325(d) to be appropriate “would exalt
`form over substance.” Id. at 5 (citing Kayak at Paper 16, 8–9).
`We disagree with Patent Owner. Patent Owner’s arguments here
`relate to Becton, Dickinson factor (c), “the extent to which the asserted art
`was evaluated during examination, including whether the prior art was the
`basis for rejection.” Becton, Dickinson, Paper 8, 17. Patent Owner
`mischaracterizes the findings underlying our determination that this factor
`weighs against denying institution. We did not rely merely on the
`Examiner’s use of “the relied-upon references in separate rejections and not
`in the exact combination of those references presented by the Petition,” as
`Patent Owner contends. Reh’g Req. 4. Rather, our determination was based
`on findings detailed in our Decision on Institution and summarized below.
`
`4
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`
`We found in our Decision on Institution that the Examiner did not
`apply Ishiyama—the primary reference cited in the instant Petition—to the
`challenged claims of the ’810 or ’581 patents. See Dec. on Inst. 12; see also
`Apple Inc. v. MPH Techs. Oy, IPR2019-00820, Paper No. 10, *12. In
`particular, during prosecution of the ’810 patent application, the Examiner
`used Ishiyama with Ala-Laurila in an obviousness rejection of then-pending
`claims 1–10. Ex. 1003, 216–19 (citing Ex. 1004, 6:13–23, 6:54–7:23,
`11:29–58, and for claim 6, citing Ex 1004, 2:63–3:14). In the context of
`independent claim 1, the Examiner relied on Ala-Laurila for elements a) and
`b) and applied Ishiyama only against element c) of claim 1. Id.
`In response to the non-final rejection in which Ishiyama was applied,
`independent claim 1 was amended as follows (with underlining denoting
`additions and strikethroughs denoting deletions):
`1. (Currently amended) 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 first address of the security
`gateway other terminal, the secure connection defined by at least
`the addresses of the mobile terminal and the security gateway
`two terminals,
`b) the mobile terminal changing moving from the first
`address of the mobile terminal to a second address, and
`c) while at the second address, the mobile terminal sending
`a request message to the first address of the security gateway
`other terminal to request the security gateway other terminal to
`change the secure connection to be defined between the second
`address and the first address of the security gateway other
`terminal, and
`in response to the request message from the mobile
`terminal, the security gateway other terminal, while at the first
`
`5
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`
`address of the other terminal, changing an address definition of
`the secure connection from the first address to the second
`address, and
`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.
`Ex. 1020, 228 (Amendment, filed Dec. 19, 2008 in response to the Non-
`Final Action, mailed Sept. 26, 2008). After the amendment, the Examiner
`did not assert the primary reference, Ala-Laurila, or Ishiyama. Rather, the
`prosecution history shows that the Examiner narrowly considered Ishiyama
`only as a secondary reference for the limited teachings of “sending a request
`message . . . to change the secure connection” and “changing an address
`definition of the secure connection” in a single, non-final rejection of the
`’810 patent. Dec. on Inst. 11; see also Ex. 1020, 178–184, 214–20. As we
`stated in our Decision on Institution, “there is no evidence in the prosecution
`history as to whether the Examiner considered Ishiyama after the
`amendments,” which altered the scope of “the claims to include a ‘security
`gateway.’” Id.
`Further, Murakawa—the secondary reference upon which the instant
`Petition relies—was never considered during examination. Id. And with
`regard to Patent Owner’s attempt to cast Murakawa as cumulative to
`Ahonen, we found in our Decision on Institution that “there are material
`differences between Murakawa and Ahonen such that Murakawa is not
`cumulative to Ahonen.” Id. at 12–13. We particularly were unpersuaded by
`Patent Owner’s annotated comparison of Figure 1 of Ahonen with Figure 5
`of Murakawa showing that “they are materially equivalent with respect to
`forwarding a message to the other terminal via the security gateway”
`because “Figure 5 of Murakawa is a characterization of the prior art and
`
`6
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`therefore does not represent the features of Murakawa.” Id. at 13 (citing
`Ex. 1005, Fig. 5). As we stated in our Decision on Institution, “[w]e are not
`persuaded that two references are materially the same or cumulative merely
`because each teaches a common single feature.” Id.
`The Board’s decision in Becton, Dickinson does not compel a
`different result. In Becton, Dickinson, the petitioner relied on the same
`primary reference applied in the same manner as in a non-final Office
`Action and a final Office Action during prosecution. Becton, Dickinson,
`Paper 8, 18–21 Ex. 2004, 119–25, 176–85. The Board found that,
`although petitioner combined that primary reference with Tauschinski
`instead of Rogers (that latter of which was applied during prosecution),
`the petitioner in that matter failed to substantively address “any particular
`differences between Rogers and Tauschinski valve structure as a basis for
`unpatentability.” Id. at Paper 8, 18, 21. Consequently, the Board gave
`“little weight to the fact that Tauschinski is a different secondary
`reference from Rogers.” Id.
`Unlike the facts of Becton, Dickinson, Ishiyama was considered by
`the Examiner only in a single, non-final rejection and applied in a different
`way (i.e., as a secondary reference for two narrow limitations). Dec. on
`Inst. 11–12. And the Examiner applied Ishiyama before the claims were
`amended to include an intervening security gateway, and additional
`limitations related thereto. Id. at 11–12, 14 & n.11; Ex. 1020, 178–184,
`214–220, 228. Accordingly, the facts here are different from those of
`Becton, Dickinson.
`The present matter is also distinguishable from the Board’s decision in
`Kayak Software Corp. v. International Business Machines Corp.,
`
`7
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`CBM2016-00075, Paper 16, 8–9 (PTAB Dec. 15, 2016) (informative).
`There, the Board found that “the record could not be clearer that those
`references were presented to and extensively considered by the Office
`during prosecution of the ’849 patent.” Kayak, Paper 16, 8. Specifically,
`the Board found that discussion of the references, namely, Reference 7,
`Simon, and Alber in “the prosecution history, collectively, includes at least
`86 pages directed to Reference 7, at least 38 pages directed to Simon, and at
`least 72 pages directed to Alber. Id. at 8–9.
`Here, the Examiner considered and applied Ishiyama only in a single,
`non-final rejection, and only as a secondary reference. Dec. on Inst. 11. The
`discussion of Ishiyama is on only two pages and limited to a single claim
`element. See Ex. 1003, 217, 29. Because the facts in the present case
`distinguish over the facts in Kayak in which each of the references was
`extensively discussed and applied in the same manner as during
`examination, albeit not using the same combination of references, we are not
`persuaded that our holding “conflicts with the Board’s informative decision
`in Kayak,” as Patent Owner asserts. Reh’g Req. 5.
`For the foregoing reasons, we are not persuaded by Patent Owner’s
`arguments of error in our analysis of Becton, Dickinson factor (c).
`
`B. Patent Owner’s arguments as to whether a difference of opinion is an
`error under Becton, Dickson 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. Patent Owner contends we “found that Petitioner
`had shown such an error merely by arguing for applying the Ishiyama
`reference in a manner different than how the Examiner applied it in
`
`8
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`rejections during the original prosecution.” Reh’g Req. 6. Patent Owner
`elaborates, “[i]n other words, by putting forth a difference of opinion with
`the Examiner about how best to apply a particular reference that was used in
`claim rejections or possibly what it would have disclosed to a [person of
`ordinary skill in the art], the panel found some implicit error by the
`examiner.” Id. at 6–7. Patent Owner argues that our analysis of factor (e) is
`erroneous because “simply second-guessing an examiner’s evaluation of the
`same reference does not constitute a sufficient showing of error” under
`Becton, Dickinson. Id. at 7–9.
`Patent Owner’s argument is misguided. Petitioner did not put forth
`merely “a difference of opinion” with the Examiner. Rather, we explained
`in our Decision on Institution how Petitioner persuasively argued that “the
`Examiner did not properly apply Ishiyama’s teachings due to fundamental
`misunderstandings of IPSec, particularly IPSec tunnel mode.” Dec. on
`Inst. 15 (citing Pet. 18–19). Petitioner argued, and we agreed on the present
`record, “that the Examiner misapprehended the correspondent node
`described in Ishiyama as representing an endpoint of an IPSec tunnel.” Id.
`(citing Pet. 20; Ex. 1002 ¶¶ 33–36) (internal quotations omitted).
`We elaborated that Petitioner identified “sufficiently that the Examiner erred
`in withdrawing a rejection based on Ishiyama after security gateway
`limitations were added to the claims” because, as Petitioner correctly
`asserted, “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 mobile computer via an established IPSec tunnel.” Id.
`
`9
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`at 15–16 (citing Pet. 18–21).5 Patent Owner fails to show how we
`misapprehended or overlooked anything in these findings or analysis.
`Accordingly, we are not persuaded by Patent Owner’s arguments of error in
`our analysis of Becton, Dickinson factor (e).
`
`IV. CONCLUSION
`
`Having considered Patent Owner’s arguments and the evidence of
`record, Patent Owner has failed to show that we misapprehended or
`overlooked arguments or evidence or otherwise abused our discretion in our
`Decision Granting Institution.
`
`V. ORDER
`
`Accordingly, it is hereby
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`5 Similarly, in the context of the ’581 patent, we were “persuaded that
`Petitioner (by making a sufficient showing that Ishiyama discloses a security
`gateway) has demonstrated that the Examiner erred by not applying
`Ishiyama during the examination of either the ’810 patent or the ’581 patent
`in the manner Petitioner argues.” Apple Inc. v. MPH Techs. Oy, IPR2019-
`00820, Paper 10, *17 (PTAB).
`
`10
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`PETITIONER:
`
`Michael Specht
`Daniel Block
`Timothy Tang
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`ttang-ptab@sternekessler.com
`
`
`PATENT OWNER:
`
`James Carmichael
`CARMICHAEL IP LAW, PLLC
`jim@carmichaelip.com
`
`Christopher Lee
`Richard Megley
`Brian Haan
`Ashley LaValley
`LEE SHEIKH MEGLEY & HAAN LLC
`clee@leesheikh.com
`rmegley@leesheikh.com
`bhaan@leesheikh.com
`alavalley@leesheikh.com
`
`Kenneth Weatherwax
`Patrick Maloney
`Jason Linger
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`11
`
`
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