Case IPR2019-00820
`Patent 7,937,581
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`MPH TECHNOLOGIES OY,
`Patent Owner,
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`Case IPR2019-00820
`Patent 7,937,581
`____________
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`PATENT OWNER’S OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`Patent 7,937,581
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.,
`Petitioner,
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`v.
`
`MPH TECHNOLOGIES OY,
`Patent Owner,
`____________
`
`Case IPR2019-00820
`Patent 7,937,581
`____________
`
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`PATENT OWNER’S OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`Pursuant to 37 C.F.R. § 42.64(b)(1) and the Federal Rules of Evidence
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`(“FRE”), Patent Owner MPH Technologies Oy (“Patent Owner”) hereby objects to
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`the evidence presented in the following document submitted by Petitioner Apple
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`Inc. (“Petitioner”).
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`Nothing in this paper should be construed as an admission that any rights of
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`Patent Owner would have been waived or forfeited had the paper or any objection
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`herein not been filed, or that 37 C.F.R. § 42.64(b) applies to any of the objections
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`herein if § 42.64(b) would not otherwise apply. The objections herein are
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`premised upon § 42.64 potentially being determined to apply to the document in
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`question and are submitted solely to preserve the rights of Patent Owner should
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`§ 42.64(b) be determined to apply.
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`Under 37 C.F.R. § 42.23(b), a reply cannot be used to belatedly submit new
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`contentions, grounds or evidence to make out a prima facie case of unpatentability.
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`A reply may only respond to arguments raised in the corresponding patent owner
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`response. Id. The November 2019 Consolidated Trial Practice Guide (“Trial
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`Guide”) states that “Petitioner may not submit new evidence or argument in reply
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`that it could have presented earlier, e.g. to make out a prima facie case of
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`unpatentability.” Trial Guide, 73.
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`In accordance with 37 C.F.R. § 42.64, Patent Owner hereby objects to the
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`following evidence referenced in Petitioner’s Reply, Paper 26, filed on April 1,
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`- 1 -
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`2020: Exhibit 1022, Declaration of David Goldschlag, Ph.D in Support of
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`Petitioner’s Reply to the Patent Owner Response, including the subject matter
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`addressed in pars. 15, 16-25, 20-25, 31-32, 39-40 and 63-67.
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`Specifically, Patent Owner objects to the evidence as submitted in par. 15
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`and elsewhere to the effect that allegedly “the combination of Ishiyama and
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`Murakawa teaches the claimed security gateway” because supposedly “Ishiyama’s
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`use of the IPSec protocol would have made it obvious to a POSITA to use a
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`‘security gateway’ in view of Ishiyama’s disclosure of a ‘correspondent host.’”
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`This testimony violates § 42.23(b) and the Trial Guide because it is new evidence
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`that could have been presented earlier in the original petition for IPR. This
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`testimony is also inadmissible under FRE 403 because its probative value is
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`outweighed by the danger of unfair prejudice and confusion of the issues because,
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`among other things, Patent Owner is not permitted to present expert rebuttal
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`evidence in its sur-reply. See Trial Guide, 73 (“The sur-reply may not be
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`accompanied by new evidence other than deposition transcripts of . . . any reply
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`witness.”).
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`Patent Owner objects to the evidence as submitted in par. 15 and elsewhere
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`to the effect that allegedly “the combination of Ishiyama and Murakawa teaches
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`the claimed security gateway” because supposedly “Ishiyama’s disclosure of IPSec
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`tunnel mode would have even further made it obvious to a POSITA to modify
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`- 2 -
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`Ishiyama’s ‘correspondent host’ to be a ‘security gateway’.” This testimony
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`violates § 42.23(b) and the Trial Guide because it is new evidence that could have
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`been presented earlier in the original petition for IPR. This testimony is also
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`inadmissible under FRE 403 because its probative value is outweighed by the
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`danger of unfair prejudice and confusion of the issues because, among other things,
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`Patent Owner is not permitted to present expert rebuttal evidence in its sur-reply.
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`See Trial Guide, 73.
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`Patent Owner objects to the evidence as submitted in pars. 16-25 and
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`elsewhere that it would have allegedly been obvious to a POSITA from Ishiyama’s
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`use of IPSec for its correspondent host to be a security gateway because
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`supposedly IPSec only has a finite number of endpoint configurations. These
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`paragraphs also present evidence for a new “obvious to try” theory of obviousness.
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`This testimony violates § 42.23(b) and the Trial Guide because it is new evidence
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`that could have been presented earlier in the original petition for IPR. This
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`testimony is also inadmissible under FRE 403 because its probative value is
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`outweighed by the danger of unfair prejudice and confusion of the issues because,
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`among other things, Patent Owner is not permitted to present expert rebuttal
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`evidence in its sur-reply. See Trial Guide, 73.
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`Patent Owner further objects to the subject matter of pars. 16-25 on the basis
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`that they form an impermissible new ground(s) of unpatentability set forth in Ex.
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`2022 and the Reply itself. The Petitioner may not use the reply to present new
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`grounds not found in the petition. See 35 U.S.C. § 312(a)(3); SAS Institute, Inc. v.
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`Iancu, 138 S.Ct. 1348, 1356 (2018); 37 CFR § 42.23(b); Trial Guide, 73-74. Pars.
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`16-25 of Exhibit 1022 assert that IPSec has a finite number of endpoint
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`configurations (e.g., three combinations of network devices and two types of
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`endpoints, a host or a security gateway) by citation to the Frankel reference (Ex.
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`1008) and the RFC 2401 reference (Ex. 1011). However, Grounds 1-3 in this IPR
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`do not include the Frankel reference or RFC 2401 reference. As presented in the
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`Petition and set forth in the Institution Decision, the instituted Grounds are
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`“(1) claims 1, 2, 4, 6, 7, and 9 under 35 U.S.C. § 103(a) over Ishiyama and
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`Murakawa; (2) claims 3 and 5 under 35 U.S.C. § 103(a) over Ishiyama,
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`Murakawa, and Ahonen; and (3) claim 8 under 35 U.S.C. § 103(a) over Ishiyama,
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`Murakawa, and Forslöw.” Instn., Paper 10, 42. In sum, Petitioner’s evidence
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`constitutes an impermissible new ground including the Frankel and RFC 2401
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`references.
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`Patent Owner further objects to the new ground(s) under FRE 403 because
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`the probative value is outweighed by the danger of unfair prejudice and confusion
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`of the issues because, among other things, Patent Owner is not permitted to present
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`expert rebuttal evidence in its sur-reply. See Trial Guide, 73.
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`- 4 -
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`Patent Owner objects to the evidence as submitted in pars. 20-25 and
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`elsewhere regarding the implementation of IPSec in the VPN context as a
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`supposed “use case” starting point for a POSITA to combine references in order to
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`reconstruct the claimed invention. This testimony violates § 42.23(b) and the Trial
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`Guide because it is new evidence that could have been presented earlier in the
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`original petition for IPR. This testimony is also inadmissible under FRE 403
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`because its probative value is outweighed by the danger of unfair prejudice and
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`confusion of the issues because, among other things, Patent Owner is not permitted
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`to present expert rebuttal evidence in its sur-reply. See Trial Guide, 73.
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`Patent Owner objects to the evidence as submitted in pars. 31-32 and
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`elsewhere to the effect that supposedly the mobile computer’s Care-Of address
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`(“gateway address”) and “SA Gateway Update” disclose a security gateway and
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`that, supposedly, “[i]n view of this description, a POSITA would have readily
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`understood that Ishiyama describes an endpoint of its IPSec tunnel as being a
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`gateway or security gateway.” This testimony violates § 42.23(b) and the Trial
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`Guide because it is new evidence that could have been presented earlier in the
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`original petition for IPR. This testimony is also inadmissible under FRE 403
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`because its probative value is outweighed by the danger of unfair prejudice and
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`confusion of the issues because, among other things, Patent Owner is not permitted
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`to present expert rebuttal evidence in its sur-reply. See Trial Guide, 73.
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`Patent Owner objects to the evidence as submitted in pars. 39-40 and
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`elsewhere to the effect that supposedly Ishiyama “refers to its correspondent host
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`as a ‘gateway.’” This testimony violates § 42.23(b) and the Trial Guide because it
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`is new evidence that could have been presented earlier in the original petition for
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`IPR. This testimony is also inadmissible under FRE 403 because its probative
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`value is outweighed by the danger of unfair prejudice and confusion of the issues
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`because, among other things, Patent Owner is not permitted to present expert
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`rebuttal evidence in its sur-reply. See Trial Guide, 73.
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`Patent Owner objects to the evidence as submitted in pars. 63-67 and
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`elsewhere to the effect that, supposedly, dependent “claims 3 and 5 would have
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`been obvious in view of (1) the combination of Ishiyama and Murakawa.” This
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`testimony violates § 42.23(b) and the Trial Guide because it is new evidence that
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`could have been presented earlier in the original petition for IPR. This testimony is
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`also inadmissible under FRE 403 because its probative value is outweighed by the
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`danger of unfair prejudice and confusion of the issues because, among other things,
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`Patent Owner is not permitted to present expert rebuttal evidence in its sur-reply.
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`See Trial Guide, 73.
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`Furthermore, the subject matter of pars. 63-67 are objected to because they
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`form an impermissible new ground of unpatentability set forth in Ex. 2022 and the
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`Reply itself. The Petitioner may not use the reply to present new grounds not found
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`in the petition. See 35 U.S.C. § 312(a)(3); SAS Institute, Inc. v. Iancu, 138 S.Ct.
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`1348, 1356 (2018); 37 CFR § 42.23(b); Trial Guide, 73-74. As presented in the
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`Petition and set forth in the Institution Decision, the instituted Grounds are “(1)
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`claims 1, 2, 4, 6, 7, and 9 under 35 U.S.C. § 103(a) over Ishiyama and Murakawa;
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`(2) claims 3 and 5 under 35 U.S.C. § 103(a) over Ishiyama, Murakawa, and
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`Ahonen; and (3) claim 8 under 35 U.S.C. § 103(a) over Ishiyama, Murakawa, and
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`Forslöw.” Instn., Paper 10, 42. Claims 3 and 5 were not asserted to be unpatentable
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`under Ground 1.
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`Patent Owner further objects to the new ground under FRE 403 because its
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`probative value is outweighed by the danger of unfair prejudice and confusion of
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`the issues because, among other things, Patent Owner is not permitted to present
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`expert rebuttal evidence in its sur-reply. See Trial Guide, 73.
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`Respectfully submitted,
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`____/ James T. Carmichael /_________
`James T. Carmichael, Reg. No. 45,306
`CARMICHAEL IP, PLLC
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`Date: April 8, 2020
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`Case IPR2019-00820
`Patent 7,937,581
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the following documents were served
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`by electronic service, by agreement between the parties, on the date signed below:
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`PATENT OWNER’S OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`The names and address of the parties being served are as follows:
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`Michael D. Specht
`Daniel S. Block
`Steven M. Pappas
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`mspecht-PTAB@sternekessler.com
`dblock-PTAB@sternekessler.com
`spappas-PTAB@sternekessler.com
`PTAB@sternekessler.com
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`Respectfully submitted,
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` / James Carmichael /
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`Date: April 8, 2020
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