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.
`
`MPH TECHNOLOGIES OY,
`Patent Owner.
`____________
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`Case IPR2019-00820
`Patent 7,937,581
`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`
`Patent 7,937,581
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MPH TECHNOLOGIES OY,
`Patent Owner.
`____________
`
`Case IPR2019-00820
`Patent 7,937,581
`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`Case IPR2019-00820
`Patent 7,937,581
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`Page
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`I.
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`INTRODUCTION ............................................................................................ 1
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`II.
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`INSTITUTION SHOULD BE DENIED UNDER 35 U.S.C. § 325(d) ......... 3
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`A.
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`The Examiner Conducted A Thorough Examination .........................10
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`B.
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`C.
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`D.
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`E.
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`F.
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`Petitioner’s Primary Reference, Ishiyama, Was Fully Discussed, And
`Was The Basis Of A Rejection That Was Traversed And Overcome,
`During Prosecution Of The Parent Application In Connection With
`Substantially The Same Arguments Raised Here ...............................11
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`Ahonen Was Fully and Repeatedly Discussed, And Formed The Basis
`Of Three Rejections During Prosecution Of The Parent And
`Continuation Applications In Relation To The Same Argument Raised
`In The Petition .....................................................................................15
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`Petitioner Fails To Show That Its Reliance On Murakawa Is Not
`Substantially The Same As The Examiner’s Reliance On Ahonen ....22
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`Petitioner Fails To Show That Its Reliance On Forslöw Is Not
`Substantially The Same As The Examiner’s Reliance On Ahonen ....24
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`The Applicant Admitted Prior Art (AAPA) Mentioned In The Petition
`Was Already Presented To The Examiner ..........................................26
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`G.
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`The Section 325(d) Factors Favor Denying The Petition ...................29
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`1.
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`2.
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`3.
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`The Similarities And Material Differences Between The
`Asserted Art And The Prior Art Involved During
`Examination ..............................................................................30
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`The Cumulative Nature Of The Asserted Art And The Prior Art
`Involved During Examination...................................................30
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`The Extent To Which The Asserted Art Was Evaluated During
`Examination, Including Whether The Prior Art Was The Basis
`For Rejection .............................................................................31
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`4.
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`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 ....................................................................................33
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`5. Whether Petitioner Has Pointed Out Sufficiently How The
`Examiner Erred In Its Evaluation Of The Asserted Prior Art ..38
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`6.
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`The Extent To Which Additional Evidence And Facts Presented
`In The Petition Warrant Reconsideration Of Prior Art Or
`Arguments .................................................................................42
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`H.
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`Conclusion Regarding § 325(d) Factors .............................................46
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`III. INSTITUTION SHOULD BE DENIED BECAUSE THE PETITION
`FAILS TO SHOW THAT THE ISHIYAMA-MURAKAWA
`COMBINATION RENDERS THE CLAIMS OBVIOUS (ALL
`CLAIMS, ALL GROUNDS) .......................................................................46
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`A.
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`Ishiyama Does Not Disclose A “Security Gateway” ..........................47
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`1.
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`Ishiyama Is Directed To A Specific Improvement To
`Mobile IP ...................................................................................48
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`2. Mobile IP Does Not Use A Security Gateway .........................51
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`3.
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`4.
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`5.
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`6.
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`Ishiyama’s Figure 4 And Accompanying Disclosure Confirm
`That The Correspondent Host Is An End Point And Not A
`“Security Gateway”...................................................................52
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`During Prosecution of the Parent Application, The Applicant
`Traversed A Rejection Based On Ishiyama On The Basis That
`Ishiyama Does Not Disclose A “Security Gateway” ................54
`
`Ishiyama Discloses That The Correspondent Host (CN) Can
`Initiate Calls To The Mobile Computer, Which Is Further Proof
`That It Is Not A “Security Gateway” ........................................55
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`Petitioner’s Theory Of What Constitutes A “Security Gateway”
`Is Contradictory And Internally Inconsistent............................57
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`B.
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`C.
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`The Ishiyama Combination Does Not Disclose The Request Or Reply
`Message Limitations............................................................................59
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`The Ishiyama Combination Does Not Disclose The “Other
`Terminal” .............................................................................................60
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`IV. CONCLUSION...............................................................................................64
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`TABLE OF AUTHORITIES
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`Case IPR2019-00820
`Patent 7,937,581
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`Page(s)
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`CASES
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`Arendi S.A.R.L. v. Apple Inc.
`832 F.3d 1355 (Fed. Cir. 2016) ................................................................... 61, 62
`
`Credit Acceptance Corp. v. Westlake Servs.,
`859 F.3d 1044 (Fed. Cir. 2017) ............................................................................ 4
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`DSS Tech. Mgmt., Inc. v. Apple Inc.,
`885 F.3d 1367 (Fed. Cir. 2018) ................................................................... 61, 62
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`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) ..........................................................................61
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`KSR Int’l Co. v. Teleflex Inc.,
`82 USPQ2d 1385 (2007).................................................................. 14, 19, 38, 62
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`ADMINISTRATIVE DECISIONS
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`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (informative) ................. passim
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`Canon Inc. v. Papst Licensing GmbH & Co. KG,
`IPR2016-01202, Paper 15 (PTAB Dec. 15, 2016) .............................................29
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`Cisco Systems, Inc., v. C-Cation Techs., LLC,
`IPR2014-0454, Paper 12 (PTAB Aug. 29, 2014) ...............................................63
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`Cloud9 Techs. LLC v. IPC Systems, Inc.,
`IPR2017-01615, Paper 8 (PTAB Jan. 10, 2018) ......................................... 27, 28
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`Cosmax Co. Ltd. v. AmorePacific Corp.,
`IPR2018-01516, Paper 8 (PTAB Feb. 20, 2019) ................................................43
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`Dorco Co., Ltd. v. The Gillette Co., LLC,
`IPR2017-00500, Paper 7 (PTAB June 21, 2017) .................................. 29, 44, 45
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`Edge Endo, LLC v. Scianamblo,
`IPR2018-01321, Paper 15 (PTAB Jan. 14, 2019) ...................................... passim
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`Edwards Lifesciences Corp. v. Boston Sci. Scimed, Inc.,
`IPR2017-00072, Paper 8 (PTAB Apr. 21, 2017) ...............................................27
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`Fox Factory, Inc. v. SRAM, LLC,
`IPR2016-01876, Paper 8 (PTAB Apr. 3, 2017) ................................................... 7
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`Fox Factory, Inc. v. SRAM, LLC,
`IPR2017-01439, Paper 7 (PTAB Dec. 8, 2017) ................................................... 8
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`Google LLC v. Uniloc Luxembourg S.A.,
`IPR2017-01665, Paper 10 (PTAB Jan. 11, 2018) ................................................ 8
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`Guardian Building Prods., Inc. v. Manville,
`IPR2017-00633, Paper 13 (PTAB July 26, 2017) ..........................................7, 40
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`Indivior Inc. v. Rhodes Pharm. L.P.,
`IPR2018-00795, Paper 23 (PTAB Oct. 4, 2018) ......................................... 10, 39
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`Juniper Networks, Inc. v. Mobile Telecomm’ns Techs., LLC,
`IPR2017-00642, Paper 31 (PTAB Mar. 14, 2018) .............................................45
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`Juniper Networks, Inc. v. Mobile Telecomm'ns Techs., LLC,
`IPR2017-00642, Paper 24 (PTAB July 27, 2017) ..............................................41
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`Microsoft Corp. v. Bradium Techs. LLC,
`IPR2015-01435, Paper 15 (PTAB Dec. 23, 2015) .............................................63
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`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sep. 12, 2018) (precedential) ................ passim
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`Nora Lighting, Inc. v. Juno Mfg., LLC,
`IPR2015-00601, Paper 13 (PTAB Aug. 12, 2015) ............................................... 8
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`Novartis Pharms. Corp. v. Plexxikon, Inc.,
`IPR2018-01287, Paper 17 (PTAB Jan. 16, 2019) ................................................ 7
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`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V.,
`IPR2017-01642, Paper 10 (PTAB Jan. 16, 2018) ..............................................37
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`Telebrands Corp. v. Tinnus Enters., LLC,
`PGR2017-00024, Paper 15 (PTAB Nov. 30, 2017) ...........................................38
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`W. Pharm. Servs., Inc. v. Sanofi-Aventis Deutschland GmbH,
`IPR2018-01162, Paper 7 (PTAB Dec. 6, 2018) .................................................41
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`Ziegman, N.P.Z., Inc. v. Stephens,
`IPR2015-01860, Paper 11 (PTAB Feb. 24, 2016) ................................................ 7
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`STATUTES
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`35 U.S.C. § 325(d) ........................................................................................... passim
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`
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`REGULATIONS
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`Office Patent Trial Practice Guide,
`83 Fed. Reg. 39,989 (Aug. 2018 Update) ...........................................................63
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`OTHER AUTHORITIES
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`H.R. Rep. No. 112-98, pt. 1 (2011)............................................................................ 7
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`MPEP 609.02 II.A.2 ...................................................................................... 6, 10, 39
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`EXHIBIT LIST
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`2001 Network Working Group Request for Comments: 2002 (C. Perkins, ed.)
`(Oct. 1996) (“RFC 2002”).
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`2002 Declaration of Richard B. Megley, Jr. (“Megley Decl.”).
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`2003 Petition in IPR2019-00819
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`I.
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`INTRODUCTION
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`The ’581 Patent is a continuation of the ’810 Patent that Petitioner
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`challenged in IPR2019-00819. Petitioner challenges both Patents using the same
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`set of four references, and its unpatentability arguments are substantially similar
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`across the two petitions.
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`Just as in IPR2019-00819, the present Petition is just the type of
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`inappropriate second bite at the apple that Section 325(d) was designed to prevent.
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`Indeed, given the similarities across the proceedings, the present Petition would
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`amount to a third bite for Petitioner.
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`The Petition’s primary reference, Ishiyama, was fully discussed during the
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`Office’s original examination of the challenged claims of the parent application,
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`and formed the basis of a rejection based on the same or substantially similar
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`arguments as those in this Petition. The Petition’s secondary reference, Ahonen,
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`was also fully and repeatedly discussed, forming the basis of three rejections in the
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`course of examination of the parent and continuation patents, again in connection
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`with the same argument as in the present Petition. All those rejections were
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`traversed and overcome during examination, which collectively included no fewer
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`than seven Office Actions, all by the same Examiner for both applications,
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`whereupon the Office passed the claims to issue in both Patents. As precedent
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`confirms, the presentation, consideration, and discussion of these references and
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`arguments by the Examiner fully qualify as prior presentation to the Office for
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`purposes of denying institution. Becton, Dickinson & Co. v. B. Braun Melsungen
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`AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (informative).
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`Just as in IPR2019-00819, the Petition attempts to differentiate itself from
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`this full and thorough examination—now including the additional examination of
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`the present ’581 continuation Patent—by tossing in two “new” references and
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`mentioning “applicant-admitted” art with respect to a few claim limitations. But
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`the nominally new references are substantially the same as, inter alia, the Ahonen
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`reference just mentioned, and the “applicant-admitted” art was already presented to
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`the Examiner through discussion in the specification itself. Just as with the ’810
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`parent Patent, Petitioner now tells us that, notwithstanding § 325(d), all of these
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`previously presented references and arguments should be reviewed by the Office
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`again. Section II. The Board should reject this assertion.
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`Even if the merits were to be considered, the Petition still fails for numerous
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`reasons to demonstrate a reasonable likelihood of prevailing as to any claim, just as
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`is true for the substantially similar arguments made in IPR2019-00819. As the
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`extensive examination of these disclosures already established, Petitioner’s lead
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`reference, Ishiyama, has no teaching or suggestion of a security gateway between
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`one computer and another computer, as the claims require; rather, Ishiyama
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`teaches, if anything, that the use of a third computer between the mobile computer
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`and correspondent, as claimed and described in the ’581 Patent, should be avoided,
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`so that the correspondence can be made directly by an end-to-end connection
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`between the mobile terminal and correspondent. What the Petition points to in
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`Ishiyama as a “gateway” is not a gateway at all, but the correspondent to which
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`Ishiyama directly sends its packets. Ishiyama also lacks the claimed request and
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`reply messages to and from the address of the claimed security gateway, and
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`adding Murakawa provides nothing to fill that gap. And the claimed “other
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`terminal” is also nowhere in Ishiyama. Section III.
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`In sum, the present Petition is substantially indistinguishable from, raises the
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`same references as, makes substantially the same unpatentability arguments as, and
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`shares the same fatal flaws as the Petition in IPR2019-00819. Those arguments
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`have not improved with repetition. The Board should deny institution.1
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`II.
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`INSTITUTION SHOULD BE DENIED UNDER 35 U.S.C. § 325(d)
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`“35 U.S.C. § 325(d) ... provides the Director with discretion to ‘take into
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`account whether, and reject the petition or request because, the same or
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`substantially the same prior art or arguments previously were presented to the
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`1 Due to space considerations and because partial institution is not permitted,
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`this Preliminary Response only addresses selected arguments sufficient to dispose
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`of the Petition as a whole.
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`Office.’” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1053 (Fed.
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`Cir. 2017). Institution of the present Petition should be denied under § 325(d)
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`because the issues it raises were already considered, discussed, and overcome
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`during the original examination of the ’810 Patent and its challenged claims. NHK
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`Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8, 11-12 (PTAB
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`Sep. 12, 2018) (precedential) (hereinafter “NHK Spring”) (explaining that
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`“[i]nstitution of inter partes review is discretionary” and “Section 325(d) gives [the
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`Director] express discretion to deny a petition when ‘the same or substantially the
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`same prior art or arguments previously were presented to the Office.’”).
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`Rather than present the Office with new prior art teachings and patentability
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`questions, the Petition faults the Examiner, alleging that “[t]he Examiner did not
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`conduct a thorough examination.” Pet., 9 (capitalization altered). In so doing, the
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`Petition virtually ignores the prosecution of the ’581 Patent’s immediate parent
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`application, which was examined by the same Examiner, and which considered and
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`discussed the same issues raised in the Petition. In the prosecution of the parent
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`and continuation applications, the Examiner thoroughly and properly considered
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`the same references and arguments, discussing them back and forth with the
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`Applicant in rejections and counter-arguments. Petitioner’s requested do-over is
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`neither necessary nor appropriate.
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`The Petition’s two leading references, Ishiyama and Ahonen, were both
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`considered and discussed during the examination of this Patent and its immediate
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`parent; both were relied upon by the Examiner to reject pending claims; and those
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`rejections were traversed and overcome. Although the Petition adds two secondary
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`references, Murakawa and Forslöw, both are cumulative of Ahonen. The Petition
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`mentions so-called “applicant-admitted” prior art, but that “art” was already
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`discussed in the original specification, and the Examiner was well aware of these
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`disclosures when he discussed the references and allowed the claims.
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`The Petition does not even present the Office with substantially new
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`arguments concerning these old references. The Petition’s arguments are
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`essentially cut-and-pasted from, or otherwise closely mirror, those already
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`presented in the file history and the parent file history. This is not surprising,
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`considering that the combined prosecution of the parent and continuation
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`application collectively spanned seven Office Actions and seven Responses,
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`including extensive and detailed discussion of the subject matter of the claims and
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`references.2
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`2 For the six Office Actions and Responses in the examination of the parent
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`of the present Patent, see Ex. 1020 [’810 Prosecution History] 0119-0125 (first
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`Office Action), 0129-0137 (first Response), 0144-0150 (second Office Action),
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`Instead of addressing § 325(d) specifically, Petitioner faults the Examiner,
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`alleging that he did not conduct a thorough examination. Specifically, the Petition
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`charges that “[t]he Examiner did not conduct a thorough examination during
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`prosecution.” Pet., 9. However, Petitioner misunderstands the law under
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`§ 325(d).
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`The references considered during a parent application are relevant for the
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`child application for § 325(d) purposes, especially where, as here, the examiners
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`are the same. Edge Endo, LLC v. Scianamblo, IPR2018-01321, Paper 15, 15-16
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`(PTAB Jan. 14, 2019); see also MPEP § 609.02-II.A.2. And because “the same or
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`substantially the same art and arguments were presented to the Office” previously,
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`and “the challenged patent underwent a comprehensive examination” that
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`“expressly considered and substantively applied” those references and arguments
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`“against the claims in a series of Office actions,” the Board need not again revisit
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`0163-0176 (second Response), 0178-0184 (third Office Action), 0191-0195 (third
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`Response), 0214-0221 (fourth Office Action), 0227-0238 (fourth Response), 0244-
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`0251 (fifth Office Action), 0260-0265 (fifth Response), 0270-0277 (sixth Office
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`Action), 0286-0300 (sixth Response). For the additional Office Action and
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`Response in the examination of the present Patent, see Ex. 1003 [’581 Prosecution
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`History] 0074-0081 (seventh Office Action), 0052-0067 (seventh Response).
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`and second-guess the substance of these recycled arguments in order for institution
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`to be denied. E.g., Guardian Building Prods., Inc. v. Manville, IPR2017-00633,
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`Paper 13, 11 (PTAB July 26, 2017) (emphasis by Board) (denying institution).
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`Section 325(d) discretion is exercised precisely to avoid the need to
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`substantially reconsider arguments that the Office has already considered, unless,
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`unlike here, “‘Petitioner has pointed out sufficiently how the Examiner erred in its
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`evaluation of the asserted prior art’” and “‘additional evidence and facts presented
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`in the Petition warrant reconsideration of prior art or arguments.’” NHK Spring, 12
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`(precedential) (quoting Becton, Dickinson, IPR2017-01586, Paper 8, 17-18).
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`In considering denial of institution under § 325(d), “the Board weighs
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`petitioners’ desires to be heard against the interests of patent owners, who seek to
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`avoid harassment and enjoy quiet title to their rights.” Ziegman v. Stephens,
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`IPR2015-01860, Paper 11, 12-13 (PTAB Feb. 24, 2016) (expanded panel) (citing
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`H.R. Rep. No. 112-98, pt. 1, 48 (2011)). It also considers “the interests in
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`conserving the resources of the Office and granting patent owners repose on issues
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`and prior art that have been considered previously.” Fox Factory, Inc. v. SRAM,
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`LLC, IPR2016-01876, Paper 8, 7 (PTAB Apr. 3, 2017); see also, e.g., Novartis
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`Pharms. Corp. v. Plexxikon Inc., IPR2018-01287, Paper 17, 15 (PTAB Jan. 16,
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`2019) (“We recognize that Petitioner has a direct interest in pursuing the instant
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`Petition, but we also recognize the burden and expense to Patent Owner in having
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`to defend the ’640 patent based on substantially the same arguments already
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`considered by the Office.”); Fox Factory, Inc. v. SRAM, LLC, IPR2017-01439,
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`Paper 7, 8 (PTAB Dec. 8, 2017) (“The similarity of the grounds in this proceeding
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`and the ’831 Reexamination, coupled with the fact that [this reference] has already
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`been considered in the ’744 Reexamination, indicates that it would be an
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`inefficient use the Office’s resources to consider essentially the same ground
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`again.”); Nora Lighting, Inc. v. Juno Mfg., LLC, IPR2015-00601, Paper 13, 11-12
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`(PTAB Aug. 12, 2015) (“although the references are not the same as those
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`submitted for ex parte reexamination, the nature of the evidence as to the prior art
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`at the time of the invention and the arguments presented are substantially the same
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`as that which already has been presented to the Office in reexamination.”); cf.
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`Google LLC v. Uniloc Luxembourg S.A., IPR2017-01665, Paper 10, 21-22 (PTAB
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`Jan. 11, 2018) (denying institution under § 325(d)) (“the burden of defending
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`against a subsequent case based on the same art would be substantial in having to
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`twice overcome, in two separate trials involving separate discovery and potentially
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`even a separate panel, what Petitioner admits is the same arguments concerning the
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`same combination of references”) (emphases in original, record citations omitted).3
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`3 As a factor in assessing the burden to Patent Owner, it is also noted that, as
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`mentioned, simultaneous with this Petition, Apple has filed another petition
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`This section first demonstrates that, contrary to Petitioner’s assertions, the
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`Examiner conducted a thorough examination of the’581 Patent, including
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`examination during the patent application that led to the ’810 Patent. Section II.A.
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`It then sets forth the prosecution history’s treatment of Ishiyama and Ahonen, the
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`two primary references in the Petition. Sections II.B, II.C. Next, it explains why
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`Petitioner’s use of two nominally “new” references—Murakawa and Forslöw—
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`essentially amounts to merely swapping their teachings for equivalent teachings of
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`Ahonen. Sections II.D, II.E. It then explains why the Petition’s use of “applicant-
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`admitted” prior art already presented to the Examiner and discussed in the
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`specification is yet another reason to deny institution under § 325(d). Section II.F.
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`Finally, it discusses how each § 325(d) factor set forth in the informative Becton,
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`Dickinson decision favors denial of institution. Section II.G.
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`Significantly, the Petition fails to substantively address § 325(d) at all—
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`other than to argue that the Examiner was not thorough in his examination of the
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`’581 Patent. There is no justification presented, however, for reconsideration of
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`this previously presented subject matter.
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`addressed towards the claims of the immediate parent application of the ’581
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`Patent based on the same specification. IPR2019-00819.
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`A. The Examiner Conducted A Thorough Examination
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`The Petition is based on the false premise that the Examiner did not conduct
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`a thorough examination of the ’581 Patent because he only applied two references
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`and a single Office Action. Of course, one of those references is the same Ahonen
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`reference relied on in the Petition. Ex. 1003 [’581 Prosecution History] 0075-0081.
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`More importantly, the Petition ignores the fact that the ’581 Patent was a
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`continuation application of the ’810 Patent and the same Examiner examined both
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`patents. Compare Ex.1001 [’581 Patent] 0001 with Ex. 1019 [’810 Patent] 0001;
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`see also Ex. 1003 [’581 Prosecution History] 0163 (identifying application as
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`“continuation” of prior application 10/490,932). Before allowing the ’581 Patent
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`claims to issue, the Examiner considered all of the references discussed and
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`addressed during prosecution of the ’810 Patent, including Petitioner’s lead
`
`reference, Ishiyama. Indeed, the MPEP states that, as a matter of routine during
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`prosecution, “[t]he examiner will consider information which has been considered
`
`by the Office in a parent application when examining: (A) a continuation
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`application filed under 37 CFR 1.53(b) ….” MPEP § 609.02-II.A.2.
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`The references considered during a parent application are relevant for the
`
`child application for § 325(d) purposes, especially where, as here, the “examiner
`
`for both applications” was the same. Indivior Inc. v. Rhodes Pharm. L.P.,
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`IPR2018-00795, Paper 23, 6 (PTAB Oct. 4, 2018); see also Edge Endo, IPR2018-
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`10
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`Case IPR2019-00820
`Patent 7,937,581
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`01321, Paper 15, 15-16 (“We find that the respective prosecutions of the related
`
`’361 patent, the ’504 patent, and the ’056 patent are pertinent for consideration of
`
`whether to exercise our discretion to deny institution under Section 325(d).”); see
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`also R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V., IPR2018-00632, Paper 9
`
`(PTAB Sept. 28, 2018); Becton, Dickinson, IPR2017-01586, Paper 8, 22
`
`(informative (“We are not persuaded on this record that rearranging previously
`
`substantively considered prior art, and advancing essentially the same positions
`
`raised by the Examiner during prosecution of the parent application, presents
`
`persuasive new evidence of unpatentability that was not evaluated previously by
`
`the Office.”) (emphasis added).
`
`The full original prosecution necessarily includes what transpired during
`
`examination of the ’581 Patent and its immediate parent application which
`
`matured into the ’810 Patent. When considering this full prosecution, it is
`
`abundantly clear that the examination thoroughly considered, discussed, and
`
`resolved the same issues raised in the Petition, as explained in further detail below.
`
`B.
`
`Petitioner’s Primary Reference, Ishiyama, Was Fully Discussed,
`And Was The Basis Of A Rejection That Was Traversed And
`Overcome, During Prosecution Of The Parent Application In
`Connection With Substantially The Same Arguments Raised Here
`
`The Petition relies on Ishiyama for all claims and grounds. Pet., i-ii. During
`
`examination of the immediate parent ’810 Patent, Ishiyama was already presented,
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`11
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`Case IPR2019-00820
`Patent 7,937,581
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`considered, and discussed; the Examiner used Ishiyama as a basis for rejection of
`
`pending claims; and the Applicant subsequently overcame that rejection.
`
`Petitioner admits as much in its (redundant) petition against the ’810 Patent.
`
`As noted by Petitioner (Ex. 2003 [’810 Petition] 19), in the September 26,
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`2008 Office Action, the Examiner applied Ishiyama against the then-pending
`
`claims, in which pending claim 8 recited a “security gateway” and all claims
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`recited a “mobile terminal” and an “other terminal.” Ex. 1020 [’810 Prosecution
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`History] 0214-0220; see also id., 0203-0209. The Examiner rejected the
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`independent claims, discussing Ishiyama as follows:
`
`Ishiyama discloses c) while at the second address, the mobile terminal
`
`sending a request message to the first address of the other terminal to
`
`request the other terminal to change the previously established secure
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`connection to be defined between the second address and the first
`
`address of the other terminal, and the other terminal, while at the first
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`address of the other terminal, changing and [sic] address definition of
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`the other terminal, changing and [sic] address definition of the
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`previously established secure connection from the first address to the
`
`second address ....
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`Therefore it would have been obvious to one having ordinary
`
`skill in the art at that time the invention was made to modify the
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`teaching method of Ishiyama within [another reference’s] method
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`in[ ]order to provid[e] a sufficient level of security.
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`Patent 7,937,581
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`Id., 0217 (typographical errors corrected). Furthermore, the Examiner contended,
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`the combination of another reference “and Ishiyama disclose[s] the method
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`wherein one of or both of the mobile terminal and the other terminal is a security
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`gateway protecting one or more computers.” Id., 0219 (emphasis added).
`
`
`
`Responding to the rejection, the Applicant amended the claims to add a
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`“security gateway” between the mobile terminal and other terminal in all claims,
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`not just one dependent claim, id., 0227-0239, and argued that “Ishiyama merely
`
`teaches an updating of the mobile computer address and there is no teaching or
`
`suggestion of the correspondent being a security gateway for another computer,”
`
`id., 0232-0233. In the same response the Applicant further argued that:
`
`(1)
`
`“Ishiyama merely teaches an end-to-end connection between two
`
`computers (mobile computer and correspondent).” Id., 0233;
`
`(2)
`
`in its “detailed description, Ishiyama teaches that the use of a home
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`agent (third computer) should be avoided so that correspondence can
`
`be made directly between the end-to-end connection of the mobile
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`terminal and correspondent.” Id. (emphasis in original);
`
`(3)
`
`“[t]he cited references [including Ishiyama] are void any discussion of
`
`teaching of a security gateway changing the address definition from
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`the first address to the second address of a mobile terminal in response
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`to the request message from the mobile terminal and the mobile
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`Case IPR2019-00820
`Patent 7,937,581
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`terminal sending a secure message in the secure connection from the
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`second address to the other terminal via the security gateway.
`
`Ishiyama merely teaches an end-to-end connection between two
`
`computers (mobile computer and correspondent). Both references
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`completely fail to teach sending the request message to the security
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`gateway and while at the second address the mobile terminal sending
`
`a secure message in the secure connection to the other terminal via the
`
`security gateway.” Id. (emphasis in original); and
`
`(4)
`
`there was not prima facie support to combine Ishiyama with another
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`reference under KSR Int’l Co. v. Teleflex Inc., 82 USPQ2d 1385, 1396
`
`(2007), id., 0234-0236.
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`In response, by withdrawing the rejection based on Ishiyama, the Examiner
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`indicated agreement with the Applicant that Ishiyama did not disclose or help
`
`render obvious the claims. The Examiner issued a new rejection based on entirely
`
`new references. Id., 0243-0250.
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`In sum, the Applicant traversed and overcame the Ishiyama-based rejection
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`by, inter alia, successfully arguing that Ishiyama’s correspondent host does not
`
`disclose a “security gateway” for another computer, and amending the claims to
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`add the “security gateway” (previously in a dependent claim) to all of the pending
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`claims. Despite this extensive discussion and consideration during examination of
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`the parent application, the Petition simply recycles substantially the same failed
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`arguments based on Ishiyama, as shown in Section II.G. But as the Board has
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`already found
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`in prior proceedings, “rearranging previously substantively
`
`considered prior art, and advancing essentially the same positions raised by the
`
`Examiner during prosecution of the parent application,” does not “presen[t]
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`persuasive new evidence of unpatentability that was not evaluated previously by
`
`the Office.” Be
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