Paper No. 10
`Trials@uspto.gov
`Entered: October 7, 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 IPR2019-00820
`Patent 7,937,581 B2
`__________________________
`
`Before KAMRAN JIVANI, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`JIVANI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: October 7, 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 IPR2019-00820
`Patent 7,937,581 B2
`__________________________
`
`Before KAMRAN JIVANI, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`JIVANI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`INTRODUCTION
`I.
`Pursuant to 35 U.S.C. § 311, Petitioner Apple Inc. requests an inter
`partes review of claims 1–9 of U.S. Patent No. 7,937,581 B2 (Ex. 1001, “the
`’581 patent”). Paper 2 (“Petition” or “Pet.”). Patent Owner MPH
`Technologies Oy opposes institution of the requested review. Paper 8
`(“Preliminary Response” or “Prelim. Resp.”). After receiving the
`Preliminary Response, Petitioner requested authorization to file a reply in
`support of its Petition; however, we denied the request for failure to show
`good cause, as required. Paper 9.
`We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314,
`which provides that an inter partes review may not be instituted unless the
`information presented in the Petition “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.” Having considered the arguments and
`evidence of record, we determine that Petitioner has shown a reasonable
`likelihood of prevailing with respect to at least one of the claims challenged
`in the Petition. Accordingly, we institute inter partes review of claims 1–9
`based on all of the grounds identified in the Petition, as discussed herein.
`
`II.
`
`BACKGROUND
`A. The Challenged Patent (Ex. 1001)
`The ’581 patent states that “[t]he object of the invention is to ensure
`secure forwarding of messages from and to mobile terminals.” Ex. 1001,
`6:42–44. The ’581 patent discloses that its invention is “[e]specially . . .
`meant for IPSec connections.” Id. at 1:15–17.
`According to the ’581 patent, “IP security protocols (IPSec) provides
`the capability to secure communications between arbitrary hosts, e.g. across
`
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`IPR2019-00820
`Patent 7,937,581 B2
`a LAN, across private and public wide area networks (WANs) and across the
`internet.” Id. at 1:59–62. More specifically, “IPSec can encrypt and/or
`authenticate traffic at IP level.” Id. at 2:5. In so doing, “IPSec ensures
`confidentiality integrity, authentication, replay protection, limited traffic
`flow confidentiality, limited identity protection, and access control based on
`authenticated identities.” Id. at 1:67–2:3. “In particular, identity protection
`is not completely handled by IPSec, and neither is denial-of-service
`protection.” Id. at 1:56–58.
`The ’581 patent states that “IPSec is defined by certain documents,
`which contain rules for the IPSec architecture.” Id. at 2:8–9. These rules
`describe, inter alia, providing “access control based on the distribution of
`cryptographic keys.” Id. at 2:19–22. The ’581 patent also describes the
`concept of a Security Association (“SA”), which according to the ’581
`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 2:24–26.
`The ’581 patent discloses that IPSec supports two modes of operation
`(i.e., transport mode and tunnel mode). Id. at 3:10–11. “Typically, transport
`mode is used for end-to-end communication between two hosts.” Id. at
`3:14–17. “Tunnel mode . . . is generally used for sending messages through
`more than two components,” and is often used “when one or both ends of a
`SA is a security gateway, such as a firewall or a router that implements
`IPSec.” Id. at 3:19–24.
`“IPSec is intended to work with static network topolog[ies],”
`according to the ’581 patent. Id. at 4:13–15. 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 1:59–62.
`
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`IPR2019-00820
`Patent 7,937,581 B2
`Figure 1, shown below, “illustrates an example of a telecommunication
`network to be used in the invention” of the ’581 patent. Id. at 8:37–38.
`
`
`
`
`Figure 1’s example telecommunication network comprises
`
`“computer 1 . . .[,] a client computer[,] 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 8:51–55.
`The ’581 patent adds: “Computer 2 [can] be a security gateway for a third
`computer 3. Then, the messages sent from computer 2 to computer 3 are
`sent in plaintext.” Id. at 8:55–57.
`
`The ’581 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 4:6–19. The ’581 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
`4:19–30.
`
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`IPR2019-00820
`Patent 7,937,581 B2
`
`To address these problems, the ’581 patent discloses avoiding a full
`re-negotiation between the tunnel endpoints, when computer 1 moves
`networks. E.g., id. at 9:29–33 (describing prior art requires a full re-
`negotiation), 9:60–63. More specifically, the ’581 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 9:45–10:5, 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 ’581 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 9:45–10:5.
`According to the ’581 patent, this request can be “encrypt[ed] and/or
`authenticat[ed] . . . us[ing] the same IPSec SA [that is used] for protecting
`both data and registration traffic.” Id. at 10:1–5.
`
`The ’581 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 10:24–36. “[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 10:8–10.
`
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`IPR2019-00820
`Patent 7,937,581 B2
`B. The Challenged Claims
`Petitioner challenges claims 1–9 of the ’581 patent, of which claims 1
`and 9 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 having a first address
`of the mobile terminal as a first end-point and a gateway address
`of the security gateway as a second end-point,
`
`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, 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. 1001, 10:50–11:3.
`
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`IPR2019-00820
`Patent 7,937,581 B2
`C. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`References
`Basis1 Challenged Claim(s)
`1.
`Ishiyama2 and Murakawa3
`§ 103(a) 1, 2, 4, 6, 7, 9
`2.
`Ishiyama, Murakawa, and
`§ 103(a) 3, 5
`Ahonen4
`Ishiyama, Murakawa, and
`Forslöw5
`Pet. 4. Petitioner submits the Declaration of David Goldschlag, Ph.D.
`(Ex. 1002) in support of its arguments.
`
`3.
`
`§ 103(a) 8
`
`D. Related Matters
`Petitioner identifies the following district court litigation involving the
`’581 patent: MPH Techs. Oy v. Apple Inc., Case No. 4:18-cv-05935-PJH
`(N.D. Cal.), filed September 27, 2018. Pet. 2–3. The parties also identify
`Apple Inc. v. MPH Techs. Oy, IPR2019-00819 (PTAB) involving U.S.
`Patent No. 7,620,810 B2 (“the ’810 patent”), of which the ’581 patent is a
`continuation. See Pet. 2–3; Paper 7, 1.
`
`35 U.S.C. § 325(d) ARGUMENTS
`III.
`Patent Owner argues that we should exercise our discretion and deny
`
`institution under § 325(d). Prelim. Resp. 3–46. The Director has discretion
`to institute an inter partes review, and has delegated that discretion to the
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’581
`patent issued from an application filed before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`2 U.S. Patent No. 6,904,466 B1 (issued June 7, 2005) (Ex. 1004).
`3 U.S. Patent No. 7,028,337 B2 (issued Apr. 11, 2006) (Ex. 1005).
`4 U.S. Patent No. 6,976,177 B2 (issued Dec. 13, 2005) (Ex. 1006).
`5 U.S. Patent No. 6,954,790 B2 (issued Oct. 11, 2005) (Ex. 1007).
`
`7
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`IPR2019-00820
`Patent 7,937,581 B2
`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
`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)
`The ’581 patent is a continuation of the ’810 patent. Ex. 1001, 1:6–8.
`
`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.6
`Ex. 1020, 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
`
`
`6 U.S. Patent No. 6,587,680 B1 (issued July 1, 2003).
`
`8
`
`
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`IPR2019-00820
`Patent 7,937,581 B2
`Ala-Laurila nor Ishiyama disclosed this intervening security gateway. Id. at
`232–38.
`
`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 3 and
`5) and Luo.7 Ex. 1020, 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.8 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 of the ’810 patent. Id.
`at 314–20.
`
`Turning back to the ’581 patent, the Examiner’s sole office action
`included a double patenting rejection over the claims of the ’810 patent and
`an obviousness rejection of all the pending claims over Ahonen and Inoue.
`Ex. 1003, 74–81. In response, the Applicant filed a terminal disclaimer and
`
`
`7 U.S. Patent No. 7,146,428 B2 (issued Dec. 5, 2006).
`8 U.S. Patent No. 6,170,057 B1 (issued Jan. 2, 2001).
`
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`IPR2019-00820
`Patent 7,937,581 B2
`argued that Ahonen and Inoue failed to disclose the claimed subject matter,
`as amended. Id. at 52–69. In particular, the Applicant amended the then-
`pending claims (id. at 53) and argued that “Inoue merely teaches the mobile
`computer 2 transmitting a registration message containing information of the
`current location to the home agent 5” and that “the home agent 5 does not
`and could not change anything regarding the secure connection since the
`secure connection is between the gateway and the mobile computer 2.” Id.
`at 58 (emphasis omitted). The Examiner then allowed the claims, without
`stating the reasons for allowance. Id. at 12–13.
`
`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
`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, 2, 4, 6, 7, and 9 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
`
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`IPR2019-00820
`Patent 7,937,581 B2
`manner, as discussed below. Pet. 4, 54–64. 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 of the ’810 patent, and was a basis for rejection. Prelim. Resp.
`10–15. As to Murakawa, Patent Owner argues that Murakawa is not
`materially different from Ahonen, which was the basis for two rejections of
`the ’810 patent and the only rejection of the ’581 patent during examination.
`Id. at 15–21. Patent Owner argues that Ahonen and Murakawa both disclose
`sending the claimed “secure message in the secure connection from the
`second address of the mobile terminal to the other terminal via the security
`gateway.” Id. at 22.
`
`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 22 (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 22–24 (citing Ex. 1005,
`Fig. 5).
`
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`IPR2019-00820
`Patent 7,937,581 B2
`
`Ishiyama was considered and applied during examination in a limited,
`narrow manner. See Ex. 1020, 270–276. Specifically, the Examiner
`considered and applied Ishiyama only in a single, non-final rejection of the
`’810 patent. 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.
`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
`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. 22–24; 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
`
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`IPR2019-00820
`Patent 7,937,581 B2
`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. 22–23 (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.
`Resp. 24–26. 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. Ex. 1020, 214–20, 243–50, 270–76; Ex. 1003, 77–81.
`
`Based on the above, we find that factors (a), (b), and (c) weigh against
`denying institution.
`
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`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. 33.
`
`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 34 (citing Pet. 20, 26, 46, 53; Ex. 1020, 217).
`Similarly, Patent Owner argues that “there is complete overlap between
`Petitioner’s argument for Murakawa and the Examiner’s discussion of
`Ahonen.” Id. at 35 (citing Pet. 43–47; Ex. 1020, 248, 274; Ex. 1003, 78).
`
`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 of the ’581 patent or ’810 patent 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
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`made this combination. Nor did the Examiner combine Ishiyama and
`Ahonen.9
`
`Instead, the Examiner combined Ala-Laurila and Ishiyama to reject
`the then-pending claims10 of the ’810 patent before they were amended to
`add “security gateway” limitations. Ex. 1020, 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.
`
`In response, the Examiner replaced the Ala-Laurila and Ishiyama
`rejection with a rejection over Ahonen and Luo. Id. at 243–50. The
`
`
`9 The Examiner’s statement in the Notice of Allowance for the ’810 patent
`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. 1020, 319; see also Ex. 1003, 13 (allowing the claims of the
`’581 patent and stating, “[n]o reason for allowance is needed as the record is
`clear”).
`10 Before the claims of the ’810 patent application 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. 1020, 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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`Patent 7,937,581 B2
`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. 1020, 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 of the ’810 patent over Ahonen and Inoue. Ex. 1020,
`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. Similarly, the
`Examiner relied on Ahonen in the same fashion when rejecting the claims of
`the ’581 patent over Ahonen and Inoue, rather than applying Ishiyama’s
`address changing functionality. Ex. 1003, 77–81 (applying Ahonen to the
`address changing limitations of the claims in the ’581 patent).
`
`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 argues that the Examiner’s “sparse
`examination” of the ’581 patent yielded only a single office action, applying
`the same references ultimately relied upon in the ’810 patent. Pet. 9 (citing,
`e.g., Ex. 1020 (’810 patent prosecution history), 272–276)). Therefore,
`Petitioner contends, the Examiner “did not conduct a thorough examination
`during prosecution.” Id. As discussed in detail below, we are persuaded
`
`16
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`that Petitioner has demonstrated a reasonable likelihood that the combination
`of Ishiyama and Murakawa disclose of the limitations of independent claim
`1, and we are 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. See Apple Inc. v.
`MPH Techs. Oy, IPR2019-00819 Paper 10, *15–16 (PTAB) (finding
`Petitioner sufficiently showed on the current record that, during prosecution
`of the ’810 patent, the Examiner misapprehended the correspondent node
`described in Ishiyama as representing an endpoint of an IPSec tunnel and
`that, instead, 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).
`
`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. 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.” E.g.,
`Pet. 20 (citing Ex. 1002 ¶ 61). Furthermore, Dr. Goldschlag testifies that
`
`17
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`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 ¶ 68.
`
`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).
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`To determine whether an invention would have been obvious at the
`
`18
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1,
`17 (1966). In assessing the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(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 ’581 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. 11 (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 ’581 patent and the asserted prior art, and we apply it in
`our obviousness evaluation below.
`
`V. 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
`
`19
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`Phillips [v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)].”11
`Under 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. 11; see generally P
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