Case IPR2019-00821
`Patent 8,037,302
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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 IPR2019-00821
`Patent 8,037,302
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Patent 8,037,302
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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 IPR2019-00821
`Patent 8,037,302
`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`Case IPR2019-00821
`Patent 8,037,302
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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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`THE AHONEN PRIMARY REFERENCE AND THE ’302 PATENT
`DISCLOSE FUNDAMENTALLY DIFFERENT ARCHITECTURES .. 2
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`A. Overview Of The ’302 Patent ............................................................... 2
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`B.
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`Overview Of Ahonen ............................................................................ 5
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`III. CLAIM CONSTRUCTION (ALL CLAIMS, ALL GROUNDS) ............. 7
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`A.
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`[First][Second] Secure Connection” Requires
`“Establishing A
`Forming A New Secure Connection ..................................................... 8
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`B.
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`Claim 1 Requires That Steps [a], [b], And [c] Be In Recited Order ...13
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`IV. THE PETITION FAILS TO SHOW A REASONABLE LIKELIHOOD
`THAT THE AHONEN-ISHIYAMA COMBINATIONS RENDER THE
`CLAIMS OBVIOUS (ALL CLAIMS, ALL GROUNDS) .......................18
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`A. Ahonen Does Not Disclose “Establishing A Second Secure
`Connection” As Recited In Claim 1 ....................................................19
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`B.
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`C.
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`Ahonen Does Not Disclose Performing Steps [a], [b], And [c] Recited
`In Claim 1 In Their Required Order ....................................................26
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`The Proposed Combination Of Ahonen And Ishiyama Does Not
`Disclose “The First Terminal Checking Whether The Second Secure
`Connection Already Exists” ................................................................30
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`1.
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`2.
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`“Checking Whether The Second Secure Connection Already
`Exists” Is Not Performed By Ahonen’s Alleged “First
`Terminal” As The Claims Require ...........................................31
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`The Ahonen-Ishiyama Combination Does Not Disclose
`“Checking Whether The Second Secure Connection Already
`Exists” At All ............................................................................40
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`V.
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`INSTITUTION SHOULD BE DENIED UNDER § 314(a) BECAUSE
`THE PETITION IS ENTWINED WITH INAPPROPRIATE AND
`FALSE INEQUITABLE CONDUCT-TYPE ARGUMENTS .................43
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`A.
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`B.
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`C.
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`The International Search Report Citing Ahonen Was Submitted To
`And Acknowledged By The Examiner ...............................................43
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`The International Search Report Determined Ahonen Was “Not
`Considered To Be Of Particular Relevance” ......................................46
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`The Board Should Deny The Petition Because Of Its Inappropriate
`Reliance On Inequitable Conduct-Type Allegations ..........................46
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`VI. CONCLUSION ............................................................................................51
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`TABLE OF AUTHORITIES
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`Case IPR2019-00821
`Patent 8,037,302
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`Page(s)
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`CASES
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`Cont’l Circuits LLC v. Intel Corp.,
`915 F.3d 788 (Fed. Cir. 2019) ............................................................................12
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`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ..........................................................................47
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`MFormation Techs., Inc. v. Research in Motion Ltd.,
`764 F.3d 1392 (Fed. Cir. 2014) ................................................................... 14, 16
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`ADMINISTRATIVE DECISIONS
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`Deeper, UAB v. Vexilar, Inc.,
`IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative opinion) .............50
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`Facebook, Inc. v. Sound View Innovations, LLC,
`IPR2017-00998, Paper 13 (PTAB Sept. 5, 2017) ........................................ 50, 51
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`Hytera Communications Co. Ltd. v. Motorola Solutions, Inc.,
`IPR2017-02183, Paper 47 (PTAB May 13, 2019) .............................................15
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`Nikon Corp. v. ASML Netherlands B.V.,
`IPR2018-00220, Paper 8 (PTAB June 4, 2018) .......................................... 50, 51
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`Repro-Med Sys., Inc. v. EMED Techs. Corp.,
`IPR2018-00981, Paper 8 (PTAB Nov. 2, 2018) .......................................... 48, 51
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`Symantec Corp. v. Finjan, Inc.,
`IPR2015-01895, Paper 7 (PTAB Feb. 26, 2016) ................................... 49, 50, 51
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`STATUTES
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`35 U.S.C. § 102 ........................................................................................... 47, 48, 49
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`35 U.S.C. § 103 ........................................................................................... 47, 48, 49
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`35 U.S.C. § 311(b) ............................................................................................ 47, 49
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`35 U.S.C. § 314(a) ........................................................................................... passim
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`35 U.S.C. § 371 ................................................................................................. 44, 45
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`REGULATIONS
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`37 C.F.R § 1.56 ........................................................................................................46
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`37 C.F.R. § 1.495 .....................................................................................................45
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`37 C.F.R. § 42.104(b)(4) ..........................................................................................42
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`83 Fed. Reg. 51,340
`(Oct. 11, 2018) (codified at 37 C.F.R. § 42.100(b)) ............................................. 7
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`EXHIBIT LIST
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`2001 U.S. Patent App. Pub. 2001/0009025 A1 (“Ahonen U.S. Pat. App. Pub.”).
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`I.
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`INTRODUCTION
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`The Petition should be denied institution because its obviousness arguments
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`suffer from at least three clear, and fatal, deficiencies. In particular, Petitioner’s
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`proposed combinations, all based on Ahonen and Ishiyama, fail to disclose the
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`claims’ novel method because they neither establish a second secure connection,
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`nor check whether it already exists, as claimed. Nor do they even perform their
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`alleged steps [a], [b], and [c] in the order that all claims, and simple logic, require.
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`Thus, the proposed combinations fail to disclose at least three important limitations
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`of the ’302 Patent’s claims.
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`The Petition tries to change the subject, and attribute false merit to its
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`proposed Ahonen-Ishiyama combinations, by falsely suggesting that Patent Owner
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`intentionally concealed the existence of Ahonen from the Examiner. But the
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`Search Report citing Ahonen, and explaining that it was not of particular
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`relevance, was included in the prosecution history. The Petition’s baseless
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`insinuation does not detract, and should not distract, from the flimsiness of its
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`proposed grounds.
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`Furthermore, by basing the Petition on inequitable conduct-type arguments,
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`Petitioner asks the Board to go outside its purview as an administrative tribunal of
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`limited statutory jurisdiction. The PTAB should exercise its discretion under 35
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`U.S.C. § 314(a) and not institute review based on such an inappropriate Petition.
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`For these reasons and more, institution should be denied.1
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`II. THE AHONEN PRIMARY REFERENCE AND THE ’302 PATENT
`DISCLOSE FUNDAMENTALLY DIFFERENT ARCHITECTURES
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`It is unsurprising that Ahonen was “not considered to be of particular
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`relevance” by the International Searching Authority. Id., 0108-0110. Ahonen has a
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`fundamentally different architecture than the ’302 Patent, as explained below and
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`in further detail infra §§ IV-V. Consequently, Ahonen has multiple substantive
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`deficiencies precluding Petitioner from demonstrating a reasonable likelihood of
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`prevailing with respect to its challenges against any claims of the ’302 Patent.
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`A. Overview Of The ’302 Patent
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`Claim 1 of the ’302 Patent, from which the other challenged claims depend,
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`is directed to a method for ensuring secure forwarding of a message in a
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`telecommunication network. Ex. 1001 [’302 Patent] 0009, 12:15-43. This includes
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`steps for establishing and registering secure connections between different
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`addresses of a “first terminal” and an original address of a “second terminal,”
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`which are the “Mobile terminal” and “Home Server,” respectively, in Figure 2 of
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`the Patent, shown below:
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`1 Due to space considerations and because partial institution is not permitted,
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`this Preliminary Response, unless otherwise noted, only addresses selected
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`arguments sufficient to dispose of the Petition as a whole.
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`Id., 0003, Fig. 2 (annotated). Figure 2 also depicts the “forwarding” of a message
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`in a telecommunication network: upon receiving a packet via the secure connection
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`between the Mobile terminal (first terminal) and Home Server (second terminal),
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`the Home Server processes the IPSec headers and routes (forwards) the IP packet
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`to destination computer X. See id., 0007, 8:41-44; 0009, 11:4-7, 11:10-12; see also
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`id., 0009, 12:65-67 (claim 13).
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`Claim 1 first requires establishing first and second secure connections
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`between different addresses of the first terminal and an original address of the
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`second terminal. Id., 0009, 12:19-25. In the preferred embodiment, “[t]he secure
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`connections are preferably established by forming Security Associations (SAs)
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`using the IPSec protocols and the message to be forwarded consists of IP packets.”
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`Id., 0007, 7:39-41. In claim 1, the first secure connection is established as being an
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`active connection and extending between a first network address of the first
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`terminal and an original address of the second terminal, and the second secure
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`connection is established extending between the second network address of the
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`first terminal and the original network address of the second terminal. Id., 0009,
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`12:19-25.
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`Next, when the Mobile terminal (first terminal) moves to a new network, it
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`obtains a care-of address from the visited network and then checks whether a
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`secure connection (e.g., an IPSec security association in the preferred embodiment)
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`already exists between the new address and the Home Server address. Id., 0008,
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`10:39-43. If an IPSec security association already exists between the new address
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`of the Mobile terminal and the Home Server, this security association is registered
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`to be the actual security association used. Id., 0008, 10:51-56.
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`Significantly, no terminals are required between the Mobile terminal (first
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`terminal) and the Home Server (second terminal) in the ’302 Patent to manage the
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`mobility of the Mobile terminal in the invention’s disclosed embodiments. Id.,
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`0003, Fig. 2. Instead, the Mobile terminal manages its own mobility, including by
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`checking whether a secure connection already exists at its new address after
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`moving to a new network. Id., 0008, 10:39-43.
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`B. Overview Of Ahonen
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`In contrast to the claimed invention of the ’302 Patent, Ahonen employs a
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`firewall between the mobile terminal (first terminal) and the second terminal to
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`authorize their communications and manage the mobility of the first terminal.
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`As Petitioner acknowledges, Ahonen’s system requires three components—
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`the mobile host (first terminal), a firewall, and a correspondent host (second
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`terminal)—where the firewall is located between the first and second terminals:
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`Ex. 1004 [Ahonen] 0003, Fig. 1 (as annotated by Petitioner); Pet., 19. In this three-
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`component scenario, “SAs [] are established between the mobile host 1 and the
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`firewall 3, and between mobile host 1 and the correspondent host 4.” Id., 0015,
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`13:1-3. “Details of the negotiated SAs are held at the firewall in a Security
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`Association Database (SAD) and at the end of the negotiation process the firewall
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`3 transfers the SAD from the intranet side interface to the external side interface of
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`the IPsec protocol stack.” Id., 0015, 13:4-7. Petitioner acknowledges this role of
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`the firewall in Ahonen, explaining that “[t]he role of ‘firewall 3’ is to ensure the
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`mobile host is authorized to communicate with the correspondent host. That is, ‘the
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`mobile host 1 first needs to convince the firewall 3 that subsequently sent messages
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`originating from the mobile host 3 to the correspondent host 4 should be passed.’”
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`Pet., 20 (citing Ex. 1004 [Ahonen] 0014, 12:27-29).
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`Given the significant, central role of the firewall in Ahonen’s architecture,
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`Ahonen’s Mobile Host (first terminal) cannot and does not manage its own
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`mobility like the mobile terminal in the ’302 Patent, but instead, must employ the
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`firewall between itself and the Correspondent Host (second terminal) to do so. In
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`particular, Ahonen discloses that “once a mobile terminal has moved networks, the
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`mobile terminal sends a ‘control authorisation [sic] certificate’ to a firewall to
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`‘remotely ‘activate’ preexisting secure connections.’” Pet., 20 (citing Ex. 1004
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`[Ahonen] 0016, 14:16-17, 0017, 15:1-17). As Petitioner admits, “Ahonen never
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`discloses how its mobile host stores the SAs” and “Ahonen does not explicitly
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`describe how the first terminal knows whether an SA exists to retrieve the SPI and
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`other parameters from, or which SA to retrieve the parameters from.” Pet., 35. For
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`these reasons, Petitioner correctly concedes, “Ahonen [] does not explicitly
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`disclose ‘the first terminal checking whether the second secure connection already
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`exists,’ as recited in independent claim 1 of the ’302 patent.” Pet., 22.
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`Still other material deficiencies in Ahonen’s disclosure also exist which,
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`considered alone or in combination with Petitioner’s other references, preclude
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`Petitioner from demonstrating a reasonable likelihood of prevailing with respect to
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`any claim of the ’302 Patent. Such deficiencies will be discussed in more detail,
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`infra § IV, in connection with specific elements of claim 1 of the ’302 Patent.
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`III. CLAIM CONSTRUCTION (ALL CLAIMS, ALL GROUNDS)
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`The Petition was filed after November 13, 2018, the date of the Office’s
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`adoption of the Phillips claim construction standard for IPRs. The claims therefore
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`must be construed “in accordance with the ordinary and customary meaning of
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`such claim as understood by one of ordinary skill in the art and the prosecution
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`history pertaining to the patent,” as required by the Phillips standard. 83 Fed. Reg.
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`51,340, 51,358 (Oct. 11, 2018) (codified at 37 C.F.R. § 42.100(b)).
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`As explained below, the claims should be construed under the Phillips
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`standard to require that: (1) “establishing a [first][second] secure connection”
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`requires forming a new secure connection; and (2) steps [a], [b], and [c] of claim 1
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`(and, by dependency, the other challenged claims) must be performed in their
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`written order. For purposes of determining that institution is unwarranted, no
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`further construction is presently needed beyond their plain and ordinary meaning to
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`a person of ordinary skill in the art at the time of the invention.
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`A.
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`“Establishing A [First][Second] Secure Connection” Requires
`Forming A New Secure Connection
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`Petitioner argues that “establishing a [first][second] secure connection”
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`should be construed to include “establishing one or more [first][second] security
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`associations.” Pet., 15. Petitioner’s proposed construction is deficient and
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`erroneously broad, because, as relevant here, it fails to take account of the recital
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`and meaning of the term “establishing,” which, in the context of the ’302 Patent,
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`means forming, or creating, a new secure connection. Pet., 15-16.2
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`Petitioner proposes a construction for the term “secure connection” in the
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`limitation “establishing a [first][second] secure connection,” but does not propose
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`or address how the term “establishing” should be construed in this limitation. Id.,
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`15 (“The terms ‘establishing a first secure connection’/ ‘establishing a second
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`secure connection,’ as recited in claim 1, should be construed to respectively
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`2 Petitioner’s proposed construction would also improperly limit the claimed
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`“secure connection” to a particular standard of security protocols, namely, the
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`IPSec protocols, by importing the limitation “security associations.” Claim 1 is not
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`so limited. This issue is, however, irrelevant for purposes of considering
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`institution.
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`include ‘establishing one or more first security associations’ and ‘establishing one
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`or more second security associations.’”). Put another way, Petitioner’s construction
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`is effectively circular as to the term “establishing,” as it in effect defines the term
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`“establishing” as “establishing.” The language in question appears in the following
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`element of claim 1:
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`a) establishing a first secure connection as being an active
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`connection and extending between a first network address of the first
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`terminal and an original network address of the second terminal,
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`establishing a second secure connection extending between a second
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`network address of the first terminal and the original network address
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`of the second terminal,
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`Ex. 1001 [’302 Patent] 0009, 12:19-25 (emphasis added). In this context,
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`“establishing” a secure connection means forming/creating a new secure
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`connection. Tellingly, Petitioner acknowledges as much in its subsequent argument
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`for its proposed construction, though it fails to expressly include the concept of
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`forming/creating a new secure connection in its expressly proposed construction.
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`In particular, Petitioner argues:
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`“[t]he secure connections are preferably established by forming
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`Security Associations (SAs) using the IPSec protocols” [Ex. 1001
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`[’302 Patent]] 7:39-41. In other words, an IPSec connection is created
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`using one or more security associations. Thus, one establishes one or
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`more security associations in order to create a “secure connection”
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`using the IPSec protocols.
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`Pet., 16 (emphases added). Relevantly, in addition to those portions of the
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`specification cited by Petitioner as quoted above, the ’302 Patent specification also
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`states:
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`The key exchange being a part of the forming of a secure connection
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`is performed manually or automatically with IKE or some other
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`automated key exchange protocol. When a new secure connection is
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`formed, it is registered for immediate and/or later use. The registration
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`for later use is made using a connection table, which is maintained by
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`both hosts participating in the forming of the secure connection.
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`Id., 0007, 7:41-48 (emphases added).
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`Thus, in view of the plain meaning of “establishing” and in view of the
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`claim teachings of the specification as set forth above, “establishing” a secure
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`connection should be construed to require forming (or creating) a new secure
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`connection (for example, as in the preferred embodiment, forming Security
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`Associations through use of manual or automatic key exchange protocol, but not
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`limited to forming such Security Associations).
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`That the claimed “establishing a [first][second] secure connection” should be
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`construed to require forming or creating a new secure connection is further
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`bolstered by the prosecution history.
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`In particular, in its Appeal Brief filed with the Board before the Examiner
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`withdrew his rejections, Applicant argued “[i]n the present invention there are, in
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`general, two different secure connections involved and which secure connection is
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`used changes when the first terminal moves from one network to another network.”
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`Ex. 1002 [’302 Prosecution History] 0348. The Applicant then distinguished the
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`invention from the prior art as follows:
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`It is important to realize that the problem solved by the present
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`invention lies in the secure connection itself, i.e. how to handle the
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`secure connection when a move of the mobile terminal has taken
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`place. Although Herle discloses some kind of secure connections but
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`[sic] none of them, not even when combined with the teachings of
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`Sturniolo, is able to handle a move by a mobile terminal while
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`maintaining the connection secure, which was the problem to be
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`solved by the present invention. In the present invention, it is not
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`necessary [to] use any key exchange after the move by the mobile
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`terminal since there is no need to setup a new secure connection. It
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`is merely necessary for the second terminal to register an already
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`existing secure connection instead.
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`Ex. 1002 [’302 Prosecution History] 0352-0353 (emphasis added). The Examiner
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`then withdrew his rejection, issued a notice of allowance, and noted his agreement
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`with Applicant’s arguments. Id., 0375 (“The arguments presented in the Appeal
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`Brief filed 4/20/2011 are persuasive.”).
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`As the passage above makes clear, after the mobile terminal moves to a new
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`address, there is no need to set up or establish a new secure connection (e.g., by
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`using a key exchange). Instead, as captured by the language of claim 1, the new
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`first and second secure connections are formed prior to the first terminal moving
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`and, after the first terminal moves, the second terminal registers the already
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`established second secure connection as the active connection without having to
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`reestablish it—i.e., without having to setup a new secure connection. Ex. 1001
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`[’302 Patent] 0009, 12:15-34.
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`For all of these reasons, “establishing a [first][second] secure connection” in
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`claim 1, which occurs prior to the mobile first terminal changing addresses, should
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`be construed to mean “forming a new [first][second] secure connection.”3
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`3 For the record, as noted above, though it should not be necessary to reach
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`the issue to deny institution, another error in Petitioner’s proposed construction of
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`“establishing a [first][second] secure connection” is that, inter alia, it would
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`improperly limit the claimed “secure connection” to IPSec protocols of the
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`preferred embodiment by importing the terms “security associations” when claim 1
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`is not so limited. Id. Absent a “clear and unmistakable disclaimer,” the preferred
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`embodiment does not limit the claims, Cont’l Circuits LLC v. Intel Corp., 915 F.3d
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`788, 796-800 (Fed. Cir. 2019), and the claim language does not limit claim 1’s
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`B. Claim 1 Requires That Steps [a], [b], And [c] Be In Recited Order
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`The Petition is silent as to whether the steps of claim 1 must occur in order.
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`Its analysis implicitly assumes that the steps can occur in any order. However,
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`given the language of claim 1 and the specification, claim 1 should be construed
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`under Phillips to require that steps [a], [b], and [c] be performed in the order they
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`are recited.
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`While method claims are not all construed to require an order of steps, “a
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`claim requires an ordering of steps when the claim language, as a matter of logic or
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`grammar, requires that the steps be performed in the order written, or the
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`“secure connections” to security associations established using IPSec protocols.
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`Claim 3, in contrast, is expressly limited to “establishing the first secure
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`connection using IPSec protocols.” Ex. 1001 [’302 Patent] 0009, 12:19-25, 12:38-
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`40; compare Pet., 15 (acknowledging that “[a]n independent claim impliedly
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`embraces more subject matter than its narrower dependent claim”). The
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`specification likewise does not limit claim 1’s secure connections to “security
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`associations” using IPSec protocols, but instead, makes clear that this is merely the
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`preferred embodiment. Ex. 1001 [’302 Patent] 0007, 7:39-40 (“secure connections
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`are preferably established by forming Security Associations (SAs) using the IPSec
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`protocols”); id., 0008, 10:13-15.
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`specification directly or implicitly requires an order of steps.” MFormation Techs.,
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`Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1398-99 (Fed. Cir. 2014) (internal
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`quotation marks omitted). Here, both the claim language and the specification
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`dictate an order-of-steps requirement for claim 1 of the ’302 Patent.
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`To start, claim 1 of the ’302 Patent expressly recites a specific order of steps
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`[a], [b], and [c], which, as a matter of logic and grammar from the plain language
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`of the claims, requires performance in their written order. Claim 1 is set forth
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`below:
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`1. A method for ensuring secure forwarding of a message in a
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`telecommunication network, comprising: providing a first terminal
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`from which the message is sent and a second terminal to which the
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`message is sent,
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`a) establishing a first secure connection as being an active connection
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`and extending between a first network address of the first terminal and
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`an original network address of the second terminal, establishing a
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`second secure connection extending between a second network
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`address of the first terminal and the original network address of the
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`second terminal,
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`b) the first terminal changing from the first network address to the
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`second network address, the first terminal checking whether the
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`second secure connection already exists, and
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`c) when the second secure connection already exists, the second
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`terminal registering the already established second secure connection
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`Patent 8,037,302
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`as being the active connection without having to reestablish the
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`second secure connection.
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`Ex. 1001 [’302 Patent] 0009, 12:15-34.
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`Logically, step [b]’s “checking whether the second secure connection
`
`already exists” occurs after step [a]’s “establishing a second secure connection.”
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`“Checking” for the recited second secure connection before “establishing” it
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`would make little sense: there would be nothing to “check” for.
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`Similarly, step [c] logically occurs after step [b]. Step [c] is prefaced with
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`“when the second secure connection already exists.” That is the very condition
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`that the first terminal was “checking” in step [b]. In other words, the condition
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`precedent in step [c] would be unknown if the “checking” was not performed first
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`in step [b]. In sum, step [a] must be before [b], and step [b] must be before step
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`[c], because “the language shows that the results of a step are used in the next
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`step.” Hytera Communications Co. Ltd. v. Motorola Solutions, Inc., IPR2017-
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`02183, Paper 47, 11-18 (PTAB May 13, 2019) (finding order-of-steps requirement
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`even under BRI).
`
`Further support for construing steps [a], [b], and [c] of claim 1 to be
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`performed in the recited order is found in the fact that step [c] necessarily occurs
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`after step [a], because step [c] recites “registering the already established second
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`secure connection … without having to reestablish the second secure connection,”
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`15
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`which, as a matter of logic and grammar, occurs after “establishing a second
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`secure connection.” Id.; see MFormation, 764 F.3d at 1399 (finding order-of-steps
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`requirement based in part on fact that “establishing a connection” sub-step must
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`logically occur prior to “transmitting” sub-step).
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`Furthermore, consistent with the logical and grammatical support for
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`ordering the steps, the steps of claim 1 are expressly enumerated in alphabetical
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`order as “a) … b) …, and c),” which clearly indicates the inventors’ intent to
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`order, rather than to not order, the steps. This is yet another reason that the claim
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`language soundly supports an order-of-steps requirement.
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`
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`Performance of steps [a], [b], and [c] in order is also prescribed by the
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`specification. The Summary of the Invention states:
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`In the method, one or more secure connections are established
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`between different addresses of the first terminal and address of the
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`other terminal, the connections defining at least said addresses of the
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`two terminals. When the first terminal moves from one address to
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`another address, a secure connection, whose endpoints are the new
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`address of the first terminal and the address of the other terminal, is
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`registered to be at least one of the active connections.
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`Ex. 1001 [’302 Patent] 0007, 7:13-20. As this passage makes clear, in the
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`invention, first, “one or more secure connections are established” (step [a]);
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`second, “the first terminal moves from one address to another address” (step [b]);
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`and third, the secure connection at the new address is “registered to be at least one
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`of the active connections” (step [c]). This description of this preferred embodiment
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`is consistent with this order-of-steps requirement, as the claimed steps [a], [b], and
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`[c] are described in their claimed order, namely, [a] establishing secure
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`connections, [b] the mobile terminal moving and checking whether a secure
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`connection exists at the new address, and, [c] if it does, registering that secure
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`connection for use. Id., 0008, 10:13-56.
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`Still further support for this order-of-steps requirement is found in the fact
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`that the goal of the invention, as described in the specification, is served by the
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`steps being performed in that order. Notably, establishing secure connections
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`before moving and changing addresses, as required by claim 1, accomplishes the
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`goal of avoiding the latency problem with standard prior art IPsec, which set up a
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`new connection after moving. See id., 0005, 4:53-60 (“IPSec does not work well
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`with mobile devices. For instance, if a mobile terminal moves from one network to
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`another, an IPSec connection set up is required, typically using the IKE key
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`exchange protocol. Such a set up is expensive in terms of latency, since IKE may
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`require several seconds to complete.”).
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`For all of these reasons, claim 1 should be construed require that steps [a],
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`[b], and [c] be performed in their written order.
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`As explained below, the constructions above furnish additional reasons why
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`the Petition should be denied institution. However, as shown infra §§ IV-C and V,
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`institution should be denied for additional reasons as well, regardless whether the
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`claim constructions proposed above are adopted.
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`IV. THE PETITION FAILS TO SHOW A REASONABLE LIKELIHOOD
`THAT THE AHONEN-ISHIYAMA COMBINATIONS RENDER THE
`CLAIMS OBVIOUS (ALL CLAIMS, ALL GROUNDS)
`
`The Petition fails to show a reasonable likelihood of prevailing against
`
`independent claim 1, and therefore, by dependency, claims 2-16.
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`The International Searching Authority found that Ahonen, Petitioner’s lead
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`reference, was “not considered to be of particular relevance” to the patentability of
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`the invention of the ’302 Patent. Ex. 1002 [’302 Prosecution History] 0108-0110.
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`The International Searching Authority’s determination of no particular relevance is
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`correct. The following sections further explain why Ahonen, alone or in the
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`proposed Ishiyama combinations, does not disclose multiple limitations of the
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`claims, all of which are recited in independent claim 1. If any one of these
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`limitations has not been shown obvious by the Petition, institution must be denied.4
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`4 Petitioner asserts three references: Ahonen, Ishiyama, and Gupta. The
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`Petition relies on Gupta only in its Ground 2 arguments directed towards claims 14
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`18
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`A. Ahonen Does Not Disclose “Establishing A Second Secure
`Connection” As Recited In Claim 1
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`Claim 1 requires “establishing a second secure connection extending
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`between a second network address of the first terminal and the original network
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`address of the second terminal.” Ex. 1001 [’302 Patent] 0009, 12:22
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