Case IPR2019-00822
`U.S. Pat. No. 8,346,949
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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,
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`Patent Owner.
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`____________
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`Case IPR2019-00822
`Patent 8,346,949
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`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`U.S. Pat. No. 8,346,949
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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.
`
`____________
`
`Case IPR2019-00822
`Patent 8,346,949
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`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case IPR2019-00822
`U.S. Pat. No. 8,346,949
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`TABLE OF CONTENTS
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`I.
`INTRODUCTION ........................................................................................... 1
`DISCLAIMER ................................................................................................. 4
`II.
`III. CLAIM CONSTRUCTION ............................................................................ 4
`A.
`The “Unique Identity” Limitations ....................................................... 7
`B.
`The “Substituting” Limitations ........................................................... 20
`IV. THE PETITION FAILS TO SHOW A REASONABLE LIKELIHOOD
`THAT THE RFC3104-GRABELSKY COMBINATIONS RENDER THE
`CLAIMS OBVIOUS (ALL CLAIMS, ALL GROUNDS) ........................... 24
`A.
`“First Unique Identity,” “Second Unique Identity” (All Claims) ....... 25
`B.
`“Performing a Translation by Using the First Unique Identity to Find
`a Second Destination Address to the Second Computer” (All Claims). .
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` ............................................................................................................ 34
`“Substituting” Limitations (All Claims) ............................................. 41
`1. Adding An Outer IP Header Is Not “Substituting” As Claimed. ... 42
`2. No Motivation Is Shown To Replace The Outermost IP Header. .. 52
`CONCLUSION .............................................................................................. 59
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`V.
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`C.
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`TABLE OF AUTHORITIES
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`COURT DECISIONS
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`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) ..................................................................... 50, 51
`Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech.,
`709 F.3d 1348 (Fed. Cir. 2013) ............................................................................ 10
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010) ................................................................. 8, 10, 14
`Diebold Nixdorf, Inc. v. Int’l Trade Comm’n,
`899 F.3d 1291 (Fed. Cir. 2018) ............................................................... 38, 47, 53
`DSS Tech. Mgmt. Inc. v. Apple Inc.,
`885 F.3d 1367 (Fed. Cir. 2018) ......................................................... 39, 49, 50, 51
`Epistar Corp. v. ITC,
`566 F.3d 1321 (Fed. Cir. 2009) ................................................................. 8, 11, 14
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................ 36
`HTC Corp. v. Cellular Commc’ns Equip., LLC,
`701 Fed. Appx. 978 (Fed. Cir. 2017) ..................................................................... 8
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................ 36
`In re Schreiber,
`128 F.3d 1473 (Fed. Cir. 1997) ............................................................................ 40
`K/S Himpp v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed Cir. 2014) ............................................................................. 48
`Mformation Techs., Inc. v. Research in Motion Ltd.,
`764 F.3d 1392 (Fed. Cir. 2014) ......................................................... 10, 14, 15, 16
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`PAR Pharm. v. TWi Pharms., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) ............................................................................ 39
`Personalweb Techs., LLC v. Apple, Inc.,
`917 F.3d 1376 (Fed. Cir. 2019) ............................................................................ 40
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) ............................................................................ 52
`Primos, Inc. v. Hunter’s Specialties, Inc.,
`451 F.3d 841 (Fed. Cir. 2006) ................................................................................ 8
`Trintec Indus., Inc. v. Top- U.S.A. Corp.,
`295 F.3d 1292 (Fed. Cir. 2002) ............................................................................ 39
`Vectra Fitness, Inc. v. TNWK Corp.,
`162 F.3d 1379 (Fed. Cir. 1998) .............................................................................. 4
`Vivid Techs., Inc. v. Am. Science & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ................................................................................ 5
`AGENCY DECISIONS
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`Am. Honda Motor Co. v. Blitzsafe Tex., LLC,
`IPR2016-01473, Paper 9 (PTAB Jan. 24, 2017) ..................................... 37, 47, 53
`Apple Inc. v. Papst Licensing GmbH & Co.,
`IPR2016-01863, Paper 35 (PTAB Apr. 13, 2018) .................................. 38, 47, 53
`
`Ericsson Inc. v. Intellectual Ventures I LLC,
`IPR2015-01367, Paper 6 (Dec. 9 2015) ............................................................... 42
`Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc.,
`IPR2015-00613, Paper 9 (PTAB Aug. 7, 2015) ....................................... 9, 11, 30
`Kinetic Techs., Inc. v. Skyworks Sols., Inc.,
`IPR2014-00529, Paper 8 (PTAB Sept. 23, 2014) ................................... 37, 47, 53
`Lenroc Co. v. Enviro Tech Chem. Servs., Inc.,
`IPR2014-00382, Paper 12 (PTAB Jul. 24, 2014) .................................................. 5
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`Unified Patent Inc. v. Plectrum LLC,
`IPR2017-01430, Paper 30 (PTAB Nov. 13, 2018) .............................................. 47
`Unified Patents Inc. v. Societa Italiana Per Lo Sviluppo Dell’Elettronica S.P.A.,
`IPR2017-00565, Paper 13 (PTAB June 15, 2017) .................................. 38, 47, 53
`Whole Space Indus. Ltd., v. Zipshade Indus. (B.V.I.) Corp.,
`IPR2015-00488, Paper 14 (PTAB July 24, 2015) ............................................... 43
`STATUTES
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`35 U.S.C. § 253 .......................................................................................................... 4
`RULES AND RULEMAKING
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`37 C.F.R. § 42.100 ..................................................................................................... 5
`37 C.F.R. § 42.107 ..................................................................................................... 4
`37 C.F.R. § 42.108 ..................................................................................................... 1
`37 C.F.R. § 42.65 ........................................................................................ 38, 47, 53
`77 Fed. Reg. 48,680, 48,689 (Aug. 14, 2012) ........................................................... 4
`83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) ............................................................. 5
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`EXHIBIT LIST
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`Disclaimer in Patent Under 37 CFR 1.321(a), U.S. Pat.
`No. 8,346,949, cl. 27 (10/500,930 Jul. 15, 2019)
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`Substitute, Merriam-Webster Dictionary (Online ed.) (accessed
`June 20, 2019) (available at https://www.merriam-
`webster.com/dictionary/substitute)
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`Substitute, Am. Heritage College Dictionary (3d ed. 1997)
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`RFC1853 - IP in IP Tunneling (dated Oct. 1995)
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`RFC2784 - Generic Routing Encapsulation (dated Mar. 2000)
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`RFC2661 - Layer Two Tunneling Protocol “L2TP” (dated Aug.
`1999)
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`Declaration of Ashley LaValley
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`I.
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`INTRODUCTION
`Patent Owner MPH Technologies Oy (“Patent Owner”) submits this
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`Preliminary Response to the Petition for Inter Partes Review filed by petitioner
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`Apple Inc. (“Petitioner”) seeking inter partes review of claims 1-7, 9, 11-14, 20-
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`21, and 27-29 of U.S. Patent No. 8,346,949 (Exhibit 1001) (“the ’949 Patent”).
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`Patent Owner respectfully requests that the Board deny the Petition, because it fails
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`to demonstrate a reasonable likelihood that at least one claim is unpatentable under
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`the proposed grounds, as required by 37 C.F.R. § 42.108(c).
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`The Petition asserts that claim 1 is obvious over a combination of RFC3104
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`and Grabelsky. Contrary to the Petition’s argument, however, RFC3104 and
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`Grabelsky teach methods that are significantly different from the claimed invention
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`and are missing numerous limitations of the ’949 Patent’s claims. These missing
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`limitations of claim 1 apply by dependency to all remaining challenged claims.1
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`The Petition fails to show a reasonable likelihood that RFC3104 and Grabelsky, as
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`combined, render the claims obvious for at least three reasons.
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`1 Claim 27 has been disclaimed. Ex. 2001.
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`First, the Petition fails to establish a reasonable likelihood that RFC3104 and
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`Grabelsky teach the “destination address” and “unique identity” limitations
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`required by all claims. The Petition’s argument that these limitations are met relies
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`upon an erroneously broad interpretation of the claim that would allow the
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`“destination address” to be the same as, or a component of, the claimed “unique
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`identity.” Under basic claim construction principles, however, the intrinsic
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`evidence requires these two elements of the challenged claims to be separate and
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`distinct. Infra § IV-A.
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`Second, even if every “destination address” and “unique identity” limitations
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`were met, the Petition would still fail to establish a reasonable likelihood that
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`RFC3104 and Grabelsky disclose “performing a translation by using the first
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`unique identity to find a second destination address to the second computer” as
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`required by all claims. The Petition’s argument that this limitation is met relies on
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`unsupported opinion testimony to fill this gap. In fact, however, this limitation is
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`simply missing. No amount of conclusory testimony can change that. Infra § IV-B.
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`Third, the Petition also fails to establish any reasonable likelihood that
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`RFC3104 and Grabelsky teach “substituting the first destination address with the
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`second destination address[] to the second computer” and “substituting, at the
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`intermediate computer, the first unique identity with a second unique identity of
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`2
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`the secure connection” as all claims require. Instead of substituting such supposed
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`addresses or identities, RFC3104 and Grabelsky teach, at most, only adding
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`something new on top of the original purported “destination address and unique
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`address” without replacing, changing or modifying the purported “destination
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`address and unique identity” that are already there. And the Petition demonstrates
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`no motivation to modify the references to add such a substitution. Infra § IV-C.
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`While the deficiencies mentioned above are each sufficient to foreclose
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`institution, they are merely examples of the Petition’s recurrent reliance on
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`conclusory attorney arguments to fill in the limitations missing from the proposed
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`combinations. The accompanying opinion testimony essentially does no more than
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`copy those arguments without adding objective support. The testimony, therefore,
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`lends no material support to bridge the gaps in Petitioner’s references and grounds.
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`Institution of inter partes review should be denied.2
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`2 Because partial institution is not permitted, this Preliminary Response only
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`addresses selected arguments sufficient to dispose of the Petition as a whole. For
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`example, the Petition relies on a third reference, Wagner, in one additional
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`combination as to one additional limitation of dependent claim 3. Pet., 66-70. The
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`Petition relies solely upon RFC3104 and Grabelsky for all other limitations of all
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`3
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`DISCLAIMER
`Patent Owner has filed a statutory disclaimer under 35 U.S.C. § 253(a) of
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`II.
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`claim 27 of the ’949 patent in compliance with 37 C.F.R. 1.321(a). See Ex. 2001
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`[Disclaimer]; 77 Fed. Reg. 48,680, 48,689 (Aug. 14, 2012) (codified at 37 C.F.R.
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`§ 42.107(e)). The result of the disclaimer is that the ’949 Patent “is treated as
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`though the disclaimed clai[m] never existed.” Vectra Fitness, Inc. v. TNWK Corp.,
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`162 F.3d 1379, 1383 (Fed. Cir. 1998). “No inter partes review will be instituted
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`based on disclaimed claims.” 37 C.F.R. § 42.107(e). Therefore, no inter partes
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`review may be instituted based on disclaimed claim 27.
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`As shown below, the Petition fails to show any reasonable likelihood of
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`prevailing against claim 1. With the disclaimer of claim 27, all other remaining
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`challenged claims (2–7, 9, 11–14, 20, 21, 28, and 29) depend from claim 1.
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`III.
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`CLAIM CONSTRUCTION
`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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`remaining challenged claims, including that claim. Pet., 20-64. Therefore, this
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`preliminary response does not address Wagner.
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`4
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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.” 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018)
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`(codified at 37 C.F.R. § 42.100(b)).
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`The Petition proposes claim constructions for the “secure connection” and
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`“unique identity” limitations of every challenged claim. Pet., 17-19; Ex. 1001
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`[’949 Patent], cl. 1. Yet, the Petition fails to demonstrate any reasonable likelihood
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`that Petitioner’s proposed claim construction positions are correct. Although the
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`burden of identifying how the claims are to be construed falls on Petitioner, and
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`not Patent Owner, we point out in this preliminary response that the Petition’s
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`obviousness arguments rely on constructions that cannot be supported. Because
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`the Petition’s arguments depend on these unsupportable constructions, resolution
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`of that issue resolves this case against institution. See Lenroc Co. v. Enviro Tech
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`Chem. Servs., Inc., IPR2014-00382, Paper 12, 15-16 (PTAB Jul. 24, 2014)
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`(denying institution based on patent owner’s correct proposed construction of the
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`claims, which resolved issue on which every ground depended).
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`Specifically, Petitioner’s proposed construction of “unique identity,” Pet. 19,
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`is erroneous and suffers from multiple deficiencies. At this stage, however, “to
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`resolve the controversy” against institution, Vivid Techs., Inc. v. Am. Science &
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`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999), it is necessary only to show that
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`5
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`Petitioner’s construction must be rejected to the extent it allows the “[first/second]
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`unique identity” to include the “[first/second] destination address.” Under a correct
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`construction, the “destination address” must be separate and distinct from the
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`“unique identity,” not merely a component thereof. Infra § III-A.3 The Petition’s
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`reliance on this unsupportably broad interpretation of the claims is sufficient by
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`itself to require denial of institution. Infra § IV-A; see also id. § IV-B.
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`Furthermore, the proposed grounds also inherently require that the
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`“substituting” limitations encompass adding a new destination address and unique
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`identity without replacing, changing, or modifying the one that is already there.
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`Under any correct construction, however, the claims require replacing, changing,
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`or modifying the first address and unique identity, not merely adding a second
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`address or unique identity. Infra § III-B. For this additional, independent reason,
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`the proposed grounds must be rejected and institution denied. Infra § IV-C.
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`These points are discussed in further detail below.
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`3 Patent Owner also disagrees with, among others, Petitioner’s construction
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`of “secure connection,” Pet. 17, but the Board need not reach that issue to deny
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`institution.
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`For purposes of determining that institution is unwarranted, no further
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`construction is presently needed beyond the plain and ordinary meaning to a
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`person of ordinary skill in the art at the time of the invention.
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`A. The “Unique Identity” Limitations
`The “first unique identity” and “second unique identity” recited in the claims
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`should be construed to be separate and distinct from the “first destination address”
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`and “second destination address,” respectively.
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`Claim 1 recites, in part, “forming a secure message, in the first computer, by
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`giving the secure message a first unique identity and a first destination address to
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`the intermediate computer.” Ex. 1001 [’949 Patent], cl. 1 (emphasis added). Claim
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`1 further recites that, upon receiving and translating the message, the intermediate
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`computer separately substitutes each of the first unique identity and the first
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`destination address for the second unique identity and the second destination
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`address, respectively:
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`the intermediate computer substituting the first destination address with
`the second destination[] address of the secure connection,
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`[and] substituting, at the intermediate computer, the first unique
`identity with a second unique identity of the secure connection.
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`Id. Accordingly, the secure message recited in claim 1 must include both a first
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`unique identity and a first destination address.
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`7
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` There is a “strong” and “clear implication” that when two structures are
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`separately named in a claim “the named entities are not one and the same
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`structure.” HTC Corp. v. Cellular Commc’ns Equip., LLC, 701 Fed. Appx. 978,
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`982 (Fed. Cir. 2017) (affirming PTAB’s finding that two separate steps of
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`challenged claim must be performed by separate components); Becton, Dickinson
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`& Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where
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`a claim lists elements separately, ‘the clear implication of the claim language’ is
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`that those elements are ‘distinct component[s]’ of the patented invention.”)
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`(internal citations omitted); see also, e.g., Epistar Corp. v. ITC, 566 F.3d 1321,
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`1335 (Fed. Cir. 2009) (“The claims and specification of the patent consistently
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`treat these two structures as separate and distinct elements. . . . [W]here two steps
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`(or structures) are entirely different concepts and procedures and identified as
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`separate steps in the claims, no skilled artisan could reasonably construe them as a
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`single element.”) (patent number, internal quotation marks, and record citations
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`omitted); Primos, Inc. v. Hunter’s Specialties, Inc., 451 F.3d 841, 848 (Fed. Cir.
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`2006) (“[T]he terms ‘engaging’ and ‘sealing’ are both expressly recited in the
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`claim and therefore ‘engaging’ cannot mean the same thing as ‘sealing’ . . . .”).
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`The Director has routinely relied on this claim construction principle to deny
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`institution. See, e.g., Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc.,
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`8
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`IPR2015-00613, Paper 9, 12 (PTAB Aug. 7, 2015) (“We determine, for purposes
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`of this Decision, based on the Specification of the ‘780 patent, that claims 1 and 8
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`of the ‘780 patent in fact require that the deceleration signal and inclination signal
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`are separate and distinct.”) (denying institution).
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`As shown above, the claims recite giving a message both the “first unique
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`identity” and the “first destination address,” but recites them separately.
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`Therefore, the plain language of the challenged claims clearly supports that the
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`first unique identity is separate and distinct from the first destination address, and
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`the second unique identity is separate and distinct from the second destination
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`address.
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`The claimed method also requires that the intermediate computer perform
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`two separate acts of substitution: (1) substituting the first destination address with
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`the second destination address and (2) substituting the first unique identity with a
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`second unique identity. This is even stronger evidence that the destination address
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`and unique identity must be separate components. If not, it would be unnecessary
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`to separately claim that the intermediate computer substitutes (1) the destination
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`address and (2) the unique identity.
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`In fact, if the destination address were the same as or a part of the unique
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`identity, then logically the intermediate computer would necessarily substitute the
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`9
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`unique identity when it substituted the destination address because it would follow
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`that changing the destination address would change the unique identity. In other
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`words, the two substitution steps would be collapsed into a single act, i.e.,
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`substitution of the destination address would also be substitution of the unique
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`identity.
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`And, this would render the element of “substituting … the first unique
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`identity with a second unique identity” superfluous. Rendering this claim language
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`superfluous in this manner is improper. See, e.g., Aristocrat Techs. Australia Pty
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`Ltd. v. Int’l Game Tech., 709 F.3d 1348, 1355-1358 (Fed. Cir. 2013) (declining to
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`adopt proposed construction because it would render another step of method claim
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`superfluous); Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392,
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`1399 (Fed. Cir. 2014) (“We are persuaded by Blackberry’s argument that the
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`separate sub-step for establishing a connection would become ‘superfluous’ if we
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`concluded that a connection did not have to be established (completed) before
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`transmission. That is because, under such construction of the claim, establishing a
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`connection is necessarily encompassed in transmitting a command.”).
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`Moreover, consistent with the plain language of the claims, the specification
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`of the ’949 Patent abundantly confirms that the unique identity and destination
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`address are separate and distinct. See Becton, Dickinson, 616 F.3d at 1254-1255
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`10
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`(citing specification as “confirm[ing]” that separately recited elements are in fact
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`separate structures); Epistar, 566 F.3d at 1335 (relying on specification to construe
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`separately recited elements as separate structures); Hopkins, IPR2015-00613,
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`Paper 9, 12 (same). There is not a single embodiment in the ’949 Patent in which
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`the destination address is any part of the “unique identity,” or vice versa. In every
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`instance where they are described in the specification, they are identified,
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`described, and treated as separate and distinct elements.
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` In the Abstract of the ‘949 Patent, for example, the unique identity and
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`destination address are presented as separate elements, as are the two distinct steps
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`of substituting the destination addresses and the unique identities:
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`In the first computer, a secure message is then formed by giving the
`message a unique identity and a destination address. The message is
`sent from the first computer to the intermediate computer after which
`the destination address and the unique identity are used to find an
`address to the second computer. The current destination address is
`substituted with the found address to the second computer, and the
`unique identity is substituted with another unique identity.
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`Ex. 1001 [’949 Patent], Abstract; see also id., 6:33-42.
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`In an embodiment that utilizes IPSec protocols, the unique identity is one or
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`more Secure Parameter Index (SPI) values. Ex. 1001 [’949 Patent], 7:5-7 (“The
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`unique identity is one or more SPI values”). The message sent from the first
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`11
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`computer includes the address of the intermediate computer (the first destination
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`address) in an outer IP header and, separately, an SPI value that serves as the
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`unique identity. Id., 6:67-7:7 (“the message contains … message data, an inner IP
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`header containing actual sender and receiver addresses, an outer IP header
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`containing the addresses of the first computer and the intermediate computer, a
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`unique identity, and other security parameters”) (emphases added).
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`After the message is received by the intermediate computer, the intermediate
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`computer in the embodiment uses a translation table, as shown in Figure 3, to
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`determine how to modify the unique identity (the SPI value) separate from the
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`outer IP addresses:
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`Ex. 1001 [’949 Patent], Fig. 3.
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`Figure 3 shows that the translation table of this preferred embodiment stores
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`the unique identities (which in this embodiment are SPI values, as noted above)
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`separately from the destination addresses. As shown, the table is divided into two
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`partitions. The left side (identified by the prefix “c-”) refers to the network
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`connection between the first computer and the intermediate computer, while the
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`right side (identified by the prefix “s-”) refers to the connection between the
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`intermediate computer and the second computer. Id., 11:25-31. The postfix number
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`refers to the host in question, e.g., 1 denotes the first computer, 2 denotes the
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`intermediate computer, and 3 denotes the second computer. Id.
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`The specification further explains that once the translations are complete, the
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`intermediate computer in that preferred embodiment separately substitutes (1) the
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`outer address of the intermediate computer with the address of the second
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`computer and (2) the incoming SPI value with a new SPI value:
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`[S]ince the intermediate computer does not have the cryptographic keys
`to undo the IPSec processing done by the mobile terminal, it cannot
`decrypt any encrypted portions of the packet but is able to use the outer
`IP addresses and the incoming SPI value to determine how to modify
`the outer address and the SPI to suite the second computer, which is the
`next destination. SPI is now changed to 0x56785678 in the
`intermediate computer and the address is changed to the address of
`the second computer. This is done by means of the IPSec translation
`table of FIG. 3.
`
`…
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`13
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`The new outer source address s-addr-2 (212.90.65.1) is substituted for
`the outer source address c-addr-1 (195.1.2.3), and the new outer
`destination address [(the second destination address)] s-addr-3
`(103.6.5.4) is substituted for the outer destination address c-addr-2
`(212.90.65.1) [(the first destination address)]. The new SPI value [(the
`second unique identity)], s-SPI-3 (0x56785678), is substituted for the
`SPI value c-SPI-2 (0x12341234) [(the first unique identity)]. If more
`than one SPI values are used, all the SPI values are substituted
`similarly.
`
`Ex. 1001 [’949 Patent], 11:55-12:8 (emphasis added).
`
`Not once does the Specification provide an embodiment where the
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`destination address is the same as, or a component of, the “unique identity.” See
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`Becton, Dickinson, 616 F.3d at 1254-1255 (finding embodiments in specification
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`further supported that separate claim terms must be construed as separate
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`structures). Instead, “[t]he claims and specification of the patent consistently treat
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`these two structures as separate and distinct elements,” thereby supporting their
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`construction as separate and distinct limitations. Epistar, 566 F.3d at 1335.
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`A pertinent case is Mformation Technologies, in which the Federal Circuit,
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`applying the above principles under the Phillips claim construction standard,
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`construed a method claim to require two steps to be “distinct” from each other, and
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`rejected a broader construction that would have allowed one of the steps to be
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`“inherently part of” the other step. The claim in Mformation Technologies recited
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`the step and sub-steps of
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`. . . delivering the command from the mailbox at the
`server to the wireless device by
`establishing a connection between the wireless device
`and the server,
`transmitting the contents of the mailbox from the server
`to the wireless device, and
`accepting the contents of the mailbox at the wireless
`device . . . .
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`Mformation Techs., 764 F.3d at 1394 (emphases added). One party argued that the
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`claim should be construed so that the “establishing a connection” and
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`“transmitting” steps did not have to be “temporally distinct” from one another. Id.
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`at 1399.
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`The Federal Circuit rejected this proposed construction. It held that under a
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`correct construction, the “establishing a connection” and “transmitting” sub-steps
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`had to be “temporally distinct,” without overlap between them. Id. The Court
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`determined that “if the ‘establishing a connection’ sub-step were not temporally
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`distinct from the transmitting sub-step (and prior to it), there would be no reason to
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`specify a separate sub-step for establishing a connection at all, as it is inherently
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`part of transmitting a command.” Id. (emphasis added). Furthermore, the Court
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`explained that the patent’s specification confirmed the narrower construction
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`because “the only description of the ‘establishing a connection’ sub-step” in the
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`specification described the transmitting step as not occurring until the establishing
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`step was completed, and was, therefore, “consistent” with construing the claim to
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`require the two steps to be entirely distinct. Id.
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`For similar reasons, claim 1 of the ’949 patent should be construed under
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`Phillips to require the “intermediate computer substituting the first destination
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`address with the second destination address” and “substituting, at the intermediate
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`computer, the first unique identity with [the] second unique identity” steps to be
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`distinct from one another. First, as in Mformation Technologies, there would be no
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`reason to specify a separate step for substituting the first destination address if the
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`destination address were merely part of the unique identity. Id. at 1399. Indeed,
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`the Petition’s proposed mapping would make the separately recited step of “the
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`intermediate computer substituting the first destination address” literally
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`superfluous, because the purported “destination address” in the proposed
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`combination would be part of the purported “unique identity,” as explained below.
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`Moreover, as shown above, just as in Mformation Technologies, the
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`description of these steps in the specification is exclusively consistent with the two
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`steps being distinct, and inconsistent with the two steps overlapping or one step
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`16
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`being a part of the other step. Id.; Ex. 1001 [’949 Pat.], Abstract, FIG. 3, 6:33-42,
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`6:67:7:7, 11:25-31, 11:55-12:8.
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`Thus, claim 1 should similarly be construed so that the step of intermediate
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`computer substituting the first destination address with the second destination
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`address cannot be merely part of the step of substituting the first unique identity
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`with the second unique identity at the intermediate computer.
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`The requirement that the unique identity and destination address must be
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`separate and distinct undermines the unpatentability arguments in the Petition.
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`Although Petitioner does not explicitly argue that it is necessary that, for claim
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`construction purposes, the “destination address” may be the same as or a
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`component of the “unique identity,” its obviousness arguments depend on this
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`being true. Infra § IV-A. In its claim construction section, the Petition contends
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`that “the ’949 patent does not further restrict in any way the parameters that may
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`be included in the recited ‘unique identity’”—thereby taking the position that one
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`of the parameters included in the unique identity could also be the destination
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`address. Pet., 19. Petitioner fails to cite any support for this claim construction
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`positi
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