Case IPR2019-00823
`Patent 9,712,494
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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 IPR2019-00823
`Patent 9,712,494
`____________
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`Patent 9,712,494
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`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MPH TECHNOLOGIES OY,
`Patent Owner.
`____________
`
`Case IPR2019-00823
`Patent 9,712,494
`____________
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
`
`
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`TABLE OF CONTENTS
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`Case IPR2019-00823
`Patent 9,712,494
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`Page
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`I.
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`INTRODUCTION ......................................................................................... 1
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`II. CLAIM CONSTRUCTION .......................................................................... 2
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`A. Mobile Computer ................................................................................ 2
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`1.
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`2.
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`The Institution Decision Correctly Held That The
`“Mobile Computer” Must At Least Be “Moving From
`One Network To Another” ....................................................... 3
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`Petitioner Incorrectly Argues That, Contrary To The
`Panel’s Holding, The “Mobile Computer” Need Only
`Be Capable Of Moving Between Networks ............................ 4
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`a.
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`b.
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`c.
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`Petitioner’s Construction Is Inconsistent With
`The Intrinsic Evidence ................................................... 4
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`Petitioner’s Argument About The Background
`Of The Invention’s Use Of The Terms Mobile
`Terminal/Mobile Host Misses The Point ...................... 6
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`The Evidence Provided By Dr. Goldschlag On
`“Mobile Terminal” Is Unreliable And
`Unpersuasive ................................................................... 7
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`i.
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`ii.
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`Dr. Goldschlag’s Testimony Is Evasive,
`Contradictory, And Biased .................................. 7
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`Dr. Goldschlag Inappropriately Relies On A
`Generic College Dictionary ................................. 9
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`3.
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`Petitioner Incorrectly Argues That, Contrary To The
`Panel’s Holding, The “Mobile Computer” Need Only
`Be Capable Of Moving Between Physical Locations ........... 10
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`B.
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`Substitute/Substituting ...................................................................... 10
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`ii
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`III. GROUNDS 1 AND 2: CLAIMS 1-11 ARE PATENTABLE OVER
`THE COMBINATION OF RFC3104 AND GRABELSKY ....................11
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`Case IPR2019-00823
`Patent 9,712,494
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`A.
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`B.
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`The Reply Relies On Dr. Goldschlag’s Obviousness
`Testimony, Which Applies An Erroneous Standard ..................... 11
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`RFC3104/Grabelsky Fail to Teach The Mobile Computer
`Of Claims 1-5 And 8-11 .................................................................... 13
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`1.
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`2.
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`3.
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`4.
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`5.
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`Petitioner Is Advancing A New Theory Of RFC3104
`That Was Not Disclosed In The Petition And Should
`Be Disregarded ........................................................................ 13
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`Petitioner’s New Theory Is A Reimagination Of
`RFC3104 That Is Not Disclosed Or Remotely
`Suggested By The Reference .................................................. 16
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`Petitioner’s Effort to Support Its New Theory With
`Mischaracterized Deposition Testimony Fails ..................... 19
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`Petitioner’s Application Of RFC3104 Using Its New
`Theory Fails To Meet The Limitations Of Claim 1 ............. 21
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`A POSITA Would Have No Expectation Of Success
`That Petitioner’s Newly Theorized Modification Of
`The RFC3104 System Would Operate As Intended ............ 23
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`C. RFC 3104/Grabelsky Fail To Teach Claim 1’s Translation
`Table That Enables “The Intermediate Computer . . . To
`Find A Destination Address . . . Using the Unique Identity”
`Read From The Secure Message Received From The Mobile
`Computer ........................................................................................... 24
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`D.
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`The Dependent Claims Are Separately Patentable ........................ 27
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`1.
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`2.
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`Claim 2 Should Be Confirmed ............................................... 27
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`RFC3104/Grabelsky Fail To Teach The Two-Part
`Translation Table Of Claim 4 ................................................ 27
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`3.
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`RFC3104/Grabelsky Fail To Teach The “Source
`Address Of The Forwarded Message Is The Same As
`The First Network Address” Per Claim 11 .......................... 27
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`IV. CONCLUSION ............................................................................................28
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`TABLE OF AUTHORITIES
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`Case IPR2019-00823
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`Page(s)
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`CASES
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`Ex Parte Wang,
`2014 WL 6789993 (Patent Tr. & App. Bd.: November 26 2014) (Appeal
`2012-009481) ......................................................................................................24
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ..........................................................................10
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`TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ..........................................................................12
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`Wasica Fin. GmbH v. Continental Automotive Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) ..........................................................................15
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`EXHIBIT LIST
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`2001 U.S. Pat. No. 8,346,949 B2
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`2002 Declaration of George N. Rouskas
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`2003 CV of George N. Rouskas
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`2004 Network Working Group Request for Comments: 3103 (M. Borella, et
`al.) (Oct. 2001), “Realm Specific IP: Protocol Specification” (RFC3103)
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`2005 Declaration of Patrick Maloney (“Maloney dec.”) in Support of RFC3103
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`2006 U.S. Pat. No. 9,712,502 (Ex. 2002 from IPR2019-00824)
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`2007
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`Institution Decision from IPR2019-00822 for U.S. Pat. No. 8,346,949
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`2008 Deposition Transcript of Dr. Goldschlag (1-30-2020)
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`2009 CV of Michael Borella
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`2010 Declaration of Michael Borella
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`2011 RFC2131, “Dynamic Host Configuration Protocol,” (March 1997) (R.
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`2012 Declaration of Patrick Maloney (“Maloney dec.”) in Support of RFC2131
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`2013 Deposition Transcript of Dr. Goldschlag (7-7-2020)
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`2014 Time-Stamped Deposition Transcript of Dr. Goldshlag (7-7-2020)
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`I.
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` INTRODUCTION
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`Proper claim construction in this case is dispositive for Patent Owner (PO).
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`But even under Petitioner’s proposed construction, the Petition still fails. Claim 1
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`of the 494 Patent describes a mobile computer sending secure messages to a
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`destination terminal through an intermediate computer over a secure connection. A
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`unique identity found in a secure message is used by a translation table to
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`determine a destination address for the message before it is securely forwarded to
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`the destination address. For at least three reasons, Petitioner has not proven Claim
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`1 would have been obvious.
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`First, the panel properly interpreted the “mobile computer” of claim 1 to at
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`least require “moving between networks.” Petitioner admits that if the computer in
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`the proposed RFC3104/Grabelsky combination moved between networks, it would
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`lose its connection. Therefore, if it were a “mobile computer,” the combination’s
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`computer could not send a secure message to an intermediate computer that
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`securely forwards the secure message to the destination address as claimed.
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`Second, even if the computer in the combination were considered a “mobile
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`computer,” the limitations of the claim are not satisfied because the
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`RFC3104/Grabelsky combination fails to teach claim 1’s recited feature of a
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`translation table that translates the unique identity in the received message to a
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`destination address to which the message is forwarded. Grabelsky’s address table
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`1
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`does not disclose mapping a tuple (the alleged “unique identifier” from RFC3104)
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`to a destination address.
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`Third, Petitioner offers a wholly new theory of the case involving a
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`contrived scenario of hosts engaging in a flurry of activity including connecting,
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`disconnecting, and reestablishing secure connections that is not disclosed in
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`RFC3104. This is a major modification to the system disclosed in RFC3104. A
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`POSITA would have no reasonable expectation of success that RFC3104 could be
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`modified as proposed while serving its intended purpose of providing for the two-
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`way secure transmission of packets between the hosts through the RFC3104 server.
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`The dependent claims are separately patentable.
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`II. CLAIM CONSTRUCTION
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`A. Mobile Computer
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`The panel correctly held that a “mobile computer” must at least be “moving
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`from one network to another.” Instn. Dec. (Paper 7) 10.
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`Petitioner’s proposed construction—"a computer that is capable of moving
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`between networks or physical locations” (Reply 2)—is inconsistent with that
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`holding and with the intrinsic evidence.
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`1. The Institution Decision Correctly Held That The “Mobile
`Computer” Must At Least Be “Moving From One Network
`To Another”
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`The intrinsic evidence supports the panel’s construction that the recited
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`“mobile computer” must at least be “moving from one network to another.” Instn.
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`Dec. (Paper 7) 10.
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`The specification describes mobility as follows:
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`In this text, the term mobility and mobile terminal does not
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`only mean physical mobility, instead the term mobility is
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`in the first hand meant moving from one network to
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`another, which can be performed by a physically fixed
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`terminal as well.
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`Ex. 1001 [494 Patent] 4:34-38 (emph. added). The plain import of “in the first
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`hand” is that a requirement of mobility is that the computer is “moving from one
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`network to another.”
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`The panel’s holding, that a “mobile computer” must at least be “moving
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`from one network to another,” is supported by other portions of the specification as
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`well. The summary and detailed description of the invention consistently describe
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`mobile computers as being devices that are moving from one network to another.
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`See POR 14-16 (citing 494 Patent 7:56-8:2, 8:3-10, 11:5-29). The background
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`section of the 494 Patent consistently disparages secure connection systems where
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`the computer is not moving from one network to another and instead are capable of
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`only static secure connections. POR 12-14 (citing Ex. 2002 [Rouskas Decl.] ¶ 83;
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`494 Patent 4:15-27, 4:42-45, 4:60-64]. Thus, the mobile computer is explicitly
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`described as one that is not fixed to a static secure connection (its home address)
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`but is instead moving between networks.
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`Also, as the Board correctly noted (Instn. Dec. 10), a second passage of the
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`494 Patent provides confirmation. Ex. 1001[494 Patent] 4:50-51 (“The mobile
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`terminal is mobile in the sense that it changes its network point of attachment
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`frequently.”).
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`2. Petitioner Incorrectly Argues That, Contrary To The
`Panel’s Holding, The “Mobile Computer” Need Only Be
`Capable Of Moving Between Networks
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`a. Petitioner’s Construction Is Inconsistent With The
`Intrinsic Evidence
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`Petitioner argues that the claimed “mobile computer” does not need to be
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`“moving between networks” (as held by the panel) so long as it is “capable of”
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`moving between networks. Reply, 2. Petitioner’s argument is incorrect because it
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`contradicts the claim language, the specification’s definition, the detailed
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`description, and the patent’s stated purpose.
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`First, the language of Claim 1 recites the “mobile computer” in a specific
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`context. For example, the “mobile computer” sends a “secure message…to the
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`first network address having an encrypted data payload of a message and a unique
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`identity, the data payload encrypted with a cryptographic key derived from a key
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`exchange protocol,” where an intermediate computer assigned with the first
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`network address in a telecommunications network “securely forward[s] the
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`encrypted data payload to the destination address using a network address of the
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`intermediate computer as a source address of a forwarded message containing the
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`encrypted data payload.” It is not enough that the computer be capable of moving
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`between networks in some other context at some other time. The mobile computer
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`must be moving between networks in the recited context.
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`Second, Petitioner’s argument contradicts the specification’s definition,
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`adopted by the panel, that “the term mobility is in the first hand meant moving
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`from one network to another.” Ex. 1001 [494 Patent] 4:34-38. Merely being
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`capable of moving is insufficient.
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`Third, Petitioner’s argument contradicts other portions of the detailed
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`description, as discussed above in Section II.A.1, that confirm the “mobile
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`computer” is actually “moving from one network to another.”
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`Fourth, Petitioner’s argument is inconsistent with the patent’s stated
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`purpose: to securely forward a secure message when a computer is mobile, rather
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`than merely when it is fixed to a certain network. Ex. 1001 [494 Patent] 4:17-38;
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`7:56-61. The panel’s holding comports with that purpose.
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`b. Petitioner’s Argument About The Background Of The
`Invention’s Use Of The Terms Mobile Terminal/Mobile
`Host Misses The Point
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`Petitioner’s Reply spends three pages arguing that the use of terms such as
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`mobile terminal and mobile host in the background section involves static secure
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`connections and therefore PO’s construction is incorrect. Reply 5-8. However, as
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`explained above in Section II.A.1, the term “mobile computer” is informed by
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`fundamental aspects of the specification. First, the background section of the 494
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`Patent consistently disparages secure connections where the mobile device is
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`confined to a static secure connection—a point that Petitioner does not dispute.
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`Second, the detailed description section of the 494 Patent consistently describes a
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`mobile computer as moving from one network to another and thereby is not limited
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`to a static secure connection—another point that Petitioner does not dispute.
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`Petitioner refers to testimony of Dr. Rouskas, but Dr. Rouskas offered no
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`opinions on the meaning of “mobile terminal” or “mobile host” in the cited
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`testimony. See Reply, citing Ex. 1023 [Dep. Tr. Rouskas] 175:12-176:1. What is
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`important—and contrary to the Petition’s assertion (Reply 7)—is that Dr. Rouskas
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`(unlike Petitioner) considered the specification as a whole, including the background
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`section and the detailed description in forming his opinion on the meaning of
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`“mobile computer.” Ex. 2002 [Rouskas Decl.] ¶¶ 82-85.
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`c. The Evidence Provided By Dr. Goldschlag On “Mobile
`Terminal” Is Unreliable And Unpersuasive
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`Dr. Goldschlag’s testimony offered in support of Petitioner’s construction of
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`“mobile computer” is unreliable because it is (i) evasive, contradictory, and biased;
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`and (ii) inappropriately based on a generic college dictionary.
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`i. Dr. Goldschlag’s Testimony Is Evasive,
`Contradictory, And Biased
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`Dr. Goldschlag’s opinions should be given little weight because his
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`deposition testimony was contradictory and evasive, with his answers depending
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`on which party was asking the questions.
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`For example, during cross-examination Dr. Goldschlag was asked a simple
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`yes-or-no question: does a handheld calculator in the 2002 timeframe meet his
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`definition of the claim term “mobile computer”? Over the course of more than an
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`hour and a half, Dr. Goldschlag avoided giving a straightforward and responsive
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`answer to the question. Ex. 2014 (Dep. Tr. 133:10-171:13) (Time: 14:20:57-
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`15:56:11). Dr. Goldschlag’s evasiveness and filibustering eventually forced Patent
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`Owner to contact the Board, which resulted in the Board asking Apple’s counsel to
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`instruct the witness to try to answer questions yes or no with whatever explanation
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`is required. (Dep. Tr. 190:18-191:22).
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`After that instruction, Dr. Goldschlag directly answered the question and
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`testified that a handheld calculator in the 2002 timeframe did not meet his
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`definition of “mobile computer.” Ex. 2014 [Goldschlag Depo.] 192:6-193:5 (“it
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`wouldn’t be a mobile computer.”). As this inconsistency demonstrates, Dr.
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`Goldschlag’s opinion testimony in this case is unreliable and entitled to little or no
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`weight.
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`Tellingly, after having the opportunity between cross and re-direct to discuss
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`his testimony with Apple’s counsel, and being asked the same question by them on
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`redirect, Dr. Goldschlag gave the opposite answer he had given to PO’s counsel.
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`In particular, Dr. Goldschlag changed his testimony to say a handheld calculator
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`did in fact meet his definition of “mobile computer.” Ex. 2014 [Goldschlag Depo.]
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`290:1-13) (“a hand-held calculator circa, you know, 2000, would be a mobile
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`computer”).
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`Dr. Goldschlag’s deposition testimony was inconsistent and contradictory in
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`other ways. Just as an example, he confidently and repeatedly testified that
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`common handheld calculators were computers. Ex. 2014 [Goldschlag Depo.]
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`129:1-4, 130:4-5. When it became clear that that answer might hurt his client, Dr.
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`Goldschlag walked back his testimony, testifying he did not know and could not
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`figure out whether they were computers. Ex. 2014 [Goldschlag Depo.] 171:11-13,
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`192:15-16, 290:4-5.
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`This was emblematic of Dr. Goldschlag’s overall approach to this case, in
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`which even Dr. Goldschlag was unable to say he was evaluating the issues in a
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`neutral fashion. Ex. 2008 [First Goldschlag Depo.] 8:13-19:17.
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`Patent Owner respectfully submits that the Board should take into
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`consideration Dr. Goldschlag’s evasive and inconsistent testimony and apparent
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`bias in according the weight given to his testimony overall.
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`ii. Dr. Goldschlag Inappropriately Relies On A
`Generic College Dictionary
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`Dr. Goldschlag’s claim construction largely relies on a non-technical
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`definition of “mobile” selected from a generic college dictionary. Ex. 1022
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`[Goldschlag Reply Decl.] ¶ 9 (citing Ex. 1025 [Merriam’s Collegiate Dictionary]
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`797). Ex. 2013 [Dep. Tr. Goldschlag] 198:5-8; 199:9-14. The definition Dr.
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`Goldschlag selected (“capable of moving or being moved”) used a “missile
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`launcher” as an example. Ex. 1025, 797. That is how far off it is from the issue at
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`hand.
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`Moreover, Dr. Goldschlag’s reliance on a generic college dictionary definition
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`relating to missile launchers had a significant impact on his erroneous construction.
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`Under cross-examination, he admitted that the “capable of” language of his
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`construction was lifted directly from that dictionary definition. Ex. 2013 [Dep. Tr.
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`Goldschlag] 200:21-201:5. Dr. Goldschlag’s heavy reliance on a general-use
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`dictionary definition is contrary to Phillips v. AWH Corp., 415 F.3d 1303, 1320-
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`1322 (Fed. Cir. 2005) (en banc).
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`3. Petitioner Incorrectly Argues That, Contrary To The
`Panel’s Holding, The “Mobile Computer” Need Only Be
`Capable Of Moving Between Physical Locations
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`Petitioner’s argument, that the recited “mobile computer” need only move
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`between physical locations contradicts the panel’s holding and is not supported by
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`the testimony Petitioner cites.
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`Dr. Rouskas consistently testified that “mobile computer” in the claims
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`requires a “computer that moves from one network to another” and not merely
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`moving from one physical location to another. Ex. 1023 [Rouskas Depo.] 17:6-20:3,
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`159:13-160:10; Ex. 2002 [Rouskas Decl.] ¶ 78-85.
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`Dr. Borella did not expressly construe “mobile computer,” but adopts the
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`panel’s holding that it at least requires moving from one network to another. Ex.
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`2010 [Borella Decl.] ¶ 42; Ex. 1024 [Borella Depo.] 230:19-20.
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`Dr. Goldschlag’s testimony on this topic is unreliable, as demonstrated
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`above in section II.A.2.c.i.
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`B.
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`Substitute/Substituting
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`On reply, Petitioner declines to address this claim term. Reply 8. No
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`response is provided to PO’s construction or the evidence supporting it. The term
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`requires construction, however, because Petitioner continues to assert that the
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`substituting required by claim 2 is met by merely adding a header to an existing
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`header. See POR (citing Pet. 50-52). Apple has not withdrawn this theory, so the
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`dispute remains. See Reply 26 (citing Pet. 50-52, Ex. 2022 [Goldschlag Reply
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`Decl.] ¶ 52).
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`III.
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`GROUNDS 1 AND 2: CLAIMS 1-11 ARE PATENTABLE OVER THE
`COMBINATION OF RFC3104 AND GRABELSKY
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`Obviousness requires that as of the date of the invention (a) the prior art
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`teaches or suggests each of the limitations of the claim; (b) there exists an apparent
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`reason to combine and/or modify the prior art as proposed; and (c) a person of
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`ordinary skill would have a reasonable expectation of success that the proposed
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`combination and/or modification of the prior art would operate for its intended
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`purpose. None of these three requirements was met by the Petition. The Reply does
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`not cure the deficiency.
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`A. The Reply Relies On Dr. Goldschlag’s Obviousness Testimony,
`Which Applies An Erroneous Standard
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`The Reply relies primarily on Dr. Goldschlag’s testimony. However, that
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`testimony is unreliable.
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`First, Dr. Goldschlag applies an incorrect obviousness standard in which an
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`apparent reason to combine is not needed. In his original declaration, Dr.
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`Goldschlag stated that for obviousness to be established it is only necessary to: (1)
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`identify the particular references that, singly or in combination, make the patent
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`obvious; (2) specifically identify which elements of the patent claim appear in each
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`of the asserted references; and (3) explain how the prior art references could have
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`been combined in order to create the inventions claimed in the asserted claim. Ex.
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`1002 [Goldschlag Decl.] ¶ 25. In his reply declaration, Dr. Goldschlag reiterates
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`that he has applied this framework in his obviousness analysis. Ex. 1022
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`[Goldschlag Reply Decl.] ¶ 2.
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`Dr. Goldschlag’s test for obviousness fails to include the critical element
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`that a POSITA would have an apparent reason to combine and/or modify the prior
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`art as proposed. Instead, Dr. Goldschlag’s “test” is that the prior art could have
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`been combined in order to create the invention defined by the claim. Dr.
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`Goldschlag’s test not only departs from the requirements of KSR, but it is actually
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`a how-to guide for carrying out the hindsight reconstruction that KSR warns
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`against: that the prior art could be combined—not would be combined—in order
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`to create the invention defined by the claim. TQ Delta, LLC v. CISCO Sys., Inc.,
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`942 F.3d 1352 (Fed. Cir. 2019) (cite omitted) (original italics) (reversing because
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`expert reasoning that “one of ordinary skill in the art could combine these
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`references, not that they would have been motivated to do so” is insufficient).
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`Dr. Goldschlag’s original and reply declarations are replete with conclusory
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`reasoning applying his hindsight-biased framework to find obviousness based on
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`his “could have” standard. See, e.g., Ex. 1022 [Reply Decl.] ¶ 35 (values for first
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`partition “could simply be substituted” with values for second partition), ¶ 39
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`(logical parameters “could be” stored in the transition table), ¶ 40 (host Y or X
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`“could be” a mobile computer); Ex. 1002 [Original Decl.] ¶ 94 (host Y or X “could
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`be” a mobile computer), ¶ 132 (values for the first partition “could” be substituted),
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`¶ 153 (RSIP server N “could” be given key information).
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`Second, Dr. Goldschlag’s obviousness test also omits the requirement that
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`he must demonstrate that a person of ordinary skill would have a reasonable
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`expectation of success that the proposed combination and/or modification of the
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`prior art would operate for its intended purpose.
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`Third, as demonstrated in Section II.A.2.c.i, Dr. Goldschlag is generally an
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`unreliable witness in these proceedings.
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`B. RFC3104/Grabelsky Fail to Teach The Mobile Computer Of
`Claims 1-5 And 8-11
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`1. Petitioner Is Advancing A New Theory Of RFC3104 That Was
`Not Disclosed In The Petition And Should Be Disregarded
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`Petitioner’s original theory was that RFC3104 disclosed that Host Y was the
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`recited mobile computer that would be changing network addresses during the
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`course of an IPSec-over-RSIP1 session where Y would be sending data packets to
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`X through Server N. Pet. 29 (“RFC3104 discloses an RSIP server N (‘intermediate
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`computer’) forwarding a message (e.g., data packets) sent from a host Y (‘mobile
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`computer’) to a host X (‘destination’)”), 30 (“Once an SA is established, host Y is
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`able to securely send messages to RSIP client X, forwarded through RSIP server
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`N.”), 34 (host Y . . . would be a “mobile computer” that sends IPSec packets to its
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`peer via RSIP server N.”). The Petition’s theory did not mention anything about
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`the IPSec-over-RSIP connections having to be disconnected and reestablished or
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`reconnected while the alleged mobile computer Host Y moves from one network to
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`another. Neither the Petition nor Dr. Goldschlag’s declaration even mentions the
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`words “disconnect” or “reconnect.”
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`In its Reply, Petitioner and its expert have discarded the Petition’s argument
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`and now they forward a completely new theory which is that the host Y would
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`function as a mobile computer by changing addresses as it moves between
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`1 Dr. Goldschlag correctly explained that RFC3104 discloses creating an
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`RSIP connection and an IPSec connection. The IPSec connection is layered over
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`the RSIP connection, i.e., the connection an IPSec-over-RSIP connection. See Ex.
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`2013 [Goldschlag Depo.] 236:2-22; 237:15-238:5; 239:8-13.
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`14
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`networks, disconnecting its IPSec-over-RSIP connection in the first network, and
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`then establishing a different IPSec-over-RSIP connection at the new network.2 In
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`short, the established IPSec-over-RSIP connection would be destroyed and a new
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`one would have to be created. Reply 10-14.
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`“Rather than explaining how its original petition was correct, [Petitioner]’s
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`subsequent arguments amount to an entirely new theory of prima facie obviousness
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`absent from the petition. Shifting arguments in this fashion is foreclosed by
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`statute, our precedent, and Board guidelines.” Wasica Fin. GmbH v. Continental
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`
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`2 Petitioner’s new theory creates a dilemma. If host Y is the mobile
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`computer that establishes a new IPSec-RSIP connection, then host Y will establish
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`a binding to address Na which allows Server N to decapsulate packets received
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`from Yb and route them from Na to Xa--no demultiplexing using tuples occurs.
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`This conflicts with Petitioner’s reading of the claim onto RFC3104 where Yb is a
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`legacy host sending packets to Xa which requires Server N to perform tuple
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`demultiplexing so that Petitioner can meet the “translation table” mapping
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`required by claim 1. See Pet. 21, 45. Petitioner is applying the reference to the
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`claim in two contradictory manners, and the new theory does not allow the
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`reference to meet the translation table limitation of the claim.
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`15
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`Automotive Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). This is an improper
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`new argument based on improper evidence that should be disregarded by the
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`Board. Moreover, Petitioner’s disavowal of its original theory coupled with its
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`submission of an improper new theory and evidence is dispositive of this case.
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`Without the improper new theory and evidence, Petitioner has no case that the
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`claimed combination of the mobile computer, secure messages and secure
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`forwarding is met by the references.
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`2. Petitioner’s New Theory Is A Reimagination Of RFC3104
`That Is Not Disclosed Or Remotely Suggested By The
`Reference
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`
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`Petitioner’s reinterpretation of RFC3104 is a completely imagined one.
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`Petitioner argues that RFC3104 discloses a “new scenario” where host computers
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`X and Y in the RSIP system (a) will regularly change networks, (b) will
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`intentionally disconnect their existing IPSec-over-RSIP connections and then (c)
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`will reestablish new IPSec-over-RSIP connections through repeated new rounds of
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`signaling exchanges at new networks. Petitioner’s new scenario is not remotely
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`disclosed in RFC3104.
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`
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`RFC3104 refers to the figure below and states that its discussion “assumes
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`this model,” which has a host X at address Xa and a host Y at address Yb:
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`16
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`POR 27 (showing Core Diagram of RFC3104). RFC3104 goes on to describe how
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`the RSIP connection is established between Xa and the RSIP Server N and how an
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`IPSec connection between X and Y is established and layered over the RSIP
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`connection. Ex. 1004 [RFC3104] 2-5. Once the connections are established, “IPsec
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`packets from Y destined for X arrive at RSIP server N [where] [t]hey are
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`demultiplexed based on the following minimum tuple of demultiplexing fields: -
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`protocol (50 or 51) – SPI - destination IP address. If N is able to find a matching
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`mapping, it tunnels the packet to X . . .” Ex. 1004 [RFC3104] 5.
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`
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`RFC3104 also discloses an example of how IPSec-over-RSIP might be
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`implemented in the so-called “Roadwarrior Diagram”:
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`POR 27. Here, it is conceptualized that a remote user with laptop X connects
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`through RSIP Server N to the internal corporate network to the “user’s desktop”
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`host Y including the IPSec connection between X and Y layered over the RSIP
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`connection. Ex. 1004 [RFC3104] 16.
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`Nowhere in either the Core Diagram or the Roadwarrior Diagram does
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`RFC3104 disclose hosts Xa or Yb (a) changing networks, (b) terminating their
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`RSIP and IPSec connections, and (c) reestablishing new IPSec-over-RSIP
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`connections through new rounds of signaling at a new network. The document
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`does not refer to terminating an IPSec connection or an RSIP connection, or to
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`reestablishing an IPSec connection or an RSIP connection. PO’s expert testimony
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`shows that Petitioner’s new scenario set forth in its Reply is not disclosed or
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`suggested by RFC3104. See Ex. 2002 [Rouskas Decl.] ¶¶ 56-64, 93-98, 100-108,
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`113-117.
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`
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`The first listed author of RFC3104, Dr. Michael Borella, testifies that
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`RFC3104 was not concerned with mobility and disclosed the X and Y hosts as
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`being at static addresses Xa and Yb. Dr. Borella explains that RFC3104 did not
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`disclose X or Y changing addresses, much less does it describe going through
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`rounds of changing networks, terminating connections, and then reestablishing new
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`connections. Ex. 2010 [Borella Dec.] ¶¶ 26-39, 46-63.
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`18
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`3. Petitioner’s Effort To Support Its New Theory With
`Mischaracterized Deposition Testimony Fails
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`Petitioner asserts that Dr. Rouskas testified that “the Roadwarrior scenario
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`does contemplate a scenario where the laptop would be moved to different
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`locations, and it would reconnect back to the server.” Reply 10, 12 (citing Ex. 1023
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`152:10-153:9). The quote is not Dr. Rouskas’s testimony—it is Apple counsel’s
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`question. Ex. 1023 152:16-20. Further, Petitioner’s counsel had stated that the
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`predicate to his question was: “I'm not asking you about whether or not the laptop
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`moves while maintaining a connection. I'm simply asking you, in the Roadwarrior
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`scenario is it contemplated that the laptop might move locations, regardless of
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`whether it maintains a connection or not?” Ex. 1023 152:1-6. Dr. Rouskas’s
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`innocuous response that “a laptop can be expected to connect to different networks
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`and have different fixed IP addresses at different points in time” (Ex. 1023 152:13-
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`15) does not remotely support Petitioner’s reinterpretation of RFC3104.
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`
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`Dr. Rouskas never testified that RFC3104 discloses that the host could
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`change networks and still send a secure message as required by the claims. He did
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`not testify that the host could change networks, intentionally disconnect the
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`existing IPSec-over-RSIP connection and reconnect to a new connection after
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`destroying the first connection. He said the very opposite. The same is true for the
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`testimony of Dr. Borella. The cited testimony from Dr. Borella (Reply 10, 12,
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`citing Borella at 224:9-2
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