Paper 26
`Trials@uspto.gov
`Date: November 4, 2020
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`MPH TECHNOLOGIES OY,
`Patent Owner.
`
`
`
`IPR2019-00823
`Patent 9,712,494 B2
`__________________________
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, KAMRAN JIVANI, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`Trials@uspto.gov
`Date: November 4, 2020
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`MPH TECHNOLOGIES OY,
`Patent Owner.
`
`
`
`IPR2019-00823
`Patent 9,712,494 B2
`__________________________
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, KAMRAN JIVANI, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2019-00823
`Patent 9,712,494 B2
`INTRODUCTION
`I.
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Apple Inc. (“Petitioner”) challenges the patentability of claims 1–11 (“the
`challenged claims”) of U.S. Patent No. 9,712,494 B2 (Ex. 1001, “the ’494
`patent”), owned by MPH Technologies Oy (“Patent Owner”). We have
`jurisdiction under 35 U.S.C § 6. This Final Written Decision is entered
`pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed herein, we determine that Petitioner has
`shown by a preponderance of the evidence that claims 1, 3, 5–8, and 10 are
`unpatentable, but Petitioner has not shown by a preponderance of the
`evidence that claims 2, 4, 9, and 11 are unpatentable.
`II. BACKGROUND
`
`A. Procedural History
`Petitioner filed a Petition requesting inter partes review of the
`challenged claims of the ’494 patent. Paper 2 (“Pet.”). The Petition is
`supported by the Declaration of David Goldschlag, Ph.D. (Ex. 1002). Patent
`Owner filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We instituted inter partes review of all of the challenged claims of the
`’494 patent on all of the grounds raised in the Petition. Paper 7 (“Dec. on
`Inst.”), 6–7, 44. Patent Owner filed a Response to the Petition. Paper 14
`(“PO Resp.”). The Response is supported by the Declaration of Professor
`George N. Rouskas, Ph.D. (Ex. 2002) and the Declaration of Michael S.
`Borella (Ex. 2010). Petitioner filed a Reply to Patent Owner’s Response.
`Paper 17 (“Pet. Reply”). The Reply is supported by an additional
`Declaration of David Goldschlag, Ph.D. (Ex. 1022). Patent Owner filed a
`Sur-Reply to Petitioner’s Reply. Paper 24 (“PO Sur-Reply”).
`
`2
`
`
`
`IPR2019-00823
`Patent 9,712,494 B2
`An oral hearing was held on August 11, 2020. A transcript of the oral
`hearing is included in the record. Paper 25 (“Tr.”).
`
`B. Related Matter
`The parties identify MPH Techs. Oy v. Apple Inc., Case No. 4:18-cv-
`05935-PJH (N.D. Cal.), as a matter that may affect or would be affected by a
`decision in this proceeding. Pet. 2; Paper 4, 1. The parties also identify as
`related matters the following inter partes reviews: IPR2019-00822,
`IPR2019-00824, IPR2019-00825, and IPR2019-00826, which involve the
`parties and patents related to the ’494 patent. Pet. 2; Paper 4, 1.
`
`C. The Challenged Patent (Ex. 1001)
`The ’494 patent relates to the “secure forwarding of a message from a
`first computer to a second computer via an intermediate computer in a
`telecommunication network.” Ex. 1001, 6:38–41. According to the ’494
`patent, “[a]n essential idea of [its] invention is to use the standard [Internet
`Protocol (‘IP’) Security (‘IPSec’)] protocol . . . between the intermediate
`computer and the second computer and an ‘enhanced IPSec protocol’
`between the first computer and the intermediate computer.” Id. at 7:38–41,
`1:54. More specifically, the ’494 patent states that “[t]he advantage of [its]
`invention is that [a] logical IPSec connection shared by the first and the
`second computer can be enhanced by the first and the intermediate computer
`without involvement of the second computer.” Id. at 10:38–41. The ’494
`patent adds: “[i]n particular[,] the so-called ‘ingress filtering’ performed by
`some routers [(e.g., the second computer)] does not pose any problems when
`translations of addresses are used.” Id. at 10:41–44.
`
`3
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`
`IPR2019-00823
`Patent 9,712,494 B2
`
`Figure 1, shown below, “illustrates an example of a
`telecommunication network of the invention” of the ’494 patent. Id. at
`9:55–56.
`
`
`
`Figure 1 shows an example of a telecommunication network in
`
`accordance with the invention of the ’494 patent. Id. at 10:4–5. As
`illustrated, the network comprises: (i) a first computer (client computer 1)
`that is served by (ii) an intermediate computer (server 2), and (iii) host
`computer 4 that is served by (iv) a second computer (security gateway 3).
`Id. at 10:4–9. Security gateway 3 “supports the standard IPSec protocol,”
`while client computer 1 and server 2 support an enhanced IPSec protocol.
`Id. at 10:9–12. The ’494 patent discloses that the first computer (i.e., client
`computer 1) in Figure 1 is a mobile terminal. Id. at 11:5–7, 11:13–14.
`
`“In the example of F[igure] 1, an IPSec connection is formed between
`. . . client computer 1 (the first computer) and . . . security gateway 3 (the
`second computer).” Id. at 10:46–48. The ’494 patent discloses that
`
`4
`
`
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`IPR2019-00823
`Patent 9,712,494 B2
`“[m]essages to be sent to . . . host terminal 4 from . . . client computer 1 are
`first sent to . . . server 2, wherein an IPSec translation[, inter alia,] . . . takes
`place.” Id. at 10:60–62. Put differently, “[w]hen the intermediate computer
`receives the packet sent . . ., it performs an address and [Security Parameters
`Index (‘SPI’)] translation, ensuring that the security gateway (host 3 of
`F[igure] 1) can accept the packet.” Id. at 12:1–4, 2:40–41. The ’494 patent
`states that “translation[s can be] . . . performed[, for example,] by means of a
`translation table stored at the intermediate computer[,with t]he outer IP
`header address fields and/or the SPI-values [being] changed by the
`intermediate computer so that the message can be forwarded to the second
`computer.” Id. at 7:46–50.
`
`According to the ’494 patent, “[m]ost of the packet is secured using
`IPSec, . . . [but] the intermediate computer . . . 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.” Id. at 12:1–11. “[T]he confidentiality of the packets is not
`compromised, . . . [because t]he intermediate computer does not know the
`cryptographic keys used to encrypt and/or authenticate the packets, and can
`thus not reveal their contents,” according to the ’494 patent. Id. at 10:26–37.
`After translation, “the message can be sent to . . . security gateway 3, which
`sends the message further in plain text to . . . host terminal 4.” Id. at 10:60–
`64.
`
`5
`
`
`
`IPR2019-00823
`Patent 9,712,494 B2
`D. The Challenged Claims
`Petitioner challenges claims 1–11 of the ’494 patent, of which claim 1
`is the sole independent claim. Claim 1 is illustrative of the challenged
`claims and is reproduced below:
`1.
`An intermediate computer for secure forwarding of
`messages in a telecommunication network, comprising:
`
`an intermediate computer configured to connect to a
`telecommunication network;
`
`the intermediate computer configured to be assigned with
`a first network address in the telecommunication network;
`
`the intermediate computer configured to receive from a
`mobile computer a secure message sent to the first network
`address having an encrypted data payload of a message and a
`unique identity, the data payload encrypted with a cryptographic
`key derived from a key exchange protocol;
`
`the intermediate computer configured to read the unique
`identity from the secure message sent to the first network
`address; and
`to access a
`
`the intermediate computer configured
`translation table, to find a destination address from the translation
`table using the unique identity, and
`
`to securely forward the encrypted data payload to the
`destination address using a network address of the intermediate
`computer as a source address of a forwarded message containing
`the encrypted data payload wherein the intermediate computer
`does not have the cryptographic key to decrypt the encrypted data
`payload.
`
`Ex. 1001, 22:40–65.
`
`6
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`IPR2019-00823
`Patent 9,712,494 B2
`E. Instituted Grounds of Unpatentability
`We instituted trial based on the following grounds of unpatentability,
`
`which are all the grounds of unpatentability raised in the Petition:
`
`References
`35 U.S.C. §1 Challenged Claims
`1. Request for Comments
`103(a)
`1–5, 8–11
`3104 (“RFC3104”), 2
`Grabelsky3
`2. RFC3104, Grabelsky,
`Wagner4
`
`103(a)
`
`6, 7
`
`
`Pet. 7–8, 20–64.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`To determine whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1,
`17 (1966). In assessing the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 103 that became effective on March 16, 2013. Because the ’494
`patent issued from an application having an effective filing date before
`March 16, 2013, we apply the pre-AIA version of the statutory basis for
`unpatentability.
`2 G. Montenegro & M. Borella, RSIP Support for End-to-end IPsec, Request
`for Comments 3104, The Internet Society (Oct. 2001) (“RFC3104”) (Ex.
`1004).
`3 U.S. Patent No. 7,032,242 B1 (issued Apr. 18, 2006) (Ex. 1006).
`4 David Wagner & Bruce Schneier, Analysis of the SSL 3.0 Protocol, Proc.
`2d USENIX Workshop on Elec. Com. (Nov. 1996) (“Wagner”) (Ex. 1007).
`
`7
`
`
`
`IPR2019-00823
`Patent 9,712,494 B2
`(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
`962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.
`In our Decision on Institution, we adopted Petitioner’s proposed
`definition for one having ordinary skill in the art at the time of the invention
`of the ’494 patent as one who would have had “a Bachelor’s (B.S.) degree in
`Computer Science, Computer Engineering, Electrical Engineering, or an
`equivalent field, as well as at least 2–5 years of academic or industry
`experience in the field of Internet security.” Dec. on Inst. 7–8 (citing
`Pet. 17; Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute our adoption of
`Petitioner’s definition, nor otherwise address the level of ordinary skill at the
`time of the invention of the ’494 patent. See generally PO Resp.; see also
`Ex. 2002 ¶ 22.
`Because Petitioner’s definition of the level of skill in the art is
`consistent with the ’494 patent and the asserted prior art, we maintain
`Petitioner’s definition for purposes of this Final Written Decision. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d
`at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s
`definition in our analysis below.
`
`IV. CLAIM CONSTRUCTION
`Because the Petition was filed after November 13, 2018, we construe
`the challenged claims by applying “the standard used in federal courts, in
`other words, the claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. [§] 282(b), which is articulated in
`Phillips [v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)].” See
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
`
`8
`
`
`
`IPR2019-00823
`Patent 9,712,494 B2
`51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Under
`Phillips, the words of a claim are generally given their “ordinary and
`customary meaning,” which is the meaning they would have to a person of
`ordinary skill in the art at the time of the invention, in light of the
`specification and prosecution history. See Phillips, 415 F.3d at 1312–13.
`Petitioner identifies for construction the term “unique identity,” as
`recited in claim 1. Pet. 18–20. Patent Owner identifies for construction the
`term (i) “mobile computer,” as recited in claim 1; and (ii) “substitute,” as
`recited in dependent claim 2. PO Resp. 10–20. We address these three
`terms below.
`
`A. Unique Identity
`In the Petition, Petitioner argues that “unique identity” means “one or
`more parameters that uniquely identify a secure connection.” Pet. 18. In our
`Decision on Institution, “we concluded that no express claim construction of
`the term ‘unique identity’ [wa]s necessary” because in its Preliminary
`Response “Patent Owner d[id] not argue that RFC3104 or Grabelsky fails to
`disclose this term and, therefore, this term is not in controversy.” Dec. on
`Inst. 9 (citations omitted). In the subsequent papers, the parties confirm
`“that there is no reason to construe this term” because “Patent Owner does
`not dispute that some form of a unique identity is found in the primary
`reference.” PO Resp. 20; see also Pet. Reply 8 (agreeing that this term need
`not be construed). Accordingly, we find that no express construction of
`“unique identity” is needed. Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need
`
`9
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`IPR2019-00823
`Patent 9,712,494 B2
`only construe terms ‘that are in controversy, and only to the extent necessary
`to resolve the controversy.’”).
`
`B. Mobile Computer
`Patent Owner argues that “the term ‘mobile computer’ in the claims
`means ‘a computer that moves from one network to another as opposed to a
`computer that is only capable of a static secure connection.’” PO Resp. 10.
`Patent Owner adds that a “mobile computer must be moving between
`networks,” and that “[m]erely being capable of moving is insufficient.” PO
`Sur-Reply 5. Petitioner argues that “[t]o the extent the Board determines
`this term needs to be construed” it means “a computer that is capable of
`moving between networks or physical locations.” Pet. Reply 2.
`We address the parties’ arguments below as they relate to (i) the claim
`language, (ii) the ’494 patent’s Specification, and (iv) the extrinsic evidence.
`
`1. Claim Language
`a. Claim 1’s Language
`Patent Owner argues that claim 1 recites a “‘mobile computer’ in a
`specific context.” PO Sur-Reply 4. To that end, Patent Owner argues that
`claim 1 recites:
`“An intermediate computer for secure forwarding of messages in
`a telecommunication network” including:
`• “the intermediate computer configured to receive from a
`mobile computer a secure message sent to the first network
`address”
`• “the intermediate computer configured to read the unique
`identity from the secure message sent to the first network
`address [from the mobile computer] . . . and to securely
`forward . . . [a] . . . message containing the encrypted data
`payload.”
`
`10
`
`
`
`IPR2019-00823
`Patent 9,712,494 B2
`PO Resp. 10–11 (quoting Ex. 1001, 22:40–65) (emphasis added). In its Sur-
`Reply, Patent Owner quotes additional language recited in claim 1, namely
`that:
`
`the “mobile computer” sends a “secure message . . . to the first
`network address having an encrypted data payload of a message
`and a unique identity, the data payload encrypted with a
`cryptographic key derived from a key exchange protocol,” where
`an intermediate computer assigned with the first network address
`in a telecommunications network “securely forward[s] the
`encrypted data payload to the destination address using a
`network address of the intermediate computer as a source address
`of a forwarded message containing the encrypted data payload.”
`PO Sur-Reply 4–5 (quoting Ex. 1001, 22:40–65). Patent Owner argues that
`“[i]t is not enough that the computer be capable of moving between
`networks in some other context at some other time,” and that “[t]he mobile
`computer must be moving between networks in the recited context” of claim
`1. Id. at 5.
`
`We disagree with Patent Owner that the language of claim 1 supports
`its proposed construction. Nothing in claim 1 relates to a mobile computer
`moving between networks. Ex. 1001, 22:40–65. Rather, claim 1 focuses on
`the operations of “[a]n intermediate computer for secure forwarding of
`messages in a telecommunication network.” Id. at 22:40–41 (reciting claim
`1’s preamble). Each of claim 1’s limitations begins with “the intermediate
`computer configured to,” followed by specific operations (i.e., “connect,”
`“be assigned,” “receive,” “read,” and “access and securely forward”). Id. at
`22:42–65. Moreover, “mobile computer” is recited only once in claim 1,
`and in context, is merely the device from which the intermediate computer
`receives a secure message. Id.
`
`11
`
`
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`IPR2019-00823
`Patent 9,712,494 B2
`b. Claim 9’s Language
`Claim 9 depends from claim 1, and recites “wherein the intermediate
`
`computer is configured to modify the translation table entry address fields in
`response to a signaling message sent from the mobile computer when the
`mobile computer changes its address such that the intermediate computer
`can know that the address of the mobile computer is changed.” Ex. 1001,
`24:7–13 (emphasis added). In our Decision on Institution, we noted that
`in its Preliminary Response, Patent Owner did not address the impact, if any,
`of dependent claim 9’s claim language on the construction Patent Owner
`proposed for this term at that time. Dec. on Inst. 11. Thereafter, in its
`Response, Patent Owner addresses claim 9 with respect to its new proposed
`construction for this term. PO Resp. 11–12.
`
`Patent Owner argues that “[c]laim 9 is consistent with [its] proposed
`construction.” Id. at 11. In particular, Patent Owner argues that “[c]laim 9
`recites a very specific configuration of the intermediate computer to modify
`the recited translation table entry address fields in response to a signaling
`message sent from the mobile computer to provide its new IP address when
`it has changed networks.” Id. According to Patent Owner, one of ordinary
`skill in the art also “would readily recognize that there are other ways by
`which mobility could be provided in claim 1 using different operations
`different from those in claim 9.” Id.
`
`We disagree with Patent Owner that claim 9 is consistent with its
`proposed construction for this term. Rather, claim 9 adds additional
`functionality to the intermediate computer (i.e., “modify the translation
`table”) for use “in response to a signaling message sent from the mobile
`computer when the mobile computer changes its address.” Ex. 1001, 24:7–
`
`12
`
`
`
`IPR2019-00823
`Patent 9,712,494 B2
`13 (emphasis added). In other words, claim 9 adds functionality to claim 1
`for “when” the mobile computer changes addresses (in other words, moves
`from one network to another). Id. Rather than supporting Patent Owner’s
`proposed construction, the language of claim 9 supports Petitioner’s
`proposed construction that a mobile computer “is capable of moving
`between networks” because claim 9’s additional functionality at least
`suggests that this functionality (including mobile computer movement) is not
`present in claim 1, which is broader than dependent claim 9. See Phillips,
`415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a
`particular limitation gives rise to a presumption that the limitation in
`question is not present in the independent claim.”); Liebel-Flarsheim Co. v.
`Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (“[W]here the limitation
`that is sought to be ‘read into’ an independent claim already appears in a
`dependent claim, the doctrine of claim differentiation is at its strongest.”)
`(citation omitted). Moreover, we do not find that Patent Owner’s arguments,
`which we discuss below, concerning the Specification’s disclosure overcome
`this presumption.
`
`2. Specification
`a. Patent Owner’s Arguments
`Patent Owner argues that the ’494 patent’s Specification “describes
`‘mobility’ in the background section” in a way that “is consistent with the
`understanding that a ‘mobile computer’ at least moves from one network to
`another.” PO Resp. 12 (citing Ex. 1001, 4:34–38). More specifically, Patent
`Owner argues that the Specification states that “[i]n this text, the term
`mobility and mobile terminal does not only mean physical mobility, instead
`the term mobility is in the first hand meant moving from one network to
`
`13
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`IPR2019-00823
`Patent 9,712,494 B2
`another, which can be performed by a physically fixed terminal as well.” Id.
`(quoting Ex. 1001, 4:34–38); PO Sur-Reply 3. Patent Owner argues that the
`plain import of this sentence “is that a requirement of mobility is that the
`computer is ‘moving from one network to another.’” PO Sur-Reply 3.
`In addition, Patent Owner argues that “the Background of the
`Invention [section of the ’494 patent] criticizes systems where the host
`computer is only capable of a static or fixed connection.” PO Resp. 13
`(citing Ex. 1001, 4:15–27, 4:42–45). Put differently, Patent Owner argues
`that “[t]he background section of the [’]494 [p]atent consistently disparages
`secure connection systems where the computer is not moving from one
`network to another and instead are capable of only static secure
`connections.” PO Sur-Reply 3–4 (citing PO Resp. 12–14 (citing Ex. 2002
`¶ 83; Ex. 1001, 4:15–27, 4:42–45, 4:60–64)); see also PO Resp. 12–14
`(citing same). Patent Owner argues that “[t]hus, the mobile computer is
`explicitly described as one that is not fixed to a static secure connection (its
`home address) but is instead moving between networks.” PO Sur-Reply 4.
`Patent Owner argues that this is confirmed by the ’494 patent’s disclosure
`that “[t]he mobile terminal is mobile in the sense that it changes its network
`point of attachment frequently.” Id. (quoting Ex. 1001, 4:50–51).
`In addition, Patent Owner argues that “the Detailed Description of the
`invention [section] describes mobile computers as being devices that are not
`limited to a static or fixed connection.” PO Resp. 14. In support of this
`argument, Patent Owner block quotes from the Detailed Description section
`of the ’494 patent, without further explanation. Id. at 14–16 (quoting Ex.
`1001, 7:56–8:10, 11:5–29). The quoted passages generally disclose, inter
`alia, that a first computer (e.g., a mobile computer) can send a signal (e.g., a
`
`14
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`IPR2019-00823
`Patent 9,712,494 B2
`registration request) to an intermediate computer so that address fields in a
`translation table can be modified to account for the change of addresses for
`enabling mobility. Id. Patent Owner then argues that “[t]hus, the mobile
`computer 1 in Figure 1 of the patent is described as maintaining an IPSec
`connection through second computer 3 because the mobile computer is not
`restricted to a static or fixed address.” Id. at 16 (annotating Ex. 1001, Fig. 1)
`(emphasis added). Similarly, Patent Owner argued, during the oral hearing,
`that a computer “is functioning as a mobile computer insofar [as] it is
`moving from one network to another and maintaining, the key is
`that it’s maintaining the same secure connection” — “it’s moved from one
`network to another and ha[s] a different address, but it doesn’t have to
`establish a new secure connection.” Tr. 49:14–19 (emphasis added).
`In addition, Patent Owner argues that its proposed construction is
`consistent with the ’494 “patent’s stated purpose: to securely forward a
`secure message when a computer is mobile, rather than merely when it is
`fixed to a certain network.” PO Sur-Reply 5 (citing Ex. 1001, 4:17–38,
`7:56–61).
`Lastly, Patent Owner discounts Petitioner’s reliance on the
`background section’s discussion of a mobile terminal and a mobile host
`allegedly forming static secure connections, and instead Patent Owner
`argues that its proposed construction “is informed by fundamental aspects of
`the [S]pecification,” namely (i) that “the background section of the [’]494
`[p]atent consistently disparages secure connections where the mobile device
`is confined to a static secure connection,” and (ii) “the detailed description
`section of the [’]494 [p]atent consistently describes a mobile computer as
`
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`IPR2019-00823
`Patent 9,712,494 B2
`moving from one network to another and thereby is not limited to a static
`secure connection.” Id. at 6.
`
`b. Petitioner’s Arguments
`Petitioner argues that Patent Owner’s proposed construction is “an
`improper and overly narrow construction of the term ‘mobile computer’
`which attempts to import numerous additional requirements into this basic
`term.” Pet. Reply 1. More specifically, Petitioner argues that Patent
`Owner’s proposed construction “imports essentially the same additional
`requirements into the claims that the Board already rejected at institution,
`namely that the ‘mobile computer’ must be able to move while maintaining
`its secure connection.” Id. at 2 (citing Dec. on Inst. 10–11).
`Petitioner also argues that the Specification refers to “mobile
`terminal” and “mobile host” as “computers that only establish a ‘static
`secure connection.’” Id. at 5. For example, Petitioner argues that the
`Specification discloses that because “IPSec connections are bound to fixed
`addresses, the mobile terminal must establish a new IPSec connection from
`each point of attachment.” Id. at 6 (citing PO Resp. 14 (quoting Ex. 1001,
`4:60–64)) (emphasis omitted). For another example, Petitioner argues that
`the Specification states that “IPSec is intended to work with static network
`topology, where hosts are fixed to certain subnetworks,” and “[i]f IPSec is
`used with a mobile host, the IKE key exchange will have to be redone from
`every new visited network.” Id. (citing PO Resp. 13 (quoting Ex. 1001,
`4:16–18, 4:21–23)). Petitioner argues that “this passage plainly uses the
`term ‘mobile host’ in conjunction with a computer reestablishing static
`IPSec connections when moving rather than maintaining them.” Id. (citation
`omitted).
`
`16
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`IPR2019-00823
`Patent 9,712,494 B2
`c. Our Analysis
`We disagree with Patent Owner that the cited portions of the
`Specification support its proposed construction for this term. First, we find
`that Patent Owner conflates “mobility” with “mobile computer.”5 The
`Specification states that “the term mobility . . . meant moving from one
`network to another,” rather than the term “mobile computer” having this
`meaning. Ex. 1001, 4:34–38 (emphasis added). Moreover, the Specification
`uses the term “mobility” as a capability or condition. For example, the
`Specification uses the term “mobility” as follows: (i) certain “protocols are
`not well suited to mobility”; (ii) “[t]he intermediate host might be a Mobile
`IP home agent, that provides mobility for the connection between the mobile
`terminal and the home agent . . . .”; (iii) a disclosed “method solves the
`mobility problem, at the cost of adding extra headers to packets”; and
`(iv) “[o]ne example of a change in the [security association (‘SA’)] between
`the first computer and the intermediate computer is the change of addresses
`for enabling mobility.” Ex. 1001, 5:7–8, 5:17–21, 5:33–34, 7:56–58
`(emphases added). In other words, mobility is a capability a mobile
`computer has, rather than being synonymous with mobile computer. As
`such, these passages from the Specification support Petitioner’s construction
`
`
`5 Patent Owner likewise argues that we concluded in our Decision on
`Institution that a “‘mobile computer’ must at least be ‘moving from one
`network to another.’” PO Sur-Reply 2 (quoting Dec. on Inst. 10). This is
`incorrect. Instead, we found “that the ’494 patent teaches that mobility
`‘mean[s] moving from one network to another.’” Dec. on Inst. 10 (quoting
`Ex. 1001, 4:34–37) (emphasis added). We also expressly stated that we did
`not reach “whether ‘a computer that is capable of moving from one network
`to another’ differs from the plain meaning of ‘mobile computer,’ as this
`[wa]s not in controversy” at the institution stage. Id.
`
`17
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`IPR2019-00823
`Patent 9,712,494 B2
`that a mobile computer is “a computer that is capable of moving between
`networks,” rather than Patent Owner’s construction requiring that a “mobile
`computer must be moving between networks.”
`Second, we are not persuaded by Patent Owner’s arguments that the
`’494 patent’s background section criticizes and disparages systems where
`the host computers are only capable of a static or fixed connection. PO
`Resp. 13–14. These host computers are not mobile computers, but rather
`“are fixed to certain subnetworks.” Ex. 1001, 4:16–18. Put differently, for
`these hosts “when an IPSec tunnel has been formed by using Internet Key
`Exchange (IKE) protocol, the tunnel endpoints are fixed and remain
`constant.” Id. at 4:18–21. In contrast, a mobile computer has the capability
`to move between networks (i.e., can change its network point of attachment
`frequently). See Ex. 1001, 4:50–53 (“The mobile terminal is mobile in the
`sense that it changes its network point of attachment frequently.”). The
`Specification makes clear that a mobile computer is capable of moving
`between networks (as opposed to requiring such movement), even if it
`would have to “establish a new IPSec connection from each point of
`attachment,” or put differently, “the IKE key exchange will have to be
`redone from every new visited network.” Ex. 1001, 4:21–23, 4:60–63.
`Hence, Patent Owner’s construction also is incorrect to the extent that the
`latter portion (i.e., “as opposed to a computer that is only capable of a static
`secure connection”) would exclude a mobile computer from establishing a
`secure connection (static or otherwise) from each point of attachment.
`Ex. 1001, 4:50–53, 4:60–63.
`Third, we find that Patent Owner’s proposed construction is
`unworkable as to when such alleged movement needs to have occurred.
`
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`IPR2019-00823
`Patent 9,712,494 B2
`Patent Owner agrees that “[c]ertainly the computer is at times going to be
`connected to a given network because it establishes a secure connection with
`a given network.” Tr. 49:12–14. Despite this, Patent Owner argues that the
`proper construction for this term requires that a mobile computer must be
`moving between networks. E.g., id. at 49:14–16. However, whether or not
`the mobile computer has changed its point of attachment and established a
`new IPSec connection before sending a secure message to the intermediate
`computer is immaterial to claim 1’s limitations. Ex. 1001, 4:15–27, 4:60–
`64, 22:40–65. Again, the mobile computer in claim 1 simply sends a secure
`message to the intermediate computer from a point of attachment to the
`network — no movement is required. Id. at 22:40–65. Claim 1 is focused
`on the operations of the intermediate computer, and in particular, that the
`immediate computer uses, inter alia, a translation table and unique identity
`to forward a secure message without the intermediate computer having the
`cryptographic key to decrypt the encrypted data payload. Id.
`Fourth, we are not persuaded by Patent Owner’s argument that its
`proposed construction is consistent with the ’494 patent’s “stated purpose.”
`PO Sur-Reply 4. The portions of the Specification that Patent Owner cites
`do not purport any “stated purpose,” but rather relate to additional
`functionality to handle, inter alia, addressing when a mobile computer
`moves networks. Ex. 1001, 4:17–38, 7:56–61. This functionality is
`implicated in claim 9, but not claim 1. Compare id. at 22:40–65, with id. at
`24:7–13; see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d
`1379, 1383 (Fed. Cir. 2008) (“It is often the case that different claims are
`directed to and cover different disclosed embodiments.”). We also note that
`the ’494 patent’s Abstract does not relate to mobility, but instead relates to
`
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`IPR2019-00823
`Patent 9,712,494 B2
`the subject matter of claim 1, including that an intermediate computer uses a
`message’s destination address and a unique identity to find an address to a
`second computer, and substitutes these values with the found address and
`another unique identity
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