Trials@uspto.gov
`571.272.7822
`
`
` Paper: 10
` Date: February 10, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MPH TECHNOLOGIES OY,
`Patent Owner.
`____________
`
`IPR2019-00825
`Patent 9,762,397 B2
`
`____________
`
`
`
`Before SALLY C. MEDLEY, KAMRAN JIVANI, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of Decision Denying Institution
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`571.272.7822
`
`
` Paper: 10
` Date: February 10, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MPH TECHNOLOGIES OY,
`Patent Owner.
`____________
`
`IPR2019-00825
`Patent 9,762,397 B2
`
`____________
`
`
`
`Before SALLY C. MEDLEY, KAMRAN JIVANI, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of Decision Denying Institution
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2019-00825
`Patent 9,762,397 B2
`
`
`I. INTRODUCTION
`Petitioner, Apple Inc., filed a Request for Rehearing (Paper 9, “Req.
`Reh’g”) of the Decision Denying Institution (Paper 7, “Decision” or “Dec.”),
`which denied institution of an inter partes review of challenged claims 1 and
`2 of U.S. Patent No. 9,762,397 B2 (Ex. 1001, “the ’397 patent”). Petitioner
`requests rehearing with respect to our decision not to institute review of
`claims 1 and 2. Req. Reh’g 2. The Request for Rehearing is denied.
`
`II. STANDARD OF REVIEW
`The party requesting rehearing has the burden to show that the
`
`decision should be modified. Under 37 C.F.R. § 42.71(d), a request for
`rehearing must identify, specifically, all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply. When rehearing
`a decision on petition, the Board will review the decision for an abuse of
`discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs if a decision
`is based on an erroneous interpretation of law, if a factual finding is not
`supported by substantial evidence, or if the decision represents an
`unreasonable judgment in weighing relevant factors. Arnold Partnership v.
`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).
`
`III. ANALYSIS
`Claim 1 recites “the intermediate computer receiving a secure
`message having a first source address sent to an address of the intermediate
`computer” and “the intermediate computer sending the secure message in
`the secure connection to the destination address by using the address of the
`intermediate computer as a second source address.” The “address of the
`intermediate computer” recited in the first phrase is the same “address of the
`
`2
`
`
`
`IPR2019-00825
`Patent 9,762,397 B2
`
`
`intermediate computer” recited in the second phrase. Dec. 11 (citing Pet. 39;
`Prelim. Resp. 7–8).
`As we explained in our Decision, the Petition recognizes that
`RFC31041 describes that when a secure message is sent from Y to the
`intermediate computer (RSIP server N), it is sent to address Nb of the
`intermediate computer. Dec. 11 (citing Pet. 28–29). The Petition further
`recognizes that when the message is sent from the intermediate computer N
`to X, a different source address, Na, is used. Pet. 28–29. Thus, Nb and Na
`are different addresses, and cannot meet the disputed phrases, which requires
`a single (i.e., same) address. The Petition apparently recognizing this
`contends that “a POSITA would have understood that a secure message sent
`to RSIP server N (i.e., the intermediate computer) via address Nb is also
`sent to address Na as part of RFC3104’s ‘tunneling’ operation.” Id. at 40
`(citing Ex. 1002 ¶ 106) (emphasis added).
`In our Decision, we explained that Petitioner had failed to show that a
`person having ordinary skill in the art would have understood RFC3104 to
`mean that a message sent to server N via address Nb is also sent to address
`Na. Dec. 11–13. For instance, we explained that the Petition had failed to
`establish that RFC3104 describes any message ever being sent from address
`Nb to address Na, or that the RSIP server N (the intermediate computer)
`sends or can send any message from itself to itself. Id. at 11. We further
`determined that Dr. Goldschlag had not explained how RFC3104’s
`“tunneling” operation would have led a person having ordinary skill in the
`
`
`1 RFC3104, “RSIP Support for End-to-end IPsec,” Oct. 2001 (Ex. 1004,
`“RFC3104”).
`
`3
`
`
`
`IPR2019-00825
`Patent 9,762,397 B2
`
`
`art to understand that a message sent to RSIP server N via address Nb is also
`sent to address Na. Id. at 12.
`Petitioner argues that we misapprehended (1) arguments and evidence
`raised in the Petition, as the “Petition does not allege RSIP sever N must
`actively send a message from itself to itself;” and (2) Dr. Goldschlag’s
`reliance on tunneling. Req. Reh’g 4, 6.
`We disagree with Petitioner’s first argument that the Petition does not
`allege that a message is actively sent from address Nb to address Na. Req.
`Reh’g 4. The Petition specifically states that a message sent to server N “is
`sent originally to Nb and then sent to Na.” Pet. 29 (emphasis added). The
`reader would understand that the “and then sent to” would mean active
`sending, despite Petitioner’s argument to the contrary. Id. Petitioner argues
`we misapprehended the Petition, because the Petition explains that the
`message must necessarily flow from host Y to the RSIP interface for sending
`packets from address Na to host X via address Nb. Req. Reh’g 4–5.
`Petitioner further argues that “a message sent from host Y to address Nb is
`also logically sent from host Y to address Na, so that the message can
`ultimately be sent from address Na to host X.” Id. at 5 (emphasis added).
`Missing from the Petition is any mention of messages “necessarily
`flow[ing]” from one address to another address or any mention of a message
`“logically [being] sent from host Y to address Na,” or what either of those
`things mean. These arguments are new and unclear. We need not, and thus
`do not, address such late arguments because a request for rehearing is not an
`opportunity to present new arguments. See 37 C.F.R. §42.71(d); see also,
`e.g., Captioncall, Inc. v. Ultratec, Inc., IPR2014-00780, Paper No. 40
`(PTAB May 19, 2016) (discussing that a rehearing request is “not intended
`
`4
`
`
`
`IPR2019-00825
`Patent 9,762,397 B2
`
`
`as a vehicle simply to disagree with [the] outcome or to provide new
`arguments”).
`As to its second argument, Petitioner contends that Dr. Goldschlag’s
`testimony does not conclude that a person having ordinary skill in the art
`would have understood that a secure message sent to the RSIP server N via
`address Nb is also sent to address Na “because of the use of tunneling.”
`Req. Reh’g 6 (emphasis in original). The Petition, however, states that “a
`POSITA would have understood that a secure message sent to RSIP server
`N . . . via address Nb is also sent to address Na as part of RFC3104’s
`‘tunneling’ operation.” Pet. 40 (citing Ex. 1002 ¶ 106) (emphasis added).
`The reader would understand that the “as part of” in the above sentence
`means because of. As we stated in our Decision, we looked to
`Dr. Goldschlag’s testimony to which we were directed, and he did not
`explain “how RFC3104’s ‘tunneling’ operation results in the understanding
`that a message sent to RSIP server N via address Nb is also sent to address
`Na.” Dec. 12. Accordingly, we disagree with Petitioner that we
`misapprehended either the Petition or supporting evidence regarding
`statements made of “tunneling.”
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we
`abused our discretion by misapprehending or overlooking any evidence or
`argument in its Petition.
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s Rehearing Request is denied.
`
`
`
`
`5
`
`
`
`IPR2019-00825
`Patent 9,762,397 B2
`
`PETITIONER:
`
`
`
`Michael D. Specht
`Daniel S. Block
`Steven M. Pappas
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`mspecht-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`spappas-ptab@sternekessler.com
`
`
`PATENT OWNER:
`James T. Carmichael
`Stephen T. Schreiner
`CARMICHAEL IP LAW, PLLC
`jim@carmichaelip.com
`schreiner@carmichaelip.com
`
`Christopher J. Lee
`Richard B. Megley
`Brian E. Haan
`Ashley E. LaValley
`LEE SHEIKH MEGLEY & HAAN LLC
`clee@leesheikh.com
`rmegley@leesheikh.com
`bhaan@leesheikh.com
`alavalley@leesheikh.com
`
`Kenneth J. Weatherwax
`Patrick Maloney
`Jason C. Linger
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
