UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`MPH TECHNOLOGIES OY,
`Patent Owner
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`____________________
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`Case IPR2019-00825
`U.S. Patent No. 9,762,397
`____________________
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`PETITIONER APPLE INC.’S REQUEST FOR REHEARING OF
`DECISION DENYING INSTITUTION OF INTER PARTES REVIEW
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
`
`v.
`
`MPH TECHNOLOGIES OY,
`Patent Owner
`
`____________________
`
`Case IPR2019-00825
`U.S. Patent No. 9,762,397
`____________________
`
`
`
`
`
`PETITIONER APPLE INC.’S REQUEST FOR REHEARING OF
`DECISION DENYING INSTITUTION OF INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case IPR2019-00825
`U.S. Patent No. 9,762,397
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`TABLE OF CONTENTS
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`I.
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`II.
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` Argument and Relief Requested ...................................................................... 1 III.
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`Introduction ...................................................................................................... 1
`Standard of Review .......................................................................................... 1
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`A. RFC3104 itself discloses that messages sent from host Y are sent to
`address Na of RSIP server N. ..................................................................... 2
`B. The Board misapprehended the evidence relied on by the Petition and Dr.
`Goldschlag. ................................................................................................. 4
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` Conclusion ....................................................................................................... 7 VII.
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`- i -
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`Case IPR2019-00825
`U.S. Patent No. 9,762,397
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`I.
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`Introduction
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`Apple Inc. respectfully requests rehearing of the Board’s November 6, 2019
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`decision denying institution of inter partes review of U.S. Patent No. 9,762,397.
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`Paper 7 (“DI”). In its decision, the Board asserted that “RFC3104 does not describe
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`any message ever being sent from address Nb to address Na,” and “Dr. Goldschlag
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`does not explain how RFC3104’s ‘tunneling’ operation results in the understanding
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`that a message sent to RSIP server N via address Nb is also sent to address Na.”
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`DI, 11-12. The Board misapprehended the evidence relied on by Dr. Goldschlag to
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`support his opinion. In particular, a message sent from host Y to host X in
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`RFC3104 must necessarily flow through addresses Nb and Na of RSIP server N, as
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`explained by the Petition and Dr. Goldschlag’s declaration.
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`II.
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`Standard of Review
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`“A party dissatisfied with a decision may file a request for rehearing,
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`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). The “burden of
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`showing a decision should be modified lies with the party challenging the
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`decision,” and the request “must specifically identify all matters the party believes
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`the Board misapprehended or overlooked, and the place where each matter was
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`previously addressed in a motion, an opposition, or a reply.” Id.
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` Argument and Relief Requested
`III.
`The Board based its institution denial on Apple’s alleged failure to
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`demonstrate that RFC3104 renders obvious claim 1’s recitation of “the
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`- 1 -
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`Case IPR2019-00825
`U.S. Patent No. 9,762,397
`intermediate computer receiving a secure message having a first source address
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`sent to an address of the intermediate computer” and “the intermediate computer
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`sending the secure message in the secure connection to the destination address by
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`using the address of the intermediate computer as a second source address.” DI,
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`10-13. The Board respectfully misapprehended the evidence cited in the Petition,
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`which shows that messages sent from host Y to host X in RFC3104 must flow
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`through both RSIP server N’s interface receiving packets at address Nb and RSIP
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`server N’s interface sending packets from address Na. Thus, any packet sent to
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`address Nb must also be sent to address Na. Apple respectfully requests that the
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`Board grant rehearing and institute trial of claims 1 and 2 of the ’397 patent.
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`A. RFC3104 itself discloses that messages sent from host Y are sent
`to address Na of RSIP server N.
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`RFC3104 discloses that “IPsec packets from Y destined for X arrive at RSIP
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`server N,” and “[i]f N is able to find a matching mapping, it tunnels the packet to X
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`according to the tunneling mode in effect.” EX1004, 5; Pet., 38. This process is
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`shown in the figure provided in RFC3104, as annotated in the Petition and Dr.
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`Goldschlag’s declaration:
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`- 2 -
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`Case IPR2019-00825
`U.S. Patent No. 9,762,397
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`EX1004, 2 (annotated); Pet., 38; EX1002, ¶103.
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`As illustrated in the figure, RSIP server “N has two addresses: Na on address
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`space A, and Nb on address space B. For example, A could be a private address
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`space, and B the public address space of the general Internet.” EX1004, 3; Pet., 26;
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`EX1002, ¶83.
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`EX1004, 2 (annotated); Pet., 29; EX1002, ¶88.
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`Importantly, the parties do not dispute that a message sent from host Y is
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`received at address Nb of RSIP server N (e.g., N’s public interface), and then the
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`same message is subsequently sent from address Na of server N (e.g., N’s private
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`interface) to host X. See, e.g., Pet., 38-39, POPR, 18 (“RFC3104 teaches an RSIP
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`Server N receiving a message at address Nb (from Host Y) and sending it out to
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`RSIP Client X from address NA”). Thus, the message must flow through both
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`- 3 -
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`Case IPR2019-00825
`U.S. Patent No. 9,762,397
`RSIP server N’s interface for receiving packets (Nb) and RSIP server N’s interface
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`for sending packets (Na). In other words, in order to be sent from address Na (i.e.,
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`the point of connection between RSIP server N and address space A) the message
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`must necessarily be received by RSIP server N’s interface sending the message
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`from Na to X. And Dr. Goldschlag supported this assertion in his declaration by
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`explaining how RFC3104 strongly alludes to this arrangement by disclosing that
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`“Y sends IPsec packets … to X via address Nb using the negotiated SPI.” EX1004,
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`5 (emphasis added); Pet., 28; EX1002, ¶87.
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`B.
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`The Board misapprehended the evidence relied on by the Petition
`and Dr. Goldschlag.
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`The Board first takes issue that “RFC3104 does not describe any message
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`ever being sent from address Nb to address Na, or that RSIP server N (the
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`intermediate computer) sends or even can send any message from itself to itself.”
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`DI, 11 (citing Patent Owner Preliminary Response (“POPR”), 15). But the Board
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`misapprehended the arguments raised in the Petition. The Petition does not allege
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`RSIP server N must actively send a message from itself to itself. Rather, the
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`Petition explains that the message must necessarily flow from host Y to the RSIP
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`interface for sending packets from address Na to host X “via address Nb,” as
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`shown in the diagram below.
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`- 4 -
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`U.S. Patent No. 9,762,397
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`Pet., 39; EX1002, ¶105.
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`
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`Put another way, a message sent from host Y to address Nb is also logically
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`sent from host Y to address Na, so that the message can ultimately be sent from
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`address Na to host X. Dr. Goldschlag’s declaration provides this argument using
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`similar language: “[W]hen the RSIP server N receives a message sent from Y to X
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`on the Nb interface, it must also be sent to the Na interface/address so that the Na
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`interface/address can ultimately send the message to Client X. Otherwise, the
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`message could not be sent via Na to the client X.” EX1002, ¶105; Pet., 39. Thus,
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`the message is logically sent from host Y to both addresses Nb and Na, and from
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`address Na to host X. Therefore, address Na meets the claim requirements of
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`“receiving a secure message … sent to an address of the intermediate computer,”
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`and “the intermediate computer sending the secure message in the secure
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`connection to the destination address by using the address of the intermediate
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`computer as a second source address.”
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`- 5 -
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`Case IPR2019-00825
`U.S. Patent No. 9,762,397
`The Board further states that “Dr. Goldschlag does not explain how
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`RFC3104’s ‘tunneling’ operation results in the understanding that a message sent
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`to RSIP server N via address Nb is also sent to address Na.” DI, 12 (citing
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`EX1002, ¶¶105-06). This is true, but unnecessary. Rather, the Board
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`misapprehended Dr. Goldschlag’s reliance on “tunneling.” RSIP’s “tunneling”
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`process is merely referenced by Dr. Goldschlag to show that packets traveling from
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`host X to host Y must flow through RSIP server N’s interface receiving packets at
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`address Nb and RSIP server N’s interface sending packets from address Na, as
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`explained above.
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`In particular, Dr. Goldschlag’s testimony does not conclude that “a POSITA
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`would have understood that a secure message sent to RSIP server N (i.e., the
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`intermediate computer) via address Nb is also sent to address Na” because of the
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`use of tunneling. EX1002, ¶106 (emphasis in original). Instead, Dr. Goldschlag’s
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`reference to “RFC3104’s ‘tunneling’ operation” refers to the flow of packets from
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`host Y to host X: “[W]hen, as explained above, such a secure message is
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`ultimately sent to client X (second computer) using a second source address (i.e.,
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`Na) instead of the first source address (Yb), it is using the same address of the
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`intermediate computer (i.e., Na) that the message was sent to.” Id. (italics in
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`original, bolding added).
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`Case IPR2019-00825
`U.S. Patent No. 9,762,397
`As such, the Board’s reference here to tunneling involving encapsulation of
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`packets in a second header is irrelevant to Dr. Goldschlag’s and the Petition’s
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`analysis, beyond the fact that packets are sent from address Na to host X as part of
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`RFC3104’s tunneling operation. DI, 12 n.5. Accordingly, contrary to the Board’s
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`assertion that Dr. Dr. Goldschlag’s opinions are unsupported, Dr. Goldschlag
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`explicitly supports his opinions by specific and repeated cites to RFC3104. And as
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`Dr. Goldschlag explains, the arrangement described in RFC3104 necessarily
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`requires packets that are sent to interface Nb to also be sent to interface Na.
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` Conclusion
`VII.
`For the reasons set forth above, Apple respectfully requests that the Board
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`grant rehearing and institute trial of claims 1 and 2 of the ’397 patent.
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`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Daniel S. Block/
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`Daniel S. Block (Reg. No. 68,395)
`Attorney for Petitioner
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`Date: November 26, 2019
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`- 7 -
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`Case IPR2019-00825
`U.S. Patent No. 9,762,397
`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that the above-captioned PETITIONER
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`APPLE INC.’S REQUEST FOR REHEARING OF DECISION DENYING
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`INSTITUTION OF INTER PARTES REVIEW was served via email on
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`November 26, 2019, in its entirety upon the following counsel of record for Patent
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`Owner:
`
`James T. Carmichael (Lead)
`Kenneth J. Weatherwax (Back-up)
`Stephen T. Schreiner (Back-up)
`Christopher J. Lee (Back-up)
`Richard B. Megley (Back-up)
`Brian E. Haan (Back-up)
`Ashley E. LaValley (Back-up)
`Patrick Maloney (Back-up)
`Jason C. Linger (Back-up)
`
`jim@carmichaelip.com
`weatherwax@lowensteinweatherwax.com
`schreiner@carmichaelip.com
`clee@leesheikh.com
`rmegley@leesheikh.com
`bhaan@leesheikh.com
`alavalley@leesheikh.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`MPH-IPRs@carmichaelip.com
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Daniel S. Block/
`
`Daniel S. Block (Reg. No. 68,395)
`Attorney for Petitioner
`
`
`
`
`Date: November 26, 2019
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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