`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Ingenico Inc.,
`
`Petitioner
`
`v.
`
`IOENGINE, LLC,
`
`Patent Owner
`
`____________
`
`U.S. Patent No. 8,539,047
`Issue Date: September 17, 2013
`Title: APPARATUS, METHOD AND SYSTEM FOR A
`TUNNELING CLIENT ACCESS POINT
`
`Inter Partes Review No. IPR2019-00416
`____________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2072
`Page 1 of 3
`
`
`
`Ground 35 U.S.C.
`
`Claims
`
`References
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`
`
`
`102(b)
`
`1, 3, 4, 6-21, 23-
`25, 27 and 28
`
`103(a)
`
`103(a)
`
`2
`
`5
`
`103(a)
`
`10 and 17
`
`103(a)
`
`103(a)
`
`1-4, 6-21, 23-25,
`27 and 28
`5
`
`U.S. Patent Publication No.
`2003/0020813 to Iida (“Iida”) (Ex.
`1003)
`Iida and US2002/0065872
`(“Genske”) (Ex. 1004)
`Iida and US 2002/0169002 (Imbrie et
`al.)(Ex. 1005)
`Iida and US Patent No. 6,105,042
`(Aganovic) (Ex. 1006)
`Iida and Genske
`
`Iida, Genske and Imbrie
`
`103(a)
`
`10 and 17
`
`Iida, Genske and Aganovic
`
`For grounds 1-4, Iida is the primary reference. Grounds 5-7 are distinguished
`
`in that Iida is combined with the disclosure of graphical user interfaces in Genske
`
`to provide the primary basis for unpatentability.
`
`IV. THE ’047 PATENT – AN “INTELLIGENT” SECURE
`PERIPHERAL STORAGE DEVICE
`
`Scott McNulty filed his original patent application on March 23, 2004,
`
`describing the inventive concept as an “effective solution to securely access,
`
`execute and process data … in an extremely compact form.” Ex. 1001, C2:L25-28.
`
`He distinguished his concept from bulky personal digital assistants (PDAs), such
`
`as the Palm Pilot, which had uncomfortably small user interfaces. Ex. 1001,
`
`C1:L19-25; C2:L28-31. The patent application described a tunneling client access
`
`point (TCAP) that simply plugs into a desktop or laptop computer giving it access
`5
`
`
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2072
`Page 2 of 3
`
`
`
`to the user interface on the computer’s display monitor. Ex. 1001,C2:L39-46. The
`
`TCAP further provides “storage, execution and/or processing resources” and
`
`secure access to remote data. Ex. 1001,C2:L45-51.
`
`The claims of the original parent patent U.S. 7,861,006 (the ’006 patent)
`
`confirm that the invention was understood to be a universal serial bus (USB)
`
`conduit for communication with a computer terminal whose display unit is used to
`
`present an interactive user interface. Ex. 1013, C30:L60-C36:L10; Ex. 1002, ¶22.
`
`All of the claims further require the storage of encrypted data on the memory of the
`
`device. Id. Indeed, encryption is of the essence to a tunneling client. Newton’s
`
`Telecom Dictionary in 2002 defined “tunneling” as “to provide a secure,
`
`temporary path over the Internet, or other …tunneling is the process of
`
`encapsulating an encrypted data packet in an IP packet for secure transmission
`
`across an inherently insecure IP network, such as the Internet.” Ex. 1011, p. 4.
`
`The ’006 patent prosecution emphasized the presence of intelligence, in
`
`particular a processor, on the claimed portable USB device. The invention was
`
`distinguished over a prior art USB device that the applicant characterized as
`
`“merely a storage device.” Ex. 1012, April 27, 2009 response, p. 181. But
`
`applicant had to further distinguish over additional prior art to Margalit by
`
`emphasizing the affirmative role played by the claimed device’s processor as
`
`opposed to Margalit’s onboard microprocessor that functions as a subservient
`
`
`
`6
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2072
`Page 3 of 3
`
`
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