Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 10
`Entered: March 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`MULTIMEDIA CONTENT MANAGEMENT LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01934
`Patent 8,799,468 B2
`____________
`
`Before PATRICK M. BOUCHER, MICHELLE N. WORMMEESTER, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`DISH, Exh.1018, p.0001
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 10
`Entered: March 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`MULTIMEDIA CONTENT MANAGEMENT LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01934
`Patent 8,799,468 B2
`____________
`
`Before PATRICK M. BOUCHER, MICHELLE N. WORMMEESTER, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`DISH, Exh.1018, p.0001
`
`
`
`IPR2017-01934
`Patent 8,799,468 B2
`
`Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
`claims 1‒5, 9, 11‒13, 19, 23‒27, and 32‒34 of U.S. Patent No. 8,799,468 B2
`(“the ’468 patent”). Multimedia Content Management LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Applying
`the standard set forth in 35 U.S.C. § 314(a), which requires that Petitioner
`demonstrate a reasonable likelihood that it would prevail with respect to at
`least one challenged claim, we deny the Petition.
`
`I. BACKGROUND
`
`The ’468 Patent
`A.
`The ’468 patent is directed to regulating access and managing
`distribution of content from a service provider network to a subscriber site.
`Ex. 1001, Abstract. A Service Preference Architecture (SPA) includes an
`Internet Control Point (ICP) connected to network 52. Id., Fig. 1, 4:54‒57.
`Communication Gateways (CGs), or “gateway units,” are also connected to
`network 52. Id., Fig. 1, 4:64‒5:3. Figure 1, reproduced below, illustrates an
`exemplary embodiment of network 52.
`
`2
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`Patent 8,799,468 B2
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`
`
`Figure 1 shows Internet/Metro Area Network 52 is comprised of SPA
`Network Elements 54 and Non-SPA Network Elements 55. Id., Fig. 1,
`4:57‒63. Network 52 connects Internet Control Point 50 and
`Communication Gateways 581‒58n. Id., Fig. 1, 4:64‒5:3. Each of
`Communication Gateways 581‒58n is connected to a respective one of
`Subscriber Terminals 601‒60n. Id., Fig. 1, 4:64‒5:3.
`Internet Control Point 50 generates and issues instructions to the CGs.
`Id., 5:24‒33. These instructions control whether the CGs may access
`content over the network, for example from SPA Content Servers 56 or Non-
`SPA Content Servers 57. Id.
`B.
`Illustrative Claim
`Independent claim 1 of the ’468 patent is illustrative of the claims at
`
`issue:
`
`A system for regulating access to a service provider
`1.
`network, the system comprising:
`a controller node coupled to the service provider network,
`the controller node comprising:
`
`3
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`DISH, Exh.1018, p.0003
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`IPR2017-01934
`Patent 8,799,468 B2
`
`
`a first processor configured to generate controller
`instructions, and
`first network interface configured to transmit the
`controller instructions over the service provider
`network to a plurality of gateway units; and
`the plurality of gateway units, each of the plurality of
`gateway units comprising:
`a user interface configured to receive user-entered
`content requests for
`the service provider
`network;
`a second network interface coupled to the service
`provider network and configured to receive the
`controller instructions from the controller node
`through the service provider network; and
`a second processor coupled to the user interface and
`the second network interface, wherein the
`second processor is configured to selectively
`transmit the content requests to the service
`provider network
`in accordance with
`the
`controller instructions, and transfer received
`content data responsive to the transmitted
`content requests from the service provider
`network via the second network interface.
`
`Evidence Relied Upon
`C.
`Petitioner relies on the following references:
`
`
`Ex. 1001, 18:30‒54.
`
`
`
`
`Reference
`U.S. Patent No. 5,987,611
`Freund
`Spusta et al. U.S. Patent Application
`Publication No.
`2002/0032870 A1
`
`Exhibit
`Date
`issued Nov. 16, 1999 Ex. 1004
`published Mar. 14,
`Ex. 1005
`2002
`
`
`Petitioner also relies on the Declaration of Norman Hutchinson, Ph.D.
`
`Ex. 1003.
`
`4
`
`DISH, Exh.1018, p.0004
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`IPR2017-01934
`Patent 8,799,468 B2
`
`Asserted Grounds of Unpatentability
`D.
`Petitioner challenges claims 1‒5, 9, 11‒13, 19, 23‒27, and 32‒34
`under 35 U.S.C. § 103(a) based on the following references. Pet. 6.
`
`Reference
`
`Freund
`Spusta
`
`
`Claims
`1‒5, 9, 12, 19, 23‒27, 33
`1‒3, 11, 13, 23‒25, 32, 34
`
`Related Proceedings
`E.
`Petitioner identifies the following now-closed proceedings as
`involving the ’468 patent: (1) Catonian IP Management, LLC v. Charter
`Communications, Inc. et al., Case No. 2:17-cv-00191 (E.D. Tex.); and (2)
`Catonian IP Management, LLC v. Cequel Communications LLC et al., Case
`No. 2:17-cv-00190 (E.D. Tex.). Pet. 2.
`
`II. ANALYSIS
`
`Claim Construction
`A.
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2142 (2016) (affirming applicability of broadest reasonable
`construction standard to inter partes review proceedings). Under the
`broadest reasonable interpretation standard, claim terms generally are given
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art at the time of the invention. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a “claim term will not
`receive its ordinary meaning if the patentee acted as his own lexicographer
`and clearly set forth a definition of the disputed claim term in either the
`
`5
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`IPR2017-01934
`Patent 8,799,468 B2
`
`specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp.
`Eyeglasses, 288 F.3d 1359, 1366–67 (Fed. Cir. 2002). “Although an
`inventor is indeed free to define the specific terms used to describe his or her
`invention, this must be done with reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
`absence of such a special definition or other consideration, “limitations are
`not to be read into the claims from the specification.” In re Van Geuns, 988
`F.2d 1181, 1184 (Fed. Cir. 1993).
`Only terms which are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. See Wellman, Inc. v.
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner proposes constructions for the following terms, each of which is
`recited in independent claims 1 and 23: “service provider network,”
`“controller instructions,” and “gateway unit.” Pet. 13‒17. Patent Owner
`proposes constructions for the same terms, as well as “generate [controller
`instructions],” which is recited in claims 1 and 23. Prelim. Resp. 4‒12. No
`term requires an express construction. We address Petitioner’s proposed
`construction of “service provider network” below in the context of how the
`prior art applies to the challenged claims.
`B.
`Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art with respect
`to the ’468 patent “would have had a bachelor’s degree in Computer
`Science, or related discipline, and two years of relevant experience and
`knowledge of regulating network access and designing such systems,
`TCP/IP-based networking as practiced in the Internet, routers, web proxies,
`
`6
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`DISH, Exh.1018, p.0006
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`IPR2017-01934
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`
`web caches, and web servers, and distributed systems and their advantages
`and management.” Pet. 12‒13. Petitioner’s position is supported by the
`Declaration of Dr. Hutchinson. Ex. 1003 ¶ 21.
`Patent Owner asserts that a person of ordinary skill in the art with
`respect to the ’468 patent “would have possessed the education, experience
`and training commensurate with a person with a bachelor’s degree in
`electrical engineering or computer science.” Prelim. Resp. 3. Patent Owner
`asserts a person of ordinary skill in the art “would have knowledge of access
`controls, network protocols and communications, including TCP/IP-based
`standards, software design, distributed systems, and network equipment
`configuration.” Id. Patent Owner’s position is supported by the Declaration
`of Joel R. Williams. Ex. 2001 ¶¶ 43‒44.
`The parties’ proposals are similar, although Petitioner proposes that a
`person of ordinary skill would possess more specific experience. Even
`under Petitioner’s articulation of the level of ordinary skill, with such
`particularized experience, we conclude that the Petition does not set forth a
`reasonable likelihood of prevailing. Accordingly, we adopt Petitioner’s
`proposed level of ordinary skill in the art for purposes of this decision.
`C. Ground 1: Alleged Obviousness of Claims 1‒5, 9, 12, 19, 23‒
`27, and 33 over Freund
`Freund discloses methods for monitoring access to an open network,
`such as a Wide Area Network (WAN) or the Internet. Ex. 1004, Abstract.
`Freund discloses monitoring and access filtering by a combination of client-
`based and centralized components. Id. Freund discloses an exemplary
`embodiment of this system in Figure 3A, which is reproduced below.
`
`7
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`DISH, Exh.1018, p.0007
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`IPR2017-01934
`Patent 8,799,468 B2
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`
`
`Figure 3A depicts multiple clients 310a, 310b, and 310c, connected to
`Local Area Network (LAN) 320. Id., Fig. 3A, 14:52‒59. LAN 320 is
`connected to firewall 330, which is connected to Internet 340. Id., Fig. 3A,
`15:1‒11. Internet 340 is also connected to various web servers 350. Id.
`Users of clients 310 may request access to content on web servers 350. Id.,
`15:1‒11. Server 321, also connected to LAN 320, executes Supervisor 323,
`which independently verifies security access for each client, allowing or
`disallowing content requests made by each client. Id.
`Petitioner contends Freund discloses “a gateway unit . . . configured to
`receive the controller instructions from the controller node through the
`service provider network.” Pet. 38‒41. Specifically, Petitioner contends
`Freund discloses client 310 (the claimed “gateway unit”) comprising a
`personal computer or workstation, such as system 100. Pet. 38 (citing
`Ex. 1004, 14:55‒57). System 100 contains a network interface 111 (the
`claimed “second network interface”) that is coupled to Internet 340. Pet.
`
`8
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`DISH, Exh.1018, p.0008
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`IPR2017-01934
`Patent 8,799,468 B2
`
`38‒39 (citing Ex. 1004, Fig. 3B, 21:57‒64). Petitioner contends Internet
`340 corresponds to the claimed “service provider network.” Pet. 28.
`Petitioner further contends network interface 111 is coupled to LAN
`320, which is also part of the claimed “service provider network.” Id. at 40.
`Petitioner asserts an ordinarily skilled artisan “would have considered LAN
`320 to be part of the Internet 340, because, by definition, the Internet is
`merely the collection of all interconnected networks, which includes LAN
`320.” Id. at 31; see also Ex. 1003 ¶ 102. Petitioner asserts network
`interface 111 receives controller instructions over its connection to Internet
`340. Id. at 39‒40. Petitioner asserts network interface 111 is configured to
`receive rules (the claimed “controller instructions”) “from the controller
`node through the service provider network,” as recited in claim 1. Id.
`Even if we accepted (i) Petitioner’s proposed construction of “service
`provider network” to mean “a network over which content is delivered” and
`(ii) Petitioner’s contention that Freund’s teaching of Internet 340
`corresponds to the claimed “service provider network,” Petitioner’s
`reasoning is not persuasive. Contrary to Petitioner’s assertion, Freund does
`not disclose client 310 receiving rules (the asserted “controller instructions”)
`over Internet 340 (the asserted “service provider network”). Instead, Freund
`discloses supervisor 323 is connected to client 310 by LAN 320. Ex. 1004,
`Fig. 3A. Internet 340 is separated from LAN 320 by firewall 330. Id., 15:1‒
`11. Accordingly, client 310 receives rules from supervisor 323 over LAN
`320, not Internet 340. Id., 14:52‒67.
`Petitioner’s assertion that LAN 320 is “part of the Internet 340” is also
`not persuasive. Petitioner’s expert, Dr. Hutchinson, testifies in support of
`
`9
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`IPR2017-01934
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`
`Petitioner’s assertion that “the Internet is merely the collection of all
`interconnected networks, which includes LAN 320.” Ex. 1003 ¶ 102.
`Even viewing this evidence in the light most favorable to Petitioner,
`we find this testimony unpersuasive because Dr. Hutchinson does not
`account for the presence of firewall 330. See id. Instead, we are persuaded
`by the contrary testimony of Patent Owner’s expert, who notes that Freund
`discloses LAN 320 is separated from Internet 340 by firewall 330. Ex. 2001
`¶ 86 (citing Ex. 1004, Fig. 3A); see also Ex. 1004, 15:1‒11. Freund
`discloses firewall 330 may be implemented in a “conventional manner” for
`monitoring communications between clients 310 and with various web
`servers 350. Ex. 1004, 15:1‒11. Freund also discloses that firewalls are
`“designed to keep outside hackers from penetrating the LAN.” Id., 2:18‒19.
`“Firewalls are applications that intercept the data traffic at the gateway to a
`wide area network (WAN) and try to check the data packets . . . being
`exchanged for suspicious or unwanted activities.” Id., 2:19‒23. Freund
`explains that firewalls are typically used to prevent a device from accessing
`the Internet unless it satisfies some criteria. Id., 2:15‒30, 5:6‒30.
`Thus, an ordinarily skilled artisan would not consider LAN 320 to be
`part of Internet 340. Instead, we agree with Patent Owner’s expert that an
`ordinarily skilled artisan would consider LAN 320 to be separated from
`Internet 340 by firewall 330. See Ex. 2001 ¶¶ 86, 120‒126. As such,
`Petitioner’s reasoning that LAN 320 is “part of Internet 340” and, therefore,
`part of the claimed “service provider network,” is unpersuasive.
`Accordingly, even accepting Petitioner’s proposed construction of
`“service provider network” and Petitioner’s contention that Internet 340
`satisfies this limitation, Petitioner has failed to demonstrate sufficiently that
`
`10
`
`DISH, Exh.1018, p.0010
`
`
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`IPR2017-01934
`Patent 8,799,468 B2
`
`Freund teaches “a gateway unit . . . configured to receive the controller
`instructions from the controller node through the service provider network.”
`Petitioner also argues that if LAN 320 is not part of Internet 340, an
`ordinarily skilled artisan would have been motivated to connect supervisor
`323 to Internet 340 in situations where the system is used by an organization
`with a network implemented in widely dispersed geographic locations, each
`with its own LAN. Pet. 31. Dr. Hutchinson’s testimony supports this
`assertion. Ex. 1003 ¶ 103. Petitioner asserts that in such a system it would
`have been obvious to transmit rules from a central supervisor 323 over the
`Internet to clients at each of these widely dispersed locations. Id.
`Petitioner’s reasoning is not persuasive. Petitioner discusses Freund’s
`embodiment disclosed in Figure 3A, where supervisor 323 is connected to
`client 310 over LAN 320, which is separated from Internet 340 by firewall
`330. However, Freund also discloses an embodiment where the supervisor
`node (supervisor 373) is located remotely from client 310. Ex. 1004, Fig.
`3B. In this “ISP-based embodiment,” client 310 is connected to
`decentralized installations called Points-of-Presence (POPs), such as POP
`320a. Id., 21:57‒60. Client 310 may be connected to POP 320a directly or
`through a LAN. Id., 21:60‒64. POP 320a is connected to ISP
`Authentication Server 371 and ISP Supervisor Server 372 over Internet 340.
`Id. ISP Supervisor Server 372 executes the supervisor component 373. Id.
`In this embodiment, supervisor 373 provides rules to POP 320, which
`in turn monitors content requests submitted by client 310. Id., 22:7‒21.
`Notably, contrary to the hypothetical suggested by Petitioner, client 310
`does not receive rules from supervisor 373 over Internet 340. Id. Instead,
`POP 320a receives rules from supervisor 373 over Internet 340. Id. POP
`
`11
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`
`320a uses these rules to manage the access to content granted to client 310.
`Id. Thus, Freund discloses an embodiment with widely dispersed
`geographic locations, but does not disclose client 310 (the “gateway unit”)
`receiving rules from the supervisor node over Internet 340 in this
`embodiment (“configured to receive the controller instructions from the
`controller node through the service provider network”). Dr. Hutchinson
`does not address this alternate embodiment, which operates differently than
`the hypothetical system proposed by Petitioner. See Ex. 1003 ¶¶ 102‒103.
`To the contrary, Patent Owner’s expert, Mr. Williams, testifies that to the
`extent an organization has multiple premise locations where each contains a
`LAN, none of these locations contain a “service provider network” over
`which the “gateway unit” receives “controller instructions,” as claimed. Ex.
`2001 ¶¶ 114‒115. To the extent the opposing testimony of Dr. Hutchinson
`and Mr. Williams identifies a genuine issue of material fact, we have viewed
`that issue in the light most favorable to Petitioner. Nevertheless, because of
`the deficiencies in Dr. Hutchinson’s testimony, we give greater weight to the
`testimony of Mr. Williams.
`Accordingly, Petitioner’s argument that it would have been obvious in
`a system with geographically dispersed clients and supervisors to modify
`Freund’s teachings such that client 310 would receive rules from supervisor
`323 over Internet 340 is unpersuasive because it is not supported by
`persuasive evidence and is contrary to the teachings of Freund.
`For these reasons, we conclude that Petitioner has not demonstrated a
`reasonable likelihood of prevailing on its challenge of independent claim 1.
`Petitioner relies on the same rationale for the commensurate limitations in
`independent claim 23. See Pet. 65. We conclude that Petitioner has not
`
`12
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`IPR2017-01934
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`
`demonstrated a reasonable likelihood of prevailing on its challenge of
`independent claim 23 for the same reasons. We also conclude Petitioner has
`not demonstrated a reasonable likelihood of prevailing on dependent claims
`2‒5, 9, 12, 19, 24‒27, and 33 for the same reasons.
`D. Ground 2: Alleged Obviousness of Claims 1‒3, 11, 13, 23‒25,
`32, and 34 over Spusta
`Spusta discloses a web browser for limiting access to content on the
`Internet. Ex. 1005, Abstract. Spusta discloses restricting the web browser’s
`access to sites that are listed in either a local database or a central database,
`each of which contain entries for authorized websites. Id.
`Spusta discloses a user initiates navigation by entering a URL into a
`browser window. Ex. 1005, Fig. 4, ¶ 62. The URL is captured and loaded
`into a hidden browser, which is not accessible to the end user. Id. The URL
`is checked for hidden redirection and a final URL is returned. Id., Fig. 4,
`¶¶ 62‒63. The final URL is parsed to identify the relevant portions for
`comparison against the local security database. Id., Fig. 4, ¶¶ 63‒64. If the
`relevant portion of the URL is found in the security database, the website is
`“approved” and the user is granted access to the site. Id. ¶¶ 64‒68.
`However, if the URL is not found, the user is not granted access to the site.
`Id. ¶¶ 66‒67.
`Petitioner contends Spusta discloses “wherein the second processor is
`configured to selectively transmit the content requests to the service provider
`network in accordance with the controller instructions.” Pet. 90‒93.
`Specifically, Petitioner contends Spusta discloses a navigation process that a
`user initiates by typing a URL into a browser. Id. at 90 (citing Ex. 1005
`¶ 62). The URL is parsed into an appropriate format for processing. Id. at
`
`13
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`IPR2017-01934
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`
`91 (citing Ex. 1005 ¶¶ 62‒64). Petitioner contends Spusta discloses
`consulting controller instructions to determine whether to permit the user to
`access the requested URL. Id. at 91‒92 (citing Ex. 1005, Fig. 5, ¶¶ 65, 67).
`Petitioner asserts an additional security level check is performed in
`accordance with the controller instructions. Id. at 92 (citing Ex. 1005 ¶ 70).
`Petitioner has not demonstrated sufficiently that Spusta discloses
`“wherein the second processor is configured to selectively transmit the
`content requests to the service provider network in accordance with the
`controller instructions.” Petitioner’s contention is unpersuasive because
`Petitioner has not sufficiently established that Spusta discloses “selectively
`transmit[ting]” the content request based on the controller instructions. See
`Pet. 90‒93. The testimony of Petitioner’s expert, Dr. Hutchinson, does not
`specifically address the “selectively transmit[ting]” limitation. See Ex. 1003
`¶¶ 133‒134.
`As explained above, Spusta discloses a hidden browser, which is not
`accessible to the end user, performs a security check on a submitted URL.
`Ex. 1005, Fig. 4, ¶ 62. The URL is compared against the local and central
`security databases. Id., Fig. 4, ¶¶ 63‒64. If the URL is found in either
`database, the website is “approved” and the user is granted access to the site.
`Id. ¶¶ 64‒68. However, if the URL is not found in either database, the user
`is not granted access to the site. Id. ¶¶ 66‒67.
`Spusta, therefore, does not disclose selectively transmitting the content
`request to the service provider network in accordance with the controller
`instructions. Instead, as Patent Owner’s expert, Mr. Williams, testifies,
`Spusta discloses that the hidden browser always transmits the content
`request, but the content received by the hidden browser is selectively
`
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`displayed to the user in accordance with the security check performed by the
`hidden browser. Ex. 2001 ¶¶ 161‒162; Ex. 1005 ¶¶ 64‒70. Accordingly,
`Petitioner has failed to establish that Spusta discloses “wherein the second
`processor is configured to selectively transmit the content requests to the
`service provider network in accordance with the controller instructions,” as
`recited in claim 1.
`For these reasons, we conclude that Petitioner has not demonstrated a
`reasonable likelihood of prevailing on its challenge of independent claim 1.
`Petitioner relies on the same rationale for the commensurate limitations in
`independent claim 23. See Pet. 104. We conclude that Petitioner has not
`demonstrated a reasonable likelihood of prevailing on its challenge of
`independent claim 23 for the same reasons. We also conclude Petitioner has
`not demonstrated a reasonable likelihood of prevailing on dependent claims
`2, 3, 11, 13, 24, 25, 32, and 34 for the same reasons.
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied and no inter partes review is
`instituted.
`
`
`
`
`15
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`DISH, Exh.1018, p.0015
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`IPR2017-01934
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`
`PETITIONER
`Scott A. McKeown
`Mark D. Rowland
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`mark.rowland@ropesgray.com
`
`Roshan S. Mansinghani
`UNIFIED PATENTS INC.
`roshan@unifiedpatents.com
`
`PATENT OWNER
`Jeffrey G. Toler
`Aakash S. Parekh
`TOLER LAW GROUP, PC
`jtoler@tlgiplaw.com
`aparekh@tlgiplaw.com
`
`
`16
`
`DISH, Exh.1018, p.0016
`
`
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