UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`
`Patent Owner.
`
`U.S. Patent No. 8,606,917 to Short et al.
`Issued: December 10, 2013
`Filed: October 24, 2012
`
`Title: SYSTEMS AND METHODS FOR PROVIDING CONTENT AND
`SERVICES ON A NETWORK SYSTEM
`
`____________
`
`IPR2019-01191
`____________
`
`PETITIONER’S REQUEST FOR REHEARING
`
`
`
`
`
`
`
`
`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`
`Patent Owner.
`
`U.S. Patent No. 8,606,917 to Short et al.
`Issued: December 10, 2013
`Filed: October 24, 2012
`
`Title: SYSTEMS AND METHODS FOR PROVIDING CONTENT AND
`SERVICES ON A NETWORK SYSTEM
`
`____________
`
`IPR2019-01191
`____________
`
`PETITIONER’S REQUEST FOR REHEARING
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`BACKGROUND ............................................................................................. 2
`II.
`III. STANDARD FOR REHEARING .................................................................. 4
`IV. ARGUMENT ................................................................................................... 5
`A.
`The Board Should Grant the Rehearing Request Because the
`’060 Application Fails to Disclose At Least the Combination
`of Claim Limitations [C] and [D]. ......................................................... 5
`1.
`Figure 2 does not disclose the claimed combination under
`Patent Owner’s interpretation. .................................................... 5
`Figure 2 does not disclose the claimed combination under
`the Board’s interpretation. .......................................................... 8
`VI. CONCLUSION .............................................................................................. 12
`
`2.
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner requests rehearing of the Board’s December 27, 2019 (the
`
`“Decision”) denying the Petition for Inter Partes Review (the “Petition”).
`
`U.S. Patent No. 8,606,917 (Ex. 1001, “the ’917 patent”) asserts priority to
`
`the October 20, 2000 filing date of U.S. Patent Application No. 09/693,060 (Ex.
`
`1003, “the ’060 application”) via a series of continuation applications. Petitioner,
`
`however, asserted that U.S. Patent No. 8,046,578 (Ex. 1004, “Trudeau ’578”) is
`
`nonetheless prior art to the ’917 patent because the challenged claims of the ’917
`
`patent are not entitled to the benefit of the ’060 application’s filing date, as the
`
`’060 application lacks written description support for certain limitations of the
`
`challenged claims. Petition at 12–18. The Board disagreed with Petitioner, finding
`
`that “Petitioner fails to demonstrate that the challenged claims of the ’917 patent
`
`lack written description support” in the ’060 application. Decision at 3.
`
`Petitioner respectfully believes that the Board misapprehended the
`
`disclosures of the ’060 application in reaching that decision. As a result, Petitioner
`
`requests that the Board grant its rehearing request and institute an inter partes
`
`review of the challenged claims under Grounds 1 and 2 of the Petition.1
`
`
`1 Petitioner also believes the Board incorrectly decided Ground 3 of the Petition.
`
`However, to simplify issues, Petitioner does not request rehearing on that Ground.
`
`1
`
`
`
`
`
`
`II. BACKGROUND
`
`Petitioner filed its Petition (Paper 1) seeking inter partes review of claims 1
`
`and 11 of the ’917 patent on June 18, 2019, alleging obviousness of both claims
`
`over Trudeau ’578 in view of Whyte2 (Ground 1) or in further view of U.S. Patent
`
`No. 6,463,4743 (Ground 2). Petitioner and its expert, Dr. Dordal, explained in
`
`detail why the challenged claims are not entitled to the priority date of the ’060
`
`application or any other priority date before the claims’ actual filing date of
`
`October 24, 2012. Petition § V.D. Specifically, the ’060 application fails to
`
`provide written description for certain limitations of claims 1 and 11, including the
`
`combination of limitations [C] and [D], which require (1) comparing a source IP
`
`address with profiles of authorized source devices, and (2) if the source IP address
`
`is not included in a profile associated with an authorized device, then comparing
`
`the destination IP address against a plurality of authorized destination IP addresses.
`
`Id. at 16-18.
`
`Patent Owner filed a preliminary response on October 11, 2019 (Paper 5),
`
`contending that the ’060 application provides written description support for the
`
`challenged claims. As to the recited combination, Patent Owner argued:
`
`
`2 Ex. 1005.
`
`3 Ex. 1006.
`
`2
`
`
`
`
`
`
`As explained above with respect to Figure 2 of the ’060 application,
`block 210 discloses authenticating “source based on attribute associated
`with the source.” Ex. 1003 at 8 Block 220 then determines
`authorization based on 1) an attribute associated with the source; 2)
`destination; or 3) content. Ex. 1003 at 8; see also Ex. 2006 ¶¶ 39-44.
`
`Paper 5 § VI.B.6 (emphasis in original). Therefore, Patent Owner relied on block
`
`210 of Figure 2 as allegedly disclosing the first part of the combination (comparing
`
`the source IP address with profiles of authorized source devices) and block 220 as
`
`allegedly disclosing the second part of the combination (if the source IP address is
`
`not included in a profile associated with an authorized device, then comparing the
`
`destination IP address against a plurality of authorized destination IP addresses).
`
`See also, e.g., Ex. 2006 ¶ 31 (citing, for example, ’060 application at 21:3-6, which
`
`refers to attempting to “authenticate the source by comparing stored source profiles
`
`in the source profile database with the attributes received from the gateway device
`
`12 or source,” as allegedly disclosing part (1) of the recited combination).
`
`On November 11, 2013, Petitioner filed a reply explaining why blocks 210
`
`and 220 do not disclose the claimed combination as Patent Owner alleged. Paper 7
`
`§ II.C.
`
`
`
`The Board issued its decision denying institution on December 27, 2019. In
`
`finding that the ’060 application disclosed the claimed combination, the Board
`
`apparently took a different approach than Patent Owner, Petitioner, and both of its
`
`3
`
`
`
`
`
`
`experts. The Board appears to have found that both parts (1) and (2) of the claimed
`
`combination are disclosed in block 220 of Figure 2. Paper 9 at 24-28.
`
`As explained below, Petitioner seeks reconsideration of the Board’s decision
`
`because Figure 2 does not disclose the claimed combination under either the
`
`Board’s or Patent Owner’s interpretation of it.4
`
`III. STANDARD FOR REHEARING
`
`Under 37 CFR § 42.71(d), a party may request rehearing of a decision by the
`
`Board not to institute a trial. The request “must specifically identify 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.” Id. The
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`Board will review the previous decision for an abuse of discretion. 37 C.F.R. §
`
`42.71(c). The Board has previously granted rehearing when it either (1) used an
`
`erroneous claim construction, or (2) overlooked important factual evidence or
`
`arguments in a Petition. Cook Group Inc. v. Boston Scientific Scimed, Inc., IPR
`
`2017-00134, Paper 23 at 2 (P.T.A.B. Dec. 18, 2017); Veeam Software Corp. v.
`
`
`4 As explained in the Petition, the ’060 application also fails to disclose other
`
`limitations of the challenged claims. However, to simply the issues, this Request
`
`focuses on the ’060 application’s failure to disclose the combination of claim
`
`limitations [C] and [D].
`
`4
`
`
`
`
`
`
`Symantec Corp., IPR2013-00142, Paper 17 at 2-3 (P.T.A.B. Sept. 30, 2013);
`
`Illumina Inc. v. Columbia Univ., IPR2013-00011, Paper 44 at 2 (P.T.A.B. May 10,
`
`2013). Rehearing may also be granted when the Board “makes clearly erroneous
`
`findings of fact.” Renda Marine, Inc. v. U.S., 509 F.3d 1372, 1379 (Fed. Cir.
`
`2007).
`
`IV. ARGUMENT
`
`A.
`
`The Board Should Grant the Rehearing Request Because the
`’060 Application Fails to Disclose At Least the Combination
`of Claim Limitations [C] and [D].
`The Board should grant Petitioner’s request for rehearing because, in
`
`reaching its Decision, it misapprehended what Figure 2 of the ’060 application
`
`discloses. Steps 210 and 220 of Figure 2 do not disclose the combination of
`
`limitations [C] and [D], i.e., (1) comparing a source IP address with profiles of
`
`authorized source devices, and (2) if the source IP address is not included in a
`
`profile associated with an authorized device, then comparing the destination IP
`
`address against a plurality of authorized destination IP addresses. Figure 2 fails to
`
`disclose this claimed combination under both the Patent Owner’s and the Board’s
`
`interpretations of Figure 2.
`
`1.
`
`Figure 2 does not disclose the claimed combination under
`Patent Owner’s interpretation.
`
`Patent Owner argued that step 210 of Figure 2 discloses part (1) of the
`
`claimed combination, whereas step 220 discloses part (2). Paper 5 § VI.B.6. This
`
`5
`
`
`
`
`
`
`is wrong. And Petitioner’s argument is not just “premised on a lack of literal
`
`wording” as the Board states. Paper 9 at 25. The fact is, Figure 2 does not
`
`describe the claimed combination, literally or in any other way. See L.A. Biomed.
`
`Research Inst. v. Eli Lilly & Co., 849 F.3d 1049, 1057 (Fed. Cir. 2017) (“A
`
`disclosure in a parent application is not sufficient if it merely renders the later-
`
`claimed invention obvious . . . ; the disclosure must describe the claimed invention
`
`with all its limitations.”) (quotation marks omitted).
`
`According to the ‘060 application, the process depicted in Figure 2, shown
`
`below, starts with a source computer sending a request through a packet asking a
`
`AAA server to have “access to a network, destination, service, or the like”:
`
`
`
`6
`
`
`
`
`
`
`Ex. 1003 at 17:21-24; Fig. 2, Step 200. At step 210, when the packet is received
`
`by the AAA server, the AAA server will attempt “to authenticate the source by
`
`comparing stored source profiles in the source profile database with the attributes
`
`received from the . . . source to determine the source identity.” Id. at 13:3-6; Fig.
`
`2, Step 210. If there is a match (i.e., the source is authenticated by checking if it
`
`has a source profile), the process then moves to step 220 to evaluate the source’s
`
`access rights. Id. at 15:27-29; Fig. 2, Step 220. However, “[i]f a source fails to
`
`correspond to a source profile in the AAA server 30 at the time of authentication
`
`[step 210], the source will not be permitted access to the network.” Id. at 13:26-
`
`27 (emphasis added).
`
`In other words, the process will move on to step 220 if, and only if, there is a
`
`match at step 210 between an attribute from the source and a stored source profile.
`
`Id. Therefore, even assuming an “Attribute Associated With the Source” in step
`
`210 can be a source IP address as Patent Owner argues, Figure 2 does not disclose
`
`the claimed combination because if there is no source profile match at step 210, the
`
`process does not proceed to step 220 (cid:237) the step at which Patent Owner insists that
`
`the supposed comparison of the destination IP address against a plurality of
`
`authorized destination IP addresses occurs. This is why, under Patent Owner’s
`
`theory, Figure 2 differs from the challenged claims of the ‘917 patent. The
`
`following flow charts illustrate those differences:
`
`7
`
`
`
`
`
`
`
`
`As indicated, the challenged claims of the ‘917 patent recite: “if the source IP
`
`address is not included in a profile associated with an authorized source device,
`
`then determining whether the destination IP address is included in a plurality of
`
`[authorized] destination IP addresses.” In contrast, the ‘060 application discloses
`
`determining access rights based on the destination only if the source attribute
`
`matches a profile. As such, Figure 2 fails to provide written description for the
`
`claimed combination under Patent Owner’s theory.
`
`2.
`
`Figure 2 does not disclose the claimed combination under
`the Board’s interpretation.
`
`The Board appears to read step 210 (the “authentication” step) as merely
`
`involving “identifying” the source based on, for example, a source IP address. It
`
`then reads step 220 (the “authorization” step) as disclosing the claimed
`
`8
`
`
`
`
`
`
`combination, including comparing the source IP address with stored profiles, and if
`
`there is no match, authorizing access based on the destination IP address.5
`
`Respectfully, this theory is incorrect for two reasons.
`
`First, the Board apparently misapprehended steps 210 and 220.
`
`Authentication (step 210) does not merely mean “identifying” a source. It also
`
`involves searching for a corresponding profile for the source based on an attribute
`
`associated with the source. E.g., Ex. 1003 at 13:3-6 (“Upon a source's attempt to
`
`access a network via the gateway device 12, the AAA server 30 attempts to
`
`authenticate the source by comparing stored source profiles in the source profile
`
`
`5 Decision at 26 (“if the source were not authorized based on its identity, then (per
`
`block 220 of Figure 2), access could still be authorized based on a particular
`
`destination”); 27 (“Limitation [C] further recites, in essence, comparing the source
`
`IP address with stored profiles; if there is a match, access is granted without further
`
`authorization. This is ‘authorization’ in the context of the ’060 application….”); 28
`
`(“Claims 1 and 11 further state that if there is not a match for the source IP
`
`address, then, in limitation [D], the system determines whether the destination IP
`
`address sought by the source is included in a plurality of a destination IP addresses
`
`associated with the access controller. This is ‘authorization’ in the context of the
`
`’060 application and the ’917 patent based on destination.”).
`
`9
`
`
`
`
`
`
`database with the attributes received from the . . . source to determine the source
`
`identity”) (emphasis added); 26-27 (“If a source fails to correspond to a source
`
`profile in the AAA server 30 at the time of authentication, the source will not be
`
`permitted access to the network.”) (emphasis added). If a source is authenticated
`
`(i.e., it has a corresponding profile), then, at step 220, the process involves looking
`
`at the access rights in the profile using the source attribute, destination, or content.
`
`Id. at 15:17-20 (“After authentication, the AAA server 30 compares the attributes
`
`of the source with the access rights of the source associated with the user,
`
`computer, location or attribute(s).”).
`
`Second, and more importantly, the Board’s theory is incorrect because the
`
`’060 application nowhere discloses that step 220 (authorization) involves
`
`comparing a source IP address with stored “profiles.” A single “profile” is a
`
`collection of attributes associated with a specific device. Petition at 18. However,
`
`the challenged claims of the ‘917 patent recite authorization by “comparing the
`
`source IP address with profiles of authorized source devices, each profile
`
`including an IP address,” and “if the source IP address is not included in a profile,”
`
`then comparing destination addresses. Therefore, the claimed combination
`
`requires comparing the source IP address against not just one profile, but multiple
`
`profiles, to see if there is or is not a profile matching the source IP address.
`
`10
`
`
`
`
`
`
`Comparing a source attribute against multiple profiles to see if there is, or is
`
`not, a corresponding profile only happens in step 210 (i.e., during authentication)
`
`in the ’060 application.6 There must be a corresponding profile in the database for
`
`the process to even proceed to step 220. Id. at 13:26-27 (“If a source fails to
`
`correspond to a source profile in the AAA server 30 at the time of authentication
`
`[step 210], the source will not be permitted access to the network.”). In contrast,
`
`step 220 involves searching for access information in a specific profile that has
`
`already been identified, rather than searching multiple profiles again. The ’060
`
`application nowhere discloses comparing a source attribute against multiple
`
`profiles, as recited in the challenged claims, as part of the authorization process.
`
`(Tellingly, both Petitioner and Patent Owner submitted expert declarations, and
`
`neither expert contended that step 220 is the step disclosing comparing a source
`
`attribute against multiple profiles.)
`
`Therefore, if the Board contends that step 220 of Figure 2 is the step where a
`
`source attribute is compared against “profiles” to see whether there is or is not a
`
`
`6 This is why Patent Owner itself relied on step 210 as allegedly disclosing
`
`comparing a source IP address against profiles, rather than step 220. As explained
`
`in Section V.A, however, steps 210 and 220 do not disclose the claimed
`
`combination for other reasons under Patent Owner’s theory.
`
`11
`
`
`
`
`
`
`matching profile, then that contention is based on a misreading of the ’060
`
`application. Alternatively, as explained above, under Patent Owner’s theory that
`
`step 210 discloses part (1) of the claimed combination, the ’060 application fails to
`
`disclose analyzing the destination IP address “if the source IP address is not
`
`included in a profile.” Under either theory, the ’060 application fails to provide
`
`written description support for the claimed combination.
`
`VI. CONCLUSION
`
`
`For the above reasons, Petitioner respectfully requests that the Board
`
`reconsider its decision not to institute inter partes review of the ’917 patent under
`
`Grounds 1 and 2.
`
`Dated: January 27, 2020
`
`
`
`
`Respectfully submitted,
`
`/Jeffrey W. Lesovitz/
`Jeffrey W. Lesovitz (Reg. No. 63,461)
`Steven J. Rocci (Reg. No. 30,489)
`Daniel J. Goettle (Reg. No. 50,983)
`BAKER & HOSTETLER LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104-2891
`T (215) 568-3100
`F (215) 568-3439
`jlesovitz@bakerlaw.com
`srocci@bakerlaw.com
`dgoettle@bakerlaw.com
`
`Counsel for Petitioner
`Guest Tek Interactive Entertainment Ltd.
`
`12
`
`
`
`
`CERTIFICATE OF SERVICE
`
` certify that on January 27, 2020, this paper was served in its entirety by
`
` I
`
`
`
`email upon:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Douglas G. Muehlhauser
`2dgm@knobbe.com
`
`William H. Shreve
`2whs@knobbe.com
`
`
`BoxNomadix@knobbe.com
`
`/Jeffrey W. Lesovitz/
`Jeffrey W. Lesovitz (Reg. No. 63,461)
`BAKER & HOSTETLER LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104-2891
`T (215) 568-3100
`F (215) 568-3439
`jlesovitz@bakerlaw.com
`
`
`
`13
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`
`
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