IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Backholm, et al.
`In re Patent of:
`10,027,619 Attorney Docket No.: 39521-0089IP2
`U.S. Patent No.:
`July 17, 2018
`
`Issue Date:
`Appl. Serial No.: 14/609,189
`
`Filing Date:
`Jan. 29, 2015
`
`Title:
`MESSAGING CENTRE FOR FORWARDING E-MAIL
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 10,027,619 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 1
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 1
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 1
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .............................. 5
`SUMMARY OF THE ’619 PATENT ........................................................... 10
`A. Brief Description ..................................................................................... 10
`B. Summary of the Prosecution History of the ’619 Patent ........................ 12
`III. AT LEAST ONE CLAIM OF THE ’619 PATENT IS UNPATENTABLE 12
`A. GROUND 1 – CLAIMS 22-26, 32, 37-40, 46, 51 ARE OBVIOUS
`BASED ON BROWN IN VIEW OF THOMPSON AND NIELSEN ... 13
`1. Overview of Brown ....................................................................... 13
`2. Overview of Thompson ................................................................. 16
`3. Overview of Nielsen ...................................................................... 17
`4.
`Combination of Brown, Thompson, and Nielsen ......................... 19
`5. Analysis of Challenged Claims ..................................................... 20
`B. GROUND 2 – CLAIMS 22-28, 32-33, 37-42, 46, 51 ARE OBVIOUS
`BASED ON BROWN IN VIEW OF THOMPSON, NIELSEN, AND
`EATON ................................................................................................... 56
`C. GROUND 3 – CLAIMS 32, 46 ARE OBVIOUS BASED ON BROWN
`IN VIEW OF THOMPSON, NIELSEN, EATON, AND
`RICHARDSON ...................................................................................... 67
`D. GROUND 4 – CLAIMS 36, 50, 52 ARE OBVIOUS BASED ON
`BROWN IN VIEW OF THOMPSON, NIELSEN, EATON, AND
`FRIEND .................................................................................................. 70
`314(a) ............................................................................................................. 73
`IV.
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................. 75
`V.
`VI. CONCLUSION .............................................................................................. 75
`VII. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 75
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 75
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 75
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 75
`D. Service Information ................................................................................ 76
`
`
`
`
`
`
`i
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`
`
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 10,027,619 to Backholm (“the ’619 patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ’619 Patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Dr. Patrick Traynor
`
`APPLE-1004
`
`RESERVED
`
`APPLE-1005
`
`PCT Publication No. WO/2001/040605 to Nielsen (“Nielsen”)
`
`APPLE-1006
`
`PCT Publication No. WO2001/029731 to Thompson et al.
`(“Thompson”)
`
`APPLE-1007
`
`RESERVED
`
`APPLE-1008
`
`U.S. Patent Pub. No. 2005/0210259 to Richardson
`(“Richardson”)
`
`APPLE-1009
`
`U.S. Patent Pub. No. 2003/0101343 A1 to Eaton et al.
`(“Eaton”)
`
`APPLE-1010
`
`U.S. Patent Pub. No. 2004/0049599 A1 to Friend et al.
`(“Friend”)
`
`APPLE-1011
`
`Infringement Contentions from Seven Networks, LLC v. Apple
`Inc., No. 2:19-cv-115 (E.D. Tex.)
`
`APPLE-1012
`
`U.S. Patent No. 7,603,556 to Brown et al. (“Brown”)
`
`ii
`
`

`

`APPLE-1013
`
`APPLE-1014
`
`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`U.S. Provisional Application Serial No. 60/568,119 (“Brown
`Provisional Application”)
`
` P.R. 4-3 Joint Claim Construction and Prehearing Statement
`from Seven Networks, LLC v. Apple Inc., No. 2:19-cv-115
`(E.D. Tex.)
`
`iii
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 22-28, 32-33, 36-42, 46, and 50-52 (“the Challenged Claims”) of
`
`U.S. Patent No. 10,027,619 (“the ’619 patent”).
`
`I.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Apple certifies that the ’619 Patent is available for IPR. This petition is filed
`
`within one year of service of a complaint against Apple in Seven Networks, LLC v.
`
`Apple Inc., No. 2:19-cv-115 (E.D. Tex.) on April 11, 2019. Apple is not barred or
`
`estopped from requesting this review.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Ground
`1
`
`’619 Patent Claims
`22-26, 32, 37-40, 46,
`
`Basis for Rejection
`§103–Brown in view of Thompson and
`
`51
`
`Nielsen
`
`2
`
`3
`
`22-28, 32-33, 37-42,
`
`§103–Brown in view of Thompson, Nielsen,
`
`46, 51
`
`32, 46
`
`and Eaton
`
`§103– Brown in view of Thompson, Nielsen,
`
`Eaton, and Richardson
`
`1
`
`

`

`Ground
`4
`
`’619 Patent Claims
`36, 50, 52
`
`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`Basis for Rejection
`§103– Brown in view of Thompson, Nielsen,
`
`Eaton, and Friend
`
`Thompson (published 04/26/2001), Nielsen (published 06/07/2001), and
`
`Eaton (published 05/29/2003) qualify as prior art under at least §102(b) because
`
`each was published over a year before the earliest possible priority date
`
`(11/22/2004) of the ’619 Patent.
`
`Brown (claiming priority to a provisional application filed 05/04/2004),
`
`Richardson (filed 03/22/2004), and Friend (filed 03/31/2003) qualify as prior art
`
`under at least §102(e) because each is a U.S. Patent or Patent Publication filed
`
`before or claiming priority to an application filed before the earliest possible
`
`priority date (11/22/2004) of the ’619 Patent.
`
`The Brown Provisional Application (APPLE-1013) provides ample support
`
`for at least one independent claim of the Brown patent such that the Provisional
`
`Application filing date is available to establish the Brown patent as prior art.
`
`APPLE-1003, ¶45. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`
`F.3d 1375, 1382 (Fed. Cir. 2015). The following chart demonstrates how each
`
`element of claim 17 of Brown is supported by the provisional application.
`
`Citations in the chart provide examples of support, and are not installed as an
`
`exhaustive list. APPLE-1003, ¶45
`
`2
`
`

`

`
`
`Claim Language
`
`(APPLE-1012)
`
`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`Provisional
`
`Support
`
`(APPLE-1013)
`
`[17.P] A method for authentication of a requesting device
`
`6:12-7:4, 14:3-16:2,
`
`by an authenticating device,
`
`13:14-16, FIGs.3-4.
`
`[17.1]
`
`the requesting device and the authenticating
`
`5:20-6:4, 13:14-
`
`device each being operative to carry out a one-way
`
`14:2, 15:1-16:2,
`
`hash operation
`
`6:12-7:4, FIGs. 3-4.
`
`[17.2] and to carry out a key-based encryption operation, 15:1-16:2, 22:5-7,
`
`FIG. 4, 6:12-7:4.
`
`[17.3]
`
`the authenticating device storing a hash of a
`
`13:20-21, 15:13-
`
`defined password generated by applying the one-
`
`16:2, 15:1-5, FIGs.
`
`way hash operation to the defined password,
`
`3-4.
`
`[17.4]
`
`the authenticating device being further operative
`
`15:13-16:2, 6:21-
`
`to carry out a key-based decryption operation for
`
`7:4, FIG. 4.
`
`decrypting values obtained from the encryption
`
`operation, the method comprising the
`
`authenticating device:
`
`[17.5] determining and transmitting a challenge to the
`
`14:18-22, 6:12-7:4,
`
`requesting device;
`
`13:14-16, FIG. 4.
`
`3
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`15:1-16:2, 6:12-7:4,
`[17.6] receiving a response from the requesting device,
`
`the response comprising a requesting encryption
`
`5:20-6:4, FIG. 4.
`
`key determined by carrying out the hash operation
`
`on a combination of the challenge and a hash of a
`
`received user password, the hash being defined by
`
`carrying out the hash operation on the received
`
`user password,
`
`[17.7] defining an authenticating encryption key by
`
`15:13-16:2, 6:12-
`
`carrying out the hash operation on a combination
`
`7:4, FIG. 4.
`
`of the challenge and the hash of the defined
`
`password;
`
`[17.8] using the authenticating encryption key in the
`
`15:13-16:2, 6:12-
`
`decryption operation to decrypt the response to
`
`7:4, FIG. 4.
`
`obtain a decrypted user password and carrying out
`
`the one-way hash operation on the decrypted user
`
`password;
`
`[17.9] comparing the hash of the decrypted user
`
`15:13-16:2, 6:12-
`
`password with the hash of the defined password to
`
`7:4, 13:14-14:2,
`
`authenticate the requesting device when the
`
`FIG. 4.
`
`comparison indicates a match.
`
`4
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`Unless otherwise noted in this petition, Petitioner submits that all terms
`
`should be given their plain meaning, but reserves the right to respond to any
`
`constructions that may later be offered by the Patent Owner or adopted by Board.
`
`Petitioner is not waiving any arguments under 35 U.S.C. §112 or arguments
`
`regarding claim scope that may be raised in litigation. Petitioner acknowledges
`
`that the present analysis is performed under the Phillips construction standard.
`
`APPLE-1003, ¶¶35, 27
`
`“the device is operable to” (claim 22) Petitioner submits that, in this
`
`proceeding, the following construction is the correct construction for the term
`
`“device” – a computing device, such as a host system. APPLE-1003, ¶37. To this
`
`point, the term “device” does not appear in the ’619 patent specification except in
`
`the background as used in the phrase “mobile data communication device.”
`
`APPLE-1001, 1:26-48; APPLE-1003, ¶37. However, the claims of the ’619 patent
`
`indicate that the claimed “device” is not the “remote device,” but rather, “the
`
`device” is in communication with the “remote device.” APPLE-1001, 11:5-17,
`
`3:9-18; APPLE-1003, ¶37. Indeed, consistent with the specification, the language
`
`and context of the claims relate the recited “device” to “the host system 100,”
`
`which is a computing device. APPLE-1001, 3:9-28, 1:29-32; APPLE-1003, ¶37.
`
`Although Petitioner advances the above construction in this proceeding,
`
`5
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`Petitioner notes that a question exists as to whether the language “the device is
`
`operable to” should be interpreted under 35 U.S.C. § 112, para. 6. “[W]hether
`
`claim language invokes 35 U.S.C. § 112, para. 6…as well as its ultimate
`
`interpretations of the patent claims are legal questions.” Williamson v. Citrix
`
`Online, LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015). The absence of the word
`
`“‘means’…creates a rebuttable presumption that section 112, paragraph 6, does not
`
`apply.” Phillips v. AWH Corp., 415 F.3d 1303, 1311 (Fed. Cir. 2005). In district
`
`court, the parties dispute whether the presumption should be rebutted. Although
`
`claim construction arguments are not yet final in district court, Petitioner may
`
`argue in district court that 112/6 applies and claim 22 is indefinite. 1 However,
`
`Patent Owner contends that the presumption applies and the claim language in
`
`claim 22 regarding “the device is operable to” does not invoke § 112, para. 6
`
`
`1 Petitioner may additionally argue in the district court that dependent claims 24-26
`
`are indefinite for violating § 112, § 4’s requirement they be narrower than their
`
`respective independent claim. See Multilayer Stretch Cling Film Holding, Inc. v.
`
`Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016). However, the scope
`
`of the claims can still be determined (the claims are simply non-narrowing) and
`
`therefore the plain and ordinary meaning of claims 24-26 should be applied here
`
`when applying the prior art. APPLE-1003, ¶35.
`
`6
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`(“112/6”). Petitioner explains this out if its duty of disclosure to the Board. 2
`
`Moreover, because the dispute in district court remains unresolved and because
`
`Petitioner is unable to raise indefiniteness here, Petitioner relies on the
`
`presumption in this proceeding and, in this petition, applies prior art to the ordinary
`
`meaning of this claim language consistent with Patent Owner’s litigation position.
`
`See, e.g., Samsung Electronics Co. LTD., et al. v. Seven Networks, LLC, IPR2018-
`
`01124, paper 29, p. 17 (“[] Petitioner’s argument about indefiniteness in the related
`
`district court case does not warrant denying the Petition because Petitioner cannot
`
`raise indefiniteness in this case.”); Samsung Electronics Co. LTD., et al. v. Seven
`
`Networks, LLC, IPR2018-01106, paper 30, p. 23. Petitioner will promptly inform
`
`the Board of any district court developments related to definiteness of the language
`
`in claim 22 (and other claims for which definiteness issues are raised).
`
`Further, when determining validity, “claim terms need only be construed to
`
`the extent necessary to resolve the controversy.” Wellman, Inc. v. Eastman Chem.
`
`Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). Because this proceeding lacks
`
`
`2 Petitioner may additionally argue in the district court that 112/6 applies to the
`
`preamble of claim 51. As with claim 22, the plain and ordinary meaning of the
`
`preamble should be applied here because no party has rebutted the presumption
`
`that 112/6 should not apply.
`
`7
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`arguments or record evidence rebutting the presumption that 112/6 does not apply,
`
`it is appropriate for the presumption to stand and for the Board to forego
`
`construction of this phrase absent Patent Owner advocating for application of
`
`112/6. If Patent Owner does not endorse a 112/6 construction, no controversy
`
`exists on this record with regard to 112/6 application in this proceeding. Indeed,
`
`the presumption holds when neither party presents argument or evidence to rebut
`
`the presumption. See HTC America, Inc. v. Virginia Innovation Sciences, Inc.,
`
`IPR2017-00872, paper 11, p. 9 (expanded panel); Adlens USA Inc. v. Superfocus
`
`Holdings LLC, IPR2015-01821, Paper 40 at 27-28 (PTAB 2016); see also Dick v.
`
`New York Life Ins. Co., 359 U.S. 437, 443 n.3 (1959) (“A presumption . . . may be
`
`controverted by other direct or indirect evidence but unless so controverted, the
`
`[factfinder is] bound to find according to the presumption.”) (emphasis added);
`
`Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358 (Fed. Cir.
`
`1984) (a legal presumption “places the burden of persuasion” on opposing party).
`
`Where, like here, neither party advocated for rebuttal of the presumption that 112/6
`
`does not apply, the Board did not apply 112/6 treatment to similar claim language.
`
`See, e.g., Samsung Electronics Co. LTD., et al. v. Seven Networks, LLC, IPR2018-
`
`01124, paper 29, pp. 17, 19; Samsung Electronics Co. LTD., et al. v. Seven
`
`Networks, LLC, IPR2018-01106, paper 30, pp. 22-23, 30-31.
`
`Finally, we note that any preliminary district court ruling on claim
`
`8
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`construction is reviewable by the Federal Circuit under a de novo review standard,
`
`and yet, denial of institution as a matter of discretion has been deemed non-
`
`appealable. As such, with respect to this claim construction theory, Petitioner
`
`submits that congressional intent is best served through institution, particularly
`
`considering that institution would involve consideration of the advanced grounds
`
`against the claim construction advanced by Patent Owner in the district court.
`
`For these reasons, in this proceeding, the term “device” should be construed
`
`as a computing device, such as a host system. APPLE-1003, ¶37.
`
`“service activation code” (claims 22-24, 26, 32-33, 37-40, 46, 51) – code
`
`relaying information used to authenticate a user’s access to a messaging account.
`
`APPLE-1003, ¶38. The ’619 specification explains that “the host system 100
`
`authenticates the person who enters the service activation code” such that “in
`
`addition to the host system 100, only the mobile terminal 102…can be used to
`
`access and manipulate e-mail.” APPLE-1001, 4:40-5:8. As emphasized by the
`
`Applicant during prosecution, the ’619 patent specifies that “to register to a
`
`messaging account, the service activation code must relay information to the host
`
`system such as user name and password combination.” APPLE-1002, 163 (citing
`
`APPLE-1001, 4:56-5:8).
`
`“remote device” (claims 22-23, 33, 36-38, 50-52) – a computing device that
`
`is physically distinct from the claimed device. APPLE-1003, ¶39; APPLE-1014, 7
`
`9
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`
`(parties agreeing to this construction).
`
`II.
`
`SUMMARY OF THE ’619 PATENT
`A. Brief Description
`Generally, the ’619 patent describes “methods for forwarding an e-mail
`
`message from an e-mail server to a mobile terminal.” APPLE-1001, 2:10-36. The
`
`’619 patent “aims at improving cooperation between the host system 100 and
`
`mobile terminal 102 such that they can use a single e-mail account.” Id., 3:9-28.
`
`The system includes a “messaging centre 110” that “push[es] e-mail messages to
`
`the mobile terminal.” Id., 3:41-52. FIG. 1 shows the host system, mobile terminal,
`
`and messaging centre:
`
`10
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`
`
`
`APPLE-1001, FIG. 1 (highlighted). The ’619 patent also briefly describes an
`
`authentication technique “in which the host system 100 authenticates the user of
`
`the mobile terminal 102” by receiving a service activation code and “conveying the
`
`service activation code to the messaging centre 110.” APPLE-1001, 4:56-5:37.
`
`The ’619 patent explains that “the mobile terminal 102 generates and displays a
`
`service activation code” and “the host system 100 authenticates the person who
`
`enters the service activation code.” Id. “[T]he service activation code may be
`
`entered manually or via a local connection, such as a wired or optical interface or a
`
`short-range wireless interface.” Id.
`
`11
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`B.
`Summary of the Prosecution History of the ’619 Patent
`Claims 23, 37, and 55 (which eventually issued as independent claims 22,
`
`37, and 51) of the ’619 patent (filed on January 29, 2015) were added during
`
`prosecution in an office action response. APPLE-1002, 353-362. The Applicant
`
`amended independent claims 23, 37, 55 several times over prosecution, including
`
`an amendment that added two words to recite “optically receive information
`
`including a displayed service activation code from a remote device.” APPLE-1002,
`
`221-226 (underlining in original). The claims were ultimately allowed after the
`
`Applicant argued that the Anttila reference cited during prosecution failed to
`
`disclose “receiving a service activation code and registering the remote device for
`
`access to a messaging account using the service activation code.” Id., 128-130. In
`
`eventually allowing the claims, the Examiner cited portions of independent claims
`
`23, 27, and 55 corresponding to the receiving/registering functions identified by
`
`the Applicant as allegedly absent from the prior art. Id., 24-33. However, as
`
`detailed below, the prior art cited herein evidences that it was known in the art to
`
`display a service activation code that is optically received at a device.
`
`III. AT LEAST ONE CLAIM OF THE ’619 PATENT IS
`UNPATENTABLE
`As detailed below, this request shows a reasonable likelihood that the
`
`Requester will prevail with respect to the Challenged Claims.
`
`12
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`A. GROUND 1 – CLAIMS 22-26, 32, 37-40, 46, 51 ARE
`OBVIOUS BASED ON BROWN IN VIEW OF
`THOMPSON AND NIELSEN
`1. Overview of Brown
`Like the ’619 patent, Brown describes a messaging system in which
`
`“messages addressed to a message server account associated with a host system
`
`such as a home computer or office computer which belongs to the user of a mobile
`
`device 100 are redirected from the message server 40 to the mobile device 100 as
`
`they are received.” APPLE-1012, 5:51-56; APPLE-1013, 9:13-13.3 Brown
`
`explains that “the redirection program 45 enables redirection of data items from the
`
`server 40 to a mobile communication device 100” and that the message server 40 is
`
`part of a “central host system 30” that can be implemented on a single “home
`
`office computer” such as “desktop 35.” APPLE-1012, 6:29-47, 7:24-44, FIG. 2;
`
`APPLE-1013, 10:16-11:12, 12:10-13, FIG. 2. Brown specifies that “[t]he central
`
`host system 30” can be implemented as “a home office computer”4 and therefore,
`
`as would have been understood by a POSITA, Brown contemplates that the
`
`functionality of the host system 30 in FIG. 2, including functions of the message
`
`
`3 Petitioner has included select citations to the Brown Provisional Application
`
`(APPLE-1013) to show where support for the cited portions of Brown can be
`
`found in the Brown Provision Application. These citations are non-exhaustive.
`
`4 All emphasis added unless otherwise noted.
`
`13
`
`

`

`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`server 40, redirection program 45, and desktop 35, can be attributed to a single
`
`computer, according to Brown’s disclosure:
`
`
`
`APPLE-1012, 6:29-47, FIG. 25; APPLE-1013, 10:16-11:12; APPLE-1003, ¶¶42-
`
`
`5 Although the mobile device 100 is depicted as being inside the host system 30 in
`
`FIG. 2, a POSITA would have recognized from Brown’s complete disclosure that
`
`the mobile device 100 only directly interacts with other components of the host
`
`system 30 when docked to the docking cradle 65 and the mobile device is
`
`14
`
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`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
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`44.
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`
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`Brown describes authenticating the mobile device 100 to enable the mobile
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`device 100 to receive redirected messages from the message server 40 (which is
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`part of the host system 30); “a secret, such as a password, may be securely
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`transferred between a requesting device and an authenticating device” such that
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`“[i]f a hash of the user supplied password matches the stored hash of the
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`authenticating device password, then the requesting device has been
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`authenticated.” APPLE-1012, 1:60-2:14; APPLE-1013, 6:12-7:4. As Brown
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`describes “[t]he private key is preferably exchanged so that the desktop 35 and
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`mobile device 100 share one personality and one method for accessing all mail”
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`such that if the password provided from the requesting device to the authenticating
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`device matches a password stored at the authenticating device “then the user is
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`authenticated and the desktop system 35 is allowed to form a connection with the
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`device 10.” APPLE-1012, 7:44-8:15; APPLE-1013, 13:1-14:2. Accordingly,
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`Brown discloses a service activation code (in the form of the disclosed password
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`and the disclosed private key) used to register a mobile device to a messaging
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`account associated with a first computing device, much like the device claimed in
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`otherwise a separate computing device from the host system 30. APPLE-1003,
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`¶43.
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`15
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`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`
`the ’619 patent.
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`2. Overview of Thompson
`Thompson describes an “access control system [that] attaches to a computer
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`(108) via a PDA cradle (104) and transmits access control codes that include a
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`series of authentication codes or identification codes having encoded data.”
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`APPLE-1006, Abstract. Thompson describes that “[e]xamples of computer data
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`felt to require access control include secure files, personalized e-mail accounts…”
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`Id., 3:11-15. Per Thompson, “a PDA device is programmed to provide various
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`access control codes to multiple security outlets or service controllers” such that
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`“[i]f the codes are accepted the digital device releases access to a requested
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`resource.” Id., 4:27-33, 6:33-7:3. For example, a “digital device 108” such as a
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`desktop computer can determine “whether access should be granted to personal e-
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`mail accounts 118” based on the received access control codes. Id., 9:7-35. FIG. 1
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`shows the PDA in communication with the digital device 108 to exchange access
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`control codes in order to authenticate access to resources, such one or more email
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`accounts:
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`16
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`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
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`
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`APPLE-1006, FIG. 1. Accordingly, similar to Brown, Thompson discloses a
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`service activation code (the access control code) used to register a mobile device to
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`a messaging account associated with a first computing device, via a local
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`connection, much like the device claimed in the ’619 patent.
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`3. Overview of Nielsen
`Nielsen describes a system for “controlling access to a location,” which
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`includes both physical locations and “user access to a computer or computer
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`program where access is controlled by a software lock mechanism restricting
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`access to a software application [or] to stored data.” APPLE-1005, 2:4-6, 5:18-28.
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`Nielsen describes a mobile device such as “a mobile phone” that functions as an
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`17
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`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`“electronic key device 201.” APPLE-1005, 20:11-18, 7:1-7. The electronic key
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`stores and transmits an “access code from the electronic key device to the lock
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`control unit” to gain access. APPLE-1005, 6:19-23, 7:26-8:8. FIG. 2b of Nielsen
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`shows the electronic key device 201 in proximate, wireless communication with a
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`receiver 227 of the lock control unit 221:
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`
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`APPLE-1005, FIG. 2b, 22:27-24:5, 20:33-21:6.
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`
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`Nielsen describes that the electronic key “retrieves the access code
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`from the memory 507b and displays the access code and/or related information
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`on the display 502.” APPLE-1005, 31:29-33, 39:10-33. Subsequently, “the user
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`may issue a command via the keypad for initiating the use of a selected access
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`code” and “the control unit 508 initiates transmitting the selected access code via
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`the circuit 505 and the aerial 504 to the lock control unit” via, for example, infrared
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`18
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`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`communication. Id., 32:1-9, 20:5-32. Upon confirmation that the access code is
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`valid, the lock control unit “grant[s] access to the location.” Id., 34:3-8.
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`Accordingly, Nielsen demonstrates that it was known in prior art systems to
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`optically receive information such as a displayed service activation code from a
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`remote device.
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`4.
`Combination of Brown, Thompson, and Nielsen
`As shown in the element-by-element analysis below, and supported by the
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`testimony of Dr. Traynor, the predictable combination of Brown with Thompson
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`and Nielsen would have resulted in a computing device, such as Brown’s host
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`system, and a mobile computing device, such as Brown’s mobile device 100, that
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`possess additional functionality based on the suggestions of Thompson and
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`Nielsen. (See, e.g., Analysis of element [22.3], infra). Specifically, in the
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`predictable combination, Thompson’s suggestion for exchanging information
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`between a mobile device and another computing device via laser communication
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`would have been applied to Brown’s system to facilitate exchange of information
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`(including Brown’s secret/password) between Brown’s mobile device 100 and host
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`system 30. APPLE-1006, 5:5-17, 9:7-17, 16:13-20; APPLE-1012, 1:60-2:14, 7:44-
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`8:15; APPLE-1003, ¶¶74-79. The predictable combination would have further
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`modified Brown based on Thompson’s teachings such that Brown’s
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`secret/password is provided from Brown’s mobile device 100 to the host system 30
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`19
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`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`to permit the mobile device 100 to access the email account managed by the host
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`system (and the forwarding functionality described by Brown). APPLE-1006,
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`4:27-33, 5:5-31, 6:33-7:14, 16:13-20, Abstract, 5:5-17, 9:7-17; APPLE-1003,
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`¶¶81-87.
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`Finally, in the predictable combination, Brown’s mobile device would have
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`been modified to display a service activation code (Brown’s secret/password) that
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`is transmitted to the host system for gaining access to a restricted email account,
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`consistent with Nielsen’s teachings. APPLE-1003, ¶¶88-100; APPLE-1005,
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`31:29-33, 39:10-33.
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`The combination of Brown, Thompson, and Nielsen is addressed below,
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`within the element-by-element application of that combination to claim terms. For
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`convenience, aspects of the combination are described with reference and citation
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`to integrated aspects of each of Brown, Thompson, and Nielsen.6
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`5.
`Analysis of Challenged Claims
`A device comprising:
` [22.P]
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`Specifically, Brown’s “host system 30,” which can be implemented as “a
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`home office computer” performs the functions of the claimed device (as
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`6 Aspects of further combinations in Grounds 2-6 are similarly described with
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`reference and citation to integrated aspects of each reference.
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`20
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`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`predictably modified by Thompson and Nielsen). APPLE-1012, 6:29-47, 7:24-44,
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`FIG. 2; APPLE-1013, 10:16-11:12, 12:10-13, FIG. 2; APPLE-1003, ¶¶53-58. The
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`message server 40, redirection program 45, and desktop 35 (depicted as a single
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`desktop computer and its respective monitor in FIG. 2) are part of the host system,
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`and therefore, as would have been understood by a POSITA, the functionality of
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`each of those components is performed by the host system:
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`APPLE-1012, 6:29-47, FIG. 2; APPLE-1013, 10:16-11:12; APPLE-1003, ¶54-55.
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`
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`Alternatively, the desktop 35 and the message server 40 could be considered
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`
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`21
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`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`the claimed “device” even if the desktop 35 and the message server 40 remain in
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`physically separate housings. APPLE-1003, ¶57. Indeed, computing devices
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`necessarily are a combination of multiple components, and the claims do not
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`require the claimed device to be contained in any particular number of housings.
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`APPLE-1001, 4:56-5:8; 4:5-28; APPLE-1003, ¶57. In fact, the ’619 specification
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`attributes different steps performed by the “device” of claim 1 to the host system
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`100 or messaging centre 110, which are shown as physically separate in FIG. 1.
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`APPLE-1001, 4:56-5:8; 4:5-28, FIG. 1; APPLE-1003, ¶58.
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`
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`In a further alternative, it would have been obvious to implement the desktop
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`35 and the message server 40 as a single computer based on, for example, Brown’s
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`disclosure that “[t]he message server 40 may be implemented, for example, on a
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`network computer” and the desktop 35 is just such a network computer shown as
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`being physically collocated with the message server 40. APPLE-1012, 5:8-11;
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`APPLE-1013, 8:5-10; APPLE-1003, ¶56. Implementing the desktop 35 and the
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`message server 40 as a single computer would have reduced the amount of
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`computing equipment necessary to implement Brown’s system, thereby reducing
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`expense. APPLE-1003, ¶56.
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`[22.1] a radio;
`The combination renders obvious this element. APPLE-1003, ¶¶59-66.
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`Brown discloses use of a “wireless VPN router 75” at the host system 30 and a
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`22
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`Attorney Docket No. 39521-0089IP2
`IPR of U.S. Patent No. 10,027,619
`POSITA would have recognized that communication with/by the wireless VPN
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`router 75 (such as by the message server 40)