Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MOBILEIRON, INC.,
`Petitioner,
`v.
`BLACKBERRY LIMITED,
`Patent Owner
`
`Case No. IPR2021-00162
`U.S. Patent No. 8,442,489
`Issue Date: May 14, 2013
`Title: SYSTEM AND METHOD FOR CONFIGURING DEVICES FOR SECURE OPERATIONS
`
`DECLARATION OF MARKUS JAKOBSSON, PH.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,442,489
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
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`
`TABLE OF CONTENTS
`
`
`
`I.
`
`II.
`
`QUALIFICATIONS ........................................................................................ 1
`A. Materials Considered ............................................................................. 5
`LEGAL PRINCIPLES ..................................................................................... 7
`A.
`Prior Art ................................................................................................. 7
`B.
`Claim Construction ............................................................................... 7
`C. Anticipation ......................................................................................... 10
`D. Obviousness ......................................................................................... 11
`III. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 12
`IV. THE ’489 PATENT ....................................................................................... 13
`A. Overview of the ’489 Patent ................................................................ 13
`B.
`Prosecution History ............................................................................. 17
`C.
`The Challenged Claims ....................................................................... 20
`V. APPLICATION OF THE PRIOR ART TO ASSERTED CLAIMS ............ 24
`A.
`Brief Summary of Prior Art ................................................................ 24
`1.
`Ground 1 Prior Art .................................................................... 24
`2.
`Ground 2 Prior Art .................................................................... 29
`3.
`Ground 3 Prior Art .................................................................... 31
`GROUND 1: Claims 1, 4, 5, 10, 15-18, 22 and 23 Are Anticipated
`by Mann ............................................................................................... 32
`1.
`Independent Claim 1 ................................................................. 32
`2.
`Claim 4 ...................................................................................... 62
`
`B.
`
`
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`
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`
`
`3.
`Claim 5 ...................................................................................... 65
`Independent Claim 10 ............................................................... 68
`4.
`Claim 15 .................................................................................... 82
`5.
`Claim 16 .................................................................................... 83
`6.
`Independent Claim 17 ............................................................... 84
`7.
`Claim 18 .................................................................................... 88
`8.
`Claim 22 .................................................................................... 89
`9.
`10. Claim 23 .................................................................................... 90
`C. GROUND 2: Claims 1, 4, 5, 7, 10-20, 22, and 23 Are Unpatentable
`as Obvious over Mann in View of Kaplan .......................................... 91
`1. Motivation to Combine Mann and Kaplan ............................... 91
`2.
`Independent Claim 1 ................................................................. 94
`3.
`Claims 4 and 5 ........................................................................... 98
`4.
`Claim 7 ...................................................................................... 99
`5.
`Independent Claim 10 .............................................................100
`6.
`Claim 11 ..................................................................................101
`7.
`Claim 12 ..................................................................................104
`8.
`Claim 13 ..................................................................................105
`9.
`Claim 14 ..................................................................................107
`10. Claims 15 and 16.....................................................................108
`11.
`Independent Claim 17 .............................................................108
`12. Claim 18 ..................................................................................109
`13. Claim 19 ..................................................................................109
`
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`14. Claim 20 ..................................................................................110
`15. Claim 22 ..................................................................................111
`16. Claim 23 ..................................................................................112
`D. GROUND 3: Claims 2, 3, 6, 8, 9, and 21 Are Unpatentable as
`Obvious over Mann in View of S/MIME-Profile .............................112
`1. Motivation to Combine Mann and S/MIME-Profile ..............112
`2.
`Claim 2 ....................................................................................118
`3.
`Claim 3 ....................................................................................120
`4.
`Claim 6 ....................................................................................120
`5.
`Claim 8 ....................................................................................123
`6.
`Claim 9 ....................................................................................128
`7.
`Claim 21 ..................................................................................129
`GROUND 4: Claims 2, 3, 6, 8, 9, and 21 Are Unpatentable as
`Obvious over Mann in View of Kaplan, Further in View of
`S/MIME-Profile .................................................................................129
`1. Motivation to Combine Mann, Kaplan, and S/MIME-Profile 130
`2.
`Claims 2, 3, 6, 8, 9, and 21 .....................................................131
`VI. NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .....131
`VII. CONCLUSION ............................................................................................134
`
`E.
`
`
`
`
`
`
`iii
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`I, Markus Jakobsson, Ph.D., declare as follows:
`
`I.
`
`QUALIFICATIONS
`1.
`I make this Declaration based upon my own personal knowledge,
`
`information, and belief, and I would and could competently testify to the matters
`
`set forth in this Declaration if called upon to do so.
`
`2.
`
` Attached hereto as Appendix A is a true and correct copy of my
`
`Curriculum Vitae (CV).
`
`3.
`
`I am currently a security researcher at ByteDance. My work involves
`
`reviewing security needs and developing recommendations to address these.
`
`4.
`
`I am also the CEO at ZapFraud, a cybersecurity company that
`
`develops techniques to detect deceptive emails, such as Business Email
`
`Compromise emails. At ZapFraud, my research studies and addresses abuse,
`
`including social engineering, malware and privacy intrusions. My work primarily
`
`involves identifying risks, developing protocols and user experiences, and
`
`evaluating the security of proposed approaches.
`
`5.
`
`I received a Master of Science degree in Computer Engineering from
`
`the Lund Institute of Technology in Sweden in 1993, a Master of Science degree in
`
`Computer Science from the University of California at San Diego in 1994, and a
`
`Ph.D. in Computer Science from the University of California at San Diego in 1997,
`
`
`
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`specializing in Cryptography. During and after my Ph.D. studies, I was also a
`
`Researcher at the San Diego Supercomputer Center, where I did research on
`
`authentication and privacy.
`
`6.
`
`From 1997 to 2001, I was a Member of Technical Staff at Bell Labs,
`
`where I did research on authentication, privacy, multi-party computation, contract
`
`exchange, digital commerce including crypto payments, and fraud detection and
`
`prevention. From 2001 to 2004, I was a Principal Research Scientist at RSA Labs,
`
`where I worked on predicting future fraud scenarios in commerce and
`
`authentication and developed solutions to those problems. During that time I
`
`predicted the rise of what later became known as phishing. I was also an Adjunct
`
`Associate Professor in the Computer Science department at New York University
`
`from 2002 to 2004, where I taught cryptographic protocols.
`
`7.
`
`From 2004 to 2016, I held a faculty position at the Indiana University
`
`at Bloomington, first as an Associate Professor of Computer Science, Associate
`
`Professor of Informatics, Associate Professor of Cognitive Science, and Associate
`
`Director of the Center for Applied Cybersecurity Research (CACR) from 2004 to
`
`2008; and then as an Adjunct Associate Professor from 2008 to 2016. I was the
`
`most senior security researcher at Indiana University, where I built a research
`
`group focused on online fraud and countermeasures, resulting in over 50
`
`
`
`
`
`
`2
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`publications and two books.
`
`8. While a professor at Indiana University, I was also employed by
`
`Xerox PARC, PayPal, and Qualcomm to provide thought leadership to their
`
`security groups. I was a Principal Scientist at Xerox PARC from 2008 to 2010, a
`
`Director and Principal Scientist of Consumer Security at PayPal from 2010 to
`
`2013, a Senior Director at Qualcomm from 2013 to 2015, Chief Scientist at Agari
`
`from 2016 to 2018, and Chief of Security and Data Analytics at Amber Solutions
`
`from 2018 to 2020.
`
`9.
`
`Agari is a cybersecurity company that develops and commercializes
`
`technology to protect enterprises, their partners and customers from advanced
`
`email phishing attacks. At Agari, my research studied and addressed trends in
`
`online fraud, especially as related to email, including problems such as Business
`
`Email Compromise, Ransomware, and other abuses based on social engineering
`
`and identity deception. My work primarily involved identifying trends in fraud and
`
`computing before they affected the market, and developing and testing
`
`countermeasures, including technological countermeasures, user interaction and
`
`education.
`
`10. Amber Solutions is a cybersecurity company that develops home and
`
`office automation technologies. At Amber Solutions, my research addressed
`
`
`
`
`
`
`3
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`privacy, user interfaces and authentication techniques in the context of ubiquitous
`
`and wearable computing.
`
`11.
`
`I have founded or co-founded several successful computer security
`
`companies. In 2005 I co-founded RavenWhite Security, a provider of
`
`authentication solutions, and I am currently its Chief Technical Officer. In 2007 I
`
`co-founded Extricatus, one of the first companies to address consumer security
`
`education. In 2009 I founded FatSkunk, a provider of mobile malware detection
`
`software; I served as Chief Technical Officer of FatSkunk from 2009 to 2013,
`
`when FatSkunk was acquired by Qualcomm and I became a Qualcomm employee.
`
`In 2013 I founded ZapFraud, a provider of anti-scam technology addressing
`
`Business Email Compromise, and I am currently its CEO. In 2014 I co-founded
`
`RightQuestion, a security consulting company.
`
`12.
`
`I have additionally served as a member of the fraud advisory board at
`
`LifeLock (an identity theft protection company); a member of the technical
`
`advisory board at CellFony (a mobile security company); a member of the
`
`technical advisory board at PopGiro (a user reputation company); a member of the
`
`technical advisory board at MobiSocial dba Omlet (a social networking company);
`
`and a member of the technical advisory board at Stealth Security (an anti-fraud
`
`company). I have provided anti-fraud consulting to KommuneData (a Danish
`
`
`
`
`
`
`4
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`government entity), J.P. Morgan Chase, PayPal, Boku, and Western Union.
`
`13.
`
`I have authored six books and over 100 peer-reviewed publications,
`
`and have been a named inventor on over 100 patents and patent applications.
`
`14. My work has included research in the area of applied security,
`
`privacy, cryptographic protocols, authentication, malware, social engineering,
`
`usability and fraud.
`
`15.
`
`I have been engaged as a technical expert in over 40 computer-related
`
`cases, including numerous cases involving Internet security.
`
`A. Materials Considered
`16. The analysis that I provide in this Declaration is based on my
`
`education and experience. I have cited to the following documents in my analysis
`
`below:
`
`EXHIBIT NO.
`
`DESCRIPTION
`
`1001
`
`U.S. 8,442,489 (the “’489 Patent”)
`
`1002
`
`Declaration of Markus Jakobsson, Ph.D.
`
`1003
`
`File History of the ’489 Patent
`
`1004
`
`File History of U.S. 8,010,989
`
`
`
`
`
`
`5
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`
`EXHIBIT NO.
`
`DESCRIPTION
`
`1005
`
`U.S. 7,665,118 to Mann et al. (Mann)
`
`1006
`
`U.S. 7,043,263 to Kaplan et al. (Kaplan)
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`National Institute of Science and Technology (NIST),
`“Federal S/MIME V3 Client Profile,” NIST Special
`Publication 800-49 (2002) (S/MIME-Profile)
`
`R. Karri and P. Mishra, “Minimizing Energy Consumption
`of Secure Wireless Session with QoS Constraints," in
`Proceedings of the2002 IEEE International Conference on
`Communications Conference (ICC 2002) vol. 4, pp. 2053-
`2057 (2002) (Karri)
`
`Aoki, Kazumaro, and Helger Lipmaa, “Fast
`Implementations of AES Candidates," in Proceedings of
`AES Candidate Conference, pp. 106-120 (2000).
`
`Srivaths Ravi et al., “Security in Embedded Systems:
`Design Challenges,” 3 ACM Transactions on Embedded
`Computing Systems, pp. 461–491 (2004)
`
`U.S. Patent Application Publication No. US 2003/0182435
`by Redlich et al. (Redlich)
`
`Federal Information Processing Standards Publication 197
`(FIPS-197)
`
`Original Complaint filed April 27, 2020 in MobileIron. Inc.
`v. Blackberry Corp., et al., Case No. 3:20-cv-02877 (N.D.
`Cal.)
`
`First Amended Complaint filed June 29, 2020 in MobileIron. Inc.
`v. Blackberry Corp., et al., Case No. 3:20-cv-02877 (N.D. Cal.)
`
`
`
`
`
`
`6
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`
`EXHIBIT NO.
`
`DESCRIPTION
`
`1015
`
`Affidavit of Elizabeth Rosenberg Regarding S/MIME-
`Profile
`
`II. LEGAL PRINCIPLES
`17.
`I am not an attorney. For purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my analysis and
`
`opinions, as set forth below.
`
`A.
`18.
`
`Prior Art
`I understand that the prior art to the ʼ489 patent includes patents and
`
`printed publications in the relevant art that predate the ʼ489 patent’s priority date.
`
`As I explained previously, I have been instructed to assume for purposes of my
`
`analysis that April 30, 2004 is the relevant date for determining what is “prior art.”
`
`In other words, I should consider as “prior art” anything publicly available prior to
`
`April 30, 2004. I further understand that, for purposes of this proceeding in the
`
`United States Patent Trial and Appeal Board, only patents and documents that have
`
`the legal status of a “printed publication” may be relied on as prior art.
`
`B. Claim Construction
`19.
`I understand that under the legal principles, claim terms are generally
`
`given their ordinary and customary meaning, which is the meaning that the term
`
`would have to a person of ordinary skill in the art in question at the time of the
`
`
`
`
`
`
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`invention, i.e., as of the effective filing date of the patent application. I further
`
`understand that the person of ordinary skill in the art is deemed to read the claim
`
`term not only in the context of the particular claim in which a claim term appears,
`
`but in the context of the entire patent, including the specification.
`
`20.
`
`I am informed by counsel that the patent specification, under the legal
`
`principles, has been described as the single best guide to the meaning of a claim
`
`term, and is thus highly relevant to the interpretation of claim terms. And I
`
`understand for terms that do not have a customary meaning within the art, the
`
`specification usually supplies the best context of understanding the meaning of
`
`those terms.
`
`21.
`
`I am further informed by counsel that other claims of the patent in
`
`question, both asserted and unasserted, can be valuable sources of information as
`
`to the meaning of a claim term. Because the claim terms are normally used
`
`consistently throughout the patent, the usage of a term in one claim can often
`
`illuminate the meaning of the same term in other claims. Differences among
`
`claims can also be a useful guide in understanding the meaning of particular claim
`
`terms.
`
`22.
`
`I understand that the prosecution history can further inform the
`
`meaning of the claim language by demonstrating how the inventors understood the
`
`
`
`
`
`
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`invention and whether the inventors limited the invention in the course of
`
`prosecution, making the claim scope narrower than it otherwise would be.
`
`Extrinsic evidence may also be consulted in construing the claim terms, such as my
`
`expert testimony.
`
`23.
`
`I have been informed by counsel that, in IPR proceedings, a claim of a
`
`patent shall be construed using the same claim construction standard that would be
`
`used to construe the claim in a civil action filed in a U.S. district court (which I
`
`understand is called the “Phillips” claim construction standard), including
`
`construing the claim in accordance with the ordinary and customary meaning of
`
`such claim as understood by one of ordinary skill in the art and the prosecution
`
`history pertaining to the patent.
`
`24.
`
`I have been instructed by counsel to apply the “Phillips” claim
`
`construction standard for purposes of interpreting the claims in this proceeding, to
`
`the extent they require an explicit construction. The description of the legal
`
`principles set forth above thus provides my understanding of the “Phillips”
`
`standard as provided to me by counsel.
`
`25.
`
`I understand that some claims are independent, and that these claims
`
`are complete by themselves. Other claims refer to these independent claims and
`
`are “dependent” from those independent claims. The dependent claims include all
`
`
`
`
`
`
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
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`of the limitations of the claims on which they depend.
`
`C. Anticipation
`26.
`I understand that to anticipate a patent claim under 35 U.S.C. § 102, a
`
`single asserted prior art reference must disclose each and every element of the
`
`claimed invention, either explicitly, implicitly, or inherently, to a person of
`
`ordinary skill in the art. There must be no difference between the claimed
`
`invention and the disclosure of the alleged prior art reference as viewed from the
`
`perspective of the person of ordinary skill in the art. Also, I understand that in
`
`order for a reference to be an anticipating reference, it must describe the claimed
`
`subject matter with sufficient clarity to establish that the subject matter existed and
`
`that its existence was recognized by persons of ordinary skill in the field of the
`
`invention. In addition, I understand that in order to establish that an element of a
`
`claim is “inherent” in the disclosure of an asserted prior art reference, extrinsic
`
`evidence (or the evidence outside the four corners of the asserted prior art
`
`reference) must make clear that the missing element is necessarily found in the
`
`prior art, and that it would be recognized as necessarily present by persons of
`
`ordinary skill in the relevant field.
`
`27.
`
`In my opinions below, when I say that a person of ordinary skill
`
`would understand, readily understand, or recognize that an element or aspect of a
`
`
`
`
`
`
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
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`claim is disclosed by a reference, I mean that the element or aspect of the claim is
`
`disclosed explicitly to a person of ordinary skill in the art.
`
`D. Obviousness
`28.
`I understand that obviousness is a determination of law based on
`
`various underlying determinations of fact. In particular, these underlying factual
`
`determinations include (1) the scope and content of the prior art; (2) the level of
`
`ordinary skill in the art at the time the claimed invention was made; (3) the
`
`differences between the claimed invention and the prior art; and (4) the extent of
`
`any proffered objective indicia of nonobviousness. I understand that the objective
`
`indicia which may be considered in such an analysis include commercial success
`
`of the patented invention (including evidence of industry recognition or awards),
`
`whether the invention fills a long-felt but unsolved need in the field, the failure of
`
`others to arrive at the invention, industry acquiescence and recognition, initial
`
`skepticism of others in the field, whether the inventors proceeded in a direction
`
`contrary to the accepted wisdom of those of ordinary skill in the art, and the taking
`
`of licenses under the patent by others, among other factors.
`
`29. To ascertain the scope and content of the prior art, it is necessary to
`
`first examine the field of the inventor’s endeavor and the particular problem for
`
`which the invention was made. The relevant prior art includes prior art in the field
`
`
`
`
`
`
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
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`
`of the invention, and also prior art from other fields that a person of ordinary skill
`
`in the art would look to when attempting to solve the problem.
`
`30.
`
`I understand that a determination of obviousness cannot be based on
`
`the hindsight combination of components selectively culled from the prior art to fit
`
`the parameters of the patented invention. Instead, it is my understanding that in
`
`order to render a patent claim invalid as being obvious from a combination of
`
`references, there must be some evidence within the prior art as a whole to suggest
`
`the desirability, and thus the obviousness, of making the combination in a way that
`
`would produce the patented invention.
`
`31.
`
`I further understand that in an obviousness analysis, neither the
`
`motivation nor the purpose of the patentee dictates. What is important is whether
`
`there existed at the time of the invention a known problem for which there was an
`
`obvious solution encompassed by the patent’s claims.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`32.
`I understand that an assessment of claims of the ’489 patent should be
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
`
`earliest claimed priority date, which I understand is April 30, 2004. I have also
`
`been advised that to determine the appropriate level of a person having ordinary
`
`skill in the art, the following factors may be considered: (1) the types of problems
`
`
`
`
`
`
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
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`
`encountered by those working in the field and prior art solutions thereto; (2) the
`
`sophistication of the technology in question, and the rapidity with which
`
`innovations occur in the field; (3) the educational level of active workers in the
`
`field; and (4) the educational level of the inventor.
`
`33.
`
`In my opinion, a person of ordinary skill in the art at the time of the
`
`alleged invention of the ’489 patent would be someone with a bachelor’s degree in
`
`computer science, computer engineering, applied mathematics, or related field, and
`
`either two or more years of experience in applied cryptography, computer science,
`
`computer engineering, mobile device management, IT or network administration,
`
`or a related field.
`
`34. Based on my training and experience, I believe that I am a person of
`
`at least ordinary skill in the relevant art as of April 30, 2004, which permits me to
`
`give an opinion about the qualifications of one of ordinary skill at the time of the
`
`alleged invention.
`
`IV. THE ’489 PATENT
`A. Overview of the ’489 Patent
`35. The ’489 patent is titled “System and Method for Configuring Devices
`
`for Secure Operation.”
`
`36. The ’489 patent appears to describe “[s]ystems and methods for
`
`
`
`
`
`
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`establishing a security-related mode of operation for computing devices.”
`
`Ex.1001, Abstract. The ’489 patent states:
`
`Mobile wireless communications devices are increasingly being
`used within corporate and governmental organizations. With
`the increased usage of mobile devices, companies are faced
`with the issue of defining and enforcing a secure mode of
`operation for their deployed devices that they consider secure
`and in accordance with their corporate or government security
`policy.
`
`Id., 1:24-30.
`
`37. As an example of a known secure mode of operation, the ’489 patent
`
`describes in the “Background” section, that “when government agencies purchase
`
`and deploy a product that has been validated to FIPS 140-2 (“Security
`
`Requirements for Cryptographic Modules”) the product is only authorized for use
`
`by employees when it operates in a secure mode of operation referred to as the
`
`FIPS mode of operation.” Id., 1:31-36.
`
`38. The ’489 patent further states:
`
`With the many different security settings that are potentially
`configurable, the task of defining and configuring a secure
`mode of operation on an individual IT policy basis for multiple
`devices is difficult. Also, once a device is configured into a
`
`
`
`
`
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`
`secure mode, the device operator does not have an efficient way
`to know that the device has been so configured.
`
`Id., 1:36-42.
`
`39. As a purported novel solution to the above-described problem, the
`
`’489 patent describes “systems and methods . . . for establishing security-related
`
`modes of operation for computing devices,” where “a policy data store contains
`
`security mode configuration data” that is “related to the computing devices,” and
`
`that is “used in establishing a security-related mode of operation for the computing
`
`devices.” Id., 1:46-52.
`
`40. Specifically, the ’489 patent states:
`
`FIG. 3 depicts a system wherein an IT (information technology)
`administrator 200 can collect all applicable IT security policies
`202 into one convenient location (e.g., policy data store 210).
`The placement of IT policies 202 in one location 210 allows an
`administrator 200 to configure the policies 202 appropriately,
`and to enable (220) or disable (230) a secure mode defined
`therein for the devices 250.
`
`Mode instructions (e.g., commands 220 and 230) may be sent to
`the devices 250 over many different types of data
`communication links, such as a network 240. Different devices
`may be connected to the network 240, including mobile devices
`
`
`
`
`
`
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`
`(e.g., mobile wireless communications device 252) and
`desktop/laptop computers (e.g., desktop computer 254).
`
`Id., 5:48-61; FIG. 3.
`
`41. With reference to its FIG. 4, the ’489 patent describes that an
`
`administrator can instruct devices “to be in a first secure mode of operation, and
`
`then later they can be switched to a different secure mode of operation.” Id., 5:62-
`
`64. The ’489 patent further describes providing a “visual indication 350 [that]
`
`indicates to the user 352 that the device 252 is operating in a specific secure mode”
`
`such as a “FIPS mode.” Id., 6:4-11.
`
`42. According to one scenario that the ’489 patent describes, “a security
`
`policy is deployed to multiple devices.” Id., 6:12-13; FIG. 6. Thereafter:
`
`[T]he devices receive the deployed security mode and process
`the mode command. Processing of the command causes the
`devices to operate in the defined security mode. At step 406, a
`user of the device can see an indication of which specific
`security mode the device has been configured by the IT
`administrator. At step 408, the IT administrator receives an
`indication from the devices that the devices have received and
`entered into the designated secure mode of operation.
`
`Id., 6:22-20; FIG. 6.
`
`43.
`
`In describing FIPS modes of operation, the ’489 patent states:
`
`
`
`
`
`
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`
`FIG. 7 depicts a system wherein an IT administrator 200 can
`define a meta IT policy for a FIPS mode of operation 510. The
`parameters for the FIPS mode of operation 510 are set in
`accordance with corporate or government security policies 520
`(e.g., FIPS 140-2). The defined FIPS mode of operation 510
`limits the use of cryptographic algorithms by the devices 250 to
`those that are FIPS-approved (e.g., AES and Triple DES), and
`when enabled, forces the devices to use only these algorithms.
`
`Id., 6:35-43; FIG. 7.
`
`B.
`Prosecution History
`44. The ‘489 patent issued from U.S. Patent Application Number
`
`3/182,827 (the “‘827 application”), filed on July 14, 2011, as a continuation of
`
`Application No. 11/065,901, filed on February 25, 2005 and now U.S. Patent No.
`
`8,010,989. Application No. 11/065,901 claims priority to U.S. Provisional Patent
`
`Application No. 60/567,137, filed on April 30, 2004.
`
`45. The ‘827 application was filed with 24 claims, including independent
`
`system or device claims 1, 10, and 24 and independent method claim 17. Claim 23
`
`depends from claim the method claim 17, but is a Beauregard claim that simply
`
`claims instructions stored in a computer-readable medium that perform the method
`
`of claim 17. Ex.1003 (’489 File History) at 142-48.
`
`46. On August 8, 2012, the Examiner issued the first non-final Office
`
`
`
`
`
`
`17
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`Declaration of Markus Jakobsson, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,442,489
`
`action, rejecting claims 1, 10, 17 and 24 “on the ground of nonstatutory
`
`obviousness type d