Trials@uspto.gov
`571.272.7822
`
`Paper No. 6
`Filed: April 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DIRECTV, LLC,
`Petitioner,
`
`V.
`
`QURIO HOLDINGS, INC.,
`Patent Owner.
`
`Case IPR2015-02007
`Patent 8,879,567 Bl
`
`Before BARBARA A. BENOIT, KERRY BEGLEY,and
`JASONJ. CHUNG, Administrative Patent Judges.
`
`BEGLEY,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 US.C. § 314(a), 37 CFR. § 42.108
`
`DIRECTV,LLC (‘Petitioner’) filed a Petition requesting inter partes
`
`review of claims 1, 3, 6, 10-15, 20, 21, and 26-34 (“challenged claims’) of
`
`U.S. Patent No. 8,879,567 B1 (Ex. 1003, “the 567 patent”). Paper 2
`
`
`571.272.7822
`
`Paper No. 6
`Filed: April 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DIRECTV, LLC,
`Petitioner,
`
`V.
`
`QURIO HOLDINGS, INC.,
`Patent Owner.
`
`Case IPR2015-02007
`Patent 8,879,567 Bl
`
`Before BARBARA A. BENOIT, KERRY BEGLEY,and
`JASONJ. CHUNG, Administrative Patent Judges.
`
`BEGLEY,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 US.C. § 314(a), 37 CFR. § 42.108
`
`DIRECTV,LLC (‘Petitioner’) filed a Petition requesting inter partes
`
`review of claims 1, 3, 6, 10-15, 20, 21, and 26-34 (“challenged claims’) of
`
`U.S. Patent No. 8,879,567 B1 (Ex. 1003, “the 567 patent”). Paper 2
`
`
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`IPR2015-02007
`Patent 8,879,567 Bl
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`(“Pet.”).! Qurio Holdings, Inc. (“Patent Owner”) filed a Preliminary
`
`Responseto the Petition. Paper 5 (“Prelim. Resp.”).
`
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`
`instituted unless “the information presented in the petition .
`
`.
`
`. and any
`
`response .
`
`.
`
`. showsthat there is a reasonable likelihood thatthe petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” Having considered the Petition and the Preliminary Response, we
`
`determinethat the information presented does not showthat there is a
`
`reasonable likelihood that Petitioner would prevail in establishing that any of
`
`the challenged claims of the ’567 patent are unpatentable. Accordingly, we
`
`denyinstitution of an inter partes review.
`
`I. BACKGROUND
`
`A. THE °567 PATENT
`
`The 7567 patent is directed to “[a] gateway interconnecting a high
`speed Wide Area Network (WAN)and a lower speed Wireless Local Area
`Network (WLAN).” Ex. 1003, [57], 1:55-57. According to the 567 patent,
`
`the disclosed gateway is intended to improvethe architecture oftraditional
`
`residential gateways in which “overall performance”is “limit[ed] .
`
`.
`
`. to the
`
`' In the introduction, the Petition also includes claims 16, 17, 24, and 25 in
`its request for inter partes review. Pet. 1. The Petition, however, does not
`includethese claimsin its statements of the asserted grounds and challenged
`claims, see id. at 1-2, and does not feature any discussion of these claims in
`its analysis, see id. at27—60. Thus, we do not understand claims 16, 17, 24,
`and 25 to be challenged in the Petition. Even if we were to consider them to
`be challenged claims, we would conclude that Petitioner has not shown a
`reasonablelikelihood of establishing them to be unpatentable, because the
`Petition does not address these claims and the deficiencies in Petitioner’s
`showing regarding independentclaims | and 20, from which these claims
`depend, applies to these claims. See Ex. 1003, 8:58—9:5, 10:4—20.
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`wireless LAN bandwidth.” Jd. at 1:45-51. Figure 1, reproduced below,
`
`illustrates system 10 according to one embodimentof the invention. See id.
`
`at 2:23-27, 2:53-56.
`
`FIG. 1
`
`Figure 1 depicts system 10 with “adaptable cross-layer gateway 12,”
`
`“interconnecting” high speed WAN 14 and lower speed WLAN16. Jd.
`
`Gateway 12, along with network interface 20 and WLAN 16,is included in
`
`customer premises 18. Jd. at 3:1-5. WLAN16 includes user devices 22-28,
`which “may be, for example, personal computers”or “Personal Digital
`Assistants (PDAs).” Jd. at 3:27-33.
`The ’567 patent discloses that the gateway includes an “adaptable
`cross-layer offload engine” “to manage bandwidth betweenthe high speed
`WAN andthe lower speed WLAN.” Jd. at [57], 1:60-62; see id. at 3:34-43.
`The patent explains that the use of “cross-layering techniques” in
`
`gateway 12 “improves the performance of... WLAN 16”to take advantage
`
`of the high speed WAN 14. Id. at 2:59-62. Asdata enter the gateway “at
`
`the high speed data rate of the WAN,the offload engine stores the data in a
`
`non-secure data cache”“in order to take advantage of the high data rate
`
`provided by ... high speed WAN 14.” Id. at [57], 1:62-65, 2:56—59.
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`In addition, the 567 patent discloses that the gatewayalso includes a
`
`“rules check engine”that inspects the data in the non-secure data cache. Jd.
`
`at [57], 1:65-66. With reference to a specific embodiment, the 567 patent
`
`explains that this inspection is made according to a numberofrules, which
`
`mayinclude “Intrusion Detection System (IDS) rules 44, Digital Rights
`
`Management (DRM)rules 46, and other general or specific content
`
`rules 48.” Jd. at 4:8-12. The DRM rules “mayberules for protecting media
`
`files... stored on... . user devices 22-28 within ... WLAN 16 when
`
`transmitted over... WAN 14,” and “mayinclude rules for identifying
`
`incoming content to be encoded as a security feature to prevent unauthorized
`
`viewing of the specified content ... within... WLAN 16.” Jd. at 4:16—23.
`
`After inspection by the rules check engine, the data are “moved from
`
`the non-secure data cacheto the secure data cache.” Jd. at [57], 1:66—2:3.
`
`With reference to a particular embodiment, the 567 patent explains that the
`
`secure data cache “is used to temporarily store data from the non-secure data
`
`cache . .. that has been inspected and cleared for transmission prior to
`
`transmission to... user devices 22-28 in... WLAN 16.” Jd. at 4:3-7.
`
`Finally, the data are “transmitted to an appropriate user device in the WLAN
`
`at the lower data rate of the WLAN.” Jd. at [57]; see id. at 2:1-3.
`
`B.
`
`ILLUSTRATIVE CLAIM
`
`Claims 1, 20, and 30 of the ’567 patent are independent. Claim 1,
`
`reproducedbelow,isillustrative of the claimed subject matter:
`
`1. A gateway interconnecting a first network to a second
`network comprising:
`an offload engine that includes a number of protocol stack
`layers
`from a protocol
`stack of the gateway and is
`
`
`
`implemented a_cross-layerin architecture enabling
`
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`communication between non-adjacent layers in the protocol
`stack;
`a secure data cache associated with the offload engine;
`a non-secure data cache;
`a network interface communicatively coupling the offload
`engineto the first network and providinga first data rate; and
`an interface associated with the offload engine and adapted to
`communicate with a plurality of user devices within the
`second network, the interface providing a second data rate
`that is less than the first data rate of the network interface;
`wherein the offload engine is adaptedto:
`receive content from the first network via the network
`interfaceat the first data rate;
`store the content in the non-secure data cache such that the
`first data rate is supported by the gateway; and
`transmit the content from the data cache to a corresponding
`one of the plurality of user devices in the second network
`via the interface at the second datarate.
`
`Id. at 7:48-8:5.
`
`C. ASSERTED PRIOR ART
`
`The Petition relies upon the following asserted prior art references:
`
`U.S. Patent Application Publication No. 2003/0126086 A1 (published
`July 3, 2003) (Ex. 1016, “Safadi”);
`U.S. Patent No. 7,412,579 B2 (issued Aug. 12, 2008) (Ex. 1017,
`“O’Connor”);
`
`WO 2003/094510 Al (published Nov. 13, 2003) (Ex. 1011, “Ducharme’’);
`
`Nut Taesombutet al., A Secure Multimedia System in Emerging Wireless
`Home Networks, in COMMUNICATIONS AND MULTIMEDIA SECURITY,
`PROCEEDINGSOF THE 7TH IFIP-TC6 TC11 INTERNATIONAL CONFERENCE,
`CMS2003 76 (2003) (Ex. 1010, ““Taesombut’);
`
`CABLEHOME1.1 SPECIFICATION, CH-SP-CH1].1-I04-040409 (2004)
`(Ex. 1013, “CableHome1.1”);
`Carl Wijting & Ramjee Prasad, A Generic Frameworkfor Cross-Layer
`Optimisation in Wireless Personal Area Networks, 29 WIRELESS PERS.
`Com.135 (2004) (Ex. 1012, “Wiyting”);
`
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`Vineet Srivastava & Mehul Motani, Cross-Layer Design: A Survey and the
`Road Ahead, IEEE Como. MAG., Dec. 2005, at 112 (Ex. 1015,
`“Srivastava’’); and
`WebSTAR™DPR2320™ and DPR2325™ Cable Modem Gateway User’s
`Guide (2005) (Ex. 1014, “DPR2325”).
`
`In addition to these references, the Petition supports its contentions with the
`
`Declaration of Tal Lavian, Ph.D. (Ex. 1005).
`
`D. ASSERTED GROUNDS OF UNPATENTABILITY
`
`Petitioner challenges claims 1, 3, 6, 10-15, 20, 21, and 26-34 ofthe
`
`’567 patent based on the following asserted grounds. Pet. 1, 27, 41.
`
`
`
`|Basis|References
`
`Taesombut, Ducharme, Wijting, and O’Connor
`
`
`CableHome 1.1, DPR2325, Srivastava, Safadi, and O’Connor
`IL. ANALYSIS
`
`§ 103
`
`A. CLAIM CONSTRUCTION
`
`Petitioner and Patent Owner each proposeconstructions for several
`claim terms. See Pet. 10—15; Prelim. Resp. 10-25. Onthis record and for
`
`purposesofthis decision, we determine that none ofthe claim terms requires
`
`an express construction to resolve the dispositive issues discussed below.
`
`B. OBVIOUSNESS OVER TAESOMBUT, DUCHARME, WIJTING, AND O’CONNOR
`
`Petitioner argues claims 1, 3, 6, 10-15, 20, 21, and 26-34 of the
`
`’567 patent are unpatentable as obvious over Taesombut, Ducharme,
`
`Wijting, and O’Connor. Pet. 27-41. Patent Ownerdisputes Petitioner’s
`
`assertions and supporting evidentiary showing. Prelim. Resp. 26-42.
`
`i. Non-Compliance with 35 U.S.C. § 312(a)(3) and 37 C_F.R.
`$$ 42.22(a)(2), 42.104(b)(4)-(5)
`Under 35 U.S.C. § 312(a)(3), a petition “may be considered only if
`
`... the petition identifies, in writing and with particularity, each claim
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`challenged, the grounds on which the challenge to each claim is based, and
`
`the evidence that supports the grounds for the challenge to each claim”
`
`(emphases added). Ourrules further address the showing required in a
`
`petition. In particular, 37 C.F.R. § 42.104(b)(4) provides that “/t/he petition
`
`must specify where each elementof the claim isfoundin the prior art patents
`
`or printed publications relied upon” (emphasis added), and 37 C.F.R. §
`
`42.104(b)(5) adds that the Petition must “identify[] specific portions ofthe
`
`evidence that support the challenge” (emphasis added). Similarly, 37 C.F.R.
`
`§ 42.22(a)(2) states that a petition “must include .
`
`.
`
`. [a] full statement of the
`
`reasonsfor the relief requested, including a detailed explanation ofthe
`
`significance ofthe evidence” (emphases added). For the reasons discussed
`
`below, we agree with Patent Ownerthat the Petition fails to comply with the
`
`requirements of 37 C.F.R. § 42.104(b)(4)H{(5). See Prelim. Resp. 1. We also
`
`determine that the Petition does not meet the standards of 35 U.S.C.
`
`§ 312(a)(3) and 37 C.F.R. § 42.22(a)(2).
`
`The Petition puts forward an analysis regarding the alleged teaching
`
`and suggestionsof the four asserted prior art references, Taesombut,
`
`Ducharme, Wijting, and O’Connor, including various proposed reasons to
`
`combinethe references. Pet. 27-41. Throughoutits analysis, the Petition
`
`refers to the claim language using numerical and alphabetical labels(i.e.,
`
`elements 1[A], 1[B], 1[C], etc.) to distinguish the elements of the
`
`’567 patent claims according to a chart that Petitioner submits as
`
`Exhibit 1032. See generally Pet.; Ex. 1032.
`
`Beginning with the preamble andfirst element of independent claim 1
`
`(element 1[A]) of the 567 patent—“[a] gateway interconnectinga first
`
`network to a second network comprising: an offload engine that includes a
`
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`numberof protocol stack layers from a protocol stack of the gateway andis
`
`implementedin a cross-layer architecture enabling communication between
`
`non-adjacent layers in the protocol stack”—the Petition discusses various
`allegedteachings and suggestionsofall four asserted prior art references.
`See Pet. 31-35; Ex. 1003, 7:48-54; Ex. 1032, 1. With the exception of a few
`
`superficial references to some of the claim language,e.g., “cross-layer,” the
`
`Petition’s analysis is largely divorced from the claim language andits
`
`specific requirements.
`
`This discussion also features various vague conclusions regarding
`
`alleged reasons to combinethat do not specify which elements Petitioneris
`
`proposing to combineto reach the claim elements. For example, the Petition
`
`states that “[i]t would be obvious to combine Taesombut, Ducharme, and
`
`Wijting becauseof their overlapping technical teachings with respect to this
`
`limitation.” Pet. 32; see also id. at 35—36 (featuring identical statement for
`
`element 1[B]). This statement, however,fails to specify precisely which
`
`elements of Taesombut, Ducharme, and Wijting Petitioner is proposing to
`
`combine. Moreover, the Petition proffers: “Because Taesombut and
`
`Ducharmedescribes delivery of video data over a WLAN,oneof skill would
`
`be motivated to apply Wijting’s cross-layer performance enhancing proxy to
`
`similarly improve delivery of video over wireless channels of varying
`
`quality.” Id. at 34. Again, the Petition is unclear as to which reference, and
`
`more particularly, which element of which reference, Wijting’s cross-
`
`layering techniques allegedly would have been applied. Likewise, the
`
`Petition states that “one of skill would be motivated to improve the gateways
`
`of Tafes]ombut, Ducharme, and Wijting with memory controllers that
`
`support secure and non-securepartitions, as suggested in O’Connor.” Id.
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`at 30, 35. This statement appears to be proposing to modify each of
`
`Taesombut, Ducharme, and Wijting based on O’Connor’s teachings of
`
`secure and non-secure memory—leavingthe particular modification and
`
`combination being proposed unclear. Accordingly, the Petition lacks clarity
`
`regarding precisely which portions ofthe various alleged prior art references
`
`Petitioneris alleging teaches or suggests these elements of claim 1 and how
`
`Petitioner is proposing to combinethe alleged teachings and suggestions to
`
`reach the relevant claim elements.
`
`The Petition’s analysis of the remaining seven elements of claim 1
`
`(elements 1[B]-[H]) falls further from the specificity required of arguments
`
`and supporting evidence in our governing statute and rules. In particular, the
`
`Petition’s analysis of each of these elements features internal cross-
`
`references to its discussion of other elements, with minimal—and often no—
`
`additional discussion specifically directed to the language of these claim
`
`elements. In particular, the Petition’s analysis of the elements Petitioner
`
`refers to as 1[C], 1[F], and 1[H] is limited exclusively to cross-references—
`
`“See Element 1[A],” “See Elements 1[A] and 1[C],” and “See Preamble of
`
`Claim 1 and Element 1[E],” respectively. Jd. at 36-37. For the other
`
`elements of claim 1, the Petition includes internal cross-referencesto its
`
`discussion of other elements of claim 1, along with limited discussion of
`
`additional alleged teachings or suggestions of the various asserted prior art
`
`references. See id. This additional discussion of each claim elementis
`
`never more than three sentences and, like the preamble andfirst element,is
`
`generally not connected sufficiently to the various specific requirements in
`
`the claim language. Seeid.
`
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`This web ofinternal cross references results in multiple levels of
`
`abstraction, obscuring Petitioner’s position regarding which reference, and
`
`whichportion of which reference, teaches or suggests each element. The
`
`limited—if any—additional discussion the Petition puts forward regarding
`
`each element, which is generally divorced from the specific additional claim
`
`requirements, fails to cure this lack of clarity. Elements 1[B]-[H] have
`
`various specific requirements, including but not limited to “secure data
`cache associated with the offload engine” (element 1[B]), a “non-secure data
`
`cache” (element 1[C]), and an offload engine adaptedto “store the content in
`
`the non-secure data cache suchthat the first data rate is supported by the
`
`gateway”(element 1[G]). The Petition does not specify expressly where
`
`these additional elements are taught or suggested in the priorart references,
`
`or provide a sufficiently detailed explanation of how the cited evidence
`
`showsthat they are taught or suggested. See id. Accordingly, weare left
`
`withouta clear picture of the Petition’s position as to wherethe alleged prior
`
`art references teach or suggest each claim element, or how thePetition
`
`proposes to combine these teachings and suggestions to reach the invention
`
`recited in claim 1.
`
`The Petition’s analysis of independent claims 20 and 30, as well as
`
`claims 21, 28, 29, and 31-34 that depend from these claims, consists entirely
`
`of internal cross references to the Petition’s insufficient analysis of
`
`independentclaim 1 and its dependent claims:
`
`Claim 20: Preamble: See discussion of preamble of
`Claim 1. Element 20[A]: See discussion of Elements 1[A] and
`1[F]. Element 20[B]: See discussion of Elements 1[A], 1[F], and
`1[G]. Element 20[C]: See discussion of preamble of Claim 1, and
`Elements 1[A], 1[F], and 1[H]. Element 20[D]: See Claims6, 10,
`12, and Element 12[A]. Element 20[E]: See Claims 6, 10, 12, and
`
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`Element 12[B]. Element 20[F]: See Claims 6, 10, 12, and Element
`12{B]. Claim 21: See discussion of Element 1[A] and 1[H]. Claims
`26-29: See preamble of Claim 1. Claim 30: Preamble / Element
`30[A]: See Elements 1[A], 1[F], 16[A]. Element 30[B]: See
`Element 1[A], 1[G]. Element 30[C]: See Claims 6, 10, and
`Element 12[A]. Element 30[D]: See Claim 14. Element 30[E]: See
`Claims 6, 10, and Element 12[B]. Element 30[F]: See Claims 6,
`10, and Elements 12[B] and 1[H]. Claims 31-33: See preamble of
`Claim 1. Claim 34: See discussion of Claim 3.
`
`Id. at 41. The Petition never compares independentclaim 1 andits
`
`dependent claims—includingclaims 6, 10, and 12, which are cited
`
`repeatedly in this list of internal cross-references—to independent claims 20
`
`and 30 or their dependent claims. Nor does the Petition ever address any
`
`differences between the relevant claim language or attempt to explain why
`
`these differences do not impact its obviousness analysis. The Petition’s
`
`arguments and evidence for these claims—which lack any affirmative
`
`analysis of the different claim language and rely exclusively on the
`
`Petition’s discussion of different claims—falls far short of the required
`
`particularity and detail of supporting arguments and evidencein a petition.
`
`Onerepresentative example of the deficiencies in the Petition’s
`
`showingresulting from its exclusive reliance on internal cross references for
`
`claims 20, 21 and 28-34 is the Petition’s treatment of elements 20[D], [E],
`
`and [F] and element 30[E] of independent claims 20 and 30. For each of
`
`elements 20[D]-[F] and 30[E], the Petition refers to its analysis of claims6,
`
`10, and 12. See id. The Petition’s analysis of claims 10 and 12, in turn,
`
`refers to the analysis of claim 6, without any additional analysis. See id.
`
`at 38. Accordingly, the Petition relies solely on its analysis of claim 6 for
`
`elements 20[D]-{F] and 30[E] of independent claims 20 and 30. Seeid.
`
`at 37-38, 41; Prelim. Resp. 37, 41.
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`Claim 6 recites: “The gateway of claim | further comprising a rule
`
`check engine adapted to inspect the content from the first network based
`
`uponatleast onerule prior to transmitting the content to the corresponding
`
`one of the plurality of user devices in the second network.” Ex. 1003,
`
`8:17-21. Claim 20, in turn, recites a method with the following steps, which
`
`Petitioner categorizes as elements [D]-[F]:
`
`inspecting the content in the data cache based onat least one
`Digital Rights Management (DRM)ruleto identify data to be
`processed by a DRMfunction [20[D]];
`encodethe identified data using the DRMfunction suchthat the
`encodeddata is transmitted to the corresponding oneofthe
`plurality of user devices within the second network; and [20[E]]
`providing license keys for decoding the encoded data to desired
`onesofthe plurality ofuser devices having permission to consume
`the encodeddata [20[F]].
`Id. at 9:22—42 (emphases added); see Ex. 1032, 8-9. Claim 30 recites a
`
`gateway, with the elementthat Petitioner refers to 30[E] requiring that the
`
`gateway include “a DRM encoder for encoding the converted content for
`
`authorized devices of a second network” (30[E]). Ex. 1003, 10:29-40
`
`(emphasis added); see Ex. 1032, 11.
`
`Claim 6 does not feature many of the requirements of elements
`20[D]HF]and 30[E], including the “DRM function”and “license keys” of
`claim 20 and the “DRM encoder”of claim 30. Similarly, the Petition’s
`analysis of claim 6, on which the Petition relies to address claims 20 and 30,
`does not address adequately these elements. See Pet. 37-38, Prelim.
`
`Resp. 38-41.
`
`For claim 6, the Petition discusses Taesombut’s teachings regarding
`
`its gateway applying DRM rules, see Pet. 37 (citing Ex. 1010 {{ 10, 17, 23,
`
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`31, Fig. 4; Ex. 1005 §§ 230-231), Ducharme’s teachingsthat its Entitlement
`
`Management Messages (“EMMs’”) indicate whether a client is permitted to
`
`unprotect data, see id. (citing Ex. 1011, 3:23-4:4, Fig. 2), and Wijting’s
`
`teaching that a gateway should provide security, see id. at 37-38 (citing
`
`Ex. 1012 921). The Petition’s analysis of the claim concludes with an
`
`assertion that it would have been “obvious to combine the EMMsof
`
`Ducharme with the DRM rules of Taesombut, as both are examples ofrules
`
`or messagesfor processing digital rights or content permissions in the
`gatewayto facilitate security.” Id. at 38. Accordingly, the Petition never
`specifies or addresses sufficiently where the alleged prior art teaches or
`
`suggests the “DRM function”and “license keys” recited in claim 20 and the
`
`“DRM encoder” recited in claim 30.
`
`The defects in the Petition outlined above are compounded by the
`
`Petition’s repeated citation to broad sections of the Dr. Lavian Declaration to
`
`bolster conclusory arguments and reasoning. The Dr. Lavian Declarationis
`
`262 pages—morethan four times the maximum length of a petition. See
`
`Ex. 1005; 37 C.F.R. § 42.24(a)(1)(i). As a result, the Declaration contains
`
`vastly more discussion and analysis ofthe prior art references, their alleged
`
`teachings and suggestions, and alleged reasons to combinethe references.
`
`The Petition regularly cites to large sections of the Dr. Lavian
`
`Declaration as support for statements for which the Petition does not
`
`otherwise provide explanation. For example, in its analysis of element 1[A],
`
`the Petition, after asserting that Ducharmesuggests packet level processing,
`
`states that “[c]oordinated packet data processing suggests a cross-layer
`
`architecture in processing offloaded data.” Pet. 34-35; Ex. 1003, 7:48—54;
`
`Ex. 1032, 1. Similarly, as noted above, the Petition concludesthat
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`“Tb]ecause Taesombut and Ducharmedescribes delivery of video data over a
`
`WLAN,one ofskill would be motivated to apply Wijting’s cross-layer
`
`performance enhancing proxyto similarly improve delivery of video over
`
`wireless channels of varying quality.” Pet. 34. These statements are not
`otherwise developed or explained in the Petition, and the only citation for
`
`each statementis to paragraphs 184-199 of the Dr. Lavian Declaration. Jd.
`
`at 33-35. These sixteen paragraphs of the Dr. Lavian Declaration span
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`approximately eight pages, and feature numerouscitations to the various
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`alleged prior art references. See Ex. 1005 J 184-199.
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`The Petition’s practice of citing multiple pages of the Dr. Lavian
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`Declaration to support conclusory statements and to expandits thin analysis
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`violates our rules in two respects. First, this practice amounts to
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`incorporation by reference—whichis impermissible under our rules. See 37
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`C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from
`
`one document into another document.”); Cisco Sys., Inc. v. C-Cation Techs.,
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`LLC, Case IPR2014-00454,slip op. at 7-10 (PTAB Aug.29, 2014)
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`(Paper 12) (informative). This incorporation by reference from the
`
`Declaration into the Petition “serves to circumvent the page limits imposed
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`on petitions for inter partes review, while imposing on our time by asking us
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`to sift through over 2[6]0 pages of Dr. [Lavian’s] Declaration .
`
`.
`
`. to locate
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`the specific [relevant] arguments” and supporting evidence. Cisco Sys., Inc.,
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`IPR2014-00454, at 10 (Paper 12). We will not consider arguments and
`
`information that are not presented and developed in the Petition, and instead
`
`are incorporated by reference to the Dr. Lavian Declaration. Second, the
`
`Petition’s consistent citations to large portions of the Dr. Lavian Declaration
`
`runs afoul of the particularity and specificity required of supporting evidence
`
`14
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`IPR2015-02007
`Patent 8,879,567 Bl
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`under our governing statute and rules. See 35 U.S.C. § 312(a)(3); 37 C.F.R.
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`§§ 42.22(a)(2), 42.104(b)(4)-(5).
`
`In sum, the Petition’s vague analysis regarding the alleged teachings
`
`and suggestions of Taesombut, Ducharme, Wijting, and O’Connorthatis
`
`largely divorced from the language ofthe particular claim elements, with
`
`imprecise allegations regarding combining these references as well as
`
`supporting citations to a web ofinternal cross-references and large portions
`
`of the lengthy Dr. Lavian Declaration, leaves us “‘to play archeologist with
`
`the record.” Cisco Sys., Inc., IPR2014-00454, at 10 (Paper 12). Based on
`
`the deficiencies addressed above,the Petition fails: (1) to specify
`
`sufficiently where each element of claims 1, 3, 6, 10-15, 20, 21, and 26-34
`
`of the ’567 patent is found in the combination of Taesombut, Ducharme,
`
`Wijting, and O’Connor, and (2) to proffer adequate explanation of the
`
`significance of the citations to the alleged prior art references and the
`
`Dr. Lavian Declaration—as required under 35 U.S.C. § 312(a)(3), 37 C.F.R.
`
`§ 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)H{5). Therefore, we deny
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`institution of the asserted ground of obviousness over Taesombut,
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`Ducharme, Wijting, and O’Connor.
`
`li. Obviousness Analysis
`
`The asserted ground of obviousness over Taesombut, Ducharme,
`
`Wijting, and O’Connoralso suffers from other deficiencies in its showing of
`
`obviousness. A patent claim is unpatentable as obvious under 35 U.S.C.
`
`§ 103(a)’ if “the differences between” the claimed subject matter and the
`
`* The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), revised 35 U.S.C. § 103, effective March 16,
`15
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`IPR2015-02007
`Patent 8,879,567 B1
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`prior art “‘are such that the subject matter as a whole would have been
`
`obviousat the time the invention was made to a person havingordinary skill
`
`in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). As explained in Graham
`
`v. John Deere Co., 383 U.S. 1 (1966), the legal conclusion of obviousnessis
`
`resolved on the basis of underlying factual determinations, including:
`
`(1) “the scope and contentofthe priorart,” (2) “differences between the
`
`prior art and the claimsat issue,” (3) “the level of ordinary skill in the
`
`pertinentart,” and (4) any “secondary considerations,” or objective indicia,
`
`of nonobviousness. Jd. at 17-18.
`
`A patented invention “composed of several elements is not proved
`
`obvious merely by demonstrating that each of its elements was,
`
`independently, knownin the prior art.” KSR, 550 U.S. at 418. Rather, “at
`
`can be important to identify a reason that would have prompted a person of
`
`ordinary skill in the relevant field to combine the elements in the way the
`
`claimed new invention does.” Jd. An obviousness determination “cannot be
`
`sustained by mere conclusory statements; instead, there must be some
`
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.” Jn re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`
`2006); see KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d at 988).
`
`Here, the Petition fails to address meaningfully or explain the
`
`differences between the challenged claims of the ’567 patent and the four
`
`asserted prior art references. See Pet. 15-19, 26-41; Liberty Mut. Ins. Co. v.
`
`Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB
`
`2013. Because the 567 patent wasfiled before March 16, 2013, our
`references andcitations to § 103 in this decision are to the pre-AIA version.
`16
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`Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who doesnotstate
`
`the differences between a challenged claim andthepriorart, and relies
`
`instead on the Patent Ownerand the Board to determine those differences
`
`... risks having the corresponding ground of obviousnessnot included for
`
`trial for failing to adequately state a claim forrelief.”). Moreover, the
`
`Petition does not articulate sufficiently why or how oneofordinary skill in
`
`the art would have combined or modified the teachings and suggestions of
`
`the references to address such differences.
`
`Instead, as discussed abovein § II.B.i, the Petition’s proposed reasons
`
`to combinethe asserted prior art references are generally vague and
`
`conclusory, lacking clarity and detail regarding precisely which elements of
`
`the prior art references would have been combined. As weexplain in more
`detail below, the proposed reasonsalso fail to explain adequately how and
`
`whya person ofordinary skill in the art would have made such
`
`modifications to arrive at the claimed invention, and whether such a person
`
`“would have had a reasonable expectation of success in doing so.
`
`Asarepresentative example, independent claim | recites: “secure
`
`data cache associated with the offload engine” and “a non-secure data
`
`cache.” Ex. 1003, 7:55-56. As we explain abovein § II.B.i, the Petition
`
`does not specify adequately how the asserted prior art teaches or suggests, or
`~ combines to meet,these limitations. Our analysis in this section, therefore,
`
`is limited by our ability to understand the Petition’s obviousnessassertions.
`
`From what we can discern, however, the Petition appears to rely on
`
`O’Connoras teaching or suggesting a distinction between “secure” and
`
`“non-secure” memory,as claim 1 requires. See Pet. 26-27, 35-36. The
`
`Petition does not develop or explain a position that any other asserted prior
`
`17
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`
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`IPR2015-02007
`Patent 8,879,567 Bl
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`art reference teaches or suggests such a distinction between secure and non-
`
`secure memory.’ See id.
`
`In particular, Petitioner argues, and we agree, that O’Connorteaches
`memorycontrollers that partition memoryinto “secure partitions and non-
`
`secure partitions” for use in network devices, such as a bridge or a router.
`
`Ex. 1017, 2:63-3:8, 6:36-41, Fig. 1; Pet. 26-27. Accordingto the Petition,
`
`one “of skill would be motivated to improve the gateways of Ta[es]ombut,
`
`Ducharme, and Wijting with memory controllers that support secure and
`
`non-secure partitions, as suggested in O’Connor.” Pet. 30 (citing Ex. 1005
`
`q{ 197-199); id. at 35 (citing Ex. 1005 FJ 200-202). The Petition reasons:
`
`“For example, encrypted data received at the gateway in Ta[es]ombut and
`
`Ducharme can bestored in non-secure memory, but once the data is
`
`decrypted for transcoding or other processing as taught in Ta[es]ombut and
`
`Ducharme,one of skill would be motivated to store decrypted data in secure
`
`memory, to prevent the unencrypted data from being copied.” Jd. at 30
`
`(citing Ex. 1005 4¥ 197-199, 352); id. at 35 (citing Ex. 1005 {{ 200-202).
`
`The Petition supports this asserted reason to combinesolely with the
`
`Dr. Lavian Declaration, specifically paragraphs 197-199, 200-202, and 352.
`Paragraph 352 relates to the other asserted obviousness ground,offering a
`rationale to combine O’Connor’s teachings with DPR2325, CableHome1.1,
`
`Srivastava, and Safadi. See Ex. 1005 J] 352-353. Therefore, it is not
`
`relevant to this asserted ground. Moreover, in the other cited paragraphs of
`
`the Declaration, Dr. Lavian only opines regarding O’Connor’s teachings of
`
`secure and non-secure memory partitions—he offers no opinion regarding
`
`3 As explained in § II.B.i, we need not and will not consider arguments and
`evidence not developed or explainedin the Petition.
`18
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`IPR2015-02007
`Patent 8,879,567 Bl
`
`combining O’Connor’s teachings with Taesombut, Ducharme, and Wijting
`
`or reasoning as to why one ofordinary skill in the art would have doneso.
`
`See id. Jf 197-199, 200-202. Thus, the Petition’s asserted reason to
`combine O’Connor’s teaching with Taesombut, Ducharme, and Wijting is
`merely attorney argument, devoid of evidentiary support, and is entitled to
`
`no weight. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380
`
`(Fed. Cir. 2009) (“(U]nsworn attorney argument. .
`
`. is not evidence.”); Enzo
`
`Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)
`
`(“Attorney argumentis no substitute for evidence.”). Accordingly, the
`
`Petition does not support adequately this alleged reason to combine
`
`O’Connor’s teachings distinguishing secure and non-secure memory with
`
`the othe
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