Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper 41
` Entered: May 18, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00527
`Patent 7,496,674 B2
`__________
`
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`Ericsson Exhibit 1030
`Ericsson v. IV1, IPR2018-00727
`Page 1
`
`
`571-272-7822
`
`
`
`
`
`
` Paper 41
` Entered: May 18, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00527
`Patent 7,496,674 B2
`__________
`
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`Ericsson Exhibit 1030
`Ericsson v. IV1, IPR2018-00727
`Page 1
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`IPR2014-00527
`Patent 7,496,674 B2
`
`
`Ericsson Inc. (“Ericsson”) filed a corrected Petition (Paper 8, “Pet.”)
`requesting inter partes review of claims 1–22 of U.S. Patent No. 7,496,674
`B2 (Ex. 1001, the “’674 patent”). We instituted an inter partes review of
`claims 1–22 of the ’674 patent. Paper 11. After institution of trial,
`Intellectual Ventures I LLC (“Intellectual Ventures”) filed a Patent Owner’s
`Response (Paper 21, “PO Resp.”) and Ericsson filed a Reply (Paper 28,
`“Reply”).1 This case is before the Board for a Final Written Decision
`following an Oral Hearing on the merits conducted April 15, 2015, the
`transcript for which is entered as Paper 40 (“Tr.”).
`After considering the evidence and arguments of counsel, we
`determine that Ericsson has met its burden of showing, by a preponderance
`of the evidence, that claims 1–22 of the ’674 patent are unpatentable.
`
`I. BACKGROUND
`
`A. The ’674 Patent (Ex. 1001)
`The ’674 patent, titled “System, Method, and Base Station Using
`Different Security Protocols on Wire And Wireless Portions of Network,”
`relates to a method and apparatus for sending and receiving datagrams on
`wired and wireless portions of a network. Ex. 1001, claims 1, 13. The
`invention implements security protocols on transmissions over wired and
`wireless portions of the network. Id. A first security protocol is
`
`1 In its Patent Owner’s Response, Intellectual Ventures asserts that Ericsson
`has failed to identify all real parties in interest. PO Resp. 2–3. This
`assertion is not supported by any evidence and, instead, merely alleges that
`we should draw an inference from the fact that Ericsson has named certain
`foreign affiliates as real parties in interest in other IPR proceedings. Id.
`Intellectual Ventures’s contention is speculative in nature and will not be
`given further consideration in this Decision.
`
`
`
`2
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`implemented on transmissions over the wired portion of the network. Id.
`A second and different security protocol is implemented over the wireless
`portion of the network. Id.
`The invention employs a wireless base station. Id. The base station
`interfaces with both the wired and wireless portions of the network. Id.
`Processing of datagrams to implement the first and second security protocols
`is performed in the base station. Id.
`
`B. Challenged Claims
`Ericsson challenges claims 1–22. Claims 1, 13, and 18 are
`independent claims. Claim 1 (with paragraph indentation added) is
`reproduced below:
`1. A method comprising:
`receiving a first packet from a wired data network in a wireless
`base station that is coupled to the wired data network,
`wherein the first packet is protected according to a first security
`protocol on the wired data network, and
`wherein a target device of the first packet communicates with a
`source of the first packet, at least in part, over a wireless
`network on which the wireless base station communicates;
`processing the first packet in the wireless base station according
`to the first security protocol;
`determining that the first packet is targeted at the target device,
`wherein the determining is performed by the wireless base
`station, and
`wherein the first packet comprises a header coded with address
`information identifying the target device; and
`applying a second security protocol employed on the wireless
`network to the first packet, wherein the second security
`protocol is different from the first security protocol, and
`wherein the applying is performed in the wireless base
`station.
`
`
`
`
`3
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`C. The Asserted Grounds of Unpatentability
`We instituted a trial on claims 1–22 of the ’674 patent based on the
`alleged grounds of unpatentability set forth in the table below, as further
`supported by the Declaration of Armand M. Makowski, Ph.D. (Ex. 1013).
`References
`Basis
`Claims Challenged
`Stadler (Ex. 1003)2
`§ 102
`1–6 and 10–22
`Stadler and Davison (Ex. 1010)3
`§ 103
`7–9
`Rai (Ex. 1004)4
`§ 103
`1, 10–13, 17, 18, and 22
`Rai and Davison
`§ 103
`2–9, 14–16, and 19–21
`
`II. CLAIM INTERPRETATION
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed
`Techs., LLC, 778 F.3d 1271, 1281–82 (Fed. Cir. 2015). Under the broadest
`reasonable interpretation standard, claim terms are given their ordinary and
`customary meaning as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).5
`
`
`2 J. Scott Stadler and Jay Gelman, Performance Enhancement for TCP/IP
`On a Satellite Channel, 1 IEEE MILITARY COMMUNICATIONS CONFERENCE
`270–76 (Oct. 19–21, 1998).
`3 U.S. Patent No. 6,829,242 B2 to Davison et al., titled Method and
`Apparatus For Associating PVC Identifiers With Domain Names of Home
`Gateways, issued Dec. 7, 2004.
`4 U.S. Patent No. 6,414,950 B1 to Rai et al., titled Sequence Delivery of
`Messages, issued July 2, 2002.
`5 Citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`
`
`4
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`1.“security protocol”
`The term “security protocol” appears in each independent claim. In
`our Decision to Institute, we construed “security protocol” on a preliminary
`basis to mean a “protocol that provides protective measures for
`communications.” Paper 11, 6. We explained that this construction is broad
`enough to encompass, but is not limited to, techniques for encryption,
`authentication, and other measures to protect the confidentiality of
`information. Id. At that time, we did not decide whether “tunneling” per se
`must be considered a “security protocol.” Id.
`Intellectual Ventures insists that the following construction, which
`was previously proposed in Patent Owner’s Preliminary Response, should be
`adopted.
`Intellectual Ventures’s proposed construction:
`“a protocol that provides security measures,” where “security”
`means a condition that results from the establishment and
`maintenance of protective measures that ensure a state of
`inviolability from hostile acts or influences.
`PO Resp. 4–5; Prelim. Resp. 3, 5. Apart from the claims, the term “security
`protocol” appears in the title of the ’674 patent and appears only once in the
`specification in connection with a discussion of IPSec (Internet Protocol
`Security). Ex. 1001, 46:17–41. The term is not defined in the specification
`either expressly or by implication.6 Intellectual Ventures concedes that the
`term is broad enough to encompass authentication and encryption
`techniques. PO Resp. 5.
`
`
`6 Intellectual Ventures concedes that the specification does not define
`“security protocol.” PO Resp. 5.
`
`
`
`5
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`Intellectual Ventures’s primary concern appears to be that “security
`protocol” does not encompass “tunneling” per se. PO Resp. 5–11.
`Intellectual Ventures supports its position with quotations from an industry
`publication and testimony from its expert. Id. (quoting Ex. 2005, 54–55;
`Ex. 2015 ¶ 37 (Newman)).
`Ericsson argues that a tunneling protocol satisfies the security
`protocol limitation in claim 1 because it allows an encrypted message to be
`sent over the Internet without revealing the source address or the destination
`address. Reply 12. Ericsson also argues that a tunneling protocol provides a
`protective measure in that it allows a destination address to avoid being
`stored on a router. Id. at 13. Ericsson, however, does not explain how or
`why merely avoiding storage of a destination address on a router protects a
`communication. Ericsson’s position is undermined by its own evidence.
`For example, the Kagan article states that:
`IPSec is the preferred solution for IP environments, because it
`has security built in. PPTP and L2TP are most appropriate for
`multiprotocol environments, but both require additional support
`to deliver data privacy, integrity, and authentication.
`Ex. 1007, 269.7
`A court may revisit and alter its construction of claim terms as the
`record in a case develops. See Pressure Prods. Med. Supplies, Inc. v.
`Greatbatch Ltd, 599 F.3d 1308, 1322 (Fed. Cir. 2010). After receiving
`additional evidence and argument from the parties, we alter the preliminary
`construction of “security protocol” in our Decision to Institute to clarify that
`
`
`7 Richard S. Kagan, Virtual Private Networks – New Strategies for Secure
`Enterprise Networking, IEEE WESCON/98 CONFERENCE PROCEEDINGS 267–
`72 (Sept. 15–17, 1998) (Ex. 1007).
`
`
`
`6
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`tunneling per se is not a security protocol. We are persuaded by Intellectual
`Ventures’s evidence that tunneling merely provides an unsecured conduit for
`allowing third party communications to be carried over a public network
`such as the Internet. To the extent that tunneling is associated with secure
`communications, the security is provided by a feature or technique that may
`be used in conjunction with tunneling, such as encryption or authentication.
`However, the fact that security protocols may be used in conjunction with
`tunneling does not indicate that tunneling per se provides security. In other
`words, unsecure communication may occur via tunneling. If the sender or
`recipient desires to make such communication secure, a security feature
`must be used in conjunction with tunneling.
`
`2. “packet”
`The term “packet” is used in each independent claim of the ’674
`patent. Neither party proposed a construction for “packet” prior to our
`Decision to Institute. In their respective Patent Owner’s Response and
`Petitioner’s Reply, the parties proposed the following constructions.
`Intellectual Ventures’s proposed construction:
`a header and a payload.
`PO Resp. 13.
`Ericsson’s proposed construction:
`a packet does not require a header.
`Reply 3.
`A claim construction analysis begins with, and is centered on, the
`claim language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc.,
`256 F.3d 1323, 1331 (Fed. Cir. 2001). In the claims, a packet is something
`that can be protected by a security protocol. Ex. 1001, claim 1. It can
`
`
`
`
`7
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`comprise a header coded with address information identifying a target
`device. Id. It can be encrypted and decrypted. Id. at claim 2. It can be
`processed to authenticate its source. Id. at claim 3. It can be received from a
`wired data network. Id. at claim 18. It can be transmitted wirelessly. Id. at
`claim 10.
`Claim terms generally are construed in accordance with the ordinary
`and customary meaning that they would have to one of ordinary skill in the
`art in light of the specification and the prosecution history. See Aventis
`Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1329 (Fed. Cir. 2012).8 The
`person of ordinary skill in the art, through whose eyes a patent claim is
`construed, is deemed to read the claim term not only in the context of a
`particular claim in which the disputed term appears, but in the context of the
`entire patent, including the specification. Phillips, 415 F.3d at 1313. The
`overall context in which “packet” is used in the ’674 patent relates to
`communication over packet switched networks, an alternative technology to
`circuit switch networks. Ex. 1001, 3:48–64.
`Packet switching makes more efficient use of available
`bandwidth than does traditional circuit switching. Packet
`switching breaks up traffic into so-called “packets” which can
`then be transported from a source node to a destination for
`reassembly.
`
`Id.
`
`In the context of the specification of the ’674 patent, a packet can be
`subjected to data compression algorithms (Ex. 1001, 44:13–22) and
`encryption (Id. at 46:15–29). Particularly with respect to Intellectual
`
`8 The Federal Circuit imposes a stringent standard for narrowing a claim
`term beyond its plain and ordinary meaning. Id. at 1330 (citing Thorner v.
`Sony Computer Entm’t Am. L.L.C., 669 F.3d 1362 (Fed. Cir. 2012)).
`
`
`
`8
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`Ventures’s contention that a “packet” should be construed as a header and a
`payload, the specification indicates that an entity referred to as a packet can
`be created and brought into existence prior to being assigned a header.
`Packet switching breaks a media stream into pieces known as,
`for example, packets, cells or frames. Each packet can then be
`encoded with address information for delivery to the proper
`destination and can be sent through the network.
`Ex. 1001, 30:33–36 (emphasis added).
`The packet-switched network instead breaks a message into
`pieces known as packets of information. Such packets can then
`be encapsulated with a header which designates a destination
`address to which the packet must be routed.
`Ex. 1001, 34:9–12 (emphasis added).
`In view of the foregoing, we will construe a “packet” as a piece or
`segment of a data/media stream that serves as a unit of transmission over a
`packet switched network. To the extent that the “packet” of claims 1, 13,
`and 18 is required to have a header, such requirement is imposed by the
`express claim language “comprises a header” and is not imposed by virtue of
`the definition of “packet” per se.
`
`III. MOTIONS TO EXCLUDE EVIDENCE
`
`Intellectual Ventures moves the Board to exclude the following
`exhibits from evidence: Ex. 1003, 1007, 1020, and 1021. Paper 32.
`Intellectual Ventures also moves to exclude excerpts from the cross-
`examination of its expert, Dr. Newman. Id. Ericsson opposes the motion.
`Paper 36. Intellectual Ventures replied to Ericsson’s opposition. Paper 37.
`
`
`
`
`9
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`
`A. Exhibit 1003 (Stadler)
`Ericsson asserts Stadler, among other things, as an anticipation
`reference under 35 U.S.C. § 102 against claims 1–6 and 10–22. Pet. 18–31.
`Intellectual Ventures objected to Stadler on the grounds of hearsay and lack
`of authenticity. Ex. 2026. Intellectual Ventures now moves to exclude
`Stadler on such grounds. Paper 32.
`
`1. Hearsay
`On its face, Stadler appears to be a work that was sponsored by the
`Department of the Air Force. Ex. 1003, 1. In the lower left hand corner of
`the first page, it bears an IEEE copyright line. Id. The IEEE copyright line
`contains a publication date, a price, and what appears to be an ISSN code.9
`Intellectual Ventures argues that Ericsson has not offered any
`admissible evidence that tends to establish that Stadler was available to the
`public before the filing date of the ’674 patent. Paper 32, 1–2. Intellectual
`Ventures argues that the date information in Stadler is hearsay because it is
`submitted for its alleged truth. Id. at 3. Intellectual Ventures argues that
`Ericsson could have established a date of public availability through the
`submission of a librarian’s declaration and, because Ericsson did not do this,
`we should presume that no admissible evidence exists that Stadler was
`publically available before the critical date.
`Ericsson counters that the publication information provided by the
`IEEE establishes that Stadler was publically available in 1998. Paper 36, 5.
`We agree. We accept the publication information on the IEEE copyright
`
`
`9 Ex. 1003, 1 (“0-7803-4506-1/98/$10.00 © 1998 IEEE”). See IEEE
`Editorial Style Manual, IEEE Periodicals, © 2014 IEEE, page 8 (hereinafter
`“IEEE Style Manual”).
`
`
`
`10
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`line on page 1 of Stadler as evidence of its date of publication and public
`accessibility. IEEE is a well-known, reputable compiler and publisher of
`scientific and technical publications, and we take Official Notice that
`members in the scientific and technical communities who both publish and
`engage in research rely on the information published on the copyright line of
`IEEE publications. The information published on the copyright line of
`Stadler thus falls under an exception to the hearsay rule as lists, etc.,
`generally relied on by the public or by persons in particular occupations.
`Fed. R. Evid. 803(17). 10
`As an alternative ground for admitting Exhibit 1003, we invoke the
`so-called “residual exception” of Federal Rule of Evidence 807. The
`copyright line of IEEE publications is added by IEEE as the publisher, not
`the author, and is added in accordance with the IEEE Style Manual. The
`assignment of a publication date in the copyright line of an IEEE publication
`has equivalent circumstantial guarantees of trustworthiness as with other
`exceptions to the hearsay rule. It is offered as evidence of a material fact,
`namely, whether Stadler predates the date of invention and is, therefore,
`prior art to the ’674 patent. We consider the publication date on the
`copyright line to be more probative on the point for which it is offered than
`any other evidence that Ericsson could have obtained through reasonable
`efforts. In particular, we note our disagreement with Intellectual Ventures
`that a librarian’s declaration would have been more probative of the
`publication date of Stadler than the publication date that IEEE published in
`
`10 We also note that the assignment of an ISSN or ISBN code by a publisher
`furnishes a circumstantial guarantee of trustworthiness sufficient to justify
`admission of otherwise hearsay evidence. See ADVISORY COMMITTEE
`NOTES to Fed. R. Evid. 803.
`
`
`
`11
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`its copyright line on the face of Stadler. Finally, admitting Stadler as prior
`art in view of the publication date on the IEEE copyright line will best serve
`the purpose of the Federal Rules of Evidence and the interests of justice. An
`IPR proceeding may only be based on patents and “printed publications.”
`35 U.S.C. § 311(b). Allowing IPR petitioners to rely on the IEEE
`publication date in an IPR proceeding, which is an administrative proceeding
`designed and intended to afford expedited and efficient relief, serves the
`interests of justice.
`
`2. Authenticity
`Intellectual Ventures also challenges Stadler on the grounds of
`authenticity. Intellectual Ventures argues that Stadler appears to be an
`improper collection of documents. Paper 32, 5 (citing Fed. R. Evid. 1003).
`Ericsson argues that Stadler is authenticated under Fed. R. Evid.
`901(b), 902(6), or 902(7). Paper 36, 12. Ericsson argues that the standard
`for admissibility under Fed. R. Evid. 901(a) is slight. Id. (citing United
`States v. Turner, 718 F.3d 226, 232 (3d Cir. 2013)).
`We are persuaded that Ericsson has laid a proper foundation for
`admission of Stadler. We are able to discern that Stadler itself consists of
`pages 270 through 276. See Ex. 1003. We are also able to discern that the
`three pages of web printout material that Ericsson appended to Exhibit 1003
`is merely for the purpose of laying a foundation for the admission of pages
`270–76 of Stadler.
`In this case, Ericsson has laid a sufficient foundation to establish that
`Stadler is authentic under Fed. R. Evid. 901(b)(4). Copies of Stadler are
`immediately accessible to the public through IEEE’s on-line library system.
`Intellectual Ventures’s counsel concedes that there is no reason to believe
`
`
`
`
`12
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`that the copy of Stadler introduced into the record by Ericsson has been
`forged or altered. Tr. 37–38.
`For the foregoing reasons, Intellectual Ventures’s motion to exclude
`Stadler is DENIED.
`
`B. Exhibit 1020
`
`Exhibit 1020 appears to be an abstract for Stadler (Ex. 1003) obtained
`from the IEEE Explore on-line library. It appears to be offered for no other
`reason than to establish a foundation for the admissibility of Stadler.
`Inasmuch as we have determined that Stadler is admissible apart from
`consideration of Exhibit 1020, we DENY Intellectual Ventures’s motion to
`exclude Exhibit 1020 as MOOT.
`
`C. Exhibit 1021
`
`Exhibit 1021 is a declaration of an employee from the Ericsson’s
`counsel’s law firm. It appears to be offered for no other reason than to
`establish a foundation for the admissibility of Stadler. Inasmuch as we have
`determined that Stadler is admissible apart from consideration of Exhibit
`1021, we DENY Intellectual Ventures’s motion to exclude Exhibit 1021 as
`MOOT.
`
`D. Kagan (Exhibit 1007)
`
`Kagan, like Stadler, is an IEEE publication. Like Stadler, Kagan
`contains an IEEE copyright line on the bottom left hand corner of the first
`page. See Ex. 1007, 267. Intellectual Ventures and Ericsson exchange
`similar arguments with respect to Kagan as we have considered previously
`
`
`
`
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`with respect to Stadler above. For essentially the same reasons, we DENY
`Intellectual Ventures’s motion to exclude Kagan.
`
`E. Newman Deposition Testimony (Exhibit 1022: 39:13–40:8
`and 43:10–44:3)
`
`Intellectual Ventures moves to exclude portions of the cross-
`examination deposition testimony of its expert, Dr. Newman. Paper 32, 11–
`14. Intellectual Ventures argues that the testimony is excluded properly
`under Fed. R. Evid. 611(b) as outside the scope of direct examination. Id.
`Courts are admonished to exercise caution in limiting the cross-
`examination of a witness whose credibility could have an important
`influence on the outcome of the trial. See Harbor Ins. Co. v. Schnabel Co.,
`Inc., 946 F.2d 930, 935 (D.C. Cir. 1991). In the testimonial excerpts under
`consideration, Dr. Newman repeatedly admitted a lack of familiarity with
`the subject matter of the ’674 patent. See, e.g., Ex. 1022, 39:16–17 (“I really
`haven’t spent very much time looking at this . . . .”). This testimony goes to
`Dr. Newman’s credibility and, therefore, does not exceed the proper scope
`of cross-examination.
`Intellectual Ventures’s motion to exclude the portions of the cross-
`examination testimony of Dr. Newman’s deposition is DENIED.
`
`IV. ANTICIPATION BY STADLER
`
`To anticipate a patent claim under 35 U.S.C. § 102, “a reference must
`describe . . . each and every claim limitation and enable one of skill in the art
`to practice an embodiment of the claimed invention without undue
`experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d
`1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed.
`
`
`
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`Cir. 2009)). Anticipation of a patent claim is a question of fact. In re
`Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). Ericsson contends that
`Stadler anticipates claims 1–6 and 10–22 of the ’674 patent.
`
`A. Stadler (Ex. 1003)
`Stadler discloses a Wireless IP Suite Enhancer (WISE) system that
`implements the TCP/IP (Transmission Control Protocol / Internet Protocol)
`suite in a wireless environment. Ex. 1003, 273. Figure 1 of Stadler is
`reproduced below:
`
`
`Figure 1 depicts a communication system divided into three segments, with
`a wired communication connection from a Client computer to Gateway 1, a
`wireless connection from Gateway 1 to Gateway 2, and a wired connection
`from Gateway 2 to a Server. Id.
`In Stadler, the client-to-gateway and gateway-to-server segments use
`unmodified TCP/IP. Id. The client-to-gateway and gateway-to-server
`segments use IPSec as an encryption technique. Id. at 270. The gateway-to-
`gateway wireless segment uses a special Wireless Link Protocol (“WLP”).
`Id. at 273. Communications are converted from TCP to WLP upon entering
`the wireless sub-network and back to TCP upon exiting. Id. Stadler
`
`
`
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`Patent 7,496,674 B2
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`discloses that encryption can be used to protect communications from
`eavesdropping during the wireless segment. Id.
`
`B. Independent Claims 1, 13, and 18
`
`1. The “packet” limitations
`Intellectual Ventures essentially argues that Stadler does not anticipate
`claim 1 because it fails to transmit a “first packet” from the client to the
`server. PO Resp. 14–21. Intellectual Ventures contends that after a “first
`packet” arrives from the client at gateway 1, it ceases to exist and is replaced
`by a new and different packet that is constructed to be compatible with the
`wireless protocol that is used between gateway 1 and gateway 2. Id. at 19.
`Thus, according to Intellectual Ventures, Stadler does not apply a “second
`security protocol” to the “first packet,” because the “first packet” ceases to
`exist before any “second security protocol” can be applied to it.
`Ericsson argues that the identity and integrity of the original packets
`received at the first WISE gateway are preserved such that the same packet
`of data that is received at the WISE gateway over the wired link is the same
`packet of data that is transmitted over the wireless link. Reply 4–7.
`Intellectual Ventures’s “first packet” theory is predicated on a narrow
`interpretation of “packet” that we do not endorse. The better interpretation
`of Stadler is that after a first packet is received from the client at gateway 1,
`the first packet, including the header thereof, merely undergoes a
`transformation of form to facilitate its transmission over the wireless
`segment of the communication system. The information that is transmitted
`is not “new and different” as argued by Intellectual Ventures, rather, it is
`essentially the same information targeted at the same addressee as the
`original packet. Ex. 2017, 38:13–20 (Makowski) (“the final information will
`
`
`
`16
`
`Ericsson Exhibit 1030
`Ericsson v. IV1, IPR2018-00727
`Page 16
`
`
`
`IPR2014-00527
`Patent 7,496,674 B2
`
`always be there . . . the final destination is always carried somewhere as part
`of the encapsulation process”).
`Claim 1 contemplates that a packet will be “processed” in the wireless
`base station according to a first security protocol. Ex. 1001, claim 1. The
`claim also contemplates that a second security protocol is applied to the first
`packet at the wireless base station. Id. Claim 2 contemplates that the
`processing of the first security protocol at the wireless base station in
`accordance with claim 1 may entail decryption. Id. at claim 2. Claim 3
`contemplates that the second security protocol that is applied at the wireless
`base station in accordance with claim 1 may entail encryption. Id. at
`claim 3. Thus, claim 1 contemplates that a “packet” will undergo processing
`that transforms the form of the packet without destroying its identity as a
`“packet.”
`
`2. Fragmentation
`
`Intellectual Ventures next argues that the payloads that are transmitted
`over Stadler’s wireless segments are not the same payloads transmitted over
`the wired segment. PO Resp. 21. Intellectual Ventures characterizes
`Stadler’s disclosure of fragmenting the original packets transmitted over the
`wired segment into fragments for transmission over the wireless segment as
`forming entirely “new packets.” Id. Intellectual Ventures supports its
`position with declaration testimony from Dr. Newman. Ex. 2015 ¶¶ 55–57
`(“The clear indication based on ‘fragmentation’ is that the WLP packets do
`not have the same payload as received TCP packets.”).
`Ericsson replies that Stadler’s fragmentation technique is no different
`than the time division multiplexing technique disclosed in columns 53 and
`54 of the ’674 patent. Reply 6. On cross-examination, Intellectual
`
`
`
`17
`
`Ericsson Exhibit 1030
`Ericsson v. IV1, IPR2018-00727
`Page 17
`
`
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`IPR2014-00527
`Patent 7,496,674 B2
`
`Ventures’s expert, Dr. Newman, was unable to explain how the
`fragmentation technique in Stadler differed, in any patentably distinct
`manner, from the time division multiplexing technique taught in the ’674
`patent. Ex. 1022, 37:3–44:24.
`
`3. Applying a Second Protocol to the First Packet
`
`Intellectual Ventures argues that Stadler fails to apply a second
`protocol to the first packet within the meaning of claims 1, 13, and 18.
`PO Resp. 25. This position is predicated on Intellectual Ventures’s earlier
`position that Stadler deconstructs packets at the wireless gateway and then
`constructs new and different packets for transmission across the wireless
`segment. Id. Thus, according to Intellectual Ventures to the extent that
`Stadler discloses application of a second security protocol, it would not be
`applied to the same “first packet” received from the wired network. Id.
`In reply, Ericsson points to portions of Stadler that disclose
`application of encryption to the data that is transmitted over the wireless
`link. Reply 7 (citing Ex. 1003, 275–76). Stadler discloses that it is
`advantageous to encrypt wireless transmissions in bulk. Ex. 1003, 275–76.
`We are persuaded that such bulk encryption over the wireless segment is
`sufficiently distinct from the IPSec encryption utilized over the wired
`segment to constitute a second security protocol. Id.
`
`4. Determining, at the Wireless Base Station, that the First
`Packet is Targeted at the Target Device
`
`Intellectual Ventures argues that Stadler fails to satisfy the
`determining step of claim 1. PO Resp. 26. Intellectual Ventures argues that
`
`
`
`
`18
`
`Ericsson Exhibit 1030
`Ericsson v. IV1, IPR2018-00727
`Page 18
`
`
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`IPR2014-00527
`Patent 7,496,674 B2
`
`the claim language requires an active step not something that occurs
`passively. Id. at 28.
`In reply, Ericsson points to cross-examination testimony from
`Dr. Newman that essentially concedes that the determining step is satisfied
`by Stadler. Reply 9; Ex. 1022, 57:6–58:9. Ericsson also relies on the
`following passage from Stadler as satisfying the determining step.
`The system operation is as follows. IP packets not containing
`TCP segments (or whose TCP headers cannot be read) that
`arrive at the periphery of the wireless network will go up the
`protocol stack to the IP layer where the standard routing
`functions will be performed. The packet will go down the
`protocol stack through the LLLL and over the wireless link.
`Any errors encountered during transmission will be corrected
`by the two peer LLLL layers transparently to IP. TCP packets
`on the other hand, will pass all the way up the protocol stack to
`the WISE server. Here the TCP connection will be terminated
`and a virtual circuit will be set up through the LLLL to the
`WISE server on the other side of the wireless link. This will
`cause the receiving WISE server to establish a TCP connection
`to the intended recipient. Once the connections are all
`established the data is passed over the wireless link to the
`receiving WISE server where it is relayed (via the TCP
`connection) to the intended recipient.
`Reply 8; Ex. 1003, 274–75. We agree wi
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