Paper No. 42
`Trials@uspto.gov
`571-272-7822 Entered: June 9, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RIVERBED TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`SILVER PEAK SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-00245
`Patent 8,392,684 B2
`_______________
`
`
`Before DENISE M. POTHIER, JUSTIN T. ARBES, and HYUN J. JUNG,
`Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: June 9, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RIVERBED TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`SILVER PEAK SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-00245
`Patent 8,392,684 B2
`_______________
`
`
`Before DENISE M. POTHIER, JUSTIN T. ARBES, and HYUN J. JUNG,
`Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2014-00245
`Patent 8,392,684 B2
`
`I.
`
`INTRODUCTION
`Riverbed Technology, Inc. (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) on December 11, 2013 requesting institution of an inter partes
`review of claims 1–24 of U.S. Patent No. 8,392,684 B2 (“the ’684 patent”)
`pursuant to 35 U.S.C. §§ 311–19. Silver Peak Systems, Inc. (“Patent
`Owner”) did not file a preliminary response. Based on the Petition, we
`instituted inter partes review of claims 1–24. Paper 12 (“Dec. on Inst.”).
`After institution, Patent Owner did not file a Patent Owner Response,
`and instead filed a Motion to Amend (Paper 16, “Mot.”) seeking to cancel
`claims 1–24 and substitute claims 25–48 in their place. Petitioner filed an
`Opposition (Paper 23, “Opp.”) to the Motion to Amend, and Patent Owner
`filed a Reply (Paper 26, “Reply”). In addition, the parties rely upon
`testimony from various declarants. Petitioner proffered the Declaration of
`Steven W. Landauer (Ex. 1008) with the Petition. Patent Owner proffered
`the Declaration of Geoff Kuenning, Ph.D. (Ex. 2001, “Kuenning Decl.”)
`with its Motion to Amend and a Second Declaration of Dr. Kuenning (Ex.
`2013, “2d Kuenning Decl.”) with its Reply. In addition, a transcript of Dr.
`Kuenning’s deposition (Ex. 1010, “Kuenning Dep.”) was submitted by
`Petitioner. No deposition transcript was filed for Mr. Landauer.
`An oral hearing in this proceeding was held on February 5, 2015, and
`a transcript of the hearing is included in the record (Paper 41, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we grant Patent Owner’s Motion to Amend to
`the extent that it requests to cancel claims 1–24 of the ’684 patent. We
`determine that Patent Owner has not met its burden with respect to proposed
`
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`substitute claims 25–48 and thus, the Motion is denied as to the substitute
`claims. The Motion to Amend, therefore, is granted-in-part.
`A. The ’684 Patent (Ex. 1001)
`The ’684 patent, titled “Data Encryption in a Network Memory
`Architecture for Providing Data Based on Local Accessibility,” issued on
`March 5, 2013 from U.S. Patent Application No. 11/497,026 (“the ’026
`application”) filed on July 31, 2006. The ’026 application is a continuation-
`in-part of U.S. Patent Application No. 11/202,697, which issued as U.S.
`Patent No. 8,370,583 B2, which was the subject of IPR2013-00403.
`The ’684 patent relates to encrypting data in a network memory
`architecture. Ex. 1001, 1:18. Figure 3 of the ’684 patent is reproduced
`below:
`
`
`Figure 3 illustrates an exemplary implementation of network memory
`system 300. Id. at 4:62–63, 5:64–65. Network memory system 300 includes
`branch office 310 and central office 320. Id. at 5:65–66. Branch office 310
`has computers 340 and branch appliance 350, and branch office 310 is
`coupled through router 360 to communication network 330. Id. at 5:66–6:2,
`
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`4–7. Branch appliance 350 “comprises hardware and/or software elements
`configured to receive data (e.g., email, files, and database[] transactions),
`determine whether a portion of the data is locally accessible to an appliance
`(e.g., central appliance 380), generate an instruction based on the
`determination, and transfer the instruction to the appliance.” Id. at 6:38–43.
`Central office 320 includes central appliance 380 that is coupled to
`communication network 330 through router 390. Id. at 6:2–3, 7–10. Central
`appliance 380 “comprises hardware and/or software elements configured to
`receive data, determine whether a portion of the data is locally accessible to
`an appliance (e.g., the branch appliance 350), generate an instruction based
`on the determination, and transfer the instruction to the appliance.” Id. at
`7:13–18. “In some embodiments, the instruction indicates an index within a
`database for storing and retrieving the data.” Id. at 7:10–12.
`In the exemplary embodiment, branch appliance 350 and central
`appliance 380 intercept network traffic between computers 340 and central
`servers 370. Id. at 7:29–32. Branch appliance 350 encrypts data, stores the
`encrypted data within a local copy in branch appliance 350, and transmits
`data to central appliance 380. Id. at 8:24–27. Branch appliance 350 also
`retrieves encrypted response data from the local copy per an instruction from
`central appliance 380, decrypts the response data, and forwards the response
`data to computers 340. Id. at 8:27–31.
`Central appliance 380 also can receive an instruction from branch
`appliance 350 to store encrypted data in a local copy locally accessible to
`central servers 370. Id. at 8:34–37. Central appliance 380 is configured to
`determine whether the data is locally accessible to branch appliance 350 and
`
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`to decrypt the data before transmitting the data to central server 370. Id. at
`8:39–41, 43–45.
`Figure 4 of the ’684 patent is reproduced below:
`
`
`
`Figure 4 is a sequence chart for the network memory system where a
`response to a data request is not accessible locally to a branch device. Id. at
`4:64–67, 9:25–28.
`Computer 340 transmits data request 410 through branch appliance
`350 and central appliance 380 to central server 370. Id. at 9:25–31. Central
`servers 370 generate response data 425 based on data request 410 and
`transmit response data 425 to central appliance 380. Id. at 9:34–36, 39–41,
`Fig. 4 (sequence 420). Central appliance 380 processes response data 425 to
`determine whether a portion of response data 425 is accessible locally to
`
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`branch appliance 350. Id. at 9:45–47, Fig. 4 (sequence 430). If central
`appliance 380 determines that response data 425 is not accessible locally to
`branch appliance 350, central appliance 380 generates store instruction 440
`and attaches store instruction 440 to response data 425. Id. at 11:41–48,
`Fig. 4 (sequence 435). However, if central appliance 350 determines that
`response data is available locally to branch appliance 350, central appliance
`380 generates retrieve instruction 640 that indicates to branch appliance 350
`to retrieve the response data at an index within a database. Id. at 12:27–31,
`Fig. 6.
`In another embodiment, computer 340 transmits data request 710
`through central appliance 380. Id. at 12:52–54, Fig. 7A. Central appliance
`380 processes response data 725 to determine whether a portion of that data
`is locally accessible to branch appliance 350. Id. at 12:59–62, Fig. 7A
`(sequence 730). Central appliance 380 encrypts flow history pages 545 that
`include pages, page state information, and data, and “will transmit the deltas
`(i.e., the portion of the response data 725 that is not locally accessible) to the
`branch appliance 350.” Id. at 9:51–63, 13:11–15. Central appliance 380 can
`generate a store instruction that “indicates to the branch appliance 350 to
`store the deltas at an index within the database.” Id. at 13:20–22. Branch
`appliance 350 stores the deltas in accordance with the store instruction. Id.
`at 13:42–45. “If the deltas are not encrypted, the branch appliance 350
`further encrypts the deltas.” Id. at 13:45–47.
`If retrieve instruction 640 is smaller in size than response data 625,
`central appliance 380 transmits only retrieve instruction 640, but if retrieve
`instruction 640 is larger than response data 625, central appliance 380
`transmits response data 625 instead. Id. at 12:32–33, 35-39. Thus,
`
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`according to the ’684 patent, central appliance 380 optimizes network traffic
`over communication network 330. Id. at 12:33–35.
`B. Status of the Claims
`The ’684 patent has 24 claims, all of which are challenged. Claims 1–
`7 recite a network memory system; claims 8–14 recite a method; and claims
`15–24 recite a software product. Claim 1, for example, recites:
`1. A network memory system for ensuring compliance,
`comprising:
`a source-site appliance comprising a first processor and a
`first memory device, and configured to be coupled to a source-
`site computer via a source-site local area network;
`a destination-site appliance comprising a second
`processor and a second memory device, and configured to be
`coupled to a destination-site computer via a destination-site
`local area network, the source-site computer in communication
`with the destination-site computer via a wide area network;
`the source-site appliance configured to intercept data sent
`from the source-site computer to the destination-site computer,
`encrypt the data, store the data in the first memory device,
`determine whether the data exists in the second memory device,
`and transmit a store instruction comprising the data if the data
`does not exist in the second memory device; and
`the destination-site appliance configured to receive the
`store instruction from the source-site appliance, store the data in
`the second memory device, subsequently receive a retrieve
`instruction comprising an index at which the data is stored in
`the second memory device, process the retrieve instruction to
`obtain encrypted response data, and decrypt the encrypted
`response data.
`
`In its Motion to Amend, Patent Owner proposes a substitute claim for
`each of the challenged claims. Mot. 1–7. Proposed substitute claim 25
`recites, with underlined material indicating language added to original patent
`claim 1:
`
`
`
`7
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`25. A network memory system for ensuring compliance,
`comprising:
`a source-site appliance comprising a first processor and a
`first memory device, and configured to be coupled to a source-
`site computer via a source-site local area network;
`a destination-site appliance comprising a second
`processor and a second memory device, and configured to be
`coupled to a destination-site computer via a destination-site
`local area network, the source-site computer in communication
`with the destination-site computer via a wide area network;
`the source-site appliance configured to intercept original
`data sent from the source-site computer to the destination-site
`computer, encrypt the original data to generate encrypted data,
`store the encrypted data in the first memory device, determine
`whether a representation of the original data exists in the second
`memory device, and transmit a store instruction comprising the
`original data if the representation of the original data does not
`exist in the second memory device; and
`the destination-site appliance configured to receive the
`store instruction from the source-site appliance, encrypt the
`original data received with the store instruction at the
`destination-site appliance to generate encrypted received data,
`store the encrypted received data in the second memory device,
`subsequently receive a retrieve instruction comprising an index
`at which the encrypted received data is stored in the second
`memory device, process the retrieve instruction to obtain
`encrypted response data comprising at least a portion of the
`encrypted received data, and decrypt the encrypted response
`data.
`
`Mot. 1–2.
`
`C. The Asserted Grounds of Unpatentability
`We instituted the instant inter partes review on the following grounds
`of unpatentability.
`
`
`
`
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`
`Reference[s]
`McCanne1
`McCanne and Stein2
`McCanne and Rarick3
`McCanne and Anand4
`McCanne and
`Gleichauf5
`
`Dec. on Inst. 24–25.
`
`Basis
`§ 102
`§ 103
`§ 103
`§ 103
`§ 103
`
`Claims challenged
`1, 2, 7–9, 14–16, and 21–24
`3, 10, and 17
`4, 11, and 18
`5, 12, and 19
`6, 13, and 20
`
`
`II. ANALYSIS
`
`A. Challenged Claims
`
`As noted above, Patent Owner did not file a Patent Owner Response
`to the Petition. In its Motion to Amend, Patent Owner “moves to cancel
`claims 1–24 and to substitute claims 25–48 in their place.” Mot. 1; see
`35 U.S.C. § 316(d); 37 C.F.R. § 42.121(a)(3) (“A motion to amend may
`cancel a challenged claim or propose a reasonable number of substitute
`claims.”). Patent Owner’s request to cancel claims 1–24 is not contingent on
`the claims being determined to be unpatentable. We grant the request and
`turn to the proposed substitute claims in the Motion to Amend.
`
`1 U.S. Patent Application Publication No. 2004/0088376 A1, published May
`6, 2004 (Ex. 1003).
`2 U.S. Patent Application Publication No. 2003/0133568 A1, published July
`17, 2003 (Ex. 1004).
`3 U.S. Patent Application Publication No. 2004/0086114 A1, published May
`6, 2004 (Ex. 1005).
`4 U.S. Patent Application Publication No. 2003/0002664 A1, published Jan.
`2, 2003 (Ex. 1006).
`5 U.S. Patent Application Publication No. 2003/0149869 A1, published Aug.
`7, 2003 (Ex. 1007).
`
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`B. Proposed Substitute Claims
`
`As the moving party, Patent Owner bears the burden of proof to
`
`establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c).
`Entry of proposed amendments is not automatic, but occurs only upon the
`patent owner having met the requirements of 37 C.F.R. § 42.121 and
`demonstrated, by a preponderance of the evidence, the patentability of the
`proposed substitute claims. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case
`IPR2012-00027, slip op. at 7–8 (PTAB June 11, 2013) (Paper 26, “Idle
`Free”) (informative); Toyota Motor Corp. v. American Vehicular Scis. LLC,
`Case IPR2013-00419, slip. op. at 4–5 (PTAB Mar. 7, 2014) (Paper 32,
`“Toyota”). For the reasons explained below, we conclude that Patent Owner
`has not met its burden with respect to claims 25–48.
`1. Claim Construction
`Patent Owner bears the burden in a motion to amend to show a
`patentable distinction of each proposed substitute claim over the prior art.
`See 37 C.F.R. § 42.20(c). Accordingly, a “patent owner should identify
`specifically the feature or features added to each substitute claim, as
`compared to the challenged claim it replaces, and come forward with
`technical facts and reasoning about those feature(s).” Idle Free at 7. This
`includes “construction of new claim terms, sufficient to persuade the Board
`that the proposed substitute claim is patentable over the prior art of record,
`and over prior art not of record but known to the patent owner.” Id.; Toyota
`at 5. Further, consistent with the statute and legislative history of the Leahy-
`Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011), the
`Board interprets claims using the “broadest reasonable construction in light
`of the specification of the patent in which [they] appear[].” 37 C.F.R.
`
`
`
`10
`
`
`
`“network memory”
`
`“appliance”
`
`“instruction”
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`§ 42.100(b); In re Cuozzo Speed Tech., LLC, 778 F.3d 1271, 1279–83 (Fed.
`Cir. 2015).
`In the Decision on Institution, we interpreted various claim terms of
`the independent claims of the ’684 patent as follows.
`Term
`Interpretation
`“device(s) in a network for storing
`information”
`“hardware and/or software elements
`applied to a particular use”
`“a message or signal that indicates,
`explicitly or implicitly, an action to
`perform”
`
`
`See Dec. on Inst. 7–11. The parties do not dispute these interpretations in
`their papers. We do not perceive any reason or evidence that now compels
`any deviation from these interpretations. Accordingly, for purposes of
`assessing the proposed substitute claims, we incorporate our previous
`analysis. See id.
`Patent Owner’s proposed substitute claims add limitations to the
`original independent claims of the ’684 patent, and in its Motion to Amend,
`Patent Owner states it “does not believe any terms of the proposed substitute
`claims require construction because there are no new terms, the meaning of
`which reasonably can be anticipated as subject to dispute.” Mot. 1–8.
` We determine, however, that for purposes of assessing the proposed
`substitute claims, the term “data” needs interpretation. Petitioner argues that
`original claim 1 requires the source-site appliance to encrypt data before it is
`sent and Patent Owner’s proposed substitute claims eliminate this feature,
`thereby enlarging the scope of the claims. Opp. 1–4. Original claim 1
`
`
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`11
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`recites, inter alia, “the source-site appliance configured to . . . transmit a
`store instruction comprising the data if the data does not exist in the second
`memory device; and the destination-site appliance configured to receive the
`store instruction from the source-site appliance.” Original claim 1 also
`recites that the source-site appliance is “configured to intercept data sent
`from the source-site computer to the destination-site computer, encrypt the
`data, store the data in the first memory device, [and] determine whether the
`data exists in the second memory device.” Although claim 1 recites
`“encrypt the data” before “transmit a store instruction comprising the data,”
`the language of claim 1 does not require explicitly, as a matter of timing,
`that the data is encrypted before it is transmitted as part of the store
`instruction. See 2d Kuenning Decl. ¶¶ 6, 8. As Patent Owner points out, the
`Specification of the ’684 patent supports interpreting “data” as unencrypted
`data, and that the claims are broad enough to encompass any order. Reply 1;
`Tr. 10:11–17:18; 2d Kuenning Decl. ¶¶ 4–9.
`Patent Owner cites column 13, lines 45–47, of the ’684 patent, which
`is part of a description of an embodiment illustrated in Figures 7A and 7B.
`See Ex. 1001, 12:48–13:48; Reply 1. In that embodiment, the ’684 patent
`describes that central appliance 380 processes response data 725 to
`determine whether a portion of that data is locally accessible to branch
`appliance 350 and “will transmit the deltas (i.e., the portion of the response
`data 725 that is not locally accessible) to the branch appliance 350.” Id. at
`12:59–62, 13:11–15. The ’684 patent also states that “[i]f the deltas are not
`encrypted, the branch appliance 350 further encrypts the deltas.” Id. at
`13:45–47. Thus, the ’684 describes an embodiment where data can be, but
`need not be, encrypted before it is transmitted as part of the store instruction.
`
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`12
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`As discussed above, the claims do not require encrypting data before
`transmitting that data as part of the store instruction. Accordingly, we
`decline to import into the claims a limitation based on a specific
`embodiment in the Specification. See, e.g., SuperGuide Corp. v. DirecTV
`Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular
`embodiment appearing in the written description may not be read into a
`claim when the claim language is broader than the embodiment.”). We
`decline to read the exemplary disclosure of encrypting the data before
`transmitting it with the store instruction into the broadest reasonable
`interpretation of “data.”
`Moreover, original claim 8 recites a method including the steps of
`“encrypting the data” and “transmitting a store instruction comprising the
`data.” Determining if the steps of a method claim that do not otherwise
`recite an order, must be performed nonetheless in the order in which they are
`written involves a two-part test. “First, we look to the claim language to
`determine if, as a matter of logic or grammar, they must be performed in the
`order written. If not, we next look to the rest of the Specification to
`determine whether it ‘directly or implicitly requires such a narrow
`construction.’ . . . If not, the sequence in which such steps are written is not
`a requirement.” Altiris, Inc. v. Symantec Corp. 318 F.3d 1363, 1369–70
`(Fed. Cir. 2003) (citation omitted); see also Loral Fairchild Corp. v. Sony
`Corp., 181 F.3d 1313, 1321 (Fed. Cir. 1999) (holding that the claim
`language itself indicated that the steps had to be performed in their written
`order because the second step required the alignment of a second structure
`with a first structure formed by the prior step); Mantech Envtl. Corp. v.
`Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1375–76 (Fed. Cir. 1998)
`
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`(holding that the steps of a method claim had to be performed in their
`written order because each subsequent step referenced something logically
`indicating the prior step had been performed).
`First, the language of claim 8 does not compel that the step of
`“encrypting the data” must be performed before the step of “transmitting a
`store instruction comprising the data” as a matter of logic or grammar.
`Claim 8 recites, inter alia, “intercepting data,” “encrypting the data,”
`“storing the data,” and “transmitting a store instruction comprising the data.”
`Although the later recited steps refer to “the data,” neither logic nor
`grammar compels finding a particular order of performing these later steps.
`For example, the transmitting step could be performed before the encrypting
`and storing steps.
`Turning to whether the Specification of the ’684 patent directly or
`implicitly requires a narrower construction in which the recited steps are
`performed in a particular order, Patent Owner cites a portion of the ’684
`patent that describes an embodiment illustrated in Figures 7A and 7B. As
`discussed above, the ’684 patent states that “[i]f the deltas are not encrypted,
`the branch appliance 350 further encrypts the deltas.” Ex. 1001, 13:45–47.
`Thus, the ’684 patent describes an embodiment where data can be, but need
`not be, encrypted before it is transmitted as part of the store instruction. In
`the context of this description, we determine that the Specification of the
`’684 patent does not require construing “data” in claim 8’s “transmitting a
`store instruction comprising the data” to be “encrypted data.”
`For the foregoing reasons, we interpret “data” in the original claims of
`the ’684 patent to be “encrypted or unencrypted data.” The proposed
`substitute claims include two modifiers for the term “data.” For example,
`
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`proposed substitute claim 25 recites “encrypt[ing] the original data to
`generate encrypted data.” Thus, the plain meaning of the proposed
`substitute claims is that the “original data” is unencrypted and the
`“encrypted data” is encrypted. See Tr. 13:6–10.
`2. No Broadening of Scope
`Proposed substitute claims in an inter partes review “may not enlarge
`
`the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R.
`§ 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes
`substituting one of claims 25–48 for one of claims 1–24. Mot. 1–7. Each
`claim includes all the limitations of the corresponding claim for which it is a
`substitute, and adds additional limitations. Proposed substitute claims 25,
`27–29, 31, 32, 39, 41–43, and 45 recite “original data,” and proposed
`substitute claims 34–36 recite “first original data.”
`
`Petitioner argues that “original claim 1 of the ’684 patent requires that
`‘the data’ transmitted by the source-site appliance to the destination-site
`appliance be in encrypted form” and that proposed substitute claim 25
`enlarges the scope of claim 1 because “the data flowing between the two
`appliances is not encrypted.” Opp. 1–3; see also Tr. 34:5–44:19
`(presenting similar arguments). Patent Owner replies that the original claims
`“do not require that ‘the data’ transmitted by the source-site appliance is
`encrypted.” Reply 1 (citing 2d Kuenning Decl.6 ¶¶ 4–12). Patent Owner
`also argues that the Specification of the ’684 patent describes embodiments
`in which transmitted data is unencrypted. Id. (citing Ex. 1001, 13:45–47; 2d
`Kuenning Decl. ¶¶ 6, 8, 12); Tr. 10:11–17:18. For the reasons discussed
`above, we interpret “data” in the original claims to be “encrypted or
`
`6 See Paper 28 (Order renumbering Ex. 2007 as Ex. 2013).
`15
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`unencrypted data.” Thus, we are not persuaded by Petitioner’s arguments
`that proposed substitute claim 25 enlarges the scope of claim 1, for which
`claim 25 is a proposed substitute.
`
`Petitioner also argues that proposed substitute claim 38 enlarges the
`scope of claim 14, which claim 38 is proposed to replace. Opp. 4; Paper 30.
`As issued, claim 14 depends from claim 9. Ex. 1001, 18:61–63. Proposed
`substitute claim 38 depends from proposed substitute claim 32, which is
`proposed to replace claim 8. Mot. 3. In other words, the dependency of
`proposed substitute claim 38 has changed. Patent Owner replies that
`“[a]lthough the ’684 patent shows claim 14 depending from original claim 9,
`this dependency is a printing error.” Reply 1; see also Paper 29 (arguing
`that the dependency of claim 14 is a printing error). Patent Owner also filed
`a request for certificate of correction. Exs. 3001, 3002; see also Paper 34
`(granting Patent Owner’s motion for authorization to file a certificate of
`correction). A certificate of correction for the ’684 patent issued during this
`proceeding and states that the ’684 patent is corrected so that “[i]ssued claim
`14 should depend from issued claim 8.” Ex. 3003. In view of the certificate
`of correction issued for the ’684 patent, Petitioner’s argument that proposed
`substitute claim 38 enlarges the scope of claim 14 is not persuasive.
`
`Accordingly, for the foregoing reasons, we determine that the
`proposed substitute claims do not enlarge the scope of the original patent
`claims.
`3. Written Description Support
`
`
`Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter
`
`partes review must set forth “[t]he support in the original disclosure of the
`patent for each claim that is added or amended” and “[t]he support in an
`
`
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`16
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`IPR2014-00245
`Patent 8,392,684 B2
`
`earlier-filed disclosure for each claim for which benefit of the filing date of
`the earlier filed disclosure is sought.”
`
`In its Motion to Amend, Patent Owner explains how the subject
`matter of its proposed substitute claims have written description support in
`the Specification of the ’026 application, which issued as the ’684 patent.
`Mot. 8–9. Regarding the added limitations, Patent Owner relies on Figures
`4, 6, and 7 and paragraphs 56–58, 66–71, and 76 of the ’026 application. Id.
`Patent Owner states that the cited portions describe “store and retrieve
`operations including encrypting flow history pages (FHPs) at the source-site
`appliance using AES, DES, 3DES,” “that the destination-site appliance can
`encrypt received data,” and “decrypting encrypted response data and
`transmitting the decrypted response data.” Id. Patent Owner also provides
`citations for other limitations of the proposed substitute claims. Id. (citing
`¶¶ 39–49, 79–81, 94–96; Figs. 3, 8, 9, 12, 13 of the ’026 application).
`Petitioner in its Opposition does not argue that the claims lack sufficient
`written description support.
`
`Upon review of Patent Owner’s arguments and the disclosures of the
`application that issued as the ’684 patent, we conclude that Patent Owner has
`made a sufficient showing that proposed claims 25–48, as a whole, have
`written description support in the disclosure of the application as filed.
`4. Proposed Substitute Claims
`
`Having interpreted the language of the claims and having determined
`that Patent Owner’s proposed substitute claims do not enlarge the scope of
`the claims of the ’684 patent and have sufficient written description support,
`we turn to the claims specifically to determine if Patent Owner has met its
`burden of proof.
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`17
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`Patent 8,392,684 B2
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`In a motion to amend, the patent owner bears the burden of proof to
`demonstrate patentability of its proposed substitute claims over the prior art
`and, thus, entitlement to the claims. Idle Free at 7. This does not mean that
`the patent owner is assumed to be aware of every item of prior art known to
`a person of ordinary skill in the art. The patent owner, however, should
`explain in its motion why the proposed substitute claims are patentable over
`not just the prior art of record, but also prior art not of record but known to
`the patent owner:
`A patent owner should identify specifically the feature or
`features added to each substitute claim, as compared to the
`challenged claim it replaces, and come forward with technical
`facts and
`reasoning about
`those
`feature(s),
`including
`construction of new claim terms, sufficient to persuade the
`Board that the proposed substitute claim is patentable over the
`prior art of record, and over prior art not of record but known to
`the patent owner. The burden is not on the petitioner to show
`unpatentability, but on the patent owner to show patentable
`distinction over the prior art of record and also prior art known
`to the patent owner. Some representation should be made about
`the specific technical disclosure of the closest prior art known
`to the patent owner, and not just a conclusory remark that no
`prior art known to the patent owner renders obvious the
`proposed substitute claims.
`
`Id. This includes addressing the basic knowledge and skill set possessed by
`a person of ordinary skill in the art even without reliance on any particular
`item of prior art. Id. at 7–8; Toyota at 4–5. The petitioner then has the
`opportunity, in its opposition, to argue any deficiency in the patent owner’s
`motion and “come forward with specific evidence and reasoning, including
`citation and submission of any applicable prior art,” to rebut the patent
`owner’s position on patentability. Idle Free at 8.
`
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`Patent 8,392,684 B2
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`Proposed substitute claim 25 adds that the source-site appliance is
`configured to intercept original data sent from the source-site
`computer to the destination-site computer, encrypt the original data to
`generate encrypted data, store the encrypted data in the first memory
`device, determine whether a representation of the original data exists
`in the second memory device, and transmit a store instruction
`comprising the original data if the representation of the original data
`does not exist.
`
`Proposed substitute claim 25 also adds that the destination-site
`appliance is
`configured to . . . encrypt the original data received with the store
`instruction at the destination-site appliance to generate encrypted
`received data, store the encrypted received data in the second memory
`device, subsequently receive a retrieve instruction comprising an
`index at which the encrypted received data is stored . . . , [and]
`process the retrieve instruction to obtain encrypted response data
`comprising at least a portion of the encrypted received data.
`
`Patent Owner asserts that the “prior art does not disclose or suggest
`the claimed feature of ‘encrypt[ing] the original data received with the store
`instruction at the destination-site appliance to generate encrypted received
`data’ and ‘stor[ing] the encrypted received data in the second memory
`device.’” Mot. 9–10 (citing Kuenning Decl. ¶¶ 45–76). Patent Owner also
`states that “a system having the claimed features could be configured to
`independently encrypt . . . data stored at each source-site and each
`destination-site appliance,” which “would enable appliances at different
`locations to meet their own specific compliance and/or performance
`requirements.” Id. Patent Owner also states that “a system having the
`claimed features could be configured to independently encrypt data in transit
`and data in storage.” Id. at 10–11 (citing Kuenning Decl. ¶ 22).
`
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`IPR2014-00245
`Patent 8,392,684 B2
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`
`Patent Owner contends that M
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