Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper 11
`
`Entered: August 6, 2014
`
`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`
` Paper 11
`
`Entered: August 6, 2014
`
`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`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”). Intellectual Ventures I LLC (“Intellectual
`
`Ventures”) filed a Patent Owner Preliminary Response (Paper 10, “Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 314(a). We conclude that
`
`Ericsson has shown a reasonable likelihood of prevailing in challenging
`
`claims 1–22, and we institute inter partes review as to such claims.
`
`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
`
`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.
`
`
`
`
`2
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`
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`IPR2014-00527
`Patent 7,496,674 B2
`
`
`B. Challenged Claims
`
`Ericsson challenges claims 1–22. Claims 1, 13, and 18 are
`
`independent claims. Claim 1 is a method claim and claim 13 is an apparatus
`
`claim. Claims 1 and 13 (with paragraph indentation added) are 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.
`
`13. A base station comprising:
`
` a first interface configured to couple to a wired data network in
`use;
`
`a second interface configured to transmit and receive on a
`wireless network in use; and
`
`
`
`
`3
`
`
`
`IPR2014-00527
`Patent 7,496,674 B2
`
`
`a controller coupled to the first interface and the second
`interface, wherein the controller is configured to process a
`first packet received by the first interface,
`
`wherein the controller is configured to process the first packet
`according to a first security protocol on the wired data
`network,
`
`wherein a target device of the first packet communicates with a
`source of the first packet, at least in part, over the wireless
`network, and
`
`wherein the first packet comprises a header coded with address
`information identifying the target device,
`
`wherein the controller is configured to determine that the first
`packet is targeted at the target device, and
`
`wherein the controller is configured to apply 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.
`
`C. The Asserted Grounds of Unpatentability
`
`Ericsson challenges 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
`Stadler (Ex. 1003)1
`Stadler and Davison (Ex. 1010)2
`
`Basis
`
`Claims challenged
`
`§ 102
`
`1-6 and 10-22
`
`§ 103
`
`7-9
`
`
`1 J. Scott Stadler and Jay Gelman, Performance Enhancement for TCP/IP
`On a Satellite Channel, MIT Lincoln Laboratory, Lexington, MA © 1998.
`2 U.S. Patent No. 6,829,242 B2 to Davison, et al, entitled Method and
`Apparatus For Associating PVC Identifiers With Domain Names of Home
`Gateways, issued Dec. 2004.
`
`
`
`
`
`
`4
`
`
`
`IPR2014-00527
`Patent 7,496,674 B2
`
`Rai (Ex. 1004)3
`
`Rai and Davison
`Forslöw (Ex. 1006)4
`
`§ 103
`
`1, 10-13, 17, 18, and 22
`
`§ 103
`
`2-9, 14-16, and 19-21
`
`§ 102
`
`1, 10, 13, and 18
`
`Forslöw and Davison
`
`§ 103
`
`2, 4, and 5
`
`D. Claim Interpretation
`
`Claims of unexpired patents are construed by applying the broadest
`
`reasonable interpretation, in light of the specification. 37 C.F.R.
`
`§ 42.100(b).
`
`1.“security protocol”
`
`The term “security protocol” appears in each challenged claim.
`
`Ericsson’s proposed construction:
`
`a protocol which enables at least one of (a) authentication or (b)
`confidentiality via (b1) encryption and/or (b2) tunneling when
`routing a packet through a network.
`
`Pet. 17.
`
`Intellectual Ventures’s proposed construction:
`
`a protocol that provides security measures.
`
`Prelim. Resp. 3.
`
`Intellectual Ventures criticizes Ericsson’s proposed construction as
`
`artificially expanding the definition of “security protocol” to include
`
`“tunneling.” Prelim. Resp. 5. Intellectual Ventures argues that “tunneling”
`
`does not provide “security.” Prelim. Resp. 6.
`
`
`3 U.S. Patent No. 6,414,950 B1 to Rai, et al, entitled Sequence Delivery of
`Messages, issued Jul. 2, 2002.
`4 U.S. Patent No. 6,608,832 B2 to Forslöw, entitled Common Access
`Between A Mobile Communications Network And An External Network With
`Selectable Packet-Switched And Circuit-Switched And Circuit-Switched
`Services, issued Aug. 19, 2003.
`
`
`
`
`5
`
`
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`IPR2014-00527
`Patent 7,496,674 B2
`
`
`Intellectual Ventures supports its construction with a definition of
`
`“security” from what Intellectual Ventures represents to be a glossary of
`
`telecommunication terms. Prelim. Resp. 5; Ex. 2002.5 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.
`
`On the present record, we construe a “security protocol” as a
`
`“protocol that provides protective measures for communications.” 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. We do not decide, at this juncture, whether
`
`or not “tunneling” per se can be considered to be a “security protocol.”
`
`2.“wireless base station” and “base station”
`
`Although the parties propose competing constructions of these terms,
`
`we do not need to construe them expressly, as an express construction is not
`
`material to this decision.
`
`II. ANALYSIS
`
`A. Anticipation of Claims 1–6 and 10–22 by Stadler
`
`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 at 273. Figure 1 of Stadler is
`
`reproduced below:
`
`5 “A condition that results from the establishment and maintenance of
`protective measures that ensure a state of inviolability from hostile acts or
`influences.” Ex. 2002.
`
`
`
`
`6
`
`
`
`IPR2014-00527
`Patent 7,496,674 B2
`
`
`
`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 gateway-to-gateway wireless segment uses a
`
`special Wireless Link Protocol (“WLP”). Id. Communications are
`
`converted from TCP to WLP upon entering the wireless sub-network and
`
`back to TCP upon exiting. Id. Stadler discloses that encryption can be used
`
`to protect communications from eavesdropping during the wireless segment.
`
`Id.
`
`Ericsson submitted tables containing element-by-element claim charts
`
`that purport to read claims 1–6 and 10–22 onto Stadler and relies on these
`
`claim charts for its ground of anticipation. Pet. 18–31. Ericsson’s
`
`allegations are supported by the Makowski Declaration. Ex. 1013 ¶¶ 17–52.
`
`We review Ericsson’s allegations in view of our own claim construction,
`
`rather than those of Ericsson and its declarant.
`
`1. Independent Claims 1, 13, and 18.
`
`Intellectual Ventures argues that Ericsson fails to show that Stadler
`
`processes a first packet according to a first security protocol. Prelim. Resp.
`
`
`
`
`7
`
`
`
`IPR2014-00527
`Patent 7,496,674 B2
`
`15–17. Intellectual Ventures also argues that Ericsson makes an
`
`unsupported leap of logic that data “handling” at the gateway corresponds to
`
`the claimed processing of a first packet according to a first security protocol.
`
`Prelim. Resp. 16.
`
`Ericsson’s declarant, Dr. Makowski, testifies that Stadler discloses
`
`that packets encrypted according to IPsec can be decrypted at the gateways.
`
`Ex. 1013 ¶ 48. Dr. Makowski thus testifies that, in Stadler, the “handling”
`
`of data is a procedure for decryption of data at the gateways that constitutes
`
`the required processing of a first data packet according to a first security
`
`protocol. Stadler provides that, while it is known in the art that unencrypted
`
`data may be provided to the gateways, where such data is encrypted, and in
`
`order for useful information to be gathered from the data, the data is
`
`“handled if the gateways can be considered trusted hosts.” Ex. 1003, 275.
`
`In considering the testimony of Dr. Makowski and the content of Stadler, we
`
`are persuaded, at this time, that the noted disclosure of handling encrypted
`
`data is an act of decrypting the data. Ericsson has made a threshold showing
`
`that the pertinent claim element is disclosed in the art.
`
`Intellectual Ventures next argues that Ericsson fails to demonstrate
`
`that Stadler discloses the use of different security protocols on respective
`
`wired and wireless networks. Prelim. Resp. 17–21. Intellectual Ventures
`
`argues that Stadler does not identify which security protocol is used, leaving
`
`one to speculate whether the wireless protocol is the same or different from
`
`the wired protocol. Id. at 18–19. Ericsson’s declarant, Dr. Makowski,
`
`testifies that the WISE protocol constitutes a second and different security
`
`protocol. Ex. 1013 ¶ 52. Taking this into consideration with Dr.
`
`Makowski’s previous testimony that IPsec (a first security protocol)
`
`
`
`
`8
`
`
`
`IPR2014-00527
`Patent 7,496,674 B2
`
`employed over the wired segments can be encrypted and decrypted at the
`
`gateways, Ericsson has made a threshold showing in the art as to this claim
`
`element.
`
`Next, Intellectual Ventures argues that Ericsson fails to show that
`
`Stadler applies a “second security protocol” to a “first packet.” Prelim.
`
`Resp. 21–23. As Ericsson has made a threshold showing of using two
`
`different security protocols, we also find that Ericsson has made a threshold
`
`showing as to applying a second security protocol to a first packet.
`
`On this record, we are satisfied that Ericsson, in its Petition, has
`
`shown a reasonable likelihood of prevailing on its challenge that claims 1,
`
`13, and 18 are anticipated by Stadler.
`
`2. Dependent Claims 2–6, 10–12, 14–17, and 19–22.
`
` Claims 2–6, 10–12, 14–17, and 19–22 ultimately depend from one of
`
`claims 1, 13, and 18. In challenging the sufficiency of the Petition as to the
`
`dependent claims, Intellectual Ventures relies on the same arguments
`
`asserted as to the independent claims. For the same reasons discussed
`
`above, we are not persuaded by those arguments. We have reviewed the
`
`Petition detailing where the features added by dependent claims are
`
`disclosed in Stadler. See Pet. 26–32. For purposes of this decision, we are
`
`satisfied that that Petitioner has shown a reasonable likelihood of prevailing
`
`on its challenge that claims 2–6, 10–12, 14–17, and 19–22 are anticipated by
`
`Stadler.
`
`
`
`
`9
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`IPR2014-00527
`Patent 7,496,674 B2
`
`
`B. Obviousness of Claims 7–9 over Stadler and Davison.
`
`Davison relates to computer network tunneling protocol software.
`
`Ex. 1010, 1:28–30. In its proposed combination with Stadler, Ericsson relies
`
`on Davison as disclosing the dependent limitations of claims 7-9. Pet. 31-33.
`
`1. Davison (Ex. 1010).
`
`Davison describes a network in which a virtual private network may
`
`be provided. Ex. 1010, 1:33–37. Davison states that any protocol that
`
`allows tunneling or tunneling-like features may be used to initiate the tunnel
`
`session, such as L2TP, L2F, PPTP, or IPSec. Id. at 5:20–34.6 It explains that
`
`conventional tunneling protocol security features may be employed to
`
`prevent a home gateway from masquerading as a home gateway to a
`
`different network. Id. at 3:9–17.
`
`2. Dependent Claims 7–9.
`
`Petitioner’s declarant, Dr. Makowski, testifies that a person of
`
`ordinary skill in the art would have combined Stadler and Davison. Ex.
`
`1013 ¶¶ 53–56. Intellectual Ventures argues that Dr. Makowski’s testimony
`
`is conclusory. Prelim. Resp. 24–28.
`
`We disagree with Intellectual Ventures that Dr. Makowski’s
`
`testimony is so conclusory that the Petition should be denied. Dr. Makowski
`
`testifies that it would have been expected for a person of ordinary skill in the
`
`art to modify Stadler using a tunneling protocol compliant with PPTP, L2F,
`
`or L2TP protocols to provide a secure tunnel that is known to be
`
`interchangeable with other tunneling protocols. This constitutes articulated
`
`
`6 Layer Two Tunneling Protocol (P2TP), Layer Two Forwarding Protocol
`(L2F), Point-to-Point Tunneling Protocol (PPTP), and Internet Protocol
`Security (IPsec) respectively.
`
`
`
`
`10
`
`
`
`IPR2014-00527
`Patent 7,496,674 B2
`
`reasoning with a rational underpinning sufficient to warrant institution of a
`
`trial as to claims 7–9 over the combination of Stadler and Davison. See KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`C. Obviousness of Claims 1, 10–13, 17, 18, and 22 over Rai.
`
`Rai provides users with remote wireless access to the public internet,
`
`private intranets and internet service providers. Ex. 1004, 2:31–33. Rai
`
`discloses a base station 64 that is connected between wired network 38 and
`
`wireless network airlinks. Id. at Fig. 4, 10:29–11:58.
`
`1. Independent Claims 1, 13, and 18.
`
`Ericsson’s declarant, Dr. Makowski, testifies that a person of ordinary
`
`skill in the art would understand that Rai discloses each element of
`
`independent claims 1, 13, and 18. Ex. 1013 ¶¶ 58–64. Ericsson’s position is
`
`supported by claim charts that purport to read each element of independent
`
`claims 1, 13, and 16 onto Rai. Pet. 34–41.
`
`The Preliminary Response raises three arguments to this asserted
`
`ground of the independent claims. First, Rai fails to disclose a first security
`
`protocol on the wired data network. Prelim. Resp. 29–30. Second, Rai lacks
`
`a second security protocol employed on the wireless network. Prelim. Resp.
`
`30–33. Third, Rai’s base station does not determine that a first packet is
`
`targeted at a target device. Prelim. Resp. 33–35.
`
`We have reviewed Dr. Makowski’s testimony on these issues. Ex.
`
`1013, ¶¶ 59, 62, 64. Dr. Makowski testifies that the XTunnel protocol in Rai
`
`constitutes a first security protocol. Id. at ¶ 59. Dr. Makowski testifies that
`
`Rai’s disclosure relating to relaying PPP frames over an air link in
`
`association with fixed and dynamic IP address assignments corresponds to
`
`
`
`
`11
`
`
`
`IPR2014-00527
`Patent 7,496,674 B2
`
`claim elements directed to packets being targeted at the target device. Id. at
`
`¶ 62. Dr. Makowski testifies that Rai’s base station includes an access point
`
`82 which applies a MAC (media access control) layer protocol to packets
`
`sent over the air link. Id. at ¶ 64. Dr. Makowski testifies that the MAC
`
`protocol in Rai constitutes a second security protocol that is applied by the
`
`base station for the wireless network. Id. Based on this testimony and the
`
`underlying descriptions in Rai that Dr. Makowski refers to in his testimony,
`
`we find that Ericsson has made a threshold showing that these three
`
`elements are satisfied by Rai.
`
`2. Dependent Claims 10–12, 17, and 22.
`
`Ericsson submits claim charts that purport to read each element of
`
`dependent claims 10–12, 17, and 22 onto Rai. Pet. 34–41. Ericsson’s
`
`position is supported by testimony from Dr. Makowski. Ex. 1013 ¶ 64.
`
`In challenging the sufficiency of the Petition as to the dependent
`
`claims, Intellectual Ventures relies on the same arguments asserted as to the
`
`independent claims. For the same reasons discussed above, we find that
`
`Ericson has made a sufficient showing to warrant institution of a trial as to
`
`the dependent claims.
`
`D. Obviousness of Claims 2–9, 14–16, and
`19–21 over Rai and Davison
`
`In challenging the sufficiency of the Petition as to the unpatentability
`
`of dependent claims 2–9, 14–16, and 19–21 over Rai and Davison,
`
`Intellectual Ventures relies on the same arguments asserted as to
`
`independent claims 1, 13, and 18 over Rai discussed above. For the same
`
`reasons discussed above, we find that Ericson has made a sufficient showing
`
`to warrant institution of a trial as to these dependent claims.
`
`
`
`
`12
`
`
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`IPR2014-00527
`Patent 7,496,674 B2
`
`
`E. Other Asserted Grounds Are Redundant.
`
`Ericsson asserts the unpatentability of claims 1, 10, 13, and 18 as
`
`anticipated by Forslöw. Pet. 49–58. Ericsson also asserts the
`
`unpatentability of claims 2, 4, and 5 as obvious over Forslöw and Davison.
`
`Pet. 58–59. We have determined that Ericsson has demonstrated that there
`
`is a reasonable likelihood that it would prevail in showing that claims 1–6
`
`and 10–22 are anticipated. We have also determined that Ericsson has
`
`demonstrated that there is a reasonable likelihood that it would prevail in
`
`showing that claims 1–22 would have been obvious.
`
`In light of these determinations, we exercise our discretion and
`
`determine that Ericsson’s additional unpatentability grounds for claims 1, 2,
`
`4, 5, 10, 13, and 18 based on Forslöw, alone or in combination with
`
`Davison, are redundant to the grounds of unpatentability on which we
`
`institute inter partes review for the same claims. See 37 C.F.R. § 42.108(a).
`
`III.CONCLUSION
`
`For the foregoing reasons, we conclude that the information presented
`
`in the Petition establishes that there is a reasonable likelihood that Ericsson
`
`would prevail in showing that claims 1–22 are unpatentable. However, we
`
`have not made a final determination with respect to the patentability of these
`
`claims.
`
`In consideration of the foregoing, it is hereby:
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 1–22 of the ’674 patent on the
`
`following grounds of unpatentability:
`
`
`
`
`13
`
`
`
`IPR2014-00527
`Patent 7,496,674 B2
`
`
`A. Claims 1–6 and 10–22 under 35 U.S.C. § 102 as anticipated by
`
`Stadler;
`
`B. Claims 7–9 under 35 U.S.C. § 103(a) as obvious over Stadler and
`
`Davison;
`
`C. Claims 1, 10–13, 17, 18, and 22 under 35 U.S.C. § 103(a) as
`
`obvious over Rai; and,
`
`D. Claims 2–9, 14–16, and 19–21 under 35 U.S.C. § 103(a) as
`
`obvious over Rai and Davison.
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4 (2013), notice is hereby given of the institution of a trial; the
`
`trial commencing on the entry date of this Order; and,
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`identified in the Conclusion above and no other grounds set forth in the
`
`Petition.
`
`
`
`PETITIONER:
`
`Todd Baker
`cpdocketbaker@oblon.com
`
`Robert Mattson
`cpdocketmattson@oblon.com
`
`
`PATENT OWNER:
`
`Herbert Hart
`hhart@mcandrews-ip.com
`
`Jonathan Sick
`jsick@mcandrews-ip.com
`
`
`
`
`
`14
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`
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`IPR2014-00527
`IPR2014-00527
`Patent 7,496,674 B2
`Patent 7,496,674 B2
`
`
`
`
`
`
`15
`15
`
`
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