throbber
Trials@uspto.gov
`571–272–7822
`
`
`
`Paper 48
`Entered: January 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HTC CORPORATION, HTC AMERICA, ZTE (USA), INC.,
`PANTECH CO., LTD., PANTECH WIRELESS, INC.,
`LG ELECTRONICS, INC., and LG ELECTRONICS U.S.A., INC.,
`Petitioner,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01133
`Patent 7,218,923 B2
`_______________
`
`
`
`Before JENNIFER S. BISK, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`

`
`IPR2014-01133
`Patent 7,218,923 B2
`
`
`A.
`
`Background
`
`I. INTRODUCTION
`
`NEC Corporation of America, NEC Mobile Communications, Ltd.,1
`
`HTC Corporation, HTC America, ZTE (USA), Inc., Pantech Co., Ltd.,
`
`Pantech Wireless, Inc., LG Electronics, Inc., and LG Electronics U.S.A., Inc.
`
`(collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an
`
`inter partes review of claims 1–5, 8, 9, 24–26, 31, 33, 39, and 40 of U.S.
`
`Patent No. 7,218,923 B2 (Ex. 1001, “the ’923 patent”). Cellular
`
`Communications Equipment, LLC (“Patent Owner”) filed a Preliminary
`
`Response (Paper 9, “Prelim. Resp.”) to the Petition. On January 15, 2015,
`
`we instituted an inter partes review of claims 1, 2, 4, 5, 8, 24, 25, and 31
`
`(“the challenged claims”) of the ’923 patent on the following grounds:
`
`Claim(s)
`1, 2, 4, 5, 8,
`24, 25, and 31
`
`1, 2, 4, 5, 8,
`24, 25, and 31
`
`Applied References(s)
`Statutory Basis
`35 U.S.C. § 102(b) U.K. Patent Pub. No. 2376766
`(published Dec. 24, 2002) (Ex. 1008,
`“D’Aviera”)
`35 U.S.C. § 103(a) U.S. Patent Pub. No. 2002/0065869
`A1 (published May 30, 2002) (Ex.
`1010, “Calder”), and U.S. Patent No.
`7,836,494 B2 (issued Nov. 16, 2010)
`(Ex. 1007, “Richardson”)
`
`Paper 10 (“Dec. on Inst.”), 17.
`
`After institution, Patent Owner filed a Response (Paper 27, “PO
`
`Resp.”) to the Petition, and Petitioner filed a redacted Reply (Paper 37, “Pet.
`
`Reply”) and a sealed Reply (Paper 38) to the Response. An oral hearing was
`
`
`1 NEC Mobile Communications, Ltd. was formerly known as NEC CASIO
`Mobile Communications, Ltd. Paper 8, 2. NEC Corporation of America
`and NEC Mobile Communications, Ltd. were dismissed on February 12,
`2015. Paper 15, 2–3.
`
`2
`
`

`
`IPR2014-01133
`Patent 7,218,923 B2
`
`held on August 26, 2015, and a transcript of the hearing is included in the
`
`record. Paper 47 (“Tr.”).
`
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons set forth below, Petitioner has not
`
`shown by a preponderance of the evidence that claims 1, 2, 4, 5, 8, 24, 25,
`
`and 31 of the ’923 patent are unpatentable.
`
`B.
`
`Related Proceedings
`
`The parties indicate that the ’923 patent is the subject of several cases
`
`in the United States District Court for the Eastern District of Texas. Pet. 1–
`
`2; Paper 5, 2–3.
`
`C.
`
`The ’923 Patent
`
`The ’923 patent relates to controlling the behavior of applications
`
`residing in a communication terminal, especially in a mobile terminal. Ex.
`
`1001, col. 1, ll. 6–10. According to the ’923 patent, the availability of open
`
`development platforms allows independent developers to design new
`
`applications for mobile terminals and users to download those new
`
`applications to their mobile terminals. Id. at col. 1, ll. 31–37. One drawback
`
`to the use of open development platforms for mobile terminals is that it
`
`allows developers to create fraudulent applications that behave contrary to
`
`agreements made with network operators. Id. at col. 1, ll. 38–47.
`
`To solve this problem, the ’923 patent describes a controlling entity
`
`residing in the communication terminal. Id. at col. 1, ll. 59–60. At least
`
`some of the outbound messages generated by an application in the
`
`communication terminal are diverted to the controlling entity on their way
`
`from the application to the network. Id. at col. 1, ll. 60–63. The controlling
`
`entity then evaluates whether any changes need to be made to the behavior
`
`3
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`
`IPR2014-01133
`Patent 7,218,923 B2
`
`of the application. Id. at col. 1, ll. 63–65. For example, the controlling
`
`entity may modify the message or prevent the message from being sent. Id.
`
`at col. 1, l. 65–col. 2, l. 1.
`
`D.
`
`Illustrative Claim
`
`
`
`Claims 1 and 24 are independent. Claim 1 is reproduced below.
`
`1. A method for controlling application programs in a
`communication terminal, the method comprising:
`
`sending messages from an application program towards a
`communication network, the application program residing in a
`communication terminal;
`
`diverting a message of the messages to a controlling
`entity residing in the communication terminal; and
`
`based on the message, controlling in the controlling
`entity whether the application program behaves in a
`predetermined manner in the communication terminal, the
`controlling being performed before the message is transmitted
`from the communication terminal to the communication
`network.
`
`Id. at col. 9, ll. 10–22.
`
`II. ANALYSIS
`
`A.
`
`Identification of Real Parties in Interest
`
`The Petition identifies several real parties in interest. Pet. 1. Based
`
`on the information in the Petition and Preliminary Response, we did not
`
`identify any issues under 35 U.S.C. § 312(a)(2) or § 315(b), and we
`
`instituted an inter partes review. See Dec. on Inst. 2. Patent Owner argues
`
`in its Response that NEC Corporation and HTC America are real parties in
`
`interest that are not identified in the Petition. PO Resp. 3. According to
`
`Patent Owner, the Decision on Institution should be vacated because, under
`
`35 U.S.C. § 312(a)(2), a petition that does not identify all the real parties in
`
`4
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`

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`IPR2014-01133
`Patent 7,218,923 B2
`
`interest cannot be considered. PO Resp. 11, 19. For the reasons discussed
`
`below, we do not vacate the Decision on Institution.
`
`1.
`
`NEC Corporation
`
`The Petition identifies NEC Corporation of America (“NEC
`
`America”) and NEC Mobile Communications, Ltd.2 (“NEC Mobile”) as real
`
`parties in interest. Pet. 1. Patent Owner argues that the Petition also should
`
`have identified NEC Corporation as a real party in interest because NEC
`
`Corporation controlled the participation of NEC America and NEC Mobile
`
`in this case. PO Resp. 9–10. Specifically, Patent Owner argues that NEC
`
`Corporation executed a Settlement Agreement with Patent Owner that
`
`required NEC America and NEC Mobile to withdraw from this case. Id. at
`
`10. Patent Owner also argues that certain statements in the Motion to
`
`Terminate NEC America and NEC Mobile demonstrate that NEC
`
`Corporation controlled the participation of NEC America and NEC Mobile
`
`in this case. Id. at 9–10.
`
`Patent Owner and NEC Corporation executed the Settlement
`
`Agreement that allegedly demonstrates NEC Corporation’s control with
`
`respect to this case on November 17, 2014. Id. at 6. Because Patent Owner
`
`is a party to the Settlement Agreement, Patent Owner knew of its terms at
`
`that time. Id. Thus, Patent Owner could have raised the issue of whether
`
`NEC Corporation is a real party in interest when the Settlement Agreement
`
`was executed, but did not. Patent Owner, NEC America, and NEC Mobile
`
`filed the Motion to Terminate that allegedly demonstrates NEC
`
`Corporation’s control with respect to this case on February 6, 2015. Paper
`
`
`2 NEC Mobile Communications, Ltd. was formerly known as NEC CASIO
`Mobile Communications, Ltd. Paper 8, 2.
`
`5
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`

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`IPR2014-01133
`Patent 7,218,923 B2
`
`13. Because Patent Owner signed the Motion to Terminate, Patent Owner
`
`knew of the statements therein at that time. Id. at 7–8. Thus, Patent Owner
`
`also could have raised the issue of whether NEC Corporation is a real party
`
`in interest when the Motion to Terminate was filed, but did not.
`
`Patent Owner instead waited until after we granted the Motion to
`
`Terminate and dismissed NEC America and NEC Mobile from this case to
`
`argue that NEC Corporation had controlled their participation. Ex. 2002,
`
`19:18–25:18. The result of Patent Owner’s delay is that the parties whose
`
`conduct is in question no longer are involved in this case. Patent Owner
`
`previously assured the remaining parties and the Board that “NEC’s
`
`termination from the IPRs [would] have little, if any, impact on the
`
`remaining parties or the Board.” Paper 13, 5. Yet, now, Patent Owner seeks
`
`the extraordinary remedy of terminating this case in its entirety based on
`
`statements made in the documents that secured the dismissal of NEC
`
`America and NEC Mobile (documents which the remaining parties did not
`
`sign). Given Patent Owner’s delay and previous assurances regarding the
`
`dismissal of NEC America and NEC Mobile, we decline to terminate this
`
`case with respect to the remaining parties. See 37 C.F.R. § 42.12.
`
`2.
`
`HTC America
`
`Patent Owner argues that HTC America should have been identified
`
`as a real party in interest in the Petition because of the relationship between
`
`HTC America and HTC Corporation. PO Resp. 13–19. Patent Owner’s
`
`argument is not persuasive because the Petition already identifies HTC
`
`America as a real party in interest. Pet. 1.
`
`6
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`

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`IPR2014-01133
`Patent 7,218,923 B2
`
`
`B.
`
`Claim Construction
`
`The claims of an unexpired patent are interpreted using the broadest
`
`reasonable interpretation in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793
`
`F.3d 1268, 1278–79 (Fed. Cir. 2015). We determine that no claim terms
`
`require express construction.
`
`C.
`
`Anticipation of Claims 1, 2, 4, 5, 8, 24, 25, and 31
`
`Petitioner argues that claims 1, 2, 4, 5, 8, 24, 25, and 31 are
`
`anticipated by D’Aviera. Pet. 34. A claim is anticipated if each limitation of
`
`the claim is disclosed in a single prior art reference arranged as in the claim.
`
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
`
`We have considered the parties’ arguments and supporting evidence, and we
`
`determine that Petitioner has not shown by a preponderance of the evidence
`
`that claims 1, 2, 4, 5, 8, 24, 25, and 31 are anticipated by D’Aviera.
`
`Independent claim 1 recites “sending messages from an application
`
`program towards a communication network,” “diverting a message of the
`
`messages to a controlling entity,” and “based on the message, controlling in
`
`the controlling entity whether the application program behaves in a
`
`predetermined manner.” Ex. 1001, col. 9, ll. 10–22. Independent claim 24
`
`recites “an application program configured to send messages towards a
`
`communication network,” “a diverting unit configured to divert a message of
`
`the messages sent from the application program and destined for the
`
`communication network to a controlling entity,” and “wherein the
`
`controlling entity is configured to control, based on the message and before
`
`the message is transmitted to the communication network, whether the
`
`7
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`IPR2014-01133
`Patent 7,218,923 B2
`
`application program behaves in a predetermined manner.” Id. at col. 10, l.
`
`58–col. 11, l. 5.
`
`Petitioner argues that D’Aviera discloses an isolator engine that
`
`intercepts a message sent by an application program towards the Internet and
`
`then controls whether the intercepted message is sent to the Internet. Pet.
`
`35–36; Ex. 1008, 3:21–29, 6:14–22. Petitioner relies on the isolator engine
`
`in D’Aveira as disclosing the diverting and controlling steps in claim 1, and
`
`the diverting unit and controlling entity in claim 24. Pet. 35–36, 38–39; Pet.
`
`Reply 3–4; Ex. 2020, 24:4–7, 25:23–25. Patent Owner argues that the
`
`diverting and controlling steps in claim 1 are performed by separate
`
`components, and that the diverting unit and controlling entity in claim 24 are
`
`separate components. PO Resp. 32. Patent Owner argues that Petitioner
`
`does not show that D’Aviera discloses a separate component for the
`
`diverting limitation in the challenged claims. Id. We agree with Patent
`
`Owner.
`
`The claims of the ’923 patent indicate that the diverting and
`
`controlling steps in claim 1 are performed by separate components, and that
`
`the diverting unit and controlling entity in claim 24 are separate components.
`
`Claim 24, for example, recites the diverting unit and the controlling entity
`
`separately, and, thus, indicates that those elements are distinct components.
`
`Ex. 1001, col. 10, l. 62–col. 11, l. 3; see Becton, Dickinson & Co. v. Tyco
`
`Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a
`
`claim lists elements separately, ‘the clear implication of the claim language’
`
`is that those elements are ‘distinct component[s]’ of the patented
`
`invention.”). Claim 24 also specifies that the diverting unit is configured to
`
`divert a message “to” the controlling entity, which further indicates that the
`
`8
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`IPR2014-01133
`Patent 7,218,923 B2
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`diverting unit is separate from the controlling entity. Ex. 1001, col. 10, ll.
`
`62–65; see Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1299 (Fed.
`
`Cir. 2015) (“Not only are the ‘two other computers’ recited independently
`
`from, and in addition to, the gateway and caching computer, the word ‘other’
`
`denotes a further level of distinction.”).3 Similarly, claim 1 recites diverting
`
`a message “to” a controlling entity and then controlling the application
`
`program “in” the controlling entity, which indicates that the diverting step is
`
`performed by something other than the controlling entity.4 Ex. 1001, col. 9,
`
`ll. 15–22; see NTP, Inc. v. Research in Motion, Ltd., 419 F.3d 1282, 1300
`
`(Fed. Cir. 2005) (holding that the “originating processor” and “gateway
`
`switch” are separate components because, inter alia, the claim language
`
`shows that information “is transmitted from an ‘originating processor’ to a
`
`gateway switch), abrogated on other grounds by IRIS Corp. v. Japan
`
`Airlines Corp., 769 F.3d 1359, 1361 n.1 (Fed. Cir. 2014).
`
`
`
`The specification of the ’923 patent confirms that the diverting and
`
`controlling steps in claim 1 are performed by separate components, and that
`
`the diverting unit and controlling entity in claim 24 are separate components.
`
`In one embodiment, the ’923 patent discloses an SIP protocol stack as the
`
`diverting unit and a trusted agent as the controlling entity. Ex. 1001, col. 2,
`
`ll. 9–10, col. 4, ll. 51–63, col. 6, ll. 20–26, Figs. 2, 6. In another
`
`embodiment, the ’923 patent discloses a middleware modification module
`
`residing between the application programs and the SIP protocol stack as the
`
`
`3 Cf. Retractable Techs., Inc. v. Becton, Dickson & Co., 653 F. 3d 1296,
`1303 (Fed. Cir. 2011) (holding that the claim language indicates that the
`“needle holder” and “retainer member” need not be separate components).
`4 Neither party argues that claim 1 should be treated differently than claim
`24 because claim 1 is a method claim.
`
`9
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`IPR2014-01133
`Patent 7,218,923 B2
`
`diverting unit. Id. at col. 6, ll. 49–61, Figs. 7, 8. In both embodiments, the
`
`diverting unit and the controlling entity are described as being separate
`
`components. Id. at col. 1, ll. 59–60, col. 4, ll. 51–63, col. 6, ll. 20–26, col. 6,
`
`ll. 49–61, col. 7, ll. 9–12, Figs. 2, 6–8; see Microsoft, 789 F.3d at 1299
`
`(“And in each instance where it is used, the phrase ‘two other computers’
`
`describes components that are separate and distinct from the gateway and the
`
`caching computer.”).5 For example, Figures 2 and 6–8 of the ’923 patent
`
`show that the SIP protocol stack and middleware modification module are
`
`separate from the trusted agent. Ex. 1001, Figs. 2, 6–8; see Microsoft, 789
`
`F.3d at 1300 (“The figures of the ’717 patent separately identify and number
`
`each component of the system.”). Those figures also show that the trusted
`
`agent may reside in a tamper resistant area of the terminal that is separate
`
`from the area of the terminal where the SIP protocol stack and middleware
`
`modification module reside. Ex. 1001, col. 3, ll. 60–63, Figs. 2, 6–8.
`
`Petitioner does not argue that the claims or the specification of the
`
`’923 patent indicate that the diverting and controlling steps in claim 1 can be
`
`performed by the same component or that the diverting unit and the
`
`controlling entity in claim 24 can be the same component. Pet. Reply 1–8.
`
`Petitioner instead argues that “it is well-established that the same structure
`
`can be relied upon to satisfy multiple claim limitations.” Id. at 2. Petitioner
`
`cites to two cases as support for its argument, In re Kelley, 305 F.2d 909
`
`(CCPA 1962), and Intellectual Property Development, Inc. v. UA-Columbia
`
`
`5 See also Becton, Dickinson, 616 F.3d at 1254–55; cf. Powell v. Home
`Depot U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011) (holding that
`the specification discloses that the “cutting box” may also function as a
`“dust collection structure,” and, thus, the claim terms do not require separate
`components).
`
`10
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`IPR2014-01133
`Patent 7,218,923 B2
`
`Cablevision of Westchester, Inc., 336 F.3d 1308 (Fed. Cir. 2003). Pet. Reply
`
`2. However, neither case supports Petitioner’s broad statement that the same
`
`structure always can be relied upon to satisfy multiple claim limitations. In
`
`Kelley, the U.S. Court of Customs and Patent Appeals determined that it was
`
`reasonable to interpret one structure as supporting two recited functions
`
`because the specification described that structure as performing both
`
`functions. 305 F.2d at 913–14. Similarly, in Intellectual Property
`
`Development, the Federal Circuit determined that the same structure
`
`corresponded to two means-plus-function limitations because the
`
`specification described that structure as performing the functions recited in
`
`both limitations. 336 F.3d at 1318–20. In contrast, the specification of the
`
`’923 patent consistently describes separate components for the diverting and
`
`controlling limitations. Ex. 1001, col. 1, ll. 59–60, col. 4, ll. 51–63, col. 6,
`
`ll. 20–26, col. 6, ll. 49–61, col. 7, ll. 9–12, Figs. 2, 6–8.
`
`
`
`Petitioner also argues that one part of the isolator engine in D’Aviera
`
`diverts a message and another part controls the message. Pet. Reply 5, 7.
`
`According to Petitioner, to divert a message sent from an application
`
`program, the isolator engine is configured to listen to a particular port
`
`number used by the application program. Id. at 5; Ex. 1008, 5:3–14. To
`
`control an intercepted message, the isolator engine compares the intercepted
`
`message to a file containing a privacy list to determine whether the
`
`intercepted message contains any of the items in the privacy list. Pet. Reply
`
`7; Ex. 1008, 3:26–29, 6:14–22. Petitioner’s argument is not persuasive.
`
`Petitioner describes the different functions performed by the isolator engine,
`
`but does not show that the isolator engine is two separate components.
`
`11
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`
`
`Therefore, because Petitioner does not identify separate components
`
`in D’Aviera for performing the diverting and controlling steps in claim 1, or
`
`for the diverting unit and controlling entity in claim 24, Petitioner has not
`
`shown by a preponderance of the evidence that D’Aviera anticipates claims
`
`1, 2, 4, 5, 8, 24, 25, and 31.
`
`D. Obviousness of Claims 1, 2, 4, 5, 8, 24, 25, and 31
`
`Petitioner argues that claims 1, 2, 4, 5, 8, 24, 25, and 31 would have
`
`been obvious over Calder and Richardson. Pet. 43. A claim is unpatentable
`
`as obvious under 35 U.S.C. § 103(a) if the differences between the claimed
`
`subject matter and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which the subject matter pertains. KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations,
`
`including: (1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the prior art; (3) the level of ordinary
`
`skill in the art; and (4) any objective indicia of non-obviousness. Graham v.
`
`John Deere Co., 383 U.S. 1, 17–18 (1966). We have considered the parties’
`
`arguments and supporting evidence, and we determine that Petitioner has not
`
`shown by a preponderance of the evidence that claims 1, 2, 4, 5, 8, 24, 25,
`
`and 31 would have been obvious over Calder and Richardson.
`
`Petitioner argues that Calder teaches an interception module that
`
`intercepts a system command sent by an application program toward an
`
`operating system and then modifies the intercepted system command. Pet.
`
`47; Ex. 1010 ¶¶ 7, 71, 73, 106, 158. Petitioner relies on the interception
`
`module in Calder as teaching the diverting and controlling steps in claim 1,
`
`12
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`IPR2014-01133
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`and the diverting unit and controlling entity in claim 24. Pet. 47, 51; Pet.
`
`Reply 9; Ex. 2020, 41:1–4, 41:22–24, 44:13–19. Patent Owner argues that
`
`Petitioner does not show that Calder teaches a separate component for the
`
`diverting limitation in the challenged claims. PO Resp. 40. We agree with
`
`Patent Owner.
`
`As discussed above, the claims and the specification of the ’923 patent
`
`indicate that the diverting and controlling steps in claim 1 are performed by
`
`separate components, and that the diverting unit and controlling entity in
`
`claim 24 are separate components. See supra Section II.B. Petitioner does
`
`not identify separate components in Calder and Richardson for performing
`
`the diverting and controlling steps in claim 1, or for the diverting unit and
`
`controlling entity in claim 24. Pet. 47, 51; Pet. Reply 9; Ex. 2020, 41:1–4,
`
`41:22–24, 44:13–19. Petitioner also does not argue that using separate
`
`components to divert a message and control an application program would
`
`have been obvious to one of ordinary skill in the art based on Calder and
`
`Richardson. Pet. 43–55; Pet. Reply 9–12; Ex. 1011 ¶¶ 85–86. Therefore,
`
`Petitioner has not shown by a preponderance of the evidence that claims 1,
`
`2, 4, 5, 8, 24, 25, and 31 would have been obvious over Calder and
`
`Richardson.
`
`E.
`
`Petitioner’s Motion to Exclude
`
`Petitioner filed a Motion to Exclude Exhibits 2006–2019 (Paper 41),
`
`to which Patent Owner filed an Opposition (Paper 43), and Petitioner filed a
`
`Reply (Paper 45). Petitioner’s Motion to Exclude Exhibits 2006–2019 is
`
`dismissed as moot because this Decision does not rely on Exhibits 2006–
`
`2019.
`
`13
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`
`F.
`
`Petitioner’s Motion to Seal
`
`Petitioner filed a Motion to Seal. Paper 35 (“Mot.”). Petitioner
`
`requests entry of a protective order and seeks to seal portions of Petitioner’s
`
`Reply. Id. at 1, 3. For the reasons discussed below, the Motion to Seal is
`
`granted.
`
`The parties agree to the default protective order found in Appendix B
`
`of the Office Patent Trial Practice Guide with one modification. Id. at 3.
`
`Specifically, the parties limit the individuals who can access confidential
`
`information to outside counsel for the parties, the Office, and their support
`
`personnel. Id. We hereby enter the Protective Order filed as Paper 36 in this
`
`proceeding, which governs the treatment and filing of confidential
`
`information in this proceeding.
`
`There is a strong public policy that favors making information filed in
`
`an inter partes review open to the public. Garmin Int’l, Inc. v. Cuozzo
`
`Speed Techs. LLC, IPR2012-00001, Paper 34, 1–2 (PTAB Mar. 14, 2013).
`
`The standard for granting a motion to seal is good cause. 37 C.F.R. § 42.54.
`
`That standard includes showing that the information addressed in the motion
`
`to seal is truly confidential, and that such confidentiality outweighs the
`
`strong public interest in having the record open to the public. See Garmin
`
`IPR2012-00001, Paper 34, 2–3. The portions of the Reply that Petitioner
`
`seeks to seal relate to the terms of the confidential Settlement Agreement
`
`between Patent Owner and NEC Corporation. Mot. 2–3. We have reviewed
`
`the Motion to Seal, the document sought to be sealed, and the redacted,
`
`public version of that document, and we determine that good cause exists to
`
`grant Petitioner’s Motion to Seal.
`
`14
`
`

`
`IPR2014-01133
`Patent 7,218,923 B2
`
`
`III. CONCLUSION
`
`Petitioner has not shown by a preponderance of the evidence that
`
`claims 1, 2, 4, 5, 8, 24, 25, and 31 are unpatentable under 35 U.S.C.
`
`§§ 102(b), 103(a).
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that claims 1, 2, 4, 5, 8, 24, 25, and 31 of the ’923 patent
`
`are not shown unpatentable;
`
`FURTHER ORDERED that Petitioner’s Motion to Exclude is
`
`dismissed as moot;
`
`FURTHER ORDERED that Petitioner’s Motion to Seal is granted;
`
`FURTHER ORDERED that the Protective Order filed as Paper 36 is
`
`entered in this proceeding;
`
`FURTHER ORDERED that the identified portions of Petitioner’s
`
`Reply (Paper 38) will be sealed; and
`
`FURTHER ORDERED that, because this is a Final Written Decision,
`
`parties to the proceeding seeking judicial review of the decision must
`
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`15
`
`

`
`IPR2014-01133
`Patent 7,218,923 B2
`
`PETITIONER:
`
`Alan A. Wright
`Nathan H. Cristler
`Steve B. Kelber
`H.C. PARK & ASSOCIATES, PLC
`awright@park-law.com
`ncristler@park-law.com
`skelber@park-law.com
`
`Baldine Paul
`William J. Barrow
`Robert G. Pluta
`Amanda K. Streff
`MAYER BROWN LLP
`bpaul@mayerbrown.com
`wbarrow@mayerbrown.com
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`
`Steven A. Moore
`Richard W. Thill
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`steve.moore@pillsburylaw.com
`richard.thill@pillsburylaw.com
`LOEU@pillsburylaw.com
`
`PATENT OWNER:
`
`Barry J. Bumgardner
`John Murphy
`NELSON BUMGARDNER, P.C.
`barry@nelbum.com
`CCE-IPR@nelbum.com
`
`Amedeo F. Ferraro
`MARTIN & FERRARO, LLP
`aferraro@martinferraro.com
`
`16

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