Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: March 31, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SECURENET TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`ICONTROL NETWORKS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01911 (Patent 8,478,844 B2)
`Case IPR2016-01916 (Patent 8,478,844 B2)1
`____________
`
`
`
`Before KEN B. BARRETT, PATRICK M. BOUCHER, and
`MINN CHUNG, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`1 This Decision will be entered in each case. The parties are not authorized
`to use this caption style.
`
`
`571-272-7822
`
`Paper 9
`Entered: March 31, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SECURENET TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`ICONTROL NETWORKS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01911 (Patent 8,478,844 B2)
`Case IPR2016-01916 (Patent 8,478,844 B2)1
`____________
`
`
`
`Before KEN B. BARRETT, PATRICK M. BOUCHER, and
`MINN CHUNG, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`1 This Decision will be entered in each case. The parties are not authorized
`to use this caption style.
`
`
`
`IPR2016-01911 and IPR2016-01916
`Patent 8,478,844 B2
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`SecureNet Technologies, LLC (“Petitioner”) filed, in IPR2016-01911,
`
`a Petition requesting inter partes review of U.S. Patent No. 8,478,844 B2
`(“the ’844 patent,” Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the
`patentability of claims 1–4, 6–24, and 41 of the ’844 patent on the grounds
`of obviousness under 35 U.S.C. § 103. Icontrol Networks, Inc. (Patent
`Owner) filed a Preliminary Response to the Petition. Paper 6 (Prelim.
`Resp.).
`Petitioner filed, in IPR2016-01916, a Petition requesting inter partes
`
`review of the ’844 patent and challenging the patentability of claims 25–40
`and 42–50 on the grounds of obviousness under 35 U.S.C. § 103. Paper 1
`(IPR2016-01916). Patent Owner filed a Preliminary Response to the
`Petition. Paper 6 (IPR2016-01916).
`The dispositive issues in the two inter partes review cases are
`
`substantively similar. Unless otherwise indicated, citations herein are to the
`papers filed in IPR2016-01911.
`An inter partes review may not be instituted “unless . . . the
`
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered
`the arguments and evidence presented by Petitioner and Patent Owner, we
`determine that Petitioner has not demonstrated a reasonable likelihood that it
`would prevail in establishing the unpatentability of the challenged claims of
`the ’844 patent.
`
`2
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`IPR2016-01911 and IPR2016-01916
`Patent 8,478,844 B2
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`
`B. Related Proceedings
`One or both parties identify, as matters involving or related to the
`
`’844 patent, Icontrol Networks, Inc. v. SecureNet Technologies, LLC,
`No. 15-807-GMS (D. Del.), and Patent Trial and Appeal Board cases
`IPR2016-01909 (U.S. Patent No. 8,073,931), IPR2016-01919 (U.S. Patent
`No. 8,473,619), and IPR2016-01920 (U.S. Patent No. 8,473,619). Pet. 1–2;
`Paper 4.
`
`C. The ’844 Patent
`The ’844 patent is titled “Forming a Security Network Including
`
`Integrated Security System Components and Network Devices.” According
`to the Abstract of the ’844 patent:
`An integrated security system is described that integrates
`broadband and mobile access and control with conventional
`security systems and premise devices to provide a tri-mode
`security network (broadband, cellular/GSM, POTS access) that
`enables users to remotely stay connected to their premises. The
`integrated security system, while delivering remote premise
`monitoring and control functionality to conventional monitored
`premise protection, complements existing premise protection
`equipment. The integrated security system integrates into the
`premise network and couples wirelessly with the conventional
`security panel, enabling broadband access to premise security
`systems.
`The ’844 patent further explains “[t]he integrated security system provides a
`complete system that integrates or layers on top of a conventional host
`security system available from a security system provider.” Ex. 1001, 5:19–
`21. Figure 1 of the ’844 is reproduced below:
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`Figure 1 is a block diagram of an embodiment of the integrated security
`system. Id. at 3:7–8. The integrated security system includes gateway 102
`in communication with security servers 104. Id. at 6:53–57. At the
`customer premises, the gateway connects and manages the home security
`devices. Id. at 6:57–59.
`
`The ’844 patent also explains that “[t]he server components provide
`access to, and management of, the objects associated with an integrated
`security system installation.” Id. at 8:29–31.
`
`D. Illustrative Claim
`Of the challenged claims of the ’844 patent, claims 1 and 48–50 are
`
`independent claims. The remaining challenged claims directly or indirectly
`depend from Claim 1. Claim 1, reproduced below with bracketed
`annotations2 inserted for identifying specific limitations, is illustrative:
`
`
`2 We utilize Petitioner’s annotations for claim 1 but have retained the
`paragraphing from the issued patent.
`
`4
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`Patent 8,478,844 B2
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`
`1. A method comprising:
`
`[a] coupling a gateway to a local area network located in a
`first location and a security server in a second location, [b]
`wherein the first location includes a security system comprising
`a plurality of security system components;
`
`[c] automatically discovering the plurality of security
`system components at the gateway and establishing a first
`communication channel between the gateway and the plurality of
`security system components;
`
`[d] automatically discovering network devices at the
`gateway and establishing a second communication channel
`between the gateway and the network devices, [e] wherein the
`second communication channel is independent of the first
`communication channel;
`
`[f]
`forming a security network by electronically
`integrating into the gateway communications and functions of
`the network devices and the plurality of security system
`components;
`
`[g] receiving at the gateway security data from the
`plurality of security system components, device data of the
`network devices, and remote data from the security server;
`
`[h] generating processed data by processing at the gateway
`the security data, the device data, and the remote data;
`
`[i] determining a state change of the security system using
`the processed data; and
`
`[j] maintaining at the security server with use of the
`processed data objects corresponding to the plurality of security
`system components and the network devices.
`Ex. 1001, 46:28–55.
`
`E. Applied References
`Dates
`Reference
`Wimsatt US 2004/0260427 Al Filed Apr. 8, 2004;
`Published Dec. 23, 2004
`Filed Apr. 28, 2000;
`Issued June 17, 2003
`
`Johnson US 6,580,950 Bl
`
`Exhibit No.
`Ex. 1004
`
`Ex. 1005
`
`5
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`
`Naidoo
`
`Alexander US 6,748,343 B2
`
`Reference
`Severson US 4,951,029
`
`Dates
`Filed Feb. 16, 1988;
`Issued Aug. 21, 1990
`US 2003/0062997 Al Filed Oct. 2, 2001;
`Published Apr. 3, 2003
`Filed Sept. 28, 2001;
`Issued June 8, 2004
`Anthony US 2003/0137426 A1 Filed Jan. 17, 2003;
`Published July 24, 2003
`Petitioner also relies on the Declaration of Mr. James Parker, dated
`
`Sept. 30, 2016, (Ex. 1002) in support of its arguments.
`
`Exhibit No.
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts, in IPR2016-01911, the following grounds of
`
`unpatentability:
`Reference[s]
`Wimsatt, Johnson, and Severson
`Wimsatt, Johnson, Severson, and Naidoo
`Wimsatt, Johnson, Severson, Naidoo, and
`Anthony
`Petitioner asserts, in IPR2016-01916, the following grounds of
`
`unpatentability:
`Reference[s]
`Wimsatt, Johnson, Severson, and
`Alexander
`Wimsatt and Johnson
`
`Claim(s)
`Basis
`§ 103(a) 25–40, 42–47
`
`§ 103(a) 48–50
`
`Claim(s)
`Basis
`§ 103(a) 1–4, 6–17, 21
`§ 103(a) 18–20, 23, 24, 41
`§ 103(a) 22
`
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`
`II. ANALYSIS
`A. Claim Construction
`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. 37 C.F.R. § 42.100(b); see also Cuozzo
`Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the
`broadest reasonable construction 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 patent disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Petitioner does not propose an explicit claim construction for any
`term, asserting that every term should be given its plain and ordinary
`meaning. Pet. 4; cf. Prelim Resp. 9–10 (Patent Owner’s claim construction
`discussion). On this record and for purposes of this decision, we determine
`that no claim terms require express construction.
`
`B. The Alleged Obviousness of
`Claims 1–4, 6–17, and 21 Over Wimsatt, Johnson, and Severson
`Petitioner alleges that claims 1–4, 6–17, and 21 of the ’844 patent
`
`would have been obvious over Wimsatt, Johnson, and Severson. See Pet. 8–
`34 (addressing claim 1).
`1. Wimsatt (Ex. 1004)
`Wimsatt discloses “[a] home automation and control architecture
`
`having a contextually relevant user interface [where] [t]he user interface is
`generated on one of a plurality of control units located throughout a
`controlled environment such as a home or office building.” Ex. 1004 ¶ 12.
`“Automation and/or control application software executes on the control unit
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`to communicate control information such as commands, sensor messages,
`status messages, and the like with other control units as well as controlled
`systems (e.g., security systems, entertainment systems, HVAC systems, and
`the like).” Id. Wimsatt explains:
`The present invention is particularly useful in home automation
`environments because it builds on top of the vast array of
`controlled devices and subsystems that already exist for
`managing
`lighting,
`security
`systems, heating and air
`conditioning, window shades or curtains, pool heaters and
`filtration systems,
`lawn sprinklers, ornamental fountains,
`audio/visual equipment, and other appliances. Hence, while it is
`contemplated that the present invention may be adapted to handle
`special-purpose and proprietary controlled devices and
`subsystems, a particular advantage is that the present invention
`adapts to existing controlled devices and subsystems and
`leverages their advantages.
`Id. at ¶ 23. Figure 1 of Wimsatt is reproduced below:
`
`8
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`Figure 1 depicts a networked control environment in which Wimsatt’s
`invention is implemented. Id. at ¶ 15. Figure 1 shows a plurality of control
`panels 101, wireless access point/router 105, and wireless control
`panels 107. Id. at ¶¶ 34, 37. Controlled devices such as IP camera 109 may
`be directly connected to the network via hub 103. Id. at ¶ 38. Another type
`of controlled device is coupled to a particular control panel 101 or 107
`through a subsystem interface, for example, lighting control subsystem 113
`and entertainment control subsystem 115. Id. at 39. Alternatively, a
`subsystem interface may couple with the hub, such as analog subsystem
`interface 117. Id. at ¶ 40.
`2. Johnson (Ex. 1005)
`Johnson discloses an “Internet based home communications system
`
`for allowing a homeowner to monitor and control various features of their
`home from a distant location via a global computer network.” Ex. 1005,
`Abstr. Johnson discloses a system comprising a plurality of control devices,
`a control unit in communication with the devices and connected to the
`Internet, and a data center having server computers connected to the internet
`and the control unit. Id. at 2:8–14.
`The homeowner is capable of monitoring and controlling the
`control device within the home by accessing a web page
`displayed by the data center through a conventional web browser
`on a computer. The homeowner can view, monitor and control
`features of their home through the web page such as viewing
`interior images of their home or adjusting the thermostat for the
`interior of their home. In addition, the control unit may notify
`the appropriate supplier when propane or food becomes low
`within the home through the global computer network.
`Id. at 2:19–28. Control devices include “lighting controls, heating controls,
`moisture controls, freeze controls, pet feeding devices, propane gauge,
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`interior cameras, exterior cameras, security system, smoke alarm and various
`other devices.” Id. at 2:13–18.
`3. Severson (Ex. 1006)
`Severson discloses a programmable security alarm system including a
`
`system controller “which is programmably responsive to a plurality of
`distributed wireless and hardwired alarm sensors/transducers and which
`communicates with neighboring system controllers and a central station
`interactively monitoring a number of subscriber systems.” Ex. 1006, 1:5–
`12. Each system controller is programmable with sensor/transducer
`numbers, options, and features. Id. at 23:60–63. Severson explains:
`
`Even further and without human intervention, once the
`sensors transducers are initially programmed, each system
`controller may be operated to “self-learn” each of its sensors. In
`this mode as the sensors/transducers report to the controller for
`the first time and after the controller confirms the existence of a
`proper house code or unit number, they are logged into the
`controller's RAM memory. Human error is thus minimized even
`though during hand programming with the wireless key pad 13,
`the circuitry performs a similar subroutine to log the assigned
`[sensor/transducer] S/T numbers into RAM.
`Id. at 25:3–13.
`4. The Alleged Obviousness of Claim 1 in View of Wimsatt,
`Johnson, and Severson
`For reasons discussed below, Petitioner has not shown a reasonable
`
`likelihood that it would prevail in establishing unpatentability of
`independent claim 1 as obvious over Wimsatt, Johnson, and Severson.
`a) Limitation 1[c]
`Claim 1 recites: “automatically discovering the plurality of security
`
`system components at the gateway and establishing a first communication
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`channel between the gateway and the plurality of security system
`components.” Ex. 1001, 46:33–36.
`
`Petitioner asserts that one of ordinary skill would understand
`Wimsatt’s security system to include sensors (although “not illustrate[d]” in
`Wimsatt) and that those sensors would be the recited “security system
`components.” Pet. 13. Petitioner concedes that “Wimsatt does not explicitly
`disclose that its security system’s sensors are automatically discovered using
`this [Universal Plug-and-Play (UPnP)] process – it only explicitly discloses
`that the ‘security system’ is discovered.” Id. at 16. Petitioner then argues
`“[a] POSITA would have understood that discovering the security system
`would also include discovering its sensors.” Id. (citing Ex. 1002 ¶ 91).
`Patent Owner asserts (Prelim. Resp. 21), and we agree, that this argument
`from Petitioner is too conclusory to satisfy Petitioner’s burden. The cited
`portion of the expert testimony merely repeats, without adequate elaboration
`or explanation, Petitioner’s argument and, therefore, similarly is conclusory.
`See Ex. 1002 ¶ 91.
`
`Petitioner, arguing in the alternative, turns to Severson for the
`disclosure of a system having a controller that may “self-learn” sensors
`“without human intervention.” Pet. 16 (citing Ex. 1006, 25:3–13).
`Petitioner asserts:
`In describing a system installation process, Severson explains
`that the sensors and controller are mounted at the home and then
`“the controller
`is enabled and self-learns each of
`its
`sensors/transducers as they report their status.” (Ex. 1006,
`25:51-26:7; see also,
`id., 23:60-25:50.)
` As a result,
`“[i]nstallation time is thereby reduced with minimal potential
`installer error, due to the CPU self-learning its reporting
`sensors.” (Id., 25:51-26:7.) This is similar to the auto-discovery
`
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`process described in the ‘844 patent. (See, e.g., Ex. 1001, FIG.
`14, 24:66-26:5.)
`Pet. 16. Patent Owner disputes this contention, maintaining that Severson’s
`self-learning is not “automatically discovering” within the meaning of the
`claimed invention. Prelim. Resp. 22–23. Petitioner does not propose a
`construction for “automatically discovering,” but, as quoted above, merely
`asserts that Severson’s process is “similar” to that disclosed in the ’844
`patent. Pet. 16 (citing Ex. 1001, Fig. 14, 24:66–26:5). The process,
`however, described in the ’844 patent and upon which Petitioner relies,
`indicates that the first step after gateway power-up, and before entering
`“learn mode,” is for the gateway to “identify” accessible wireless security
`panels and wireless devices. Ex. 1001, 25:1–11, Fig. 14 (software sequences
`1420 and 1425). In contrast, as Patent Owner notes, Severson discloses that
`the sensors and controllers are initially programmed in a manual process.
`Prelim. Resp. 22–23; see also Ex. 1006, 25:3–6 (“Even further and without
`human intervention, once the sensors transducers are initially programmed,
`each system controller may be operated to ‘self-learn’ each of its sensors”).
`Severson’s controller “self-learns” the sensors when those sensors report
`their status. Ex. 1006, 25:62–65. Thus, Severson suggests that the sensors
`must first be identified for the controller before Severson’s controller “self-
`learns” those sensors “without human intervention.” Even if Severson’s
`process is “similar” to the learning process described in the ’844 patent,
`Petitioner has not persuaded us that Severson discloses the claimed
`“automatically discovering” feature as recited in claim 1.
`
`Petitioner contends that it would have been obvious to a person of
`ordinary skill in the art to combine the “auto-discovery disclosure” of
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`Severson with Wimsatt and Johnson “so that the control panel 101 in
`Wimsatt can auto-discover the security sensors in addition to the discovering
`the security system controller.” Pet. 16–17. Citing Severson and the Parker
`Declaration, Petitioner asserts that “[t]his would predictably result in an
`easier sensor installation process and reduce the likelihood of installer
`error.” Id. (citing Ex. 1002 ¶ 92; Ex. 1006, 26:5–7). Patent Owner argues
`that Petitioner’s contention is at odds with Wimsatt’s description that its
`control panels communicate with a security system, not the underlying
`security system components, such as the security sensors. Prelim. Resp. 24–
`25 (citing Ex. 1004 ¶¶ 5, 23, 30, 31, 58, 62, 65). Patent Owner asserts that,
`because “Wimsatt’s control panels are limited to functionality regarding the
`status of a security system” and do not communicate with or control
`individual security system components, Petitioner’s proposed modification
`would unnecessarily complicate installation, not simplify it. Id. at 25.
`
`We agree with Patent Owner that Wimsatt’s control panels do not
`communicate directly with the security system components, such as the
`sensors. Wimsatt is directed to providing control panels with consistent user
`interfaces to existing home subsystems, such as home automation systems
`and security systems. Ex. 1004 ¶¶ 3, 22, 23, 77. Hence, Wimsatt’s control
`panels discover the existing subsystems at the premises, such as a security
`system, and learn the details of the control interface of the subsystems, but
`do not in general discover or communicate with the components internal to
`the subsystems, such as the security system components or sensors. Id. ¶ 45.
`Indeed, Wimsatt describes that “[i]n most cases it is not necessary for every
`control panel 101/107 to have detailed knowledge of a particular controlled
`device or subsystem. Instead, it is sufficient to be aware of the existence of
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`each controlled device and the functionality available from that device.” Id.
`¶ 46 (emphases added). Furthermore, because Wimsatt contemplates adding
`or adapting its control panels “on top of” the existing security systems (id.
`¶ 23), Wimsatt’s discovery process would have expected that the sensors
`would have already been installed and the sensor installation process
`previously completed. Hence, the record indicates that Wimsatt is not
`concerned with sensor installation processes, such as those described in
`Severson. Petitioner does not explain why the combination of Wimsatt and
`Severson would nonetheless “predictably result in an easier sensor
`installation process and reduce the likelihood of installer error.” Pet. 17.
`The cited portion of the expert testimony repeats, without adequate
`elaboration or explanation, Petitioner’s unpersuasive argument and,
`therefore, similarly is unpersuasive. See Ex. 1002 ¶ 92.
`
`Petitioner’s argument that Severson “illustrates the ability and desire
`for similar controllers to automatically discover devices at the security
`component level” (Pet. 17) is similarly unpersuasive because Wimsatt is not
`concerned with discovering security system components.
`
`The rest of Petitioner’s arguments regarding the reasons to combine
`Wimsatt with Severson and Johnson are too conclusory to satisfy
`Petitioner’s burden. For example, similar to Petitioner’s conclusory
`contention discussed above, Petitioner asserts that “Wimsatt already
`discloses an automatic discovery process for learning the security system so
`it would be obvious to a POSITA to further discover the sensors that form
`part of that system.” Id. (citing Ex. 1002 ¶ 93). Petitioner also contends that
`“[a] POSITA would understand that adding an extra step in the automatic
`discovery process to include discovery of the sensors would be easy to
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`implement.” Id. (citing Ex. 1002 ¶ 93). The cited portion of the expert
`testimony again repeats, without adequate elaboration or explanation,
`Petitioner’s conclusory assertions. See Ex. 1002 ¶ 93. These conclusory
`statements are insufficient to provide the requisite “reasoned explanation” to
`justify combining Wimsatt with Severson and Johnson to teach
`“automatically discovering the plurality of security system components,” as
`recited in claim 1. See In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed.
`Cir. 2016).
`
`b) Limitation 1[j]
`Claim 1 further recites: “ maintaining at the security server with use
`
`of the processed data objects corresponding to the plurality of security
`system components and the network devices.” Ex. 1001, 46:53–55.
`
`Patent Owner argues that Petitioner’s analysis regarding this
`limitation is flawed and that Johnson does not disclose the recited “objects”
`maintained at the server. Prelim. Resp. 30–34.
`
`Petitioner maintains that the combination of Wimsatt and Johnson
`discloses this limitation. Pet. 31. Petitioner (Pet. 31–32) points to the
`webpage shown in Johnson’s Figure 3, which is reproduced below:
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`Figure 3 depicts “a browser containing the control page displaying some of
`the features of [Johnson’s] invention that allow the homeowner to monitor
`and control their home through a global computer network such as the
`Internet.” Ex. 1005, 3:30–33.
`
`Petitioner asserts:
`
`A POSITA would have understood that the icons
`illustrated on the above web page [of Johnson’s Figure 3]
`represent particular controlled devices located within the home
`in Wimsatt. (Ex. 1002, ¶ 124.) These icons are the claimed
`“objects” maintained at the data center 20 servers. For example,
`the icon labeled “camera” is an object maintained at the server
`corresponding to the IP camera 109. Similarly, the icons labeled
`“door” and “window” are objects maintained at the server
`corresponding to a door sensor and a window sensor,
`respectively.
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`Pet. 33. The cited expert testimony appears to be the same assertion with no
`elaboration or explanation for the bases of the opinion. See Ex. 1002 ¶ 124.
`
`Patent Owner argues that Mr. Parker’s “bald opinion” that one of
`ordinary skill would have understood the icons to represent particular
`controlled devices should be entitled to no weight. Prelim. Resp. 31. Patent
`Owner contends that Johnson does not describe the nature of the icons. Id.
`Patent Owner also argues that there is depicted in Figure 3 only one each of
`a camera icon, a window icon, and a door icon, and persuasively argues that
`one would expect there to be more than one of each of these items in a house
`and, therefore, it would be illogical for the icons to correspond to a
`particular security system component as alleged. Id. at 31–32. After a
`review of the portions of Johnson cited by Petitioner, we are unable to
`discern any sufficient elaboration regarding these icons that persuades us
`that Petitioner’s proposition is correct. See Pet. 31–34. Additionally, and as
`Patent Owner notes, Petitioner apparently identifies Wimsatt’s IP camera
`109 as corresponding to the camera icon in Johnson’s system. Prelim. Resp.
`31 (citing Pet. 33). This mixing-and-matching of references’ elements
`without adequate explanation is confusing rather than clarifying.
`
`Accordingly, we are not persuaded that the icons in Johnson’s figure
`would be understood by a person of ordinary skill in the art to correspond to
`recited objects corresponding to the security system components and
`network devices.
`
`Even were Johnson’s icons found to be the claimed “objects,”
`Petitioner does not persuasively demonstrate that those icons are maintained
`at the security server. Cf. Prelim. Resp. 33–34 (Patent Owner arguing that
`“[t]here is no explanation [in Johnson] regarding where those icons are
`
`17
`
`
`
`IPR2016-01911 and IPR2016-01916
`Patent 8,478,844 B2
`
`maintained or what they even represent.”). Indeed, Petitioner does not cite
`any disclosure in Johnson describing the “icons” in Figure 3 as “objects”
`maintained at the server. Petitioner’s conclusory assertion and the
`corresponding equally conclusory testimony from Mr. Parker that “[t]hese
`icons [of Johnson] are the claimed ‘objects’ maintained at the data center 20
`servers” are inadequate and not persuasive.
`c) Summary
`Petitioner has not demonstrated a reasonable likelihood of prevailing
`
`in showing that the subject matter of claim 1 would have been obvious over
`Wimsatt, Johnson, and Severson.
`5. The Alleged Obviousness of Claims 2–4, 6–17, and 21 Over
`Wimsatt, Johnson, and Severson
`Claims 2–4, 6–17, and 21 each depends directly or indirectly from
`
`claim 1. Petitioner’s arguments against these claims refer to and rely on the
`same contentions discussed above regarding the obviousness of claim 1
`based on Wimsatt, Johnson, and Severson. See Pet. 34–49, 53. Thus, for the
`same reasons discussed above, Petitioner has not shown a reasonable
`likelihood of prevailing in showing that claims 2–4, 6–17, and 21 would
`have been obvious over Wimsatt, Johnson, and Severson.
`
`C. The Alleged Obviousness of Claims 18–20, 23, 24, and 41 Over
`Wimsatt, Johnson, Severson, and Naidoo, and of Claim 22 Over
`Wimsatt, Johnson, Severson, Naidoo, and Anthony
`Claims 18–20, 22, 23, 24, and 41 each depends directly or indirectly
`
`from claim 1. Petitioner’s arguments against these claims refer to and rely
`on the same contentions discussed above regarding the obviousness of
`claim 1 based on Wimsatt, Johnson, and Severson. See Pet. 49–58.
`Petitioner does not rely on Naidoo or Anthony in any manner that cures the
`
`18
`
`
`
`IPR2016-01911 and IPR2016-01916
`Patent 8,478,844 B2
`
`underlying defect in the articulation of the ground of alleged obviousness of
`claim 1. Thus, for the same reasons discussed above, Petitioner has not
`shown a reasonable likelihood of prevailing in showing that claims 18–20,
`23, 24, and 41 would have been obvious over Wimsatt, Johnson, Severson,
`and Naidoo, or that claim 22 would have been obvious over Wimsatt,
`Johnson, Severson, Naidoo, and Anthony.
`
`D. The Alleged Obviousness of Claims 25–40 and 42–47 Over
`Wimsatt, Johnson, Severson, and Alexander
`In IPR2016-01916, Petitioner alleges that claims 25–40 and 42–47 of
`
`the ’844 patent would have been obvious over Wimsatt, Johnson, Severson,
`and Alexander. Pet. (IPR2016-01916) 8–48. Each of these challenged
`claims depends directly or indirectly from claim 1. Because of this,
`Petitioner first discusses independent claim 1. Id. at 7. For the two
`limitations discussed above in the context of IPR2016-01911—limitations
`1[c] and 1[j]—Petitioner repeats the same or substantially the same
`arguments we found unpersuasive. See id. at 15–17, 31–34. Petitioner’s
`subsequent analysis of the dependent claims subject to this ground does not
`cure the defects underlying Petitioner’s challenge of independent claim 1.
`See id. at 34–48. Thus, for the same reasons discussed above, Petitioner has
`not shown a reasonable likelihood of prevailing in showing that claims 25–
`40 and 42–47 would have been obvious over Wimsatt, Johnson, Severson,
`and Alexander.
`
`E. The Alleged Obviousness of Claims 48–50 Over Wimsatt and Johnson
`In IPR2016-01916, Petitioner also alleges that independent claims 48–
`
`50 of the ’844 patent would have been obvious over Wimsatt and Johnson.
`Pet. (IPR2016-01916), 49–66. Petitioner asserts that limitation 1[j],
`
`19
`
`
`
`IPR2016-01911 and IPR2016-01916
`Patent 8,478,844 B2
`
`pertaining to maintaining objects at the security server, is identical to
`limitations in claims 48–50, specifically those identified as elements 48[f],
`49[j], and 50[j]. Id. at 52–53, 57–58, 62–63. Petitioner does not provide
`additional arguments for those limitations of claims 48–50, but relies on its
`earlier arguments made in the context of claim 1. Id.; see also id. at 65
`(citing 1002 ¶ 223) (Petitioner reiterating, in its discussion of limitation
`50[k], some of its arguments for limitation 1[j]). We have found those
`arguments not to be persuasive. Accordingly, Petitioner has not shown a
`reasonable likelihood of prevailing in showing that claims 48–50 would
`have been obvious over Wimsatt and Johnson.
`
`III. CONCLUSION
`Petitioner, in IPR2016-01911, has not demonstrated that there is a
`
`reasonable likelihood of establishing the unpatentability of any of claims 1–
`4, 6–24, and 41 of the ’844 patent. Petitioner, in IPR2016-01916, has not
`demonstrated that there is a reasonable likelihood of establishing the
`unpatentability of any of claims 25–40 and 42–50 of the ’844 patent.
`
`IV. ORDER
`For the foregoing reasons, it is
`
`ORDERED that both Petitions are denied as to the challenged claims,
`
`and no trial is instituted.
`
`
`20
`
`
`
`
`
`IPR2016-01911 and IPR2016-01916
`Patent 8,478,844 B2
`
`For PETITIONER:
`Erik Milch
`Jennifer Volk-Fortier
`Frank Pietrantonio
`COOLEY LLP
`emilch@cooley.com
`jvolkfortier@cooley.com
`fpietrantonio@cooley.com
`
`For PATENT OWNER:
`
`Matthew Argenti
`Michael Rosato
`WILSON SONSINI GOODRICH & ROSATI
`margenti@wsgr.com
`mrosato@wsgr.com
`
`21
`
`
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