Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 12
`Entered: October 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`T-MOBILE US, INC. AND T-MOBILE USA, INC.,
`Petitioner,
`
`v.
`
`BARKAN WIRELESS ACCESS TECHNOLOGIES, L.P.,
`Patent Owner.
`_______________
`
`Case IPR2017-01098
`Patent 8,559,369 B2
`_______________
`
`
`Before MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 12
`Entered: October 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`T-MOBILE US, INC. AND T-MOBILE USA, INC.,
`Petitioner,
`
`v.
`
`BARKAN WIRELESS ACCESS TECHNOLOGIES, L.P.,
`Patent Owner.
`_______________
`
`Case IPR2017-01098
`Patent 8,559,369 B2
`_______________
`
`
`Before MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2017-01098
`Patent 8,559,369 B2
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`
`I. INTRODUCTION
`
`A. Background
`T-Mobile US, Inc. and T-Mobile USA, Inc. (collectively,
`“Petitioner”) filed a Petition to institute an inter partes review of claims 1–
`13 (“challenged claims”) of U.S. Patent No. 8,559,369 B2 (Ex. 1001,
`“the ’369 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 2 (“Pet.”).
`Barkan Wireless Access Technologies, L.P. (“Patent Owner”) filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.”
`Upon consideration of the Petition, Patent Owner’s Preliminary
`Response, and the associated evidence, we conclude that the Petition shows
`a reasonable likelihood that Petitioner would prevail with respect to at least
`one of the challenged claims. Accordingly, for the reasons that follow, we
`institute an inter partes review.
`B. Related Proceedings
`Petitioner informs us that the ’369 patent is the subject of two
`lawsuits: Barkan Wireless Access Technologies, L.P. v. T-Mobile US, Inc.
`and T-Mobile USA, Inc., 2:16-cv-00063 (E.D. Tex.) (filed Jan. 19, 2016) and
`Barkan Wireless Access Technologies, LP v. Cellco Partnership d/b/a
`Verizon Wireless et al., 2:16-cv-00293 (E.D. Tex.) (filed Mar. 29, 2016)
`(“the Verizon case”). Pet. 2.
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`2
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`Petitioner filed a petition for inter partes review of related United
`States Patent No. 9,042,306 B2 (Ex. 1002, “the ’306 patent”). Id.; IPR2017-
`01099.
`C. The ’369 Patent
`The ’369 patent is titled “Wireless Internet System and Method” and
`generally relates to a device with Internet access through an access point,
`which itself acts as an access point to allow other devices Internet access.
`Ex. 1001, Abstr. Figure 1 of the ’369 patent, reproduced below, illustrates
`an expanded wireless system for connecting mobile devices to the Internet
`through an access point:
`
`
`As shown above in Figure 1, the ’369 patent discloses laptop 11
`which is connected to Internet 32 via its access point (“AP”) 10. Id. at
`10:51–52, 11:36–37, 11:40–41. Laptop 11 acts as a second AP for wireless-
`enabled devices, STA (for “station”) 12 and STA 13, with these devices
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`connecting to the Internet 32 through laptop 11. Id. at Abstr., 1:27–28,
`3:13–14, 11:40–44, 12:19–20.
`Figure 3 illustrates a system including an additional AP 20, an
`additional laptop 21 providing a connection for stations, and other sites
`connected to the Internet:
`
`
`
`As shown above in Figure 3, a remote site, such as trusted site 50, is
`connected to Internet 32. Id. at Figure 3, 13:26–35. Trusted site 50 acts as a
`proxy of a wireless-enabled device, such as STAs 12–15, with the STA
`accessing other Internet sites via the trusted remote site. Id. at 13:26–28,
`15:7–9. Sensitive traffic between the connected STA and the proxy passes
`through laptop 11 or laptop 21, with the security of the traffic ensured by
`tunneling, in order to protect the privacy of the STA’s communications. Id.
`at 14:48–51, 14:55–59, 15:7–9. Security may be enhanced for a STA
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`accessing the Internet through a tunnel to a remote site by frequently
`switching which remote site is used as proxy, so no one remote site can
`collect substantial information regarding a STA’s use of the Internet. Id. at
`15:15–18. Alternately, the remote site may be a trusted computer installed
`by the user, for example to implement a virtual private network (VPN). Id.
`at 15:21–25.
`
`D. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–13 of the
`’369 patent based on the following grounds:
`Reference(s)
`Basis
`Buddhikot1 and Lord2
`§ 103 1–7
`Buddhikot, Lord, and Fajardo3
`§ 103 8–11
`Buddhikot, Lord, and Aarnio4
`§ 103 12
`Buddhikot
`§ 103 13
`Vucina5
`§ 102 13
`
`Claims Challenged
`
`E. Illustrative Claims
`Claims 1, 8, and 13 of the challenged claims of the ’369 patent are
`independent, and are illustrative of the claimed subject matter:
`1. A computing device comprising:
`a communication module adapted to:
`
`1 Buddhikot et al., U.S. Patent No. 7,562,393 B2, filed Oct. 20, 2003 (Ex.
`1006).
`2 Lord et al., U.S. Patent No. 6,763,012 B1, issued Jul. 13, 2004 (Ex. 1007).
`3 Fajardo et al., U.S. Patent App. Pub. No. US 2007/0014259 A1, pub.
`Jan. 18, 2007 (Ex. 1011).
`4 Aarnio et al., U.S. Patent No. 7,606,559 B2, issued Oct. 20, 2009
`(Ex. 1013).
`5 Vucina et al., U.S. Patent App. Pub. No. US 2005/0261970 A1, pub.
`Nov. 24, 2005 (Ex. 1012).
`
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`(1) wirelessly connect said computing device to an IP
`based network via a first wireless access point (AP)
`having a first AP Identification (APID); and
`(2) wirelessly communicate with other wireless enabled
`computing devices;
`a user interface and display adapted to allow a user of said
`computing device to interact with destinations over the IP
`based network, through the first wireless AP, using a first
`public IP address; and
`an AP module adapted to:
`(1) provide a given device of the other wireless enabled
`computing devices with access to the IP based
`network by causing said computing device to serve
`the given device as a second AP having a second
`APID, distinct from the first APID, and provide the
`given device access to the network via the first AP;
`and
`(2) tunnel data traffic from the given device, through said
`computing device, through the first AP, through the
`IP network, to a proxy server, such that the proxy
`server acts as a proxy of the given device and the
`data traffic is secure from said computing device
`and first AP and the given device operates on the
`network with a public IP address distinct from the
`first public IP address.
`8. A computing device comprising:
`a first communication module adapted to communicate over an
`IP network, using a first public IP address, via a first
`wireless access point (AP), the first wireless AP having a
`first AP Identification (APID);
`to wirelessly
`a second communication module adapted
`communicate, as a second access point (AP) having a
`second APID, with other wireless enabled computing
`devices and provide the other wireless enabled computing
`devices access to the IP network via the first wireless AP,
`wherein data traffic from the other wireless enabled
`
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`
`computing devices is tunneled by the second AP through
`the first AP to a proxy server such that the proxy server
`acts as a proxy of the other wireless enabled computing
`devices and the data traffic is secure from the first and
`second APs and the other wireless enabled computing
`devices operate on the IP network with a public IP address
`distinct from the first public IP address;
`data storage adapted to store data, addressed to a destination on
`the IP network, received wirelessly via said second
`communication module, from a given device of the other
`wireless enabled computing devices;
`transmission logic adapted to transmit the stored data to the
`destination, over the IP network, after communications
`between said computing device and the given device are
`disconnected, such that data may be uploaded from a client
`device to said computing device and subsequently
`uploaded by said computing device to a destination on the
`internet.
`13. Communication circuitry adapted to:
`(1) generate a second access point identification (APID)
`associated with an access point (AP) having a first APID:
`(2) provide a tunnel for wireless devices connecting to said AP
`using the second APID.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`Consistent with the statute and the legislative history of the Leahy-
`Smith America Invents Act,6 the Board will interpret claims of an unexpired
`patent using the broadest reasonable construction in light of the specification
`of the patent. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`
`
`6 Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”).
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`interpretation standard as the claim interpretation standard to be applied in
`inter partes reviews). Petitioner and Patent Owner propose constructions for
`a number of claim terms. Pet. 12–18; Prelim. Resp. 4–11. We need to
`construe explicitly only the terms below in order to resolve the issues before
`us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999) (only those terms which are in controversy need to be construed
`and only to the extent necessary to resolve the controversy).
`“a communication module adapted to: (1) wirelessly
`connect said computing device to an IP based network via a
`first wireless access point (AP) having a first AP
`Identification (APID); and (2) wirelessly communicate with
`other wireless enabled computing devices”
`Claim 1 recites a “a communication module adapted to: (1) wirelessly
`connect said computing device to an IP based network via a first wireless
`access point (AP) having a first AP Identification (APID); and (2) wirelessly
`communicate with other wireless enabled computing devices.” Pursuant to
`our Order of September 5, 2017 (Paper 9), Petitioner and Patent Owner each
`filed a Supplemental Brief addressing the construction of this limitation
`(“the communication module limitation.”) Paper 10, Petitioner’s
`Supplemental Brief Regarding “Communication Module” (hereinafter “Pet.
`Supp. Br.”); Paper 11, Patent Owner’s Supplemental Brief Addressing the
`Construction of the “Communication Module” Limitation (hereinafter “Pat.
`Own. Supp. Br.”).
`Petitioner and Patent Owner both propose that we construe the
`communication module limitation as a means-plus-function term under
`35 U.S.C. § 112, ¶ 6.7 Pet. Supp. Br. 1; Pat. Own. Supp. Br. 1. Under
`
`
`7 Paragraph 6 of 35 U.S.C. § 112 was renamed as paragraph (f) when § 4(c)
`
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`Williamson, there is a rebuttable presumption that claim terms which lack
`the word “means” (not present in the communication module limitation) do
`not invoke § 112, ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`1348 (Fed. Cir. 2015) (en banc in relevant part). In the District Court’s
`claim construction order in the Verizon case, the court concluded that the
`communication module limitation does not refer to a particular class of
`structures, and that no “recitation of . . . operation in sufficient detail to
`suggest structure to persons of ordinary skill in the art” is found in the
`limitation. Ex. 2001, 33 (quoting Linear Tech. Corp. v. Impala Linear
`Corp., 379 F.3d 1311, 1320–21 (Fed. Cir. 2004)). Consistent with the
`District Court’s reasoning on this point, we conclude that the presumption
`stated in Williamson has been rebutted. Accordingly, we construe the
`communication module limitation as a means-plus-function term.
`Construing a means-plus-function limitation under 35 U.S.C. § 112,
`¶ 6 requires us “to perform a two-step analysis. First, [we must] ‘identif[y]
`the particular claimed function.’ Second, [we must] ‘look [ ] to the
`specification and identif[y] the corresponding structure, material, or acts that
`perform that function.’” IPCom GmbH & Co. v. HTC Corp., 861 F.3d 1362,
`1370 (Fed. Cir. 2017) (citations omitted). We turn to identification of the
`claimed function for the communication module limitation. We find that the
`plain language of the communication module limitation sufficiently
`describes the claimed functionality – and thus that the claimed function is to
`“(1) wirelessly connect said computing device to an IP based network via a
`
`
`of the AIA took effect on September 16, 2012. Because the patent
`application resulting in the ’369 patent was filed before the effective date,
`we refer to the pre-AIA version of § 112.
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`first wireless access point (AP) having a first AP Identification (APID); and
`(2) wirelessly communicate with other wireless enabled computing devices.”
`Ex. 1001, 32:40–44.
`With respect to the corresponding structure for the claimed function,
`Petitioner argues in the Petition that the corresponding structure should be
`“software in a computing device.” Pet. 17–18. For this structure Petitioner
`references portions of the Specification of the ’369 patent describing
`software “that utilizes the computer’s wireless interface to communicate
`with other devices and the Internet.” Id. at 17 (citing Ex. 1001, Fig. 1, 5:64–
`6:9, 9:41–10:48, 13:48–14:9, 15:26–47, 16:23–44, 17:44–55 (each
`describing or referring to “Vagabee” software which is installed on devices
`in order to allow them to connect to the Internet via an intermediary device,
`and assists them afterwards to themselves serve as intermediary devices)).
`In the Supplemental Briefing, Petitioner indicates that we should
`adopt the corresponding structure identified by the District Court, namely, “a
`wireless network card, and equivalents thereof.” Pet. Supp. Br. 2, n.3, 4;
`Ex. 2001, 35. Petitioner argues that this definition “encompasses” the
`originally proposed construction presented in the Petition. Pet. Supp. Br. 1–
`2. Patent Owner also argues that we should use the District Court’s
`construction of the corresponding structure for the communication module
`limitation. Prelim. Resp. 8–10 (citing Ex. 2001, 33–34); Pat. Own. Supp.
`Br. 2–3.
`We construe the corresponding structure for the communication
`module limitation to be “a single wireless network card, and equivalents
`thereof.” A single wireless card is disclosed in the Specification as the
`structure used for the claimed functionality of wirelessly connecting to the
`
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`Internet via a first AP and wirelessly communicating with other devices
`while operating as a second AP:
`It may use a novel method for performing the deployment of
`APs, i.e., the method that allows devices to function at the same
`time as STAs and as APs. For example, a laptop 11 is
`connected to the Internet through access point AP 10, and at
`the same time, laptop 11 shares its connection for other STAs
`by operating as an AP. Thus, other STAs 12 and 13 look at
`laptop 11 as an AP, and can connect through it to the
`Internet.
`When laptop 11 is connected to AP 10 through a wired
`connection, it can simply set its wireless connection as an AP
`(Infrastructure mode). However, when laptop 11 is connected
`to AP 10 through a wireless connection, the situation is more
`complex. Disclosed is a novel method in which laptop 11 can
`be connected to AP 10 and serve as an AP using only a single
`wireless network card. Laptop 11 connects to AP 10 just like
`any other STA, and at the same time runs the protocol stack of
`an AP.
`Ex. 1001, 11:37–53 (emphases added). Additional disclosure is found in
`Figures 15–17 and the associated portions of the written description, in
`which firmware is loaded into a single NIC (Network Interface Card or
`Network Interface Controller), allowing it to connect with a first AP and to
`act as an AP for connecting devices. Id. at 24:29–62, Figs. 15–17.
`Petitioner argues that the disclosed structure could be met by prior art
`having “either one, two, or more network cards, or equivalents thereof.” Pet.
`Supp. Br. 2–3. We disagree with Petitioner’s argument that the correct
`construction would encompass, as an equivalent, multiple wireless network
`cards.
`“[A]n equivalent of the disclosed structure performs the same function
`as the disclosed structure, in substantially the same way, with substantially
`
`11
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`the same result.” Regents of the Univ. of Minn. v. AGA Medical, 717 F.3d
`929, 941 (Fed. Cir. 2013) (emphasis added). Where a patent applicant
`makes statements during prosecution limiting the structure, those statements
`may limit the scope of the equivalents to the structure of a means-plus-
`function construction. Polaroid Corp. v. Eastman Kodak. Co., 789 F.2d
`1556, 1570 (1986). Here, the Specification discloses “a novel method in
`which laptop 11 can be connected to AP 10 and serve as an AP using only a
`single wireless network card,” and that connecting to an AP and
`connecting other STAs is done “using a single Wireless NIC.” Ex. 1001,
`11:49–51, 24:40–46, 53–62, Figs. 16, 17 (emphases added).
`We do not, as Petitioner suggests, adopt all portions of the
`Specification that the District Court identified in its analysis of the
`corresponding structure. Pet. Supp. Br. 2 n.3 (citing Ex. 2001, 34). At issue
`is the District Court’s citation to a portion of the Specification that discusses
`the use of two wireless cards. Ex. 2001, 34 (citing Ex. 1002, 31:22–24,
`corresponding to Ex. 1001, 31:36–38). However, that portion of the
`Specification is unrelated to the identified function of the communication
`module limitation. Rather, in context, that portion describes that a STA
`which is connected to the network via two paths, each using a different AP,
`may use two network cards to stay connected simultaneously to the two APs,
`for example, during a handover from one AP to another, or for other reasons:
`The present application discloses a STA which has a
`capability of communicating in two or more channels in parallel
`(for example, by using two wireless network cards). This
`capability can enable a STA to be connected to two APs in
`parallel without the need to implement sophisticated mechanisms
`that actually simulate this situation. Thus, a STA can connect
`with future AP while maintaining a connection through its
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`two or more APs
`to
` Being connected
`serving APs.
`simultaneously allows greater bandwidth by utilizing two
`connections instead of one, and the performance of soft-
`handovers, i.e., the STA stays connected through one AP, while
`disconnecting from the second AP in the process of handover.
`Ex. 1001, 31:36–48. We, thus, decline to find that this reference to two
`wireless network cards is a disclosed structure for the functionality of the
`communication module limitation.
`We construe the structure corresponding to the means-plus-function
`communication module device to be “a single wireless network card, and
`equivalents thereof,” where the scope of the equivalents excludes multiple
`wireless network cards.
`B. Principles of Law
`A claim is unpatentable as anticipated “if each and every limitation is
`found either expressly or inherently in a single prior art reference.” In re
`Affinity Labs of Texas, LLC, 856 F.3d 883, 894 (Fed. Cir. 2017) (quotation
`omitted) (citation omitted).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the subject matter sought to be patented 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 said
`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 skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
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`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`proof in inter partes review). Furthermore, Petitioner cannot satisfy its
`burden of proving obviousness by employing “mere conclusory statements.”
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`To prevail in an inter partes review, Petitioner must explain how the
`proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this preliminary stage, we determine whether the
`information presented in the Petition shows there is a reasonable likelihood
`that Petitioner would prevail in establishing that one of the challenged
`claims would have been obvious over (Grounds 1–4) or anticipated by
`(Ground 5) the proposed prior art or proposed combinations of prior art.
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`C. Asserted Obviousness Ground Based on Buddhikot and Lord
`In Ground I of the Petition, Petitioner asserts that claims 1–7 would
`have been obvious to a person of ordinary skill in the art at the time of the
`invention in light of the teachings of Buddhikot and Lord. Pet. 20–49.
`Petitioner relies on Buddhikot (Ex. 1006), Lord (Ex. 1007) and the
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`Declaration of Tal Lavian, Ph.D. (Ex. 1003). Based on the current record,
`we are not persuaded that Petitioner has established a reasonable likelihood
`of prevailing on its asserted ground.
`1. Overview of Buddhikot
`Buddhikot is titled “Mobility Access Gateway” and describes a
`“MobileHotSpot Gateway” which provides a user access to a network, and
`further describes home network support to allow an established user network
`session to continue without interruption as user’s device moves from
`connecting via a first network to connecting via a second network.
`Ex. 1006, Abstr., 4:17–34, 23:44–24:35.
`Figure 13 of Buddhikot, which illustrates a system including the
`MobileHotSpot Gateway, is reproduced below:
`
`As shown above in Figure 13, Buddhikot discloses mobile nodes
`100B and 100C connecting to MobileHotSpot Gateway 1440 via an 802.11
`
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`(wireless) network, to the Internet via backhaul link 1423 to base
`station 1459. Id. at 23:44–61, 24:4–8, 12–13. A home network with an
`authentication, authorization, and accounting (AAA) system, HOME
`AAA 45, provides user profile data and session state data for the users. Id.
`Abstr., 10:3–43. In an exemplary embodiment, encryption of data traffic is
`not provided by the MobileHotSpot Gateway, but end-to-end privacy
`solutions for the traffic, such as Internet Protocol Security (“IP Sec”), may
`be used. Id. at 9:53–56, 17:45–50, 18:66–19:3.
`2. Analysis of Asserted Obviousness over Buddhikot and Lord–
`Alleged Obviousness of Claims 1–7
`Petitioner maps the limitations of independent claim 1 to a
`combination of Buddhikot and Lord, and contends that claim 1 is
`unpatentable over this combination. Pet. 24–45.
`To teach or suggest the communication module limitation of claim 1,
`Petitioner cites the mobility software in Buddhikot’s MobileHotSpot
`Gateway 1440, which “manages clients that move across different wireless
`technologies” and interacts with a wireless 802.11 access point and a
`wireless cellular modem. Id. at 25–26 (citing Ex. 1006, 10:33–54, 18:31–43,
`23:46–49, 24:19–35, Figs. 5, 14). Petitioner argues that “[t]he Petition[]
`highlight[s] the art’s teaching of wireless circuitry. . . . Buddhikot’s two
`protocol scheme is consistent with the disclosure of two network cards.”
`Pet. Supp. Br. 4 (citing Pet. 25).
`However, we have construed the structure of the communication
`module limitation to be “a single wireless network card, and equivalents
`thereof” where the scope of the equivalents excludes multiple wireless
`network cards. Petitioner has not shown that how Buddhikot, Lord, or a
`combination of the two references would teach or suggest performing the
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`functionality of the communication module limitation using a single wireless
`network card or equivalents.
`We, thus, are unpersuaded that Petitioner has shown with sufficient
`particularity that a combination of Buddhikot and Lord teaches or suggests
`the communication module limitation. Without that particularity, we are
`unpersuaded that Petitioner has shown a reasonable likelihood that it would
`succeed in showing that independent claim 1 is unpatentable over a
`combination of Buddhikot and Lord. Furthermore, because claims 2–7
`depend from claim 1, we are similarly unpersuaded that Petitioner has
`shown a reasonable likelihood that it would succeed in showing that claims
`2–7 are unpatentable over a combination of Buddhikot and Lord.
`D. Asserted Obviousness Ground Based on Buddhikot, Lord, and
`Fajardo
`In Ground 2 of the Petition, Petitioner asserts that claims 8–11 would
`have been obvious to a person of ordinary skill in the art at the time of the
`invention in light of the teachings of Buddhikot, Lord, and Fajardo. Pet. 50–
`60. Based on the current record, we are not persuaded that Petitioner has
`established a reasonable likelihood of prevailing on its asserted ground with
`respect to certain claims for the reasons explained below.
`1. Alleged Obviousness of Claim 8
`Petitioner maps the limitations of independent claim 8 to a
`combination of Buddhikot, Lord, and Fajardo and contends that claim 8 is
`unpatentable over this combination. Pet. 24–32, 36–44, 55–59. Patent
`Owner presents a number of arguments alleging deficiencies in Petitioner’s
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`
`argument that the proposed combination of the prior art renders the claim
`obvious. Prelim. Resp. 19, 22–24, 29–32.
`a. Means-plus-function
`Claim 8 is directed to a computing device comprising, inter alia, “a
`first communication module adapted to communicate over an IP network,
`using a first public IP address, via a first wireless access point (AP), the first
`wireless AP having a first AP Identification (APID)” (hereinafter “claim 8
`first communication module limitation”); and
`a second communication module adapted to wirelessly
`communicate, as a second access point (AP) having a second
`APID, with other wireless enabled computing devices and
`provide the other wireless enabled computing devices access to
`the IP network via the first wireless AP, wherein data traffic from
`the other wireless enabled computing devices is tunneled by the
`second AP through the first AP to a proxy server such that the
`proxy server acts as a proxy of the other wireless enabled
`computing devices and the data traffic is secure from the first and
`second APs and the other wireless enabled computing devices
`operate on the IP network with a public IP address distinct from
`the first public IP address
`(hereinafter “claim 8 second communication module limitation”) (collectively
`“claim 8 communication module limitations”).
`Neither Petitioner nor Patent Owner squarely addresses the proper
`construction of the claim 8 communication module limitations. For claim 8,
`Petitioner relies on the same claim construction arguments in the Petition it
`asserted with respect to claim 1 (see Pet. 17), and Petitioner’s supplemental
`brief does not address claim 8. Patent Owner’s Preliminary Response does
`not specifically address claim 8. See Prelim. Resp. 10. In its supplemental
`brief, Patent Owner does acknowledge the differences between
`communication module limitation of claim 1 and the claim 8 communication
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`module limitations tangentially, saying during a discussion of the (claim 1)
`communication module limitation that “Claims 8–12 of the ’369 patent refer
`to different functions. However, Patent Owner’s arguments still apply.”
`Pat. Own. Supp. Br. 2 n.1.
`As discussed above, Patent Owner and Petitioner agree, with respect
`to claim 1’s communication module limitation, that a “communication
`module” should be interpreted as requiring means-plus-function construction
`according to 35 U.S.C. § 112, ¶ 6. Pet. Supp. Br. 1 (“Module is a nonce-
`word and ‘communication’ does not impart structure.”); Pat. Own. Supp. Br.
`1. Thus, we understand Patent Owner and Petitioner to agree that the claim
`8 communication module limitations should be interpreted as means-plus-
`function limitations. As with the (claim 1) communication module
`limitation, discussed supra (§ II.A), we conclude that the Williamson
`presumption against means-plus-function construction of a term in the
`absence of the word “means” is overcome for the claim 8 communication
`module limitations. No particular class of structures or recitation of
`operation are found in these limitations.
`b. Petitioner’s identification of how the challenged claim
`is to be construed.
`Neither Petitioner nor Patent Owner has addressed the function or
`corresponding structure for the claim 8 communication module limitations.
`See, generally, Pet. 12–18; Prelim. Resp. 4–11; Pet. Supp. Br.; Pat. Own.
`Supp. Br. To the extent Petitioner relies on the same arguments it asserted
`with respect to claim 1 (see Pet. 17–18), we do not agree that the function
`and corresponding structure of the claim 8 communication module
`limitations can be discerned with reference to the claim 1 communication
`module limitation.
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`Importantly, based on the plain language of the claims, the recited
`function for each of the claim 8 communication module limitations is
`different than that of the single communication module limitation in claim 1.
`Compare Ex. 1001, 32:40–44, with id. at 33:11–27. For example, the
`“second communication module” of claim 8 performs functions that are not
`performed by the “communication module” of claim 1. See, e.g., Ex. 1001,
`33:20–24 (“data traffic from the other wireless enabled computing devices is
`tunneled by the second AP through the first AP to a proxy server such that
`the proxy server acts as a proxy of the other wireless enabled computing
`devices”). Petitioner neither addresses such differences in the recited
`functions, nor provides any analysis showing that these different functions
`are performed by the corresponding structure that Petitioner proposed for the
`“communication module” of claim 1. Similarly, Petitioner does not address
`the fact that claim 8 recites two different communication modules, as
`opposed to the single communication module of claim 1. See, generally,
`Pet. 17–18, 55; Pet. Supp. Br. As a result, Petitioner’s purported reliance on
`its claim construction positions from claim 1 cannot be squared with the
`different claim language of claim 8.
`We additionally observe that Petitioner relies on its unpatentability
`analysis from the claim 1 “AP module” for the claim 8 second
`communication module limitation. See Pet. 55 (Petitioner relying on its
`analysis for parts 1.C, 1.C.1, and 1.C.2 of claim 1 for teaching part 8.B of
`claim 8). Yet Petitioner never links the construction of the claim 8 second
`communication module limitation to the “AP module” limitation of claim 1.8
`
`
`8 Petitioner also does not address the differences in the recited functions of
`the “AP module” and the claim 8 second communication module. Compare
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`IPR2017-01098
`Patent 8,559,369
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