Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 42
`Entered: October 3, 2018
`
`
`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 IPR2017-01099
`Patent 9,042,306 B2
`_______________
`
`
`Before MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 42
`Entered: October 3, 2018
`
`
`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 IPR2017-01099
`Patent 9,042,306 B2
`_______________
`
`
`Before MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a)
`
`
`
`IPR2017-01099
`Patent 9,042,306 B2
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`
`I.
`
` INTRODUCTION
`
`In this inter partes review, T-Mobile US, Inc. and T-Mobile USA,
`Inc. (collectively, “Petitioner”) challenge the patentability of claims 1–68 of
`U.S. Patent No. 9,042,306 B2 (Ex. 1002; “the ’306 patent”), which was
`assigned to Barkan Wireless Access Technologies, L.P. (“Patent Owner”).
`We have jurisdiction under 35 U.S.C. § 6(b)(4). This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during this inter partes review. For the reasons discussed
`below, we determine that Petitioner has proven by a preponderance of the
`evidence that claims 1, 3–17, 19, 21–46, 48–56, and 58–68 of the
`’306 patent are unpatentable. See 35 U.S.C. § 316(e) (“In an inter partes
`review instituted under this chapter, the petitioner shall have the burden of
`proving a proposition of unpatentability by a preponderance of the
`evidence.”).
`
`Procedural History
`A.
`On March 20, 2017, Petitioner requested inter partes review of claims
`1–68 of the ’306 patent. Paper 2 (“Pet.”). The Petition relies on Declaration
`of Dr. Tal Lavian (Ex. 1003). Patent Owner filed a Preliminary Response.
`Paper 7. We required additional briefing regarding a claim construction
`issue (Paper 8) and Petitioner and Patent Owner each filed supplemental
`briefs. Paper 9 (“Pet. Supp. Br.”); Paper 10 (“PO Supp. Br.”).
`On October 6, 2017, based on the record before us and in accordance
`with the Board’s practice at the time, we instituted an inter partes review of
`claims 16, 17, 19, 21–46, 48–56, and 58–68. Paper 11 (“Decision on
`Institution” or “Dec.”), 2, 55–56. Patent Owner filed a Patent Owner
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`Response (Paper 19, “PO Resp.”) and Petitioner filed a Reply (Paper 22,
`“Pet. Reply”), referring to an additional Declaration from Dr. Lavian
`(Ex. 1043).
`On April 27, 2018, pursuant to the Supreme Court’s decision in SAS
`Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018), holding that a decision
`to institute under 35 U.S.C. § 314 may not institute on less than all claims
`challenged in the petition, we issued an Order modifying our Decision on
`Institution to institute review of all claims and all grounds of the Petition.
`Paper 26. Accordingly, the following grounds have been instituted:
`Reference(s)
`Basis
`Claims Challenged
`Buddhikot1 and Lord2
`§ 103 1–12, 14–22, 26–31, 34–37,
`39, 40, 43, 47–53, 56–63, 65,
`and 66
`§ 103 23–25, 41, 42, 44–46, 67, and
`68
`§ 103 32, 33, 54, and 55
`
`Buddhikot, Lord, and
`Abhishek4
`Buddhikot, Lord, and Kim 5
`See Pet. 1.
`On May 3, 2018, we authorized additional briefing to address issues
`relating to the claims for which institution was not ordered originally in our
`Decision on Institution. Papers 26, 27. As per this authorization, Patent
`
`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 Moran, WO 2005/069577 A1, pub. July 28, 2005 (Ex. 1010).
`4 Abhishek et al., U.S. Patent App. Pub. No. US 2004/0103278 A1, pub.
`May 27, 2004 (Ex. 1009).
`5 Kim et al., U.S. Patent App. Pub. No. US 2004/0218611 A1, pub.
`Nov. 4, 2004 (Ex. 1008).
`
`Buddhikot, Lord, and Moran3
`
`§ 103 13, 38, and 64
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`Owner filed a Supplemental Response (Paper 28, “PO Supp. Resp.”), and
`Petitioner filed a Supplemental Reply (Paper 29, “Pet. Supp. Reply”). Oral
`Argument was conducted on July 10, 2018, and a transcript of that hearing is
`of record. Paper 41 (“Tr.”).
`Related Matters
`B.
`Petitioner and Patent Owner inform us that the ’306 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; Paper 4, 2.
`Petitioner filed a petition for inter partes review of related U.S. Patent
`No. 8,559,369 B2 (Ex. 1001, “the ’369 patent”). Pet. 2; Paper 4, 2
`(IPR2017-01098). IPR2017-01098 was terminated upon the Board granting
`Patent Owner’s request for adverse judgment under 37 C.F.R. § 42.73(b)(2).
`IPR2017-01098, Paper 19.
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`The ’306 Patent
`C.
`The ’306 patent is titled “Wireless Internet System and Method” and
`generally relates to a device with Internet access through an access point that
`itself acts as an access point to allow other devices Internet access.
`Ex. 1002, Abstr. Figure 1 of the ’306 patent, reproduced below, illustrates
`an expanded wireless system for connecting mobile devices to the Internet
`through an intermediate device:
`
`
`As shown above in Figure 1, the ’306 patent discloses laptop 11
`which is connected to Internet 32 via its access point (“AP”) 10. Id. at
`10:49–50, 11:33–34, 11:37–38. Laptop 11 acts as a second AP for wireless-
`enabled devices, STA (for “station”) 12 and STA 13, with these devices
`connecting to the Internet 32 through laptop 11. Id. at Abstr., 1:31–32,
`3:17–18, 11:37–41, 12:17–18.
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`Figure 3, reproduced below, illustrates a system including an
`additional AP 20, an additional laptop 21 providing a connection for
`stations, and other sites connected to the Internet.
`
`
`
`Figure 3 depicts a remote site, such as trusted site 50, connected to
`Internet 32. Id. at Figure 3, 13:23–32. Trusted site 50 acts as a proxy of a
`wireless-enabled device, such as STAs 12–15, with each STA accessing
`other Internet sites via the trusted remote site. Id. at 13:23–25, 15:1–3.
`Sensitive traffic between the connected STA and the proxy passes through
`an intermediary device (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 14:42–45, 14:49–52, 15:1–3. Security may be
`enhanced for a STA accessing the Internet through a tunnel to a remote site
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`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 15:8–11. Alternately, the remote site may be a trusted
`computer installed by the user, for example to implement a virtual private
`network (VPN). Id. at 15:14–18.
`Illustrative Claims
`D.
`Claims 1, 16, and 43 of the challenged claims of the ’306 patent are
`independent. Claims 1 and 16 are illustrative of the claimed subject matter.
`1. A computing device comprising:
`at least one 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;
`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 associated with the computing device; 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 using a second
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`public IP address distinct from the first public IP
`address, with the second public IP address associated
`with the given device.
`
`
`16. A system comprising:
`a first wireless access point (AP) connected to an IP based
`network,
`the
`first wireless AP having a
`first AP
`Identification (APID);
`a proxy server connected to the IP based network and adapted
`to act as a proxy of at least a subset of computing devices
`that connect via the first wireless AP; and
`a first computing device having a user interface, wherein the
`first computing device is adapted to:
`wirelessly connect to the IP based network via the first
`wireless AP;
`wirelessly communicate with other wireless enabled
`computing devices;
`enable a user of the first computing device to interact, through
`the user interface, with destinations over the IP based
`network, through the first wireless AP, using a first public IP
`address associated with the first computing device;
`provide a second computing device of the other wireless
`enabled computing devices with access to the IP based
`network by causing the first computing device to serve the
`second computing device as a second AP having a second
`APID, distinct from the first APID, and provide the second
`computing device access to the IP based network via the
`first AP; and
`tunnel data traffic from the second computing device, through
`the first computing device, through the first AP, through the
`IP network, to the proxy server, wherein the proxy server
`acts as a proxy of the second computing device and the data
`traffic is secure from the first computing device and the first
`AP and the second computing device operates on the IP
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`based network using a second public IP address distinct
`from the first public IP address, with the second public IP
`address associated with the second computing device.
`
`
`
`II. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). Petitioner asserts that the level of ordinary skill
`in the art to which the ’306 patent pertains would have been “at least a
`bachelor’s degree in computer science and/or electrical engineering or
`comparable experience, plus at least four years of practical experience in the
`design or development of telecommunications, network communication
`systems and wireless network-based communication between computer
`systems, or a master’s degree with at least two years of practical
`experience.” Pet. 12 (citing Ex. 1003 ¶¶ 31–36).
`Patent Owner contends that the level of ordinary skill “would have
`been someone with a Bachelor’s degree in computer science, or in a related
`field, and about two years’ experience.” PO Resp. 10.
`Factual indicators of the level of ordinary skill in the art include “the
`various prior art approaches employed, the types of problems encountered in
`the art, the rapidity with which innovations are made, the sophistication of
`the technology involved, and the educational background of those actively
`working in the field.” Jacobson Bros., Inc. v. United States, 512 F.2d 1065,
`1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co., Inc. v. United States,
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`702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson
`Bros.).
`Both parties assert somewhat similar definitions of the level of
`ordinary skill in the art, with Petitioner specifying either two years more
`practical experience or a master’s degree. Based on our review of the
`complete record, including the unrebutted testimony of Petitioner’s
`declarant, we find that the evidence of record supports a level of ordinary
`skill in the art consistent with Petitioner’s definition. In addition, we have
`reviewed the prior art of record in this proceeding, which we determine is
`consistent with this definition. See Okajima, 261 F.3d at 1355. We note that
`our patentability analysis presented below would reach the same findings
`and determinations under either party’s definition of the level of ordinary
`skill in the art.
`
`B. Claim Construction
` In an inter partes review, a claim in an unexpired patent is given its
`broadest reasonable construction in light of the specification of the patent in
`which it appears. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2142–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Under the broadest reasonable
`construction standard, claim terms are generally given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). We apply this standard to the claims of
`the ’306 patent.
`Only terms that are in controversy need to be construed and only to
`the extent necessary to resolve the controversy. See Wellman, Inc. v.
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`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`“communication module adapted to: (1) wirelessly
`1.
`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 “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” (“the
`communication module limitation”). 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, ¶ 6.6 Pet. Supp. Br. 1; PO Supp.
`Br. 1. There is a rebuttable presumption that claim terms that lack the word
`“means” (a word not present in the communication module limitation) do
`not invoke § 112, ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`1348–49 (Fed. Cir. 2015) (en banc in relevant portion, see n.3). In the claim
`construction order issued 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
`
`6 Paragraph 6 of 35 U.S.C. § 112 was renamed as paragraph (f) when § 4(c)
`of the Leahy-Smith America Invents Act (Pub. L. No. 112–29,125 Stat. 284
`(2011) (“AIA”)) took effect on September 16, 2012. Because the patent
`application resulting in the ’306 patent was filed before the effective date,
`we refer to the pre-AIA version of § 112.
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`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 § 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). In the Decision on Institution, we found the
`claimed function for the communication module limitation is set forth in the
`plain language of that limitation. Dec. 9–10. We thus found that the
`claimed function is 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.” Id. at 9–10 (quoting Ex. 1002, 32:28–32).
`Petitioner and Patent Owner both agree that this is the claimed function. Pet.
`Supp. Br. 2 n.4; PO Supp. Br. 1–2.
`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. 16–17. For this structure, Petitioner
`references portions of the Specification of the ’306 patent describing
`software “that utilizes the computer’s wireless interface to communicate
`with other devices and the Internet.” Id. at 16 (citing Ex. 1002, Fig. 1, 6:1–
`13, 9:42–10:45, 13:45–14:3, 15:20–40, 16:15–35, 17:34–45 (each describing
`or referring to “Vagabee” software that is installed on devices in order to
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`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. PO Supp.
`Br. 2–3; see also Prelim. Resp. 8–10 (citing Ex. 2001, 33–34).
`In the Decision on Institution, we preliminarily construed the
`corresponding structure for the communication module limitation to be “a
`single wireless network card, and equivalents thereof,” and additionally
`concluded that the scope of the equivalents excludes multiple wireless
`network cards. Dec. 9–14; Paper 16, 5–6.
`Petitioner argues that our preliminary construction in the Decision on
`Institution was in error, because the ’306 patent contains specific disclosure
`that a laptop that is functioning as an AP for STAs may be connected to the
`Internet 32 through two APs at the same time. Pet. Supp. Reply 3-4 (citing
`Ex. 1002, 13:38–44, Fig. 3.) Petitioner presents an annotated version of the
`’306 patent’s Figure 3, reproduced below:
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`Id. at 3. In this annotated version of Figure 3, the laptop 11 (annotated in
`yellow) that provides a connection for STAs 12–15 (annotated in blue) is
`connected to the Internet via AP 10 (annotated in green), as described supra
`Section I.C. Id. at 2–3. The ’306 patent describes that laptop 21 (also
`annotated in green) provides an additional connection to the Internet through
`its AP 20. Ex. 1002, 12:56–67. Petitioner argues that the ’306 patent also
`discloses that laptops 11 and 21 can each “treat the other as another
`connection” (illustrated in red) to the Internet. Pet. Supp. Reply 2 (quoting
`Ex. 1002, 13:41). Petitioner, thus, argues that structure corresponding to the
`communication module limitation’s functionality is not limited to the
`disclosed single wireless network card. Pet. Supp. Reply 3–4 & n.5; see
`Ex. 1002, 11:42–50 (disclosure relating to a single wireless network card).
`Rather, Petitioner contends, the disclosed structure of two wireless network
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`cards would be used for laptops serving as “intermediaries” (such as laptop
`11), as well as for STAs that are connecting through intermediary devices,
`and the structure corresponding to the disclosed function includes the use of
`two wireless network cards, which allow connection to two APs in parallel.
`Pet. Supp. Reply 2–4 (citing Ex. 1002, 31:20–35); see also Tr. 5:13–8:21.
`Petitioner notes that while the specification does describe a novel single-card
`embodiment, it “is also replete with language that describes the novelty of
`the parallel connection, two-network card embodiment.” Pet. Supp. Reply
`4–5 (citing Ex. 1002, 6:14–15, 9:28–33, 12:56–69, 16:21–23). Petitioner
`additionally argues that the subject matter of claims 4–7 of the ’306 patent
`requires different protocols (cellular and Wi-Fi), which necessarily would
`use different wireless network cards. Pet. Supp. Reply 5–7.
`As mentioned, Patent Owner originally argued that the construction in
`the Verizon case, i.e., a wireless network card or equivalents, should apply.
`PO Supp. Br. 2–3. After the Decision on Institution, Patent Owner
`maintained that we should not change that preliminary construction. Supp.
`Resp. 1. Patent Owner urges that the disclosed connection of a laptop to two
`“upstream” APs would be performed through two communication modules,
`rather than a communication module with two wireless network cards.
`Tr. 28:22–24, 29:5–12.
`The broadest reasonable interpretation of the structure corresponding
`to a means-plus-function term may not disregard structure disclosed in the
`specification. In re Donaldson, 16 F.3d 1189, 1194–95 (Fed. Cir. 1994).
`After considering the full record developed during trial, we are persuaded
`that the disclosed structure that includes the use of two wireless network
`cards corresponds to the claimed function. Having considered the arguments
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`and evidence developed during trial, we determine that the broadest
`reasonable interpretation should encompass the disclosed embodiments
`allowing connections for an intermediary device to two “upstream” access
`points, and we agree that the communication module’s functionality may
`encompass connections using two wireless protocols. Accordingly, we alter
`our prior construction, and interpret the structure for the communication
`module limitation to be “a wireless network card, and equivalents thereof,”
`without our prior restriction that the scope of the equivalents could not
`include two wireless network cards.
`“proxy server” and “acts as a proxy”
`2.
`Claim 16 of the ’306 patent is directed towards a system comprising,
`among other elements, “a proxy server connected to the IP based network
`and adapted to act as a proxy of at least a subset of computing devices that
`connect via the first wireless AP.” Ex. 1002, 33:34–36. Independent claims
`1 and 43 include corresponding and similar limitations. Id. at 32:45–53,
`36:1–10.
`Petitioner proposes that the broadest reasonable interpretation of
`“proxy server” is “a server . . . that acts as an intermediary for requests from
`clients seeking resources from other servers.” Pet. 15. Patent Owner argues
`that we should construe “proxy server” to be “an intermediate server that
`accepts requests from the device and acts on behalf of the device,” which it
`notes is the construction of the district court in the Verizon case. PO Resp.
`8–9; see Ex. 2001, 7–14. In the district court, the focus of the claim
`construction arguments, presented by Verizon (not a party to this inter
`partes review) and Patent Owner, was whether the proper construction of a
`proxy server must include the proxy server protecting the device for which it
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`acts as a proxy by obscuring that a request originated from that device.
`Ex. 2001, 7–8. The district court found that the intrinsic and extrinsic
`evidence presented did not compel the narrower construction, which would
`require that the proxy server obscure the origin of requests made on behalf
`of the device. Ex. 2001, 11, 14.
`Petitioner argues that “[n]owhere in the specification is there any
`requirement that the ‘proxy server’ ‘acts on behalf of the device,’ as
`advocated by Patent Owner,” but instead that the specification locates the
`proxy server at the end of a secure tunnel. Pet. Reply 3; Pet. 15 (citing, inter
`alia, Ex. 1002 at 14:49–52, 15:1–19, 16:26-27). The ’306 patent, however,
`discusses this secure tunnel while detailing how a device connecting via an
`intermediary “accesses the Internet”—exchanging data with Internet servers
`“through its tunnel to the trusted network site 50.” Ex. 1002, 14:42–52. The
`access of data, thus, is occurring by the trusted network site for the device,
`having received/accepted a request from a device, acting on behalf of the
`device. The ’306 patent also discloses that a remote node allows for access
`of internal nodes in a home network as in a VPN system; again, the remote
`node would access VPN home network data on behalf of the device.
`Ex. 1002, 15:14–19. We note, relative to Petitioner’s suggested
`construction, that where a VPN is accessed according to the ’306 patent’s
`disclosure, no intermediation of a request for resources from a server is
`implicated if the “internal nodes” in the VPN are not servers.
`Petitioner characterizes Patent Owner’s suggested construction as
`“incredibly broad.” Tr. 31:22. Even were we to agree that Patent Owner’s
`construction is broader than Petitioner’s, we do not find that Petitioner has
`presented any convincing reason to show that Patent Owner’s construction is
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`unreasonably broad and to narrow the construction. Having considered the
`arguments and evidence presented, we determine that the broadest
`reasonable interpretation of “proxy server” is “an intermediate server that
`accepts requests from the device and acts on behalf of the device.”
`Patent Owner additionally argues that the broadest reasonable
`interpretation of “acts as a proxy” is “performs requests on behalf of the
`device.” PO Resp. 9. Petitioner argues that no additional construction is
`necessary, as the construction of “proxy server” “will naturally resolve the
`meaning of ‘acts as a proxy.’” We agree that no construction of this term is
`necessary in light of the construction of “proxy server.”
`Remaining Terms
`3.
`In our Decision on Institution, we determined that the remaining terms
`of the challenged claims did not require express construction at that time.
`Dec. 8, 14–15. Based on the record developed during trial, we maintain our
`initial determination that the remaining terms of the challenged claims do
`not require express constructions. See Vivid Techs., 200 F.3d at 803.
`Principles of Law
`C.
`A patent claim is unpatentable 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 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 ordinary skill in the art; and (4) any secondary considerations
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`of nonobviousness, if in evidence.7 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`Asserted Obviousness over Buddhikot and Lord
`D.
`Petitioner contends claims 1–12, 14–22, 26–31, 34–37, 39, 40, 43,
`47–53, 56–63, 65, and 66 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over the combined teachings of Buddhikot and Lord. Pet. 1, 19–63.
`Patent Owner presents arguments relating to these contentions. PO Resp.
`15–48; PO Supp. Resp. 1–3.
`Overview of Buddhikot
`1.
`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.
`
`
`7 The record contains no allegations or evidence of secondary
`considerations.
`
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`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
`(wireless) network, to the Internet via backhaul link 1423 to base
`station 1459. Id. at 23:44–61, 24:4–8, 24:12–13. 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.
`
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`Overview of Lord
`2.
`Lord is titled, “Mobile Terminal and Method of Providing A
`Network-to-Network Connection” and describes a mobile terminal (MT)
`connecting a plurality of devices over a single wireless link. Ex. 1007,
`Abstr. Figure 1 of Lord, which illustrates a block diagram of a network
`according to the invention, is reproduced below.
`
` Figure 1 of Lord shows terminal equipment TE1, TE2, and TE3 14
`connecting to network GPRS (general packet radio service) PDN (packet
`data network) 18 via mobile terminal 12. Id. at 1:10–11, 14, 3:16–25. The
`PDN may be the Internet. Id. at 3:19.
`Combination of Buddhikot and Lord
`3.
`Petitioner argues that one of ordinary skill in the art would have been
`motivated to combine Buddhikot’s teachings with those of Lord in order to
`use Lord’s detailed teachings of allocation of IP addresses with Buddhikot’s
`
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`teachings regarding security and authentication. Pet. 21–22. Petitioner
`supports its reasoning with the testimony of Dr. Lavian. See Ex. 1003
`¶¶ 225–229; Ex. 1043 ¶ 9.
`Patent Owner argues that Petitioner presents no meaningful
`motivation to combine Buddhikot and Lord. PO Resp. 17–20. Patent
`Owner contends that Buddhikot uses different addressing schemes for the
`cellular and wireless networks, and so no need exists to use the addressing
`scheme disclosed by Lord, “because there exists no need to ensure than an
`IP address created downstream from Buddhikot’s gateway is distinct from
`the IP address assigned to the gateway itself.” PO Resp. 17. Patent Owner
`argues that a dynamic host configuration protocol (DHCP) server would not
`be necessary or present on the Buddhikot gateway as a centralized
`authentication and authorization system would be used. Id. However, as
`pointed out by Petitioner, such a server is present on Buddhikot’s gateway.
`Pet. Reply 6–7 (citing Ex. 1006, 24:36–40, 24:52–55); see Ex. 1003 ¶ 225
`(cited at Pet. 23). Lord’s specification includes implementation details for
`an embodiment in which a DHCP server implemented in the mobile terminal
`assigns addresses to devices for uplink and downlink traffic. Ex. 1007,
`3:43–56; 3:62–4:11, 5:5–13; Figs. 2, 3. We agree with Petitioner that the
`common DHCP functionality on their respective intermediary devices
`indicates that details on DHCP and address allocation in Lord would have
`been useful in Buddhikot and would have motivated an ordinarily skilled
`artisan to combine the references. Pet. 22; Pet. Reply 6–8.
`Patent Owner additionally argues that Petitioner does not present
`evidence regarding how Buddhikot and Lord could be combined without
`undue experimentation. PO Resp. 20–21. Under KSR, “[
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