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`Paper No.__
`Filed: August 2, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
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`UNIFIED PATENTS INC.,
`Petitioner
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`v.
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`VINDOLOR, LLC,
`Patent Owner
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`IPR2019-00478
`Patent 6,213,391
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`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`Case IPR2019-00478
`Patent 6,213,391
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`Pursuant to 37 C.F.R. § 42.71(d), Petitioner Unified Patents Inc. (“Unified” or
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`“Petitioner”) submits this Request for Rehearing in response to the Decision on
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`Institution entered July 3, 2019 (Paper 9) (“Decision”) by the Patent Trial and Appeal
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`Board (“Board”) regarding U.S. Patent 6,213,391 (“the ’391 patent”).
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Petitioner respectfully requests rehearing regarding Grounds 1 and 2 of the
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`Petition. Ground 1 asserts that Gullman (Ex. 1004) anticipates Claims 1-2 under 35
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`U.S.C. § 102(a), (b), and (e). See Paper 1 (“Petition”) at 5, 26. Ground 2 asserts
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`that Gullman in view of the knowledge of a person of ordinary skill in the art
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`(“POSITA”) renders obvious Claims 1-2 under 35 U.S.C. § 103(a). See Petition at
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`5, 45.
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`Petitioner respectfully submits
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`that
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`the Decision overlooks and/or
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`misapprehends Petitioner’s positions and supporting evidence that Gullman
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`discloses the recited “access code” of the sole independent claim of the ’391 patent.
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`Accordingly, Petitioner respectfully requests that the Board institute inter partes
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`review of the ’391 patent.
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`II. LEGAL STANDARD
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`“A party dissatisfied with a decision may file a single request for rehearing”
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`that “specifically
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`identif[ies] all matters
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`the party believes
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`the Board
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`misapprehended or overlooked, and the place where each matter was previously
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`addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).
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`III. REASONS FOR THE REQUESTED RELIEF
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`In the Decision, the Board found that Gullman’s security token is not the
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`claimed “access code.” Decision at 6-7. Specifically, the Decision found:
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`Gullman decodes the security token and uses what is encoded within
`to determine whether to grant access. … Thus, the security token in
`Gullman provides transmission security, whereas the data contained
`within (the correlation factor and the code) are used to authorize
`access.
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`Decision at 6-7 (emphasis added). The Decision misapprehends or overlooks the
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`evidence cited in the Petition for at least the following reasons.
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`A. The Petition Demonstrates Gullman’s Security Token Provides
`Access.
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`The Petition and the accompanying Declaration establish that Gullman
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`discloses a security token that “both authenticates and identifies the user,” and thus
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`is the claimed “access code.” Petition at 43; Declaration at ¶ 134; see also Decision
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`at 6 (“Gullman decodes the security token and uses what is encoded within to
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`determine whether to grant access.”).
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`First, the Decision overlooks portions of the Petition that show Gullman’s
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`security token is also an “access code,” as claimed, and can be used in a similar
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`fashion as disclosed in the ’391 patent. For example, the Petition cites to Gullman’s
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`disclosure that the “[security] token is communicated to a host system for
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`determining whether access to such host is to be authorized.” See Petition at 26
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`(citing Ex. 1004, 1:6-13) (emphasis added); Declaration at ¶ 84 (citing same).
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`Further, Gullman discloses that “[t]he security token generated … may be input in
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`the same manner as PINs or other security codes in common use.” Ex. 1004, 6:56-
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`58; see also Petition at 29; Declaration at ¶ 89. Thus, to the extent the Decision
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`acknowledges that a “PIN” is an “access code,”1 the Petition also shows that
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`Gullman’s security token is an “access code” for the same reasons.
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`Further, the Petition also demonstrates that Gullman’s security token is
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`transmitted in the same manner as the claimed “access code.”2 In the claimed
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`1 Patent Owner’s Preliminary Response also acknowledges the same. See Paper 6
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`(“Response”) at 7 (providing a PIN as an example of a “prior art technique[] … for
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`providing access codes for accessing secure objectives”).
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`2 Patent Owner mischaracterizes Gullman’s security token as only providing end-to-
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`end transmission security for transmitting individual data elements between a
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`security apparatus and a host system. Response at 21, fn. 6; see also Response at
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`41. However, as addressed in the Petition and supporting Declaration, Gullman’s
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`security token is, in fact, used to also identify the user and determine whether access
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`should be granted. Ex. 1004, 3:36-42, 4:3-8, 6:56-58; see also Decision at 6, Petition
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`at 26, 29; Declaration at ¶¶ 84, 89.
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`subject matter, a single data structure (i.e., the “access code”) is sent to a host system
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`to determine user access. Ex. 1001, 9:1-5, 10:33-44, cl. 1; see also Petition at 18;
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`Declaration at ¶ 54. Likewise, the Petition cites Gullman’s disclosure of transmitting
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`a single security token to determine whether access should be granted or denied.
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`Petition at 29 (citing Ex. 1004, 6:35-45); see also Decision at 6 (“[t]he security token
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`is sent to a host computer to determine if access should be granted”); Declaration at
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`¶ 89. Therefore, the Petition establishes that Gullman’s security token is used to
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`identify a person and determine whether access should be granted, in the same
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`manner as a conventional “access code” (e.g., a PIN or security code). See Petition
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`at 29; Declaration at ¶ 89.
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`Second, the Decision appears not to recognize that Gullman advances the
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`prior art by disclosing a security token that provides both transmission security and
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`user identification/access. Specifically, the Decision cites:
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`‘[a] PIN is used to identify an individual and authorize access to a host
`system,’ which ‘provides user identification, while a token provides
`transmission security.’
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`Decision at 6 (citing Ex. 1004, 1:30-45). This excerpt is from Gullman’s
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`“BACKGROUND OF THE INVENTION,” discussing the conventional operation
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`of a prior art transmission token in comparison to a prior art PIN. See Ex. 1004,
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`1:28-34. By relying on this distinction between the prior art transmission token and
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`the prior art PIN, however, the Decision overlooks that Gullman’s security token
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`improves on the prior art by providing both identification/access and transmission
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`security. See Petition at 26-27 (this “biometric security mechanism adds another
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`level of security to the access process” while “serv[ing] as a convenient accessible
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`security device”) (citing Ex. 1004, 3:34-36, 5:34-39); Declaration at ¶¶ 84-87; Ex.
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`1004, 1:6-13, 1:53-56, 6:46-62. Thus, even though Gullman’s security token
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`provides transmission security in addition to access, it still discloses the claimed
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`“access code.” See Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1355 (Fed.
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`Cir. 2008) (a reference disclosing more functionality than what was called for by the
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`patent claims is still anticipatory); see also Bristol-Myers Squibb Co. v. Ben Venue
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`Laboratories, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001) (citing Celeritas Techs.,
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`Ltd. v. Rockwell Intern. Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)) (a reference
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`that discloses two or more separate functionalities is no less anticipatory).
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`Third, the Decision found that Gullman “decodes the security token and uses
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`what is encoded within to determine whether to grant access”(Decision at 6-7).
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`However, the Decision overlooks and/or misapprehends Gullman in the context of
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`claim 1 for two reasons.
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`First, Claim 1, in context, only requires, “generating one or more access codes
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`based upon said identification profile” Ex. 1001, cl. 1 (emphasis added). The
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`Petition demonstrated, and, indeed, the Decision acknowledges that, “the data
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`contained within [Gullman’s security token] (the correlation factor and the code) are
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`used to authorize access.” Decision at 6-7. Simply put, Gullman’s security token,
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`which is generated based on the user’s “identification profile” (i.e., the correlation
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`factor and the code), provides all of the information necessary to authorize access.
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`Nothing else is required by claim 1.
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`Furthermore, the Board “was not persuaded that Gullman discloses an access
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`code in the claimed manner” (Decision at 7), apparently in light of Patent Owner’s
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`argument that Gullman’s “encoded/encrypted security token” cannot function as the
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`claimed “access code” because it must be “decode[d]/decrypt[ed] … to recover the
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`underlying data elements … [that are] used to evaluate whether access should be
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`granted.” Response at 43; see also Decision at 7. However, the claims of the ’391
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`patent do not require that the “access code” be received in a decoded or decrypted
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`form. See Ex. 1001, cl. 1, 2. The “access code” is only required to be “an
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`identification specific digital signature” “based upon [an] identification profile.” See
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`Ex. 1001, cl. 1. Claim 1, however, does not specify any other required structure
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`(e.g., content or form) or function/operation (e.g., how the code is used in operation)
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`for the recited “access code.”
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`Thus, Gullman discloses “access codes [Gullman’s security token] based
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`upon said identification profile [Gullman’s correlation factor and code],” as required
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`by claim 1 of the ‘391 patent. Ex. 1001, cl. 1 (emphasis added).
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`6
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`Case IPR2019-00478
`Patent 6,213,391
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`For the aforementioned reasons, Petitioner respectfully requests the Board
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`rehear Ground 1.
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`B. Ground 2
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`The Decision held that Ground 2 “[did] not establish a reasonable likelihood
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`of success for the same reasons as the Gullman anticipation ground.” Therefore, for
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`the same reasons stated above, Petitioner respectfully requests rehearing regarding
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`Ground 2.
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`IV. CONCLUSION
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`In light of the foregoing, Petitioner respectfully requests that the Board rehear
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`Grounds 1 and 2, and institute an inter partes review on the ’391 patent.
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`Date: August 2, 2019
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`Respectfully submitted,
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`/ Cono A. Carrano/
`Cono A. Carrano (Reg. No. 39,623)
`Akin Gump Strauss Hauer & Feld LLP
`Robert S. Strauss Tower
`2001 K Street, N.W.
`Washington, DC 20006
`telephone: (202) 887-4000
`facsimile: (202) 887-4288
`email: ccarrano@akingump.com
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`Ashraf Fawzy (Reg. No. 67,914)
`Jonathan Stroud (Reg. No. 72,518)
`Unified Patents Inc.
`1875 Connecticut Avenue, N.W., Floor 10
`Washington, DC 20009
`telephone: (214) 945-0200
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`7
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`Case IPR2019-00478
`Patent 6,213,391
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`email: roshan@unifiedpatents.com
`email: jonathan@unifiedpatents.com
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`Clark Gordon (Reg. No. 74,706)
`Akin Gump Strauss Hauer & Feld LLP
`4 Park Place, Suite 1900
`Irvine, CA 92614-2585
`telephone: (949) 885-4100
`facsimile: (949) 885-4101
`email: cgordon@akingump.com
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`Attorneys for Petitioner Unified Patents Inc.
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`Case IPR2019-00478
`Patent 6,213,391
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Request for Rehearing Pursuant to 37 C.F.R. § 42.71(d) was served on counsel of
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`record on August 2, 2019 by filing this document through the End-to-End System,
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`as well as delivering a copy via electronic mail to the counsel of record for the
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`Patent Owner at the following address:
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`Raymond W. Mort, III – raymort@austinlaw.com
`Cabrach Connor – cab@connorkudlaclee.com
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`Respectfully submitted,
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`/ Cono A. Carrano/
`Cono A. Carrano (Reg. No. 39,623)
`Akin Gump Strauss Hauer & Feld LLP
`Robert S. Strauss Tower
`2001 K Street, N.W.
`Washington, DC 20006
`telephone: (202) 887-4000
`facsimile: (202) 887-4288
`email: ccarrano@akingump.com
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`Date: August 2, 2019
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