Paper 25
`Trials@uspto.gov
`Date: November 4, 2020
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`MPH TECHNOLOGIES OY,
`Patent Owner.
`
`
`
`IPR2019-00824
`Patent 9,712,502 B2
`__________________________
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, KAMRAN JIVANI, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`

`

`IPR2019-00824
`Patent 9,712,502 B2
`INTRODUCTION
`I.
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Apple Inc. (“Petitioner”) challenges the patentability of claims 1–10 (“the
`challenged claims”) of U.S. Patent No. 9,712,502 B2 (Ex. 2002, “the ’502
`patent”), owned by MPH Technologies Oy (“Patent Owner”). We have
`jurisdiction under 35 U.S.C § 6. This Final Written Decision is entered
`pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed herein, we determine that Petitioner has
`shown by a preponderance of the evidence that claims 1–6 and 10 are
`unpatentable, but Petitioner has not shown by a preponderance of the
`evidence that claims 7–9 are unpatentable.
`II. BACKGROUND
`
`A. Procedural History
`Petitioner filed a Petition requesting inter partes review of the
`challenged claims of the ’502 patent. Paper 2 (“Pet.”). The Petition is
`supported by the Declaration of David Goldschlag, Ph.D. (Ex. 1002). Patent
`Owner filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We instituted inter partes review of all of the challenged claims of the
`’502 patent on all of the grounds raised in the Petition. Paper 7 (“Dec. on
`Inst.”), 6–7, 34. Patent Owner filed a Response to the Petition. Paper 13
`(“PO Resp.”). The Response is supported by the Declaration of Professor
`George N. Rouskas, Ph.D. (Ex. 2003) and the Declaration of Michael S.
`Borella (Ex. 2010). Petitioner filed a Reply to Patent Owner’s Response.
`Paper 16 (“Pet. Reply”). The Reply is supported by an additional
`Declaration of David Goldschlag, Ph.D. (Ex. 1022). Patent Owner filed a
`Sur-Reply to Petitioner’s Reply. Paper 23 (“PO Sur-Reply”).
`
`2
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`IPR2019-00824
`Patent 9,712,502 B2
`An oral hearing was held on August 11, 2020. A transcript of the oral
`hearing is included in the record. Paper 24 (“Tr.”).
`
`B. Related Matter
`The parties identify MPH Techs. Oy v. Apple Inc., Case No. 4:18-cv-
`05935-PJH (N.D. Cal.), as a matter that may affect or would be affected by a
`decision in this proceeding. Pet. 2; Paper 4, 1. The parties also identify as
`related matters the following inter partes reviews: IPR2019-00822,
`IPR2019-00823, IPR2019-00825, and IPR2019-00826, which involve the
`parties and patents related to the ’502 patent. Pet. 2; Paper 4, 1.
`
`C. The Challenged Patent (Ex. 2002)
`The ’502 patent relates to the “secure forwarding of a message from a
`first computer to a second computer via an intermediate computer in a
`telecommunication network.” Ex. 2002, 6:38–41. According to the ’502
`patent, “[a]n essential idea of [its] invention is to use the standard [Internet
`Protocol (‘IP’) Security (‘IPSec’)] protocol . . . between the intermediate
`computer and the second computer and an ‘enhanced IPSec protocol’
`between the first computer and the intermediate computer.” Id. at 7:38–41,
`1:54. More specifically, the ’502 patent states that “[t]he advantage of [its]
`invention is that [a] logical IPSec connection shared by the first and the
`second computer can be enhanced by the first and the intermediate computer
`without involvement of the second computer.” Id. at 10:38–41. The ’502
`patent adds: “[i]n particular[,] the so-called ‘ingress filtering’ performed by
`some routers [(e.g., the second computer)] does not pose any problems when
`translations of addresses are used.” Id. at 10:41–44.
`
`3
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`IPR2019-00824
`Patent 9,712,502 B2
`
`Figure 1, shown below, “illustrates an example of a
`telecommunication network of the invention” of the ’502 patent. Id. at
`9:55–56.
`
`
`
`Figure 1 shows an example of a telecommunication network in
`
`accordance with the invention of the ’502 patent. Id. at 10:4–5. As
`illustrated, the network comprises: (i) a first computer (client computer 1)
`that is served by (ii) an intermediate computer (server 2), and (iii) host
`computer 4 that is served by (iv) a second computer (security gateway 3).
`Id. at 10:4–9. Security gateway 3 “supports the standard IPSec protocol,”
`while client computer 1 and server 2 support an enhanced IPSec protocol.
`Id. at 10:9–12. The ’502 patent discloses that the first computer (i.e., client
`computer 1) in Figure 1 is a mobile terminal. Id. at 11:5–7, 11:13–14.
`
`“In the example of F[igure] 1, an IPSec connection is formed between
`. . . client computer 1 (the first computer) and . . . security gateway 3 (the
`second computer).” Id. at 10:46–48. The ’502 patent discloses that
`
`4
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`IPR2019-00824
`Patent 9,712,502 B2
`“[m]essages to be sent to . . . host terminal 4 from . . . client computer 1 are
`first sent to . . . server 2, wherein an IPSec translation[, inter alia,] . . . takes
`place.” Id. at 10:60–62. Put differently, “[w]hen the intermediate computer
`receives the packet sent . . ., it performs an address and [Security Parameters
`Index (‘SPI’)] translation, ensuring that the security gateway (host 3 of
`F[igure] 1) can accept the packet.” Id. at 12:1–4, 2:40–41. The ’502 patent
`states that “translation[s can be] . . . performed[, for example,] by means of a
`translation table stored at the intermediate computer[,with t]he outer IP
`header address fields and/or the SPI-values [being] changed by the
`intermediate computer so that the message can be forwarded to the second
`computer.” Id. at 7:46–50.
`
`According to the ’502 patent, “[m]ost of the packet is secured using
`IPSec, . . . [but] the intermediate computer . . . is able to use the outer IP
`addresses and the incoming SPI value to determine how to modify the outer
`address and the SPI to suite the second computer, which is the next
`destination.” Id. at 12:1–11. “[T]he confidentiality of the packets is not
`compromised, . . . [because t]he intermediate computer does not know the
`cryptographic keys used to encrypt and/or authenticate the packets, and can
`thus not reveal their contents,” according to the ’502 patent. Id. at 10:32–37.
`After translation, “the message can be sent to . . . security gateway 3, which
`sends the message further in plain text to . . . host terminal 4.” Id. at 10:62–
`64.
`
`5
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`

`IPR2019-00824
`Patent 9,712,502 B2
`D. The Challenged Claims
`Petitioner challenges claims 1–10 of the ’502 patent, of which claim 1
`is the sole independent claim. Claim 1 is illustrative of the challenged
`claims and is reproduced below:
`1.
`A computer for sending secure messages, and for enabling
`secure forwarding of messages in a telecommunication network
`by an
`intermediate computer to a recipient computer,
`comprising:
`
`a computer configured to connect to a telecommunication
`network;
`
`the computer configured to be assigned with a network
`address in
`the telecommunication network, wherein
`the
`computer is a mobile computer in that the address of the mobile
`computer changes;
`
`the computer configured to form a secure message by
`encrypting the data payload of a message and giving the message
`a unique identity and a destination address of an intermediate
`computer, wherein the unique identity and the destination
`address are capable of being used by the intermediate computer
`to find an address to a recipient computer;
`
`the computer configured to send the secure message to the
`intermediate computer for forwarding of the encrypted data
`payload to the recipient computer; and
`
`the computer configured to set up a secure connection
`using a key exchange protocol.
`
`Ex. 2002, 22:41–62.
`
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`IPR2019-00824
`Patent 9,712,502 B2
`E. Instituted Grounds of Unpatentability
`We instituted trial based on the following grounds of unpatentability,
`
`which are all the grounds of unpatentability raised in the Petition:
`
`References
`35 U.S.C. §1 Challenged Claims
`1. Request for Comments
`103(a)
`1–9
`3104 (“RFC3104”), 2
`Grabelsky3
`2. RFC3104, Grabelsky,
`Wagner4
`
`103(a)
`
`10
`
`
`Pet. 20–58.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`To determine whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1,
`17 (1966). In assessing the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 103 that became effective on March 16, 2013. Because the ’502
`patent issued from an application having an effective filing date before
`March 16, 2013, we apply the pre-AIA version of the statutory basis for
`unpatentability.
`2 G. Montenegro & M. Borella, RSIP Support for End-to-end IPsec, Request
`for Comments 3104, The Internet Society (Oct. 2001) (“RFC3104”) (Ex.
`1004).
`3 U.S. Patent No. 7,032,242 B1 (issued Apr. 18, 2006) (Ex. 1006).
`4 David Wagner & Bruce Schneier, Analysis of the SSL 3.0 Protocol, Proc.
`2d USENIX Workshop on Elec. Com. (Nov. 1996) (“Wagner”) (Ex. 1007).
`
`7
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`IPR2019-00824
`Patent 9,712,502 B2
`(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
`962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.
`In our Decision on Institution, we adopted Petitioner’s proposed
`definition for one having ordinary skill in the art at the time of the invention
`of the ’502 patent as one who would have had “a bachelor’s (B.S.) degree in
`Computer Science, Computer Engineering, Electrical Engineering, or an
`equivalent field, as well as at least 2–5 years of academic or industry
`experience in the field of Internet security.” Dec. on Inst. 7–8 (citing
`Pet. 17; Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute our adoption of
`Petitioner’s definition, nor otherwise address the level of ordinary skill at the
`time of the invention of the ’502 patent. See generally PO Resp.; see also
`Ex. 2003 ¶ 22.
`Because Petitioner’s definition of the level of skill in the art is
`consistent with the ’502 patent and the asserted prior art, we maintain
`Petitioner’s definition for purposes of this Final Written Decision. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d
`at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s
`definition in our analysis below.
`
`IV. CLAIM CONSTRUCTION
`Because the Petition was filed after November 13, 2018, we construe
`the challenged claims by applying “the standard used in federal courts, in
`other words, the claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. [§] 282(b), which is articulated in
`Phillips [v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)].” See
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
`
`8
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`IPR2019-00824
`Patent 9,712,502 B2
`51,343, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Under
`Phillips, the words of a claim are generally given their “ordinary and
`customary meaning,” which is the meaning they would have to a person of
`ordinary skill in the art at the time of the invention, in light of the
`specification and prosecution history. See Phillips, 415 F.3d at 1312–13.
`Petitioner identifies for construction the terms “secure connection”
`and “unique identity,” as recited in claim 1. Pet. 18–20. Patent Owner
`identifies for construction the term “mobile computer,” as recited in claim 1.
`PO Resp. 11–17. We address these three terms below.
`
`A. Secure Connection and Unique Identity
`In the Petition, Petitioner argues that (i) “‘secure connection’ should
`be construed to encompass ‘one or more security associations,’” and
`(ii) “‘unique identity’ should be construed as ‘one or more parameters that
`uniquely identify a secure connection.’” Pet. 18–19. In our Decision on
`Institution, “we conclude[d] that no express claim construction of the terms
`‘secure connection’ or ‘unique identity’ [was] necessary” because in its
`Preliminary Response “Patent Owner [did] not argue that RFC3104 or
`Grabelsky fails to disclose these terms and, therefore, these terms are not in
`controversy.” Dec. on Inst. 9 (citations omitted). In the subsequent papers,
`the parties confirm that there is no reason to construe these terms because
`“Patent Owner does not dispute that the primary reference involves a secure
`connection,” and “does not dispute that some form of a unique identity is
`found in the primary reference.” PO Resp. 18, 23; see also Pet. Reply 8
`(agreeing that we need not construe these terms). Accordingly, we find that
`no express constructions of “secure connection” or “unique identity” are
`
`9
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`IPR2019-00824
`Patent 9,712,502 B2
`needed. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe
`terms ‘that are in controversy, and only to the extent necessary to resolve the
`controversy.’”).
`
`B. Mobile Computer
`Patent Owner argues that “the term ‘mobile computer’ in the claims
`means ‘a computer that moves from one network to another as opposed to a
`computer that is only capable of a static secure connection.’” PO Resp. 11.
`Patent Owner adds that a mobile computer “must be moving between
`networks,” and that “[m]erely being capable of moving is insufficient.” PO
`Sur-Reply 5. Petitioner argues that “[t]o the extent the Board determines
`this term needs to be construed” it means “a computer that is capable of
`moving between networks or physical locations.” Pet. Reply 2.
`We address the parties’ arguments below as they relate to (i) the claim
`language, (ii) the ’502 patent’s Specification, and (iii) the extrinsic evidence.
`
`1. Claim Language
`a. Claim 1’s Language
`Patent Owner argues that claim 1 recites a “‘mobile computer’ in a
`specific context.” PO Sur-Reply 4. To that end, Patent Owner argues that
`claim 1 recites:
`“A computer for sending secure messages, and for enabling
`secure forwarding of messages . . . by an intermediate computer
`to a recipient computer,” including:
`• “the computer configured to be assigned with a network
`address in the telecommunication network, wherein the
`computer is a mobile computer in that the address of the
`mobile computer changes”
`
`10
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`IPR2019-00824
`Patent 9,712,502 B2
`• “the [mobile] computer configured to send the secure
`message to the intermediate computer for forwarding of
`the encrypted data payload to the recipient computer”
`
`
`PO Resp. 11–12 (quoting Ex. 2002, 22:41–62) (emphasis added). In its Sur-
`Reply, Patent Owner quotes and paraphrases additional language from claim
`1, namely that:
`the computer is [a] “mobile computer in that the address of the
`mobile computer changes” and where [the] mobile computer
`forms the secure message to have an encrypted data payload and
`“a unique identity and a destination address of an intermediate
`computer,” and where the mobile computer sends the secure
`message to the intermediate computer which uses the unique
`identity and destination address formed by the mobile computer
`to determine a final destination address to enable the secure
`“forwarding of the encrypted data payload to the recipient
`computer” by the intermediate computer.
`PO Sur-Reply 4–5 (quoting and citing Ex. 2002, 22:41–62). Patent Owner
`argues that “[i]t is not enough that the computer be capable of moving
`between networks in some other context at some other time,” and that the
`computer “must be moving between networks in the recited context” of
`claim 1. Id. at 5.
`
`We disagree with Patent Owner that the language of claim 1 supports
`its proposed construction. Nothing in claim 1 relates to a mobile computer
`actually moving between networks. Ex. 2002, 22:41–62. Rather, claim 1
`focuses on the operations of a “computer for sending secure messages, and
`for enabling secure forwarding of messages in a telecommunication network
`by an intermediate computer to a recipient computer,” wherein the computer
`is a mobile computer. Id. at 22:41–44 (reciting claim 1’s preamble). Each
`of claim 1’s limitations begins with “the computer configured to,” followed
`by specific operations (i.e., “connect,” “be assigned,” “form,” “send,” and
`
`11
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`

`IPR2019-00824
`Patent 9,712,502 B2
`“set up”) that concern sending secure messages and enabling secure
`forwarding of the messages. Id. at 22:45–62. In the context of claim 1, the
`mobile computer forms the secure message (i.e., “encrypting the data
`payload of a message and giving the message a unique identity and a
`destination address of an intermediate computer”), and sends the secure
`message to an intermediate computer for forwarding to a recipient computer.
`Id. Claim 1 does not recite that the mobile computer moves between
`networks. Id. To the contrary, claim 1 recites that “the computer is a mobile
`computer in that the address of the mobile computer changes.” Id. at 22:48–
`50 (emphasis added). In other words, claim 1 describes what a mobile
`computer is (i.e., it can change addresses, or put differently, is capable of
`moving between networks), not that it must move between networks in the
`context of claim 1. Id. Our conclusion is further supported by the additional
`limitation in claim 1 that “the computer [is] configured to set up a secure
`connection using a key exchange protocol.” Id. at 22:61–62. As we discuss
`below, setting up a secure connection using a key exchange protocol is
`consistent with the mobile computer being at a point of attachment, rather
`than moving between networks. See infra Section IV(B)(2)(c) (discussing
`the Specification teaching that the mobile terminal must establish a new
`IPSec connection from each point of attachment, and using the IKE key
`exchange). Accordingly, claim 1’s language does not support Patent
`Owner’s construction.
`
`b. Claim 7’s Language
`Claim 7 depends from claim 1, and recites “wherein the computer is
`
`configured to send a signaling message to the intermediate computer when
`the computer changes its address such that the intermediate computer can
`
`12
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`IPR2019-00824
`Patent 9,712,502 B2
`know that the address of the computer is changed.” Ex. 2002, 23:11–15
`(emphasis added). In our Decision on Institution, we noted that
`in its Preliminary Response, Patent Owner did not address the impact, if any,
`of dependent claim 7’s claim language on the construction Patent Owner
`proposed for this term at that time. Dec. on Inst. 11. Thereafter, in its
`Response, Patent Owner addresses claim 7 with respect to its new proposed
`construction for this term. PO Resp. 12–13.
`
`Patent Owner argues that “[c]laim 7 is consistent with [its] proposed
`construction.” Id. at 12. In particular, Patent Owner argues that “[c]laim 7
`recites a specific configuration of the invention where a signaling message is
`sent from the mobile computer to the intermediate computer to provide its
`new IP address when the mobile computer has changed networks.” Id.
`According to Patent Owner, one of ordinary skill in the art “would readily
`recognize that there are other ways by which mobility could be provided in
`claim 1 using different operations different from those in claim 7.” Id.
`
`We disagree with Patent Owner that claim 7 is consistent with its
`proposed construction for this term. Rather, claim 7 adds additional
`functionality to the mobile computer (i.e., “send a signaling message”) for
`use “when the computer changes its address.” Ex. 2002, 23:11–15
`(emphasis added). In other words, claim 7 adds functionality to claim 1 for
`“when” the mobile computer changes addresses (in other words, moves from
`one network to another). Id. Rather than supporting Patent Owner’s
`proposed construction, the language of claim 7 supports Petitioner’s
`proposed construction that a mobile computer “is capable of moving
`between networks” because claim 7’s additional functionality at least
`suggests that this functionality (including mobile computer movement) is not
`
`13
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`IPR2019-00824
`Patent 9,712,502 B2
`present in claim 1, which is broader than dependent claim 7. See Phillips,
`415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a
`particular limitation gives rise to a presumption that the limitation in
`question is not present in the independent claim.”); Liebel-Flarsheim Co. v.
`Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (“[W]here the limitation
`that is sought to be ‘read into’ an independent claim already appears in a
`dependent claim, the doctrine of claim differentiation is at its strongest.”)
`(citation omitted). Moreover, we do not find that Patent Owner’s arguments,
`which we discuss below, concerning the Specification’s disclosure overcome
`this presumption.
`
`2. Specification
`a. Patent Owner’s Arguments
`Patent Owner argues that the ’502 patent’s Specification “describes
`‘mobility’ in the background section” in a way that “is consistent with the
`understanding that a ‘mobile computer’ at least moves from one network to
`another.” PO Resp. 13 (citing Ex. 2002, 4:35–39). More specifically, Patent
`Owner argues that the Specification states that “[i]n this text, the term
`mobility and mobile terminal does not only mean physical mobility, instead
`the term mobility is in the first hand meant moving from one network to
`another, which can be performed by a physically fixed terminal as well.” Id.
`(quoting Ex. 2002, 4:35–39); PO Sur-Reply 2–3. Patent Owner argues that
`the plain import of this sentence “is that a requirement of mobility is that the
`computer is ‘moving from one network to another.’” PO Sur-Reply 3.
`In addition, Patent Owner argues that “the Background of the
`Invention [section of the ’502 patent] criticizes systems where the host
`computer is only capable of a static or fixed connection.” PO Resp. 14
`
`14
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`Patent 9,712,502 B2
`(citing Ex. 2002, 4:17–28, 4:40–46, 4:61–64). Put differently, Patent Owner
`argues that “[t]he background section of the [’]502 [p]atent consistently
`disparages secure connection systems where the computer is not moving
`from one network to another and instead are capable of only static secure
`connections.” PO Sur-Reply 3 (citing PO Resp. 14–15 (citing Ex. 2003
`¶ 77; Ex. 2002, 4:17–28, 4:40–46, 4:61–64)); see also PO Resp. 14–16
`(citing same). Patent Owner argues that “[t]hus, the mobile computer is
`explicitly described as one that is not fixed to a static secure connection (its
`home address) but is instead moving between networks.” PO Sur-Reply 3.
`Patent Owner argues that this is confirmed by the ’502 patent’s disclosure
`that “[t]he mobile terminal is mobile in the sense that it changes its network
`point of attachment frequently.” Id. at 4 (quoting Ex. 2002, 4:51–52).
`In addition, Patent Owner argues that “the Detailed Description of the
`invention [section] describes mobile computers as being devices that are not
`limited to a static or fixed connection.” PO Resp. 15. In support of this
`argument, Patent Owner block quotes from the Detailed Description section
`of the ’502 patent, without further explanation. Id. at 15–17 (quoting
`Ex. 2002, 7:56–8:7, 11:5–29). The quoted passages generally disclose, inter
`alia, that a first computer (e.g., a mobile computer) can send a signal (e.g., a
`registration request) to an intermediate computer so that address fields in a
`translation table can be modified to account for the change of addresses for
`enabling mobility. See Ex. 2002, 7:56–8:7, 11:5–29. Patent Owner then
`argues that “[t]hus, the mobile computer 1 in Figure 1 of the patent is
`described as maintaining an IPSec connection through second computer 3 by
`modifying the endpoint of the IPSec connection as the mobile computer
`changes addresses.” Id. at 17 (annotating Ex. 2002, Fig. 1) (emphasis
`
`15
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`IPR2019-00824
`Patent 9,712,502 B2
`added). Similarly, Patent Owner argued, during the oral hearing, that a
`computer “is functioning as a mobile computer insofar [as] it is moving from
`one network to another and maintaining, the key is that it’s maintaining the
`same secure connection” — “it’s moved from one network to another and
`ha[s] a different address, but it doesn’t have to establish a new secure
`connection.” Tr. 49:14–19 (emphasis added).
`In addition, Patent Owner argues that its proposed construction is
`consistent with the ’502 “patent’s stated purpose: to securely forward a
`secure message when a computer is mobile, rather than merely when it is
`fixed to a certain network.” PO Sur-Reply 5 (citing Ex. 2002, 4:17–38,
`7:51–60).
`Lastly, Patent Owner discounts Petitioner’s reliance on the
`background section’s discussion of a mobile terminal and a mobile host
`allegedly forming static secure connections, and instead Patent Owner
`argues that its proposed construction “is informed by fundamental aspects of
`the [S]pecification,” namely (i) that “the background section of the [’]502
`[p]atent consistently disparages secure connections where the mobile device
`is confined to a static secure connection,” and (ii) “the detailed description
`section of the [’]502 [p]atent consistently describes a mobile computer as
`moving from one network to another and thereby is not limited to a static
`secure connection.” Id. at 5–6.
`
`b. Petitioner’s Arguments
`Petitioner argues that Patent Owner’s proposed construction is “an
`improper and overly narrow construction of the term ‘mobile computer,’
`which attempts to import numerous additional requirements into this basic
`term.” Pet. Reply 1. More specifically, Petitioner argues that Patent
`
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`IPR2019-00824
`Patent 9,712,502 B2
`Owner’s proposed construction “imports essentially the same additional
`requirements into the claims that the Board already rejected at institution,
`namely that the ‘mobile computer’ must be able to move while maintaining
`its secure connection.” Id. at 2 (citing Dec. on Inst. 11).
`Petitioner also argues that the Specification refers to “mobile
`terminal” and “mobile host” as “computers that only establish a ‘static
`secure connection.’” Id. at 5–6. For example, Petitioner argues that the
`Specification discloses that because “IPSec connections are bound to fixed
`addresses, the mobile terminal must establish a new IPSec connection from
`each point of attachment.” Id. at 6 (citing PO Resp. 15 (quoting Ex. 2002,
`4:61–64)) (emphases omitted). For another example, Petitioner argues that
`the Specification states that “IPSec is intended to work with static network
`topology, where hosts are fixed to certain subnetworks,” and “[i]f IPSec is
`used with a mobile host, the IKE key exchange will have to be redone from
`every new visited network.” Id. (citing PO Resp. 1 (quoting Ex. 2002, 4:17–
`28)). Petitioner argues that “this passage plainly uses the term ‘mobile host’
`in conjunction with a computer reestablishing static IPSec connections when
`moving rather than maintaining them.” Id. (citing Ex. 1022 ¶ 15).
`
`c. Our Analysis
`We disagree with Patent Owner that the cited portions of the
`Specification support its proposed construction for this term. First, we find
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`that Patent Owner conflates “mobility” with “mobile computer.”5 The
`Specification states that “the term mobility . . . meant moving from one
`network to another,” rather than the term “mobile computer” having this
`meaning. Ex. 2002, 4:35–39 (emphasis added). Moreover, the Specification
`uses the term “mobility” as a capability or condition. For example, the
`Specification uses the term “mobility” as follows: (i) certain “protocols are
`not well suited to mobility”; (ii) “[t]he intermediate host might be a Mobile
`IP home agent, that provides mobility for the connection between the mobile
`terminal and the home agent”; (iii) a disclosed “method solves the mobility
`problem, at the cost of adding extra headers to packets”; and (iv) “[o]ne
`example of a change in the [security association (‘SA’)] between the first
`computer and the intermediate computer is the change of addresses for
`enabling mobility.” Ex. 2002, 5:8–9, 5:18–22, 5:33–34, 7:56–58 (emphases
`added). In other words, mobility is a capability a mobile computer has,
`rather than being synonymous with mobile computer. As such, these
`passages from the Specification support Petitioner’s construction that a
`mobile computer is “a computer that is capable of moving between
`networks,” rather than Patent Owner’s construction requiring that a “mobile
`computer must be moving between networks.”
`
`
`5 Patent Owner likewise argues that we concluded in our Decision on
`Institution that a “‘mobile computer’ must at least be ‘moving from one
`network to another.’” PO Sur-Reply 3 (quoting Dec. on Inst. 10). This is
`incorrect. Instead, we found “that the ’502 patent teaches that mobility
`‘mean[s] moving from one network to another.’” Dec. on Inst. 10 (quoting
`Ex. 2002, 4:35–37) (emphasis added). We also expressly stated that we did
`not reach “whether ‘a computer that is capable of moving from one network
`to another’ differs from the plain meaning of ‘mobile computer,’ as this
`[was] not in controversy” at the institution stage. Id. at 10–11.
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`Second, we are not persuaded by Patent Owner’s arguments that the
`’502 patent’s background section criticizes and disparages systems where
`the host computers are only capable of a static or fixed connection. PO
`Resp. 14–15. These host computers are not mobile computers, but rather
`“are fixed to certain subnetworks.” Ex. 2002, 4:18–20. Put differently, for
`these hosts “when an IPSec tunnel has been formed by using Internet Key
`Exchange (IKE) protocol, the tunnel endpoints are fixed and remain
`constant.” Id. at 4:20–23. In contrast, a mobile computer has the capability
`to move between networks (i.e., can change its network point of attachment
`frequently). Id. at 4:51–52 (“The mobile terminal is mobile in the sense that
`it changes its network point of attachment frequently.”). The Specification
`makes clear that a mobile computer is capable of moving between networks
`(as opposed to requiring such movement), even if it would have to “establish
`a new IPSec connection from each point of attachment,” or put differently,
`“the IKE key exchange will have to be redone from every new visited
`network.” Id. at 4:23–25, 4:61–64 (emphasis added). Hence, Patent
`Owner’s construction also is incorrect to the extent that the latter portion
`(i.e., “as opposed to a computer that is only capable of a static secure
`connection”) would exclude a mobile computer from establishing a secure
`connection (static or otherwise) from each point of attachment. Ex. 2002,
`4:51–52, 4:61–64.
`Third, we find that Patent Owner’s proposed construction is
`unworkable as to when such alleged movement needs to have occurred.
`Patent Owner agrees that “[c]ertainly the computer is at times going to be
`connected to a given network because it establishes a secure connection with
`a given network.” Tr. 49:12–14. Despite this, Patent Owner argues that the
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`proper construction for this term requires that a mobile computer must be
`moving between networks. E.g., id. at 49:14–16. However, whether or not
`the mobile computer has changed its point of attachment and established a
`new IPSec connection before sending a secure message to the intermediate
`computer is immaterial to claim 1’s limitations. Ex. 2002, 4:17–25, 4:61–
`64, 22:40–62. Again, the mobile computer in claim 1 simply sends a secure
`message to the intermediate compu