Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`Date: March 23, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`Patent Owner.
`_______________
`
`IPR2019-01191
`Patent 8,606,917 B2
`_______________
`
`
`
`
`Before SALLY C. MEDLEY, AMBER L. HAGY, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 11
`Date: March 23, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`Patent Owner.
`_______________
`
`IPR2019-01191
`Patent 8,606,917 B2
`_______________
`
`
`
`
`Before SALLY C. MEDLEY, AMBER L. HAGY, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`IPR2019-01191
`Patent 8,606,917 B2
`
`
`INTRODUCTION
`I.
`Guest Tek Interactive Entertainment Ltd. (“Petitioner”) filed a
`Petition under 35 U.S.C. § 311 requesting inter partes review of claims 1
`and 11 (“the challenged claims”) of U.S. Patent No. 8,606,917 B2 (“the ’917
`patent”). Paper 1 (“Pet.”). Nomadix, Inc. (“Patent Owner”) filed a
`Preliminary Response. Paper 5 (“Prelim. Resp.”). With the Board’s
`authorization (Paper 6), Petitioner filed a Reply (Paper 7 (“Reply”)) and
`Patent Owner filed a Sur-Reply (Paper 8 (“Sur-Reply”)), both addressing
`whether the challenged claims of the ’917 patent are entitled to claim
`priority to the filing date the ’060 application. See Paper 6, 4 (authorizing
`limited briefing).
`We denied institution of the Petition based, in part, on our
`determination that the ’917 patent is entitled to the filing date of the ’060
`application. Paper 9 (“Inst. Dec.”), 17–29. Petitioner now files a Request
`for Rehearing, arguing that “the Board misapprehended disclosures of the
`’060 application” in reaching its decision. Paper 10 (“Req. Reh’g), 1. For
`the following reasons, we deny Petitioner’s Request for Rehearing.
`
`II. STANDARD OF REVIEW
`The party requesting rehearing has the burden to show that the
`decision should be modified. 37 C.F.R. § 42.71(d). In particular, the
`requesting party must identify “all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed.” Id. When rehearing a decision on a petition, we
`review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An
`abuse of discretion may arise if a decision is based on an erroneous
`
`2
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`IPR2019-01191
`Patent 8,606,917 B2
`
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir.
`2004).
`
`III. ANALYSIS
`In the Institution Decision, we determined that Petitioner failed to
`demonstrate a reasonable likelihood of prevailing on its challenge of claims
`1 and 11 on Grounds 1 and 2, which are both based on Trudeau ’578,
`because Petitioner had not demonstrated a reasonable likelihood of showing
`that Trudeau ’578 qualifies as prior art to the ’917 patent. Inst. Dec. 28. 1 In
`particular, we determined that Patent Owner had demonstrated sufficiently
`that the challenged claims of the ’917 are entitled to the filing date of the
`’060 priority application, which antedates Trudeau ’578, and Petitioner had
`not rebutted that showing. Id. at 13–28.
`Petitioner contends the Board should reconsider its decision denying
`institution in this proceeding because “the Board misapprehended the
`disclosures of the ’060 application” in determining that the ’060 application
`provides written description support for the challenged claims of the ’917
`patent. Req. Reh’g 1. For the reasons that follow, we are not persuaded that
`we have misapprehended any disclosures of the ’060 application, and we,
`therefore, deny Petitioner’s Request for Rehearing.
`
`
`1 We also determined Petitioner had failed to demonstrate a reasonable
`likelihood of prevailing on Ground 3. Inst. Dec. 29–38. Petitioner does not
`seek reconsideration of that determination, although Petitioner expresses
`disagreement with it. Req. Reh’g 1, n.1.
`
`3
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`IPR2019-01191
`Patent 8,606,917 B2
`
`In the Petition, Petitioner argues the ’060 application fails to provide
`written description support for the following limitations of claim 1 of the
`’917 patent, alone or in combination (using the reference numbers provided
`by Petitioner and also adopted by Patent Owner):
`[1.C] comparing the source IP address with profiles of
`authorized source devices, each profile including an IP address,
`wherein if the source IP address is included in a profile of an
`authorized source device, the source device is granted access
`without further authorization, and
`[1.D] if the source IP address is not included in a profile
`associated with an authorized source device, then determining
`whether the destination IP address is included in a plurality of
`destination IP addresses associated with the access controller,
`wherein if the destination IP address is included in the plurality
`of destination IP addresses, the source device is granted access
`without further authorization[.]
`Pet. 11–18. Petitioner raises the same contentions against similar limitations
`11[C] and 11[D]. See id. (arguing claims 1 and 11 collectively). Patent
`Owner disputes these contentions. Prelim. Resp. 11–28 (also arguing claims
`1 and 11 collectively).
`
`Central to our analysis in the Institution Decision, and to Petitioner’s
`arguments in its Request for Rehearing, is Figure 2 of the ’060 application
`(repeated identically in the ’917 patent), which is reproduced below:
`
`4
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`IPR2019-01191
`Patent 8,606,917 B2
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`
`
`Figure 2 of the ’060 application and ’917 patent, reproduced above, “is a
`flow chart of a method in which a AAA server performs authentication,
`authorization, and accounting, according to one aspect of the invention.”
`Ex. 1003, 82; Ex. 1001, 5:28–30.
`
`
`Petitioner argues the Board “misapprehended what Figure 2 of the
`’060 application discloses.” Req. Reh’g 5. In particular, Petitioner argues
`[s]teps 210 and 220 of Figure 2 do not disclose the combination
`of limitations [C] and [D], i.e., (1) comparing a source IP
`address with profiles of authorized source devices, and (2) if the
`source IP address is not included in a profile associated with an
`authorized device, then comparing the destination IP address
`against a plurality of authorized destination IP addresses.
`
`2 As in the Institution Decision, references herein to the page numbers of
`Exhibit 1003 are to the numbers added by Petitioner to the document in the
`lower left hand corner of each page, not to the original page numbers.
`
`5
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`IPR2019-01191
`Patent 8,606,917 B2
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`Id. Petitioner also argues that Patent Owner and the Board interpreted
`Figure 2 differently, and Petitioner at least implicitly asserts this alleged
`disparity confirms that the Board based its Institution Decision on an
`incorrect interpretation. See id. at 5–10. Petitioner contends Patent Owner
`interpreted step 210 of Figure 2 as disclosing “part (1) of the claimed
`combination” (that is, limitations 1/11[C]) and step 220 of Figure 2 as
`disclosing “part (2)” (that is, limitations 1/11[D]). Id. at 5. Petitioner then
`argues the Board took a different approach, reading step 210 (the
`“authentication” step) as “merely involving ‘identifying the source based on,
`for example, a source IP address,” and reading step 220 (the “authorization”
`step) as “disclosing the claimed combination, including comparing the
`source IP address with stored profiles, and if there is no match, authorizing
`access based on the destination IP address.” Id. at 8–9.
`
`First, we disagree that, in reaching our decision, we interpreted Figure
`2 differently than did Patent Owner. Notably, Petitioner cites generally to
`Patent Owner’s Preliminary Response at § VI.B.6 (see Req. Reh’g 5), but
`does not reference any particular statements to support its characterization of
`Patent Owner’s position. On our reading, Patent Owner does not argue in
`that section (or elsewhere in the Preliminary Response) that limitations [C]
`and [D] of claims 1 and 11 are each mapped distinctly to steps 210 and 220,
`respectively, of Figure 2, as Petitioner contends. Rather, Patent Owner
`argues that “block 210 discloses authenticating [a] ‘source based on attribute
`associated with the source,’” and “[b]lock 220 then determines authorization
`based on 1) an attribute associated with the source; 2) destination; or
`3) content.” Prelim. Resp. 26. Thus, as we did in rendering our decision,
`Patent Owner argues blocks 210 and 220 of Figure 2 together as part of the
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`IPR2019-01191
`Patent 8,606,917 B2
`
`disclosure in the ’060 application that supports the ’917 patent claims, and
`limitations 1/11[C] and [D] in particular. Compare id. at 17–27, with Inst.
`Dec. 20–28.
`
`Second, regardless of whether our analysis fully aligns with Patent
`Owner’s contentions, Petitioner does not persuade us that we
`misapprehended any disclosures of the ’060 application in reaching our
`decision. Petitioner argues “the Board’s theory is incorrect because the ’060
`application nowhere discloses that step 220 (authorization) involves
`comparing a source IP address with stored ‘profiles’.” Req. Reh’g 10.
`According to Petitioner, “[c]omparing a source attribute against multiple
`profiles to see if there is, or is not, a corresponding profile only happens in
`step 210 (i.e., during authentication) in the ’060 application. There must be
`a corresponding profile in the database for the process to even proceed to
`step 220.” Id. at 11 (emphasis added). 3 Petitioner further contends that
`“step 220 involves searching for access information in a specific profile that
`has already been identified, rather than searching multiple profiles again.”
`Id.
`We are not persuaded that we have misapprehended the disclosures of
`
`the ’060 application; rather, we view Petitioner’s arguments as contrary to
`
`3 Petitioner makes similar arguments in asserting that “Patent Owner’s
`interpretation” of Figure 2 is incorrect. See Req. Reh’g 5–8 (arguing the
`’060 application discloses determining access rights based on the destination
`only if the source attribute matches a profile). As noted herein, we disagree
`that Patent Owner’s interpretation of Figure 2 (and accompanying
`disclosures) differs from our own; but, even if that were the case, pointing
`out errors in Patent Owner’s interpretation would not provide a basis for
`rehearing. We, therefore, do not address separately herein Petitioner’s
`arguments based on “Patent Owner’s interpretation.” See id.
`
`7
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`IPR2019-01191
`Patent 8,606,917 B2
`
`those disclosures. First, we disagree that comparing a source attribute
`against multiple profiles “only happens in step 210” of Figure 2, as
`Petitioner argues. Id. at 11. Rather, as we find in the Institution Decision,
`the ’060 application describes identifying in a packet an attribute associated
`with the source, and using that attribute with a source profile database to
`determine access rights (authorization). Inst. Dec. 20 (citing Ex. 1003,
`13:5–20, 14:5–11, 21:3–6, 22:16–23:3). The ’060 application describes the
`types of attributes used for authorization, including a source IP address. Id.
`(citing Ex. 1003, 25:22–26:2). The ’060 application also states that once a
`source is determined to be authorized (to have access), the “source’s traffic
`can be allowed to proceed out of the gateway device to the networks or
`online services the user associated with the source wishes to access (block
`230).” Id. (quoting Ex. 1003, 26:8–10, Fig. 2). Thus, the ’060 application
`indicates comparing a source attribute against multiple profiles is part of the
`authorization process in block 220.
`
`Petitioner’s narrow interpretation of Figure 2 as blocking all access
`past step 210 unless, as part of authentication, a source attribute matches a
`profile, is contradicted by other disclosure in the ’060 application. This
`assertion appears to confuse “authentication” with “authorization” as defined
`by both the ’060 application and the ’917 patent, which state that
`“authentication refers to the identification of the source, [and] authorization
`refers to the determination of permittable source access . . . .” Ex. 1003,
`19:3–5 (emphases added); Ex. 1001, 19:17–20. As part of “authentication”
`in the context of the ’060 application and the ’917 patent, the AAA server is
`able to identify a source device based on an attribute sent in a packet (such
`as a source IP address). Ex. 1003, 25:22–26:2; Ex. 1001, 23:35–47. This
`
`8
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`IPR2019-01191
`Patent 8,606,917 B2
`
`allows the AAA server to automatically identify the source device “in a
`manner that is transparent to computer users” (that is, without requiring a
`user to enter an ID). Ex. 1003, 22:16–26; Ex. 1001, 21:27–31, 21:42–44.
`But authentication of the source does not determine access rights. Rather,
`the ’060 application further states that “[a]fter authentication, the AAA
`server 30 compares the attributes of the source with the access rights of the
`source associated with the user, computer, location or attribute(s).”
`Ex. 1003, 23:17–19 (emphasis added); see also Ex. 1001, 22:6–9. In Figure
`2, this means that after step 210 (authentication), the server will determine
`authorization rights (step 220). The ’060 application further states:
`According to one aspect of the invention, the authorization
`capability of the AAA server 30 can be based upon the type of
`services the source is attempting to access, such as a destination
`address, identified by the gateway device 12 based upon data
`received from the source computer. The destination can be a
`destination port, Internet address, TCP port, network, or the
`like. . . . Alternatively, the AAA method according to the
`present invention allows some or all sources to connect directly
`to a specific site, such as credit card or billing servers for
`collecting billing information . . . .
`Ex. 1003, 24:24–25:11 (emphasis added); see also Ex. 1001, 22:61–23:16.
`If the AAA server disallowed any further access upon failure of a source
`attribute to match a profile, as Petitioner argues, the server could not allow
`“all sources” access to particular destinations, as stated above.
`
`These disclosures are consistent with our findings and conclusions in
`the Institution Decision. E.g., Inst. Dec. 24–28. As we find in our decision,
`the ’060 application (like the ’917 patent) discloses that a source is first
`authenticated based on an attribute associated with the source (which can be
`the source IP address) (Fig. 2, block 210), and then authorized based on
`
`9
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`IPR2019-01191
`Patent 8,606,917 B2
`
`source or destination or content (Fig. 2, block 220). Id. at 28 (citing
`Ex. 1003, Fig. 2, 18:25–19:5, 25:21–26:2); see also Ex. 1001, 19:5–21. As
`we also find in our decision, even if the source’s IP address is not generally
`authorized for all access (e.g., non-paying subscribers), Figure 2 of both the
`’060 application and the ’917 patent, and accompanying disclosures, indicate
`the source may still be allowed access to certain destinations. Id. (citing
`Ex. 1003, 24:24–25:11; Ex. 1001, 23:11–17).
`
`In essence, Petitioner’s arguments on rehearing distill down to a
`disagreement with our reading of the ’060 application (and the identical
`disclosures in the ’917 patent). Such disagreement does not persuade us that
`we have misapprehended any such disclosures in rendering our Institution
`Decision.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we
`abused our discretion by misapprehending or overlooking any evidence or
`argument in the Petition.
`
`V. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
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`10
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`IPR2019-01191
`Patent 8,606,917 B2
`
`PETITIONER:
`
`Jeffrey Lesovitz
`Steven Rocci
`Daniel Goettle
`BAKER & HOSTETLER LLP
`jlesovitz@bakerlaw.com
`srocci@bakerlaw.com
`dgoettle@bakerlaw.com
`
`PATENT OWNER:
`
`Doug Muehlhauser
`William H. Shreve
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2dgm@knobbe.com
`2whs@knobbe.com
`
`
`11
`
`
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