UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`
`Petitioner,
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`v.
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`NOMADIX, INC.,
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`Patent Owner.
`
`____________
`Case IPR2019-01191
`U.S. Patent No. 8,606,917
`___________
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`PETITIONER’S REPLY IN SUPPORT OF ITS PETITION FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 8,606,917
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`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`
`Patent Owner.
`
`____________
`Case IPR2019-01191
`U.S. Patent No. 8,606,917
`___________
`
`
`PETITIONER’S REPLY IN SUPPORT OF ITS PETITION FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 8,606,917
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`Exhibit No.
`1001
`1002
`1003
`1004
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`1005
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`1006
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`1007
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`1008
`1009
`1010
`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`LISTING OF EXHIBITS
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`Description
`U.S. Patent No. 8,606,917
`Declaration of Dr. Peter Dordal
`U.S. Patent Application No. 09/693,060
`U.S. Patent No. 8,046,578
`David Whyte et al., DNS-based Detection of Scanning
`Worms in an Enterprise Network, Proceedings of the 12th
`Annual Network and Distributed System Security
`Symposium, San Diego, USA (Feb. 3-4, 2005)
`U.S. Patent No. 6,463,474
`John Wack et al., Keeping Your Site Comfortably Secure:
`An Introduction to Internet Firewalls, NIST Special
`Publication 800-10 (Dec. 1994)
`Dictionary definitions
`U.S. Patent No. 6,226,677
`U.S. Patent No. 6,389,462
`U.S. Patent No. 6,158,008
`Chapter 6 of Building Internet Firewalls by D Brent
`Chapman and Elizabeth D Zwicky, published in 1995 by
`O’Reilly & Associates
`Secure Public Internet Access Handler (SPINACH), Elliot
`Poger, Mary G. Baker, Computer Science Department,
`Stanford University, originally published in the Proceedings
`of the USENIX Symposium on Internet Technologies and
`Systems, Monterey, California, December 1997
`Chapman, Network (In)Security Through IP Packet
`Filtering, Published in Proceedings of the Third USENIX
`UNIX Security Symposium; Baltimore, MD; September,
`1992
`Duane Wessels Squid and ICP: Past, Present, and Future,
`Proceedings of the Australian Unix Users Group. September
`1997, Brisbane, Australia
`TAPI: Transactions for Accessing Public Infrastructure Matt
`Blaze, John Ioannidis, Sotiris Ioannidis , Angelos D.
`
`i
`
`
`
`
`
`
`
`Keromytis , Pekka Nikander , and Vassilis Prevelakis,
`Proceedings of Personal Wireless Communications: IFIP-
`TC6 8th international conference, PWC 2003, Venice, Italy,
`September 23-25, 2003
`Wireless Hacking: Projects for Wi-Fi Enthusiasts, by Lee
`Barken, Eric Bermel, John Eder, Matt Fanady, Alan
`Koebrick, Michael Mee, and Marc Palumbo, and published
`in November 2004 by Syngress Publishing
`Cisco Subscriber Edge Services Manager Solutions Guide
`(September 2003)
`Affidavit of Christopher Butler of Internet Archive
`Printout from www.ndss-symposium.org
`U.S. patent application no. 60/160,890
`U.S. patent application no. 60/111,497
`Excerpts from Nomadix’s May 31, 2019 final infringement
`contentions amending asserted claims
`Excerpts from Nomadix’s August 30, 2017 infringement
`contentions asserting ’917 patent
`Docket Report from parallel district court litigation
`Excerpts from Notice of Motion and Motion to Dismiss for
`Improper Claim Splitting, filed in Nomadix, Inc. v. Guest-
`Tek Interactive Entertainment Ltd., 2:19-cv-04980 (D.I. 65)
`Excerpts from Expert Report of Dr. Gottesman on behalf of
`Guest Tek, asserting invalidity based on Guest Tek prior art
`devices
`Excerpts from Guest-Tek’s Notice Of Motion And Motion
`To Exceed Page Limit On Motion For Summary Judgment,
`filed in Nomadix, Inc. v. Guest-Tek Interactive
`Entertainment Ltd., 2:16-cv-08033 (D.I. 442)
`Claim Construction Order in Nomadix, Inc. v. Guest-Tek
`Interactive Entertainment Ltd., 2:16-cv-08033 (D.I. 420)
`Excerpts from Report and Recommendation in Nomadix,
`Inc. v. Guest-Tek Interactive Entertainment Ltd., 2:16-cv-
`08033 (D.I. 438)
`
`1017
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`1018
`1019
`1020
`1021
`1022
`1023
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`1024
`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`
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`ii
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`Petitioner Guest Tek Interactive Entertainment (“Guest Tek”) submits this
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`reply in accordance with the Board’s Order dated November 6, 2019 (Paper No. 6).
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`I.
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`
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`THE BOARD SHOULD NOT DENY INSTITUTION UNDER § 314(A)
`A. NHK Spring supports granting, rather than denying, institution.
`The Board requested that Guest Tek address any impact on this proceeding
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`of NHK Spring Co. v. Intri Plex Techs., Inc., IPR2018-00752, Paper 8 (Sept. 12,
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`2018). In short, NHK Spring does not favor denying institution under § 314(a) as
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`Patent Owner (“Nomadix”) suggests. Along with other relevant factors, the factors
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`identified in that decision favor institution.
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`Nomadix requests denial of institution because of (1) Guest Tek’s alleged
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`delay in filing the petition and (2) the supposedly advanced stage of a parallel
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`district court breach-of-contract case. Resp. § VII.A. First, as to alleged delay,
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`NHK Spring held that a petitioner’s awareness of prior art for ten years before
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`filing a petition was irrelevant when the petitioner was not time-barred and gained
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`no tactical advantage. IPR2018-00752 (Paper 8) at 19. Similarly, Guest Tek’s
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`petition was timely, which is undisputed. Nomadix suggests that Guest Tek
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`delayed by filing after the § 315(b) deadline. Resp. at 41. But that deadline only
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`applies to patent infringement defendants. Nomadix chose not to allege patent
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`infringement. Guest Tek therefore had every right to file its petition when it did.
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`Nor was there delay in filing the petition. Guest Tek did not even know
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`1
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`which patent claims Nomadix would assert in the district court until Nomadix
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`served its final infringement contentions on May 31, 2019. Ex. 1023. Moreover,
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`Guest Tek diligently searched for prior art and pursued its IPR after Nomadix first
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`asserted the ’917 patent on August 30, 2017. Ex. 1024. The case was stayed, upon
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`Guest Tek’s March 2018 motion, pending resolution of whether Nomadix owned
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`the asserted patents and had standing, until February 2019. Ex. 1025 (D.I. 241,
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`325). Guest Tek did not file an IPR during the stay to preserve resources and
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`attorneys’ fees for a case that it thought should be dismissed. After the stay, Guest
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`Tek diligently resumed its prior art search, completed it in April 2019, and
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`diligently prepared and filed its petition in June 2019. There was no delay.
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`Nor did Guest Tek gain a tactical advantage. Nomadix claims, without
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`explanation, that the time lapse before Guest Tek filed its IPR petition “has given
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`[it] the opportunity to adapt its petition theories to arguments and positions
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`Nomadix had developed in the Lawsuit.” Resp. at 41. That is untrue. Nomadix
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`had not addressed any of the prior art at issue in the petition in the district court
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`case before Guest Tek filed the petition. Therefore, Guest Tek could not have, and
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`did not, adapt its petition to Nomadix’s district court arguments and positions.
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` Second, as to the stage of the district court case, NHK Spring did not
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`suggest or hold that the fact a district court might decide the same invalidity issues
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`before the PTAB was, by itself, enough to deny institution under § 314(a). The
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`2
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`NHK Spring petitioner sought cancellation of claims based on prior art cited and
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`relied upon during patent prosecution. IPR2018-00752 (Paper 8) at 13-18. The
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`Board denied institution after assessing the relevant factors under § 325(d). Id.
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`The patent owner also contended that “the status of the district court proceeding
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`between the parties” favored denying institution because the trial would have
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`preceded the Board’s final written decision and the petitioner was relying on the
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`same prior art and arguments in both proceedings. Id. at 19-20.
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`While the PTAB did consider the district court’s advanced stage, it was
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`merely an “additional factor,” not a dispositive one. In fact, numerous post-NHK
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`Spring decisions confirm that the district court timeline is not, by itself, reason to
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`deny institution. See, e.g., Intuitive Surgical, Inc. v. Ethicon LLC, No. IPR2018-
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`01703, 2019 WL 764067, at *5 (Feb. 19, 2019) (“NHK Spring does not suggest,
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`much less hold, that [IPR] should be denied under § 314(a) solely because a district
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`court is scheduled to consider the same validity issues before the [IPR] would be
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`complete.”); Abbott Vascular, Inc. v. Flexstent, LLC, No. IPR2019-00882, 2019
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`WL 4940254, at *13 (Oct. 7, 2019) (“Treating that factor…as dispositive…would
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`be at odds with the Trial Practice Guide’s guidance…[and], in effect, create a rule
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`that imminent trial dates will require denial of IPRs in every case. We decline to
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`adopt such a bright-line rule.”); Intel Corp. v. Qualcomm Inc., No. IPR2019-
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`00128, 2019 WL 2295763, at *5 (May 29, 2019); Samsung Elecs. Co. v.
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`3
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`
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`Immersion Corp., No. IPR2018-01499, 2018 WL 7515967, at *8 (Mar. 6, 2018).
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`Furthermore, the district court here is unlikely to resolve the invalidity issues
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`raised in Guest Tek’s petition before the Board. The trial date will likely change.
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`The PTAB has already granted petitions on two of the six patents at issue in the
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`district court (IPR2019-00253, -00211). If the PTAB grants this petition, Guest
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`Tek intends to seek a stay of the district court case pending conclusion of the IPRs.
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`Even if the case is not stayed, Guest Tek recently moved in the alternative to
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`consolidate the case with a related case Nomadix brought against Guest Tek and
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`move the trial date to late 2020. Ex. 1026 at 2 n.1.
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`Guest Tek is also unlikely to pursue the same invalidity positions in both the
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`district court and IPR. In the district court, Guest Tek set forth invalidity positions
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`based on prior art not at issue in the IPR, and is even using a different expert (Dr.
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`Oded Gottesman). See Unified Patents, Inc. v. Mv3 Partners LLC, No. IPR2019-
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`00474, 2019 WL 4570444, at *4 (P.T.A.B. Sept. 20, 2019) (“[I]t is speculative . . .
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`to presume that the…references proffered in the present Petition will be presented
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`as the same combination in [the] ultimate case at trial.”). One key difference in
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`invalidity positions in the district court is Guest Tek’s anticipation allegation based
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`on it own prior art product, which is also the basis for invalidity of other asserted
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`patents. Ex. 1027 ¶ 85 & n.8; Abbott Vascular, 2019 WL 4940254, at *13
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`(rejecting § 314(a) argument because “Petitioner may rely on IPR-ineligible
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`4
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`grounds before the district court”). Instituting the IPR would allow the court to
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`focus on prior use/sale, rather than dealing with the printed prior art in the IPR.
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`In addition, Guest Tek intends to move for summary judgment of no claim
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`coverage as to the ’917 patent, which if granted would preclude the district court
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`from addressing invalidity at all. Ex. 1028 at 4. This is a likely outcome, given
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`that Guest Tek received a favorable claim construction as to the ’917 patent. Ex.
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`1029 at 20-22. As such, the IPR is important to prevent Nomadix from filing
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`another lawsuit based on other Guest Tek products, including those that will likely
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`be stricken from the district court case. See Ex. 1030 (striking certain products).
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`Moreover, even assuming the district court addresses the same invalidity
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`issues, and decides them in favor of Nomadix, Guest Tek would likely appeal that
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`decision. A final decision at the district court would not even be entered until
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`2021, well after the Board’s final written decision would be due.
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`B. Other relevant factors favoring institution should be considered.
` Even if the district court case’s stage favored denying institution (which it
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`does not), the Board must consider other relevant factors as well. See, e.g., Office
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`Trial Practice Guide, July 2019 Update (requiring “a balanced assessment of all
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`relevant circumstances in the case, including the merits.”); Samsung, 2018 WL
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`7515967, at *8) (“[T]he [NHK Spring] Board considered a parallel district court
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`case involving the same parties as an ‘additional factor’….The Board made clear
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`5
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`that weighing the § 325(d) factors alone was sufficient to deny institution….”).
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`Nomadix identified no additional factors warranting denial of institution.
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`Nor could it, as all factors favor institution. First, the “strength of the Petition”
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`favors institution–indeed, Nomadix does not even contest the merits of the first and
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`second invalidity grounds, beyond opposing the prior-art status of the references.
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`See Abbott Vascular, 2019 WL 4940254, at *13. Second, fairness and equities
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`favor institution. Guest Tek was not time barred, diligently prepared, and has
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`already expended resources in filing its petition. Third, relatively few resources
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`are needed to decide the IPR, which involves only two claims and two primary
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`references. Fourth, all six “Becton” factors favor institution, considering there is
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`no evidence that the examiner considered the prior art at issue here. Id. at *9. And
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`fifth, all seven General Plastic factors favor institution (e.g., this is Guest Tek’s
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`first petition on the ’917 patent). No. IPR2016-01357, slip op. at 16 (Sept. 6,
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`2017). These additional factors all favor institution.
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`II. THE CLAIMS ARE NOT ENTITLED TO PRIORITY
`As to the second issue identified for reply, Petitioner showed the challenged
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`claims are not entitled to an earlier priority date. Petition § V.D; Ex. 1002 § VII.
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`Nomadix’s citations to the related ’060 application fail to support the claims.
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`A. No disclosure of comparing a source IP address with profiles
`The ’060 application omits limitation 1.C/11.C: “comparing the source IP
`
`6
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`address with profiles of authorized source devices, each profile including an IP
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`address, wherein if the source IP address is included in a profile of an authorized
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`source device, the source device is granted access without further authorization.”
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`Nomadix first cites Figure 2, block 210 of the ’060 application. Resp. at 17.
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`But that Figure merely recites “authenticates source based on attribute associated
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`with the source” without describing the authentication. Nomadix then cites page
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`25, line 22 through page 26, line 2. That passage only says that the attributes
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`transmitted via a packet may be stored in a source profile database for use in
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`determining source authorization rights, and that the attributes contained in the
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`packet can include network information, source IP address, MAC address, packet
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`type, etc. It does not suggest a comparison of the source IP address against
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`multiple profiles of authorized source devices that each contain an IP address.
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` Nomadix cites four other embodiments that also omit this claim limitation:
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` Page 13, lines 5-13 teaches identifying “an attribute” associated with the
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`source from a packet, and accessing a source profile based upon the “attribute.”
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`But it does not disclose that the attribute compared against the profiles is a “source
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`IP address.” Nor does it disclose comparing the attribute against multiple
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`“profiles” that each contain an “IP address,” that the profiles are for “authorized”
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`source devices, or that the source device is granted access without further
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`authorization if the source IP address is included in an authorized profile.
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`7
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` Page 13, lines 15-20 refers to a “location identifier” as the “attribute
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`associated with the source,” but does not equate “location identifier” with “source
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`IP address.” After all, IP addresses identify network devices, not “locations.”
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` Page 14, lines 5-11 and page 21, lines 3-6 recite comparing source profiles
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`with an “attribute” received from or associated with a source. But they do not say
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`the attribute is a source IP address, the profiles are for “authorized” devices, or
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`“each profile” includes a source IP address. Nor do they say the attribute is from a
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`“packet.” Rather, the user enters the attribute. ’060 application at 21, ll. 6-7.
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`Thus, the ’060 application does not disclose comparing source IP addresses
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`against source profiles. A “source IP address” included in a profile, and comparing
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`an “attribute” against a source profile, do not amount to comparing a source IP
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`address in a received packet against multiple profiles of authorized devices that
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`each contain an IP address. Indeed, even as to which attribute is used in the recited
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`comparison, the ’060 application merely discloses a “genus” (comparing an
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`attribute), whereas the challenged claims recite a species (comparing source IP
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`addresses) of the genus. Nomadix therefore cannot distinguish Knowles (p. 20).
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`B. No disclosure of comparing the source IP address with profiles of
`authorized source devices
`Nor does the ’060 application disclose “if the source IP address is not
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`included in a profile associated with an authorized source device, determining
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`whether the destination IP address [included in the recited TCP connection request]
`8
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`is included in a plurality of destination IP addresses associated with the access
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`controller” (limitation 1.D, 11.D). For this claim limitation, Nomadix relies on
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`three passages, but none of them comes close to disclosing the limitation.
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`First, Nomadix refers to Figure 2, block 220, for authorization determined
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`from an attribute associated with the “destination,” and page 25, line 22 through
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`page 26, line 2, which mentions that attributes contained in a packet can include
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`“destination IP address.” Resp. at 22. But it does not follow that authorization is
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`performed by comparing an IP address against multiple destination IP addresses.
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`Second, Nomadix refers to a separate embodiment at page 25, lines 1-11,
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`that mentions how the alleged invention lets sources “connect directly to a specific
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`site.” Id. at 23. This passage is silent, however, on comparing a destination IP
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`address in a received packet against a list of destination IP addresses.
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`Third, Nomadix relies on the incorporated User Guide’s reference to “pass-
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`through IP addresses.” Id. But as explained in the Petition, a pass-through IP
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`address is not necessarily compared to a destination IP address. And the Guide
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`does not disclose that any alleged destination IP address compared against the
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`pass-through IP addresses would be from the “TCP connection request,” rather
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`than a different packet from the user device. Nomadix cites the Guide’s Glossary,
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`but it provides only general definitions (Internet Protocol, IP address, TCP, etc.)
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`and is silent on the operation of the pass-through IP addresses.
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`9
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`C. No disclosure of the combination of the two preceding undisclosed
`limitations.
`The ’060 application also fails to disclose the above limitations in
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`combination as claimed: (1) performing authorization based on source IP address
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`and (2) if that is not successful, also performing authorization based on destination
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`IP address. Nomadix’s citations to Figure 2, blocks 210 and 220 for the source and
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`destination IP address comparisons, respectively, are incorrect and misleading.
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`In block 210, “the AAA server 30 examines the packet to determine the
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`identity of the source,” and “authenticates source based on attribute associated with
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`the source” (Fig. 2). The server does not compare a source IP address against a
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`profile, and does not turn to step 220 “if the source IP address is not included in a
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`profile associated with an authorized source device.” At most, it turns to step 220 if
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`the source device has a matching profile in the source profile database (i.e., the
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`source device is authenticated). See ’060 application at 17:24-27. After the
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`information from the packet is identified and stored, the process turns to block 220,
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`where “access requested from a source is matched against the authorization of that
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`source (block 230 [sic]).” The access controller authorizes the source based on the
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`“source, destination, or content.” Ex. 1003 at 8. The application does not disclose
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`authorization based on the source and then, if that fails, based on the destination.
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`III. CONCLUSION
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`The Board should grant institution of all challenged claims.
`10
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`Dated: November 13, 2019
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`
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`Respectfully submitted,
`
`/Jeffrey W. Lesovitz/
`Jeffrey W. Lesovitz (Reg. No. 63,461)
`Steven J. Rocci (Reg. No. 30,489)
`Daniel J. Goettle (Reg. No. 50,983)
`BAKER & HOSTETLER LLP
`Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`T (215) 568-3100
`F (215) 568-3439
`jlesovitz@bakerlaw.com
`srocci@bakerlaw.com
`dgoettle@bakerlaw.com
`
`Counsel for Petitioner
`Guest Tek Interactive Entertainment Ltd.
`
`11
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`CERTIFICATE OF SERVICE
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`I certify that on November 13, 2019, this paper was served in its entirety
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`(including all exhibits) by email Express upon:
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`Douglas G. Muehlhauser
`2dgm@knobbe.com
`
`William H. Shreve
`2whs@knobbe.com
`
`BoxNomadix@knobbe.com
`
`
`/Jeffrey W. Lesovitz/
`Jeffrey W. Lesovitz (Reg. No. 63,461)
`BAKER & HOSTETLER LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104-2891
`T (215) 568-3100
`F (215) 568-3439
`jlesovitz@bakerlaw.com
`
`12
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`
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