Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 9
`Date: December 27, 2019
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`
`
`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 Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
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`
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`

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`IPR2019-01191
`Patent 8,606,917 B2
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`I.
`
`INTRODUCTION
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`Guest Tek Interactive Entertainment Ltd. (“Petitioner”) filed a
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`Petition under 35 U.S.C. § 311 requesting inter partes review of claims 1
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`and 11 (“the challenged claims”) of U.S. Patent No. 8,606,917 B2 (“the ’917
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`patent”). Paper 1 (“Pet.”). Nomadix, Inc. (“Patent Owner”) filed a
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`Preliminary Response. Paper 5 (“Prelim. Resp.”). With the Board’s
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`authorization (Paper 6), Petitioner filed a Reply (Paper 7 (“Reply”)) and
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`Patent Owner filed a Sur-Reply (Paper 8 (“Sur-Reply”)), both limited to
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`addressing the priority date of the ’917 patent and whether the Board should
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`exercise its discretion under 35 U.S.C. § 314(a) to deny institution in light of
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`pending district court litigation. See Paper 6, 4 (authorizing limited
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`briefing).
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`Section 314(a) does not authorize institution of review unless
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`Petitioner demonstrates a reasonable likelihood that it will prevail with
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`respect to at least one challenged claim. 35 U.S.C. § 314(a). Applying that
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`standard on behalf of the Director (37 C.F.R. § 42.4(a)), we do not institute
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`the petitioned review.
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`Petitioner presents three grounds of unpatentability, two of which rely
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`on the Trudeau reference (Ex. 1004, U.S. Patent No. 8,046,578 B1, issued
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`October 25, 2011 (“Trudeau ’578”)), as prior art. Pet. 5. Petitioner
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`acknowledges the ’917 patent asserts priority to the October 20, 2000, filing
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`date of U.S. Patent Application No. 09/693,060 (Ex. 1003, “the ’060
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`application”) via a series of continuation applications. Id. at 12. Petitioner
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`asserts Trudeau ’578 is nonetheless prior art to the ’917 patent because the
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`’060 application lacks written description support for at least two limitations
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`of the challenged claims of the ’917 patent. Id. at 12–18.
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`2
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`IPR2019-01191
`Patent 8,606,917 B2
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`Having reviewed all of the submissions by the parties, we determine
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`Petitioner fails to demonstrate that the challenged claims of the ’917 patent
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`lack written description support in the cited priority documents. Therefore,
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`the Petition fails to establish Trudeau ’578 is prior art to the ’917 patent and,
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`consequently, fails to demonstrate a reasonable likelihood of success as to
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`Grounds 1 and 2. We do not reach the other issues raised in the Petition and
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`the Preliminary Response as to Grounds 1 and 2. We also determine
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`Petitioner has not demonstrated a reasonable likelihood of success as to
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`Ground 3, for the reasons stated herein.
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`II. BACKGROUND
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`A. Real Parties in Interest and Related Proceedings
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`Petitioner identifies itself as the real party-in-interest. Pet. 2.
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`Nomadix identifies itself as the real party-in-interest. Paper 3, 1.
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`Pursuant to 37 C.F.R. § 42,8(b)(2), both parties identify as a “related
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`matter” the following co-pending litigation in the United States District
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`Court for the Central District of California: Nomadix, Inc. v. Guest Tek
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`Interactive Entertainment Ltd., Case 2:16-CV-08033-AB-FFM (“the
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`Litigation”). Pet. 3; Paper 3, 1. Patent Owner additionally identifies several
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`other litigations filed between 2004–2014, but does not indicate what patents
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`are or were at issue or whether any of those proceedings remain pending.
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`Paper 3, 2.
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`Both parties also identify several petitions filed by Petitioner for
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`review of patents that both parties indicate are “related” to the ’917 patent.
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`Pet. 3; Paper 3, 1. Of such petitions, IPR2018-00376, IPR2018-00392,
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`IPR2018-01660, and IPR2018-01668 have been denied, and IPR2019-00211
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`and IPR2019-00253 have been instituted and are pending.
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`3
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`IPR2019-01191
`Patent 8,606,917 B2
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`B.
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`’917 Patent
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`The ’917 patent is entitled “Systems and Methods for Providing
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`Content and Services on a Network System,” and issued on December 10,
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`2013. Ex. 1001, codes (54), (45). The ’917 patent issued from U.S. Patent
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`Application No. 13/659,851 (“the ’851 application”), filed on October 24,
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`2012. Id. at codes (21), (22). The ’917 patent claims priority to and
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`incorporates by reference the following U.S. patent applications:
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`13/566,904, 12/685,585, 11/427,143, 09/693,060, 09/458,602, 09/458,569,
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`60/161,189, 60/161,182, 60/161,181, 60/161,139, 60/161,093, 60/160,973,
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`60/160,890, and 60/111,497. Id. at 1:8–51. As noted above, of particular
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`relevance to our determination here is the ’060 application, which was filed
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`on October 20, 2000, and claims priority to and incorporates by reference
`
`several applications, including U.S. Provisional Application No. 60/160,890
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`(“the ’890 provisional”), filed October 22, 1999. Ex. 1003, 2, 9.1
`
`The ’917 patent describes “a method and system for selectively
`
`implementing and enforcing Authentication, Authorization and Accounting
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`(AAA) of users accessing a network via a gateway device.” Ex. 1001, 8:8–
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`11. Users may be, for example, guests of a hotel attempting to access an
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`Internet site from their laptop in their hotel room. Id. at 3:15–18, 4:56–57.
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`The system includes a network access controller that receives a request in
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`TCP format from a source computer, such as a user laptop, for access to the
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`Internet or other network. Id. at 3:57–61. Figure 1 of the ’917 patent
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`illustrates the computer system, and is reproduced below.
`
`
`1 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.
`
`4
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`IPR2019-01191
`Patent 8,606,917 B2
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`Figure 1 of the ’917 patent “is a block diagram of a computer system
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`that includes [an] AAA server for authenticating, authorizing and accounting
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`sources accessing networks and/or online services . . . .” Id. at 5:24–26. As
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`illustrated in Figure 1, the computer system includes “a plurality of
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`computers 14 that can communicate with one or more online services 22 or
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`networks via a gateway device 12 . . . .” Id. at 18:15–19. Gateway device
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`12 “includes the ability to recognize computers attempting to access a
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`network 12, the location of computers attempting to access a network, the
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`identity of users attempting to gain network access, and additional attributes
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`. . . .” Id. at 18:29–33.
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`According to the ’917 patent, gateway device 12 may identify the
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`source computer by “one or more attributes” contained within data packets
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`transmitted to the gateway device by the source computer. Id. at 19:5–14.
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`The attributes contained in such data packets “can include network
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`information, source IP address, source port, link layer information, source
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`5
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`IPR2019-01191
`Patent 8,606,917 B2
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`MAC address, VLAN tag, circuit ID, destination IP address, destination
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`port, protocol type, packet type, and the like.” Id. at 23:41–45.
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`The operation of the AAA server is illustrated in Figure 2 of the ’917
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`patent, which is reproduced below.
`
`
`Figure 2 of the ’917 patent is a “flow chart of a method in which [an]
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`AAA server performs authentication, authorization, and accounting,
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`according to one aspect of the invention.” Id. at 5:28–30. The ’917 patent
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`states that “as used herein authentication refers to the identification of the
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`source, authorization refers to the determination of permittable source
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`access, and accounting refers to the tracking of a source’s access to a
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`network.” Id. at 19:17–21 (emphasis added).
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`6
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`IPR2019-01191
`Patent 8,606,917 B2
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`As illustrated in Figure 2, a source attempting to access a network is
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`authenticated based on an “attribute” sent by the source in a packet. Id. at
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`Fig. 2 (block 200), 19:5–8, 23:33–35. In identifying a source based on an
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`attribute sent in a packet, the AAA server is able to automatically identify
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`the source device “in a manner that is transparent to computer users” (that is,
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`without requiring a user to enter an ID). Id. at 21:27–31, 21:42–44. This
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`process is described as follows, with reference to Figure 2:
`
`In operation, a source computer requests (block 200) access to a
`network, destination, service, or the like. Upon receiving a
`packet transmitted to the AAA server 30, the AAA server 30
`examines the packet to determine the identity of the source
`(block 210). The attributes transmitted via the packet are
`temporarily stored in the source profile database so that the data
`can be examined for use in determining authorization rights of
`the source.
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`Id. at 23:33–45. The attributes “include network information, source IP
`
`address, source port, link layer information, source MAC address, VLAN
`
`tag, circuit ID, destination IP address, destination port, protocol type, packet
`
`type, and the like.” Id. at 23:41–45.
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`After source information is identified and stored, access requested
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`from a source is matched against the authorization of that source. Id. at
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`23:45–47. As indicated in Figure 2, authorization of a source may be based
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`on an attribute associated with any one of source, destination, or content. Id.
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`at Fig. 2 (block 220), 22:61–65. 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. Moreover, the authorization
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`7
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`IPR2019-01191
`Patent 8,606,917 B2
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`capability of the AAA server 30 can be based upon the content
`type or protocol being transmitted. According to the system
`and method of the present invention, each packet can be filtered
`through the selective AAA process, so that any or all sources
`can be authorized access to a particular destination based on the
`access rights associated with the respective sources.
`
`Id. at 22:61–23:6.
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`C. Challenged Claims
`
`Claims 1 and 11 are challenged. Claim 1 is reproduced below,
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`adopting the lettering and formatting as added by Petitioner (Pet. 7–8):
`
`A method for granting access to a computer network,
`comprising:
`
`[1.A] receiving at an access controller a request to access the
`network from a source computer, the request including a
`transmission control protocol (TCP) connection request having
`a source IP address and a destination IP address;
`
`[1.B] determining by the access controller whether the source
`computer must login to access the network, including:
`
`[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, and
`
`[1.E] if the destination IP address is not included in the plurality
`of destination IP addresses, then the access controller
`
`8
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`IPR2019-01191
`Patent 8,606,917 B2
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`determines the source device must be authorized to access the
`network and provides the source device with a login page;
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`[1.F] using the access controller to authenticate credentials
`provided from the source device via the login page; and
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`[1.G] authorizing the source device access to the network if the
`provided credentials are authenticated.
`
`As noted by Petitioner, claim 11 recites mostly the same claim
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`limitations in system form. Pet. 8. The parties argue claims 1 and 11
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`collectively.
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`D. Asserted Grounds of Unpatentability
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`Petitioner asserts that the challenged claims are unpatentable based on
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`the following grounds (Pet. 5):
`
`Claims Challenged
`1, 11
`1, 11
`1, 11
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`
`References
`Trudeau ’578, Whyte2
`Trudeau ’578, Whyte, Fuh ’4743
`Fuh ’474, NIST4
`
`
`As further support, Petitioner relies on the Declaration of Dr. Peter
`
`Dordal. Ex. 1002. Patent Owner relies on the Declaration of Stuart G.
`
`Stubblebine, Ph.D. Ex. 2006.
`
`
`2 Whyte, D., Kranakis, E., and van Oorschot, P.C., “DNS-based Detection of
`Scanning Worms in an Enterprise Network, Proceedings of the 12th Annual
`Network and Distributed System Security Symposium,” San Diego, CA
`(Feb. 3–4, 2005) (Ex. 1005, “Whyte”).
`
`3 Fuh et al., U.S. Patent No. 6,463,474 B1, filed July 2, 1999, issued Oct. 8,
`2002 (Ex. 1006, “Fuh ’474”).
`
`4 Wack, J. and Carnahan, L., “Keeping Your Site Comfortably Secure: An
`Introduction to Internet Firewalls,” NIST Special Pub. 800-10 (Dec. 1994)
`(Ex. 1007, “NIST”).
`
`9
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`IPR2019-01191
`Patent 8,606,917 B2
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`III. ANALYSIS
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`A. Principles of Law
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that
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`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
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`evidence of nonobviousness.5 Graham v. John Deere Co., 383 U.S. 1,
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`17–18 (1966).
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`“In an [inter partes review], the petitioner has the burden from the
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`onset to show with particularity why the patent it challenges is
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`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
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`petitions to identify “with particularity . . . the evidence that supports the
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`grounds for the challenge to each claim”)). This burden of persuasion never
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`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`
`inter partes review).
`
`
`5 Patent Owner does not present arguments or evidence of such secondary
`considerations in its Preliminary Response. Therefore, secondary
`considerations do not constitute part of our analysis herein.
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`10
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`B. Level of Ordinary Skill in the Art
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`Relying on the testimony of Dr. Dordal, Petitioner describes the level
`
`of ordinary skill as follows:
`
`A person of ordinary skill in the art at the time of the alleged
`inventions of claims 1 and 11 (“POSITA”) would have had
`(1) either a formal degree in computer science or a related
`subject, or commensurate informal education in computer
`programming and designing computer networks, and (2) at least
`2 years of experience in designing or programming computer
`networks.
`
`Pet. 19 (citing Ex. 1002 ¶ 57). Petitioner further asserts “[a]ccording to Dr.
`
`Dordal, this definition would have been the same regardless of the priority
`
`date of the ’917 patent (e.g., whether the ’917 patent’s 2012 filing date, or
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`October 1999, the date of the ’890 provisional).” Id.
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`Patent Owner does not propose an alternative assessment. To the
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`extent necessary, and for purposes of this Decision, we accept the
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`assessment offered by Petitioner as it is consistent with the ’917 patent and
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`the asserted prior art.
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`C. Claim Construction
`
`Because this Petition was filed after November 13, 2018, the effective
`
`date of a change to our rules, we interpret the claims of the ’917 patent
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`according to that new rule, wherein we “us[e] the same claim construction
`
`standard that would be used to construe the claim in a civil action under
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`35 U.S.C. [§] 282(b), including construing the claim in accordance with the
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`ordinary and customary meaning of such claim as understood by one of
`
`ordinary skill in the art and the prosecution history pertaining to the patent.”
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`See Changes to the Claim Construction Standard for Interpreting Claims in
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`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`
`11
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`Patent 8,606,917 B2
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`51,340, 51,358 (Oct. 11, 2018) (codified at 37 C.F.R. § 42.100(b) (2019)).
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`Petitioner offers a construction of the term “profile,” which appears in
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`both challenged claims, as meaning “a collection of attributes associated
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`with a specific device.” Pet. 18. Patent Owner does not offer a different
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`construction, but notes that the district court in the Litigation construed
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`“profiles” to mean “a collection of attributes associated with [a] source
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`device[s].”6 Prelim. Resp. 9 (citing Ex. 2004, 23). Patent Owner further
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`notes that its arguments do not depend on construction of the term “profile.”
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`Id.
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`We determine that no explicit construction of “profile,” or any other
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`claim term, is needed to resolve the issues presented by the arguments and
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`evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean
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`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms
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`need to be construed “only to the extent necessary to resolve the
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`controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
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`795, 803 (Fed. Cir. 1999))).
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`D. Grounds Based on Obviousness over Trudeau ’578
`
`In Grounds 1 and 2, Petitioner asserts the challenged claims are
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`unpatentable as obvious over Trudeau ’578 (1) in combination with Whyte
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`(Ground 1), or (2) in combination with Whyte and Fuh ’474 (Ground 2).
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`Pet. 5. Central to both grounds is whether Trudeau ’578 is prior art to the
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`’917 patent, an issue that turns on whether the ’917 patent is entitled to
`
`priority to the filing date of the ’060 application via a chain of continuation
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`6 Patent Owner’s quote of the district court’s construction omits the word
`“associated”; we view this omission as an inadvertent typographical error.
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`12
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`applications. Pet. 11–18; Prelim. Resp. 11–28. As discussed below, this
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`issue is dispositive of Grounds 1 and 2.
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`1. Priority Date of the ’917 Patent
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`a. Legal Standards for Establishing Priority
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`As noted above, in an inter partes review, the burden of persuasion is
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`on the petitioner to prove unpatentability by a preponderance of the
`
`evidence, and that burden never shifts to the patent owner. Dynamic
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`Drinkware, 800 F.3d at 1378. The petitioner also has the initial burden of
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`production to show that an asserted reference qualifies as prior art under
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`35 U.S.C. § 102. Id. at 1378–79. Once the petitioner has met that initial
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`burden, the burden of production shifts to the patent owner to argue or
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`produce evidence that either the asserted reference does not render the
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`challenged claims unpatentable, or the reference is not prior art. Id. at
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`1379–80 (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
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`1327 (Fed. Cir. 2008)). Once the patent owner has met that burden of
`
`production in demonstrating, for example, entitlement of the challenged
`
`claims to a filing date that antedates the asserted reference, the burden of
`
`going forward again shifts to the petitioner to persuade the Board that the
`
`challenged claims are not entitled to the benefit of the earlier filing date. See
`
`id. at 1328 (describing burdens in the context of an invalidity challenge in
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`district court).
`
`Pursuant to 35 U.S.C. § 120, the ’917 patent is entitled to assert
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`priority to the filing date of the ’060 application only if the ’060 application
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`discloses the invention claimed in the ’917 patent in the manner provided by
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`13
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`35 U.S.C. § 112(a).7 Thus, to satisfy its burden of production here, Patent
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`Owner must produce sufficient evidence and argument to show that the
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`asserted priority application contains a written description that supports all
`
`limitations of the challenged claims. See Tech. Licensing Corp., 545 F.3d at
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`1327. The test for sufficiency of a written description under 35 U.S.C.
`
`§ 112(a) is whether the earlier application’s disclosure “reasonably conveys
`
`to those skilled in the art that the inventor had possession of the claimed
`
`subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
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`598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description
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`“test requires an objective inquiry into the four corners of the specification
`
`from the perspective of a person of ordinary skill in the art.” Id.
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`b. Overview of the Priority Dispute
`
`Petitioner’s reliance on Trudeau ’578 as prior art to the ’917 patent is
`
`premised upon the assertion that the ’060 application (which antedates
`
`Trudeau ’578) fails to provide written description support for claims 1 and
`
`11 of the ’917 patent. See Pet. 12–13. The relationship between the
`
`application for the ’917 patent (the ’851 application) and the ’060
`
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`7 We cite to the post-AIA version of § 112, because the application that
`issued as the ’917 patent was filed on February 28, 2013, after the AIA
`amendments to § 112 took effect on September 16, 2012. See Leahy-Smith
`America Invents Act (“the AIA”), Pub. L. No. 112-29, § 4(e), 125 Stat. 284,
`297 (2011) (amendments to § 112 “shall take effect upon the expiration of
`the 1-year period beginning on the date of the enactment of this Act and
`shall apply to any patent application that is filed on or after that effective
`date”) (emphasis added). However, our Decision is not affected by the
`changes to § 112 enacted via the AIA; we would reach the same result
`applying either the pre-AIA version or the post-AIA version.
`
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`application is illustrated below:
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`
`The above graphic, reproduced from the Preliminary Response, is a
`
`representation of the asserted priority chain between linking the ’060
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`application to the ’851 application. See Prelim. Resp. 4.
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`As illustrated above, the ’851 application asserts priority, through a
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`chain of continuation applications, to the ’060 application filed on October
`
`20, 2000. If Petitioner is correct, however, in asserting that the ’060
`
`application lacks written description support for claims 1 and 11 of the ’917
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`patent, then those claims would not be entitled to a filing date that antedates
`
`Trudeau ’578. Rather, the next earliest asserted priority date for the ’917
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`patent is the June 28, 2006, filing date of application 11/427,143 (“the ’143
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`application”) (see Ex. 1001, code (63)), which is after the latest filing date of
`
`the application for Trudeau ’578.8 In that event, Trudeau ’578 would be
`
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`8 The application that issued as Trudeau ’578 was filed April 14, 2005, and
`claims priority to U.S. Provisional Application No. 60/562, 397, filed April
`14, 2004. Ex. 1004, codes (22), (60). In arguing the priority date of
`Trudeau, Petitioner references Trudeau’s 2005 filing date. Pet. 54. Neither
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`15
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`prior art to the ’917 patent under 35 U.S.C. § 102(e). Patent Owner has not,
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`on this record, come forward with any arguments or evidence to support
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`antedating Trudeau ’578 on any basis other than asserting entitlement to the
`
`’060 application filing date. Because Patent Owner bears the burden of
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`production on the priority issue (see Dynamic Drinkware, 800 F.3d at 1379–
`
`80), the only possible defect before us in Petitioner’s burden of showing that
`
`Trudeau ’578 is prior art is whether the ’917 patent claims are supported by
`
`written description in the ’060 application.
`
`Petitioner contends 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
`
`
`party addresses whether Trudeau would be entitled to the 2004 filing date of
`its provisional application, and we determine that point is not material to our
`analysis herein.
`
`16
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`

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`IPR2019-01191
`Patent 8,606,917 B2
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`Owner disputes these contentions. Prelim. Resp. 11–28 (also arguing claims
`
`1 and 11 collectively).
`
`
`
`In the Preliminary Response, Patent Owner provides a detailed
`
`mapping of the limitations of claims 1 and 11 to the ’060 application, which
`
`includes the ’890 provisional incorporated therein by reference. Prelim.
`
`Resp. 11–28. Petitioner addresses only limitations 1/11[C] and 1/11[D] in
`
`both the Petition and Reply.9 Pet. 11–18; Reply 6–10.
`
`
`
`We have reviewed the arguments and evidence submitted by both
`
`parties. We conclude Patent Owner has met its burden of production in
`
`demonstrating all limitations of the challenged claims of the ’917 patent are
`
`supported by written description in the ’060 application, and Petitioner has
`
`not rebutted that showing sufficiently to demonstrate a reasonable likelihood
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`of prevailing on this issue. We address in detail below the parties’
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`arguments and evidence as to the disputed limitations.
`
`c. The “Comparing the Source IP Address” Limitation (1/11[C])
`
`Petitioner argues the ’060 application fails to disclose this limitation
`
`because it does not disclose (1) comparing the source IP address of
`
`incoming packets with profiles of authorized source devices; (2) that each
`
`profile includes an IP address; or (3) that the source device is granted access
`
`without further authorization if its IP address is included in a profile.
`
`Pet. 13. Petitioner further argues (relying on the testimony of Dr. Dordal)
`
`that “the specific embodiments disclosed in the ’060 application involve
`
`accessing a source profile using a MAC address, User ID, or VLAN ID.
`
`
`9 Petitioner briefly states that “[m]any of the prior applications also fail to
`expressly disclose other limitations in claims 1 and 11,” but does not offer
`substantive analysis in the Petition or the Reply. See Pet. 17, n.3.
`
`17
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`IPR2019-01191
`Patent 8,606,917 B2
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`They do not mention comparing source IP addresses against other IP
`
`addresses, let alone IP addresses in profiles.” Id. at 13–14 (emphasis added)
`
`(citing Ex. 1002 ¶¶ 27, 29–35).
`
`Patent Owner disputes each of Petitioner’s arguments, pointing to
`
`passages in the ’060 application that disclose storing “attributes” in a
`
`“source profile database,” wherein such attributes include a “source IP
`
`address,” and authenticating a source based on an attribute associated with
`
`the source. Prelim. Resp. 17–18. In particular, Patent Owner quotes the
`
`following passage:
`
`Upon receiving a packet transmitted to the AAA server 30, the
`AAA server 30 examines the packet to determine the identity of
`the source (block 210). The attributes transmitted via the
`packet are temporarily stored in the source profile database so
`that the data can be examined for use in determining
`authorization rights of the source. The attributes contained in
`the packet can include network information, source IP address,
`source port, link layer information, source MAC address,
`VLAN tag, circuit ID, destination IP address, destination port,
`protocol type, packet type, and the like. After this information
`is identified and stored, access requested from a source is
`matched against the authorization of that source (block 230).
`
`Id. (quoting Ex. 1003, 25:22–26:2). Patent Owner then contends “[t]his
`
`quoted disclosure makes clear that 1) attributes may be used to determine
`
`authorization rights of a source, and 2) a list of such attributes specifically
`
`includes the packet ‘source IP address.’” Id. at 18. Patent Owner
`
`additionally quotes several other passages describing attributes being stored
`
`in source profiles and authenticating a source by comparing stored source
`
`profiles with attributes received from a device to determine the device’s
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`identity. Id. at 18–19 (quoting Ex. 1003, 13:5–13, 13:15–20, 14:5–11,
`
`18
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`IPR2019-01191
`Patent 8,606,917 B2
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`21:3–6). Patent Owner also cites the ’890 provisional, incorporated by
`
`reference in the ’060 application,10 which describes entering “a subscriber
`
`profile into the database,” including entering an IP address. Id. at 19
`
`(quoting Ex. 1021, 10311).
`
`
`
`In its Reply, Petitioner concedes that the ’060 application discloses
`
`“the attributes transmitted via a packet may be stored in a source profile
`
`database for use in determining source authorization rights, and that the
`
`attributes contained in the packet can include network information, source IP
`
`address, MAC address, packet type, etc.” Reply 7. Petitioner argues,
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`however, that this disclosure is inadequate to show possession of limitation
`
`1/11[C] because “[i]t does not suggest a comparison of the source IP
`
`address against multiple profiles of authorized source devices that each
`
`contain an IP address.” Id. (emphasis added). Petitioner further notes that
`
`the additional passages cited by Patent Owner do not contain this explicit
`
`disclosure (id. at 7–8), and contends “[a] ‘source IP address’ included in a
`
`profile, and comparing an ‘attribute’ against a source profile, do not amount
`
`to comparing a source IP address in a received packet against multiple
`
`profiles of authorized devices that each contain an IP address.” Id. at 8.
`
`
`
`Petitioner’s arguments appear to be premised on a lack of literal
`
`reproduction of the words of the disputed limitation in the ’060 application,
`
`which is not the proper legal standard. An ipsis verbis disclosure is not
`
`necessary to satisfy the written description requirement. Vas-Cath Inc. v.
`
`
`10 Petitioner does not dispute this point.
`
`11 References herein to the page numbers of Exhibit 1021 are to the numbers
`added by Petitioner to the document in the lower left hand corner of each
`page, not to original page numbers.
`
`19
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`IPR2019-01191
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`Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only
`
`reasonably convey to persons skilled in the art that the inventor had
`
`possession of the subject matter in question, even if every nuance of the
`
`claims is not explicitly described in the specification. Id.; see also Ariad
`
`Pharm., 598 F.3d at 1351; Union Oil Co. v. Atlantic Richfield Co., 208 F.3d
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`989, 1001 (Fed. Cir. 2000) (noting that the written