UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00101
`U.S. Patent No.: 8,495,359
`Issued: July 23, 2013
`Application No.: 12/792,249
`Filed: June 2, 2010
`
`Title: SYSTEM AND METHOD FOR
`SECURING AN ELECTRONIC COMMUNICATION
`_________________
`
`
`PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,495,359
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00101
`U.S. Patent No.: 8,495,359
`Issued: July 23, 2013
`Application No.: 12/792,249
`Filed: June 2, 2010
`
`Title: SYSTEM AND METHOD FOR
`SECURING AN ELECTRONIC COMMUNICATION
`_________________
`
`
`PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,495,359
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2020-00101
`Patent 8,495,359
`
`Page(s)
`
`LIST OF EXHIBITS .................................................................................................. v
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ........................................... vi
`
`1.
`
`2.
`
`3.
`
`Real Party-In-Interest ................................................................ vi
`
`Related Matters ......................................................................... vi
`
`Lead And Back-Up Counsel, And Service Information ........... vi
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. GROUNDS FOR STANDING PER SECTION 42.104(A) ............................ 2
`
`III.
`
`IDENTIFICATION OF CHALLENGE .......................................................... 2
`
`A.
`
`Statement Of The Precise Relief Requested / Statutory Grounds ......... 2
`
`B.
`
`The Board Should Not Use Its Discretion To Deny This Petition ........ 3
`
`IV. THE ’359 PATENT ......................................................................................... 7
`
`V.
`
`LEVEL OF SKILL IN THE ART, AND STATE OF THE ART ................... 9
`
`VI. CLAIM CONSTRUCTION ............................................................................ 9
`
`VII. GROUND 1: CLAIMS 1-15 ARE UNPATENTABLE
`AS OBVIOUS OVER OLKIN IN VIEW OF KIM ......................................10
`
`A. Olkin ....................................................................................................11
`
`B. Kim ......................................................................................................11
`
`C.
`
`Rationale And Motivation To Combine Olkin With Kim ..................11
`
`D.
`
`Independent Claims 1 And 6 ...............................................................14
`
`E.
`
`Dependent Claims 2-5, 7-10................................................................29
`
`1.
`
`Claims 2 And 7 .........................................................................29
`
`Page ii
`
`
`
`IPR2020-00101
`Patent 8,495,359
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claims 3 And 9 .........................................................................30
`
`Claims 4 And 10 .......................................................................31
`
`Claim 5 ......................................................................................32
`
`Claim 8 ......................................................................................32
`
`F.
`
`Independent Claim 11 .........................................................................32
`
`G. Dependent Claims 12-15 .....................................................................38
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claim 12 ....................................................................................38
`
`Claim 13 ....................................................................................39
`
`Claim 14 ....................................................................................39
`
`Claim 15 ....................................................................................39
`
`VIII. NO OBJECTIVE INDICIA OF NON-OBVIOUSNESS ..............................40
`
`IX. CONCLUSION ..............................................................................................40
`
`CERTIFICATE OF COMPLIANCE .......................................................................42
`
`
`
`
`
`Page iii
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2020-00101
`Patent 8,495,359
`
`Page(s)
`
`Cases
`
`Nidec Motor Corp. v. Zhongshan Borad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) .............................................................................. 9
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008) ............................................................................10
`
` Board Decisions
`
`Aurobindo Pharma USA, Inc. v. Andrx Corp. et al.,
`IPR2017-01648, Paper 34 (PTAB Dec. 28, 2018) ................................................. 9
`
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ..............................................3, 5
`
`Statutes
`
`35 U.S.C. § 102 ................................................................................................. 10, 11
`
`35 U.S.C. § 103 .......................................................................................................... 2
`
`35 U.S.C. § 314 .......................................................................................................... 3
`
`35 U.S.C. § 316 ......................................................................................................4, 6
`
`35 U.S.C. § 325 .......................................................................................................... 6
`
`Other Authorities
`
`H.R. Rep. No. 112-98, pt. 1, at 40 (2011) .................................................................. 5
`
`Rules
`
`37 C.F.R § 42.104 ...................................................................................................... 2
`
`37 C.F.R. § 42.15 ....................................................................................................... 2
`
`
`
`
`
`Page iv
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`
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`IPR2020-00101
`Patent 8,495,359
`
`LIST OF EXHIBITS
`
`No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
` U.S. Patent No. 8,495,359 (“the ’359 Patent”)
`
` File History of U.S. Patent No. 8,495,359
`
` U.S. Patent No. 7,376,835 (“Olkin”)
`
` U.S. Patent Publication No. 2009/0055648 A1 (“Kim”)
`
` J. Klensin, Simple Mail Transfer Protocol, IETF Request for
`Comments No. 5321 (October 2008) (“RFC5321”)
`
` David C. Plummer, An Ethernet Address Resolution Protocol,
`IETF Request for Comments No.826 (November 1982)
`(“RFC826”)
`
` Excerpts of Dictionary of Information Security, 2006
`
` Declaration of Henry Houh, dated October 31, 2019 (“Houh
`Decl.”)
`
` Uniloc 2017 LLC v. Microsoft Corporation, SACV 18-02053
`(Lead Case) Stay Order (August 9, 2019)
`
`
`
`
`
`
`
`Page v
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`
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`IPR2020-00101
`Patent 8,495,359
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`1.
`
`Real Party-In-Interest
`
`Microsoft Corporation is the sole real party-in-interest.
`
`
`
`2.
`
`Related Matters
`
`The ’359 Patent (Ex. 1001) is asserted in the following litigations:
`
`•
`
`Uniloc 2017 LLC v. Microsoft Corporation, 8:19-cv-00783 (C.D. Cal.),
`
`filed April 29, 2019.
`
`3.
`
`Lead And Back-Up Counsel, And Service Information
`
`Lead Counsel
`Todd M. Siegel, Reg. No. 73,232
`todd.siegel@klarquist.com
`
`Back-up Counsel
`(First Back-Up)
`Andrew M. Mason, Reg. No. 64,034
`andrew.mason@klarquist.com
`
`Robert F. Scotti, Reg. No. 39,830
`robert.scotti@klarquist.com
`
`Joseph T. Jakubek, Reg. No. 34,190
`joseph.jakubek@klarquist.com
`KLARQUIST SPARKMAN, LLP
`121 SW Salmon Street, Suite 1600
`Portland, Oregon, 97204
`503-595-5300 (phone)
`503-595-5301 (fax)
`
`Petitioner consents to service via email at the above email addresses.
`
`Pursuant to 37 C.F.R. § 42.10(b), concurrently filed with this Petition is a
`
`Power of Attorney executed by Petitioner and appointing the above counsel.
`
`
`
`Page vi
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`
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`IPR2020-00101
`Patent 8,495,359
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`Microsoft Corporation (“Petitioner”) respectfully requests inter partes review
`
`(“IPR”) of claims 1-15 of U.S. Patent No. 8,495,359 (“’359 patent”) (Ex. 1001),
`
`allegedly assigned to Uniloc 2017 LLC (“Patent Owner”). For the reasons set forth
`
`below, these claims should be found unpatentable and cancelled.
`
`I.
`
`INTRODUCTION
`
`The ’359 patent is directed at securing communication between two
`
`computing devices. In between the two computing devices is a gateway server
`
`configured to receive and store information about the first computing device,
`
`including a device identifier. The gateway server also receives information from the
`
`second computing device, including an encryption key request. The gateway server
`
`purports to derive an encryption key from the device identifier for the first computing
`
`device, and then sends the key to the second computing device. Finally, the gateway
`
`server confirms to the first computing device that the key was requested by and sent
`
`to the second computing device.
`
`Such subject matter was well known in the prior art. For example, the prior
`
`art references relied on herein, the combinations of secure communication U.S.
`
`Patent No. 7,376,835 (“Olkin”) with U.S. Patent Application Publication No.
`
`2009/0055648 (“Kim”), disclosed each of the limitations of the ’359 patent
`
`rendering the claims unpatentable as obvious.
`
`Petition for Inter Partes Review of USP 8,495,359
`
`Page 1
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`IPR2020-00101
`Patent 8,495,359
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`II. GROUNDS FOR STANDING PER SECTION 42.104(A)
`
`Petitioner certifies that the ’359 patent is available for IPR and that Petitioner
`
`is not barred or estopped from requesting an IPR challenging the patent claims on
`
`the grounds identified in this petition.
`
`III.
`
`IDENTIFICATION OF CHALLENGE
`
`A.
`
`Statement Of The Precise Relief Requested / Statutory Grounds
`
`Petitioner requests inter partes review of claims 1-15 (the “Challenged
`
`Claims”) of the ’359 Patent, on the following statutory grounds:
`
`
`
`Reference(s)
`
`Basis
`
`Claims
`
`Ground 1 U.S. Patent No. 7,376,835 (“Olkin”)
`in view of U.S. Patent Application
`Publication No. US 2009/0055648
`A1 (“Kim”)
`
`35 U.S.C. § 103
`
`1-15
`
`In Section VII below, the petition presents evidence of unpatentability and
`
`establishes a reasonable likelihood that the Petitioner will prevail in establishing that
`
`each Challenged Claim is unpatentable.
`
`With the filing of this petition an electronic payment of $30,500 is being
`
`charged to deposit account no. 02-4550. 37 C.F.R. § 42.15(a). Any fee adjustments
`
`may be debited/credited to the deposit account.
`
`Petition for Inter Partes Review of USP 8,495,359
`
`Page 2
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`IPR2020-00101
`Patent 8,495,359
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`B.
`
`The Board Should Not Use Its Discretion To Deny This Petition
`
`This is the first petition challenging a claim of the ’359 patent. Nothing
`
`warrants discretionary denial under 35 U.S.C. § 314(a). As explained in the
`
`following paragraphs, none of the factors in General Plastic Industrial Co., Ltd. v.
`
`Canon Kabushiki Kaisha warrant discretionary denial of institution. See IPR2016-
`
`01357 (Paper 19) at 9-10 (Sept. 6, 2017) (precedential, in pertinent part) [hereinafter
`
`“General Plastic”]. The factors are as follows:
`
`1. whether the same petitioner previously filed a petition
`
`directed to the same claims of the same patent;
`
`2. whether at the time of filing of the first petition the
`
`petitioner knew of the prior art asserted in the second
`
`petition or should have known of it;
`
`3. whether at the time of filing of the second petition the
`
`petitioner already
`
`received
`
`the patent owner’s
`
`preliminary response to the first petition or received the
`
`Board’s decision on whether to institute review in the
`
`first petition;
`
`4. the length of time that elapsed between the time the
`
`petitioner learned of the prior art asserted in the second
`
`petition and the filing of the second petition;
`
`5. whether the petitioner provides adequate explanation
`
`for the time elapsed between the filings of multiple
`
`petitions directed to the same claims of the same patent;
`
`6. the finite resources of the Board; and
`
`Petition for Inter Partes Review of USP 8,495,359
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`Page 3
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`IPR2020-00101
`Patent 8,495,359
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`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a
`
`final determination not later than 1 year after the date on
`
`which the Director notices institution of review.
`
`Id.
`
`Factor 1: This is the first petition filed by Petitioner directed to claims of
`
`the ’359 patent, and Petitioner is unaware of any other party filing a petition
`
`challenging any claim of the ’359 patent. Indeed, Petitioner is unaware of any other
`
`party being served with a complaint alleging infringement of the ’359 patent. The
`
`parallel district court litigation is in its relative infancy, with trial not scheduled until
`
`June 2021.
`
`Factors 2-5: This is the first petition challenging the ’359 patent and these
`
`factors thus counsel against discretionary denial. Petitioner is filing this Petition
`
`approximately six months from being first served with the complaint asserting
`
`infringement of the ’359 patent.
`
`Factor 6: This is the first petition challenging the ’359 patent, and thus
`
`warrants use of the Board’s finite resources. The parallel district court litigation is
`
`in its relative infancy, with trial not scheduled until June 20211.
`
`
`1 Petitioner notes that, in the district court litigation, Petitioner asserts that it is
`licensed to the ’359 patent, and Patent Owner asserts that Petitioner is not licensed.
`Petitioner does not expect the district court to resolve that issue until after
`Petitioner’s one-year bar passes for filing this Petition.
`
`
`Petition for Inter Partes Review of USP 8,495,359
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`Page 4
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`IPR2020-00101
`Patent 8,495,359
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`Moreover, this Petition is especially worthy of the Board’s time as, at the time
`
`of this filing, the district court has been presented with adjudication of 18 different
`
`patents asserted by Patent Owner against Petitioner.2 That sheer volume of patents
`
`makes IPR particularly important to furthering the Congressional goal of
`
`“improv[ing] patent quality and limit[ing] unnecessary and counterproductive
`
`litigation costs.” H.R. Rep. No. 112-98, pt. 1, at 40 (2011) (cited by General Plastic
`
`at 16); see also General Plastic at 16–17 (recognizing “that an objective of the AIA
`
`is to provide an effective and efficient alternative to district court litigation” and that
`
`the goals of the AIA include “mak[ing] the patent system more efficient by the use
`
`of post-grant review procedures”).
`
`The Board and district court resources consumed by the Uniloc assertion
`
`campaign, including the ’359 patent, are unnecessarily multiplied by Patent Owner’s
`
`strategic choice to assert over 100 patents against numerous defendants in a drawn-
`
`out fashion over the course of years. While Petitioner respects greatly the finite
`
`resources of the Board, the Board’s efficiency and expertise in evaluating
`
`unpatentability is perhaps of no greater importance than in response to litigation
`
`campaigns such as the one now waged by Uniloc.
`
`
`2 The district court has stayed litigation on the first eleven patents to be asserted,
`pending resolution of IPR petitions filed by Petitioner. Ex. 1009 (finding
`“simplification of the issues [weighs] at least slightly in favor of a stay”).
`
`Petition for Inter Partes Review of USP 8,495,359
`
`Page 5
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`IPR2020-00101
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`Factor 7: the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`
`determination not later than 1 year after the date on which the Director notices
`
`institution of review
`
`Petitioner is unaware of any facts that would compromise the Board’s ability
`
`to comply with 35 U.S.C. § 316(a)(11) and, thus, this factor counsels against
`
`discretionary denial.
`
`Furthermore, neither “the same [n]or substantially the same prior art or
`
`arguments previously were presented to the Office.” 35 U.S.C. § 325(d). Neither
`
`prior art reference Olkin, nor prior art reference Kim, was cited or discussed during
`
`prosecution. Additionally, none of these prior art references is referenced in the ’359
`
`patent. The combination of Olkin and Kim provides express teachings of the
`
`limitations of the Challenged Claims. In particular, as discussed further below, the
`
`claim limitations that the Examiner did not find in the prior art – “[confirming] to
`
`the first computing device that the encryption key was requested by the second
`
`computing device,” and that the “device identifier is generated by the first computing
`
`device from a combination of user-configurable and non-user-configurable
`
`parameters of the first computing device” – are disclosed by the Olkin and Kim prior
`
`art references discussed herein. As the teachings of Olkin in view of Kim were not
`
`considered by the Examiner, this petition should not be denied under § 325(d).
`
`
`
`Petition for Inter Partes Review of USP 8,495,359
`
`Page 6
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`IPR2020-00101
`Patent 8,495,359
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`IV. THE ’359 PATENT
`
`The ’359 patent, titled “System And Method For Securing An Electronic
`
`Communication” issued on July 23, 2013. Ex. 1001. The ’359 Patent issued from
`
`U.S. Patent Application No. 12/792,249 (the “’249 Application”), filed on June 2,
`
`2010, and claims priority to a provisional application (No. 61/219,062) filed on June
`
`22, 2009.
`
`During prosecution, the Examiner rejected the 20 claims then pending as
`
`being unpatentable as obvious over Saito (US 2003/0070067 A1) in view of
`
`McGrew (US 2010/0034207 A1). The Applicant responded by arguing that the prior
`
`art relied on “does not teach that the session key is derived from a device identifier
`
`of the recipient computer, as recited in claim 1.” Ex. 1002, 104/1171. Specifically,
`
`the Applicant distinguished the prior art because although it disclosed using an
`
`identifier to generate an encryption key, it did not teach using an identifier that “is
`
`uniquely associated with a particular computing device.” Id., 105/1171 (emphasis
`
`in original).
`
`The Examiner subsequently entered a new rejection relying on a different
`
`secondary reference, Kudou (US 2007/0005974 A1) in combination with Saito. Id.,
`
`64/1171. The Applicant responded by amending two of the then pending
`
`independent claims (1 and 7) to explicitly recite the following newly added
`
`limitation: “and confirm[ing] to the first computing device that the encryption key
`
`Petition for Inter Partes Review of USP 8,495,359
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`Page 7
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`IPR2020-00101
`Patent 8,495,359
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`was sent to the second computing device.” Id., 41-42/1171. The Applicant also
`
`amended independent claim 12 to explicitly recite the following newly added
`
`limitation: “the device identifier generated from a combination of user-configurable
`
`and non-user-configurable machine parameters of the recipient computing device.”
`
`Id., 43/1171.
`
`With respect to the “confirming” step limitation added to claims 1 and 7, the
`
`Applicant argued that the “confirming” step is a non-trivial distinction over the prior
`
`art in that it provides “an independent verification step for authenticating the
`
`communication.” Id., 46/1171. Regarding the amendment to claim 12, the Applicant
`
`argued that the “[u]ser configurable machine parameters [] provide the user of the
`
`recipient computer device with greater flexibility, i.e. the ability to customize or
`
`change the unique device identifier without having to change out internal hardware
`
`components of his computing device.” Id., 48/1171. The Applicant also added two
`
`new claims (21 and 22) that added both of the confirming step and user configurable
`
`and non-user-configurable machine parameter limitations. Id., 49-50/1171. The
`
`Examiner responded by requesting that the Applicant amend the independent claims
`
`to include both of these limitations and to cancel claims 21 and 22. The Applicant
`
`agreed to so amend independent claims 1 and 7, and canceled claims 16-22. The
`
`’359 patent then issued.
`
`Petition for Inter Partes Review of USP 8,495,359
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`Page 8
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`V. LEVEL OF SKILL IN THE ART, AND STATE OF THE ART
`
`The person having ordinary skill in the art in June 2009 (“PHOSITA”) would
`
`have a bachelor’s degree in computer science, electrical and/or computer
`
`engineering, or equivalent training, and two years of experience in computer
`
`networking and information security. Additional experience may substitute for
`
`education, and addition education may substitute for experience. Declaration of
`
`Henry Houh (Ex. 1008), ¶ 43.
`
`VI. CLAIM CONSTRUCTION
`
`For this IPR, Petitioner applies the plain and ordinary meaning to a PHOSITA
`
`of all claim terms and contends that no claim terms require specific construction to
`
`resolve the unpatentability issues presented herein. See, e.g., Aurobindo Pharma
`
`USA, Inc. v. Andrx Corp. et al., IPR2017-01648, Paper 34 at 11 (PTAB Dec. 28,
`
`2018) (“We address the construction of only certain claim terms raised by the parties,
`
`and we do so only to the extent necessary to determine whether Petitioner has
`
`demonstrated unpatentability by a preponderance of the evidence.”) (citing Nidec
`
`Motor Corp. v. Zhongshan Borad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
`
`2017)). Indeed, Petitioner contends that in view of the Board’s expertise in patent
`
`law and technology, that the ’359 patent recites claims that do not require proposed
`
`constructions that differ from the claim language in order for the Board to compare
`
`the prior art to the claims.
`
`Petition for Inter Partes Review of USP 8,495,359
`
`Page 9
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`On the other hand, construction of certain claim terms may be relevant to
`
`issues in the parallel district court litigation, e.g., as part of resolving non-
`
`infringement disputes or to “clarify and when necessary to explain” terms for
`
`“determination of infringement” by the factfinder; i.e., judges and juries who are not
`
`as familiar with patent law and technology as the Board. O2 Micro Int’l Ltd. v.
`
`Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (citation
`
`omitted). Therefore, Petitioner does not waive its right to raise additional issues of
`
`claim construction in any proceeding, nor does it waive any argument in any
`
`proceeding that claim terms are indefinite. Petitioner intends to advise the Board of
`
`pertinent claim construction positions taken in district court filings, although it does
`
`not intend to file every exchange related to the district court claim construction
`
`process.
`
`VII. GROUND 1: CLAIMS 1-15 ARE UNPATENTABLE
`AS OBVIOUS OVER OLKIN IN VIEW OF KIM
`
`As explained below, claims 1-15 are unpatentable as obvious over U.S. Patent
`
`No. 7,376,835 (“Olkin”) in view of U.S. Patent Application Publication No. US
`
`2009/0055648 A1 (“Kim”). Ex. 1008, ¶¶ 45-93.
`
`Petition for Inter Partes Review of USP 8,495,359
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`Page 10
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`IPR2020-00101
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`A. Olkin
`
`Olkin, titled “Implementing Nonrepudiation And Audit Using Authentication
`
`Assertions And Key Servers,” issued on May 20, 2008, thus qualifying as prior art
`
`to the ’359 patent under at least 35 U.S.C. §§ 102(a), (b). Ex. 1003.
`
`B. Kim
`
`Kim, titled “Method Of And Apparatus For Sharing Secret Information
`
`Between Device In Home Network,” published on February 26, 2009. Ex. 1004.
`
`Since Kim published prior to the earliest possible effective filing date of the ’359
`
`patent, Kim qualifies as prior art under at least pre-AIA 35 U.S.C. § 102(a). Kim
`
`also qualifies as prior art under pre-AIA 35 U.S.C. § 102(e) as it claims priority to
`
`U.S. Patent Application No. 12/194,079, filed August 19, 2008, and Korean Patent
`
`Application No. 10-2007-0083494, filed August 20, 2007, and ultimately issued as
`
`U.S. Patent No. 9,094,192.
`
`C. Rationale And Motivation To Combine Olkin With Kim
`
`As discussed below and herein there was a motivation to combine Olkin and
`
`Kim as well as a reasonable expectation of success in implementing the claimed
`
`invention with the combination of Olkin and Kim. For at least the following reasons,
`
`Olkin and Kim would have been a natural combination to a PHOSITA before June
`
`22, 2009. Ex. 1008, ¶¶ 49-53.
`
`Petition for Inter Partes Review of USP 8,495,359
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`Page 11
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`Each of Olkin and Kim is generally directed at improved security methods of
`
`electronic communications and messages between nodes on a network. Id., ¶ 50.
`
`More specifically, Olkin discusses existing systems for securing electronic
`
`communications, including a key server distinct from the senders and receivers, for
`
`communications such as e-mail, instant messaging, video-conferencing, secure real-
`
`time document editing, and other collaborative applications. Ex. 1003, 21:27-43.
`
`Olkin defines a key server to be “[a] network server that holds protection keys and
`
`releases them to authorized users.” Id., 21:57-58. Olkin describes the key server to
`
`be “used much more generally to build and deploy a variety of solutions that address
`
`the problem of secure communication” (id., 21:28-31) and that “[b]y using key
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`servers, organizations can satisfy the most stringent security requirements while
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`enabling their constituents to freely and easily collaborate via a rich set of techniques
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`and media.” Id., 21:39-43.
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`Olkin’s key server creates conversation keys or receives conversation keys
`
`from source participants, stores keys, and releases keys to collaboration participants
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`after participants have been authenticated and authorized. Id., 22:37-49, 22:57-59,
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`26:63-27:6; Ex. 1008, ¶ 50. The conversation keys are stored with a unique
`
`ID/resource ID so that the key server can retrieve specific conversation keys for use
`
`in decryption by the recipient which uses the unique ID to request a conversation
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`key. Ex. 1003, 22:62-23:8, 26:63-27:6. Thus, collaboration participants who can
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`prove their authenticity at a sufficiently strong level can engage in the collaboration.
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`Id., 26:12-15; Ex. 1008, ¶ 50.
`
`Olkin explains that its conversation key approach improves on other security
`
`technologies, such as session keys. Ex. 1003, 25:63-26:4, 26:27-37; Ex. 1008, ¶ 50.
`
`Olkin further explains that collaboration technology that uses public key
`
`infrastructure (PKI) can be inefficient and rigid, thus teaching that using PKI
`
`certificates is not required. Id., 26:6-13. Olkin does not explicitly disclose how its
`
`conversation keys are created, or what inputs are used to create them. Ex. 1008, ¶
`
`51. In order to understand the capabilities and strength of the Olkin system vis-à-vis
`
`systems using other security technologies, a PHOSITA, however, would want to
`
`know how these keys are created. Id. A PHOSITA would naturally look to Kim,
`
`which discloses a method of generating keys (e.g., public keys and private keys) in
`
`order to encrypt and decrypt communications. Ex. 1004, ¶ 0028, 0034; Ex. 1008, ¶¶
`
`51-52.
`
`Kim discloses sharing secret information between networked devices. Ex.
`
`1004, Abstract. The “devices generate keys based on personal information input by
`
`a user according to an identity based encryption (IBE) scheme.” ¶ 0023. Kim
`
`discloses that “seed information,” comprising of a device’s master key, IBE
`
`parameters, and identification parameters of the device, and along with a user’s
`
`credentials (i.e., a user’s personal information, and/or a user’s password), are used
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`to generate both public and secret (private) keys. Ex. 1004, Abstract, ¶¶ 0024, 0025,
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`0028, 0031, 0033-0035, Figs. 2-3; Ex. 1008, ¶ 51. Thus, a PHOSITA would have
`
`looked to Kim for a key generation method and would have understood that Kim’s
`
`method could be used on any network nodes regardless of location. Ex. 1008, ¶ 51.
`
`Kim further discloses that a Private Key Generator is used to generate a secret
`
`(private) key for decrypting a message encrypted with the public key (Ex. 1004, ¶
`
`0025) and that the PKG can be embedded in a first device or located at a trusted third
`
`party. Ex. 1004, ¶¶ 0025, 0035; Ex. 1008, ¶ 52.
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`A PHOSITA implementing Olkin would naturally look to Kim to understand
`
`a method of secure transmission, including the details of how the encryption keys
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`are generated. Ex. 1008, ¶ 53. The technologies described by each of Olkin and Kim
`
`are predictable to a PHOSITA; thus, a PHOSITA would have a reasonable
`
`expectation of success to combine their teachings. Id.
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`D.
`
`Independent Claims 1 And 6
`
`Independent claim 1 of the ’359 patent is a system claim, while independent
`
`claim 6 is a method claim. As can be seen below, the limitations of these claims have
`
`similar substantive features, each of which is compared to the Olkin + Kim prior art
`
`combination as follows.
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`[1.1] A system for securing an electronic communication, the system
`comprising:
`
`[6.1] A method of securing an electronic communication, the method
`comprising:
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`Olkin satisfies the preambles of claims 1 and 6. Ex. 1008, ¶¶ 55-56. Indeed, it
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`discloses a communication system that performs methods of securely transmitting
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`electronic messages. For example, Olkin recites that “[t]he present invention relates
`
`generally to providing security for messages communicated in networks.” Ex. 1003,
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`1:18-19. Additionally, as shown by FIG. 11, Olkin discloses a system having a
`
`similar structure for securing electronic communication as that disclosed in the ’359
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`patent.
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`The components of Olkin serve the same roles as the components disclosed in
`
`the ’359 patent as set forth by the following table:
`
`Olkin Component
`
`Comparable ’359 Patent Component
`
`Originator 314
`
`Second computing device 103 (sending computer)
`
`Recipient 316
`
`First computing device 101 (receiving computer)
`
`Key Server 320
`
`Gateway server 107
`
`Database 332
`
`Database 109
`
`Ex. 1008, ¶ 56.
`
`[1.2] a gateway server configured to: receive and store a device identifier and a
`network address from a first computing device, wherein the device identifier is
`generated by the first computing device from a combination of user-
`configurable and non-user-configurable parameters of the first computing
`device and uniquely identifies the first computing device, and wherein the
`network address is associated with the first computing device;
`
`[6.2] receiving and storing at a gateway server store a device identifier and a
`network address from a first computing device, wherein the device identifier is
`generated by the first computing device from a combination of user-
`configurable and non-user-configurable parameters of the first computing
`device and uniquely identifies the first computing device, and wherein the
`network address is associated with the first computing device;
`
`Olkin in combination with Kim satisfies limitations [1.2] and [6.2]. Ex. 1008,
`
`¶¶ 57-62.
`
`First, Olkin discloses a key server (gateway server) that is configured to
`
`receive and store information pertaining to secure communications between its
`
`recipient device (first computing device) and originator device (second computing
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`device). Ex. 1008, ¶ 57. Olkin teaches that its originator device “has data for a
`
`communication 324 that it wants to sent [sic] to one or more recipients 316.” Ex.
`
`1003, 26:56-57. Olkin’s key server is configured to store an identifier (resource ID)
`
`in the database. Id., 27:3-6. The identifier (resource ID) is associated with a
`
`communication between the originator device and a recipient device. Id., 26:63-67.
`
`Second, Olkin discloses various types of information stored in the key server’s
`
`database by registered senders and receivers, including user ID, password, and email
`
`addresses (network addresses)3. Ex. 1003, Fig. 5, 13:40-53, 14:8-10; Ex. 1008, ¶ 57.
`
`
`3 The ’359 patent teaches that an email address is a network address. Ex. 1001, 3:27-
`28, 8:65-66.
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`Although FIG. 5 is expressly discussed in the context of the embodiment
`
`disclosed in FIG. 1 (including the security server), a PHOSITA would understand
`
`that the database associated with the key server would contain the same type of data
`
`as stored in the database, including information received from the recipient (first
`
`computing device). Ex. 1008, ¶ 58.
`
`Third, Olkin does not explicitly disclose a device identifier gener
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