Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 10
`Entered: December 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner,
`
`v.
`
`PROXICOM WIRELESS, LLC,
`Patent Owner.
`____________
`
`IPR2020-00978
`Patent 8,116,749 B2
`____________
`
`
`
`
`Before BRIAN J. McNAMARA, JESSICA C. KAISER, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Google Exhibit 1029
`Google v. SecCommTech
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 10
`Entered: December 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner,
`
`v.
`
`PROXICOM WIRELESS, LLC,
`Patent Owner.
`____________
`
`IPR2020-00978
`Patent 8,116,749 B2
`____________
`
`
`
`
`Before BRIAN J. McNAMARA, JESSICA C. KAISER, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Google Exhibit 1029
`Google v. SecCommTech
`
`
`
`IPR2020-00978
`Patent 8,116,749 B2
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`
`I. INTRODUCTION
`
`A. Background
`
`Target Corporation (“Petitioner”) filed a Petition for inter partes
`review of claims 1–3, 13, 14, and 17–20 (“the challenged claims”) of U.S.
`Patent No. 8,116,749 B2 (Ex. 1001, “the ’749 patent”). Paper 2 (“Pet.”), 1.
`Proxicom Wireless, LLC (“Patent Owner”) filed a Preliminary Response.
`Paper 9 (“Prelim. Resp.”).
`
`Institution of an inter partes review is authorized by statute only when
`“the information presented in the petition . . . and any response . . . shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a) (2018). For the reasons set forth below, upon considering the
`Petition, Preliminary Response, and evidence of record, we conclude that the
`information presented in the Petition fails to establish a reasonable
`likelihood that Petitioner will prevail in showing the unpatentability of any
`of the challenged claims. Accordingly, we decline to institute an inter
`partes review.
`
`B. Real Parties in Interest
`
`Petitioner identifies itself as the sole real party in interest. Pet. 5.
`
`Patent Owner identifies itself as the sole real party in interest.
`Paper 4, 2.
`
`C. Related Matters
`
`The parties indicate that the ’749 patent is the subject of the following
`district court proceeding:
`
`2
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`
`Proxicom Wireless, LLC v. Target Corporation, No. 6:19-cv-
`1886 (M.D. Fla. filed Oct. 2, 2019) (“the District Court
`litigation”).1
`Pet. 5; Paper 4, 2. The parties further note various petitions for inter partes
`review concerning separate patents, and Patent Owner identifies two
`pending patent applications. Pet. 5–6; Paper 4, 2–3.
`
`D. The Challenged Patent
`
`The ’749 patent disclosure “is generally concerned with facilitating
`the exchange of information and transactions between two entities associated
`with two wireless devices when the devices are in close proximity to each
`other utilizing both a short range and a long range wireless capability.”
`Ex. 1001, 2:50–54. The devices use a short range communication protocol,
`such as Bluetooth, only to detect the presence of other devices and use a
`long range communication protocol, such as Wi-Max, to communicate with
`a central server and to perform the actual substantive communications with
`other devices. Id. at 6:29–42. Each device transmits identifier information
`via short range communication as a proximity detection process. Id.
`at 6:46–49. This use of peer-to-peer short range communication beneficially
`allows proximity between devices to be determined without the need of a
`global positioning system (GPS), which may not always be present or
`available for use. Id. at 3:52–59. Use of a central server to mediate
`communications between the devices beneficially provides security to the
`
`
`1 Stayed on June 17, 2020 pending resolution of ten petitions for inter partes
`review filed by Petitioner. See Paper 6.
`
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`transaction, allows for anonymity between the parties, and implements
`policy enforcement. Id. at 4:9–57.
`
`In one application, only a user’s device is capable of long range
`communication and the second device is only capable of broadcasting its
`identifier information. Ex. 1001, 7:16–25. This application is illustrated in
`Figure 2, which is reproduced below:
`
`
`Figure 2 shows a block diagram of fixed broadcast device 204 and mobile
`device 202. Id. at 5:3–4. The user’s mobile device detects the broadcast
`device and transmits the broadcast device’s identifier information, along
`with a request for information regarding the broadcast device, to central
`server 100. Id. at 14:42–54. The server determines what information
`regarding the broadcast device is available and transmits a description of the
`information to the user’s device. Id. at 14:55–57. The user then has the
`option to download the information. Id. at 14:57–64. The server may also
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`coordinate the several steps of an electronic commerce transaction between
`the user’s device and the broadcast device. Id. at 17:30–18:60.
`
`E. The Challenged Claims
`
`Petitioner challenges claims 1–3, 13, 14, and 17–20 of the ’749 patent.
`Pet. 1. Claim 1 is the sole independent claim and is reproduced below:
`1.
`A method for exchange of information between one or
`more applications executing on at least a first wireless device
`and a second wireless device, the method comprising the steps
`of:
`at the first wireless device, providing initial identification
`
`information to a central server, said initial identification
`information having been collected by the first wireless device
`from the second wireless device via a first, direct, short range
`local wireless link between the second and first wireless
`devices, wherein the initial identification information is
`associated at the central server with an identity of a user or
`entity associated with the second wireless device, and wherein
`the initial identification information is provided to the central
`server, by the first wireless device, over a second wireless link;
`
`at the second wireless device, upon an occurrence of a
`predetermined event coordinated with said central server,
`within a specific application on the second wireless device,
`providing modified identification information over the first,
`direct, short range local wireless link in place of the initial
`identification information, such that the modified identification
`information is associated at the central server with said identity
`of a user or entity associated with the second device; and
`
`at the first wireless device, collecting said modified
`identification information.
`Ex. 1001, 23:29–55.
`
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`F. Asserted Grounds of Unpatentability
`
`The Petition relies on the following prior art references:
`Name
`Reference
`Mgrdechian
`US 7,545,784 B2, issued June 9, 2009
`Kulakowski WO 2007/084973 A2, published July 26, 2007
`
`
`
`Petitioner asserts the following grounds of unpatentability:
`Claims Challenged
`35 U.S.C. §
`Reference(s)
`1–3, 13, 14, 17–20
`102(b)2
`Mgrdechian
`1–3, 13, 14, 17–20
`103(a)
`Mgrdechian
`1–3, 13, 14, 17–20
`103(a)
`Mgrdechian, Kulakowski
`
`Exhibit
`1005
`1013
`
`Pet. 12. Petitioner submits a declaration of Mr. David Hilliard Williams
`(Ex. 1003, “Williams Declaration”) in support of its contentions.
`
`II. DISCRETIONARY DENIAL
`Patent Owner argues that we should exercise our discretion to deny
`
`institution under 35 U.S.C. § 325(d) because Mgrdechian was already
`considered by the Office. Prelim. Resp. 11–29. Patent Owner also argues
`that we should exercise our discretion to deny institution under 35 U.S.C.
`§ 314(a), alleging that the Petition contains a position inconsistent with
`Petitioner’s arguments in the now stayed District Court litigation. Id.
`at 53–60. Given that we are not instituting review based on the
`shortcomings of the Petition as discussed below, we need not consider
`
`
`2 The application resulting in the ’749 patent was filed prior to the date when
`the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284 (2011), took effect. Thus, we refer to the pre-AIA version of
`sections 102 and 103.
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`Patent Owner’s arguments that we should exercise our discretion to deny
`institution.
`
`III. ANALYSIS
`
`A. Principles of Law
`
`Petitioner bears the burden of persuasion to prove unpatentability, by
`a preponderance of the evidence, of the claims challenged in the Petition.
`35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015). The Board may authorize an inter partes review if we determine that
`the information presented in the Petition and Patent Owner’s Preliminary
`Response shows that there is a reasonable likelihood that Petitioner will
`prevail with respect to at least one of the claims challenged in the Petition.
`35 U.S.C. § 314(a).
`
`“Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every
`limitation is found either expressly or inherently in a single prior art
`reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed.
`Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d
`1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single
`prior art disclosure of all elements of a claimed invention arranged as in the
`claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332
`(Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
`1548 (Fed. Cir. 1983)).
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`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 the
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) when in evidence, any objective
`evidence of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`
`B. Level of Ordinary Skill in the Art
`
`Petitioner contends that a person having ordinary skill in the art at the
`time of the invention (“POSITA”) would have had “a Bachelor’s degree in
`Electrical Engineering, or a related field, and approximately 3-5 years of
`professional experience in the field of wireless communications.” Pet. 16.
`Petitioner acknowledges that “graduate education could substitute for
`professional experience” and “significant experience in the field could
`substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 8–20, 36–38).
`
`Patent Owner does not contest Petitioner’s definition of the level of
`ordinary skill in the art. Prelim. Resp. 8–9.
`
`The level of ordinary skill in the art usually is evidenced by the
`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill
`proposed by Petitioner appears to be consistent with that of the references,
`and we apply Petitioner’s proposed level of ordinary skill for purposes of
`this Decision.
`
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`C. Claim Construction
`
`In an inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b), including construing the claims in
`accordance with the ordinary and customary meaning of such claims as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2019). Thus, we apply the
`claim construction standard as set forth in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc).
`
`Claim terms are generally given their ordinary and customary
`meaning as would be understood by one with ordinary skill in the art in the
`context of the specification, the prosecution history, other claims, and even
`extrinsic evidence including expert and inventor testimony, dictionaries, and
`learned treatises, although extrinsic evidence is less significant than the
`intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
`dispositive, and it is the single best guide to the meaning of a disputed term.
`Id. at 1315.
`
`Only those terms that are in controversy need be construed, and only
`to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999)).
`
`“Petitioner interprets the claim terms according to their plain and
`ordinary meaning consistent with the [S]pecification.” Pet. 17 (citing
`Ex. 1003 ¶¶ 22–24). Petitioner asserts that the challenged claims use “a
`term of degree (e.g., ‘short range local wireless link’),” but does not explain
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`how this assertion affects claim construction. Id. Petitioner acknowledges
`that “[a] district court in another proceeding has construed terms of this
`patent,” but argues that those “constructions do not impact the outcome of
`this IPR as the prior art . . . meets the limitations under the district court’s
`constructions or the plain and ordinary meaning of the terms.” Id. at 18
`(citing Ex. 1003 ¶ 67; Ex. 1021).
`
`Patent Owner asserts that no “constructions are . . . necessary at this
`juncture.” Prelim. Resp. 9.
`
`At this time, we determine that no express construction of any term is
`necessary.
`
`D. Overview of the Asserted Prior Art
`1. Mgrdechian
`Mgrdechian discloses a wireless communication system. Ex. 1005,
`
`1:32–35. Mgrdechian recognizes that on-line dating and social networking
`applications allow users to search for previously unknown parties based on
`specific qualities or characteristics, but contends that “there is no efficient
`methodology . . . where[by] a person may quickly obtain information about a
`specific individual that he or she may encounter but does not yet know
`anything about.” Id. at 2:43–57. Mgrdechian purports to overcome this
`problem by providing a wireless communication system. Id. at 3:6–9.
`
`Figure 3A illustrates Mgrdechian’s system and is reproduced below:
`
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`Figure 3A illustrates Mgrdechian’s wireless communication system 300,
`showing wireless devices 310, 320 that communicated directly using local
`wireless protocol 330. Ex. 1005, 9:34–37. The system also includes remote
`computer system 360, which communicates with the wireless devices via
`wireless network 340 and Internet 350 and provides access to additional
`information regarding users of the wireless devices. Id. at 10:48–61.
`
`Mgrdechian is particularly directed to a dating application (see
`Ex. 1005, 11:53–14:45), but contemplates use in other applications (see id.
`at 14:49–15:42). In general, communication is initiated by a first user,
`referred to as the initiator or “User A” using “Device A,” who wants to
`gather information about another user, referred to as the target or “User B”
`using “Device B.” Id. at 9:40–55. Device A initiates communication by
`transmitting an identification request over the local wireless protocol. Id.
`at 10:38–40. Wireless devices within range of Device A, such as Device B,
`receive the request and respond by sending a reply message that includes
`
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`that device’s identification (“device ID”). Id. at 10:41–47. Device A
`receives the reply message and transmits the device ID to the remote
`computer system over the wireless network and the Internet. Id.
`at 10:48–52. The computer system receives and uses the device ID to access
`information associated with the device ID within database 370, and transmits
`the information to Device A. Id. at 10:62–11:22. The transmitted
`information can be profile information regarding User B, which may include
`a variety of personal information about User B and other information,
`including “items or services for sale.” Id. at 11:23–33.
`
`2. Kulakowski
`Kulakowski discloses “a network security system and method for
`
`detecting clones of true or properly registered client devices attempting to
`steal services without payment or otherwise mimic a real client device.”
`Ex. 1013 ¶ 2. Kulakowski recognizes that malfeasants attempt to steal
`distributed services by creating multiple clients with credentials identical to
`those of a valid client. Id. ¶ 3. Kulakowski’s system purports to detect such
`cloned devices. Id. ¶ 5.
`
`Figure 4 is a flow diagram illustrating operation of Kulakowski’s
`system and is reproduced below:
`
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`Figure 4 is a flow diagram illustrating a method for detecting the presence of
`cloned client devices. Ex. 1013 ¶ 48. The detection process begins when a
`client device sends a message to a system server (step 40). Id. The message
`is adapted to include embedded therein a covert identifier derived from one
`or more operational events at the client device. Id. ¶¶ 6, 37. The covert
`identifier is unique to the specific client device and is based on covert data
`values such as the number of times a client has performed a certain event or
`the microsecond time of day that an event occurred. Id. ¶¶ 8, 34, 50. The
`server extracts the covert identifier upon receiving the message (step 42) and
`compares the extracted covert identifier with stored values corresponding to
`the client credentials (step 44). Id. ¶ 48. The server then determines
`whether there is a match (step 45). Id. If so, the message is processed
`further per normal operating procedures (step 48). Id. If there is no match,
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`the server generates a report to the system operator indicating that the client
`credentials may have been cloned (step 46). Id. The system operator can
`then take further action as deemed appropriate. Id. ¶ 41.
`
`E. Asserted Anticipation by or Obviousness in View of Mgrdechian
`
`Petitioner argues that claims 1–3, 13, 14, and 17–20 would have been
`unpatentable as being anticipated by or obvious in view of Mgrdechian.
`Pet. 19–53. In support of its showing, Petitioner relies upon the Williams
`Declaration. Id. (citing Ex. 1003). We have reviewed Petitioner’s assertions
`and supporting evidence. For the reasons discussed below, and based on the
`record before us, we determine that Petitioner does not demonstrate a
`reasonable likelihood of prevailing in showing that these claims would have
`been unpatentable in view of Mgrdechian.
`
`A petition for inter partes review must identify, “with particularity,
`each claim challenged, the grounds on which the challenge to each claim is
`based, and the evidence that supports the grounds for the challenge to each
`claim.” 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.104(b) (specifying
`necessary elements of a petition).
`
`As the Federal Circuit has explained, “[i]n an IPR, the petitioner has
`the burden from the onset to show with particularity why the patent it
`challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (emphasis added)
`(citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-Sys., Inc. v. Illumina
`Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost
`importance that petitioners in the IPR proceedings adhere to the requirement
`that the initial petition identify ‘with particularity’ the ‘evidence that
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`supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C.
`§ 312(a)(3))).
`
`Claim 1 recites, in relevant part,
`
`at the second wireless device, upon an occurrence of a
`predetermined event coordinated with said central server,
`within a specific application on the second wireless device,
`providing modified identification information over the first,
`direct, short range local wireless link in place of the initial
`identification information, such that the modified identification
`information is associated at the central server with said identity
`of a user or entity associated with the second device.
`Ex. 1001, 23:44–53. Petitioner notes that Mgrdechian discloses that, when
`responding to an identification request, the device ID sent by the target
`device in its reply message may be “dynamic or pseudo-random” and maps
`this to the recited modified identification information. Pet. 35–36.
`However, Petitioner does not address the “upon an occurrence of a
`predetermined event” recitation. See id. at 35–38; see also Prelim. Resp. 33
`(arguing that the Petition “entirely ignores the limitation that the identifier is
`changed ‘upon an occurrence of a predetermined event coordinated with said
`central server.’ Petitioner identifies no teaching in Mgrdechian that
`contemplates a ‘predetermined event.’”). The Petition, therefore, fails to
`identify with requisite particularity how Mgrdechian discloses or teaches all
`of the recitations of claim 1.
`
`Petitioner also contends that Mgrdechian’s Device B provides its
`device ID to the Device A and “changes its ID in a ‘dynamic’ or ‘pseudo-
`random’ manner.” Pet. 35–36 (emphasis added) (citing Ex. 1005, 3:38–42,
`3:59–67, 4:4–14, 5:1–3, 12:7–14, 16:17–19).
`
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`Patent Owner argues that Mgrdechian does not provide any details
`
`regarding its “dynamic or pseudo-random” embodiments. Prelim. Resp. 31.
`Patent Owner argues that “Petitioner provides no explanation of or
`description of how ‘dynamic or pseudo-random’ IDs would be
`implemented.” Id. According to Patent Owner,
`Mgrdechian does not even indicate that its reference to
`“dynamic” means that identifiers are changed at all, as opposed
`to, for example, identifier[s] being determined dynamically.
`Similarly, Mgrdechian does not indicate that its reference to
`“pseudo-random” means that identifiers would be changed, as
`opposed to generated as a pseudo-random number to be used as
`an identifier.
`
`Id.
`We agree that the Petition fails to explain adequately how Mgrdechian
`
`discloses or teaches providing modified identification information as
`required by claim 1. As noted by both of the parties, Mgrdechian discloses
`that its device IDs can be “dynamic or pseudo-random.” Ex. 1005, 5:1–3.
`However, Petitioner does not support adequately its contention that the
`second device changes its device ID during a communication process with
`the first device and provides the modified ID to the first device. Indeed, to
`support its contention, Petitioner does little more than reproduce
`Mgrdechian’s statement that “embodiments of the devices can include cases
`where the ID’s are static, dynamic or pseudo-random.” See Pet. 37 (quoting
`Ex. 1005, 5:2–3). Nor do we discern any disclosure within Mgrdechian
`supporting Petitioner’s contentions that a first device sends its device ID to a
`second device, the first device modifies its device ID, and the first device
`transmits the modified device ID to the second device.
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`Nor do we find Mr. Williams’s testimony persuasive. Mr. Williams’s
`
`testimony is substantially the same as the language in the Petition. Compare
`Pet. 35–36, with Ex. 1003 ¶¶ 114–119. Mr. Williams opines that
`“Mgrdechian discloses that each wireless device, including a second device
`(e.g., Device B) that provides its ‘ID’ to ‘a first wireless device’ using a
`‘local wireless protocol,’ changes its ID in a ‘dynamic’ or ‘pseudo-random’
`manner, which is retrieved using the device’s ‘local software application.’”
`Ex. 1003 ¶ 116 (citing Ex. 1005, 3:38–42, 3:59–67, 4:4–14, 5:1–3, 12:7–14,
`16:17–19). As with the Petition, the cited portions of Mgrdechian fail to
`provide support for Mr. Williams’s contention that Mgrdechian’s device
`changes its device ID and provides the modified ID to a second device. Nor
`are we persuaded by Mr. Williams’s assertion that it would have been
`obvious to modify Mgrdechian such that Device B provides modified
`identification information as required by claim 1. Id. ¶ 119; see also
`37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
`underlying facts or data on which the opinion is based is entitled to little or
`no weight.”). Although Mr. Williams asserts that the modification would
`“advantageously increase security of the system,” he does not explain how
`security would be increased by providing modified identification
`information while at the same time making the modified identification
`information “search[able] by other users.” See Ex. 1003 ¶ 119.
`
`For the reasons explained above, the arguments and evidence
`presented in the Petition fail to provide sufficient reasoning and evidence to
`support Petitioner’s contention that Mgrdechian discloses or teaches
`providing modified identification information as required by claim 1 and
`incorporated into dependent claims 2, 3, 13, 14, and 17–20. Therefore, the
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`Petition has not demonstrated a reasonable likelihood of success in
`challenging these claims.
`
`F. Asserted Obviousness in View of Mgrdechian and Kulakowski
`
`Petitioner argues that claims 1–3, 13, 14, and 17–20 would have been
`obvious over the combination of Mgrdechian and Kulakowski. Pet. 53–69.
`Petitioner relies on Mgrdechian as set forth in § III.E above and relies on
`Kulakowski to teach the use of a “covert identifier” in a network security
`system to detect clones that mimic a real client device. Id. Regarding
`claim 1, Petitioner argues that it would have been obvious to change
`“Mgrdechian’s ‘dynamic’ or ‘pseudo-random’ identifier for device B” based
`on a predetermined event and then broadcast the modified device ID.
`Pet. 61 (citing Ex. 1003 ¶¶ 154–159; Ex. 1013 ¶¶ 63, 73). According to
`Petitioner, it would have been obvious “to apply Kulakowski’s known
`teachings of covert, changing identifiers in implementing Mgrdechian’s
`‘dynamic’ device identifiers” in order to “improve security and detect
`spoofed or ‘clone’ client wireless devices.” Id. at 59 (emphasis omitted)
`(citing Ex. 1003 ¶ 92; Ex. 1005, 4:65–5:3, 5:21–30; Ex. 1013 ¶¶ 8, 15, 48).
`
`Initially, we find Petitioner’s assertion that Mgrdechian’s disclosure
`of a “dynamic” device ID constitutes providing modified identification
`information as recited in claim 1 (see Pet. 58–59, 61) unpersuasive for the
`reasons set forth in § III.E above.
`
`Additionally, we are unpersuaded by Petitioner’s assertion that
`Kulakowski teaches providing modified identification information as
`required by claim 1. Petitioner maps Kulakowski’s “covert identifier” to the
`recited identification information. Pet. 60–61. Petitioner relies on
`
`18
`
`
`
`IPR2020-00978
`Patent 8,116,749 B2
`
`Kulakowski to teach “covert, changing identifiers” that “improve security
`and detect spoofed or ‘clone’ client wireless devices” and “protect user
`privacy by validating the legitimacy of the client devices.” Id. at 59.
`
`Patent Owner argues that Kulakowski “does not contemplate a
`scenario where identifiers are passed from client device to client device as in
`Mgrdechian.” Prelim. Resp. 46. Patent Owner argues that the combination
`of Mgrdechian and Kulakowski as set forth in the Petition “is directly
`contrary to [Kulakowski’s] teachings” because “Kulakowski seeks to
`prevent cloning by utilizing ‘covert identifiers’ that are known to no other
`client devices.” Id. (emphasis omitted).
`
`Kulakowski discloses a security method in which a device sends a
`message to a server, the message having embedded therein a covert
`identifier. Ex. 1013 ¶¶ 6, 37. The server extracts the covert identifier upon
`receiving the message and compares the extracted covert identifier with
`stored values corresponding to the client credentials to determine if the
`device is an authentic device or a cloned device. Id. ¶ 48. “The covert
`identifier is generated by operational events occurring during actual
`operation of a client device. . . . The covert data therefore provides a unique
`identifier for a particular client device which is stored by the client device
`and subsequently used in messages to a server.” Id. ¶ 15. “Such values are
`covert because their nature makes them difficult for hackers to detect and
`duplicate in cloned client devices . . . .” Id. ¶ 34.
`
`Thus, Kulakowski teaches that its “covert identifiers” are covert and
`provide added security because they are known only to the particular device
`and the server. Neither Petitioner nor Petitioner’s declarant explains
`adequately why it would have been obvious to use this covert teaching to
`
`19
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`IPR2020-00978
`Patent 8,116,749 B2
`
`enhance the security of Mgrdechian’s system by transmitting the covert
`identifier to another client device. See Pet. 58–61; Ex. 1003 ¶¶ 91–92. We
`agree with Patent Owner that, by transmitting the modified information to
`other devices, the modification proposed by Petitioner “creates the very risk
`Kulakowski is trying to prevent” and that the Petition does not explain
`adequately why a person having ordinary skill in the art would “broadcast[]
`a Kulakowski ‘covert identifier’ in a way that could be intercepted by other
`client devices.” See Prelim. Resp. 47. By transmitting this information to
`devices sending an identification request (see, e.g., Ex. 1005, 10:38–47), the
`information would no longer be “covert,” and the Petition does not explain
`adequately how this information would “improve security and detect
`spoofed or ‘clone’ client wireless devices.” See Pet. 59.
`
`For the reasons explained above, the arguments and evidence
`presented in the Petition fail to provide sufficient reasoning and evidence to
`support Petitioner’s contention that the combination of Mgrdechian and
`Kulakowski teaches providing modified identification information as
`required by claim 1 and incorporated into dependent claims 2, 3, 13, 14,
`and 17–20. Therefore, the Petition has not demonstrated a reasonable
`likelihood of success in challenging these claims.
`
`IV. CONCLUSION
`For the foregoing reasons, we are not persuaded that the Petition
`
`establishes a reasonable likelihood that Petitioner would prevail in any of its
`challenges to claims 1–3, 13, 14, and 17–20 of the ’749 patent.
`
`20
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`IPR2020-00978
`Patent 8,116,749 B2
`
`
`V. ORDER
`In consideration of the foregoing, it is hereby ordered that the Petition
`
`is denied.
`
`21
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`
`
`IPR2020-00978
`Patent 8,116,749 B2
`
`For PETITIONER:
`James L. Davis, Jr.
`Cassandra Roth
`ROPES & GRAY LLP
`james.l.davis@ropesgray.com
`cassandra.roth@ropesgray.com
`For PATENT OWNER:
`Lauren N. Robinson
`BUNSOW DE MORY LLP
`lrobinson@bdiplaw.com
`
`22
`
`
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