UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TREND MICRO INC.,
`Petitioner
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`v.
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`CUPP COMPUTING AS,
`Patent Owner
`
`PGR2021-00101
`U.S. Patent No. 10,951,632
`
`
`PETITION FOR POST GRANT REVIEW OF
`U.S. PATENT NO. 10,951,632
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`TABLE OF CONTENTS
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`INTRODUCTION .......................................................................................... 1
`COMPLIANCE WITH FORMAL REQUIREMENTS ................................. 1
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4) ....................... 1
`1.
`Real Party-In-Interest ................................................................. 1
`2.
`Related Matters .......................................................................... 1
`3.
`Lead and Backup Counsel ......................................................... 2
`4.
`Service Information.................................................................... 2
`Proof of Service on the Patent Owner .................................................. 2
`B.
`Power of Attorney ................................................................................ 2
`C.
`Standing ................................................................................................ 2
`D.
`Timing .................................................................................................. 4
`E.
`Fees ....................................................................................................... 4
`F.
`STATEMENT OF PRECISE RELIEF REQUESTED .................................. 4
`
` FULL STATEMENT ON REASONS FOR REQUESTED RELIEF ........... 5
`A.
`Summary of the ’632 Patent ................................................................. 5
`B.
`The ’632 Patent Prosecution History ................................................. 10
`C.
`No Challenged Claim of the ’632 Patent is Entitled to the
`Benefit of the ’134 Provisional Application’s Filing Date. ............... 10
`IPR of the Related ’595 Patent ........................................................... 13
`Person of Ordinary Skill in the Art .................................................... 14
`Claim Construction............................................................................. 14
`1.
`“power management mode” ..................................................... 14
`2.
`“security administrator device”................................................ 15
`3.
`“a security system processor” .................................................. 15
`G. Ground 1: Claims 1, 7, 9, 16, 22, and 24 are Obvious Under 35
`U.S.C. § 103 (AIA) in light of Gordon and Gardner. ........................ 16
`1.
`Limitation-by-Limitation Analysis .......................................... 19
`
`D.
`E.
`F.
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`ii
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`

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`
`
`I.
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`H. Ground 2: Claims 7 and 22 are Obvious Under 35 U.S.C. § 103
`(AIA) in light of Gordon, Gardner, and Chang. ................................. 50
`1.
`Limitation-by-Limitation Analysis .......................................... 53
`Ground 3: Claims 9 and 24 are Obvious Under 35 U.S.C. § 103
`(AIA) in light of Gordon, Gardner, and Meenan. .............................. 56
`1.
`Limitation-by-Limitation Analysis .......................................... 57
`THE BOARD SHOULD NOT DENY INSTITUTION UNDER 35
`U.S.C. § 325(d). ............................................................................................ 62
` PTAB DISCRETION UNDER 35 U.S.C. § 324(a) SHOULD NOT
`PRECLUDE INSTITUTION. ...................................................................... 63
`A.
`Fintiv Factor 1: Institution Will Enable a Stay ................................. 64
`B.
`Fintiv Factor 2: District Court Schedule ........................................... 64
`C.
`Fintiv Factor 3: Parallel Proceeding Considerations ......................... 66
`D.
`Fintiv Factor 4: The Petition Raises Unique Issues .......................... 66
`E.
`Fintiv Factor 5: The Petition Will Enable Cancellation of
`Claims That Might be Reasserted ...................................................... 67
`Fintiv Factor 6: Other Considerations Support Institution ............... 67
`F.
` CONCLUSION ............................................................................................. 68
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`
`iii
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`EXHIBIT LIST
`
`Exhibit No.
`
`Description
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`1101
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`1102
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`1103
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`1104
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`1105
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`1106
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`1107
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`1108
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`1109
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`1110
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`1111
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`1112
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`1113
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`1114
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`1115
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`U.S. Patent No. 10,951,632 (the “’632 patent”).
`
`File history of U.S. Patent No. 10,951,632.
`
`Trend Micro Inc. v. CUPP Computing AS, IPR2019-00765 (’595
`patent), Final Written Decision (PTAB Aug. 25, 2020).
`
`U.S. Patent No. 9,781,164 (the “’595 patent”).
`
`Provisional Application No. 61/086,134.
`
`Joint Claim Construction Chart from the parties’ litigation in
`CUPP Cybersecurity, LLC v. Trend Micro, Inc., No. 3:18-cv-
`01251 (N.D. Tex.).
`
`U.S. Patent No. 7,818,803 to Gordon (“Gordon”).
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`U.S. Patent App. Pub. No. 2006/0272020 to Gardner (“Gardner”).
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`U.S. Patent App. Pub. No. 2011/0264931 to Chang (“Chang”).
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`Int’l Patent App. Pub. No. WO 2010/004296.
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`U.S. Patent App. Pub. No. 2006/0101277 to Meenan (“Meenan”).
`
`CUPP Cybersecurity, LLC v. Trend Micro, Inc., No. 3:18-cv-
`01251, Doc. 70 (N.D. Tex. Sept. 5, 2019) (stay order).
`
`CUPP Cybersecurity, LLC v. Trend Micro, Inc., No. 3:20-cv-
`03206, Doc. 38 (N.D. Tex. Apr. 8, 2021) (scheduling order).
`
`CUPP Cybersecurity, LLC v. Trend Micro, Inc., No. 3:20-cv-
`03206, Doc. 1 (N.D. Tex. Oct. 1, 2020) (original complaint).
`
`CUPP Cybersecurity, LLC v. Trend Micro, Inc., No. 3:20-cv-
`03206, Doc. 41 (N.D. Tex. Apr. 23, 2021) (amended complaint).
`
`iv
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`1116
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`1117
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`1118
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`1119
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`1120
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`Patent Owner’s infringement contentions in CUPP Cybersecurity,
`LLC v. Trend Micro, Inc., No. 3:20-cv-03206 (N.D. Tex.) (dated
`May 6, 2021).
`
`CUPP Cybersecurity, LLC v. Trend Micro, Inc., No. 3:18-cv-
`01251, Doc. 39 (N.D. Tex. Aug. 3, 2018) (order setting trial for
`May 18, 2020).
`
`CUPP Cybersecurity, LLC v. Trend Micro, Inc., No. 3:18-cv-
`01251, Doc. 63 (N.D. Tex. May 9, 2019) (order changing trial
`date to October 5, 2020).
`
`CUPP Cybersecurity, LLC v. Trend Micro, Inc., No. 3:18-cv-
`01251, Doc. 89 (N.D. Tex. Feb. 10, 2021) (order changing trial
`date to May 2, 2022).
`
`Email from Patent Owner’s counsel in CUPP Cybersecurity, LLC
`v. Trend Micro, Inc., No. 3:20-cv-03206 (N.D. Tex.) identifying
`asserted claims.
`
`1121
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`Declaration of expert Dr. Markus Jakobsson (“Jakobsson Decl.”).
`
`v
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`INTRODUCTION
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`The PTAB has found claims that are effectively identical to the ’632 patent’s
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`claims to be unpatentable. Trend Micro Inc. v. CUPP Computing AS, IPR2019-
`
`00765, Paper 29 at 45-46 (PTAB Aug. 25, 2020) (Ex. 1103) (finding unpatentable
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`many claims of related U.S. Patent No. 9,843,595 (the “’595 patent”)). For
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`example, the ’632 patent’s claim 1 is word-for-word identical to the ’595 patent’s
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`claim 1, except for one additional limitation also disclosed by the prior art. The
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`PTAB therefore should find that the ’632 patent’s claims, like the ’595 patent’s
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`claims, are unpatentable.
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`Moreover, although the crux of the ’632 patent’s purported novelty is a
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`security system that is mobile, the ’632 patent’s claims recite a “security system”
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`without regard to whether it is mobile or stationary. By claiming a security system
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`that may be stationary, the applicant wiped away any potential point of novelty the
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`patent’s purported invention may have had, and encompassed the prior art. The
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`challenged claims therefore are invalid.
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` COMPLIANCE WITH FORMAL REQUIREMENTS
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`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4)
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`1.
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`Real Party-In-Interest
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`Trend Micro is the real party-in-interest.
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`2.
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`Related Matters
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`The ’632 patent is subject to the following action: CUPP Cybersecurity LLC
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`
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`1
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`
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`v. Trend Micro, Inc., et al., No. 3:20-cv-03206 (N.D. Tex.).
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`3.
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`Lead and Backup Counsel
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`Lead counsel is Robert Buergi, Reg. No. 58,125, of DLA Piper LLP (US),
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`2000 University Ave., East Palo Alto, CA 94303; robert.buergi@dlapiper.com,
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`650-833-2407 (phone), 650-687-1144 (fax).
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`Backup counsel is Michael Burns, Reg. No. 57,593, of DLA Piper LLP
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`(US), One Liberty Place, 1650 Market St, Suite 5000, Philadelphia, PA 19103;
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`michael.burns@dlapiper.com, 215-656-2443 (phone), 215-606-2143 (fax).
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`4.
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`Service Information
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`Service information for lead and backup counsel is provided in the
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`designation of lead and backup counsel above.
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`B.
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`Proof of Service on the Patent Owner
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`As identified in the attached Certificate of Service, a copy of this Petition in
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`its entirety is being served to the Patent Owner’s attorney of record at the address
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`listed in the USPTO’s records by overnight courier pursuant to 37 C.F.R. § 42.6.
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`C.
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`Power of Attorney
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`Powers of attorney are being filed with designation of counsel in accordance
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`with 37 C.F.R. § 41.10(b).
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`D.
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`Standing
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`On July 9, 2021, Petitioner filed two petitions for inter partes review
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`(“IPR”) of the ’632 patent: IPR2021-01236 and IPR2021-01237. The PTAB
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`2
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`

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`should institute those IPRs.
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`However, Public PAIR lists the ’632 patent as an AIA patent. This is
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`incorrect. The ’632 patent is a pre-AIA patent because its effective filing date is
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`no later than August 4, 2009, the date of its ancestor U.S. Patent No. 8,631,488, to
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`which the ’632 patent claims priority via a series of continuations. See Leahy-
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`Smith America Invents Act, Pub. L. 112-29, § 3(n)(1), 125 Stat. 284, 293 (2011).
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`August 4, 2009 predates the AIA’s March 16, 2013 effective date. In addition, the
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`’632 patent does not claim priority to any patent or application that is an AIA
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`patent or AIA application because no patent or application in its chain of priority
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`has an effective filing date that is on or after March 16, 2013.
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`Nonetheless, if the PTAB finds that the ’632 patent is an AIA patent, then
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`this petition for post-grant review (“PGR”) is proper because Petitioner is filing it
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`within nine months of the ’632 patent’s issue date (March 16, 2021). 35 U.S.
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`§ 321(c). In addition, Petitioner is not barred or estopped from requesting a post-
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`grant review challenging the challenged patent claims on the grounds identified in
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`this petition.
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`Out of an abundance of caution, therefore, Petitioner is filing this PGR
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`petition that is substantively duplicative of IPR2021-01237. At least one of this
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`petition for PGR and the petition in IPR2021-01237 is procedurally proper.
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`3
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`E.
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`Timing
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`Under 37 CFR § 42.202, “[a] petition for a post-grant review of a patent
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`must be filed no later than the date that is nine months after the date of the grant of
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`a patent or of the issuance of a reissue patent.” Petitioner is filing this petition
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`within nine months of the ’632 patent’s issue date (March 16, 2021), and this
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`petition therefore is timely.
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`F.
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`Fees
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`The undersigned authorizes the Director to charge the fee specified by 37
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`C.F.R. § 42.15(b) and any additional fees that might be due in connection with this
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`Petition to Deposit Account No. 07-1896.
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` STATEMENT OF PRECISE RELIEF REQUESTED
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`In accordance with 35 U.S.C. § 321 and 37 C.F.R. § 42.204(b), Petitioner
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`requests cancelation of claims 1, 7, 9, 16, 22, and 24 of the ’632 patent in view of
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`the following grounds:
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`Ground
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`Claims
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`§103 Prior Art Basis
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`1
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`2
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`3
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`1, 7, 9, 16, 22, 24 Gordon and Gardner
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`7, 22
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`9, 24
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`Gordon, Gardner, and Chang
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`Gordon, Gardner, and Meenan
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`Constructions of terms in the challenged claims are set forth in Section IV.F.
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`An explanation of how the construed claims are unpatentable is set forth in
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`4
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`

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`Sections IV.G-I, which include discussions of the relevance of the evidence to the
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`challenges raised, including identifying specific portions of the evidence that
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`support the challenges.
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` FULL STATEMENT ON REASONS FOR REQUESTED RELIEF
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`A.
`
`Summary of the ’632 Patent
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`The ’632 patent describes the purported problem of mobile devices being
`
`more vulnerable to attack when traveling outside of an enterprise network by
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`losing the benefit of the enterprise network’s security system, such as a network
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`gateway that includes a firewall. Ex. 1101, 1:45-65. For example, the patent’s
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`Figure 2 shows mobile device 110 that has moved out of the trusted enterprise
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`network 140 and no longer receives the benefit of network security system 120.
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`Id., Fig. 2, 2:19-32.
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`
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`5
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`The ’632 patent also states that “[a]nother disadvantage to existing security
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`systems is that they require a fully operational system and a significant load on
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`CPU power. To reduce the impact of scanning and updating a system, users often
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`leave their PCs active overnight which consumes power. Further, when the PC is a
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`laptop, the user cannot close the laptop and expect security functions to be
`
`performed.” Ex. 1101, 2:55-61.
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`To solve these purported problems, the ’632 patent proposes a “mobile
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`security system” that travels with a mobile device outside of the trusted network to
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`provide security for the mobile device that the network security system provides
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`
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`6
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`

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`
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`inside the trusted network. Ex. 1101, 5:53-6:15, Fig. 3. Figure 3 shows mobile
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`security system 345b that has traveled with mobile device 310c outside of trusted
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`enterprise network 340.
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`
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`The mobile security system is used to manage “security services” of a
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`mobile device that has entered a “power management mode.” Ex. 1101, 19:26-40.
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`“In some embodiments, the mobile security system detects a wake event and then
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`may either take control of one or more components of the mobile device or
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`terminate the power management mode of the mobile device in order to perform
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`the security services.” Id., 19:63-67. In some embodiments, the mobile security
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`system includes a “wake module” that sends a “wake signal” to the mobile device
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`to wake up some or all of the components on the mobile device. Id., 21:56-22:27.
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`
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`7
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`“Security services may include, but are not limited to, scanning the mobile
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`device, updating the mobile device, and/or performing maintenance functions.”
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`Ex. 1101, 19:35-37, 19:41-62. Figure 20 (shown below) illustrates one process for
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`managing and performing security services based on a detected wake event.
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`8
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`The description of Figure 20 refers to the mobile security system performing the
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`steps above. Id., 29:44-30:55; see also id., Fig. 18 (showing the modules of the
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`
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`mobile security system referenced in that description).
`
`9
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`

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`
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`Although the crux of the ’632 patent’s purported novelty is a security system
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`that is mobile, the ’632 patent’s claims recite a “security system” without regard to
`
`whether it is mobile or stationary. Ex. 1101, 31:15 (“A security system”), 32:35-
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`336 (“a security system”). By claiming a security system that may be stationary,
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`the ’632 patent’s claims wipe away any potential point of novelty they may have
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`otherwise had, and encompass the prior art.
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`B.
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`The ’632 Patent Prosecution History
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`The ’632 patent issued from Application No. 16/601,466, filed on October
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`14, 2019. Ex. 1101, cover page sections (22), (21). During prosecution of the ’466
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`application, the applicant submitted a TrackOne request, which the PTO granted.
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`Ex. 1102, 254, 233-234. The applicant also filed a terminal disclaimer. Id., 225-
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`227. The PTO issued the ’632 patent on March 16, 2021 without having rejected
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`the claims during prosecution. Id., 1.
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`C. No Challenged Claim of the ’632 Patent is Entitled to the Benefit
`of the ’134 Provisional Application’s Filing Date.
`
`The earliest possible effective filing date to which the claims of the ’632
`
`patent may be entitled is August 4, 2008, the date of the ’134 provisional
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`application to which the ’632 patent claims priority. Ex. 1101, cover page section
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`(60). However, the challenged claims depend on new matter that was added to the
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`specification after the filing of the ’134 provisional application. Therefore, none of
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`the challenged claims are entitled to the benefit of the ’134 provisional
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`10
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`
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`application’s filing date, and the challenged claims’ earliest effective filing date is
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`the filing date of the first non-provisional patent application to which the ’632
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`patent claims priority: August 4, 2009. Transco Prods., Inc. v. Performance
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`Contracting, Inc., 38 F.3d 551 (Fed. Cir. 1994); New Railhead Mfg., L.L.C. v.
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`Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (a provisional application
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`must satisfy 35 U.S.C. § 112, ¶1 to afford a non-provisional application the benefit
`
`of claiming it is entitled to the non-provisional application’s filing date).
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`A comparison between the ’134 provisional application’s specification (Ex.
`
`1105, 3-50) and the ’632 patent’s specification shows that the ’632 patent
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`specification contains a significant amount of subject matter that was not part of
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`the ’134 provisional application. Indeed, the ’632 patent includes nearly 15
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`columns of subject matter, shown in the ’632 patent (Ex. 1101) at 15:60 to 30:55
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`and Figs. 11-20, which is missing from the ’134 provisional application. The
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`newly added matter includes the description of the “wake” functionality, the
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`components for implementing this functionality on the mobile security system
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`(Fig. 18), and the processing performed by the mobile security system to
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`implement this functionality (Fig. 20). The patent’s Figures 18 and 20 are shown
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`below.
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`11
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`
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`This new matter includes at least the following functionality claimed in the
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`
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`challenged claims:
`
`a.
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`“store in the security system memory at least a portion of wake code”
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`(claim 1) / “storing at least a portion of wake code executable by a
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`security system process” (claim 16);
`
`b.
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`“the wake code [when executed by the security system processor]
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`being configured to detect a wake event and to send a wake signal to
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`[the/a] mobile device in response to detecting the wake event” (claim
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`12
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`

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`
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`1 and 16);
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`c.
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`“the security agent of the mobile device being configured to receive
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`the wake signal” (claims 1 and 16);
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`d.
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`“the security agent of the mobile device being configured to wake at
`
`least a portion of the mobile device from a power management mode
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`e.
`
`f.
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`in response to receiving the wake signal” (claims 1 and 16);
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`“detect a particular wake event” (claims 1 and 16);
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`“prepare a particular wake signal [to send to the mobile device] in
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`response to detecting the particular wake event” (claims 1 and 16);
`
`and
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`g.
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`“send the particular wake signal to the mobile device” (claims 1 and
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`16).
`
`Because the challenged claims rely on new matter that was not in the ’134
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`provisional application, they are not entitled to the benefit of that application’s
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`August 4, 2008 filing date.
`
`D.
`
`IPR of the Related ’595 Patent
`
`In IPR2019-00765, the PTAB found claims 1, 9, 11, 13-14, 16, 24, 26, 28,
`
`and 29 of U.S. Patent No. 9,843,595 to be unpatentable in light of the Joseph,
`
`Gordon, and Zmudzinski prior art references. Ex. 1103, 45-46. The ’632 patent’s
`
`claim 1 is word-for-word identical to the ’595 patent’s claim 1, except for one
`
`
`
`13
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`

`

`
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`additional limitation also disclosed by the prior art. Compare Ex. 1101, 31:15-58
`
`with Ex. 1104 (’595 patent), 31:14-51. And the ’632 patent’s independent claim
`
`16 recites effectively identical limitations as its claim 1.
`
`E.
`
`Person of Ordinary Skill in the Art
`
`A person of ordinary skill in the art at the time of the alleged invention of
`
`the ’632 patent (i.e., August 4, 2008) (“POSITA”) 1 would have had a bachelors’
`
`degree in computer science, electrical engineering, or a comparable field of study,
`
`plus at least two years of professional experience with computer security systems,
`
`or the equivalent. Ex. 1121 (“Jakobsson Decl.”), ¶ 60.
`
`F. Claim Construction
`
`Claims in this PGR should be construed in accordance with their “ordinary
`
`and customary meaning” as understood by one of ordinary skill in the art at the
`
`time of the invention. 37 C.F.R. § 42.200(b); Phillips v. AWH Corp., 415 F.3d
`
`1303, 1313 (Fed. Cir. 2005) (en banc).
`
`1.
`
`“power management mode”
`
`Claims 1 and 16 recite “power management mode.” In a related litigation
`
`concerning the related ’595 patent, the parties agreed that this term means “a mode
`
`
`1 Petitioner has used the Patent Owner’s alleged priority date of the ’632 patent for
`
`determining the POSITA. The same level of skill applies for the actual priority
`
`date of the ’632 patent (i.e., August 4, 2009). Jakobsson Decl., ¶ 60.
`
`
`
`14
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`

`

`
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`where the mobile device conserves power.” Ex. 1106, 6; see also Ex. 1103, 8
`
`(’595 patent IPR final written decision adopting same construction). Accordingly,
`
`the Board should adopt this construction for purposes of the ’632 patent.
`
`2.
`
`“security administrator device”
`
`Claims 1 and 16 recite “security administrator device.” The plain and
`
`ordinary meaning of this term includes a device that performs security
`
`administration. Jakobsson Decl., ¶ 65. This is consistent with the ’632 patent’s
`
`disclosure that the security administrator device 325 may perform various security
`
`administration tasks. Ex. 1101, 24:55-57 (“security administrator 325” is an
`
`“administrator device”), Fig. 3 (showing “security admin[istrator device] 325”),
`
`6:48-51 (it may translate enterprise security policies to mobile security policies),
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`10:6-10 (it may import a firewall’s “rule base”), 10:22-25 (it may store “local logs
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`and audit trails” from mobile security systems), 11:63-64 (it may update URL
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`black and white lists for traveling users), 12:4-6 (it may delegate tasks to a help
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`desk), 12:28-30 (it may maintain routing tables).
`
`3.
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`“a security system processor”
`
`Claims 1 and 16 recite “a security system processor.” “Unless the claim is
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`specific as to the number of elements, the article ‘a’ receives a singular
`
`interpretation only in rare circumstances when the patentee evinces a clear intent to
`
`so limit the article.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356
`
`
`
`15
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`

`

`
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`(Fed. Cir. 2000). “Under this conventional rule, the claim limitation ‘a,’ without
`
`more, requires at least one.” Id.; see also Convolve, Inc. v. Compaq Comput.
`
`Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (interpreting “a processor” as “one or
`
`more processors”). Further, the ’632 specification makes clear that a security
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`system processor is not limited to a single processor. Ex. 1101, 21:49-52 (“mobile
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`security system 1702 may comprise more processors … than those depicted in
`
`FIG. 17.”). “A security system processor” therefore means “one or more security
`
`system processors.”
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`G. Ground 1: Claims 1, 7, 9, 16, 22, and 24 are Obvious Under 35
`U.S.C. § 103 (AIA) in light of Gordon and Gardner.
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`U.S. Patent No. 7,818,803 to Gordon (“Gordon,” Ex. 1107) was filed on
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`January 16, 2008, claiming priority to a provisional application filed on January
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`16, 2007. Accordingly, Gordon is prior art under 35 U.S.C. §102(a)(2) (AIA) and
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`predates the earliest possible effective filing date of the ’632 patent (Aug. 4, 2008).
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`Gordon discloses a host monitoring system C (outlined in green below) that
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`communicates via a host monitoring server 3 (outlined in purple below) with host
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`devices A (outlined in blue below). Gordon, 8:12-36, Fig. 5.
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`16
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`Host device A may include a “host agent and a security module.” Gordon,
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`8:12-18. For example, host device A may be laptop 10 (outlined in blue below)
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`with security module 19 (outlined in red below) that includes firmware agent 21.
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`Gordon, Fig. 1, 4:58-63, 13:1-5, 17:5-9.
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`Gordon also includes host agent 14 (outlined in orange above) that performs
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`security services such as deleting data and updating software. Gordon, 3:43-45,
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`7:20-40, 12:49-60, 15:50-56.
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`U.S. Patent Application Publication No. 2006/0272020 to Gardner
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`(“Gardner,” Ex. 1108) was published on November 30, 2006. Accordingly,
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`Gardner is prior art under 35 U.S.C. §102(a)(1) (AIA) and predates the earliest
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`possible effective filing date of the ’632 patent (Aug. 4, 2008).
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`Gordon refers to Gardner by application number as showing more detail of
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`Gordon’s Figure 5. Gordon, 8:54-60 (referring to U.S. Pat. App. Pub. No.
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`18
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`2006/0272020). Gardner has overlapping disclosure with Gordon and, for
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`example, includes Gordon’s Figure 5 as its Figure 1.
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`Like Gordon, Gardner discloses a “host monitoring system.” Gardner
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`further discloses that the host monitoring system stores “location and asset related
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`data … in a central repository and can be accessed 24x7 by authorized
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`administrators via secure web-based or network based console.” Gardner, ¶ 57.
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`1.
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`Limitation-by-Limitation Analysis
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`Claim 1:
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`[1.0] A security system, comprising:
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`To the extent the preamble is limiting, Gordon discloses a security system
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`that includes the limitations of claim 1. Gordon discloses a “host monitoring
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`system C” (outlined in green below) that communicates via a “host monitoring
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`server 3” (outlined in purple below) with host devices A (outlined in blue below).
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`Gordon, 8:12-36, Fig. 5.
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`19
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`Host monitoring server 3 is a “security system” at least because it sends
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`wake signals to mobile devices for purposes related to security, as described
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`below. Host monitoring system C also is a “security system” because it includes
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`host monitoring server 3.
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`Gordon also disclose a “monitoring center” 70 shown on the right side of its
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`Figure 1:
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`20
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`Gordon explains that “[m]onitoring centers are sometimes also referred to using
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`other terms, including … host monitoring system.” Gordon, 12:45-48. A POSITA
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`therefore will understand that Gordon’s “monitoring center” 70 (in Figure 1) is
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`another name for its “host monitoring system” C (in Figure 5). Jakobsson Decl.,
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`¶ 76. This conclusion is confirmed by the fact that Gordon discloses that
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`monitoring center 70 and host monitoring system C have the same general
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`functionality. Gordon, 8:37-47, 12:41-45; see also id., 12:40-13:60, 8:12-53;
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`Jakobsson Decl., ¶ 76. Gordon’s monitoring center 70 therefore also is a “security
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`system” for the same reasons that host monitoring system C is a security system.
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`21
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`*
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`*
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`It also would have been obvious to a POSITA to include the functionality of
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`Gordon’s monitoring center 70 cited in this petition with the functionality of its
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`host monitoring center C, and vice versa. For example, Gordon discloses that
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`monitoring center 70 sends wake signals and it would have been obvious to a
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`POSITA to have host monitoring system C also send those wake signals. See
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`limitation 1.4.a (describing wake signals). A POSITA could do so by, for
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`example, having host monitoring server 3 (shown in Gordon’s Figure 5) send the
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`wake signals to host devices A. Doing so would have been obvious in part because
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`Gordon already discloses that monitoring server 3 communicates with host devices
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`A, including laptop A3. Gordon, Fig. 5; Jakobsson Decl., ¶ 77.
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`Implementing such functionality would have been well within the
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`knowledge of a POSITA, would have required minimal effort, would have yielded
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`predictable results, would have been fully compatible with host monitoring system
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`C, monitoring center 70, and Gordon’s disclosed functionality. Jakobsson Decl., ¶
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`78.
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`Motivation to do so arises from Gordon’s disclosure of both monitoring
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`system C and monitoring center 70 in one reference. Additional motivation arises
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`from Gordon’s disclosure that the two have the same general functionality, as
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`established above. Further motivation arises from Gordon’s teaching that sending
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`wake signals to host devices is desirable for various purposes. Gordon, 3:28-30 (to
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`“carry out data protection measures or other servicing operations.”). More
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`motivation arises from Gordon’s teaching that “[m]onitoring centers are sometimes
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`also referred to using other terms, including … host monitoring system,” indicating
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`that monitoring centers and monitoring systems can be viewed as the same system.
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`Gordon, 12:45-48.
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`[1.1] security system memory;
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`Gordon discloses that host monitoring server 3 (a security system) has
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`memory. The host monitoring server 3 “monitors the communications between the
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`host device A and the host monitoring system C, which is contacted on a regular or
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`scheduled basis by the host devices records information from the host devices.”
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`Gordon, 8:28-36, Fig. 5. The host monitoring server 3 also “records information
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`from the host devices [and] provides instructions to the host on what actions to
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`perform, including what actions the host is to perform, what data to collect and the
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`host[’]s next scheduled call time.” Id., 8:32-36. The host monitoring server 3 also
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`is illustrated in Figure 5 as a physical “computer” (outlined in purple below).
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`A POSITA would understand that host monitoring server 3 inherently and
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`necessarily has a memory because, for example, it is disclosed as a physical
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`“computer” in Figure 5. Jakobsson Decl., ¶ 81. If the host monitoring server 3
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`did not have memory, it could not perform its disclosed functions described above,
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`including monitoring communications, receiving data, and instructing the host. Id.
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`Similarly, monitoring center 70 inherently and necessarily has memory to at
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`least temporarily store the instructions of monitoring center software 71 that it
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`executes. Gordon, Fig. 1. Without such memory, it could not execute that
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`software because it could not even temporarily store the instructions that make up
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`that software. Jakobsson Decl., ¶ 82. See also limitation 1.0 (host monitoring
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`system C and monitoring center 70 are the same).
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`24
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`[1.2.a] a communication interface configured to communicate with a mobile
`device and configured to communicate over a network with a security
`administrator device,
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`Gordon discloses a mobile device, such as laptop computer A3, shown in
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`Figure 5:
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`Gordon, 8:15-18, Fig. 5. Gordon also explains that the “host may be a laptop
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`computer, a cellphone, a Blackberry, a portable electronic gaming console, a
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`personal digital assistant,” each of which also is a mobile device. Id., 8:4-11.
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`Gordon also discloses “laptop 10” (a mobile device), shown in its Figure 1. Id.,
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`14:30-31. Petitioner will refer to Gordon’s laptop host devices 10 and A3 as
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`exemplary mobile devices.
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`a. Gardner discloses the recited “security administrator
`device.”
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`As described in the beginning of this ground, Gordon refers to Gardner (Ex.
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`1108). Gordon, 8:54-60. Gardner discloses additional detail about “host
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`monitoring system C” and discloses that its “location and asset related data … may
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`25
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`be kept in a central repository” that can be accessed “by authorized administrators
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`via secure web-based or network based console[s]” (each a security administrator
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`device). Gardner, ¶ 57. A POSITA would understand that the “web-based or
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`network based console” is a computer that remotely accesses the host monitoring
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`system C and its “central repository” via a network. Jakobsson Decl., ¶ 84. This
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`computer console is an administrator device because it is used by “authorized
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`administrators” for the administrative purposes of accessing “location and asset
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`related data.” This computer console is a security administrator device because
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`Gardner discloses doing so as part of “secure asset tracking” and as part of
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`securing devices in the event of theft, tampering, or loss. Gardner ¶¶ 59, 56, 60
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`(“theft recovery”) 191 (“protection in a theft or loss scenario”). See also Section
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`IV.F.2 (“security administrator device” includes a device that performs security
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`administration).
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`b.
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`It would have been obvious to combine Gordon and
`Gardner.
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`It would have been obvious to a POSITA to combine the Gardner
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`administrator “consoles” described above with Gordon. For example, it would
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`have been obvious to a POSITA to include in the Gordon ecosystem the “web-
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`based or network based console[s]” disclosed in Gardner such that “authorized
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`administrators” could use the consoles to access data in “host monitoring system
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`C” over a network