Ex Parte 7020132 et alDownload PDFPatent Trial and Appeal BoardDec 15, 201495002002 (P.T.A.B. Dec. 15, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/002,002 06/01/2012 7020132 12566/77 9137 23838 7590 06/22/2015 KENYON & KENYON LLP 1500 K STREET N.W. SUITE 700 WASHINGTON, DC 20005 EXAMINER CORSARO, NICK ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/22/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ EC DATA SYSTEMS, INC. Requester v. ADVANCED MESSAGING TECHNOLOGIES, INC.1 Patent Owner ____________ Appeal 2014-008203 Reexamination Control No. 95/002,002 Patent 7,020,132 B1 Technology Center 3900 ____________ Before JOHN A. JEFFERY, STEPHEN C. SIU, and DAVID M. KOHUT, Administrative Patent Judges. KOHUT, Administrative Patent Judge DECISION ON REHEARING 1 A Notice Regarding Real Party in Interest was filed on October 20, 2014, and changed ownership of the patent at issue from j2 Global, Inc. to Advanced Messaging Technologies, Inc. Appeal 2014-008203 Reexamination Control No. 95/002,002 Patent 7,020,132 B1 2 This is a Request for Rehearing (“Req. Reh’g”) by Patent Owner under § 41.79(a)(1) of the Decision of the Patent Trial and Appeal Board (“the Board”) dated December 15, 2014 (“Decision”) which affirmed the Examiner’s rejections of claims 1418 and 2134 over various 35 U.S.C. §§ 102 and 103 rejections. The Request for Rehearing is denied. Patent Owner requests rehearing regarding two issues said to have been misapprehended and/or overlooked in the Decision. Req. Reh’g 2. 1. Did the Board fail to differentiate between an “internal” and “external” data network? As indicated on page 2 of the Request for Rehearing, the Board affirmed the Examiner’s rejection of the claims at issue based upon the Examiner’s interpretation that an “internal packet data network” is “a network internal to a business or campus such as an Ethernet Local Area Network, i.e., LAN.” See also Decision 11. Patent Owner argues that the Board, in relying on this interpretation, failed to differentiate between an external and internal data network because a Local Area Network (LAN) can be external as well as internal. Req. Reh’g 23. Patent Owner cites to both Patent Owner’s expert and Requester’s expert to show that a LAN can be both internal and external. Req. Reh’g 23. Additionally, Patent Owner cites to Figure 2 of the ’132 patent which shows that the invention distinguished between an external and internal data network. Req. Reh’g 3. As such, Patent Owner argues that, using the Examiner’s interpretation, there is no difference between a LAN serving as Appeal 2014-008203 Reexamination Control No. 95/002,002 Patent 7,020,132 B1 3 an internal or external network. Req. Reh’g 5. We disagree with Patent Owner. As indicated above, the Examiner’s interpretation of the term “internal packet data network” is distinguished from an external data packet network because, as interpreted, the packet data network is internal to a business or campus. Even if Patent Owner is correct that a LAN could be used for both an internal or external network, the Examiner’s specific interpretation includes only an internal network LAN. Patent Owner also argues that Kaufeld does not disclose an internal network because Kaufeld does not disclose the ownership of the LAN connected to computer 26, but rather only the owner of the computer 26 itself. Req. Reh’g 5. Patent Owner contends that this information is critical to knowing whether the LAN is “’internal to a business or campus.’” Req. Reh’g 56. However, Patent Owner does not address the Examiner’s finding that the commercial provider’s system is internal to a defined area, or that the provider uses a LAN to connect to multiple modems or network interfaces internally in a local area. RAN 8586. Thus, we find that the evidence provided by the Examiner discloses that Kaufeld’s LAN is internal to a local area. As such, we find that Kaufeld discloses an internal data network based on the Examiner’s interpretation of the disputed claim term. Thus, we do not find Patent Owner’s argument persuasive of error. Appeal 2014-008203 Reexamination Control No. 95/002,002 Patent 7,020,132 B1 4 2. Did the Board misapprehend the RFC 1918 disclosure? The RFC 1918 disclosure, in conjunction with Dr. Tygar’s declaration, was submitted by Patent Owner as evidence to support Patent Owner’s argument that one of ordinary skill in the art would interpret an “internal packet data network” as requiring isolation by a firewall. Req. Reh’g 69. Patent Owner argues that the Board misapprehended the RFC 1918 disclosure by stating that there was nothing in the reference that required security and isolation for category 1 and 2 hosts and, thereby, incorrectly rejected Patent Owner’s interpretation. Req. Reh’g 69. We agree with Patent Owner (Req. Reh’g 7) that page 4 of RFC 1918 purports to show that category 1 and 2 hosts require a mediating gateway to obtain IP connectivity. However, this is contradictory to page 2 of RFC 1918 which indicates that a mediating gateway can be used to connect to an external network. There is nothing in this description that indicates a mediating gateway is required or must be used in order for the host to be considered private. Additionally, on page 2, RFC 1918 indicates that category 2 hosts may not want unrestricted external access, which we find alternatively means that unrestricted external access may be desired and does not indicate that at least category 2 hosts must use a mediating gateway. Additionally, we disagree with Patent Owner (Req. Reh’g 8) that RFC 1918, while a voluntary standard, is required because addressing conflicts can occur if the standard is not followed. The conflicts indicated by RFC 1918 that would arise are a result of the “addressing scheme used by private networks in RFC 1918.” App. Br. 14. Patent Owner has not shown that the Appeal 2014-008203 Reexamination Control No. 95/002,002 Patent 7,020,132 B1 5 address scheme in RFC 1918 is the only scheme available or necessarily the scheme used by the ’132 patent. Additionally, regardless of whether the Board misapprehended the RFC 1918 disclosure, our Decision regarding the interpretation of an “internal packet data network” is based on an evaluation of all of the evidence presented. Decision 711. Based on all of the evidence provided, including the additional evidence provided by Patent Owner in the Request for Rehearing, we are unpersuaded that we erred in adopting the Examiner’s interpretation of the term “internal packet data network.” Thus, for the aforementioned reasons, Patent Owner’s contention that the Board erred in affirming the Examiner’s rejections is unpersuasive. CONCLUSION Patent Owner’s request for rehearing is granted to the extent that we have reconsidered our prior decision in light of Patent Owner’s arguments. We are not persuaded of any error in our prior decision and maintain the Examiner’s rejection of claims. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED peb Appeal 2014-008203 Reexamination Control No. 95/002,002 Patent 7,020,132 B1 6 Patent Owner: Kenyon & Kenyon LLP 1500 K Street, NW Suite 700 Washington, DC 20005-1257 Third Party Requester: Michael A. Desanctis Hamilton, DeSanctis & Cha LLP Financial Plaza at Union Square 225 Union Blvd., Ste. 150 Lakewood, CO 80228 Copy with citationCopy as parenthetical citation