Blackberry Corporationv.Zipit Wireless, Inc.

Patent Trial and Appeal Board

Mar 29, 2016

13275907 (P.T.A.B. Mar. 29, 2016)

Trials@uspto.gov Paper 49
571-272-7822 Entered: March 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BLACKBERRY CORP., and BLACKBERRY LTD.,
Petitioner,

v.

ZIPIT WIRELESS, INC.,
Patent Owner.
____________

Case IPR2014-01509
Patent 8,190,694 B2
____________

Before TREVOR M. JEFFERSON, NEIL T. POWELL, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
Petitioner Blackberry Corp. and Blackberry LTD. filed a Petition on
September 16, 2014, requesting an inter partes review of claims 1, 2, 4–7, 9,
10, and 12 of U.S. Patent No. 8,190,694 B2 (Ex. 1001, “the ’694 patent”).
Paper 1 (“Pet.”). Patent Owner Zipit Wireless, Inc. did not file a Preliminary
Response to the Petition.
Based on these submissions, we instituted trial as to claims 1, 2, 4–7,
9, 10, and 12 as follows:

Paper 6, 25 (“Dec. to Inst.”).
After institution, Patent Owner filed a Patent Owner’s Response
(Paper 10, “PO Resp.”), and Petitioner filed a Reply (Paper 13, “Reply”).
Additionally, we authorized a Patent Owner Sur-Reply, which Patent Owner
filed on November 6, 2015 (Paper 24, “Sur-Reply”). Petitioner further filed

1 U.S. Patent No. 7,996,005 B2; issued Aug. 9, 2011 (Ex. 1005, “Lotter”).
2 U.S. Patent Publication No. 2005/0060167 A1; published March 17, 2005
(Ex. 1006, “Patron”).
3 U.S. Patent Publication No. 2006/0014547 A1; published Jan.19, 2006 (Ex.
1007, “Walter”).
4 U.S. Patent Publication No. 2005/0257209 A1; published Nov. 17, 2005
(Ex. 1004, “Adams”).
Reference(s) Basis Claim(s) Challenged

Lotter1 § 102 9, 10, and 12
Lotter and Patron 2 § 103 1, 2, 4, and 5
Lotter, Patron, and Walter3 § 103 6 and 7
Adams4 and Patron § 103 1, 2, and 4–7
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a notice withdrawing portions of its Reply.5 Paper 36.
Petitioner also filed a Motion to Exclude. Paper 32 (“Pet. Mot.
Exclude”). Patent Owner filed an Opposition to Petitioner’s Motion to
Exclude (Paper 39, “PO Exclude Opp.”), and Petitioner filed a Reply (Paper
43, “Pet. Exclude Reply”).
Additionally, Patent Owner filed a Motion to Exclude. Paper 35 (“PO
Mot. Exclude”). Petitioner filed an Opposition to Patent Owner’s Motion to
Exclude (Paper 40, “Pet. Exclude Opp.”), and Patent Owner filed a Reply
(Paper 45, “PO Exclude Reply”).
An oral hearing was conducted on December 7, 2015. A transcript of
the oral hearing is included in the record. Paper 47 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This decision is a Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
patentability of claims 1, 2, 4–7, 9, 10, and 12. For the reasons discussed
below, Petitioner has demonstrated by a preponderance of the evidence that
claims 1, 2, and 4–7 are unpatentable. However, as explained below,
Petitioner has not demonstrated, by a preponderance of the evidence, that
claims 9, 10, and 12 are unpatentable.
A. Related Proceedings
The ’694 patent is involved in a district court proceeding in the U.S.
District Court for the District of South Carolina captioned Zipit Wireless Inc.
v. BlackBerry Ltd., No. 6:13-cv-2959-JMC (D.S.C. 2013). Pet. 1.
Additionally, Petitioner has filed Petitions challenging the patentability of

5 Petitioner’s Exhibit 1028 is a red-lined version of its Reply showing
withdrawn portions.
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certain claims of Patent Owner’s U.S. Patent Nos. 7,292,870 B2 (IPR2014-
01507); 7,894,837 B2 (IPR2014-01506); and 8,086,678 B2 (IPR2014-
01508).
B. The ’694 Patent
The ’694 patent is directed to controls for network communication
devices such as parental controls for mobile instant messaging terminals.
Ex. 1001, 1:7–9. Figure 1 of the ’694 patent is reproduced below.

Figure 1 shows system 10 that regulates usage of a mobile computer
network communication device. Id. at 3:7–9. System 10 includes home
location 14, remote site location 18, device regulation/support site 20, and
internet service provider (“ISP”) site 24. Id. at 3:42–45. As shown, these
sites and locations are coupled to one another through a computer
network 28. Id. at 3:45–47. Home location 14 has a local area network
(“LAN”) that includes personal computer (“PC”) 30 and a mobile computer
communication device, such as instant messaging terminal 34. Id. at 3:49–
52. As shown, these devices communicate with ISP site 24 or device
regulation/support site 20 through wireless router 38. Id. at 3:52–54.
Figure 1 further shows device regulation/support site 20 includes
mobile device communication gateway 54 that communicates with device
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database 58, profile server 60, and regulation database 64. Ex. 1001, 5:4–7.
Regulation database 64 stores the controls and rules selected or generated by
an administrative user for a device registered with regulation/support site 20.
Id. at 5:13–16. These are the rules and controls applied to communications
made with a particular mobile device registered with the site 20. Id. at 5:16–
18. Regulation site 20 may include identification data unique for each
mobile computer network communication device registered with site 20. Id.
at 4:65–5:6. The unique identifier enables the regulation of the device to be
implemented without recourse to a user or account identification. Id. at
6:25–27. The ’694 patent indicates regulation database 64 may store the
controls and rules selected or generated by an administrative user for a
device registered with regulation/support site 20 that apply to
communications made with a particular mobile device registered with site
20. Id. at 5:13–16.
The ’694 patent further discloses that mobile communication device
34 includes a support communication module configured to communicate
with regulation/support site 20 in response. Ex. 1001, 6:52–55, 6:62–65.
For registration of device 34, communication module sends a registration
message to regulation/support site gateway 54 that includes the unique
identifier for device 34. Id. at 7:62–64. Gateway 54 determines if the
unique identifier is in the device database 58. Id. at 7:64–67. The
communication module also monitors a user’s command input to device 34.
Id. at 9:7–10; Fig. 6. This process determines whether the entered command
requires evaluation by control site 20. Id. at 9:10–11. For example, a user
command may prompt the communication module to generate a monitor
message that includes the unique device identifier and data from the
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command required for control processing at control site 20. Id. at 9:14–18.
Control site 20 receives the monitor message and may determine whether it
is from a device having a unique identifier in device database 58 and
whether the device is registered. Id. at 9:42–45. Once authenticated, the
monitor message is parsed and the data compared to rules and control
parameters stored in association with the device. Id. at 9:52–54. If the data
violates a rule/parameter, a command message is generated and sent to the
device for execution. Id. at 9:54–57; Fig. 7.
C. Illustrative Claim
Of the challenged claims, claims 1 and 9 are independent. Claims 1
and 9 reproduced below are illustrative of the claimed subject matter:
1. A method for controlling operation of a computer
network communication device that communicates over a
computer network comprising:
generating, with a computer network communication
device, monitor messages having a unique device identifier and
command identification data;
sending the generated monitor messages to a control site
in background to a communication session between the
computer network communication device and a communication
service;
verifying with a server at the control site that the unique
device identifier in the generated monitor messages received at
the control site is also stored in a device database;
comparing the command identification data in a monitor
message to control data stored in a control database with the
server in response to the unique device identifier in the monitor
message also being stored in the device database; and
generating control messages to operate the computer
network communication device with the server in response to
the command identification data in the monitor message failing
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to correspond to the control data stored in the control database,
the control messages comprising:
a computer network communication device stop
command generated in response to the command identification
data corresponding to a communication from the computer
network communication device outside prescribed time limits
stored in the control database.
9. A method for control of a computer network
communication device comprising:
generating a data message with a computer network
communication device in response to a command entered by a
user, the data message being configured for use with a service
accessed through an Internet Service Provider;
generating a monitor message with the computer network
communication device containing a unique device identifier and
data corresponding to the data message;
sending the generated monitor message from the
computer network communication device to a control site;
identifying control data stored in a control database in the
control site in response to the monitor message received from
the computer network communication device having a unique
device identifier that is verified with a server at the control site
as also being stored in a device database in the control site;
generating a command message corresponding to the
control data, the command message including a block
command, in response to the monitor message identifying the
service accessed through the Internet Service Provider having a
block rule stored in the control database in association with the
service;
sending the command message from the control site to
the computer network communication device;
parsing the command message in the computer network
communication device to identify a block command in the
command message; and

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displaying a message for the user indicating that the
command has been blocked.
Ex. 1001, 12:41–13:2, 13:41–14:19.

II. ANALYSIS
A. Weight Given to Patent Owner’s Declarant
1. Dr. Konchitsky’s Ph.D.
Petitioner asserts that Patent Owner’s declarant, Dr. Alon Konchitsky,
did not receive a genuine Ph.D. from Bournemouth University and, as a
result, Dr. Konchitsky’s testimony is entitled to no weight. Reply 1. Patent
Owner responds that Dr. Konchitsky received an electrical engineering
Ph.D. degree from Bournemouth University Extension in Israel, Campus of
Ramat Gan College, and submits that several documents, including Dr.
Konchitsky’s Ph.D. diploma and Ph.D. payment receipts, corroborate Dr.
Konchitsky’s Ph.D. Sur-Reply 1–3; Exs. 1059–1060. In his declaration, Dr.
Konchitsky provides that he “unequivocally state[s] – under penalty of
perjury – that I did in fact receive my Ph.D. in electrical engineering
from the Bournemouth University Extension in Israel, Campus of
Ramat Gan College.” Ex. 2082 ¶ 17.
We note first that the parties do not dispute that Dr. Konchitsky is
qualified to provide his expert opinion on the subject matter of the ’694
patent even without considering his Ph.D. from Bournemouth University.
Sur-Reply 13–15; Tr. 4:14–22, 21:1–15. Petitioner concedes that Dr.
Konchitsky “worked at Nokia. He worked at a company that was purchased
by Intel. To be able to testify about emoticons and parental controls on
devices he meets the low threshold under the federal rules for providing
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expert testimony.” Tr. 4:21–24. Accordingly, the circumstances
surrounding Dr. Konchitsky’s Ph.D. go to the weight of his testimony rather
than admissibility.
Further, we do not find that Petitioner has demonstrated that Dr.
Konchitsky’s testimony should be afforded diminished weight because Dr.
Konchitsky falsified his Ph.D. from Bournemouth University Extension
through Ramat Gan College in Israel. Petitioner concedes that
[t]he sur-reply shows that it’s possible that Konchitsky did
receive a degree from either Ramat Gan or the extension at
Ramat Gan. That was not an authorized diploma, had nothing
to do with the Bournemouth University. And whether or not he
knew that or was unwittingly duped into believing that he was
getting a genuine Bournemouth University diploma, in the time
allotted in IPR and our resources, there’s just not enough time
and money available to prove that circumstantial case whether
he knew that his diploma was not genuine.
Tr. 5:14–22. Additionally, Petitioner has withdrawn all its allegations that
Dr. Konchitsky himself engaged in any act of forgery or perjury with respect
to his Ph.D. Ex. 2106; Tr. 4:11–23, 6:13–8:2. This is not to say that there is
sufficient evidence to establish whether Dr. Konchitsky’s Ph.D. is genuine.
However, as Petitioner argues, the issue is one of Dr. Konchitsky’s veracity
and credibility. Tr. 7:7–17. Thus, while it may be possible Dr.
Konchitsky’s Ph.D. is not genuine, Petitioner has not shown that Dr.
Konchitsky engaged in any wrongdoing in obtaining his Ph.D. or
representing that he obtained a Ph.D. from Bournemouth University
Extension in Israel. Thus, we do not diminish the weight of Dr.
Konchitsky’s on this basis.

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2. Dr. Konchitsky’s Master’s Degree in Tourism and Hospitality
Management
Petitioner further argues that Dr. Konchitsky’s mischaracterization of
his Master’s degree from Bournemouth University (Tr. 6:15–23)
demonstrates Dr. Konchitsky’s lack of credibility and diminishes the weight
of his testimony (see id. at 9:7–14). Petitioner does not dispute Dr.
Konchitsky received a Master’s degree from Bournemouth University. Tr.
13:9–15. Rather, Petitioner asserts Dr. Konchitsky has embellished his
Master’s degree in tourism and hospitality management by describing it as a
degree in “management and business.” Id. at 5:23–25.
Dr. Konchitsky and Patent Owner do not dispute that Dr.
Konchitsky’s curriculum vitae does not state that his Master’s degree was
issued in “Tourism and Hospitality Management.” Ex. 2082 ¶ 94; see
Tr. 21:5–7. Dr. Konchitsky asserts that he believes his CV is accurate
because his:
Master’s thesis was focused on computers and computer science,
and how personal computers could best be integrated into a
hotel’s business. This field, where I was forecasting the trend in
a particular vertical industry, is part of Information Technology
in graduate business studies, which is a subcategory of the school
of management.
Ex. 2082 ¶ 94. While an argument may be made that Dr. Konchitsky’s
description of his Master’s degree is merely harmless embellishment or an
artful rewording having the same effective meaning, we find that Dr.
Konchitsky, nevertheless, incorrectly described his Master’s degree and
misrepresented his credentials to the Board. Further, that Dr. Konchitsky
may be qualified to testify based on his undergraduate degrees and
experience, as asserted by Patent Owner (Tr. 21:16–5), does not mitigate Dr.
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Konchitsky’s misrepresentation of his credentials nor preclude us from
weighing his testimony in light of such misrepresentation. We expect all
parties and individuals involved in proceedings before the Board to “have a
duty of candor and good faith to the Office during the course of a
proceeding.” 37 C.F.R. § 42.11. Moreover, we agree with the sentiment
that “[e]ven the slightest accommodation of deceit or a lack of candor in any
material respect quickly erodes the validity of the process. As soon as the
process falters in that respect, the people are then justified in abandoning
support for the system in favor of one where honesty is preeminent.” United
States v. Shaffer Equip. Co., 11 F.3d 450, 457–59 (4th Cir. 1993).
Therefore, we will consider Dr. Konchitsky’s statements regarding his
Master’s degree in affording his testimony the appropriate weight.
3. Dr. Konchitsky’s Translation of Mr. Cohen’s Statement
Petitioner further argues that the circumstances of Dr. Konchitsky’s
incorrect translation of Mr. Cohen’s Statement (Ex. 2092), submitted to
support his Ph.D. from Bournemouth University Extension through Ramat
Gan College in Israel, demonstrate a lack of credibility and reliability. Pet.
Mot. Exclude 4; Ex. 1061. In particular, Petitioner argues that the incorrect
English translation of Mr. Cohen’s Statement includes the phrase “[d]uring
the time period 1999-2002, the Extension offered a doctoral program in
communication systems in electrical engineering,” for which the Hebrew
counterpart does not appear in the original Hebrew version. Ex. 2092, 2.
At the Oral Hearing, counsel for Patent Owner indicated it relied on
Dr. Konchitsky for the translation of all documents in his supplemental
declaration (Ex. 2082). Tr. 13:22–14:11. Counsel for Patent Owner further
represented that there was a “mismatching problem between the drafts” that
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resulted in the submission of an English version that did not match the
statement in Hebrew. Id. at 14:16–21. Counsel for Patent Owner indicated
that
we have now obtained a declaration from Dr. Konchitsky that
explains how the error occurred. And we also have a certified
translation and have obtained a corrected, if you will,
Exhibit 2092 from Mr. Cohen that matches the English version.
And in short, just like I said Friday during the call,
Dr. Konchitsky says it was a mismatching problem between the
drafts that were discussed and exchanged with Mr. Cohen. He
apparently mixed up the English translation with the Hebrew
version. We don’t, of course, speak Hebrew, so we couldn't
catch the mistake ourselves.
Id. at 14:12–21. Patent Owner did not provide a certified translation of
Exhibit 2092 at the time of filing as it was required to do per 37 C.F.R.
§ 42.63(b).
Based on the entire record, we find that this “mismatching” situation
could have been avoided if a proper certified translation of Exhibit 2092 had
been completed and submitted as required by Rule 42.63. Although we do
not dismiss Dr. Konchitsky’s testimony on this basis,6 the misleading
translation proffered by Patent Owner erodes the foundation of Dr.

6 Petitioner has requested authorization to file a motion for sanctions based
on Dr. Konchitsky’s translation of Exhibit 2092. Specifically, at the Oral
Hearing, Petitioner requested reimbursement for the cost of obtaining
certified translations of Exhibits 2087, 2091, and 2092. Tr. 9:13–16. On
February 12, 2016, by email correspondence, the parties informed us that
Patent Owner “has fully reimbursed Petitioner for the cost of obtaining
certified translations of Exhibits 2087, 2091, and 2092.” Ex. 3001.
Accordingly, we treat Petitioner’s request to file a motion for sanctions as
moot.
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Konchitsky’s declaration and the weight we grant his testimony, and
undermines the foundation of our trial process.
With these considerations in mind, we now turn to the construction of
certain claim terms.

B. Claim Construction
In an inter partes review, “[a] claim in an unexpired patent shall be
given its broadest reasonable construction in light of the specification of the
patent in which it appears.” 37 C.F.R. § 42.100(b); see also In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015) (“We conclude
that Congress implicitly approved the broadest reasonable interpretation
standard in enacting the AIA” and “the standard was properly adopted by
PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee,
136 S. Ct. 890 (mem.) (2016) . There is a presumption that a claim term
carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007).
“Control database” and “device database” (claim 1)
For purposes of our Decision to Institute, we determined that no claim
terms needed express construction. Dec. to Inst. 7.
In the Patent Owner’s Response, Patent Owner proposes a
construction for the claim term “database” as meaning “a collection of
information or data that is structured or organized to allow quick access and
retrieval of the information by a computer.” PO Resp. 12. Patent Owner
further urges that a database excludes “any ‘list of devices,’” and includes
data organized in records with each record having one or more fields. Id. at
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12–14. Patent Owner asserts additionally that the claim phrases “control
database” and “device database” require two separate and distinct databases
under the broadest reasonable construction. Id. at 14–15. Patent Owner
asserts that Petitioner’s declarant, Dr. Arthur Brody testified in his
“Litigation Declaration” that the “plain language of the asserted claims
require that the ‘device database’ and ‘control database’ are two distinct
databases.” Id. at 9–10 (citing Ex. 2001 ¶ 190).
Petitioner responds that Patent Owner’s proposed definition is
essentially the same definition proposed previously by Petitioner. Reply 2.
In the Petition, Petitioner proposes that “database” means “a collection of
information stored for retrieval and use by a computer system.” Pet. 8;
Reply 2. Petitioner further asserts that “a collection of information with
absolutely no structure or organization could not be retrieved and used by a
computer system. Accordingly, any collection of information with even the
simplest structure or organization satisfies both experts’ definition of
‘database.’” Reply 2. Petitioner, however, disagrees with Patent Owner’s
position that the terms “control database” and “device database” require
separate databases because the plain meaning of the claim language and the
disclosure of the ’694 patent do not require separate databases. Id. at 3–4.
Based on the complete record before us, we agree with the parties that
the broadest reasonable interpretation of the term “database” is “a collection
of information or data that is structured or organized to allow access and
retrieval of the information by a computer.” This interpretation is consistent
with the Specification, which, for example, describes device database 58 as
storing identification data and allowing access of stored identification data
by gateway 54. See Ex. 1001, 5:4–7, 8:7–9. Therefore, we adopt this
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construction. Moreover, we agree with Petitioner’s position that a
“database” as claimed does not require a specific type of structure and even
the “simplest” structure or organization of information would satisfy the
element. The literal language of the claim language does not require fields,
records, etc., and does not exclude the use of lists.
Additionally, we determine that the literal language of the claim terms
“control database” and “regulation database” do not require separate and
distinct databases. Further, we have considered both parties’ arguments
regarding the respective position each has taken in the related district court
proceeding. These arguments are instructive, but not binding on our
construction of the claim term “database” in our review. For example, Dr.
Brody’s testimony in the district court proceeding that the Specification
describes individual control and regulation databases (Ex. 2001 ¶ 191) does
not persuade us that the claim terms require separate and distinct databases.
It is well-settled that even “the fact that the specification describes only a
single embodiment, standing alone, is insufficient to limit otherwise broad
claim language.” Howmedica Osteonics Corp. v. Wright Med. Tech., Inc.,
540 F.3d 1337, 1345 (Fed. Cir. 2008); see also Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“Although the specification
often describes very specific embodiments of the invention, we have
repeatedly warned against confining the claims to those embodiments.”).
Accordingly, we construe the term “database” as “a collection of
information or data that is structured or organized to allow access and
retrieval of the information by a computer,” and do not limit “control
database” and “device database” to separate and distinct databases.
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C. Claims 9, 10, and 12 – Anticipated by Lotter (Ex. 1005)
Petitioner argues claims 9, 10, and 12 are anticipated under 35 U.S.C.
§ 102 by Lotter. Pet. 9–20. Patent Owner contests Petitioner’s position. As
explained below, we have considered the arguments and evidence presented
by both parties, and we determine Petitioner has not shown by a
preponderance of the evidence that claims 9, 10, and 12 are anticipated by
Lotter.
To establish anticipation under 35 U.S.C. § 102, each and every
element in a claim, arranged as recited in the claim, must be found in a
single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242
F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must
disclose more than “multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention.” Net MoneyIN, 545
F.3d at 1371; see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The
[prior art] reference must clearly and unequivocally disclose the claimed
[invention] or direct those skilled in the art to the [invention] without any
need for picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.”). Although the
elements must be arranged or combined in the same way as in the claim,
“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior
art reference is read from the perspective of one with ordinary skill in the art.
In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates
a claim if it discloses the claimed invention ‘such that a skilled artisan could
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take its teachings in combination with his own knowledge of the particular
art and be in possession of the invention.’”); In re Preda, 401 F.2d 825, 826
(CCPA 1968) (“[I]t is proper to take into account not only specific teachings
of the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”).
1. Summary of Lotter (Ex. 1005)
Lotter describes systems and methods directed to monitoring the
communications to and from a mobile communication device. Ex. 1005,
Abstract. Lotter discloses that “each of the data services on a mobile
communication device may be monitored against rules stored in a central
data center repository.” Id. Figure 1 is reproduced below.

Figure 1 shows Data Gateway program tool 30 and wireless devices
10, 12, and 14, which represent users whose activities are monitored.
Ex. 1005, 4:58–61. Lotter teaches that each of devices 10, 12, and 14 may
include memory and a processor configured to run various programs (e.g.,
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software applications) stored in the memory, including respective Data
Monitoring program tools 11, 13, and 15 that communicate with Data
Gateway 30. Id. at 4:61–67, 5:41–46. Data Monitoring program tools 11,
13, and 15 monitor the data services used on respective devices 10, 12, and
14. Id. at 5:1–3.
Figure 1 further shows Data Gateway 30 includes Activity Log 40
database in Data Center 17. Id. at Fig. 1. Activity Log 40 contains an entry
for each use of a data service on wireless devices 10, 12, and 14. Id. at
5:14–15. Data Center 17 also contains Permissions 50 database that lists the
wireless devices to be monitored (e.g., wireless devices 10, 12, and 14) and
the rules to apply to allow, deny, and/or alert of data service activity
occurring on the wireless devices being monitored. Id. at 5:18–22. Lotter
further discloses that Alert Monitor 70 program (shown in Figure 1) “waits
for new entries to be made into Activity Log 40 [and] sends an alert to one
or more users via Data Gateway 30, such as for example to a cell phone 18
using SMS Text Messaging or Email an 19 account” when unauthorized
activity is detected. Id. at 5:23–28.
Referring to Figure 2, Lotter discloses Data Monitor program tool 21
on Mobile Communications Device 20 as an example of data monitor 11,
13, or 15 that captures data service activity on device 20. Id. at 5:62–65.
Data Monitor program tool 21 monitors the inbound and outbound activity
for each of these data services and sends a detailed log of these activities to a
central repository. Id. at 6:26–29.
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As an example of this operation, Figure 3H is reproduced below.

Figure 3H shows a data flowchart for capturing an outbound instant message
using Instant Messaging Application 25 on Mobile Communications Device
20. Ex. 1005, 9:18–20. In step 117, an instant message is sent from Mobile
Communications Device 20. Id. at 9:21–23. In step 127, Data Monitor 21
recognizes that Instant Messaging Application 25 data service has been
initiated and begins to capture information regarding the use of the data
service including the unique Device ID of Mobile Communications Device
20, the date/time stamp of the message, the destination username, and/or any
contextual data. Id. at Fig. 3H. Once the message has been sent, Data
Monitor 21 formats a data packet which includes the collected information
(Activity Record) and sends one or more data packets to the central
repository located in Data Center 17. Id. at 9:29–32.
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Further, referring to Figures 7A and 7B, Lotter teaches that Alert
Monitor 70 monitors records entered into Activity Log 40 database by Data
Gateway 30. Ex. 1005, 13:10–12. “Each record is checked against
Permissions 50 database.” Id. at 13:12–14. If the Log Activity is not
authorized, Data Gateway 30 looks up the delivery notification method in
Permissions 50 database and sends an alert message to one or more
destinations. Id. at 13:15–23.
Additional, Lotter describes another embodiment shown in Figures
6A and 6B, reproduced below.

Figures 6A and 6B illustrate an embodiment “where the contextual content
of the communication is checked against permissions 50 database prior to
allowing Mobile Communications Device 20 access to the data services 22
through 29 and 31.” Ex. 1005, 12:42–47. In step 160, one or more data
services 22 through 29 and 31 may be initiated on Mobile Communications
Device 20. Id. at 12:47–49. In step 161, Data Monitor 21 recognizes that a
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data service has been initiated and begins to capture information regarding
the use of the data service including, for example, the unique Device ID of
Mobile Communications Device 20, the date/time stamp, the originating or
destination phone number, email address, or username, and/or the contextual
content of the data packet. Id. at 12:49–55. Once the request for a data
service has been received (Step 130), Data Monitor 21 formats a data packet
which includes the collected information (Activity Record) and sends one or
more data packets to the central repository located in Data Center 17. Id. at
12:56–60. In step 140, Data Gateway 30 located in Data Center 17 receives
the data packet(s) and then checks the content of the data packet(s) in step
162 against Permissions 50 database located in Data Center 17. Id. at
12:60–63. If the data request was not authorized (step 163), Data Gateway
30 notifies (step 164) Mobile Communications Device 20 by sending a
message through Cellular Service Provider 16 to Data Monitor 21 on Mobile
Communications Device 20. Id. at 12:63–67. In Step 166, Data Monitor 21
cancels the data service request. Id. at 12:67–13:1. If the data request was
authorized (step 163), Data Gateway 30 notifies (step 165) Mobile
Communications Device 20 by sending a message through Cellular Service
Provider 16 to Data Monitor 21 on Mobile Communications Device 20. Id.
at 13:1–5. In Step 167, Data Monitor 21 completes the authorized data
service request. Id. at 13:5–6.
2. Analysis
Claim 9 of the ’694 patent is directed to a method for control of a
computer network communication device that includes the steps below:
generating a command message corresponding to the
control data, the command message including a block
command, in response to the monitor message identifying the
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service accessed through the Internet Service Provider having a
block rule stored in the control database in association with the
service;
sending the command message from the control site to
the computer network communication device;
parsing the command message in the computer network
communication device to identify a block command in the
command message; and
displaying a message for the user indicating that the
command has been blocked.
For these limitations, Petitioner’s anticipation challenge relies on
various methods of operating Lotter’s mobile device monitoring systems as
described in flowcharts shown in Figures 3A–3O, 6A–6B, and 7A–7B.
Pet. 16–19. More specifically, Petitioner relies on the processes described in
Figures 6A and 6B for the block command and Figures 7A and 7B for the
“displaying” step. Pet. 11 (“Based on the comparison between the activity
log monitor message entry and the permissions database, the data
gateway/alert monitor server sends either a block or allow command
message to the communication device. (Ex. 1005, 12:63–13:6.)”); see also
Pet. 18–19 (claim chart); Reply 10 (“Lotter’s system also sends ‘an alert
message’ to the user when the requested command is not allowed based on
the control data stored in the permissions database.”) (citing Ex. 1005,
13:15–23).
Patent Owner argues that Petitioner’s challenge of claim 9 relies upon
two separate, alternative embodiments described in Lotter, and that
Petitioner picks portions from each of the alternative embodiments and
rearranges the portions in a manner not disclosed in Lotter. PO Resp. 23.
Particularly, Patent Owner argues that the process described in Figures 3A–
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3O and 7A–7B does not include any blocking because this embodiment
provides an “after-the-fact notification or alert” that is sent to the account
administrator. Id. at 17. Patent Owner adds this is “the only embodiment
that mentions alert messages” and “is not controlling or ‘blocking’ any use
of the mobile device. Instead, in this embodiment the data packets/‘monitor
messages’ are not sent to the Data Center until after the mobile device has
already completed the activity being monitored.” Id. at 20 (citing Ex. 1005,
9:29–32). Patent Owner asserts that Figures 6A– 6B disclose an “alternative
embodiment” that uses the Permissions database to determine whether to
allow the mobile device to access data services. Id. at 21 (citing Ex. 1005,
Figs. 6A–6B, 12:42–13:6). Patent Owner further argues that this
“alternative embodiment of Lotter does not mention or use the Activity Log
40,” or send any alerts or notifications of any unauthorized uses. Id. at 21–
22 (citing Ex. 1005, Figs. 6A–6B, 12:42–13:6).
Based on the complete record before us, Patent Owner’s position is
persuasive. Lotter’s flowcharts shown in Figures 3A–3O describe various
activities carried out by the mobile device and the recording of each activity
by the Data Gateway as an Activity record in Activity Log 40. Ex. 1005,
7:18–11:51; see, e.g., Fig. 3H (Steps 126, 140, 150, 40). In each of the
flowcharts shown in Figures 3A–3O, Lotter teaches that at Step 140 an
“Activity record is received by the Data Gateway” and at Step 150 “Data
Gateway writes Activity record to the central data repository.” Lotter
further provides that in Step 150 Data Gateway 30 “writes the data packet(s)
. . . to Activity Log 40.” See Ex. 1005, 7:32–35, 7:51–54, 8:4–6; 8:23–26
(examples of same description for Figures 3A–3D). We note that Figures
3A–3O and the accompanying discussion of these figures do not describe the
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use of an “alert” or message to prevent unauthorized activity. Ex. 1005,
7:18–11:51.
With respect to the flowcharts of Figures 7A–7B, Lotter teaches that
in Step 170, Alert Monitor 70 monitors records entered into Activity Log
database 40 and each record is checked against Permissions database 50.
Ex. 1005, 13:10–13. If the Log Activity is allowed (step 171), no further
action is taken; however, if the Log Activity is not permitted, Data Gateway
30 sends an alert message. Id. at 13:13–18.
Based on this disclosure, we understand Lotter’s Figures 3A–3O and
7A–7B to teach a mobile device monitoring process that checks data service
use after activities have been performed and completed by the mobile
device. For example, with reference to Figure 3A, Lotter teaches that Data
Monitor 21 captures the start and end date/time stamp of the call taking
place via the data service and “[o]nce the call has been terminated (step
130),” Data Monitor 21 sends the Activity Record to Data Center 17. Id. at
7:23–32 (emphasis added). The Activity Record referred to in Figures 3A–
3O is of a completed activity that has already taken place on the mobile
device, and has not been prevented or blocked. With respect to Figures 7A–
7B, Lotter adds to the disclosure of Figures 3A–3O by providing a check
feature in which Alert Monitor 70 checks the completed activities recorded
in Activity Log 40 against Permissions 50 database. Ex. 1005, 13:10–13.
In contrast, the flowcharts in Figures 6A–6B describe “an alternative
embodiment of the invention where the contextual content of the
communication is checked against permissions 50 database prior to allowing
Mobile Communications Device 20 access to the data services 22 through 29
and 31.” Ex. 1005, 12:42–47 (emphasis added). Further, Figures 6A–6B do
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not include the step of writing an Activity Record to Activity Log 40.
Ex. 1005, Figs. 6A–6B, 12:42–13:6. This is consistent with Lotter’s
disclosure that Data Monitor 21 sends the collected information (Activity
Record) to Data Center 17 where Data Gateway 30 first checks the content
of the information against Permissions 50 database to determine if the
requested data service use is authorized. Id. at 12:56–63. If the data request
was not authorized (step 163), Data Gateway 30 notifies (step 164) Mobile
Communications Device 20 by sending a message through Cellular Service
Provider 16 to Data Monitor 21 on Mobile Communications Device 20. Id.
at 12:63–67. In Step 166, Data Monitor 21 cancels the data service request.
Id. at 12:67–13:1. If the data request was authorized (step 163), Data
Gateway 30 notifies (step 165) Mobile Communications Device 20 by
sending a message through Cellular Service Provider 16 to Data Monitor 21
on Mobile Communications Device 20. Id. at 13:1–5. In Step 167, Data
Monitor 21 completes the authorized data service request. Id. at 13:5–6.
Accordingly, based on Figures 3A–3O, 6A–6B, and 7A–7B, Lotter
discloses two distinct and separate methods of operation. With respect to
Figures 3A–3O and 7A–7B, Lotter’s process allows the mobile device to
complete activities that are recorded in Activity Log 40 and, subsequently,
checked against Permissions 50 database. An alert message may be sent out
after the activity has been completed. Ex. 1005, 13:10–31. With regard to
Figures 6A–6B, Lotter teaches an “alternative embodiment” that checks the
requested use of a data service against the Permissions 50 database prior to
completion of the activity, and, further, sends a message to prevent the use
of the data service for the requested activity if the activity is not authorized.
Ex. 1005, 12:42–47.
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In relying on these two methods disclosed in Lotter, Petitioner first
argues that “[w]hen read in context, Figs. 6A–6B provide ‘an alternative
embodiment’ to the permissions database of Fig. 5, where the
communication operation is allowed or prevented based on the contextual
information instead of the data service.” Reply 4–5. In other words,
Petitioner takes the position that Lotter describes Figures 6A–6B as an
alternative method of using Permissions 50 database to allow or deny data
service use based on the contextual content of the message. Id. at 4–5.
Additionally, Petitioner argues that the process of sending a message to
prevent use of data service (as described in Figures 6A–6B) is “combinable”
with the features of Figures 3A–3O and 7A–7B. Reply 6. Specifically,
Petitioner argues that: (1) Lotter’s Abstract provides that an alert message
may be used with a message “to prevent the unauthorized data service
activity”; (2) the specification “contemplates that Lotter’s system both
provides alerts and provides messages that prevent unauthorized activity
from occurring on the wireless device being monitored”; (3) like numerals
used for Figures 3A–3O and 6A–6B indicate that Figures 6A–6B
supplement, but do not exclude the functional steps in Figs. 3A–3O; and (4)
claims 1 and 10–12 of Lotter “inform a PHOSITA that Figs. 6A-6B describe
functions” that are combinable with Figures 3A–3O and 7A–7B. Id. at 5–6
(citing Ex. 1005, Abstract, 2:62–65, 5:17–22, claims 1, 10–12; Ex. 1010,
270–273).
To start, we do not disagree with Petitioner’s reading of Lotter that
Figures 6A–6B provide an “alternative” method of operating the disclosed
monitoring system based on contextual information. Indeed, this is the crux
of Patent Owner’s argument, which is that Figures 6A–6B describe an
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embodiment that is separate and different from the embodiment described in
Figures 3A–3O and 7A–7B. See PO Resp. 23. As discussed above, Figures
3A–3O and 7A–7B of Lotter describe a process that allows the mobile
device to complete activities that are recorded in Activity Log 40 and,
subsequently, checked against Permissions 50 database. Ex. 1005, 13:10–
31. Figures 6A–6B of Lotter teaches an alternative process that compares
the requested data service use against the Permissions 50 database prior to
completion of the activity, and, further, sends a message to prevent the use
of the data service for the requested activity if the activity is not authorized.
Ex. 1005, 12:42–47.
Furthermore, we are not persuaded that the passages of Lotter relied
upon by the Petitioner clearly and unequivocally disclose the invention as
recited in claim 9 of the ’694 patent “without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference.” See In re Arkley, 455 F.2d
586, 587 (CCPA 1972). First, although Lotter’s Abstract indicates an alert
“and/or” message may be provided, this disclosure is not directed to the
flowcharts of Figures 3A–3O, 6A–6B, and 7A–7B. Thus, based on the
complete record before us, it is unclear whether this single sentence in the
Abstract suggests the combination of the two embodiments shown in the
Figures 3A–3O, 6A–6B, and 7A–7B, and if so, what aspects or steps of the
flowcharts would be combined. See In re Brink, 419 F.2d 914, 917 (CCPA
1970) (“[I]f a reference is ambiguous and can be interpreted so that it may or
may not constitute an anticipation of an appellant’s claims, an anticipation
rejection under 35 U.S.C. § 102 based upon the ambiguous reference is
improper.”). We decline to speculate on how the combination may be
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accomplished or whether such a combination would teach or suggest the
features recited in claim 9 of the’694 patent.
Second, we are not persuaded by Petitioner’s reliance on columns 2 or
5 of Lotter. Column 2, lines 62 through 65 (Ex. 1005) state “[f]or example,
based on rules selected by the administrative user, the device usage is
allowed, denied, and/or an alert is sent to the administrative user notifying
them of an unauthorized event.” Similarly, column 5, lines 18 through 22 of
Lotter provide that “Data Center 17 also contains a Permissions 50 database
that lists the wireless devices to be monitored . . . and the rules to apply to
allow, deny, and/or alert of data service activity occurring on the wireless
devices being monitored.” However, this disclosure is not directed to the
steps of operation shown in Figures 3A–3O, 6A–6B, and 7A–7B, and does
not mention a message that prevents unauthorized activity. Thus, we are not
persuaded that these cited passages support Petitioner’s position that Lotter
teaches the combination of an alert shown in Figures 7A–7B with the
“message” described in Figures 6A–6B.
Third, we are not persuaded by Petitioner’s position that the use of
like reference numerals for Figures 3A–3O and Figures 6A–6B indicates
Lotter’s disclosed methods of operation teach the elements of claim 9 as
arranged in the claim. Although like reference numerals are used for steps
that may occur in both processes, different numerals are also used to
distinguish between the two methods of operation. For example, Figure 6A
includes Step 162 where “Data Gateway checks the Permissions database.”
This step is not shown in Figures 3A–3O or Figures 7A–7B. Further,
Figures 3A–3O include the step of recording the Activity Record to the
Activity Log 40, which does not appear in Figures 6A–6B. This use of
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reference numerals in the figures is consistent with Lotter’s disclosure that
the embodiment of Figures 6A–6B compares the Activity Record to the
Permissions 50 database prior to the completion of the requested data
service use. Id. at 12:42–13:6.
Fourth, we are also not persuaded by Petitioner’s argument that claims
1 and 10–12 of Lotter “inform a PHOSITA that Figs. 6A-6B describe
functions” that are combinable with Figures 3A–3O and 7A–7B. Reply 5
(citing Ex. 1005, claims 1, 10–12; Ex. 1010, 270–273). Initially, we note
that the Petition does not contain this argument. The claim chart on page 15
of the Petition cites to claim 1 of Lotter for the assertion that “Lotter
discloses ‘a device database in the control site.’” Pet. 15 (cited as “[s]ee
Ex. 1005, Figs. 1, 4, 5, claim 1; Ex. 1003 ¶ 48”). Thus, Petitioner does not
explain in the Petition how claims 1 and 10–12 of Lotter read on
Figures 3A–3O, 6A–6B, and 7A–7B. Further, the Petition does not contain
any explanation of how Lotter’s claims teach the “block command” and
“displaying” features recited in claim 9 of the ’694 patent.
Additionally, Petitioner’s Reply does not help in this regard. The
relevant portion of the Reply provides:
Claim 1 of Lotter reads on Figs. 3A-3O and 7A-7B, which
relate to monitoring use and providing alerts, and dependent
claims 10-12 of Lotter read on Figs. 6A-6B, which relate to
preventing uses that are disallowed in the permissions database
on the basis of contextual data. See also, Lotter File History,
Ex. 1010 at 270–73.
Reply 6. However, other than citing to the language of Lotter’s claims 1–12,
as shown in Exhibit 1010 on pages 270 through 273, Petitioner does not
explain in the Reply how Lotter’s claims 1 and 10–12 “read on” Lotter’s
figures, and, more importantly, how Lotter’s claims disclose the limitations
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recited in claim 9 of the ’694 patent. Id. Mere attorney argument cannot
carry Petitioner’s burden. See Meitzner v. Mindick, 549 F.2d 775, 782
(CCPA 1977).
Taking Patent Owner’s evidence and weighing it against the evidence
Petitioner has offered, we find that Petitioner has failed to show that Lotter
teaches each and every element in claim 9 of the ’694 patent, arranged as
recited in the claim. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d
1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must
disclose more than “multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention.” Net MoneyIN, 545
F.3d at 1371. Here, Petitioner’s challenge relies on combining the processes
described for distinct embodiments described separately in Figures 3A–3O
and 7A–7B, and Figures 6A–6B. Thus, we conclude that Petitioner picks
and chooses among the methods of operation disclosed in Lotter to assemble
the claimed subject matter. This cannot establish anticipation. See
Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d
1452, 1458–59 (Fed. Cir. 1984) (The requirement that the prior art elements
themselves be “arranged as in the claim” means that claims cannot be
“treated . . . as mere catalogs of separate parts, in disregard of the part-to-
part relationships set forth in the claims and that give the claims their
meaning.”). Further, even if a skilled artisan would have been able to
modify the embodiments of Figures 3A–3O, 6A–6B, and 7A–7B such that
the steps of the flowcharts could be combined, our reviewing court has held
that “differences between the prior art reference and a claimed invention,
however slight, invoke the question of obviousness, not anticipation.” Net
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MoneyIN, Inc., 545 F.3d at 1371. Accordingly, Petitioner has failed to
establish by a preponderance of the evidence that Lotter anticipates claim 9.
Further, Petitioner’s arguments with regard to dependent claims 10
and 12 do not cure the deficiencies discussed above. Pet. 19–20. For the
foregoing reasons discussed above, we conclude that Petitioner has failed to
establish by a preponderance of the evidence that Lotter anticipates claims
10 and 12.
D. Claims 1, 2, 4, and 5 – Obvious Over Lotter and Patron (Ex. 1006)
Petitioner argues that claims 1, 2, 4, and 5 are unpatentable under
35 U.S.C. § 103(a) over Lotter and Patron. Pet. 20–27. As explained in
further detail below, we have considered the arguments and evidence
presented, and we are persuaded that Petitioner has shown, by a
preponderance of the evidence, that claims 1, 2, 4, and 5 are unpatentable
over Lotter and Patron.
1. Relevant Legal Principles
A 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 invention was
made to a person having ordinary skill in the art to which said 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) where in evidence, so-called secondary
considerations, including commercial success, long-felt but unsolved needs,
failure of others, and unexpected results. Graham v. John Deere Co.,
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383 U.S. 1, 17–18 (1966) (“the Graham factors”). 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).
For an obviousness analysis, prior art references must be “considered
together with the knowledge of one of ordinary skill in the pertinent art.”
In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour,
571 F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). That is because
an obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418; see also Translogic Tech., Inc., 504
F.3d at 1259.
2. Summary of Patron (Ex. 1006)
Patron is directed to downloadable control policies for instant
messaging usage. Ex. 1006, Title. The Petition describes Patron as
disclosing the creation of a parental control profile to control a minor’s use
of an electronic communication device. Pet. 21 (citing Ex. 1006 ¶ 9). The
Petition also asserts Patron describes that the control policies regulating the
minor’s use of the electronic communication device can include, among
others,
time-based controls such as: (a) specific times when the minor
14 can or cannot use his/her client device 36; (b) specific times
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when the minor 14 can log on or cannot log on (e.g. he/she
cannot log on during exams in school); (c) specific times when
messages from buddies are to be blocked; and (d) specific times
when messages from anyone not in the buddy list will be
blocked or allowed.
Id. (citing Ex. 1006 ¶ 13).
3. Analysis
Petitioner argues that Lotter and Patron teach or suggest all the
limitations of independent claim 1 and its dependent claims 2, 4, and 5.
Pet. 20–27. We have reviewed the Petition, the Patent Owner’s Response,
and Petitioner’s Reply, as well as the evidence discussed in each of those
papers, and are persuaded, by a preponderance of the evidence, that claim 1
would have been obvious based on Lotter and Patron. Our discussion below
focuses on the limitations of independent claim 1 as illustrative of the
subject matter at issue in this challenge.
As a threshold issue, Patent Owner repeats its argument that Petitioner
improperly combines two alternative embodiments of Lotter and does not
provide an explanation for this combination. PO Resp. 24–25, 29–30, 32.
First, Petitioner’s challenge in this instance is based on obviousness, not
anticipation, thus, a combination or modification of Lotter is properly within
the province of Petitioner’s challenge. Second, upon review of the complete
record, particularly, the Petition, we are not persuaded that Petitioner
combines the two alternative embodiments discussed above for its challenge
of claim 1. Rather, we understand the Petition as providing separate and
alternative obviousness arguments based on the two embodiments disclosed
in Figures 3A–3O, 6A–6B, and 7A–7B. For example, the Petition relies on
the Activity Log 40 and, separately, Permissions 50 database as each
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teaching a “device database.” Pet. 24; Reply 6–9 (“Lotter discloses two
structures, either of which a PHOSITA would have considered a ‘device
database,’ as claimed in the ’694 patent. See Petition 10–11.”). Thus, we
are not persuaded that Petitioner’s obviousness challenge fails on this basis.
Turning to the claim limitations, claim 1 is directed to a method for
controlling operation of a computer network communication device that
communicates over a computer network. This method includes the steps of
“generating, with a computer network communication device, monitor
messages having a unique device identifier and command identification
data” and “sending the generated monitor messages to a control site in
background to a communication session between the computer network
communication device and a communication service.”
Petitioner argues that Lotter’s disclosure in Figures 6A–6B teach this
step. Pet. 22–23. Specifically, Petitioner observes that Lotter discloses that
[i]n step 161, Data Monitor 21 recognizes that a data service
has been initiated and begins to capture information
regarding the use of the data service including, for example,
the unique Device ID of Mobile Communications Device 20,
the date/time stamp, the originating or destination phone
number, email address, or username, and/or the contextual
content of the data packet. (Ex. 1005, 12:49–55.)
Pet. 23 (citing Ex. 1003 ¶¶ 61–62). Petitioner further argues that Step 130
(shown in Figure 6A) teaches that “[o]nce the request for a data service has
been received (Step 130), Data Monitor 21 formats a data packet which
includes the collected information (Activity Record) and sends one or more
data packets to the central repository located in Data Center 17.” Pet. 13
(Ex. 1005, 12:49–60.)
For these limitations, Patent Owner relies on arguments that it
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presents for claim 9 of the ’694 patent, but does not raise any challenge
specific to these limitations of claim 1. PO Resp. 31–35. Patent Owner
does, however, assert generally that “Petitioner makes no arguments about
the application of Lotter to elements 1[a]-[h], but instead just cites to various
portions of Lotter and to Dr. Brody’s declaration.” Id. at 30.
Based on the complete record, Petitioner’s argument is persuasive.
Lotter teaches that at Step 161, Data Monitor “records Device ID” (i.e.,
unique device identifier) and “information regarding the use of the data
service”/contextual data (i.e., command identification data). Ex. 1005,
Fig. 6A, 12:49–55 (emphasis added). Additionally, at step 130, Lotter
teaches Data Monitor sends the Activity record (i.e., monitor message) to the
central data repository. The Activity Record “includes the collected
information.” Id. at 12:5–60. This is consistent with Dr. Brody’s
declaration, which provides that
Lotter discloses that each mobile communication device has a
“unique Device ID,” which corresponds to “the unique device
identifier” as claimed in the ’694 patent. (Ex. 1005, 9:4–10.)
Furthermore, the “contextual content of the data packet”
corresponds to “data corresponding to the command entered by
the user” because “the data packet” is the data packets sent in
response to the user’s send command when using the IM
application. The Data Monitoring program tool then “formats a
data packet which includes the collected information (Activity
Record) and sends one or more data packets to the central
repository located in Data Center 17.” (Ex. 1005, 12:57–60.)
These data packets containing the unique Device ID and other
collected information constitute a monitor message because the
system uses the data packets to monitor commands, as explained
below with respect to claim 1[d]. Thus, claim element 1[a] is
disclosed by Lotter.
Ex. 1003 ¶ 62. Thus, we agree with Petitioner that Lotter discloses these
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limitations.
Claim 1 further recites “verifying with a server at the control site that
the unique device identifier in the generated monitor messages received at
the control site is also stored in a device database.”
Petitioner argues that Lotter discloses “a server at the control site”
because the “Data Gateway 30 and Alert Monitor 70 . . . may represent one
or more computers (e.g., servers or other processor-based systems) for
performing the operations described herein . . . including communicating
with Activity Log 40 and Permissions 50 databases (e.g., memory such as
server-based storage).” Pet. 24 (citing Ex. 1005, 5:34–41; Ex. 1003 ¶ 65).
For the recited “device database,” Petitioner relies on Activity Log 40 and
Permissions 50 database, separately, as disclosing this limitation. Pet. 24;
Reply 6–9. With respect to the latter, Petitioner asserts Permissions 50
database lists wireless devices to be monitored and the rules to apply for
allowing or denying data service activity. Pet. 24.
Patent Owner argues that neither Lotter’s Activity Log nor
Permissions 50 database teaches the recited “device database” because the
broadest reasonable interpretation of “database” requires (1) more than a
“list of devices”; and (2) a separate device database and control database.
PO Resp. 32 (citing PO Resp., Section II.A.2.b.i–ii, II.B.1.d.ii.); see also PO
Resp. 27 (“A PHOSITA therefore, does not understand that the ‘Acct ID’
field of Lotter’s Permissions database is a ‘device database’ stored within
the Permissions database as argued by Petitioner. Ex. 1003, Brody IPR Decl.
at ¶¶28, 48-49; Ex. 2004, Konchitsky Decl. at ¶¶110-112, 117.”).
We do not agree with Patent Owner’s position. As discussed, we find
the term “database” means “a collection of information or data that is
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structured or organized to allow access and retrieval of the information by a
computer.” Supra, Claim Construction. Lotter teaches explicitly that both
Activity Log 40 and Permissions 50 database are databases. Figure 4 of
Lotter provides an “exemplary structure for Activity Log 40 database . . .
shown in tabular form.” Ex. 1005, 11:56–57 (emphasis added). Further,
Lotter teaches that Permissions 50 database is “accessible by the owner of
the account using an HTML web interface” and an “exemplary structure . . .
is shown in tabular form in Fig. 5.” Id. at 12:12–17 (emphasis added).
We are further not persuaded by Patent Owner’s argument that a
single Permissions 50 database cannot be both the “device database” and
“control database.” PO Resp. 25. We have not construed these terms to
require separate “device” and “control” databases. Supra, Claim
Construction. As such, a single Permissions 50 database can disclose a
“device database” and “control database.”
Additionally, we are not persuaded by Patent Owner’s argument that
the “Acct ID” fields in Lotter’s Permissions database do not disclose a
“device database.” Lotter specifically states that Permissions database “lists
the wireless devices to be monitored.” Ex. 1005, 5:18–19. As discussed, the
literal language of the claim language does not require fields, records, etc.,
and does not exclude the use of lists. Supra, Claim Construction. Moreover
Lotter teaches that Permissions 50 database includes a “unique” Account ID
field “which identifies the account associated with the permission record”
and that this database “would be accessible by the owner of the account
using an HTML web interface.” Ex. 1005, 12:12–14, 19–21, Fig. 5.
Accordingly, we find that Petitioner has demonstrated by a preponderance of
the evidence how Lotter teaches a “device database.”
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Additionally, for this same limitation, Petitioner asserts that Lotter
discloses the step of verifying with a server at the control site that the unique
device identifier in the generated monitor messages received at the control
site is also stored in a device database. Petitioner argues that in Step 140,
Data Gateway 30 located in Data Center 17 receives the data packet(s) and
then checks the content of the data packet(s) in step 162 against
Permissions 50 database located in Data Center 17. Pet. 24–25 (citing
Ex. 1005, 12:60–63). Petitioner further relies on Dr. Brody’s testimony (id.
(citing Ex. 1003 ¶ 67), which provides that
Lotter teaches that the comparison of the monitor message’s data
to the control database’s control data can only occur upon
verification that the monitor message has the same unique device
identifier that is also stored in the device database(s). As
previously noted, Lotter teaches that the monitor message
contains “the unique Device ID of the Mobile Communication
Device 20.” (Ex. 1005, 12:49–55.) Additionally, the data of the
monitor message is compared “against Permissions 50
database,” which contains the control data which determines
whether the desired operation is going to be allowed. (Ex. 1005,
5:23–25, 12:14–21, 12:60–63, 13:10–13.) In order for this
comparison to take place, the device database Permissions
database must contain the unique IDs associated with the
account/device. (Ex. 1005, 11:56–62, 12:14–21.)
Ex. 1003 ¶ 67.
In response, Patent Owner argues that Lotter does not disclose or
suggest any verification of a device identifier before, or as part of, the
automatic “check” of the rules in the Permissions database. See PO
Resp. 31–32 (referring to discussion of claim 9); id. at 21 (citing Ex. 1005,
Figs. 6A–6B, 12:56–63; Ex. 2004 ¶¶ 84–86). Patent Owner adds that Lotter
also does not disclose or suggest that this check is in response to the
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verification recited in claim 1. Id. Patent Owner also argues that the
“primary embodiment” shown in Figures 3A–3O and 7A–7B does not
disclose this “verifying” step because the Activity Monitor at the Data
Center automatically checks new records in the Activity Log against the
Permissions database after the activity has been completed. See PO
Resp. 17.
Based on the complete record, Petitioner’s arguments are persuasive.
Lotter teaches that Permissions 50 database, shown in Figure 5, includes a
“unique account ID which identifies the account associated with the
permissions record” and “next field [that] lists the data services for which
the rules are to be applied, followed by the specific rules as to allow or deny
access to that data service on the . . . Device 20.” Ex. 1005, 12:19–24. In
operation, according to the flowcharts shown in Figures 6A–6B, the Data
Gateway 30 receives a data packet from Data Monitor 21 that includes
collected information such as the “unique Device ID of Mobile
Communications Device 20 . . . and/or contextual content of the data
packet.” Id. at Figs. 6A–6B, 12:60–61. Data Gateway 30 checks this
information against the Permissions 50 database. Id. at 12:60–63.
To perform this “check,” we agree with Petitioner’s position that Data
Gateway verifies the unique Device ID is stored in Permissions 50 database
in order to determine whether to allow or deny access to a data service.
Moreover, even assuming Patent Owner is correct that Lotter may teach this
check occurs “automatically,” (PO Resp. 17; Ex. 2004 ¶ 86), this “check”
would still require Data Gateway 30 to determine whether Permissions 50
database has a specific rule for allowing or denying data service use for a
particular device. See Ex. 1005, 12:19–24, 60–63. We further credit Dr.
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Brody’s testimony that a skilled artisan would understand Lotter to teach
that “[i]n order for this comparison to take place, the device database
Permissions database must contain the unique IDs associated with the
account/device.” Ex. 1003 ¶ 67 (citing Ex. 1005, 11:56–62, 12:14–21).
This testimony is consistent with the structure of Lotter’s Permissions
database and how it operates as disclosed by Lotter. See Ex. 1005, 12:19–
24, 60–63, Fig. 5. Thus, we are persuaded that Petitioner has demonstrated
by a preponderance of the evidence how Lotter teaches this limitation.
Additionally, claim 1 recites “comparing the command identification
data in a monitor message to control data stored in a control database with
the server in response to the unique device identifier in the monitor message
also being stored in the device database.”
For this limitation, Petitioner argues that Lotter’s Permission database
teaches a control database, and that Data Gateway 30 checks the content of
the data packet(s) in Step 162 against Permissions 50 database located in
Data Center 17. Pet. 25 (citing Ex. 1005, 12:60–63). Petitioner further
relies on Dr. Brody’s testimony that
the data of the monitor message is compared “against
Permissions 50 database,” which contains the control data
which determines whether the desired operation is going to be
allowed. (Ex. 1005, 5:23–25, 12:14–21, 12:60–63, 13:10–13.)
In order for this comparison to take place, the Permissions
database must contain a device database, which lists the unique
IDs associated with the account/device. (Ex. 1005, 11:56–62,
12:14–21.)
Ex. 1003 ¶ 69. In response, Patent Owner relies on similar arguments
discussed above with respect to the “verifying” feature of claim 1. PO
Resp. 32 (citing PO Resp., Sections II.B.1.a.i, II.B.1.b.i, II.B.1.d; Ex. 2004
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¶¶ 69–73, 82–86).
Based on the complete record, we agree with Petitioner’s arguments
and reasoning. As discussed, Data Gateway 30 receives a data packet from
Data Monitor 17 that includes a unique Device ID (i.e., unique device
identifier) and contextual information (i.e., command identification
information), which is checked against Permissions 50 database. See
Figs. 6A–6B. Further, we credit Dr. Brody’s testimony that in order for this
comparison to take place, Permissions 50 database must contain rules
associated with an account or device such that Data Gateway 30 can check
whether to allow or deny the requested data service. See Ex. 1003 ¶ 69.
Thus, we are persuaded that Petitioner has demonstrated by a preponderance
of the evidence how Lotter discloses this limitation.
Claim 1 further recites
generating control messages to operate the computer
network communication device with the server in response to
the command identification data in the monitor message failing
to correspond to the control data stored in the control database,
the control messages comprising:

a computer network communication device stop
command generated in response to the command identification
data corresponding to a communication from the computer
network communication device outside prescribed time limits
stored in the control database.
For these limitations, Petitioner argues that Lotter discloses “[i]f the
data request was not authorized (step 163), Data Gateway 30 notifies
(step 164) Mobile Communications Device 20 by sending a message
through Cellular Service Provider 16 to Data Monitor 21 on Mobile
Communications Device 20. In Step 166, Data Monitor 21 cancels the data
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service request.” Pet. 26 (quoting Ex. 1005, 12:63–13:1). Petitioner further
asserts that Patron discloses time-based control policies, and that it would
have been obvious to combine the time-based control data feature of Patron
with Lotter’s disclosed system “to restrict a minor child’s access to
applications during school hours, during homework hours, or late at night
when the child should be in bed.” Pet. 21 (citing Ex. 1003 ¶ 76; Ex. 1006
¶ 13).
Patent Owner responds “Patron discourages the use of its disclosed
systems and methods on a centralized server as would necessarily happen if
Patron were applied to Lotter.” PO Resp. 34 (citing 1006 ¶ 21; Ex. 2004
¶ 140). Patent Owner adds that a skilled artisan “would also understand that
setting such parental controls at a particular IM service is very different from
Lotter, and from the [’]694 Patent claims directed to a remote
‘regulation/support site 20[’] that [‘]is not part of the instant messaging
service, texting service, or other device communicating service.’” Id. (citing
Ex. 1006 ¶ 141; Ex. 1001, 5:7–10).
We are not persuaded by Patent Owner’s arguments that Patron
teaches away or discourages the suggested combination of its prescribed
time limits with a centralized server in Lotter’s monitoring system. A
reference teaches away from a claimed invention if it “criticize[s],
discredit[s], or otherwise discourage[s]” modifying the reference to arrive at
the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
We will not, however, “read into a reference a teaching away from a process
where no such language exists.” DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
As Petitioner points out, Patron explicitly mentions use of a centralized
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server, and states “[a]lternatively, the IM server 64 can act to provide, limit,
and/or inhibit the IM service based on the profile stored in the IM subscriber
profile database 40.” Ex. 1006 ¶ 21. Although Patron expresses some
preference for the use of localized system for scalability to a larger number
of users, this preference does not amount to a teaching away. The mere
disclosure of alternative designs does not teach away. In re Mouttet, 686
F.3d 1322, 1333–34 (Fed. Cir. 2012) (citing Fulton, 391 F.3d at 1201
(quotations omitted). Further, “just because better alternatives exist in the
prior art does not mean that an inferior combination is inapt for obviousness
purposes.” Id. (citation omitted).
Further, we are not persuaded by Patent Owner’s argument that a
skilled artisan would understand that a parental control as taught in Patron
“is very different from Lotter, and from the [’]694 Patent claims directed to
a remote ‘regulation/support site 20[’] that [‘]is not part of the instant
messaging service, texting service, or other device communicating service.’”
PO Resp. 34. Patent Owner’s expert admitted in his cross-examination
testimony that “both Lotter and Patron are directed to the same field of
endeavor” (Ex. 1021, 131:8–11) and “a PHOSITA . . . would understand that
there are benefits to having time-based controls,” as taught by Patron (id. at
134:9–135:24). Thus, we are not persuaded that the teachings of Patron and
Lotter are “very different” such that a skilled artisan would not have found it
obvious to implement time-based controls in Lotter’s monitoring system.
Accordingly, for the foregoing reasons, we determine that Petitioner has
shown by a preponderance of the evidence that claim 1 would have been
obvious over Lotter and Patron.
With respect to claims 2, 4, and 5, Petitioner further provides
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arguments and supporting evidence demonstrating where each limitation is
taught in the references. Pet. 28–30. For example, we agree with Petitioner
that Lotter discloses: (1) an “instant messaging device,” as recited in
dependent claim 2 (Pet. 28 (citing Ex. 1005, 6:2–18)); (2) “a computer
network communication device block command” as recited in claim 4 (id. at
29 (citing Ex. 1005, 12:63–13:1; Ex. 1003 ¶ 79)); and (3) the step of
“generating other control messages” as recited in claim 5 (id. at 29–30
(citing Ex. 1005, 12:60–13:6)). Patent Owner does not present arguments
separate from those discussed above for claims 2, 4, and 5. For these
reasons, we determine Petitioner has shown by a preponderance of the
evidence that claims 2, 4, and 5 would have been obvious over Lotter and
Patron
E. Claims 6 and 7 – Obviousness over Lotter, Patron,
and Walter (Ex. 1007)
Petitioner argues that Lotter, Patron, and Walter teach or suggest all
the limitations of claims 6 and 7. Pet. 30–35. We have reviewed the
Petition, the Patent Owner’s Response, and Petitioner’s Reply, as well as the
evidence discussed in each of those papers, and are persuaded, by a
preponderance of the evidence, that claims 6 and 7 would have been obvious
based on Lotter, Patron, and Walter.
1. Summary of Walter (Ex. 1007)
Walter describes short-range wireless systems having access points
configured to provide a short-range wireless network for communication
with a wireless enabled device within a coverage area of the short-range
wireless network. Ex. 1007, Abstract. A policy server may be
communicatively coupled with the short-range wireless access points to
determine whether the wireless enabled device is located within a designated
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region in the coverage area. Id. Figure 2 is reproduced below.

Figure 2 shows short-range wireless network 200 with wireless
network access points 202 that each provide portions 204 of a wireless
network coverage area. Id. at ¶ 20. Users 208 and 210 may be located
within coverage area portions 204, and thus, receive network transmissions
transmitted from access points 202. Id. Further, boundary 212 defines
boundary zone 214 for policy management, such as network traffic policies
and feature policies. Id. Additionally, network equipment may use data
from access points 202 to determine whether wireless devices are located
within boundary zone 214. Id. at ¶ 22. A device located within boundary
zone 214 may be provided with a policy different from a device located
outside boundary zone 214. Id.
Referring to Figure 6, Walter discloses system 600 with a short-range
wireless network, access points 604, and policy server 608. Ex. 1007 ¶ 28.
Policy server 608 manipulates network equipment to control network traffic
received from wireless device 602. Id. As an example, Walter discloses that
network traffic received from wireless device 602 is allowed to pass to
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external networks when wireless device 602 is located within a boundary
zone, but that network traffic received from wireless device 602 is dropped
or discarded when device 602 is outside of a boundary zone. Id. Walter
further teaches “the policy server may provide a text alert message
indicating that the device is entering a restricted zone or that a certain feature
policy will be enacted.” Id. at ¶ 37.
2. Analysis
Petitioner challenges the patentability of claims 6 and 7 under
35 U.S.C. § 103 based on Lotter, Patron, and Walter. Pet. 30–35. Based on
the complete record, we determine that Petitioner has established by a
preponderance of evidence that claims 6 and 7 would have been obvious
over Lotter, Patron, and Walter. Claims 6 and 7 depend from claims 1 and
5, and for the same reasons discussed above, we are persuaded that
Petitioner has demonstrated by a preponderance of the evidence that Lotter
and Patron disclose the limitations recited in claims 1 and 5.
Claim 6 depends from claim 5 and further recites “the other control
messages disabling use of a predetermined service in response to the monitor
message indicating the computer network communication device is
operating within a predetermined communication network.”
Petitioner relies on Walter’s disclosure of a communication network
with a policy server that implements different policies based on whether a
device is inside or outside a particular area. Pet. 31. Petitioner further
asserts that Walter teaches “other control messages” because “‘[t]he policy
server manipulates or deactivates camera features on a camera enabled
cellular telephone based on its location within the coverage area.” Id. at 33
(citing Ex. 1007 ¶ 29). Petitioner adds that Walter teaches that the alleged
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“other control messages” disable use “[b]ased on the location of the
wireless device or its location within or outside of the boundary zone.”
See id. at 33 (citing Ex. 1007 ¶ 16). Petitioner further reasons that it would
have been obvious to “combine the network-based control data feature of
Walter with the communication device control system disclosed in Lotter” to
have “different policy/control data for different predetermined networks at
different locations because the policy controls on one network location, for
example a school, would vary compared to another location, for example
and office building.” Id. at 32 (citing Ex. 1007 ¶ 24; Ex. 1003 ¶ 84).
In response, Patent Owner argues that a skilled artisan would not
understand Lotter’s authorization message, relied upon by Petitioner for
claim 5, as “disabling use of a predetermined service” because this “other
control message” authorizes the requested data service use. PO Resp. 36.
Patent Owner further argues that one of ordinary skill in the art would not
have been motivated to combine Walter’s small, short-range wireless
network with Lotter’s larger centralized monitoring system. Id. at 37 (citing
Ex. 2004 ¶¶ 147–148).
Upon review of the entire record, Petitioner’s position is persuasive.
Although Petitioner relies on Lotter’s authorization messages as disclosing
“other control messages” recited in Claim 5, for claim 6, Petitioner further
relies on Walter to teach this limitation. Pet. 33; Reply 11–12. Page 33 of
the Petition states “Walter also discloses ‘the other control messages
disabling use of a predetermined service.’” Specifically, Petitioner cites
to Walter’s disclosure that the policy server “manipulates or deactivates
camera features on a camera enabled cellular telephone based on its location
within the coverage area.” Pet. 33 (citing Ex. 1007 ¶ 29). Furthermore, Dr.
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Brody testifies that
Walter discloses providing different policies to wireless devices
based on proximity to the predetermined communication
network. (Ex. 1007 ¶¶ 20–23.) The policies can, for example,
be used to disable certain features of the wireless device or
prevent the wireless device from communication over the
network. (Ex. 1007 ¶¶ 28–29.)
Ex. 1003 ¶ 82.
Additionally, Dr. Brody testifies that Walter discloses benefits of
having “different policy/control data for different predetermined networks at
different locations because the policy controls on one network location, for
example a school, would vary compared to another location, for example
and office building.” Pet. 32 (citing Ex. 1007 ¶ 24; Ex. 1003 ¶ 84). This
testimony is consistent with Walter’s disclosure that different
networks/locations may implement specific policies such as the disabling of
gaming features within classrooms, disabling cameras near restrooms, and
activating vibration or silent modes within theaters. See Ex. 1007 ¶ 36.
Furthermore, we do not agree with Dr. Konchitsky’s position that a
“PHOSITA would not seek to combine the teachings of de-centralized
control of mobile devices with small networks of wireless access points,
with Lotter. Such teachings are contrary to the purposes of, and would not
be understood to operate with, Lotter.” Ex. 2004 ¶ 148. First, Patent Owner
reads the purposes of Lotter and Walter too narrowly. As Petitioner
discerns, Lotter and Walter are more generally directed to systems and
methods for regulating the network and data service use of electronic
devices such as mobile communication devices. Ex. 1005, Abstract, 1:58–
2:12; Ex. 1007 ¶¶ 12, 16. Second, we do not agree that the differences
between Lotter’s and Walter’s systems are so great as to render their
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combination “contrary” or inoperable. Dr. Konchitsky observes Walter’s
policies may be imposed on a wireless device “regardless” of what is already
in Lotter’s Permissions database. Ex. 2004 ¶ 148. Assuming Dr.
Konchitsky’s reading of Walter to be correct, we are not persuaded that
adding another category of data service use restriction/rule/policy to Lotter’s
system is incompatible with or contrary to Lotter’s general purpose of
regulating data service use by mobile communication devices. Rather, the
combination with a Walter-type policy provides the added feature of
“different policy/control data for different predetermined networks at
different locations because the policy controls on one network location, for
example a school, would vary compared to another location, for example
and office building” as explained by Dr. Brody. Ex. 1003 ¶ 84.
Furthermore, Dr. Konchitsky’s statement that Walter’s teachings “would not
be understood to operate with, Lotter” is not supported by the record with
any evidence or technical reasoning as to why a person of ordinary skill in
the art would determine that a combination of Lotter’s and Walter’s
teachings “would not operate.” Thus, with regard to this statement, Dr.
Konchitsky’s testimony is entitled to little to no weight. See, e.g., Yorkey v.
Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has
discretion to give more weight to one item of evidence over another “unless
no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to
weigh the declarations and conclude that the lack of factual corroboration
warrants discounting the opinions expressed in the declarations.”).
Accordingly, we conclude that Petitioner has demonstrated by a
preponderance of the evidence that claim 6 would have been obvious over
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Lotter, Patron, and Walter.
Claim 7 depends from claim 6, and recites “the other control messages
delivering predetermined content in response to the monitor message
indicating the computer network communication device is operating within a
predetermined communication network.”
For this limitation, Petitioner relies on Walter’s disclosure that
“[a] policy server may communicate with feature policy enabled
devices utilizing voice alert messages and text alert messages.
For example, the policy server may provide a text alert message
indicating that the device is entering a restricted zone or that a
certain feature policy will be enacted.”
Pet. 34 (citing Ex. 1007 ¶ 37). In response, Patent Owner argues that
Petitioner relies on the “alert messages” of Lotter’s Figure 7A for claims 5
and 6, and that these “alert messages” are not sent until after the activity has
been completed.
Based on the complete record, Petitioner’s arguments are persuasive.
Page 34 of the Petition states
Walter also discloses ‘the other control messages delivering
predetermined content’” in the form of the voice alert messages
or text alert messages described in paragraph 37 of Walter (Ex.
1007). Walter teaches these alerts indicate that “the device is
entering a restricted zone or that a certain feature policy will be
enacted” that may be “[b]ased on the location of the wireless
device or its location within or outside of the boundary zone. Ex.
1007 ¶¶ 16, 37.
We agree with Petitioner that this disclosure sufficiently teaches the claimed
limitation. Additionally, for the same reasons discussed with regard to claim
6, we find Petitioner has articulated reasoning with rationale underpinning
supporting the combination of Lotter, Patron, and Walter. Accordingly,
weconclude that Petitioner has demonstrated by the preponderance of the
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evidence that claim 7 would have been obvious over Lotter, Patron, and
Walter.
F. Claims 1, 2, and 4–7 – Obviousness over Adams (Ex. 1004) and Patron
Petitioner argues claims 1, 2, and 4–7 would have been obvious under
35 U.S.C. § 103 over Adams and Patron. Pet. 42–52. As explained below,
we have considered the arguments and evidence presented by both parties,
and we determine Petitioner has shown by a preponderance of the evidence
that claims 1, 2, and 4–7 are unpatentable over Adams and Patron.
1. Summary of Adams
Adams is directed to systems and methods of controlling an electronic
device through “owner application control.” Ex. 1004, Abstract. Adams
explains that “[o]wner application control information is stored on the
electronic device and/or one or more remote servers” and “is consulted to
determine if one or more required applications are available for execution on
the electronic device.” Id. Figure 1 is reproduced below.

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Figure 1 shows communication system 10 in which electronic devices such
as computer system 28 and mobile device 22 are used. Id. at ¶ 15. Adams
teaches that in order to maintain control over the use of computer system 28
or mobile device 22, an owner may establish local settings directly on the
device. Id. at ¶ 24. In other instances, owner control information such as
owner application control information can reside on a remote server rather
than on the electronic device. Id. at ¶ 133.
As an example, Adams describes in Figure 2 a system for inserting
owner information and owner control information onto an electronic device.
Figure 2 is reproduced below.

The system in Figure 2 includes electronic device 210, owner information
store 212, and owner control information store 220. Id. at ¶ 35. Owner
information store 212 stores information such as an owner name or other
identification information, which identifies an owner of electronic
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device 210. Id. Owner control information store 214 stores information that
is used to control the operation of electronic device 210. Id.
In Figure 7, reproduced below, Adams shows mobile device 500 as a
two-way communication device having at least voice and data
communication capabilities. Ex. 1004 ¶ 135.

Adams teaches mobile device 500 may communicate with other
computer systems on the Internet as a data messaging device, a two-way
pager, a cellular telephone with data messaging capabilities, a wireless
Internet appliance, or a data communication device (with or without
telephony capabilities). Id. Mobile device 500 includes transceiver 511,
microprocessor 538, display 522, and non-volatile memory 524. Id. at
¶ 136. Within non-volatile memory 524, the mobile device 500 includes a
plurality of software modules 524A–524N that can be executed by the
microprocessor 538 (and/or the DSP 520), including a voice communication
module 524A, a data communication module 524B, and a plurality of other
operational modules 524N for carrying out a plurality of other functions.
Id. at ¶ 136. Operating system software used by the microprocessor 538
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preferably is stored in a persistent store such as the non-volatile memory
524. Id. at ¶ 146. The non-volatile memory 524 may also include data
stores for owner information and owner control information. Id.
2. Analysis
a. Claim 1
Below we discuss independent claim 1.
Claim 1 is directed to a method for controlling operation of a
computer network communication device that communicates over a
computer network that includes the steps of:
generating, with a computer network communication
device, monitor messages having a unique device identifier and
command identification data; [and]
sending the generated monitor messages to a control site
in background to a communication session between the
computer network communication device and a communication
service.
Petitioner asserts Adams teaches or suggests this limitation because Adams
teaches an application loader of a mobile device can transmit a request (e.g.,
monitor message) to a remote server to determine whether the to-be installed
application has been designated as excluded. Pet. 43–44 (citing Ex. 1004,
Abstract, ¶¶ 91, 118). Petitioner further relies on the testimony of Dr. Brody
(Pet. 43), who states a skilled artisan would have known that Adams’s
request message would contain at least a unique device ID because Adams’s
system “requires some information in the monitor message that identifies the
device in order to facilitate association with a particular device’s policy
information.” Ex. 1003 ¶ 106. Petitioner argues Adams discloses a “unique
device identifier” in the form of owner information and owner control
information. Pet. 43.
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Petitioner adds that Adams refers to “owner information” broadly as
source authentication information, and a person having ordinary skill in the
art would have understood that source authentication information would
include information that uniquely identifies a device. Reply 14. Petitioner
argues that in paragraph 122, Adams discloses an “individual device
identifier” that is used by a server to determine appropriate updates for the
specific device. Reply 15; Tr. 46:12–23. Petitioner further explains that
Adams teaches both associating control data with a “particular electronic
device” and/or “device type,” and that Petitioner relies on the disclosure of
the former for a “unique device identifier.” Tr. 43:17–44:2 (citing Adams
¶¶ 102, 118, 122).
Patent Owner argues that Adams’s owner information and owner
control information do not disclose a unique device identifier. PO Resp. 41.
With respect to “owner information,” Patent Owner asserts a skilled artisan
would have understood that information identifying the owner of a device is
different from that which identifies the device. Id. at 41–42.
Upon review of the complete record, we agree with Petitioner’s
argument that Adams’s “owner information,” described in paragraph 45 of
Adams (Ex. 1004), includes the “individual device identifier,” disclosed in
paragraph 122 of Adams. Paragraph 45 teaches broadly that “owner
information store 36” “stores information such as owner name or other
identification . . . and source authentication information.” Emphasis added.
Although paragraph 122 does not expressly refer to “owner information,”
paragraph 122 teaches that the server determines the “list appropriate for the
requested device based upon device type and/or an individual device
identifier.” In other words, the server identifies the querying device based
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on (1) device type or (2) an individual device identifier. Thus, we find
Petitioner’s position persuasive that “other identification” or “source
authentication information,” described in paragraph 45 as “owner
information,” would include an “individual device identifier” taught in
paragraph 122. This reading is consistent with Dr. Konchitsky’s testimony
in which he agrees that paragraph 122 discloses associating policy
information with a particular electronic device. Tr. 83:22–84:2.
Accordingly, we are not persuaded by Patent Owner’s argument that
Adams’s “owner information” and “individual device identifier” are separate
distinct features that Petitioner relies on for the same “unique device
identifier” recited in claim 1.
Next, Patent Owner argues Adams does not disclose a “monitor
message” because Adams’s request to a remote server does not contain a
“unique device identifier.” PO Resp. 43–44. Patent Owner argues that
paragraph 101 of Adams teaches “owner control information” may be stored
in a remote database for owned devices, but does not disclose a unique
device identifier or owner information. Id. at 42–44. Patent Owner adds
that paragraph 118 does not require a unique identifier associated with
owner control information and merely discloses that policy information may
be stored remotely for delivery to a particular device. Id. at 44–45.
Patent Owner further asserts that paragraph 119 and Figure 9 provide
the only teaching in Adams of the user interface where “owner control
information” is placed into the “control database.” PO Resp. 49–50. Patent
Owner argues Figure 9 and paragraph 119 only describe the configuration of
policy information for “groups of electronic device by device type,” and
that a person having ordinary skill in the art would not understand this same
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disclosure as teaching the configuration of policy information for a
particular device with a unique device identifier. Id. at 45–47.
In its Reply, Petitioner responds that Adams explicitly teaches policy
information can be stored remotely in a server and queried by the server
upon request from the device. Reply 15; see Ex. 1004 ¶¶ 91, 118. With
respect to Figure 9, Petitioner further asserts that Adams teaches “FIG. 9
depicts one possible user interface” and that the absence of an exemplary
figure for a different interface “does not negate Adams’ express teachings
that the remote server can determine the appropriate policy information for a
‘particular electronic device’ based upon an ‘individual device identifier.’”
Id. at 17–18.
Based on the entire record, we agree with Petitioner’s position. As
discussed above, Adams discloses that policy information stored at a remote
server can be associated with a particular device using an “individual device
identifier.” Ex. 1004 ¶¶ 118, 122. Paragraph 91 further teaches that the
remote server can consult a stored excluded list to determine whether the
“to-be installed application has been designated as excluded . . . [and] the
remote server would transmit to the device either an approval or a denial as
appropriate.” In discussing this disclosure, Petitioner’s declarant, Dr. Brody
testified that a “PHOSITA would have understood that in order for the
monitor message to determine if the requested operation is allowed for ‘a
particular electronic device,’ the monitor message must contain information
that uniquely identifies the device, i.e., the owner information.” Ex. 1003
¶ 92. The cross-examination testimony of Dr. Konchitsky is consistent with
Dr. Brody’s reading of Adams. In particular, as Petitioner notes, Dr.
Konchitsky agrees that “[i]f the policy information is stored on a remote
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server in association with a particular electronic device, the query would
have to include some information to identify the particular electronic
device.” Tr. 48:9–12 (emphasis added). We are persuaded by Petitioner’s
position that “some information to identify the particular electronic device”
includes owner information such as an individual device identifier described
in Adams. Further, we agree with Petitioner that the disclosure in paragraph
119 and Figure 9 of Adams describes a non-exhaustive example of a user
interface, which does not in itself detract from Adams’s disclosure of
associating policy information with a particular device instead of device
type. Thus, based on the complete record, Petitioner’s arguments are
persuasive with regard to these limitations recited in claim 1.
Claim 1 further recites the step of “verifying with a server at the
control site that the unique device identifier in the generated monitor
messages received at the control site is also stored in a device database.”
The Petitioner argues Adams’s disclosure of an owner control
information database and remote server teaches or suggests this limitation.
Specifically, Petitioner asserts Adams’s disclosed owner control information
database contains a listing of devices with control data, which, thus, teaches
or suggests both a control database and device database. Pet. 45 (citing
Ex. 1004 ¶¶ 101, 118; Ex. 1003 ¶ 110). Petitioner adds that Adams’s
“remote server maintains an owner control information database, i.e., a
control database, governing the operation of the electronic device by using
control lists, ‘such as the software application lists and the application
operation restrictions.’” Pet. 44–45 (citing Ex. 1004 ¶ 101).
For this limitation, Patent Owner also applies its arguments related to
the “unique device identifier” and “monitor message” limitations discussed
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above. See PO Resp. 41, 42 (referring to limitations 1[c] and 1[a]–[d]). For
the reasons discussed above, Patent Owner’s arguments are not persuasive.
Additionally, Patent Owner asserts that neither Adams’s owner
information store nor owner control information store discloses a “device
database” and a “control database” as recited in claim 1. PO Resp. 47. With
respect to the owner information store, Patent Owner argues that Adams
does not disclose its owner information store 36 has the structure of a
database. PO Resp. 48. Patent Owner further argues that owner information
store 36 is defined in Adams as local memory within the mobile device, and
Adams does not disclose that the remote server performs a comparison “to
anything in this ‘owner information store 36’ during operation of the mobile
device.” Id. at 48. Patent Owner also argues that Adams teaches “owner
information store 60” is used to insert “owner information” onto the mobile
device, and Adams does not teach “owner information store 60” is
operatively coupled to the device or a remote server during the operation of
the mobile device. Id. at 48–49. In addition, Patent Owner asserts that
Adams’s owner control information store does not teach a “device database”
and a “control database” because this claim language requires two separate
databases, and excludes a list of devices. Id. at 49–54.
Based on the complete record, we find that Adams’s owner
information store and owner control information store each disclose a
database because Adams teaches that each store allows access and retrieval
of information. Ex. 1004 ¶ 45 (“a user of the mobile device 30 may be able
to retrieve data from the stores 34, 36”); id. at ¶ 54 (“owner information is
retrieved from the owner information store 60”; id. at ¶ 101 (“remote server
can maintain a device data store, that may be in the form of a database, that
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stores the control information, including application control information,
associated with owned devices.”). As discussed, we conclude the term
“database” means “a collection of information or data that is structured or
organized to allow access and retrieval of the information by a computer.”
Supra, Claim Construction. Further, we are not persuaded by Patent
Owner’s arguments regarding the location of Adams’s owner information
store on the mobile device. See PO Resp. 48–49. The language of claim 1
does not dictate a specific location for the recited device database.
We also agree with Petitioner that Adams’s owner control
information store discloses both a “device database” and “control database.”
First, we have not construed these terms to require separate “device” and
“control” databases. Supra, Claim Construction. As such, a single owner
control information store can disclose a “device database” and “control
database.” Second, the owner control information store includes a database
of devices as Adams expressly teaches that the “remote server can maintain
a device data store, that may be in the form of a database, that stores the
control information, including application control information, associated
with owned devices.” Ex. 1004 ¶ 101 (emphasis added).
Additionally, with regard to this same limitation, Patent Owner asserts
that Adams does not disclose verifying with a server that the unique device
identifier in the generated monitor messages received at the control site is
also stored in a device database. PO Resp. 52. Patent Owner argues Adams
teaches the mobile device performs the verification because it determines if
“owner information” exists on the device during operation. Id. (citing
Ex. 1004, Fig. 6, ¶ 123; Ex. 2004 ¶¶164–67, 206).
Petitioner counters that Figure 6 of Adams teaches that upon the
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occurrence of an operation request (step 110), the mobile device must
perform the operation of verifying that owner information exists in the
owner information store (step 112). Reply 20 (citing Ex. 1004 ¶¶ 123–124,
Fig. 6). Petitioner argues that “[t]his operation must occur before the remote
server can determine whether the owner control information permits the
requested operation to occur on the mobile device (steps 114 and 118).” Id.
(citing Ex. 1004 ¶¶ 118, 124–25, Fig. 6).
Based on the disclosure of Figure 6 and Adams in its entirety, we are
persuaded that Petitioner has demonstrated by a preponderance of the
evidence how Adams discloses this “verifying” step. First, we find that
Figure 6 supports Petitioner’s position that prior to consulting control
information in step 114, the system determines whether owner information
(e.g., individual device identifier) exists in step 112. Ex. 1004, Fig. 6. As
Petitioner observes, the mobile device performs the operation of verifying
that owner information exists in the owner information store (step 112).
Reply 20 (citing Ex. 1004 ¶¶ 123–124, Fig. 6). Second, we find that the
teachings of Figure 6 apply to Adams’s remote server(s). In the paragraph
following the section describing Figure 6, Adams expressly states that there
are “[m]any variations on the systems and methods” and explicitly includes,
“[a]s an example, a system of owner application control of an electronic
device . . . [where] [t]he owner control information store can reside on the
controlled device or on one or more remote servers . . . .” Ex. 1004 ¶ 126.
Thus, we view Figure 6 as a general flow diagram showing how Adams’s
system operates. Ex. 1004 ¶ 123.
This is consistent with the overall disclosure in Adams, which
provides, for example, that
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[a] remote server can be used to store owner control information
associated with one or more electronic devices, or groups of
devices. The remote server can communicate with the one or
more devices via any suitable communication channel (e.g. wired
or wireless connection). The remote server can use owner
control information insertion tools as described herein.
Id. at ¶ 120. Further, as disclosed in paragraph 133:
[O]wner control information such as owner application control
information can reside on a remote server rather than on the
electronic device. For instance, one or more of a required,
authorized and/or excluded application list can reside on a
remote server. In such instances, an operation request such as
application installation or device initialization can generate a
query to the remote server where such lists reside. The proper
list can be consulted and an appropriate response returned to the
inquiring device.
Accordingly, we find that Petitioner has demonstrated by a preponderance of
the evidence how Adams discloses “verifying with a server at the control
site that the unique device identifier in the generated monitor messages
received at the control site is also stored in a device database” as recited in
claim 1.
Claim 1 further requires the step of “comparing the command
identification data in a monitor message to control data stored in a control
database with the server in response to the unique device identifier in the
monitor message also being stored in the device database.”
For this limitation, Petitioner argues Adams discloses that a remote
server compares, upon a request or query, the data in a request message to
control data stored in the owner control information database (i.e., the
control database). Pet. 46 (citing Ex. 1004 ¶¶ 91, 118; Ex. 1003 ¶ 112).
Petitioner asserts this comparison occurs in response to the request
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containing unique owner information (unique device identifier) that is also
stored in the owner information store and/or owner control database’s list of
devices (i.e., the device database). Pet. 46 (citing Ex. 1004 ¶¶ 91, 118, 123–
25).
Patent Owner further argues that Adams’s owner control information
store does not perform “both of the comparisons of claim 1 – the initial
verification that the unique device identifier ‘is also stored in’ the ‘device
database’ (element 1[c]), and the control data comparison that occurs ‘in
response to’ the verification (element 1[d]).” PO Resp. 54.
We do not agree with Patent Owner. First, as discussed above, we
agree with Petitioner that Adams teaches the verifying step recited in
claim 1. Second, paragraph 118 of Adams teaches that when a remote server
receives a request, the remote server can consult an excluded list and
transmit to the device either an approval or denial as appropriate. Ex. 1004
¶ 118. Further, we find that Adams’s “comparison” of the received request
with the excluded list is accomplished “in response to the unique device
identifier in the monitor message also being stored in the device database”
because Adams teaches that the system checks if owner information exists at
Step 112 before continuing to Step 114 (determining if owner control
information exist) and Step 118 (whether the requested operation is
permitted). Id. at ¶¶ 123–125. Again, based on the disclosure of Figure 6
and Adams in its entirety, we find that the flow diagram of Figure 6 and the
accompanying discussion is applicable to the operation of Adams’s remote
server. Thus, we are persuaded that Petitioner has demonstrated by a
preponderance of the evidence how Adams teaches this limitation.
Claim 1 also recites the step of:
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generating control messages to operate the computer
network communication device with the server in response to
the command identification data in the monitor message failing
to correspond to the control data stored in the control database,
the control messages comprising:
a computer network communication device stop
command generated in response to the command identification
data corresponding to a communication from the computer
network communication device outside prescribed time limits
stored in the control database.
For these limitations, Petitioner asserts Adams discloses an approval
control message, or a denial control message, i.e., a stop command. Pet. 46–
47 (citing Ex. 1004 ¶¶ 91, 129; Ex. 1003 ¶ 114). Petitioner adds that the
stop command is sent when a requested application operation is not allowed
by a control database. Id. at 46. Petitioner further relies on Patron’s
disclosure of time-based controls and argues that a combination of Patron
and Adams would have been obvious to a person of ordinary skill in the art
because “time-based control data could be used to restrict a minor child’s
access to applications during school hours, during homework hours, or late
at night when the child should be in bed.” Pet. 49 (citing Ex. 1003 ¶ 118).
Patent Owner further asserts that Patron discourages the use of its
systems and methods on Adams’s centralized server. PO Resp. 55–56.
Patent Owner argues that a skilled artisan “would also understand that
setting such parental controls at a particular IM service is very different from
Adams’s disclosure of preventing or allowing the owner’s electronic devices
to operate depending on whether or not required applications have been
placed onto the electronic device.” Id. Patent Owner adds that Adams does
not disclose or suggest the need for, or desirability of, providing this owner
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application control based on any communication from a mobile device being
“outside prescribed time limits.” Id. at 56.
This argument is not persuasive. Patron explicitly mentions use of a
centralized server, and states “[a]lternatively, the IM server 64 can act to
provide, limit and/or inhibit the IM service based on the profile stored in the
IM subscriber profile database 40.” Ex. 1006 ¶ 21. Although Patron
expresses some preference for the use of localized system for scalability to a
larger number of users, this preference does not amount to a teaching away.
The mere disclosure of alternative designs does not teach away. In re
Mouttet, 686 F.3d at 1333–34 (citing Fulton, 391 F.3d at 1201 (quotations
omitted). Accordingly, we conclude that Petitioner has demonstrated by a
preponderance of the evidence that claim 1 of the ’694 patent is unpatentable
over Adams and Patron.
3. Claims 2, 5, and 7
Additionally, upon consideration of the Petition’s analysis and
supporting evidence, the Patent Owner’s Response, Petitioner’s Reply, and
the evidence and arguments presented, we are persuaded that Petitioner has
shown, by a preponderance of the evidence that claims 2, 5, and 7 would
have been obvious over Adams and Patron. We agree with Petitioner’s
analysis of Adams and Patron, and adopt Petitioner’s reasoning for this
Decision. Pet. 49–52. For example, we agree that Adams discloses an
“instant messaging device” (Ex. 1004 ¶ 17) as recited in claim 2; approval
control messages and denial control messages as “other control messages”
(id. at ¶ 91) as required in claim 5; and error messages as “predetermined
content” (id. at ¶¶ 124–25) as required in claim 7.
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4. Claim 4
Claim 4 recites the “control messages further comprising: a computer
network communication device block command generated in response to the
command identification corresponding to a data source having a block rule
stored in the control database in association with the data source.”
With respect to dependent claim 4, Patent Owner argues that
Petitioner has not established that Adams discloses a “block rule” or a
“block command” because Petitioner already relies on Adams’s denial
control message for the “stop command” recited claim 1, and, therefore,
must rely on Adams’s approval command for the “block command” recited
in dependent claim 4. PO Resp. 57. Petitioner responds that it cites Adams
“denial control message” only for claim 4’s “block command generated in
response to . . . a data source having a block rule” and cites Adams in view
of Patron for teaching the separate “stop command” of claim 1. Reply 24.
Based on the complete record, we agree with Petitioner’s position.
The Petition states that “Adams does not explicitly discuss transmitting a
stop command in response to a communication message occurring outside of
prescribed time limits,” but “it would have been obvious to a person of
ordinary skill in the art to add Patron’s time-based control data to the control
data used in the communication device control system disclosed in Adams.”
Pet. 48. Thus, we understand Petitioner to rely on Patron’s time-limit
teachings for the “stop command” recited in claim 1. Additionally, the
Petition relies on Adams’s disclosure that a “requested operation is only
executed if the requested operation is determined to be allowed for the
application.” Pet. 50 (citing Ex. 1004 ¶ 129). In the case of a denial, Adams
teaches that a remote server can “transmit to the device either an approval or
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a denial as appropriate.” Ex. 1004 ¶ 91 (emphasis added). We conclude
that Petitioner has demonstrated by a preponderance of the evidence how the
combination of Adams and Patron teaches the recited “block command” and
“block rule” in claim 4. Further, based on the complete record, we are
persuaded that Petitioner has demonstrated by a preponderance of the
evidence how the combination of Adams and Patron renders claim 4
obvious.
5. Claim 6
Claim 6 depends from claim 5, and further recites “the other control
messages disabling use of a predetermined service in response to the monitor
message indicating the computer network communication device is
operating within a predetermined communication network.”
For this limitation, Patent Owner argues again that the Petition relies
on Adams’s approval control messages as “other control messages,” because
Petitioner already relies on the denial control messages for the “stop
command” recited in claim 1. PO Resp. 58. This argument is unpersuasive
as the Petition relies on Patron combined with Adams for the “stop
command” limitation of claim 1. Pet. 48.
Next, Patent Owner argues that a skilled artisan would not consider
“operating within a predetermined network” to be taught by the use of a
firewall in Adams. Specifically, Patent Owner relies on Dr. Konchitsky’s
testimony that “there may be multiple different ‘communication network[s]’
behind a firewall.” PO Resp. 58–59 (citing Ex. 2004 ¶¶ 233–234).
In the Petition, Petitioner asserts that Adams provides an example of
restricting a device’s operation of certain applications based on whether the
device is operating inside or outside of a firewall. Pet. 51–52 (citing
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Ex. 1004 ¶¶ 29–31). Petitioner argues that the firewall provides a boundary
that defines a “predetermined communication network.” Id.
We agree with Petitioner’s position. Figure 1 of Adams shows a
“corporate LAN” separated from a “WAN” by firewall 24. Ex. 1004 ¶ 17,
Fig. 1. Adams further teaches that “even if the applications are required or
allowed on the device . . . , the owner may want to control functionality”
based on whether the application is allowed to open network connections
inside/outside of the firewall. Id. at ¶¶ 29–31. As such, we find that the use
of a firewall defines a network, such as a LAN, from another network (e.g.,
WAN), and that this sufficiently discloses a predetermined communication
network. Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claim 6 of the ’694 patent would have
been obvious over Adams and Patron.
G. Petitioner’s Motion to Exclude
Petitioner filed a Motion to Exclude certain evidence. Paper 32 (“Pet.
Mot. Exclude”). Patent Owner filed an Opposition to Petitioner’s Motion to
Exclude (Paper 39, “PO Exclude Opp.”), and Petitioner filed a Reply to
Patent Owner’s Opposition (Paper 43, “Pet. Exclude Reply”). In particular,
Petitioner moves to exclude Patent Owner’s exhibits, as discussed below.
1. Secondary Consideration Charts (Exhibits 2080–2081)
Petitioner argues that the charts pertaining to secondary considerations
are not relevant to this proceeding because each deal with a patent that is not
at issue in this proceeding. Exhibit 2080 is related to U.S. Patent
No. 7,292,870 B2, which is the subject matter of IPR2014-01507, and
Exhibit 2081 is U.S. Patent No. 7,894,837 B2, which is the subject matter of
IPR2014-01506. Patent Owner states that it does not rely upon Exhibits
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2080 and 2081 for this proceeding, and does not oppose Petitioner’s request
to exclude Exhibits 2080 and 2081 in the instant case. PO Exclude Opp. 2.
Accordingly, the evidence presented regarding secondary considerations
related to patents involved in IPR2015-01506 and IPR2015-01507 do not
have any tendency to make a fact more or less probable than it would be
without the evidence in determining patentability of claims 1, 2, 5, and 7 of
the ’694 patent. We grant Petitioner’s motion to exclude Exhibits 2080–
2081.
2. Dr. Konchitsky’s Bournemouth University Ph.D. Dissertation
(Exhibit 2084) and Dr. Konchitsky’s Bournemouth University
Master’s Thesis (Exhibit 2090)
Petitioner argues that Exhibit 2084 and Exhibit 2090 are inadmissible
because Patent Owner failed to file an English translation with an affidavit
attesting to the accuracy of the translation pursuant to 37 C.F.R. § 42.63(b).7
Pet. Mot. Exclude 1–2, 4. Rule 42.63(b) provides that “[w]hen a party relies
on a document or is required to produce a document in a language other than
English, a translation of the document into English and an affidavit attesting
to the accuracy of the translation must be filed with the document.”
Patent Owner does not dispute that (1) Exhibit 2084 and Exhibit 2090
are written in Hebrew; and (2) no English translation has been provided.
Rather, Patent Owner argues that Rule 42.63(b) should not apply in
circumstances where the substance of the document in a foreign language is
not relied upon. PO Exclude Opp. 3, 5–6. Alternatively, Patent Owner
argues that we should waive the certified translation in these circumstances

7 Petitioner filed its objections to Exhibit 2084 and Exhibit 2090 within the
prescribed time limit provided under Rule 42.64(b)(1). Paper 29.
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in the interest of a just, speedy and inexpensive resolution of this
proceeding. Id.
Based on the complete record, we are not persuaded by Patent
Owner’s arguments that we should set aside the requirements of
Rule 42.63(b). For example, Patent Owner argues that the “substance” of
Exhibit 2084 is not at issue because the “entire point of Exhibit 2084” is that
it is a Ph.D. dissertation written in the Hebrew language. PO Exclude
Opp. 3. However, without a certified translation, we cannot confirm that
Exhibit 2084 contains Dr. Konchitsky’s Ph.D. dissertation in Hebrew, or, for
example, that the substance of the document is not at issue. Moreover, we
cannot agree with Patent Owner that Exhibit 2084 is “indisputably
authenticated,” as we cannot ascertain the contents of the document to
determine authenticity. See id.
Additionally, based on the facts of this case, Patent Owner has not
explained how waiver of Rule 42.63(b) would promote a just, speedy and
inexpensive resolution of the proceeding. Providing a certified translation of
a foreign language document allows each party a fair opportunity to develop
its respective positions based on a full understanding of the record.
Generally, the development of a clear and complete record promotes the
interests of a just, speedy and inexpensive resolution. In the instance of a
missing translation, the record may lack clarity or completeness, which in
itself incurs expenditure of resources on issues that could have been avoided
altogether. Accordingly, based on the totality of the facts, we do not waive
Rule 42.63(b) for Exhibit 2084 and Exhibit 2090. Petitioner’s Motion to
Exclude Exhibit 2084 and Exhibit 2090 is granted.
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3. Dr. Konchitsky’s Bournemouth University Ph.D. Transcript
(Exhibit 2085)
Petitioner argues that Patent Owner has not established the
authenticity of Exhibit 2085 in order to establish that Dr. Konchitsky
obtained a genuine Ph.D. from Bournemouth University. Pet. Mot. to
Exclude 2. Exhibit 2085 purportedly shows Dr. Konchitsky’s Bournemouth
University Ph.D. transcript.
Arguably, the Ph.D. transcript allegedly shown in Exhibit 2085 may
not be sufficient to establish that Dr. Konchitsky obtained a genuine Ph.D.;
however, as discussed above, Dr. Konchitsky’s education and experience
qualify him to provide his opinion on the subject matter of this proceeding
even without taking into consideration whether Dr. Konchitsky has a Ph.D.
from Bournemouth University Extension through Ramat Gan College in
Israel. Further, Petitioner has withdrawn any allegation that Dr. Konchitsky
himself engaged in forgery or perjury related to his Ph.D. Tr. 5:8–22. Thus,
for purposes of this Decision, the authenticity of Exhibit 2085 is moot.
4. Dr. Konchitsky’s Bournemouth University Ph.D. Payment Receipts
(Exhibit 2087) and Dr. Konchitsky’s Master’s Payment Receipts
(Exhibit 2091)
Petitioner has withdrawn its motion to exclude Exhibits 2087 and
2091. Pet. Exclude Reply 3; Tr. 11:1–4. We treat this request as moot.
5. Statement of Mr. Cohen (Exhibit 2092); November 4, 2002 Letter
from Marilyn Russell on Bournemouth University Letterhead
(Exhibit 2093); December 26, 2002 Letter of Professor Meidan on
Bournemouth University Letterhead (Exhibit 2094); October 18,
2015 Letter of Professor Meidan (Exhibit 2095); Statement of Gili
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Dror (Exhibit 2096); Statement of Simon Perez (Exhibit 2097);
December 21, 2004 Letter of Recommendation by Stanford
University Professor Lusignan (Exhibit 2102)
Petitioner presents several arguments challenging the admissibility of
Exhibits 2092–2097 and 2102. Pet. Mot. to Exclude 5–14. Petitioner’s
motion to exclude these exhibits is dismissed as moot because this Decision
does not rely on Exhibits 2092–2097 and 2102.
Further, we note that in evaluating the credibility of Dr. Konchitsky’s
testimony, we considered the circumstances of how Patent Owner filed an
incorrect translation of Exhibit 2092, which is originally in a foreign
language and purported to be a statement by Mr. Haim Cohen. Supra,
sect. II(A)(iii); see Ex. 1061 (certified translation of Exhibit 2092 filed by
Petitioner). Our discussion of Exhibit 2092 does not rely on the substance of
Ex. 2092 to determine Dr. Konchitsky’s credibility, but solely considers Dr.
Konchitsky’s testimony in light of the circumstances Patent Owner asserts
led to a “mismatched” Exhibit 2092 with an incorrect translation.
Accordingly, we dismiss Petitioner’s Motion to Exclude Exhibits
2092–2097 and 2102 as moot.
H. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude. Paper 35 (“PO Mot.
Exclude”). Petitioner filed an Opposition to Patent Owner’s Motion to
Exclude (Paper 40, “Pet. Exclude Opp.”), and Patent Owner filed a Reply
(Paper 45, “PO Exclude Reply”).
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1. Exhibits 1012–1020, 1022, and 1024–1026
Patent Owner presents several arguments challenging the
admissibility of Exhibits 1012–1020, 1022, and 1024–1026. Pet. Mot. to
Exclude 2–13. Patent Owner’s motion is dismissed as moot because this
Decision does not rely on these exhibits.
2. Petitioner’s Arguments in its Reply
Patent Owner asserts that Petitioner’s Reply contains arguments that
are “new” and go beyond the scope of a Reply. PO Mot. to Exclude 10–13.
For example, Patent Owner argues that Petitioner has presented in its Reply
new unsupported attorney arguments regarding the teaching in Adams and
several claim elements including the “monitor message,” “unique device
identifier,” “device database,” “control database,” and “control site.” Id. at
11–123. Patent Owner makes similar arguments regarding Petitioner’s
treatment of Lotter in its Reply. Id. at 10–11. Patent Owner adds that it is
particularly prejudiced by the inability to perform any cross-examination of
Petitioner’s new positions that Patent Owner asserts Petitioner’s expert did
not opine upon. Id. at 12–13.
As an initial matter, a motion to exclude is not a proper vehicle for a
party to raise the issue of arguments exceeding the permissible scope of a
reply. Whether a reply contains arguments or evidence that are outside of a
proper reply under 37 C.F.R. § 42.23(b) is left to our determination.
Moreover, based on our review of the arguments presented by Patent Owner
in its Patent Owner Response, we agree with Petitioner that the portions of
the Reply at issue are responsive to Patent Owner’s arguments. See Pet.
Exclude Opp. 12–13. For example, Petitioner’s arguments regarding the
“monitor message” and “unique device identifier” presented on pages 14
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Patent 8,190,694 B2

74
through 16 of the Reply cite and respond to Patent Owner’s arguments
presented on at least pages 43 through 45 of the Patent Owner Response.
Reply 14–16.
Accordingly, we deny Patent Owner’s motion to exclude portions of
Petitioner’s Reply.

III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 2, and 4–7 of the ’694 patent have been
shown, by a preponderance of the evidence, to be unpatentable;
FURTHER ORDERED that claims 9, 10, and 12 of the ’694 patent
have not been shown by a preponderance of the evidence to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude Exhibits
2080, 2081, 2084, and 2090 is granted;
FURTHER ORDERED that Petitioner’s Motion to Exclude Exhibits
2085, 2087, 2091–2097, and 2102 is dismissed as moot;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
Exhibits 1012–1020, 1022, and 1024–1026 is dismissed as moot;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
portions of Petitioner’s Reply is denied; and
FURTHER ORDERED that any party to the proceeding seeking
judicial review of this Final Written Decision must comply with the notice
and service requirements of 37 C.F.R. § 90.2.

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Patent 8,190,694 B2

75

PETITIONER:

Robert C. Mattson
John S. Kern
Thomas C. Yebernetsky
OBLON SPIVAK

cpdocketmattson@oblon.com
cpdocketkern@oblon.com
cpdocketyebernetsky@oblon.com

PATENT OWNER:

Stephen R. Risley
Robert B. Dulaney III
SMITH RISLEY TEMPEL SANTOS LLC

srisley@srtslaw.com
rdulaney@srtslaw.com