CUPP Computing AS

Patent Trials and Appeals Board

Aug 25, 2020

IPR2019-00765 (P.T.A.B. Aug. 25, 2020)

Trials@uspto.gov Paper No. 29
571-272-7882 Date: August 25, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TREND MICRO INC.,
Petitioner,

v.

CUPP COMPUTING AS,
Patent Owner.
____________

IPR2019-00765
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____________

Before THOMAS L. GIANNETTI, GARTH D. BAER, and
SHARON FENICK, Administrative Patent Judges.

BAER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
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I. INTRODUCTION
Trend Micro Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”),
requesting an inter partes review of claims 1, 9, 11, 13, 14, 16, 24, 26, 28,
and 29 (the “challenged claims”) of U.S. Patent No. 9,843,595 (Ex. 1001,
“the ’595 patent”). CUPP Computing AS (“Patent Owner”) filed a
Preliminary Response to the Petition (Paper 6, “Prelim. Resp.”). In addition,
Petitioner filed a Reply (Paper 8) and Patent Owner a Sur-Reply (Paper 9)
directed to a claim construction issue. After considering the parties’
arguments, we determined that the information presented in the Petition
established that there was a reasonable likelihood that Petitioner would
prevail with respect to at least one challenged claim. Pursuant to 35 U.S.C.
§ 314, we instituted this inter partes review as to all of the challenged claims
and all grounds raised in the Petition. Paper 10 (“Institution Dec.”).
Following institution, Patent Owner filed a Response. Paper 14 (“PO
Resp.”). Subsequently, Petitioner filed a Reply (Paper 16, “Pet. Reply”) and
Patent Owner filed a Sur-Reply (Paper 18, “PO Sur-reply”). In addition,
Patent Owner filed a Motion to Exclude Evidence. Paper 22. We deny that
motion in a separate Order entered concurrently.
On June 10, 2020, we held a consolidated oral hearing with IPR2019-
00767, involving U.S. Patent No. 9,106,683, and IPR2019-00764, involving
U.S. Patent No. 8,631,488. A transcript of the hearing is included in the
record. Paper 28 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a). For the reasons we identify
below, we determine that Petitioner has demonstrated by a preponderance of
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the evidence that claims 1, 9, 11, 13, 14, 16, 24, 26, 28, and 29 of the ’595
patent are unpatentable.
A. RELATED PROCEEDINGS
The parties identify the following related matters: CUPP
Cybersecurity LLC v. Trend Micro, Inc., et al., Case No. 3:18-cv-01251
(N.D. Tex.); CUPP Cybersecurity LLC v. Symantec Corp., Case No. 3:18-
cv-01554 (N.D. Tex.); Symantec Corp. v. CUPP Cybersecurity LLC, et al.,
Case No. 3:18-cv-04720 (N.D. Cal.); CUPP Cybersecurity LLC, et al. v.
Symantec Corp., Case No. 3:19-cv-00298 (N.D. Cal.).
B. REAL PARTY-IN-INTEREST
The Petition identifies Trend Micro as the real party-in-interest.
Pet. 1. Patent Owner in its Preliminary Response does not contest this
identification. Patent Owner identifies CUPP Computing AS as the real
party-in-interest. Paper 4, 1.
C. THE ’595 PATENT
The ’595 patent is directed to a system and method for providing
security to a mobile device over a network. Ex. 1001, 1:44–64. The mobile
device may receive a wake signal from a power management state before
managing security services, such as scanning a storage medium for malware,
or updating security applications. Id., Abstract. This allows for reduced
power consumption by the mobile device while maintaining security when
the device is connected to an untrusted network. Id. at 2:1–60. Figure 20 is
reproduced below.
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Figure 20 is a flowchart illustrative of an embodiment of the invention. Id.
at 5:24–26.
D. ILLUSTRATIVE CLAIM
Petitioner challenges claims 1, 9, 11, 13, 14, 16, 24, 26, 28, and 29 of
the ’595 patent. Of the challenged claims, claims 1 and 16 are independent.
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Independent claim 1 is representative of the challenged claims and is
reproduced below:
1. A security system, comprising:
security system memory;
a communication interface configured to communicate with a
mobile device and configured to communicate over a
network with a security administrator device, the mobile
device including a mobile device processor and including a
security agent configured to cooperate with the security
system, the security administrator device having a security
administrator processor different than the mobile device
processor, the mobile device being remote from the security
administrator device; and
a security system processor being different than the mobile
device processor and different than the security
administrator processor, the security system processor being
configured to:
store in the security system memory at least a portion of
wake code, the wake code being configured to detect a
wake event and to send a wake signal to the mobile
device in response to detecting the wake event, the
security agent of the mobile device being configured to
receive the wake signal, the security agent of the mobile
device being configured to wake at least a portion of the
mobile device from a power management mode in
response to receiving the wake signal, the security agent
of the mobile device being configured to perform
security services after the at least a portion of the mobile
device has been woken;
detect a particular wake event;
prepare a particular wake signal in response to detecting the
particular wake event; and
send the particular wake signal to the mobile device in
response to detecting the particular wake event, the
security agent of the mobile device being configured to
wake the at least a portion of the mobile device in
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response to receiving the particular wake signal and
being configured to perform particular security services
after the at least a portion of the mobile device has been
woken.
Ex. 1001, 31:13–51.
E. ASSERTED GROUNDS OF UNPATENTABILITY
Petitioner asserts the following grounds of unpatentability. Pet. 3–4.
Claims Challenged 35 U.S.C. §1 Reference(s)/Basis
1, 9, 16, 24 § 103 Joseph2
13, 14, 28, 29 § 103 Joseph, Zmudzinski3
1, 9, 11, 16, 24, 26 § 103 Gordon4
13, 14, 28, 29 § 103 Gordon, Zmudzinski
11, 26 § 103 Joseph, Gordon
Petitioner submitted a Declaration of Dr. Markus Jakobsson (Ex. 1011,
“Jakobsson Decl.”), and a Supplemental Declaration of Dr. Jakobsson
(Ex.1020, “Jakobsson Supp. Decl.”). Patent Owner has submitted a
Declaration of Nenad Medvidovic, Ph.D. (Ex. 2007, “Medvidovic Decl.”).

1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103.
See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). As the application
that issued as the ’595 patent was filed before the effective date of the
relevant amendments, the pre-AIA version of § 103 applies.
2 U.S. Patent Application Publication No. 2010/0218012 A1 (international
filing date May 26, 2008) (Ex. 1007).
3 U.S. Patent Application Publication No. 2007/0266265 A1 (published
November 15, 2007) (Ex. 1009).
4 U.S. Patent No. 7,818,803 B2 (filed January 16, 2008) (Ex. 1010).
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II. ANALYSIS
A. LEVEL OF ORDINARY SKILL
Petitioner contends
[a] person of ordinary skill in the art at the time of the alleged
invention of the ’595 patent (i.e., August 4, 2008) . . . would have
had a bachelor’s degree in computer science, electrical
engineering, or a comparable field of study, plus at least two
years of professional experience with computer security systems,
or the equivalent.
Pet. 15–16 (footnote omitted) (citing Jakobsson Decl. ¶ 56).
Patent Owner’s Response does not provide a formulation of the
person of ordinary skill. Dr. Medvidovic, however, provides the following
testimony: “It is my opinion that the person of ordinary skill in the art in the
field of the ‘595 Patent would be someone with a bachelor’s degree in
computer science or related field, and either (1) two or more years of
industry experience and/or (2) an advanced degree in computer science or
related field.” Medvidovic Decl. ¶ 36.
The two formulations differ only slightly. For example,
Dr. Jakobsson is more specific in requiring “experience with computer
security systems, or the equivalent.” Jakobsson Decl. ¶ 56.
Petitioner’s definition is supported by credible expert testimony, is
more consistent with the prior art before us, and is also commensurate with
the level of skill reflected in the ’595 patent. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate
level of skill). We, therefore, adopt Petitioner’s description. However, we
would reach the same result on the ultimate question of obviousness under
either formulation.
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B. CLAIM CONSTRUCTION
A recent amendment to the rules changing the claim construction
standard applies here because the Petition was filed after November 13,
2018, the effective date of the amendment. See Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51358 (Oct.
11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018)
(now codified at 37 C.F.R. § 42.100(b) (2019)). Thus, for this inter partes
review, the Board applies the same claim construction standard as that
applied in federal courts. See id.
In this context, claim terms “are generally given their ordinary and
customary meaning” as understood by a person of ordinary skill in the art in
question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
1312–13 (Fed. Cir. 2005) (en banc). “In determining the meaning of the
disputed claim limitation, we look principally to the intrinsic evidence of
record, examining the claim language itself, the written description, and the
prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
415 F.3d at 1312–17). Extrinsic evidence is “less significant than the
intrinsic record in determining ‘the legally operative meaning of claim
language.’” Phillips, 415 F.3d at 1317.
1. “power management mode”
Petitioner propounds “power management mode” means “a mode
where the mobile device conserves power,” and asserts that Patent Owner
has adopted this construction in related litigation. Pet. 16. Patent Owner
does not dispute this construction. See PO Resp. 9–10. We agree with
Petitioner’s construction and adopt it for this Final Written Decision.
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2. “a security system processor being different than the mobile device
processor”
Although resolution of this claim construction issue is central to this
controversy (see infra), neither party initially requested construction of this
phrase appearing in all challenged claims. However, at the request of
Petitioner, and because this issue was seen as a dispositive, the Board
granted additional briefing on the issue. Paper 7 (Order, July 3, 2019).
Thus, as noted supra, Petitioner filed a pre-institution Reply (Paper 8) and
Patent Owner filed a pre-institution Sur-reply (Paper 9), directed solely to
the construction of this phrase.
The dispute centers on whether the term “a security system processor
being different than the mobile device processor” requires that the mobile
security system be separate and remote from the mobile device. In the
Preliminary Response, Patent Owner took the position that “[t]he security
system must be remote from the mobile device.” Prelim. Resp. 18. On this
basis, Patent Owner contended that Joseph fails to meet this limitation
because “Joseph requires its security/diagnostics unit 14 [to] be physically
integrated into the mobile device.” Id. Patent Owner made a similar
argument for Gordon: “Thus, the security system and its processor must be
remote from the mobile device and its processor and Petitioner has failed to
show that Gordon discloses a security system with a processor different from
a processor of the mobile device.” Id. at 26. We were not persuaded at
institution that such a narrow construction of this term was warranted.
Institution Dec. 6–11.
As instructed by Phillips, we first looked to the words of the claim.
Phillips, 415 F.3d at 1312. The claim language does not say the mobile
security system cannot be part of the mobile device. Nor does it require the
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mobile security system to be “remote” or “separate” from the mobile device.
Cf. Prelim. Resp. 2 (“the security system of the ’595 Patent is remote from
the mobile device”); 17 (“the mobile security system and its processor are
separate from a processor of the mobile device”); 18 (“The security system
must be remote from the mobile device.”); 19 (“two separate and distinct
devices”). The claim language simply says that the security system
processor “being different than” the mobile device processor.
We observed that the plain and ordinary meaning of the term
“different” does not require “remote” or “separate.” Institution Dec. 7. We
cited Merriam Webster’s Collegiate Dictionary (10th ed.) 323 (defining
“different” as “partially or totally unlike in nature, form, or quality”)
(Ex. 3001) and The Random House College Dictionary (Rev. ed.) 370
(defining “different” as “differing in character or quality; not alike;
dissimilar”) (Ex. 3002).5 Id. Further, we noted that the claims refer to the
processors being “different,” not the systems or devices that include the
processors. Id. at 8.
Moreover, we noted that the ’595 patent specification does not
support Patent Owner’s narrowing construction. Id. As stated in Phillips,
“the specification is always highly relevant to the claim construction

5 The Federal Circuit has approved the use of dictionaries for guidance in
claim construction, “so long as the extrinsic evidence does not contradict the
meaning otherwise apparent from the intrinsic record.” Helmsderfer v.
Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see
also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010)
(approving of “consult[ing] a general dictionary definition of [a] word for
guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc.,
543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips,
do not preclude the use of general dictionary definitions as an aid to claim
construction.”) (citation omitted).
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analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.” Phillips, 415 F.3d at 1315 (internal quotes and citation
omitted). We noted that Figure 3 of the ’595 patent and the accompanying
text disclose an embodiment in which mobile security system 345 and
mobile device 310 are shown as being separate. Institution Dec. 8.
However, the specification also explains that this is not a requirement, and
that the mobile security system may be incorporated within the mobile
device:
The mobile security system 345 may be in a pocket-size,
handheld-size or key-chain size housing, or possibly smaller.
Further, the mobile security system 345 may be incorporated
within the mobile device 310.
Ex. 1001, 8:36–39 (emphasis added).
Patent Owner asserted prior to institution that “[t]he plain language of
this claim term means that the security system processor cannot reside on the
mobile device itself because otherwise the security system processor would
be a processor of the mobile device.” Paper 9, 1. We were not persuaded by
this argument. In the ’595 patent, the mobile security system is defined by
what it does, not by where it resides. Institution Dec. 9. Thus, in describing
mobile security system 345 and its components, shown in Figure 5,
including processor 515, the ’595 patent states: “Although these modules
are illustrated as within the mobile security system 345, one skilled in the art
will recognize that many of them could be located elsewhere, e.g., on the
security administrator 325 or on third-party systems in communication with
the mobile security system 345.” Ex. 1001, 8:31–36.
Patent Owner attempted to explain the disclosure in the specification
of a mobile security system that “may be incorporated within the mobile
device.” Paper 9, 2. Patent Owner claimed it is “axiomatic” that the claims
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“need not ‘be interpreted to cover each and every embodiment.’” Id. We
were not persuaded by this argument. Institution Dec. 9–11. The Federal
Circuit has observed that “there is a strong presumption against a claim
construction that excludes a disclosed embodiment.” Nobel Biocare Servs.
AG v Instradent USA, Inc., 903 F.3d 1365, 1381 (Fed. Cir. 2018). Patent
Owner identified nothing in the intrinsic record that convinced us this
presumption has been overcome. Institution Dec. 11.
As set forth supra, we concluded that neither the plain language of the
claims nor the specification supports Patent Owner’s narrowing
construction. Id. at 9. Nor were we convinced that the prosecution history
demonstrates that the mobile security system and mobile device must be
remote or separate, as Patent Owner asserted. Institution Dec. 9–11.
According to Patent Owner, “the [PTO] has already considered and
rejected the argument that a separate processor located on the mobile device
itself can satisfy this aspect of the challenged claims.” Paper 9, 1. Patent
Owner refers to an argument presented by the applicants to distinguish a
reference (Priestley, Ex. 2004) during prosecution of U.S. Patent No.
9,106,683 (“the ’683 patent”), a patent related to the ’595 patent. Ex. 2001.
According to Patent Owner, the applicants in that prosecution “distinguished
the Priestley reference on the basis that the standalone chip on the
motherboard of the mobile device does not qualify as a security system
processor ‘different from a mobile system processor of each of the mobile
devices.’” Paper 9, 4.
Phillips requires us to consider the prosecution history of a patent in
construing the claims. 415 F.3d at 1317. But Phillips also cautions that the
prosecution history often is “less useful” that the specification:
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Furthermore, like the specification, the prosecution history was
created by the patentee in attempting to explain and obtain the
patent. Yet because the prosecution history represents an
ongoing negotiation between the PTO and the applicant, rather
than the final product of that negotiation, it often lacks the clarity
of the specification and thus is less useful for claim construction
purposes.
Phillips, 415 F.3d at 1317. Any ambiguity in the prosecution history makes
it less relevant to claim construction. See Inverness Med. Switz. GmbH v.
Warner Lambert Co., 309 F.3d 1373, 1380–82 (Fed. Cir. 2002) (“It is
inappropriate to limit a broad definition of a claim term based on
prosecution history that is itself ambiguous.”); Northern Telecom Ltd. v.
Samsung Elec. Co., Ltd., 215 F.3d 1281, 1295 (Fed. Cir. 2000)
(“[C]onfusing statements in the prosecution history simply fail to overcome
the ordinary meaning of the [disputed] limitation.”). Furthermore, the
Federal Circuit has made it clear that disavowal of claim scope by a patentee
requires “expressions of manifest exclusion or restriction.” Epistar Corp. v.
ITC, 566 F.3d 1321, 1335 (Fed. Cir. 2009). More specifically, “to operate as
a disclaimer, the statement in the prosecution history must be clear and
unambiguous, and constitute a clear disavowal of scope.” Continental
Circuits LLC v. Intel Corp., 915 F.3d 788, 798 (Fed. Cir. 2019).
At institution, we saw in the ’683 patent prosecution history no clear
and unambiguous waiver of claim scope in the applicants’ arguments
addressed to Priestley. Institution Dec. 11.
Patent Owner’s post-institution arguments on the construction of this
limitation mirror the arguments made in its Preliminary Response. PO
Resp. 10–19. Patent Owner continues to advance its rejected argument that
the term “a security system processor being different than the mobile device
processor” not only requires that the mobile security system processor be
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“separate from (i.e., not incorporated or embedded in) the mobile device”
(PO Resp. 10) (emphasis added), but also that the security system be
“remote from the mobile device.” PO Resp. 2 (“the security system of the
’595 Patent is remote from the mobile device”); 21 (“The security system
must be remote from the mobile device. . . . Thus, the security system and its
processor must be remote from the mobile device and its processor.”); 27
(“[T]he ‘different processors’ claim element requires that the mobile security
system processor be remote from the mobile device itself.”); 33 (“Thus, the
security system and its processor must be remote from the mobile device and
its processor . . . . ”); 37 (“[T]he ‘different processors’ claim element
requires that the mobile security system processor be remote from the
mobile device itself.”).
Patent Owner’s main post-institution argument for this proposed
“separate and remote” construction relies on the ’683 patent prosecution
history, and specifically the applicants’ statements distinguishing Priestley.
According to Patent Owner, “the ’683 Patent prosecution history includes a
clear disavowal of a claim interpretation in which the mobile security system
processor is incorporated in the mobile device itself, despite Applicant
having made additional distinctions and arguments in the prosecution of the
’683 Patent.” PO Resp. 15–16. Patent Owner faults the Board’s analysis of
the prosecution history in the Institution Decision, asserting that the
applicants’ statement regarding Priestley “is clear, unambiguous, textbook
disclaimer.” Id. at 12.
Petitioner responds that “[a]t a minimum, Patent Owner’s prosecution
statements are ambiguous and amenable to multiple reasonable
interpretations, and therefore do not meet the ‘demanding standard’ for
prosecution disclaimer.” Pet. Reply 8.
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We agree with Petitioner’s argument and find that the statements in
the ’683 patent prosecution history regarding Priestley are too ambiguous to
support Patent Owner’s “separate and remote” argument (i.e., that the
security system and the mobile device must be “separate and remote”). This
is evident from the statements themselves and their context in the
prosecution history, which we review below.
a. Prosecution History
The Examiner relied on Priestley, along with two other references,
Chang (Ex. 2002) and Grant (Ex. 2003), in initially rejecting the claims of
the application for the ’683 patent. Ex. 2001, 126–127. The Examiner
applied Priestley to meet the “different processors” claim recitation: “the
mobile security system having a mobile security system processor different
than a mobile device processor of the mobile device.” Ex. 2001, 126.
According to the Examiner, Priestley discloses a Trusted Platform
Module (“TPM”) “to provide security functions to computing platforms.”
As described by the Examiner, Priestley discloses: “Typically, [the TPM] is
implemented as an additional stand-alone chip attached to a PC
motherboard. However, TPMs may be implemented in hardware or
software.” Id. at 127. In rejecting the claims, the Examiner reasoned the use
of a processor for the mobile security system separate from the main
processor would have been obvious:
It would have been obvious to one of ordinary skill in the art at
the time of invention was made to incorporate the teachings of
Priestley et al. in to the method of Chang et al. and Grant. The
use of separate security processors would be an obvious
interchangeable variation of the underlying hardware. Among
other potential benefits would be savings on the complexity and
cost of the main processor.
Id. (emphasis added).
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The applicants responded to the rejection by amending the claims to
add other limitations. Ex. 2001, 172–174. The applicants added limitations
calling for the recited wake signal to wake the mobile device, and managing
the security services “using the mobile security system” “in response to
waking the mobile device from the power management mode.” Id. at 172–
173. In their Remarks accompanying the amendment, the applicants
stressed the new limitations added in the amendment:
Applicants respectfully submit that the cited art, alone or in
combination, does not teach or suggest, “providing, using the
mobile security system, a wake signal in response to the wake
event, the wake signal waking the mobile device from a power
management mode; and managing, using the mobile security
system, security services of the mobile device in response to
waking the mobile device from the power management mode,”
as recited in claim 1 as amended.
Id. at 175 (emphases added). The applicants advanced a similar argument
for claim 10. Id. at 180.
After several pages of remarks developing this argument, the
applicants finally addressed Priestley. Id. at 178–180. Relying on
Priestley’s statement that the TPM is “[t]ypically . . . implemented as a
stand-alone chip attached to the PC motherboard,” the applicants argued that
Priestley did not meet the “different processors” limitation:
If it were implemented as a stand-alone chip attached to a PC
motherboard, the TPM of Priestley would not be part of a mobile
security system. More specifically, the TPM of Priestley would
be part of the motherboard of the mobile devices of the reference.
As a result, the TPM would not include a mobile security system
processor different from a mobile system processor of each of the
mobile devices.
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Id. at 179 (emphasis added). In summing up the argument distinguishing
Priestley, the applicants did not rely on the “different processors” feature,
but instead relied on the other features of the claim added in the amendment:
Therefore, Applicants respectfully submit Priestley does not
teach or suggest, “providing, using the mobile security system, a
wake signal in response to the wake event, the wake signal
waking the mobile device from a power management mode; and
managing, using the mobile security system, security services of
the mobile device in response to waking the mobile device from
the power management mode,” as recited in claim 1 as amended.
Id. at 179–180 (emphasis added). Finally, in summing up the argument for
patentability, the applicants again relied on features other than the “different
processors”:
For at least the foregoing reasons, Applicants respectfully submit
the cited art, alone or in combination, does not teach or suggest,
“providing, using the mobile security system, a wake signal in
response to the wake event, the wake signal waking the mobile
device from a power management mode; and managing, using
the mobile security system, security services of the mobile device
in response to waking the mobile device from the power
management mode,” as recited in claim 1 as amended. Therefore,
claim 1 is patentable over the cited art, alone or in combination.
Id. at 180 (emphasis added). The applicants presented a similar argument
for claim 10. Id. at 180–181.
The Examiner responded by allowing the claims, providing no reasons
for allowance, stating that “the record is clear in light of applicant’s
arguments and specification.” Id. at 212.
b. Discussion
Patent Owner argues that the Board erred by taking into consideration
the “alternative arguments” presented during prosecution of the ’683 patent:
“[T]he other arguments, made with respect to other claim language, and to
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distinguish the teachings of other references has no bearing on whether
Applicant’s statements regarding the scope of the ‘different processors’ term
were ‘clear and unmistakable.’” PO Resp. 13–14. Patent Owner makes a
similar argument criticizing our discussion in the Institution Decision and
above of the Examiner’s reasons for allowance: “This reasoning constitutes
legal error because disclaimer should be found even if the Examiner did not
rely on the argument in order to allow the claims.” Id. at 15 (emphasis
omitted).
But even focusing just on the statements addressing Priestley, we find
that the ’683 patent’s prosecution history does not unambiguously support
Patent Owner’s “separate and remote” claim construction, i.e., that the
mobile security system and the mobile device must be separate and remote.
We find that, at most, the applicants’ arguments say that Priestly lacks a
security system processor that is different from a mobile device processor
because the TPM in Priestly is located on the same motherboard as the
mobile device’s processor. Ex. 2001, 179. We agree with Petitioner and
find that applicants’ argument distinguishing Priestly is directed to “different
processors,” but not “separate and remote devices.” Pet. Reply 8.
Petitioner points out that the claim language does not say the mobile
security system cannot be part of the mobile device. Id. at 2. Petitioner
further points out that the meaning of “system” is not limited to a device,
“let alone a device that is separate from the claimed ‘mobile device.’” Id. at
3–4. In addition, Petitioner presents three “alternative interpretations” of the
prosecution history, supporting Petitioner’s argument that “at a minimum,”
Patent Owner’s prosecution history statements are “amenable to multiple
reasonable interpretations.” Id. at 8. Petitioner describes these alternatives
as follows:
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[1] One alternate interpretation is that Patent Owner argued that
if the TPM [in Priestly] were a “stand-alone chip,” it “would not
be part of a mobile security system” because there would not be
any larger security system encompassing the chip. [2] A second
alternate interpretation is that PO argued that “the TPM would
not include a mobile security system processor” because the
TPM is only a “stand-alone chip,” not a larger system that
includes a processor as one component. [3] A third interpretation
is that Patent Owner assumed that the TPM functionality would
have to be subsumed into the motherboard’s CPU, resulting in
only one processor.
Id. at 8–9. Petitioner asserts “[e]ach of these three interpretations differs
from Patent Owner’s current interpretation.” Id. at 9.
We find, for the reasons set forth in above and in our Institution
Decision, that the prosecution history cited by Patent Owner is at best
ambiguous, and in any case there was no “disavowal” that would support
Patent Owner’s proposed construction calling for the mobile security system
to be “separate and remote” from the mobile device. The applicant’s
prosecution history argument was that two processors on the same
motherboard are not “different” processors, as claimed. Thus, to the extent
there was a disclaimer, it extends only to a mobile device processor and
security system processor on the same motherboard. The applicants never
argued to the Examiner in the ’683 patent’s prosecution that the mobile
security system or its processor is necessarily “separate and remote” from
the mobile device, or that the mobile security processor cannot be on the
mobile device, so long as it is not on the same motherboard. That is
understandable, because that argument would have contradicted the
specification, which states: “Further, the mobile security system 345 may be
incorporated within the mobile device 310.” Ex. 1001, 8:38–39 (emphasis
added). Because the mobile security system processor is within the mobile
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security system, this statement in the specification contradicts Patent
Owner’s position that the mobile security system and processor must be
“separate and remote” from the mobile device.
Patent Owner attempts to characterize this disclosure in the
specification of the ’595 patent that a mobile security system “may be
incorporated within the mobile device” as an unclaimed embodiment. PO
Resp. 16–19. Patent Owner presents two principal arguments, neither of
which we find persuasive. First, Patent Owner argues that Petitioner has
failed to show this description of the mobile security system as
“incorporated within the mobile device” is a preferred embodiment. Id. at
16. Patent Owner asserts the Federal Circuit authorities that caution against
claim constructions that exclude preferred embodiments are, therefore, not
applicable. Id. (distinguishing Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1580–81 (Fed. Cir. 1996)). We are not persuaded by this
argument. As Petitioner points out, the ’595 patent does not distinguish
among the embodiments disclosed, referring to all of them, collectively, as
“preferred embodiments.” Ex. 1001, 30:55.6 Thus, the embodiment in
which the mobile security system is “incorporated within the mobile device”
is a preferred embodiment.
Patent Owner’s second argument characterizes the Board’s reliance on
the Federal Circuit’s decision in Nobel Biocare, 903 F.3d 1365, 1382, as
“misplaced.” PO Resp. 17. We cited Nobel Biocare because it states that
“there is a strong presumption against a claim construction that excludes a
disclosed embodiment.” Institution Dec. 9. According to Patent Owner, this

6 We agree with Petitioner that there can be more than one preferred
embodiment. See Tr. 8:3–9.
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“broad statement . . . is not supported by its underlying case law.” PO Resp.
17–18. Patent Owner attributes this “misstatement” in Nobel Biocare to “a
game of judiciary telephone”: “Like a game of judiciary telephone, the
string of cases has resulted in a misstatement that there is a presumption
against claim construction that excludes a mere disclosed embodiment,
rather than a preferred embodiment.” Id. at 19.
We disagree with Patent Owner’s characterization of Nobel Biocare
and with its characterization of the clear language of the Federal Circuit in
that case. But the argument is, in any case, unavailing, in light of Patent
Owner’s identification of the embodiment in the specification describing the
mobile security system as “incorporated within the mobile device” as
preferred. Ex. 1001, 30:55.
Nor are we persuaded by Patent Owner’s related argument that “it is
not necessary that each claim read on every embodiment.” PO Resp. 16–17.
While this principle may apply in some cases where, for example, there is a
clear indication of a disavowal, it does not apply here, where there is no
indication in the claim language, the specification, or the prosecution history
of any intent not to claim the preferred embodiment in which the mobile
security system is incorporated within the mobile device. “To disavow
claim scope, the specification must contain ‘expressions of manifest
exclusion or restriction, representing a clear disavowal of claim scope.’”
Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306
(Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d
1321, 1335 (Fed. Cir. 2009)); SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001) (“Where the
specification makes clear that the invention does not include a particular
feature, that feature is deemed to be outside the reach of the claims of the
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patent, even though the language of the claims, read without reference to the
specification, might be considered broad enough to encompass the feature in
question.”).
Finally, we address an argument presented in Patent Owner’s Sur-
reply and developed further at the oral argument. PO Sur-reply 5–6;
Tr. 68:14–69:18. Citing the Federal Circuit’s decision in Aylus Networks,
Inc. v. Apple, Inc., 856 F.3d 1353, 1361 (Fed. Cir. 2017), Patent Owner
asserts that its counsel’s statements during the course of this proceeding are
effective in this proceeding as a disavowal of claim scope. PO Sur-reply 6.
Patent Owner proclaims in its Sur-reply: “[T]o the extent there remains any
question, Patent Owner affirmatively disclaims any construction of this term
that encompasses a security system processor located on the mobile device
itself.” Id. at 5–6. We are not persuaded that Aylus supports Patent Owner’s
argument.
The issue before the Federal Circuit in Aylus was whether statements
made by a patent owner during inter partes reviews can be considered for
claim construction in a successive district court action involving the same
patent. Aylus, 856 F.3d at 1359. The Federal Circuit, after reviewing the
case law, concluded in that context, “that statements made by a patent owner
during an IPR proceeding, whether before or after an institution decision,
can be considered for claim construction and relied upon to support a finding
of prosecution disclaimer.” Id. at 1362. In support of this holding, the
Federal Circuit expressed concern over the unfairness to litigants in district
court that might result if the rule were otherwise: “Extending the
prosecution disclaimer doctrine to IPR proceedings will ensure that claims
are not argued one way in order to maintain their patentability and in a
different way against accused infringers.” Id. at 1360.
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In Aylus, the remarks that led to the finding by the district court of a
disavowal came in two separate prior IPR proceedings that apparently had
concluded.7 Thus, Aylus does not stand for the proposition that Patent
Owner’s counsel can effect a contemporaneous disavowal of claim scope in
this proceeding merely by making arguments in this proceeding, and without
regard to whether there is support in the specification and claim language.
The Federal Circuit has stated that “the PTO is under no obligation to
accept a claim construction proffered as a prosecution history disclaimer,
which generally only binds the patent owner.” Tempo Lighting, Inc. v.
Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014). Accepting an attempted
disavowal of claim scope expressly made during an IPR proceeding to avoid
prior art in that same proceeding would discourage patent owners from using
the amendment process permitted by statute and the Board’s rules. The
importance of the amendment process to IPRs has been recognized by the
Federal Circuit:
The AIA relies on the adversarial nature of IPRs to ensure quick
but thorough adjudication of the merits: the petitioner raises its
best arguments at the outset; the patent owner has the opportunity
to adjust the scope of its claims if need be; and the Board
provides a speedy ruling as to the patentability of the original and
amended claims.
Aqua Prod., Inc. v. Matal, 872 F.3d 1290, 1312 (Fed. Cir. 2017) (en banc).
In sum, for the reasons given, we are not persuaded by Patent Owner’s
arguments that the claims should be construed as requiring the mobile
security system to be “separate and remote” from the mobile device.

7 According to the Federal Circuit’s decision, the Board did not institute
inter partes review as to claims 2 and 21, the two claims involved in the
litigation. Aylus, 856 F.3d at 1363.
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C. ASSERTED PRIOR ART
1. Joseph (Ex. 1007)
Joseph is a published patent application titled “Methods and Systems
for Providing a Wireless Security Service and/or a Wireless Technical
Support Service for Personal Computers.” Ex. 1007, code (54). Petitioner
contends that Joseph’s effective date as prior art is before the earliest
possible priority date for the ’595 patent, thus qualifying Joseph as prior art
under pre-AIA 35 U.S.C. § 102(e). Pet. 17. Patent Owner does not
challenge Joseph’s availability as prior art.
Joseph is directed to “enhancing security of personal computers and
facilitating recovery of stolen, lost or otherwise missing personal
computers.” Ex. 1007 ¶ 7. Joseph discloses providing the laptop computer
with an “integrated” security diagnostics unit (“SDU”). Id. ¶ 60. By
“integrated,” the reference means that the SDU “is internal to a casing of the
laptop computer . . . and is an integral part of internal hardware of the laptop
computer.” Id. The SDU provides wireless security service or wireless
technical support services to the laptop computer. Id. The SDU
communicates with a network entity referred to as a “security/technical
support entity” at a remote location by sending and receiving messages via a
wireless network. Id. ¶ 61.
The SDU is shown in Figure 3 of Joseph reproduced here:
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Figure 3 of Joseph, reproduced above, is a block diagram showing personal
computer 12 including SDU 14. Ex. 1007 ¶¶ 39, 79. The SDU is connected
to power management system 40 of the personal computer through system
management bus 78. Id. The SDU includes control unit 30, which contains
hardware and software for implementing interface 61 and processing
element 63. Id. ¶ 73. The processing element comprises one or more
processors 74 for performing processing operations to implement the
functionality of the control unit. Id. ¶ 74. These processors may be general
purpose computers that execute code to implement the functionality of
control unit 30. Id. As shown in Figure 3, this processor is separate from
processor 48 that is part of main processing unit 35 of the laptop computer.
Id. ¶ 54.
2. Gordon (Ex. 1010)
Gordon is a patent titled “Security Module Having a Secondary Agent
in Coordination with a Host Agent.” Ex. 1010, code (54). Petitioner
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contends that Gordon’s effective date as prior art is at least as early as
January 16, 2007. Pet. 46. Petitioner contends that this date qualifies
Gordon as prior art under pre-AIA 35 U.S.C. § 102(e). Id. Patent Owner
does not challenge Gordon’s availability as prior art.
Figure 1 of Gordon, annotated by Petitioner, is reproduced here.

Figure 1 of Gordon (annotated by Petitioner) is a schematic functional block
diagram showing protected host device 10 (e.g., a laptop computer) with
security module 19 (outlined in red). Ex. 1010, 6:14–16, 14:1. The security
module includes firmware agent 21 connected to the host. Id. at 14:45–46.
The laptop and wireless security module also communicate with monitoring
center 70 via a wireless connection. Id. at Fig. 2, 5:7–12, 15:12–15.
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3. Zmudzinski (Ex. 1009)
Zmudzinski is a published patent application titled “Method and
Apparatus for Managing Power from a Sequestered Partition of a Processing
System.” Ex. 1009, code (54). Petitioner contends that Zmudzinski’s
publication date is before the earliest alleged priority date for the ’595
patent, thus qualifying Zmudzinski as prior art under pre-AIA 35 U.S.C. §
102(a). Pet. 39. Patent Owner does not dispute the availability of
Zmudzinski as prior art.
Zmudzinski relates to managing power in processing systems with
multiple logical partitions. Ex. 1009 ¶ 2. The processing systems can be a
single machine or multiple machines, such as laptops or handheld devices.
Id. ¶ 20. A processing system can put different partitions in different power
modes, such as “reduced power mode.” Id. ¶ 17. The system can wake a
partition to perform any of various functions, including a virus scanning. Id.
¶ 67.
D. OBVIOUSNESS ANALYSIS
The Petition challenges claims 1, 9, 11, 13, 14, 16, 24, 26, 28, and 29
of the ’595 patent. Petitioner asserts unpatentability of the claims based
obviousness.
1. First Ground: Obviousness of Claims 1, 9, 16, and 24 based on Joseph
Petitioner contends claims 1, 9, 16, and 24 would have been obvious
over Joseph. Pet. 16–38. Based on Petitioner’s analysis and for the reasons
explained below, we find Petitioner has shown by a preponderance of
evidence that claims 1, 9, 16, and 24 would have been obvious over Joseph.
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a. “a security system processor being different than the mobile device
processor”
Claim 1 requires “a mobile device . . . and a security system processor
being different than the mobile device processor.” Petitioner asserts Joseph
discloses a laptop computer 12 (the clamed “mobile device”) incorporating a
security/diagnostics unit (SDU) 14, which Petitioner identifies as the
claimed security system having “a security system processor” (i.e., processor
74). Pet. 20, 23, 26. Petitioner refers to Joseph’s Figure 3 that illustrates
SDU processor 74 as “being different than” processor 48 on laptop computer
12. Id. at 24 (citing Ex. 1007, Fig. 3).
Patent Owner asserts that Joseph does not disclose “a security system
processor being different than the mobile device processor.” PO Resp. 20–
23. Referring to the prosecution history of a related U.S. Patent
No. 8,631,488 (“the ’488 patent”), Patent Owner asserts, “th[e] concept of
the security system and its processor residing in the mobile device was
disclosed in the combination of Chang and Grant and was considered and
rejected.” PO Resp. 20–21. Patent Owner does not explain, however, how
the asserted prosecution history addressing Chang and Grant impacts
whether the claimed “different” processors can reside on the same device, as
they do in Joseph. To the contrary, we agree with Petitioner’s
characterization of the ’488 patent’s prosecution history: “Patent Owner
tried to distinguish Chang and Grant on the basis that they did not disclose
two different processors, not on the basis that they did not disclose two
separate devices.” Pet. Reply 11 (citing Ex. 1006, 339, 341). Patent
Owner’s remaining arguments depend on its contention that “[t]he security
system must be remote from the mobile device.” See PO Resp. 21–23. We
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disagree with Patent Owner’s argument for the reasons explained above in
Section II.B.2.
Joseph teaches an SDU processor that is different than the laptop
processor, i.e., boxes 48 and 74 in Figure 2. Joseph also teaches that “one or
more components of the security/diagnostics unit 14 may be part of a
motherboard or other circuit board of the laptop computer 12.” Ex. 1007
¶ 60 (emphasis added). Thus, we find Joseph teaches the disputed limitation
requiring “a security system processor being different than the mobile device
processor.”
b. “the mobile device including a mobile device processor and including
a security agent configured to cooperate with the security system,” and
“the security agent of the mobile device being configured to perform
security services”
Claim 1 requires “the mobile device including a mobile device
processor and including a security agent configured to cooperate with the
security system,” and “the security agent of the mobile device being
configured to perform security services.” Petitioner asserts that Joseph
teaches this limitation because, in Joseph, “the laptop’s one or more
processors 48 together with the power management controller 76 are the
claimed ‘security agent.’” Pet. 24. This is so, Petitioner argues, “because
the one or more processors 48 and the power management controller 76
execute program code configured to cooperate with the SDU 14 (the security
system), e.g., to power on the laptop 12 or its components, and to execute
security services on the laptop 12.” Id. Petitioner goes on to explain that
“Joseph discloses several diagnostic and maintenance services performed by
the laptop 12 and its processor 48” including “diagnostics and/or
maintenance operations,” “powering-up command to cause the laptop 12 to
boot up and then load and execute a kernel of the OS,” “information upload
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command to update software applications” “upload information (e.g.,
drivers, applications, etc.), perform one or more tests, and/or perform other
diagnostic and/or maintenance operations on the laptop computer 12,” and
“modifying a configuration setting or uploading an application.” Pet. 34–35
(citing Ex. 1007 ¶¶ 144, 146, 149, 151, 162). Petitioner explains that a
skilled artisan “would have understood that all of the above services that the
laptop 12 is configured to perform (i.e., scanning the mobile device,
updating the mobile device, and/or performing maintenance functions) are
security services.” Id. at 35.
In contesting whether Joseph teaches the “security agent of the mobile
device being configured to perform security services” limitation, Patent
Owner again relies on its argument that the mobile device must be remote
from the security system. See PO Resp. 25 (“Since the security system
cannot be part of the mobile device as discussed in [Patent Owner’s
“different” means “remote” claim construction argument] Petitioner’s
position that Joseph’s security system may reside on the mobile device also
fails.”). We disagree with Patent Owner for the reasons explained above.
Patent Owner further asserts that having Joseph’s security/diagnostics unit
14 on the mobile device (as opposed to remote form the mobile device)
“defeats [the security device’s] purpose as the mobile device’s ‘first line of
defense’ as a network security system or gateway (i.e., a separate device).”
Id. at 26 (citing Ex. 1001, 1:48–64). We disagree with Patent Owner’s
argument because the claims do not recite a “first line of defense.” In
addition, even if we were to require such a feature or purpose, we agree with
Petitioner that “Joseph’s security/diagnostics unit 14 does provide a ‘first
line of defense’ that is separate from any additional lines of defense[]
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provided by the laptop’s main processing unit 34 and processor 48.” Pet.
Reply 12–13.
At the hearing, Patent Owner argued for the first time that Joseph fails
to teach the claimed “security agent of the mobile device being configured to
perform security services” because, in Joseph, the alleged security agent
(i.e., the laptop’s processors 48, together with the power management
controller 76) does not perform the asserted security services. Instead,
Patent Owner contends, Joseph’s control unit 30—which is not part of what
Petitioner identified as the claimed “security agent”—performs the alleged
security services. See Tr. 41:14–17, 50:7–18, 52:18–21. We disagree with
Patent Owner’s argument for two reasons. First, Patent Owner’s argument is
procedurally flawed because Patent Owner did not raise it in the Response.
See Paper 11, 7 (“Patent Owner is cautioned that any arguments for
patentability not raised in the response may be deemed waived.”); see also
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012) (“The patent owner response . . . should identify all the involved
claims that are believed to be patentable and state the basis for that belief.”).
Putting aside the waiver problem, we also disagree with Patent
Owner’s argument substantively. Even though, as Patent Owner contends,
Joseph describes the cited security service commands as originating from
the security device’s control unit 30, we agree with Petitioner that one
skilled in the art would understand that the laptop’s processor 48—i.e., part
of the asserted security agent—would actually perform some of those
security services. See Ex. 1007 ¶ 144 (describing that the control unit 30
“issues one or more control signals to various components of the laptop
computer 12 . . . in order to carry out the one or more diagnostics and/or
maintenance operations”) (emphasis added); see also Tr. 80:11–22
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(explaining that when upgrading the mobile device’s software, although the
security device is “managing it, by sending [the] control signal,” “the
security service is actually performed by the laptop’s main processor”); id. at
90:19–24 (explaining that the security device works with a mobile device’s
CPU and memory system to erase and encrypt data). Thus, we agree with
Petitioner that the security agent “perform[s]” the recited security services,
as claim 1 requires.
c. “the security system processor being configured to . . . send the
particular wake signal to the mobile device in response to detecting the
particular wake event, the security agent of the mobile device being
configured to wake the at least a portion of the mobile device in
response to receiving the particular wake signal and being configured
to perform security services after the at least a portion of the mobile
device has been woken.”
Claim 1 requires “the security system processor being configured
to . . . send the particular wake signal to the mobile device in response to
detecting the particular wake event, the security agent of the mobile device
being configured to wake the at least a portion of the mobile device in
response to receiving the particular wake signal and being configured to
perform particular security services after the at least a portion of the mobile
device has been woken.” Petitioner asserts Joseph teaches this limitation
because, among other things, “Joseph discloses that the SDU 14 can detect a
wake event issued from the security/technical support entity 20 via a
message requiring the SDU 14 to power-up the laptop 12 or its components
(i.e., wake up the laptop 12 or its components).” Pet. 28–29 (citing Ex. 1007
¶ 65). Petitioner goes on to explain that “Joseph discloses that in response to
a wake event from the security/technical support entity 20 . . . the SDU 14
provides signals to the laptop 12’s power management controller 76 to cause
the laptop 12 or specific components of the laptop 12 to become powered on
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(i.e., SDU 14 provides a wake signal to the mobile device).” Id. at 29–30
(citing Ex. 1007 ¶¶ 75, 79, 82, 84, 92, 126). For the claimed security
services, Petitioner explains that the laptop’s processor 48 implements a
portion of the security agent to perform security services such as
erasing/encrypting data, activating/deactivating hardware components, or
upgrading software, among other things. Id. at 34 (citing Ex. 1007 ¶ 75,
134); see id. at 35 (citing Ex. 1007 ¶¶ 144, 146, 149, 151, 162). Based on
these arguments and cited disclosures in Joseph, we agree with Petitioner
that Joseph discloses “the security system processor being configured to . . .
send the particular wake signal to the mobile device in response to detecting
the particular wake event, the security agent of the mobile device being
configured to wake the at least a portion of the mobile device in response to
receiving the particular wake signal and being configured to perform
particular security services after the at least a portion of the mobile device
has been woken.”
Patent Owner asserts Joseph fails to teach this limitation because the
commands sent from Joseph’s SDU simply power on and off the laptop,
rather than waking the laptop from a power management mode. PO
Resp. 28. We disagree with Patent Owner because its argument assumes
that a powered-off state is not a “power management mode.” Because a
powered-off state meets the parties’ undisputed construction of power
management mode (i.e., “a mode where the mobile device conserves
power”), we agree with Petitioner that transitioning the laptop from off to
powered is waking the laptop from a power management mode. See Pet.
Reply 14–15. Patent Owner further argues that Joseph does not teach the
disputed limitation because in Joseph, the “the enabling of a laptop after it
has been recovered is not disclosed as the impetus for subsequently ‘perform
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security services after the at least a portion of the mobile device has been
woken,’ as required by the challenged claims.” PO Resp. 29. We disagree
with Patent Owner’s argument because, as Petitioner notes, the claim
language at issue imposes only a temporal restriction—i.e. “perform security
services after the at least a portion of the mobile device has been woken”—
rather than a causal one. Pet. Reply 15.
d. Uncontested limitations
As for the remaining limitations of claim 1, Petitioner provides a
detailed analysis of Joseph’s disclosures that teach every element of the
claim. Pet. 19–36. For example, Petitioner cites Joseph’s storage medium
57 as the claimed “security system memory.” Id. at 20. Petitioner identifies
Joseph’s laptop 12 as the claimed “mobile device.” Id. at 22. Petitioner
asserts Joseph’s Figure 3 shows SDU 14 as including an interface 61, which
is the claimed “communication interface” that communicates with other
components of the mobile device, as claim 1 requires. Id. at 21–22.
Joseph’s interface 61 also communicates over a wireless network via
wireless interface 28, and so “communicate[s] over a network,” as claim 1
requires. Id. at 22 (citing Ex. 1007 ¶¶ 68–70, 73). Petitioner asserts
Joseph’s security/technical support entity 20 corresponds to the claimed
“security administrator device.” Id. at 23. In addition, Joseph’s Figure 4
shows laptop 12 communicating with technical support entity 20 that
includes server 60, which Petitioner corresponds to the claimed “security
administrator processor.” Id. at 25–26. Joseph further discloses processor
74 executing program code stored in storage medium 57 (Ex. 1007 ¶ 74),
which Petitioner asserts teaches the claimed “wake code” stored in the
security system memory. Id. at 27–28, 31–32. Petitioner also asserts that in
Joseph, SDU 14 receives messages from technical support entity 20 that
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allow laptop 12 and specific components thereof to be turned on, thus
fulfilling claim 1’s requirements related to a “wake event” and “wake
signal.” Id. at 29–32. Petitioner asserts that in light of Joseph’s control
signals and commands, Joseph teaches the claimed “security agent” and
“security services.” See id. at 24, 32–35. Specifically, control signals from
control unit 30 allow the laptop computer 12 to be turned on, and
subsequently perform various functions including encrypting memory
elements, uploading a software upgrade, and communicating with
security/technical support entity 20. Ex. 1007 ¶¶ 75–76. Additionally, a
server may transmit messages to SDU 14 to perform technical support
commands, including diagnostics or maintenance operations on the laptop.
Id. ¶ 144.
Other than as discussed above, Patent Owner offers no argument
disputing Petitioner’s analysis. We have reviewed Petitioner’s arguments
and the underlying evidence cited in support and are persuaded Petitioner
sufficiently establishes Joseph teaches the remaining, undisputed limitations
in claim 1. See Pet. 19–36. For the reasons explained above, Petitioner has
proved by a preponderance of the evidence that claim 1 would have been
obvious over Joseph.
e. Claim 16
Independent claim 16 is a method claim parallel in scope to claim 1.
The parties do not argue claim 16 separately from claim 1. See Pet. 36–38;
PO Resp. 19–30. For the same reasons explained above, Petitioner has
proved by a preponderance of the evidence that claim 16 would have been
obvious over Joseph.
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f. Claims 9 and 24
Claims 9 and 24 depend, respectively, from claims 1 and 16 and
further require “wherein the performing the particular security services
includes removing unauthorized data from the mobile device.” Petitioner
cites Joseph’s paragraphs 75 and 134, which disclose erasing data stored in
one or more memory elements of the memory system 42, as encompassing
the additional function recited in claims 9 and 24. Pet. 36. Patent Owner
does not dispute Petitioner’s assertions in this regard. We have reviewed
Petitioner’s arguments and the underlying evidence cited in support and are
persuaded Petitioner sufficiently establishes Joseph teaches “wherein the
performing the particular security services includes removing unauthorized
data from the mobile device.”
2. Second Ground: Obviousness of Claims 13, 14, 28, and 29 based on
Joseph and Zmudzinski
Petitioner contends claims 13, 14, 28, and 29 would have been
obvious over Joseph and Zmudzinski. Pet. 39–46. Based on Petitioner’s
analysis and for the reasons explained below, we find Petitioner has shown
by a preponderance of evidence that claims 13, 14, 28, and 29 would have
been obvious over Joseph and Zmudzinski.
Petitioner asserts that Zmudzinski discloses “wherein the performing
the particular security services includes performing a malware scan of the
mobile device” (claims 13 and 28), as well as “wherein the performing the
particular security services includes performing a data security scan of the
mobile device” (claims 14 and 29). Id. at 41–46. Specifically, Petitioner
cites Zmudzinski’s paragraph 67 as disclosing waking a device logical
partition to perform “virus scanning.” Id. at 42. According to Petitioner, a
virus scan is both a malware scan (claims 13 and 28) and a data security scan
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(claims 14 and 29). Id. at 41, 42. Petitioner further asserts it would have
been obvious to one skilled in the art to modify Joseph to perform
Zmudzinski’s virus or malware scanning as an example of processing
“complementary to, and compatible with” the functionality and capabilities
of the Joseph laptop, particularly given the known benefits of protecting
devices from malicious code. Id. at 44–45. Patent Owner does not contest
Petitioner’s assertions in this regard. Based on the current record, we agree
with Petitioner’s analysis:
The combination of Joseph and Zmudzinski’s virus scanning
would not have involved more than applying a known technique
(i.e., virus scanning) to a known device (i.e., the Joseph laptop)
that was ready for improvement (i.e., ready to include virus
scanning as a service invoked after being awoken from power
management mode) to yield predictable results (i.e., virus
detection as a security service).
Id. at 45. Thus, we find Petitioner has demonstrated sufficient reasoning
with some rational underpinning to support the legal conclusion that its
asserted combination of Joseph and Zmudzinski would have been obvious to
one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007).
3. Third Ground: Obviousness of Claims 1, 9, 11, 16, 24, and 26 based on
Gordon
Petitioner contends claims 1, 9, 11, 16, 24, and 26 would have been
obvious over Gordon. Pet. 46–70. Based on Petitioner’s analysis and for
the reasons explained below, we find Petitioner has shown by a
preponderance of evidence that claims 1, 9, 11, 16, 24, and 26 would have
been obvious over Gordon.
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a. “a security system processor being different than the mobile device
processor”
Petitioner asserts Gordon teaches “a security system processor being
different than the mobile device processor.” Pet. 57–59. According to
Petitioner, Gordon discloses a laptop computer 10 (the clamed “mobile
device”) incorporating a wireless security module 19, which Petitioner maps
to the claimed security system having a security system processor (i.e., the
processor that implements firmware agent 21). Id. at 58. Because Gordon
discloses that “the security module or subsystem is incorporated in a
processor, which is separate from the main processor of the laptop,”
Gordon’s includes a security system processor “being different than” its
mobile device processor. Id. (quoting Ex. 1010, 11:14–16).
Patent Owner asserts that Gordon does not disclose “a security system
processor being different than the mobile device processor.” PO Resp. 31.
Patent Owner’s arguments are the same as those addressed above related to
Joseph—i.e., that the claims preclude the security system and its processor
residing in the mobile device. See id. at 31–33. We disagree with Patent
Owner’s argument for the reasons explained above. Gordon teaches a
security system processor (i.e., the processor running firmware agent 21)
that is different than the laptop’s main processor. Ex. 1010, 11:14–16.
Gordon also teaches that the security system processor may reside “on a
board separate from the motherboard.” Id. at 10:14–15. Thus, we find
Gordon teaches the disputed limitation requiring “a security system
processor being different than the mobile device processor.”
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b. “the mobile device including a mobile device processor and including
a security agent configured to cooperate with the security system,” and
“the security agent of the mobile device being configured to perform
security services”
Claim 1 requires “the mobile device including a mobile device
processor and including a security agent configured to cooperate with the
security system,” and “the security agent of the mobile device being
configured to perform security services.” Petitioner asserts that Gordon’s
host agent 14 is the claimed security agent. Pet. 54. According to
Petitioner, “Gordon discloses the host agent cooperating with the security
module’s firmware [security agent] agent via messages ‘to switch on the
computer and/or wake up the host agent.’” Id. at 55 (quoting
Ex. 1010, 17:5–9). In addition, Gordon’s discloses that “the firmware agent
should wake-up the host so that a data protection measure can be invoked.”
Id. at 64 (quoting Ex. 1010, 4:58–63). Because “[a] POSITA would have
understood that ‘a data protection measure’ is a security service designed to
protect the laptop,” Gordon’s host agent (security agent) performs security
services, as claimed. Id. at 64.
In contesting whether Gordon teaches the claimed “security agent of
the mobile device being configured to perform security services,” Patent
Owner again relies on its argument that the mobile device must be remote
from the security system. See PO Resp. 35 (“Since the security system is
remote from the mobile device as discussed in [Patent Owner’s “different”
means “remote” claim construction argument] Petitioner’s position that
Gordon’s disclosed security system may reside on the mobile device also
fails.”). We disagree with Patent Owner for the reasons explained above.
Patent Owner further asserts that that having Gordon’s wireless security
module 19 on the mobile device (as opposed to remote form the mobile
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device) “defeats [the security device’s] purpose as a mobile device’s ‘first
line of defense’ as a network security system.” Id. at 36–37 (citing Ex.
1001, 1:48–64). We disagree with Patent Owner’s argument because the
claims do not recite a “first line of defense.” In addition, even if we were to
require such a feature in the claims, we agree with Petitioner that “Gordon’s
security module 19 provides a ‘first line of defense’ that is separate from any
additional lines of defense provided by the laptop’s main processor.” Pet.
Reply 19.
At the hearing, Patent Owner argued for the first time that Gordon
fails to teach the claimed “security agent of the mobile device being
configured to perform security services” because in Gordon, the alleged
security agent (i.e., the host agent 14 laptop’s processors 48, together with
the power management controller 76) does not perform the asserted security
services. Instead, Patent Owner contends, Gordon’s firmware agent 21—
which is not part of what Petitioner mapped to the claimed “security
agent”—performs the alleged security services. See Tr. 49:16–23. We
disagree with Patent Owner’s argument for two reasons. First, Patent
Owner’s argument is procedurally flawed because Patent Owner did not
raise it in the Response. See Paper 11, 7 (“Patent Owner is cautioned that
any arguments for patentability not raised in the response may be deemed
waived.”); see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,766 (Aug. 14, 2012) (“The patent owner response . . . should identify all
the involved claims that are believed to be patentable and state the basis for
that belief.”).
Putting aside the waiver problem, we also disagree with Patent
Owner’s argument substantively. Even though in Gordon, the cited security
services involve the firmware agent, we agree with Petitioner that one
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skilled in the art would understand that the host agent—i.e., the asserted
security agent—would actually perform some of the security services. See
Ex. 1010, 4:58–63 (“[T]he firmware agent should wake-up the host so that a
data protection measure can be invoked.”) (emphasis added); see also
Tr. 82:2–8 (“So the firmware agent is saying hey, wake up and do this data
protection measure. It is managing it; it’s not actually performing it. In that
particular case, the laptop’s main processor will perform it.”). As
Petitioner’s expert, Dr. Jakobsson explained, “software updates and uploads
(i.e., software deployments) are security services,” and “[a] POSITA would
have understood that these services are performed by the host agent because
it is woken up in order to perform these services.” Ex. 1011 ¶ 152. We
agree with Dr. Jakobsson’s analysis. Thus, we agree with Petitioner that the
security agent “perform[s]” the asserted security services, as claim 1
requires.
c. Uncontested limitations
As for the remaining limitations of claim 1, Petitioner provides a
detailed analysis of Gordon’s disclosures that teach every element of the
claim. Pet. 47–65. Petitioner identifies Gordon’s laptop 10 as the claimed
“mobile device.” Id. at 50. Petitioner asserts the small boxes between
Gordon’s wireless security module and host agent represent the claimed
“communication interface” that communicates with other components of the
mobile device over a network, as claim 1 requires. Id. at 50–52. Petitioner
asserts Gordon’s management center 70 corresponds to the claimed “security
administrator device.” Id. at 52. In addition, Joseph’s Figure 1 shows
Gordon’s management center 70 includes a server 71, whose processor is the
claimed “security administrator processor.” Id. at 56–57. In Gordon, the
firmware agent can receive a message from the monitoring center
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“indicat[ing] that the firmware agent should wake-up the host so that a data
protection measure can be invoked.” Id. at 59 (quoting Ex. 1010, 4:58–63).
Petitioner explains that the message from the monitoring center 70 is the
claimed “wake event,” and the subsequent wake-up signal sent to the host
agent is the claimed “wake signal.” Id. at 59–60. According to Petitioner,
Gordon teaches that the wake event and wake signal processes are executed
by the security module processor (i.e., the claimed “security system
processor”), which implements the code (the claimed “wake code”) stored
on the storage 20 of the security module 19. Id. at 61–62. Petitioner further
explains that Gordon’s host agent is claimed mobile device’s “security
agent,” which performs the claimed “security services,” such as asset
tracking/management/recovery, data protection/deletion, and software
deployments/updates. Id. at 64.
Other than as discussed above, Patent Owner offers no argument
disputing Gordon’s disclosures of the claimed features. We have reviewed
Petitioner’s arguments and the underlying evidence cited in support and are
persuaded Petitioner sufficiently establishes Gordon teaches the remaining,
undisputed limitations in claim 1. See Pet. 46–65. For the reasons explained
above, Petitioner has proved by a preponderance of the evidence that claim 1
would have been obvious over Gordon.
d. Claim 16
As noted above, independent claim 16 is a method claim parallel in
scope to claim 1 and the parties do not argue claim 16 separately. See
Pet. 67–69; PO Resp. 30–38. For the same reasons explained above,
Petitioner has proved by a preponderance of the evidence that claim 16
would have been obvious over Gordon.
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e. Claims 9 and 24
Claims 9 and 24 depend, respectively, from claims 1 and 16 and
further require “wherein the performing the particular security services
includes removing unauthorized data from the mobile device.” Petitioner
cites Gordon’s teaching that that the services invoked by the security module
19 include “data delete,” as encompassing the additional function recited in
claims 9 and 24. Pet. 65, 69. Patent Owner does not dispute Petitioner’s
assertions in this regard. We have reviewed Petitioner’s arguments and the
underlying evidence cited in support and are persuaded Petitioner
sufficiently establishes Gordon teaches “wherein the performing the
particular security services includes removing unauthorized data from the
mobile device.”
f. Claims 11 and 26
Claims 11 and 26 depend, respectively, from claims 1 and 16 and
further require “wherein the performing the particular security services
includes re-imaging the mobile device.” Petitioner cites Gordon’s teaching
of installing and updating software, as well as reinstalling the laptop’s
operating system as corresponding to the additional function in claims 11
and 26. Pet. 66. Patent Owner does not dispute Petitioner’s assertions in
this regard. We have reviewed Petitioner’s arguments and the underlying
evidence cited in support and are persuaded Petitioner sufficiently
establishes Gordon teaches “wherein the performing the particular security
services includes re-imaging the mobile device.”
4. Fourth Ground: Obviousness of Claims 13, 14, 28, and 29 based on
Gordon and Zmudzinski
Petitioner contends claims 13, 14, 28, and 29 would have been
obvious over Gordon and Zmudzinski. Pet. 70–75. Like its earlier Joseph-
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Zmudzinski combination, Petitioner relies on Zmudzinski’s virus scan for
teaching a malware scan (claims 13 and 28) and a data security scan (claims
14 and 29). Petitioner’s rationale for combining Zmudzinski’s virus scan—
i.e., the known benefits of scanning/protecting devices—mirrors its rationale
for its Joseph-Zmudzinski combination. See Pet. 73–74. Patent Owner does
not raise any additional arguments contesting Petitioner’s Gordon-
Zmudzinski combination. For the reasons explained in Section II.D.2 above,
we agree with Petitioner’s analysis. Thus, we find Petitioner has shown by a
preponderance of evidence that claims 13, 14, 28, and 29 would have been
obvious over Gordon and Zmudzinski.
5. Fifth Ground: Obviousness of Claims 11 and 26 based on Joseph and
Gordon
Petitioner sets forth a combination of Joseph and Gordon with respect
to claims 11 and 26 substantially similar to its assertion of Joseph alone in
Ground 1. See Pet. 75–78. In addition, Petitioner relies on Gordon’s
teaching of installing and updating software, as well as reinstalling the
laptop’s operating system, as corresponding to the additional function in
claims 11 and 26. Patent Owner does not raise any additional arguments
contesting Petitioner’s Joseph/Gordon combination. For the reasons
explained above in Sections II.D.1 and II.D.3.f, we agree with Petitioner that
the combined teachings of Joseph and Gordon disclose each limitation in
claims 11 and 26. In addition, we find Petitioner articulated sufficient
reasoning with some rational underpinning to support the legal conclusion
that its proffered combination of Joseph and Gordon would have been
obvious to one skilled in the art. See KSR, 550 U.S. at 418. Specifically, as
Petitioner explains, one of ordinary skill in the art would have found it
obvious to implement Gordon’s OS reinstallation functionality on Joseph’s
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laptop as a well-known security utility, with the Joseph laptop having similar
capabilities as the Gordon system. See Pet. 76–77. Further, Petitioner notes,
one of ordinary skill in the art would have been motivated to perform OS
updating as “a routine part of computer security maintenance” and “a
common method of repair after a malware infection.” Id. at 77. Thus, we
find Petitioner has shown by a preponderance of evidence that claims 11 and
26 would have been obvious over Joseph and Gordon.
III. CONCLUSION8
We have reviewed the Petition, Patent Owner Response, Petitioner
Reply, and Patent Owner Sur-Reply. We have considered all of the
evidence and arguments presented by Petitioner and Patent Owner, and have
weighed and assessed the entirety of the evidence as a whole. We
determine, on this record, that Petitioner has demonstrated by a
preponderance of evidence that claims 1, 9, 11, 13, 14, 16, 24, 26, 28, and 29
of the ’595 patent are unpatentable as follows:

8 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 9, 16,
24
103 Joseph 1, 9, 16, 24
13, 14, 103 Joseph, 13, 14, 28, 29
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IV. ORDER
It is hereby:
ORDERED that claims 1, 9, 16, and 24 are unpatentable under 35
U.S.C. § 103(a) as obvious over Joseph;
FURTHER ORDERED that claims 13, 14, 28, and 29 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Joseph and Zmudzinski;
FURTHER ORDERED that claims 1, 9, 11, 16, 24, and 26 are
unpatentable under 35 U.S.C. § 103(a) as obvious over Gordon;
FURTHER ORDERED that claims 13, 14, 28, and 29 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Gordon and Zmudzinski, and
FURTHER ORDERED that claims 11 and 26 are unpatentable under 35
U.S.C. § 103(a) as obvious over Joseph and Gordon; and
FURTHER ORDERED that this Decision is final, and a party to this
proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

28, 29 Zmudzinski
1, 9, 11,
16, 24, 26
103 Gordon 1, 9, 11, 16, 24,
26

13, 14,
28, 29
103 Gordon,
Zmudzinski
13, 14, 28, 29
11, 26 103 Joseph,
Gordon
11, 26
Overall
Outcome
1, 9, 11, 13, 14,
16, 24, 26, 28,
29

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PETITIONER:

Robert Buergi
Robert.buergi@dlapiper.com

Gianni Minutolli
Gianni.minutoli@dlapiper.com

James Heintz
Jim.heintz@dlapiper.com

PATENT OWNER:

James Hannah
jhannah@kramerlevin.com

Jeffrey Price
jprice@kramerlevin.com

Michael Lee
mhlee@kramerlevin.com