K.Mizra LLC

Patent Trials and Appeals Board

Mar 9, 2022

IPR2021-00593 (P.T.A.B. Mar. 9, 2022)

Trials@uspto.gov Paper 27 571-272-7822 Date: March 9, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CISCO SYSTEMS, INC., Petitioner, v. K.MIZRA LLC, Patent Owner. IPR2021-00593 Patent 8,234,705 B1 Before MINN CHUNG, STACY B. MARGOLIES, and IFTIKHAR AHMED, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION Denying Patent Owner’s Request for Rehearing 37 C.F.R. § 42.71(d) IPR2021-00593 Patent 8,234,705 B1 2 I. INTRODUCTION K.Mizra LLC (“Patent Owner”) filed a Request for Rehearing (Paper 11, “Request” or “Req. Reh’g”) of the Institution Decision (Paper 9, “Dec.”), in which, based on the information presented in the Petition (Paper 1, “Pet.”) and taking into account the arguments and evidence presented in Patent Owner’s Preliminary Response (Paper 8, “Prelim. Resp.”), we granted institution of claims 1-3, 5-13, and 15-19 (the “challenged claims”) of U.S. Patent No. 8,234,705 B1 (Ex. 1001, “the ’705 patent”). Patent Owner also requested Precedential Opinion Panel (“POP”) review of its Rehearing Request. Ex. 3003. Subsequently, Patent Owner withdrew the POP request. Ex. 3004. In addition, Patent Owner filed a Motion to Withdraw Section III of the Request (Paper 24), which was granted (Paper 25). Accordingly, in this Decision, we address the remaining issues raised in the Request, as described in Section IV of the Request or elsewhere in the Request relating to the same issues. In its Request, Patent Owner contends the Institution Decision misapprehended the reasons why Ovadia’s trusted platform module (“TPM”) execution engine was technologically incompatible with Gleichauf’s software. See Req. Reh’g 3-4, 12-14. The Request also asserts the Decision overlooked Patent Owner’s argument that the Petition allegedly failed to show how Gleichauf’s application program interface (“API”) would interface with Ovadia’s TPM. See id. at 4-5, 14-15. As explained below, we have considered the arguments presented by Patent Owner in its Request for Rehearing, but discern no reason to modify the Institution Decision. Consequently, Patent Owner’s Request for Rehearing is denied. IPR2021-00593 Patent 8,234,705 B1 3 II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Patent Owner seeks rehearing of our Decision granting institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). With these principles in mind, we address the arguments presented in Patent Owner’s Request. III. ANALYSIS A. Arguments in the Request Regarding Technological Incompatibility of Gleichauf and Ovadia We first consider Patent Owner’s argument in the Request that “the Board misapprehended Patent Owner’s discussion relating to the technological incompatibility among the Gleichauf and Ovadia references as being premised on physical incorporation of certain elements.” See Req. Reh’g 12-14 (citing Dec. 48; Prelim. Resp. 27-29). The Request asserts that Patent Owner’s argument in the Preliminary Response was based on “software integration and software implementation” in combining Gleichauf and Ovadia, and was “not premised on any physical incorporation of elements from Ovadia and Gleichauf.” Id. at 13 (underlined emphasis IPR2021-00593 Patent 8,234,705 B1 4 added). The Request contends that Patent Owner’s argument in the Preliminary Response “did not rely on any physical incorporation of the TPM chip” but, rather, was “entirely based on incompatibility for software integration.” Id. at 12 (emphases added). We do not agree that we misapprehended in the Institution Decision Patent Owner’s argument raised in the Preliminary Response. In the Preliminary Response, Patent Owner argued that Ovadia’s TPM commands would not be executed on “a general-purpose processor such as the one disclosed in Gleichauf.” Prelim. Resp. 27 (emphasis added). Patent Owner further argued that Ovadia’s TPM execution engine is a “special purpose processor” with a limited instruction set that is highly secure and is not open for external software, such as Gleichauf’s posture agent software, to be implemented within the engine. Id. at 27-28 (emphasis added). Similarly, the Request asserts that “[t]he point of Patent Owner’s argument [in the Preliminary Response] was that the TPM execution engine is by its highly secure nature, dedicated to executing a limited instruction set of TPM commands and thus, could not be modified to execute external software such as the one in Gleichauf.” Req. Reh’g 14 (emphasis added) (citing Prelim. Resp. 27). In addition, the Preliminary Response asserted that Petitioner does not establish sufficient motivation to combine Gleichauf and Ovadia because Petitioner provides no evidence “(1) how a TPM chip manufacturer would develop within the TPM execution engine, software typically developed by third parties; or (2) why the TPM manufacturer would open up the chip to external software integration in that way.” Prelim. Resp. 28-29 (emphases added). All these arguments touch on bodily incorporation of elements from Gleichauf and Ovadia-i.e., bodily incorporation of Gleichauf’s software IPR2021-00593 Patent 8,234,705 B1 5 into Ovadia’s TPM hardware (e.g., the “special purpose processor” or “TPM chip” of the TPM execution engine) or bodily incorporation of Ovadia’s TPM commands into Gleichauf’s hardware (e.g., the “general-purpose processor” of Gleichauf). As stated in the Institution Decision, Patent Owner’s argument in the Preliminary Response is unpersuasive because “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Dec. 48 (emphasis added) (quoting MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981))). Patent Owner’s arguments in the Preliminary Response cited in the Request were narrowly presented in the context of incorporating “Gleichauf’s Posture Agent with Ovadia’s Trusted Platform Module” (see Prelim. Resp. 26-29), so we properly considered Patent Owner’s arguments in that context in the Institution Decision. Thus, the record shows that the Institution Decision did not misapprehend Patent Owner’s argument raised in the Preliminary Response. The Request’s characterization of the Preliminary Response as containing arguments based on “software integration and software implementation” and “incompatibility for software integration” (Req. Reh’g 12-13) does not change the nature of Patent Owner’s arguments presented in the Preliminary Response, which are directed to bodily incorporation of elements from Gleichauf and Ovadia. For example, Patent Owner’s arguments are not directed to combining the teachings of Gleichauf and Ovadia, e.g., modifying Gleichauf’s posture agent to implement Ovadia’s TPM functions (e.g., security key generation, encryption, hashing IPR2021-00593 Patent 8,234,705 B1 6 operations, etc. (Ovadia (Ex. 1006), 4:61-67)) using Gleichauf’s general purpose processor, but instead are directed to bodily incorporation the literal TPM chip commands into Gleichauf’s hardware, e.g., requiring Gleichauf’s general purpose processor to execute the literal TPM instruction set of the dedicated TPM chip of Ovadia. B. Arguments in the Request Regarding Why the Petition Failed to Show How Gleichauf’s APIs Would Interface with Ovadia’s TPM We next turn to Patent Owner’s assertion that we overlooked in the Institution Decision Patent Owner’s analysis in the Preliminary Response that Petitioner failed to show how Gleichauf’s APIs would interface with Ovadia’s TPM. Req. Reh’g 14-15. Specifically, the Request asserts that the Institution Decision did not address Patent Owner’s argument in the Preliminary Response that Petitioner failed to show how the TPM execution engine combined with Gleichauf’s posture agent would invoke the manufacturer specific APIs disclosed in Gleichauf, how and where those APIs would run, and which manufacturer would implement those APIs. Id. at 15 (citing Prelim. Resp. 28). As discussed above, this argument is based on bodily incorporation of elements from Gleichauf and Ovadia. The Institution Decision discussed Petitioner’s contention, supported by the testimony of Petitioner’s declarant, Dr. Reddy, that in the proposed combination of Gleichauf and Ovadia, “Gleichauf’s posture agent would be implemented with [TPM] functionality . . ., per Ovadia.” Dec. 49 (emphasis added) (citing Pet. 36; Ex. 1003 ¶ 93). As acknowledged in the Request, the Institution Decision also discussed that “[t]he posture agent implemented with [TPM] functionality would interface with Gleichauf’s posture plug-ins in the same way disclosed in Gleichauf by using the ‘posture plug-in API IPR2021-00593 Patent 8,234,705 B1 7 [application programming interface]’ to collect information requested by Gleichauf’s policy server.” Id. (emphasis added) (citing Pet. 36; Ex. 1003 ¶ 94); Req. Reh’g 15 (citing Dec. 49). In the cited paragraphs of his Declaration, Dr. Reddy testifies that “a POSITA [(person of ordinary skill in the art)] would have been motivated to combine the teachings of Gleichauf and Ovadia, and doing so would have been within the POSITA’s skillset. A POSITA would have appreciated the value of implementing Gleichauf’s posture agent with TPM functionality.” Ex. 1003 ¶ 93 (emphases added). According to Dr. Reddy, “the TCG specification . . . is a ‘platform-independent industry specification that covers trust in computing platforms’ as well as how to implement and use TPMs.” Id. (emphases added). Dr. Reddy further testifies that “[i]n the combination, Gleichauf’s posture agent would be implemented with TPM functionality, as taught by Ovadia” and that “[t]he posture agent implemented with TPM functionality would interface with Gleichauf’s posture plug-ins in the same way disclosed in Gleichauf by using the ‘posture plug-in API’ to collect posture information.” Id. ¶¶ 93-94 (emphases added). Thus, Petitioner presented arguments and evidence, supported by the testimony of Dr. Reddy, that a person of ordinary skill would have been motivated to combine the teachings of Gleichauf and Ovadia, e.g., combining the “TPM functionality,” as taught in Ovadia, with Gleichauf’s teachings of posture agent to arrive at the claimed invention. Dr. Reddy also testified that doing so would have been within the skill set of a person of ordinary skill in the art. In the Institution Decision, rather than overlooking Patent Owner’s argument in the Preliminary Response, we determined that Patent Owner’s bodily incorporation argument was insufficient, at least for IPR2021-00593 Patent 8,234,705 B1 8 purposes of deciding whether to institute a review, to rebut Petitioner’s persuasive arguments and evidence that a person of ordinary skill would have been motivated to combine the teachings of Gleichauf and Ovadia to attain the claimed invention. See Dec. 48-49. Therefore, the record shows that in the Institution Decision we did not overlook or misapprehend Patent Owner’s argument raised in the Preliminary Response. IV. CONCLUSION For the foregoing reasons, Patent Owner has not demonstrated that we abused our discretion or that we misapprehended or overlooked any matter in our Decision granting institution of inter partes review of the challenged claims of the ’705 patent. Patent Owner, therefore, has not carried its burden of demonstrating that the Decision granting institution should be modified. See 37 C.F.R. § 42.71(d). V. ORDER In consideration of the foregoing, it is hereby ORDERED that Patent Owner’s for Rehearing is DENIED. IPR2021-00593 Patent 8,234,705 B1 9 For PETITIONER: Theodore Foster David McCombs Eugene Goryunov Gregory Huh HAYNES AND BOONE, LLP ipr.theo.foster@haynesboone.com david.mccombs.ipr@haynesboone.com eugene.goryunov.ipr@haynesboone.com gregory.huh.ipr@haynesboone.com For PATENT OWNER: Sang Hui Kim Palani Rathinasamy David Schumann FOLIO LAW GROUP PLLC michael.kim@foliolaw.com palani@foliolaw.com david.schumann@foliolaw.com