Microsoft Corporationv.Secure Web Conference Corporation

Patent Trial and Appeal Board

Nov 12, 2014

10162800 (P.T.A.B. Nov. 12, 2014)

Trials@uspto.gov Paper 15
Tel: 571-272-7822 Entered: November 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MICROSOFT CORPORATION,
Petitioner,

v.

SECURE WEB CONFERENCE CORPORATION,
Patent Owner.
____________

Case IPR2014-00745
Patent 6,856,687 B2
____________

Before PHILLIP J. KAUFFMAN, JENNIFER S. BISK, and
BEVERLY M. BUNTING, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON REHEARING
37 C.F.R. § 42.71(c)

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I. INTRODUCTION
Petitioner, Microsoft Corporation, filed a Petition on May 9, 2014,
requesting an inter partes review of claims 1 and 29 of U.S. Patent No.
6,856,687 B2 (Ex. 1001, “the ’687 patent”). Paper 1 (“Pet.”). Patent
Owner, Secure Web Conference Corporation, filed a Preliminary Response
on August 21, 2014. Paper 11 (“Prelim. Resp.”). The Board denied
institution of an inter partes review. Paper 12 (“Decision” or “Dec.”).
Petitioner filed a Request for Rehearing asking that the Board reconsider its
decision not to institute. Paper 13 (“Req. Reh’g.”).
We grant Petitioner’s request insofar as we have reconsidered our
decision on the ground challenged in the rehearing request, but we decline to
modify our previous decision.

II. ANALYSIS
In our Decision, the Board denied each ground of unpatentability
asserted by Petitioner. Dec. 1, 20-21. In this request for rehearing,
Petitioner challenges only our determination with respect to the ground
based upon modifying Morris to include encryption. Req. Reh’g. 1. In the
Decision, we evaluated this assertion as a ground of unpatentability based
upon Morris and Crowley. Dec. 13. For the reasons that follow, that was a
mischaracterization.
In Section II.B.2, the Petition put forth the following ground of
unpatentability, “[c]laims 1 and 29 are rendered obvious under § 103(a) by
’599 in view of Morris ’197 alone or in further view of Cox ’798.” Pet. 6-7;
see also Pet. 41 (similarly stating the ground). The Decision interpreted this
as assertion that the subject matter of claims 1 and 29 was obvious in view
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of either Crowley and Morris, or Crowley, Morris and Cox.

Dec. 11-15.
Regarding obviousness based upon Crowley and Morris the Decision
interpreted the Petition to present three alternatives: (1) Morris provides any
element missing from Crowley, (2) substitution of Morris’ polling technique
for Crowley’s, and (3) modifying Morris to include encryption as taught by
Crowley. Dec. 11-13; see also Pet. 41˗50 (similarly stating these
alternatives).
Regarding the ground that is the subject of this rehearing request (i.e.,
modifying Morris to include encryption), the Petition states:
As is demonstrated in the claim charts, the only element of
claims 1 and 29 that is not disclosed in Morris ’197 alone is
encryption/decryption, which would have been a common sense
modification to Morris ’197 if someone wanted to send secure
communications with a portable device, which is a known goal
prior to the ’687 patent. Ex. 1002, Bristow Decl. ¶ 101. At any
point in the over 10 years between the filing date of Morris
’197 and the earliest possible filing date for the ’687 patent, it
would have been a simple and obvious modification to add
encryption/decryption capabilities to Morris ’197 to arrive at
claims 1 and 29 of the ’687 patent. Id. at ¶ 101.
Pet. 43˗44; see also Ex. 1002 ¶ 101 (essentially repeating this portion
of the Declaration).
In interpreting this assertion, the Decision states, “[a]lthough not
explicit, Petitioner is asserting that it would have been obvious to modify
Morris’s device by adding encryption and decryption as disclosed by
Crowley.” Dec. 13. A more accurate characterization is that Petitioner
contends that because there was a known need for a portable
communications encryption/ decryption device, it would have been common
sense to modify Morris to include such capability.
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A ground of unpatentability based upon obviousness over Morris
alone was not properly presented in the Petition. See Pet. 6-7, 41. Thus, to
the extent that Petitioner’s assertion suggests that claims 1 and 29 are
unpatentable over Morris alone, such a ground was not properly presented
and will not be considered.
To the extent that this assertion was intended as a ground based upon
Morris and Crowley, the claim chart identifies an encoding/decoding device
in both Crowley and Cox (Pet. 46˗47), and the Petition does not specify if
the encryption to be added to Morris is found in Crowley or Cox (Pet.
43˗44). Nor does the Petition provide a cogent explanation of how such
device would be incorporated into Morris. Consequently, Petitioner has not
explained sufficiently how claims 1 and 29 are unpatentable. See 37 C.F.R.
42.104(b)(4); 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.22(a)(2).
Petitioner’s assertion suffers from a second shortcoming, in that
Petitioner has not shown adequately that Morris’s polling technique
corresponds to selecting a configuration as claimed. As detailed in our
Decision, independent claims 1 and 29 each require that the device for
providing secure communications over a network includes a processor
operable to execute code for selecting a configuration of a transmission port
and a reception port from among the communication ports. Dec. 9. This
selection must be dependent upon the presence of a network communication
device or an input-output device in communication with the selected ports.
Id.
Petitioner contends that Morris discloses a communication port for
transfer of audio data (J5, J6, J7), a plurality of communication ports for
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transfer of digital data (J1, J3, J8), and selecting a configuration as claimed.
Pet. 44-45, 49˗50 (citing Ex. 1002, 1:57˗60; 2:13˗19; Figs. 9A, 9B).
The cited portions of the body of the Specification do not support
adequately the contention that Morris discloses selecting a configuration as
claimed. See Pet. 49˗50 (citing Ex. 1002, 1:57˗60; 2:13˗19). Specifically,
Morris discloses that the control unit receives voice and data signals from a
plurality of different input sources and routes (switches) these signals to
different destinations. Ex. 1005 at 1:57˗60. Morris does not explicitly
disclose that this routing is done dependent upon the presence of a network
communication device or an input-output device. Id. Rather, Morris
discloses that this routing is dependent upon (1) activation of various
switches by the operator, and (2) sense signals sent to the CPU by “various
units comprising the communications system.” Id. at 2:14˗19. Selection
based upon activation of switches by the operator does not correspond to
selection based upon the presence of an input-output or communication
device. Further, Petitioner does not explain cogently how sense signals from
various units of the communication system corresponds to selecting a
transmission and reception port dependent upon the presence of an input-
output or communications device.
The Petition also asserts that Figures 9A and 9B indicate “various
selection decisions made based on presence of (a) input/output devices such
as speaker phones and cellular phones and (b) network communications
devices such as the cellular transceiver unit.” Pet. 49˗50. Petitioner
identifies Morris’s speaker phone (speaker phone 28) and cellular phone
(cellular handset 20) as input/output devices and Morris’s cellular
transceiver unit (cellular transmit/receive unit (TRU) 16) as a network
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communication device.
1
See Pet. 49˗50. Therefore, the question presented
is whether Petitioner has shown adequately that Morris discloses selecting a
configuration of a transmission port and a reception port from among the
communication ports (J1, J3, J5-J8) dependent upon the presence of a
network communication device (cellular transmit/receive unit (TRU) 16) or
an input-output device (speaker phone 28 or cellular headset 20) in
communication with the selected ports.
Significantly, Morris details the operation of the overall system as
shown in Figures 9A and 9B (Ex. 1005 at 3:7-9; 7:47˗9:26); however,
Petitioner does not cite nor explain the relevance of this disclosure. See Pet.
48˗50.
Regarding the operation of cellular transmit/receive unit (TRU) 16
and cellular headset 20, Morris does not disclose that the associated
communication ports (J3 and J8, and J7, respectively) are selected
depending on the presence of unit 16 or headset 20 in communication with
an associated port. Rather, Morris discloses that when a user desires to send
a voice call via the cellular system using the cellular handset 20 the operator
turns on: the CU power switch (178), cellular headset 20, and TRU power,
causing the proper sense signals to be sent to CPU 32 which then applies
power to cellular handset 20. Ex. 1005, 8:34-43; Fig. 9A. Subsequently,
voice signals from cellular headset 20 are then sent via TRU interface 40 to
TRU 16 and radiated via antenna 18 to the external cellular system. Id. at
43-50; Fig. 9B. Therefore, selection is dependent on operator switch

1
Parentheticals are to the corresponding nomenclature in Morris. See Ex.
1005, 3:17-23; Figs. 1, 2.
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activation and not the presence of a device in communication with a port as
claimed.
Regarding the operation of speaker phone 28, Morris discloses that
when a user desires to place a voice call via landline, the operator activates
the communications software program in computer 12 and dials the desired
telephone number to include a code to tell the software it is a voice call
(160). Ex. 1005, 7:62˗8:2. If telephone-type headset 26 in not plugged in (is
headset plugged in 162?), speaker phone 28 is used (use speaker phone 164).
Id. at 8:2˗5. Whether telephone-type headset 26 is plugged in or not, both
headset 26 and the speaker phone 28 are operatively connected to J6.
Therefore, the selection of the communication port (J6) does not depend on
the presence of an input/output device (telephone-type headset 26).
2
See
Prelim. Resp. 32 (addressing this shortcoming of the Petition).
Consequently, Petitioner has not established a reasonable likelihood
of prevailing on the assertion that claims 1 and 29 are unpatentable over
either Morris or Morris and Crowley.

III. ORDER
For the foregoing reasons, it is
ORDERED that Petitioner’s Request for Rehearing is granted to the
extent that we reconsider our determination not to institute an inter partes
review;
FURTHER ORDERED that Petitioner’s Request for Rehearing is

2
We note that Petitioner relies upon cellular headset 20, not telephone-type
headset 26, as an input/output device. See Pet. 49˗50.
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denied in all other respects.

PETITIONER:
Jeffrey I.D. Lewis
Ryan Mott
Patterson BelknapWebb & Tyler LLP
securewebipr@pbwt.com
rmott@pbwt.com

PATENT OWNER:
Brett Pinkus
Friedman Suder & Cooke
pinkus@fsclaw.com

Wayne Helge
Donald Jackson
Davidson, Berquist, Jackson & Gowdey, L.L.P.
whelge@dbjg.com
djackson@dbjg.com