Decision Denying Institution of Inter Partes Review IPR2014-00745

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Takeaway: A petition does not establish a reasonable likelihood of prevailing if the asserted anticipation ground relies on inherency without providing sufficient evidence to show that the inherent element is necessarily present in the reference, and if a reason with rational underpinning is not provided for why it would have been obvious to make the modification proposed in an obviousness ground.

In its Decision, the Board denied institution of inter partes review because the Board determined that Petitioner has not established a reasonable likelihood of prevailing with respect to either of the two challenged claims of the ’687 Patent. The ’687 Patent relates to a telecommunications security device adapted for use with voice and data communications.

The Board started with claim construction, and determined that only one term needed construction, namely, “said encryption device.” Petitioner contended that claim 29 was indefinite because the phrase “said encryption/decryption device,” lacks an antecedent basis, but failed to provide a supporting explanation. Thus, the Board determined that a person of ordinary skill in the art would understand that term had antecedent basis.

The Board then turned to the anticipation ground, and determined that Petitioner had not made an adequate showing with regard to at least the claimed keypad and processor that selects a configuration. Petitioner argued the keypad was inherently disclosed in the prior art. Patent Owner argued that the prior art included entry of an appropriate encryption key being accomplished in a manner other than with a keypad, and thus the keypad was not necessarily present. The Board agreed with Patent Owner that because the keypad was not necessarily present, it could not be found to be inherent in the prior art reference.

The Board then turned to the obviousness grounds. In the first grounds, Petitioner argued that the additional references taught any elements missing from the prior art reference asserted in the anticipation ground. However, the assertion did not state with particularity the differences between the reference and the subject matter of the claims challenged.

In an alternative obviousness ground, Petitioner argued that it would have been obvious to substitute Morris’s polling technique for Crowley’s because both references disclose a polling technique. However, the Board determined that such a substitution would not remedy all of the deficiencies of Crowley. Further, the Board determined that merely stating that both references include a polling technique does not provide a reason why one of ordinary skill in the art would have chosen to make the substitution.

The Board further assessed a number of additional obviousness grounds asserted by Petitioner, all of which had similar deficiencies, namely that a rationale was not provided for why one of ordinary skill in the art would have made the proposed modification of the cited references.

Microsoft Corp. v. Secure Web Conference Corp., IPR2014-00745
Paper 12: Decision Denying Institution of Inter Partes Review
Date: September 29, 2014
Patent 6,856,687 B2
Before: Philip J. Kauffman, Jennifer S. Bisk, and Beverly M. Bunting
Written by: Kauffman
Related Proceedings: Secure Web Conference Corp. v. Microsoft Corp., Civil Action No. 2:13-cv-2642-JS-AKT (E.D.N.Y.); Secure Web Conference Corp. v. Logitech, Inc., Civil Action No. 2:13-cv-3809-JS-AKT (E.D.N.Y.); and Secure Web Conference Corp. v. Citrix Systems, Inc., Civil Action No. 2:13-cv-3810-JS-AKT (E.D.N.Y.)