CUPP Computing AS

Patent Trials and Appeals Board

Aug 25, 2020

IPR2019-00767 (P.T.A.B. Aug. 25, 2020)

Trials@uspto.gov Paper 31
571.272.7822 Entered: 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.
____________

IPR2019-00767
Patent 9,106,683 B2
_____________

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

GIANNETTI, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background
Trend Micro Inc. (“Petitioner”) filed a Petition requesting inter partes
review of claims 1–3, 5, 6, 9–12, 14, 15, and 18–20 (the “challenged
claims”) of U.S. Patent No. 9,106,683 B2 (Ex. 1001, the “’683 patent”).
Paper 1 (“Pet.”). Patent Owner (CUPP Computing AS) filed a Preliminary
Response. Paper 6 (“Prelim. Resp.”). With the Board’s authorization (Paper
9), Petitioner filed a reply (Paper 8) and Patent Owner a sur-reply (Paper 9)
directed solely to a claim construction issue, discussed infra.
After considering the arguments presented in Patent Owner’s
Preliminary Response, 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 to Patent Owner’s Response
(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-
00764, involving U.S. Patent No. 8,631,488, and IPR2019-00765, involving
U.S. Patent No. 9,843,595. A transcript of the hearing is included in the
record. Paper 28 (“Hearing 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
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below, we determine that Petitioner has demonstrated by a preponderance of
the evidence that claims 1–3, 5, 6, 9–12, 14, 15, and 18–20 of the ’683
patent are unpatentable.
B. Related Proceedings:
The parties identify the following district court proceedings
concerning the ’683 patent: CUPP Cybersecurity LLC et al. v. Trend Micro,
Inc., et al., No. 3:18-cv-01251 (N.D. Tex.); CUPP Cybersecurity LLC v.
Symantec Corp., No. 3:18-cv-01554 (N.D. Tex.); Symantec Corp. v. CUPP
Cybersecurity LLC, et al., No. 3:18-cv-04720 (N.D. Cal.); and CUPP
Cybersecurity LLC, et al. v. Symantec Corp., No. 3:19-cv-00298 (N.D. Cal.).
Pet. 1; Paper 4, 1.
C. 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.
D. The ’683 Patent
The ’683 patent is titled “Systems and Methods for Providing Security
Services During Power Management Mode.” Ex. 1001, (54). The patent
addresses the problem of security attacks involving mobile devices, and
observes that as the number of mobile devices and attacks grow, mobile
security becomes more important. Id. at 2:22–23. According to the patent,
mobile devices are more vulnerable to attacks by malicious code when
traveling outside an enterprise network. Id. at 1:51–54. Another
disadvantage of existing security systems, according to the patent, is that
they “require a fully operational system and a significant load on CPU
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power.” Id. at 2:44–46. As the patent explains, “[t]o reduce the impact of
scanning and updating a system, users often leave their PCs active overnight
which consumes power. Further, when the PC is a laptop, the user cannot
close the laptop and expect security functions to be performed.” Id. at 2:46–
50.
The patent thus describes a “mobile security system” that protects a
mobile device and provides greater security. Id. at 5:31–34. In one
embodiment, the mobile security system is “a small piece of hardware that
connects to a mobile device and filters out attacks and malicious code.” Id.
at 5:27–31. This is illustrated in Figure 3 of the ’683 patent, which follows
below:

Figure 3 of the ’683 patent is a block diagram of a network system. Id. at
4:31–32. Network system 300 includes desktop 305, first mobile device
310a, and second mobile device 310b. Id. at 5:36–38. First mobile device
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310a is within trusted enterprise network 340, and is coupled to the
enterprise’s intranet 315 via mobile security system 345a. Id. at 5:38–41.
Figure 3 further shows mobile device 310c that has travelled outside
trusted enterprise network 340, and is coupled to untrusted internet 330 via
mobile security system 345b. Id. at 5:51–54. This mobile device may be in
use by an employee of trusted enterprise network 340 who is currently on
travel. Id. at 5:54–56. Security administrator 325 manages mobile security
systems 345a and 345b and network security system 320 to assure that they
include the most current security protection. Id. at 5:56–59.
The mobile security system includes “memory,” a “processor,”
“security engines,” “security policies,” and “security data.” Id. at Fig. 5,
8:3–10. As described in the ’683 patent, the mobile security system “may be
in a pocket-size, handheld-size or key-chain size housing, or possibly
smaller.” Id. at 8:15–16. The patent also states: “Further, the mobile
security system 345 may be incorporated within the mobile device 310.”
Id. at 8:17–18.
The ’683 patent also describes a wake module configured to wake a
mobile device from a power management mode. Id. at Fig. 18, 21:27–35.
E. Illustrative Claims
The ’683 patent has 20 claims. Claims 1–3, 5, 6, 9–12, 14, 15, and
18–20 are challenged in the Petition. Claims 1, 10, and 19 are independent.
Claim 1 recites1:
1. A method comprising:
[1.1] detecting, using a mobile security system, a wake event
associated with a mobile device,

1 Reference numbers in accordance with the Petition have been added to
claims 1 and 10.
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[1.2] the mobile security system having a mobile security system
processor different than a mobile device processor of the mobile
device;
[1.3] 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
[1.4] managing, using the mobile security system, security
services of the mobile device in response to waking the mobile
device from the power management mode.
Ex. 1001, 30:34–46.
Claim 10 is an apparatus claim that is similar to claim 1. Claim 10
recites:
10. A mobile security system, comprising:
[10.1] a mobile security system processor;
[10.2] a connection mechanism for connecting to a data port of a
mobile device and for communicating with the mobile device,
[10.3] the mobile device having a mobile device processor
different than the mobile security system processor; and
[10.4] a security engine configured to detect a wake event
associated with the mobile device, provide a wake signal in
response to the wake event, the wake signal waking the mobile
device from a power management mode, and manage security
services of the mobile device in response to waking the mobile
device from the power management mode.
Id. at 31:1–15.
Claim 19 recites a computer readable medium storing instructions for
performing the method of claim 1. Id. at 32:12–27. Except as discussed
infra, the parties do not distinguish among these independent claims in
presenting their arguments.
F. References and Other Evidence
The Petition relies on the following references:
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1. U.S. Patent App. Pub. No. 2010/0218012 A1 (Ex. 1007, “Joseph”)
2. U.S. Patent App. Pub. No. 2007/0266265 A1 (Ex. 1009,
“Zmudzinski”)
3. U.S. Patent No. 7,818,803 (Ex. 1010, “Gordon”)
Both parties rely on expert testimony. Petitioner has submitted a
Declaration of Dr. Markus Jakobsson (Ex. 1006, “Jakobsson Decl.”), and a
Supplemental Declaration of Dr. Jakobsson (Ex. 1023, “Jakobsson Supp.
Decl.”). Patent Owner has submitted a Declaration of Nenad Medvidovic,
Ph.D. (Ex. 2007, “Medvidovic Decl.”).
In addition, the parties have submitted deposition transcripts for Dr.
Jakobsson (Exs. 2006, 2009) and Dr. Medvidovic (Ex. 1011).
Petitioner has also submitted Dr. Medvidovic’s deposition transcript
from IPR2019-00368. Ex. 1014.
G. Asserted Grounds of Unpatentability
Petitioner asserts the challenged claims are unpatentable on the
following grounds:
Claims Challenged Basis2 References
1, 9, 10, 18, 19 35 U.S.C. § 103 Joseph
2, 3, 5, 6, 11, 12, 14, 15, 20 35 U.S.C. § 103 Joseph, Zmudzinski
1, 9, 10, 18, 19 35 U.S.C. § 103 Gordon
2, 3, 5, 6, 11, 12, 14, 15, 20 35 U.S.C. § 103 Gordon, Zmudzinski
Pet. 3.

2 Because the effective filing date of the application from which the ’683
patent issued was before March 16, 2013, the pre-AIA (“America Invents
Act”) version of 35 U.S.C § 103 applies. Leahy-Smith America Invents Act,
Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011).

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II. PRELIMINARY MATTERS
A. Level of Ordinary Skill
Petitioner contends “[a] person of ordinary skill in the art at the time
of the alleged invention of the ’683 patent (i.e., August 4, 2008) . . . would
have had a bachelor’s degree in computer science, computer engineering,
electrical engineering, or a comparable field of study, plus at least two years
of professional experience with computer security systems, or the
equivalent.” Pet. 11 (citing Jakobsson Decl. ¶ 54).
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 ‘683 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. ¶ 54.
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 ’683 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
The Board applies the same claim construction standard as that
applied in federal courts. 37 C.F.R. § 42.100(b) (2019). 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. “mobile,” “mobile security system,” and
“mobile security system processor”
Petitioner requested construction of these terms appearing in all
challenged claims. Pet. 12. Petitioner contended that “mobile” should be
construed as “not connected to a network via a wired connection,” “mobile
security system” should be construed as a “security system that is not
connected to a network via a wired network connection,” and “mobile
security system processor” should be construed as a “processor of a security
system that is not connected to a network via a wired network connection.”
Id. Petitioner states that it has proposed these constructions in district court
litigation. Id. (citing Ex. 1005, 3–4). Patent Owner’s Preliminary Response
did not provide a construction for these or any other terms. Patent Owner’s
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Response contends that “[n]o explicit construction is necessary.” PO
Resp. 9.
While we see merit in Petitioner’s proposed constructions, in our
Institution Decision, we did not see the need to construe these terms for
purposes of our decision. Only terms that are in controversy need to be
construed, and then only to the extent necessary to resolve the controversy.
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017); Institution Dec. 9.
Neither party has asked us to re-visit this decision, and we do not see
any need to do so to resolve a controversy.
2. “power management mode”
In the district court litigation Patent Owner construed this term as “a
mode where the mobile device conserves power.” Pet. 13 (citing Ex. 1004,
4); PO Resp. 9. Petitioner does not challenge this construction. Pet. 13. In
our Institution Decision, we agreed that this construction should be adopted.
Institution Dec. 9. The construction is supported by the ’683 patent
specification. See Ex. 1001, 21:35–37 (“A power management mode is a
mode wherein the mobile device conserves power.”).
Neither party has asked us to re-visit this decision, and we do not see
any need to. We therefore adopt this construction for this Final Written
Decision.
3. “the mobile security system having a mobile security system processor
different than a mobile device processor”
a. Background
Although resolution of this claim construction issue is central to this
controversy (see infra), neither party initially requested construction of this
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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 “mobile security system
processor different than a 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 “the mobile
security system and its processor must be remote from the mobile device and
its processor.” 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
mobile 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 mobile security system with a processor different from a
processor of the mobile device.” Id. at 22. We were not persuaded at
institution that such a narrow construction of this term was warranted.
Institution Dec. 9–14.
As instructed by Phillips, we first looked to the words of the claim.
Phillips, 415 F.2d at 1312. The claim language does not say the mobile
security system cannot be part of the mobile device. Nor does it require the
mobile security system to be “remote” or “separate” from the mobile device.
Cf. Prelim. Resp. 2 (“the mobile security system of the [’683] Patent is
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remote from the mobile device”); 13 (“the mobile security system and its
processor are separate from the mobile device and its processor”); 17
(“the mobile security system and its processor are separate from the mobile
device and its processor”); id. (“The mobile security system must be remote
from the mobile device.”); 19 (“two separate and distinct devices”).
The claim language simply says that the mobile security system
processor is “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. 11. We cited Merriam Webster’s
Collegiate Dictionary (10th ed.) 32 (defining “different” as “partly 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).3 Institution Dec. 11.
Further, we noted that the claims refer to the processors being “different,”
not the systems or devices that include the processors. Id.
Moreover, we noted that the ’683 patent specification does not
support Patent Owner’s narrowing construction. Id. at 11–12. As stated in
Phillips, “the specification is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to

3 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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the meaning of a disputed term.” Phillips, 415 F.2d at 1315 (internal quotes
and citation omitted). We noted that Figure 3 of the ’683 patent (reproduced
supra) and the accompanying text disclose an embodiment in which mobile
security system 345 and mobile device 310 are shown as being separate.
Institution Dec. 11. However, the specification of the ’683 patent 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, 8:15–18 (emphasis added).
Patent Owner asserted prior to institution that “[t]he plain language of
this claim term means that the mobile security system processor cannot
reside on the mobile device itself because otherwise the mobile security
system processor would be a processor of the mobile device.” Paper 9, 1.
We were not persuaded by this argument. In the ’683 patent, the mobile
security system is defined by what it does, not by where it resides.
Institution Dec. 12. Thus, in describing mobile security system 345 and its
components, shown in Figure 5, including processor 515, the ’683 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,
8:10–14.
Patent Owner attempted to explain the disclosure in the specification
of the ’683 patent, of a mobile security system that “may be incorporated
within the mobile device.” Paper 9, 2. Patent Owner claimed it is
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“axiomatic” that the claims “need not ‘be interpreted to cover each and
every embodiment.’” Id. We were not persuaded by this argument.
Institution Dec. 12–13. 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. 14.
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 12. 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. Id. at 12–14.
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 the ’683 patent. Ex.
1002. 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 mobile
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.2d 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.2d 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, “[t]o 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) (alteration in
original).
We see in the ’683 patent prosecution history no clear and
unambiguous waiver of claim scope in the applicants’ arguments addressed
to Priestley. Institution Dec. 14. Patent Owner’s post-institution arguments
on the construction of this limitation mirror the arguments made in its
Preliminary Response. PO Resp. 10–16. Patent Owner continues to
advance its rejected argument that the term “the mobile security system
having a mobile security system processor different than a mobile device
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processor” not only requires that the mobile security system processor be
“separate from (i.e., not incorporated or imbedded in) the mobile device” (id.
at 10–11) (emphases added), but also that the mobile security system be
“remote from the mobile device.” Cf. PO Resp. 2 (“the mobile security
system of the ’683 Patent is remote from the mobile device”); 21 (“The
mobile security system must be remote from the mobile device.”); 22
(“Thus, the mobile security system and its processor must be remote from
the mobile device and its processor.”); 24 (“[T]he ‘different processors’
claim element requires that the mobile security system processor be remote
from the mobile device itself.”); 34 (“Thus, the mobile security system and
its processor must be remote from the mobile device and its processor.”); 35
(“[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,
discussed supra. 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. 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 13.
Petitioner responds that “[a]t a minimum, PO’s prosecution statements
are ambiguous and amenable to multiple reasonable interpretations, and
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therefore do not meet the ‘demanding standard’ for prosecution disclaimer.”
Pet. Reply 9.
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
mobile 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.
b. 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. 1002, 126–27. 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.” Id. at 126.
According to the Examiner, Priestley discloses a Trusted Platform
Module (“TPM”) “to provide . . . security functions to computing
platforms.” Id. at 126–27. 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
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other potential benefits would be savings on the complexity and
cost of the main processor.
Id. (emphases added).
The applicants responded to the rejection by amending the claims to
add other limitations. Id. at 172–74. 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–
73. 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 (emphasis 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 178–80. 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 179–80 (emphases 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 (emphases added). The applicants presented a similar argument
for claim 10. Id. at 180–81.
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.
c. 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
distinguish the teachings of other references has no bearing on whether
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Applicant’s statements regarding the scope of the ‘different processors’ term
were ‘clear and unmistakable.’” PO Resp. 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 processor and the mobile device must be
separate and remote. We find that, at most, the applicants’ arguments say
that Priestley lacks a mobile security system processor that is different from
a mobile device processor because the TPM in Priestley is located on same
the motherboard of the mobile device. Ex. 1002, 179. We agree with
Petitioner and find that applicants’ argument distinguishing Priestley 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 3. 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 ambiguous and
amenable to multiple reasonable interpretations.” Id. at 9. 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 Patent Owner 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. Petitioner asserts, “[e]ach of these three interpretations differs from
Patent Owner’s current interpretation.” Id.
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
and processor 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. That is understandable,
because that argument would have been contradicted by the specification of
the ’683 patent, which states: “Further, the mobile security system 345 may
be incorporated within the mobile device 310.” Ex. 1001, 8:17–18
(emphasis added). Because the mobile security system processor is within
the mobile security system, this statement in the specification contradicts
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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 ’683 patent that a mobile security system that “may be
incorporated within the mobile device” as a disclosed, but “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 ’683 patent does
not distinguish among the embodiments disclosed, referring to all of them,
collectively, as “preferred embodiments.” Pet. Reply 5; Ex. 1001, 30:9–10.4
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 at 1382, as
“misplaced.” PO Resp. 18. We cited Nobel Biocare because it states that
“there is a strong presumption against a claim construction that excludes a
disclosed embodiment.” Institution Dec. 12. According to Patent Owner,
this “broad statement . . . is not supported by its underlying case law.” PO

4 We agree with Petitioner that there can be more than one preferred
embodiment. See Hearing Tr. 8:3–9.
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Resp. 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 description 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, 8:17–18.
Nor are we persuaded by Patent Owner’s related argument that “it is
not necessary that each claim read on every embodiment.” PO Resp. 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, 566 F.3d at 1335); 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 patent, even though the language of the claims, read without reference
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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 6; Hearing
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 mobile security system processor located on the mobile
device itself.” Id. 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.5 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 the 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.

5 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 Networks, Inc., 856 F.3d at 1363.
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C. Description of the Prior Art References
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, (54). Petitioner
contends that Joseph’s effective date as prior art is at least as early as May
26, 2008. Pet. 13. Petitioner contends that this date is before the earliest
possible effective filing date for the ’683 patent, thus qualifying Joseph as
prior art under pre-AIA 35 U.S.C. § 102 (e). Id. at 14. 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. Id. at ¶¶ 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 different 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, (54). Petitioner contends
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that Gordon’s effective date as prior art is at least as early as January 16,
2007. Pet. 44. Petitioner contends that this date is before the earliest
possible effective filing date for the ’683 patent, thus qualifying 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.

Annotated Figure 1 of Gordon is a schematic functional block diagram
showing protected host device 10 (e.g., a laptop computer) with security
module 19 (outlined in red). Id. at 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 (outlined in green) 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 (54). Petitioner contends that Zmudzinski’s publication
date is before the earliest alleged priority date for the ’683 patent, thus
qualifying Zmudzinski as prior art under pre-AIA 35 U.S.C. §§102(a) and
102(e). Pet. 34. 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.
III. ANALYSIS OF THE CHALLENGED CLAIMS
The Petition challenges claims 1–3, 5, 6, 9–12, 14, 15, and 18–20 of
the ’683 patent. Petitioner asserts unpatentability of the claims based
obviousness. See supra.
A. Obviousness
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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The question of obviousness is resolved on the basis of underlying
factual determinations, including (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) where in evidence, so-called
“secondary considerations” may be found, including commercial success,
long-felt but unsolved needs, failure of others, and unexpected results.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966) (“the Graham
factors”).
Neither the Petition nor the Patent Owner Response presents
evidence on the fourth Graham factor. We therefore do not consider that
factor in this decision.
B. Joseph Challenges (Claims 1, 9, 10, 18, and 19)
Petitioner contends claims 1, 9, 10, 18, and 19 would have been
obvious in light of Joseph. Pet. 13. As mentioned above, claims 1, 10, and
19 are independent. We first address claim 1.
1. Claim 1
Petitioner’s element-by-element analysis of claim 1 in relation to
Joseph appears at pages 16–26 of the Petition. Petitioner supports its
analysis with testimony from its expert, Dr. Jakobsson. Jakobsson Decl.
¶¶ 67–83.
We find that Petitioner demonstrates that each element of claim 1 is
disclosed or suggested by Joseph. Claim 1 is directed to a method.
Petitioner contends that the preamble “if limiting” is met by Joseph. Pet. 16;
Jakobsson Decl. ¶ 67. Patent Owner does not challenge this assertion. We
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find that for the reasons given by Petitioner, Joseph discloses the preamble
of claim 1.6
Claim element 1.1 calls for “detecting, using a mobile security
system, a wake event associated with a mobile device.” Id. Petitioner
shows this element is found in Joseph’s disclosure of SDU 14 integrated into
laptop computer 12. Id. at 16–17. According to Petitioner, “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).” Id. at 18 (citing Jakobsson
Decl. ¶ 65).
Claim element 1.2 calls for “the mobile device security system having
a mobile device security system processor different than a mobile device
processor of the mobile device.” Id. at 19. Petitioner shows this “different
processors” element is met by processor 48 in Joseph’s main processing unit
75 in the laptop computer and processor 74 in the SDU. Id. at 19–20; see
also Fig. 3 of Joseph, reproduced supra. Petitioner states: “The main
processing unit 35 and its processor(s) 48 are different from the control unit
30 and its processor 74 in the SDU 14.” Id. at 19–20.
Petitioner shows laptop 12 in Joseph is a mobile device “because it is
mobile and is not connected to a network by a wired connection.” Id. at 19
(citing Jakobsson Decl. ¶ 74; Ex. 1007 ¶¶ 60–61). Petitioner further shows
that “the processor 74 in Joseph is a ‘mobile security system processor’
because it is a processor of a security system (i.e., SDU 14) that is not
connected to a network via a wired network connection . . .” Id. at 20.

6 Because we find that both Joseph and Gordon disclose the preambles of
claims 1, 10, and 19, we do not decide whether those preambles are limiting.
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Summarizing these arguments, Petitioner shows this claim element is
met by Joseph because “the mobile device (i.e., laptop 12) has a mobile
device processor (i.e., main processing unit 35, processor 48) that is different
than the mobile security system processor (i.e., processor 74 of the control
unit 30).” Id. at 20–21 (citing Jakobsson Decl. ¶ 75; Ex. 1007 ¶ 77).
Claim element 1.3 is directed to the waking feature. Id. at 21. Claim
element 1.3 calls for “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.” Id.
For claim element 1.3, Petitioner shows: “Joseph discloses that in
response to a wake event from the technical support entity 20 (discussed in
limitation 1.1), the SDU 14 provides signals to the power management
controller 76 within the laptop 12 to power up the laptop 12 or specific
components of the laptop 12 (i.e., SDU 14 provides a wake signal to the
mobile device).” Id. at 21 (citing Ex, 1007 ¶¶ 75, 79, 82, 84, 92, 126).
Petitioner shows further that “Joseph discloses select components of
the laptop 12 being powered off (a power management mode) or having
varied power applied to them prior to being fully powered on.” Id.
Petitioner further explains a person of ordinary skill “would have understood
that because the wake signal described above can ‘cause the power
management controller 76 to allow power to be applied to [or] apply power
to … any component of the laptop computer 12,’ that such components are
in a state of low power before the wake signal.” Id. at 22 (quoting
Jakobsson Decl. ¶ 78, citing Ex. 1007 ¶ 82 (alteration in original)).
Claim element 1.4 calls for “managing, using the mobile security
system, security services of the mobile device in response to waking the
mobile device from the power management mode.” Id. at 24. Petitioner
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shows this element is met, because “Joseph discloses managing, using the
mobile security system, security services of the mobile device in response to
waking the mobile device from the power management mode.” Id.
Petitioner explains: “Joseph discloses that the SDU’s control unit 30 controls
operations on the laptop 12 to cause the laptop to perform security services
such as, e.g., erasing, encrypting or otherwise preventing access to “data
stored in one or more memory elements (e.g., a hard drive) of the memory
system 42.” Id. (citing Ex. 1007 ¶¶ 75, 134). Petitioner further
demonstrates: “Joseph further discloses that other ‘interactions between the
control unit 30 and the various components of the laptop computer 12 …
may take place based on messages transmitted by the security/technical
support entity 20.’” Id. at 24–25 (omission in original). Petitioner
concludes: “A [person of ordinary skill] would have understood that all of
the above services managed by the SDU’s control unit 30 (i.e., scanning the
mobile device, updating the mobile device, and/or performing maintenance
functions) are security services in accordance with the ’683 patent.” Id. at
25 (citing Jakobsson Decl. ¶ 82; Ex. 1001, 19:9–35, Fig. 20). Further
Petitioner asserts “[a person of ordinary skill] would have understood that all
of the above security services managed by the SDU’s control unit 30 would
occur in response to waking the mobile device from the power management
mode because the laptop 12 or its components are in a powered-on state
when the services are performed.” Id. at 25–26 (citing Jakobsson Decl.
¶ 83).
Patent Owner challenges Petitioner’s analysis of claim 1 on several
grounds. PO Resp. 20–31. Patent Owner first challenges Petitioner’s
analysis of the “different processors” recitation of claim element 1.2. See id.
at 20–23. Patent Owner contends: “Joseph fails to disclose this element of
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the challenged claims.” Id. at 20. Referring to the prosecution history of the
U.S. Patent No. 8,631,488 (“the ’488 patent”), Patent Owner asserts: “This
concept of the mobile security system and its processor residing in the
mobile device was disclosed in the combination of Chang and Grant and was
considered and rejected.” Id. at 21.
We are not persuaded by this argument. Patent Owner does not
explain how the ’488 patent 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 15–16 (citing Ex. 2001, 339, 341).
Nor are we persuaded by Patent Owner’s argument, based on the
Examiner’s citation of Priestley in the ’683 patent prosecution, that “[t]he
mobile security system must be remote from the mobile device.” PO
Resp. 21. According to Patent Owner, Joseph does not disclose this element
because “Joseph requires its security/diagnostics unit 14 to be physically
integrated into the mobile device.” Id. at 22. As discussed supra, we find
that this argument is contrary to the plain language of the claims and the
disclosure in the ’683 patent specification that the mobile security system
“may be incorporated in the mobile device.” Ex. 1001, 8:17–18; see also
Section II.B.3, supra.
Joseph teaches an SDU processor that is different than the laptop
processor, i.e., boxes 48 and 74 in Figure 2, supra. 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.”
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Ex. 1007 ¶ 60 (emphasis added). For the reasons given above and in the
Petition, we agree with Petitioner and find that Joseph discloses “a mobile
security system having a mobile security system processor different than the
mobile device processor of the mobile device.”
Patent Owner argues also that Joseph fails to meet the claim limitation
calling for “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.” PO Resp. 24–27. Patent Owner first contends
that “the ‘different processors’ claim element requires that the mobile
security system processor be remote from the mobile device itself.” Id. at
24.
We are not persuaded by this argument, as it is based on Patent
Owner’s claim construction, which we do not accept, that requires the
mobile security system and processor and the mobile device to be “separate
and remote.” For the reasons given above in our discussion of claim
construction, we are not persuaded that is required by the claims. As
discussed supra, the specification of the ’683 patent states the mobile
security system “may be incorporated within the mobile device.” Ex. 1001,
8:17–18.
Patent Owner next contends Joseph fails to disclose “providing a
wake signal from a mobile security system to a mobile device.” PO
Resp. 24–27. Patent Owner contends “Joseph does not disclose any such
wake signal being sent from its SDU to the mobile device.” Id. at 24. Patent
Owner argues that “because the ‘different processors’ claim element requires
that the mobile security system processor be remote from the mobile device
itself,” the signal in Joseph identified as the wake signal ‘was not sent to a
‘device’ but between two sub-components of the same device.” Id.
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(emphases omitted) (citing Medvidovic Decl. ¶ 58). Patent Owner’s second
argument asserts that any signal sent from Joseph’s SDU “is not ‘[a] wake
signal[]’ . . . because it does not wake the device from a ‘power management
mode.’” Id. (citing Medvidovic Decl. ¶ 57).
Addressing the first argument, Petitioner points out that the claims do
not require that the mobile security system and mobile device be two
separate, remote devices. Pet. Reply 2–11, 16. For the reasons given, we
agree with this argument and reject Patent Owner’s claim construction to the
contrary. See supra, Section II.B.3. We find therefore that Joseph’s SDU
14 provides a wake signal to the mobile device.
Responding to Patent Owner’s second argument, Petitioner shows that
Joseph’s “power-off” state is a power management mode. Pet. Reply 17
(citing Jakobsson Supp. Decl. ¶ 42). Petitioner explains: “[Patent Owner]
also ignores Joseph’s disclosure of varying the power applied to the laptop’s
components, which would place those components in a ‘power management
mode’ when decreasing power and wake them from a ‘power management
mode’ when increasing power.” Id. at 17–18 (citing Pet. 21–24).
We are persuaded by Petitioner’s arguments, and therefore find that
Joseph’s “power-off” state is a power management mode. Id. at 17–18;
Jakobsson Decl. ¶¶ 78–79. Joseph discloses that in response to a wake event
from technical support entity 20, SDU 14 provides signals to power
management controller 76 within laptop 12 to power up the laptop or
specific components of laptop 12. Pet. 19 (citing Ex. 1007 ¶¶ 75, 79, 82, 84,
92, 126). Moreover, a person of ordinary skill would have understood that
because the wake signal described above can “cause the power management
controller 76 to allow power to be applied to, [or] apply power to . . . any
component of the laptop computer 12,” that such components are in a state
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of low power before the wake signal. Id. at 22 (citing Jakobsson Decl. ¶ 78;
Ex. 1007 ¶ 82) (alteration in original).
We have construed “power management mode” as “a mode where the
mobile device conserves power.” See supra. Because a powered-off state in
Joseph meets our construction of power management mode (i.e., “a mode
where the mobile device conserves power”), we agree with Petitioner and
find that transitioning the laptop from off to powered is waking the laptop
from a power management mode. See Pet. 21 (citing Jakobsson Decl. ¶ 78).
Patent Owner further argues that Joseph does not teach the disputed
limitation because in Joseph, “the enabling of a laptop after it has been
recovered is not disclosed as the impetus for subsequently ‘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 required by the challenged claims.” PO Resp. 27. We disagree with
Patent Owner’s argument. See Pet. Reply 18.
We find that Joseph discloses that the wake signals to turn on or
power up the laptop are responsive to a detected wake event. Pet. 23. For
example, the security/technical support entity 20 in Joseph can exchange
messages with the security/diagnostics unit 14 to enable normal operation of
the laptop computer 12 (e.g., turn it on or allow it to be turned on). Id.
(citing Ex. 1007 ¶ 65). We find that a person of ordinary skill would have
understood that Joseph discloses this wake event is followed by a wake
signal to turn the laptop on. Id. (citing Jakobsson Decl. ¶ 79; Ex. 1007,
¶ 82). Moreover, as Petitioner points out, Patent Owner’s argument ignores
Joseph’s disclosure of “apply[ing] power to” laptop components “in order to
perform tests on such components (e.g., verify whether they function
correctly).” Pet. Reply 18–19 (citing Ex. 1007 ¶ 82) (alteration in original).
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We find, for the reasons given by Petitioner and those described
above, that Joseph discloses “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.”
For similar reasons we find that Joseph discloses “managing, using
the mobile security system, security services of the mobile device in
response to waking the mobile device from the power management mode.”
Pet. 24–26. “For example, Joseph discloses that the SDU’s control unit 30
controls operations on the laptop 12 to cause the laptop to perform security
services such as, e.g., erasing, encrypting or otherwise preventing access to
“data stored in one or more memory elements (e.g., a hard drive) of the
memory system 42.” Id. at 24 (citing Ex. 1007 ¶¶ 75, 134).
The remaining limitations of claim 1, discussed supra, are not
challenged by Patent Owner. We have considered Petitioner’s detailed
analysis of the elements of claim 1 in relation to Joseph, summarized above,
and Patent Owner’s response. We find that Petitioner has demonstrated that
each limitation of claim 1 is disclosed by Joseph. We further find by a
preponderance of the evidence that claim 1 would have been obvious over
Joseph.
2. Claims 10 and 19
For claims 10 and 19, Petitioner largely relies on its analysis of claim
1. Pet. 26–33. Patent Owner does not distinguish between claim 1 and
claim 10 in its response, except in one respect. See PO Resp. 28–31
(referring only to claim 10). Claim element 10.2 includes “a connection
mechanism for connecting to a data port of a mobile device and for
communicating with the mobile device.” Pet. 27. According to Patent
Owner, “Joseph does not disclose any data port of a mobile device, let alone
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a connection mechanism for connecting to a data port of a mobile device.”
PO Resp. 30.
Petitioner demonstrates that each element of claim 10 is disclosed or
suggested by Joseph. Petitioner identifies Joseph’s interface 61 of the SDU
as the claimed “connection mechanism,” and contends that that the interface
connects to other components of laptop 12. Pet. 27–28. Patent Owner
contends that this argument should be “rejected”: “[T]he conception of a
‘data port’ of a mobile device as an internal interface contradicts the
ordinary and customary meaning of the term “data port” as understood by a
[person of ordinary skill].” PO Resp. 30 (citing Medvidovic Decl. ¶ 64).
Petitioner has provided credible expert testimony supporting its
position. Jakobsson Decl. ¶¶ 87–92; Jakobsson Supp. Decl. ¶¶ 46–51. We
are not persuaded by Patent Owner’s argument that Dr. Jakobsson’s
testimony should be given “no weight.” PO Resp. 29–30. We find his
testimony to be supported by the other evidence presented, including the
claim language, the patent specification, and the technical dictionary and
industry publications cited by Petitioner. Pet. Reply 11–14 (citing Ex. 1001,
8:10–14; Exs. 1019–1022). For the reasons given, we find that Petitioner
has demonstrated that claim 10 would have been obvious over Joseph.
Patent Owner does not separately address claim 19. Accordingly, for
the reasons given above for claim 1, we find also that Petitioner has
demonstrated that claim 19 would have been obvious over Joseph.
3. Claims 9 and 18
These dependent claims require that the wake event comprises
receiving data from a network. Petitioner has provided an analysis of these
claims in relation to Joseph. Pet. 26, 32. Petitioner relies on its analysis of
claim 1 and Joseph’s disclosure of SDU 14, which “detects a wake event
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when it receives data in the form of a message issued from the
security/technical support entity 20 over the wireless network.” Id. at 26.
Patent Owner does not address these claims separately. Accordingly, for the
reasons previously given, we find that Petitioner has demonstrated that
claims 9 and 18 would have been obvious over Joseph.
3. Joseph and Zmudzinski Challenges
(Claims 2, 3, 5, 6, 11, 12, 14, 15, and 20)
Claims 2, 3, and 5 depend from claim 1. Claims 11, 12, and 14
depend from claim 10. The two sets of dependent claims are parallel, and
each set provides the same additional features to the claims from which they
depend. Claims 2 and 11, for example, specify that the security services
scan the hard drive of the mobile device for viruses. Claims 3 and 12
specify that the security services scan the hard drive for malware. Claims 5
and 14 specify that the security services scan the hard drive for unauthorized
data.
Petitioner contends these claims would have been obvious over
Joseph and Zmudzinski. Pet. 34–36. Petitioner provides an element-by-
element analysis of each these dependent claims in relation to Joseph and
Zmudzinski. Id. at 36–40. Petitioner demonstrates that each element of the
claims is disclosed or suggested by Joseph and Zmudzinski. Id. Petitioner
relies on Zmudzinski for its disclosure of “the security service of scanning a
mobile device for viruses.” Id. at 36.
Petitioner provides a detailed rationale for combining Joseph and
Zmudzinski. Id. at 37–40. As Petitioner summarizes: “Motivation to do so
arises at least from common sense and the knowledge of a [person of
ordinary skill], who at the time of the ’683 patent’s alleged invention would
have known that scanning for undesirable data is desirable to, for example,
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protect against viruses.” Id. at 39 (citing Jakobsson Decl. ¶ 112). Patent
Owner does not challenge the motivation to combine these references.
Claim 20 depends from claim 19 and is similar to claims 5 and 14.
Petitioner relies on its analysis of claim 5 for this claim. Id. at 43–44.
Claim 6 depends from claim 5 and claim 15 depends from claim 14.
These claims each specify that the scanning of the hard drive for
unauthorized data is based on a security policy. Ex. 1001, 30:59–61, 32:1–4.
Relying on expert testimony (Jakobsson Decl. ¶¶ 119–120, 125) and its
previous analysis of claims 2 and 5, Petitioner provides an analysis of these
claims in relation to Joseph and Zmudzinski. Pet. 41–42, 43.
Patent Owner does not address any of the dependent claims
separately. Instead, Patent Owner relies on its arguments directed to the
independent claims, and the further assertion that Zmudzinski does not
“cure” those “deficiencies.” PO Resp. 39. Specifically, Patent Owner
asserts that Zmudzinski does not meet the “different processors” limitation:
“The Zmudzinski combinations fail to disclose a mobile security system
having a mobile security system processor, where the mobile security system
processor is different than the mobile device processor.” Id. at 40. Further,
Patent Owner asserts: “Zmudzinski discloses one or more
processors 34, all residing ‘within processing system 20’ (e.g., a laptop).”
Id. at 41.
We are not persuaded by those arguments. As discussed supra,
Petitioner does not rely on Zmudzinski to meet the “different processors”
limitation. See Pet. 19 (“Joseph discloses the mobile device having a mobile
device processor different than the mobile security system processor.”).
Moreover, we do not accept Patent Owner’s construction of this limitation as
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requiring the mobile security system and processor to be “separate” and
“remote” from the mobile device processor. See discussion supra.
Accordingly, for the reasons given, we find that Petitioner has
demonstrated that Joseph in combination with Zmudzinski discloses or
suggests each element of claims 2, 3, 5, 6, 11, 12, 14, 15, and 20, and that it
would have been obvious to combine the teachings of those references.
Based on Petitioner’s analysis and for the reasons explained above, we find
Petitioner has shown by a preponderance of evidence that claims 2, 3, 5, 6,
11, 12, 14, 15, and 20 would have been obvious over Joseph and
Zmudzinski.
D. Gordon Challenges (Claims 1, 9, 10, 18, and 19)
Petitioner contends claims 1, 9, 10, 18, and 19 are obvious in light of
Gordon. Pet. 44. We first address claim 1.
1. Claim 1
Petitioner’s analysis of claim 1 in relation to Gordon appears at pages
45–54 of the Petition. Petitioner supports its analysis with testimony from
Dr. Jakobsson. Jakobsson Decl. ¶¶ 131–141.
We find that Petitioner demonstrates that each element of claim 1 is
disclosed or suggested by Gordon. Petitioner contends that the preamble of
claim 1, to the extent limiting, is met by Gordon: “Gordon discloses a
method where a firmware agent 21 of a wireless security module 19
connected to a host (i.e., a device to be protected such as a laptop) can
‘wake-up the host so that a data protection measure can be invoked.’” Pet.
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46. Patent Owner does not challenge this assertion. We find that Joseph
discloses the preamble of claim 1.7
Claim element 1.1 calls for “detecting, using a mobile security
system, a wake event associated with a mobile device. Id. Petitioner shows
this element is found in Gordon’s disclosure of a “‘wireless security module
19’ in a laptop (i.e., the host device being monitored).” Id. (citing Ex. 1010,
14:32–44); see also Figure 1 of Gordon (reproduced supra and annotated by
Petitioner to show security module 19 outlined in red). The security module
includes firmware agent 21. As shown by Petitioner, “Gordon discloses that
‘the firmware agent is also able to independently send and receive messages
to and from the monitoring center.’” Id. at 47. Petitioner further explains:
“The message from the monitoring center 70 is the claimed ‘wake event.’”
Id. (citing Jakobsson Decl. ¶ 132).
Claim element 1.2 calls for “the mobile security system having a
mobile security system processor different than a mobile device processor of
the mobile device.” Id. at 48. Petitioner shows the “mobile device” element
is met by Gordon’s laptop. Id. at 49. As explained by Petitioner: “[T]he
processor of the security module 19, which implements the firmware agent,
is a “mobile security system processor” because it is a processor of a
security system (i.e., security module 19) that is not connected to a network
via a wired network connection, as set forth above.” Id. (citing Ex. 1010,
3:66–4:2; 11:66–12:2). Petitioner concludes: “Thus, the [Gordon] laptop’s
main processor is a mobile device processor that is different than the mobile
security system processor.” Id. (citing Jakobsson Decl. ¶ 134).

7 As noted supra, we do not decide whether the preambles of claims 1, 10,
and 19 are limiting.
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Claim element 1.3 calls for “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.” Id. at 49. Petitioner
shows this limitation is met by Gordon: “Gordon discloses that the security
module 19’s firmware agent 21 is connected to the host (i.e., a mobile device
to be protected such as a laptop) to ‘wake-up the host so that a data
protection measure can be invoked.’” Id. at 51.
Claim element 1.4 calls for “managing, using the mobile security
system, security services of the mobile device in response to waking the
mobile device from the power management mode.” Id. at 53. Petitioner
shows this element is met by Gordon: “Gordon also discloses that the
“security module may be deployed in conjunction with services that may
include asset tracking, asset management, asset recovery, data delete,
software deployment, etc.” Id. (citing Ex. 1010, 3:43–45, 7:20–40
(emphasis omitted). Petitioner explains further: “A [person of ordinary
skill] would have understood that ‘data delete’ is a security service designed
to protect the laptop.” Id. (citing Jakobsson Decl. ¶ 140).
Patent Owner’s responses to these challenges are parallel to its
responses to the challenges based on Joseph and addressed above. See PO
Resp. 31–41. Thus, Patent Owner again argues that the claims preclude the
security system and its processor from residing in the mobile device. See
id. at 32–34. We disagree with Patent Owner’s argument for the reasons
explained above. See Section II.B.3.
Patent Owner argues “Petitioner misapprehends the structure of the
claimed mobile security system.” PO Resp. 34. Patent Owner contends that
“the passive voice used in Gordon’s disclosure indicates that, structurally,
the processor comprises said security module and not vice versa.” Id. (citing
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Medvidovic Decl. ¶ 68). We disagree. As Gordon explains: “The cellular
wireless security module 19 comprises a firmware agent 21.” Ex. 1010,
14:33–34; see also Fig. 1 of Gordon, reproduced supra.
We find that 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 mobile security system processor different than a
mobile device processor.” For at least these reasons, we find that Petitioner
has demonstrated that this aspect of claim 1 is met by Gordon.
Patent Owner contends also that Gordon fails to disclose the claimed
wake signal. PO Resp. 35. According to Patent Owner, “the wake signal
must be sent to a ‘device,’” and not between “sub-components within the
same device.” Id. (citing Medvidovic Decl. ¶ 69). As discussed above, we
find this argument unconvincing, as it too is based on Patent Owner’s
“separate and remote” devices claim construction that we have rejected.
We have considered Petitioner’s analysis of the elements of claim 1 in
relation to Gordon and Patent Owner’s response. For the reasons given, we
find that Petitioner has demonstrated that each limitation of claim 1 is taught
or suggested by Gordon and that claim 1 would have been obvious over
Gordon.
b. Claims 10 and 19
For claims 10 and 19, Petitioner largely adopts its analysis of claim 1.
Pet. 54–61. For the additional recitation in claim 10 of a connection
mechanism (claim element 10.2), Petitioner asserts: “A [person of ordinary
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skill] would have understood that the interface . . . between Gordon’s
security module 19 and host agent is a connection mechanism to
a data port of the laptop for communicating with the laptop.” Id. at 56
(citing Jakobsson Decl. ¶ 148). Patent Owner responds by citing to its
argument directed to the lack of a connection to a data port in Joseph. PO
Resp. 37. For the reasons given previously, we are not convinced by that
argument. Nor are we convinced by Patent Owner’s suggestion that the
testimony of Petitioner’s expert, Dr. Jakobsson, should be given “little or no
weight,” or by Petitioner’s criticism of his annotations to Gordon’s Figure 1.
Id. at 37–38. We find that both Dr. Jakobsson’s testimony and his
annotations are helpful and supported by the evidence of record. See supra.
For the reasons given above, we find that Petitioner has demonstrated that
claim 10 would have been obvious over Gordon.
Patent Owner does not address claim 19 separately. Accordingly, for
the reasons given above for claim 1, we determine that Petitioner has
demonstrated that claim 19 would have been obvious over Gordon.
3. Claims 9 and 18
Petitioner has provided an analysis of these claims in relation to
Gordon. Pet. 54, 59. Petitioner relies on Gordon’s disclosure of firmware
agent 21 of security module 19, which “detects a wake event when it
receives data in the form of a message issued from the monitoring center
70.” Id. at 54. Patent Owner does not address these claims separately.
Accordingly, for the reasons given, we determine that claims 9 and 18
would have been obvious over Gordon.
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5. Gordon and Zmudzinski Challenges
(Claims 2, 3, 5, 6, 11, 12, 14, 15, and 20)
Petitioner provides an element-by-element analysis of each these
dependent claims in relation to Gordon and Zmudzinski. Pet. 61–69. As
noted, Petitioner relies on Zmudzinski for its disclosure of a security service
scanning a mobile device for viruses. Id. at 61–62. Petitioner provides a
detailed rationale for combining Gordon and Zmudzinski. Id. at 62–66. As
Petitioner summarizes: “Motivation to do so arises at least from common
sense and the knowledge of a [person of ordinary skill], who at the time of
the ’683 patent’s alleged invention would have known that scanning for
undesirable data is desirable to, for example, protect against viruses.” Id. at
64 (citing Jakobsson Decl. ¶ 169). Patent Owner does not challenge the
motivation to combine these references.
As noted above, claim 20 depends from claim 19 and is similar to
claims 5 and 14. Petitioner relies on its analysis of claim 5 for this claim.
Id. at 69.
Claim 6 depends from claim 5 and claim 15 depends from claim 14.
These claims each specify that the scanning of the hard drive for
unauthorized data is based on a security policy. Ex. 1001, 30:59–61, 32:1–4.
Relying on expert testimony (Jakobsson Decl. ¶¶ 177–179, 183) and its
previous analyses of claims 2 and 5, Petitioner provides an analysis of these
claims in relation to Gordon and Zmudzinski. Pet. 67, 69.
Patent Owner addresses this challenge to these claims at the same
time as it addresses the challenge based on Joseph and Zmudzinski. Id.
at 45–47. We addressed those arguments supra in connection with our
discussion of that challenge. We find them unconvincing in connection with
this challenge.
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For the reasons given above, we find that Petitioner has demonstrated
that Gordon and Zmudzinski disclose or suggest each limitation of claims 2,
3, 5, 6, 11, 12, 14, 15, and 20, and that it would have been obvious to
combine the teachings of those references. Based on Petitioner’s analysis
and for the reasons explained above, we find Petitioner has shown by a
preponderance of evidence that claims 2, 3, 5, 6, 11, 12, 14, 15, and 20
would have been obvious over Gordon and Zmudzinski.
V. CONCLUSION
For the foregoing reasons, we find Petitioner has demonstrated by a
preponderance of the evidence that claims 1–3, 5, 6, 9–12, 14, 15, and 18–20
of the ’683 patent are not patentable.
A summary of our conclusions is set forth in the table reproduced
below.
Claims
35
U.S.C.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 9, 10, 18,
19

103 Joseph 1, 9, 10, 18, 19

2, 3, 5, 6, 11,
12, 14, 15, 20

103 Joseph,
Zmudzinski
2, 3, 5, 6, 11,
12, 14, 15, 20

1, 9, 10, 18,
19
103 Gordon

1, 9, 10, 18, 19
2, 3, 5, 6, 11,
12, 14, 15, 20

103 Gordon,
Zmudzinski
2, 3, 5, 6, 11,
12, 14, 15, 20

Overall
Outcome
1–3, 5, 6, 9–12,
14, 15, 18–20

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VI. ORDER
Upon consideration of the record before us, it is:
ORDERED that claims 1–3, 5, 6, 9–12, 14, 15, and 18–20 of the ’683
patent are not patentable;
FURTHER ORDERED that because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.8

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).
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PETITIONER:

Robert Buergi
James M. Heintz
Gianni Minutolli
DLA Piper LLP
robert.buergi@dlapiper.com
jim.heintz@dlapiper.com
gianni.minutoli@dlapiper.com

PATENT OWNER:
James Hannah
Jeffrey H. Price
Michael Lee
KRAMER LEVIN NAFTALIS & FRANKEL LLP
jhannah@kramerlevin.com.
jprice@kramerlevin.com
mhlee@kramerlevin.com