Ex Parte 7020132 et al

Patent Trial and Appeal Board

Dec 15, 2014

95002002 (P.T.A.B. Dec. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,002 06/01/2012 7020132 12566/77 9137
23838 7590 06/22/2015
KENYON & KENYON LLP
1500 K STREET N.W.
SUITE 700
WASHINGTON, DC 20005
EXAMINER
CORSARO, NICK
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/22/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EC DATA SYSTEMS, INC.
Requester

v.

ADVANCED MESSAGING TECHNOLOGIES, INC.1
Patent Owner
____________

Appeal 2014-008203
Reexamination Control No. 95/002,002
Patent 7,020,132 B1
Technology Center 3900
____________

Before JOHN A. JEFFERY, STEPHEN C. SIU, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge

DECISION ON REHEARING

1 A Notice Regarding Real Party in Interest was filed on October 20, 2014,
and changed ownership of the patent at issue from j2 Global, Inc. to
Advanced Messaging Technologies, Inc.
Appeal 2014-008203
Reexamination Control No. 95/002,002
Patent 7,020,132 B1

2
This is a Request for Rehearing (“Req. Reh’g”) by Patent Owner
under § 41.79(a)(1) of the Decision of the Patent Trial and Appeal Board
(“the Board”) dated December 15, 2014 (“Decision”) which affirmed the
Examiner’s rejections of claims 1418 and 2134 over various 35 U.S.C.
§§ 102 and 103 rejections. The Request for Rehearing is denied.
Patent Owner requests rehearing regarding two issues said to have
been misapprehended and/or overlooked in the Decision. Req. Reh’g 2.

1. Did the Board fail to differentiate between an “internal” and “external”
data network?
As indicated on page 2 of the Request for Rehearing, the Board
affirmed the Examiner’s rejection of the claims at issue based upon the
Examiner’s interpretation that an “internal packet data network” is “a
network internal to a business or campus such as an Ethernet Local Area
Network, i.e., LAN.” See also Decision 11. Patent Owner argues that the
Board, in relying on this interpretation, failed to differentiate between an
external and internal data network because a Local Area Network (LAN) can
be external as well as internal. Req. Reh’g 23.
Patent Owner cites to both Patent Owner’s expert and Requester’s
expert to show that a LAN can be both internal and external. Req. Reh’g
23. Additionally, Patent Owner cites to Figure 2 of the ’132 patent which
shows that the invention distinguished between an external and internal data
network. Req. Reh’g 3. As such, Patent Owner argues that, using the
Examiner’s interpretation, there is no difference between a LAN serving as
Appeal 2014-008203
Reexamination Control No. 95/002,002
Patent 7,020,132 B1

3
an internal or external network. Req. Reh’g 5. We disagree with Patent
Owner.
As indicated above, the Examiner’s interpretation of the term “internal
packet data network” is distinguished from an external data packet network
because, as interpreted, the packet data network is internal to a business or
campus. Even if Patent Owner is correct that a LAN could be used for both
an internal or external network, the Examiner’s specific interpretation
includes only an internal network LAN.
Patent Owner also argues that Kaufeld does not disclose an internal
network because Kaufeld does not disclose the ownership of the LAN
connected to computer 26, but rather only the owner of the computer 26
itself. Req. Reh’g 5. Patent Owner contends that this information is critical
to knowing whether the LAN is “’internal to a business or campus.’” Req.
Reh’g 56.
However, Patent Owner does not address the Examiner’s finding that
the commercial provider’s system is internal to a defined area, or that the
provider uses a LAN to connect to multiple modems or network interfaces
internally in a local area. RAN 8586. Thus, we find that the evidence
provided by the Examiner discloses that Kaufeld’s LAN is internal to a local
area. As such, we find that Kaufeld discloses an internal data network based
on the Examiner’s interpretation of the disputed claim term. Thus, we do
not find Patent Owner’s argument persuasive of error.

Appeal 2014-008203
Reexamination Control No. 95/002,002
Patent 7,020,132 B1

4
2. Did the Board misapprehend the RFC 1918 disclosure?
The RFC 1918 disclosure, in conjunction with Dr. Tygar’s
declaration, was submitted by Patent Owner as evidence to support Patent
Owner’s argument that one of ordinary skill in the art would interpret an
“internal packet data network” as requiring isolation by a firewall. Req.
Reh’g 69. Patent Owner argues that the Board misapprehended the RFC
1918 disclosure by stating that there was nothing in the reference that
required security and isolation for category 1 and 2 hosts and, thereby,
incorrectly rejected Patent Owner’s interpretation. Req. Reh’g 69.
We agree with Patent Owner (Req. Reh’g 7) that page 4 of RFC 1918
purports to show that category 1 and 2 hosts require a mediating gateway to
obtain IP connectivity. However, this is contradictory to page 2 of RFC
1918 which indicates that a mediating gateway can be used to connect to an
external network. There is nothing in this description that indicates a
mediating gateway is required or must be used in order for the host to be
considered private. Additionally, on page 2, RFC 1918 indicates that
category 2 hosts may not want unrestricted external access, which we find
alternatively means that unrestricted external access may be desired and
does not indicate that at least category 2 hosts must use a mediating
gateway.
Additionally, we disagree with Patent Owner (Req. Reh’g 8) that RFC
1918, while a voluntary standard, is required because addressing conflicts
can occur if the standard is not followed. The conflicts indicated by RFC
1918 that would arise are a result of the “addressing scheme used by private
networks in RFC 1918.” App. Br. 14. Patent Owner has not shown that the
Appeal 2014-008203
Reexamination Control No. 95/002,002
Patent 7,020,132 B1

5
address scheme in RFC 1918 is the only scheme available or necessarily the
scheme used by the ’132 patent.
Additionally, regardless of whether the Board misapprehended the
RFC 1918 disclosure, our Decision regarding the interpretation of an
“internal packet data network” is based on an evaluation of all of the
evidence presented. Decision 711. Based on all of the evidence provided,
including the additional evidence provided by Patent Owner in the Request
for Rehearing, we are unpersuaded that we erred in adopting the Examiner’s
interpretation of the term “internal packet data network.”

Thus, for the aforementioned reasons, Patent Owner’s contention that
the Board erred in affirming the Examiner’s rejections is unpersuasive.

CONCLUSION
Patent Owner’s request for rehearing is granted to the extent that we
have reconsidered our prior decision in light of Patent Owner’s arguments.
We are not persuaded of any error in our prior decision and maintain the
Examiner’s rejection of claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED

peb
Appeal 2014-008203
Reexamination Control No. 95/002,002
Patent 7,020,132 B1

6
Patent Owner:

Kenyon & Kenyon LLP
1500 K Street, NW
Suite 700
Washington, DC 20005-1257

Third Party Requester:

Michael A. Desanctis
Hamilton, DeSanctis & Cha LLP
Financial Plaza at Union Square
225 Union Blvd., Ste. 150
Lakewood, CO 80228