Ex Parte 7,339,914 B2 et al

Patent Trial and Appeal Board

Feb 26, 2016

90013153 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
90/013, 153 02/20/2014 7,339,914 B2
21269 7590 02/26/2016
PEPPER HAMIL TON LLP
500 GRANT STREET
SUITE 5000
PITTSBURGH, PA 15219-2507
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
141588.00190 5590
EXAMINER
BONSHOCK, DENNIS G
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
02/26/2016 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
Ex parte AIR TIGHT NETWORKS, INC.
Appellant
Appeal2016-000154
Reexamination Control 90/013,153
Patent 7,339,914 B2
Technology Center 3900
Before ERIC B. CHEN, ANDREW J. DILLON, and
JENNIFER L. MCKEOWN, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
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Reexamination Control 90/013, 15 3
Patent 7,339,914 B2
This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claims 1-16. We have jurisdiction under§§ 134(b) and 306.
An oral hearing was held on February 17, 2016. The record will
include a written transcript of the oral hearing.
We reverse.
STATEMENT OF THE CASE
Reexamination Proceedings
A previous request for ex parte reexamination of U.S. Patent
No. 7,339,914 (the '914 patent) was filed on February 15, 2013, and
assigned Reexamination Control No. 90/012,797. This request was denied
on May 9, 2013. On September 18, 2013, the Director of the Central
Reexamination Unit denied a petition for review, filed May 22, 2013.
Another request for ex parte reexamination of the '914 patent was
filed on May 24, 2013 and assigned Reexamination Control No. 90/012,879.
An Ex Parte Reexamination Certificate (9,898th) was issued on October 23,
2013, in which the patentability of claims 1-16 was confirmed.
A subsequent request for ex parte reexamination of the '914 patent
was filed on February 20, 2014, and assigned Reexamination Control
No. 90/013,153.
The '914 patent, entitled "Automated Sniffer Apparatus and Method
for Monitoring Computer Systems for Unauthorized Access," issued
March 4, 2008, to Pravin Bhagwat, Shantanu Gogate, and David C. King,
based on Application No. 10/931,585, filed August 31, 2004.
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The '914 patent is said to be assigned to AirTight Networks, Inc., said
to be the assignee and real party in interest.
Related Litigation
The '914 patent has been subject to multiple patent infringement suits,
including Aerohive Networks, Inc. v. AirTight Networks, Inc., No. 3: 13-cv-
329 (N.D. Cal. Jan. 23, 2013) andAirTight Networks, Inc. v. Aerohive
Networks, Inc., No. 3:13-cv-383 (N.D. Cal. Jan. 28, 2013).
The Claims
Independent claim 1 is exemplary, with disputed limitations in italics:
1. A method for monitoring for unauthorized wireless
access to computer networks, the method comprising:
receiving a list of one or more wireless access point devices
which are allowed to be connected to a computer network within a
selected geographic region;
monitoring wireless communications within the selected
geographic region using one or more sniffer devices to at least detect
an active wireless access point device that transmits wireless signals
within the selected geographic region, the one or more sniffer devices
being spatially disposed within the selected geographic region;
determining that the active wireless access point device is not
among the one or more wireless access point devices which are
allowed to be connected to the computer network within the selected
geographic region;
transferring a plurality of marker packets into the computer
network, the plurality of marker packets being adapted to be
transferred to wireless medium within the selected geographic region
from the computer network through one or more wireless access point
devices which are actually connected to the computer network and
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which are configured to function as layer two bridges between their
wired and wireless interfaces, the plurality of marker packets having a
predetermined format, at least a subset of the one or more sniff er
devices being configured to be able to identify at least a portion of the
predetermined format, the transferring being actively transferring at
least for a process of detection of unauthorized wireless access to the
computer network;
processing using at least one of the at least the subset of the one
or more sniffer devices at least a portion of the monitored wireless
communications within the selected geographic region, the processing
being directed to at least identifying at least one of the plurality of
marker packets being actually transferred from the computer network
to the wireless medium within the selected geographic region through
the active wireless access point device, the processing including
identifying the at least the portion of the predetermined format within
at least one of one or more packets included in the at least the portion
of the monitored wireless communications; and
determining that the active wireless access point device
provides unauthorized wireless access to the computer network
based at least upon the at least one of the plurality of marker packets
being identified as transferred from the computer network to the
wireless medium within the selected geographic region through the
active wireless access point device and the determining that the
active wireless access point device is not among the one or more
wireless access point devices which are allowed to be connected to
the computer network
The Rejections
Claims 1-16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Challener (EP 1490773 Bl; Jan. 9, 2013) and Calhoun (US 7,336,670
B 1; Feb. 26, 2008).
Claims 1-16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Calhoun, Chirumamilla (Mohan K. Chirumamilla & Byrav
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Ramamurthy, Agent Based Intrusion Detection and Response System for
Wireless LANs, 1 IEEE INT'L CONF. ON COMMS. 492-96 (2003)), and 802.11
(American National Standards Institute (ANSI)/Institute of Electrical and
Electronics Engineers (IEEE) Std 802.11 (1999)).
Appellant relied upon the following in rebuttal to the Examiner's
rejection:
Supplemental Declaration under 3 7 C.F .R. § 1.13 2 of Kevin Negus,
dated October 29, 2014. (Exhibit E.)
ANALYSIS
§ 103 Rejection-Challener and Calhoun
We are persuaded by Appellant's arguments (App. Br. 24; see also
Reply Br. 8-9) that the combination of Challener and Calhoun would not
have rendered obvious independent claim 1, which includes the limitation
"transferring a plurality of marker packets into the computer network ... the
transferring being actively transferring at least for a process of detection of
unauthorized wireless access to the computer network."
The Examiner found that the "listening" client of Challener, which
monitors traffic through an access point, and the interrogation of access
points collectively correspond to the limitation "transferring a plurality of
marker packets into the computer network ... the transferring being actively
transferring at least for a process of detection of unauthorized wireless
access to the computer network." (Ans. 14--15; see also Final Act. 5.) We
do not agree.
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Challener relates to "enabling a network administrator or manager to
identify the presence of a rogue, or unauthorized, access point." (i-f 15.)
Figure 1 of Challener illustrates network 10 installed within a facility (i-f 17),
including server computer system 11, authorized access points 12,
workstation computer systems 14 (i-f 22), such that access network 10 is
established either through authorized wireless access point 15 or rogue
wireless access point 16 (i-f 23). Challener explains that by "monitoring
access points [ 12, 14, 16] through which data can be exchanged with a
network [10] occurs, an unauthorized access point [16] is identified, and the
location of the identified unauthorized access point [ 16] is determined"
(i-f 31 ), and that such determination is obtained using "passive acquisition of
information" (i-f 32).
Challener further explains that "[a] 'listening' client continues to
monitor traffic [i.e., passively] through the access point, monitoring the
packet stream to determine either an IP address of a client connecting to the
access point or watching a DHCP occur" thus, "providing sufficient
information for the server to make a determination of whether the access
point is in fact within an enterprise intranet." (i-f 33.) Additionally,
Challener explains that "an interogation [sic] technique, where a special
ICMP packet is sent to the access point directed to the MAC address but
broadcast to the subnet" can be used, such that "[t]he access point will reply
with its IP address." (Id.)
Because Challener explains that monitoring (i.e., "passive acquisition
of information" (i-f 32)) is used to determine if an access point is
unauthorized, Challener does not teach the limitation "transferring a
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plurality of marker packets into the computer network ... the transferring
being actively transferring at least for a process of detection of unauthorized
wireless access to the computer network."
Accordingly, we are persuaded by Appellant's argument that
"Challener fails to disclose 'actively transferring' marker packets at least
for a process of detection of unauthorized wireless access to the computer
network as claimed in independent claims 1 and 12" because "Challener
passively monitors existing data traffic by having a "'listening" client
continue[] to monitor traffic through the access point, monitoring the
packet stream to determine either an IP address of a client connecting to the
access point or watching a DHCP occur."' (App. Br. 24; see also Reply
Br. 8-9.)
Therefore, we do not agree with the Examiner that the combination of
Challener and Calhoun would have rendered obvious independent claim 1,
which includes the limitation "transferring a plurality of marker packets into
the computer network ... the transferring being actively transferring at least
for a process of detection of unauthorized wireless access to the computer
network."
We are further persuaded by Appellant's arguments (App. Br. 36; see
also Reply Br. 17-18) that the combination of Challener and Calhoun would
not have rendered obvious independent claim 1, which includes the
limitation "determining that the active wireless access point device provides
unauthorized wireless access to the computer network based at least upon
the at least one of the plurality of marker packets being identified as
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transferred from the computer network to the wireless medium ... through
the active wireless access point device."
The Examiner found that transmitting the Rogue Location Discovery
(RLD) packet of Calhoun, from the central control element to the network of
the rogue assess point, corresponds to the limitation "determining that the
active wireless access point device provides unauthorized wireless access to
the computer network based at least upon the at least one of the plurality of
marker packets being identified as transferred from the computer network to
the wireless medium ... through the active wireless access point device."
(Ans. 9, 24.) We do not agree.
Calhoun relates to wireless computer networks, in particular, "the
containment of rogue access points and clients in wireless network
environments." (Col. 1, 11. 38-39.) Figure 9 of Calhoun illustrates a block
diagram illustrating a process flow for a rogue location discovery
methodology (col. 4, 11. 1-3), including central control element 24 and rogue
access point 99 connected to the network 50, such that central control
element 24 composes and transmits a Rogue Location Discovery (RLD)
packet (col. 15, 11. 9-12). Figure 9 of Calhoun further illustrates the path of
the RLD packet, as indicated by reference arrows 3a, 3b and 3c. (Col. 15,
11. 12-15.) Calhoun explains that "if central control element 24 receives the
RLD packet on its LAN interface (416) central control element 24 ... can
then operate to report the rogue access point 99 and contain it ( 418), using
one or a combination of the rogue containment functionalities." (Col. 15,
11. 51-55; see also Fig. 9.)
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Because Calhoun explains that rogue access point 99 is reported once
the RLD packet is received by central control element 24, Calhoun does not
teach the limitation "determining that the active wireless access point device
provides unauthorized wireless access to the computer network based at
least upon the at least one of the plurality of marker packets being identified
as transferred from the computer network to the wireless medium ...
through the active wireless access point device."
Accordingly, we are persuaded by Appellant's argument that "[t]o the
contrary, Calhoun '670's RLD packet approach is opposite to the marker
packet approach claimed in the '914 patent" because "Calhoun '6 7 0
discloses that its RLD packet is initially transferred from a computer
network through an authorized access point to a wireless space, and then
transferred from the wireless space to the computer network through an
unauthorized access point." (App. Br. 36; see also Reply Br. 17-18.)
Therefore, we do not agree with the Examiner that the combination of
Challener and Calhoun would have rendered obvious independent claim 1,
which includes the limitation "determining that the active wireless access
point device provides unauthorized wireless access to the computer network
based at least upon the at least one of the plurality of marker packets being
identified as transferred from the computer network to the wireless medium
... through the active wireless access point device."
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a). Claims 2-11 depend from independent claim 1.
We do not sustain the rejection of claims 2-11 under 35 U.S.C. § 103(a) for
the same reasons discussed with respect to independent claim 1.
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Independent claim 12 recites limitations similar to those discussed
with respect to independent claim 1. We do not sustain the rejection of
claim 12, as well as dependent claims 13-16, for the same reasons discussed
with respect to claim 1.
§ 103 Rejection-Calhoun, Chirumamilla, and 802.11
We do not sustain the rejection of claims 1-16 for the same reasons
discussed previously with respect to Calhoun for the rejection of
independent claims 1-16 under 35 U.S.C. § 103(a) as unpatentable over
Challener and Calhoun.
DECISION
The Examiner's decision rejecting claims 1-16 is reversed.
REVERSED
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