International Business Machines Corporationv.Intellectual Ventures II LLC

Patent Trial and Appeal Board

Sep 23, 2015

09422952 (P.T.A.B. Sep. 23, 2015)

Trials@uspto.gov Paper 54
571-272-7822 Entered: September 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INTERNATIONAL BUSINESS MACHINES CORPORATION,
Petitioner,

v.

INTELLECTUAL VENTURES II, LLC,
Patent Owner.
____________

Case IPR2014-00587
Patent 6,826,694 B1
____________

Before JAMES T. MOORE, MEREDITH C. PETRAVICK, and
BENJAMIN D.M. WOOD, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C §318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
International Business Machines Corporation (“Petitioner”) filed a
Petition (Paper 4, “Pet.”) to institute an inter partes review of the sole claim
of U.S. Patent No. 6,826,694 B1 (“the ’694 patent”). On September 24,
2014, pursuant to 35 U.S.C. § 314, we instituted this trial as to the sole claim
on the proposed ground under 35 U.S.C. § 103 over Hughes
1
and Abraham.
2

Paper 13. On December 18, 2014, Intellectual Ventures II, LLC (“Patent
Owner”) filed a Patent Owner Response (Paper 29, “PO Resp.”), and
Petitioner filed a Reply (Paper 37, “Pet. Reply”) on March 11, 2015.
On April 29, 2015, Patent Owner filed a Motion to Exclude (Paper 40,
“PO Mot.”) and Petitioner also filed a Motion to Exclude (Paper 42, “Pet.
Mot”). Patent Owner filed an Opposition to Petitioner’s Motion to Exclude
(Paper 46, “Pet. Mot. Opp.”), and Petitioner filed a Reply in Support of
Petitioner’s Motion to Exclude (Paper 51, “Pet. Mot. Reply”).
An oral hearing in this proceeding was held on June 3, 2015. A
transcript of the hearing is included in the record. Paper 53.
For the reasons that follow, we determine that Petitioner fails to show
by a preponderance of the evidence that the sole claim of the ’694 patent is
unpatentable.

A. The ’694 Patent
The ’694 patent is titled “High Resolution Access Control” and issued
on November 30, 2004. Ex. 1004, 1. The ’694 patent claims priority to

1
Hughes et al., U.S. Patent No. 5,842,040 (issued Nov. 24, 1998) (Ex.
1006).
2
Abraham et al., U.S. Patent No. 5,983,270 (issued Nov. 9, 1999) (Ex.
1007).
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Provisional Patent Application No. 60/105,188, which was filed on October
22, 1998. Id.
The ’694 patent discloses a system and method of filtering data
packets at a firewall. See id. at col. 1, ll. 11–12. The packet includes a
header and a payload. Id. at col. 1, ll. 16–17. The header includes header
parameters, such as source address, destination address, port number, and
protocol number. Id. at col. 1, ll. 16–26, col. 2, ll. 27–29. The payload
includes data intended to be conveyed to the destination, such as a
connection request or document data. Id. at col. 1, ll. 26–28, col. 2, ll. 28–
31.
Figure 1, reproduced below, is a flow chart illustrative of the method.

Figure 1 is flow chart depicting the method of the ’694 patent.
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When a packet is received at the firewall (step 101), the system
identifies, from a “set of rules stored at the firewall,” a rule based upon the
packet’s header parameters (step 102). Id. at col. 3, ll. 9–12. Depending on
whether the packet satisfies the rule, the packet is then either dropped or
passed (step 104) or referred to an access control proxy (step 105). Id. at
col. 3, ll. 12–18, col. 4, ll. 47–50.
If the packet is sent to the access control proxy (step 105), the access
control proxy then analyzes the content of the payload of the packet (step
106) and selects an “access rule” based on the content of the payload (step
107). Id. at col. 3, ll. 18–37. In an alternative embodiment, the access
control proxy selects the access rule “based upon a combination of the
contents and header parameters of the packet.” Id. at col. 3, ll. 39–42, col. 4,
ll. 36–38. In yet another alternative embodiment, the access control proxy
selects the access rule based upon the contents of one or several packet
payloads because the information needed to select an access rule is spread
across the contents of several packets. Id. at col. 4, ll. 38–40, col. 5, ll. 1–
19.
The access control proxy then implements the selected access rule for
the packet by performing either a PASS or a DROP action (step 108). Id. at
col. 3, ll. 51–55, col. 4, ll. 30–34.
The ’694 patent discloses that filtering packets based upon not only
the header information but also upon the information contained in the packet
payload differs from known firewall filtering methods and is advantageous
because it provides high resolution access control. Id. at col. 1, l. 58–col. 2,
l. 9.

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B. The Claim
Claim 1, reproduced below, is the sole claim of the ’694 patent.
1. A method for filtering a packet, including the steps of:
a. receiving a packet having at least one header parameter and a
payload;
b. selecting an access rule based upon the contents of the
payload of the packet received in step a;
c. implementing the access rule for a packet, wherein the access
rule is selected based upon a combination of the contents of the
packet received in step a and the contents of at least one other
packet.

C. Related Proceedings
The parties state that the ’694 patent is involved in numerous district
court cases. See Pet. 1–2; Paper 9, 2–3. Additionally, the ’694 patent is the
subject of two additional Petitions for inter partes review, Compass Bank v.
Intellectual Ventures II LLC, Case IPR2014-00786 (PTAB) and
International Business Machines Corp. v. Intellectual Ventures II LLC, Case
IPR2014-01465 (PTAB).
A Final Written Decision in IPR2014-00786 is entered concurrently
with this Decision.

II. ANALYSIS
A. Claim Construction
Consistent with the statute and legislative history of the America
Invents Act (AIA)
3
, the Board interprets claims using the broadest

3
Pub. L. No. 112-29, 125 Stat. 284 (2011).
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reasonable construction in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1276–78 (Fed. Cir. 2015). Under the broadest reasonable
construction standard, claim terms are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
Contents of the Packet
Claim 1’s step c recites “wherein the access rule is selected based
upon a combination of the contents of the packet received in step a and the
contents of at least one other packet.” Ex. 1004, col. 6, ll. 4144.
The parties dispute the meaning of “contents of the packet.”
4

Petitioner proposes that the broadest reasonable construction of “contents of
the packet” is the contents of “the header and/or payload of the packet.” Pet.
5–6. Patent Owner proposes a narrower construction: “contents of the
header and the payload of the packet.” PO Resp. 6–20. According to Patent
Owner, its proposed construction requires that the access rules must be
selected based on both the contents of the header and the contents of the
payload of the packet. See id. at 9–20.

i. Petitioner’s Argument
Petitioner argues that its construction is consistent with the claim,
which sets out that a packet has at least one header parameter and a payload
in step a, and with the Specification, which states that a packet includes a

4
Neither Petitioner nor Patent Owner asserts that the ’694 patent contains a
lexicographic definition of this limitation.
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header and payload. Pet. 5–6 (citing Ex. 1004, col. 2, ll. 25–27). Petitioner
argues that this construction is consistent with the plain meaning in the
context of the Specification. Pet. 5–6.

ii. Patent Owner’s Argument
Patent Owner first argues that its construction, unlike Petitioner’s, is
internally consistent with claim 1. PO Resp. 9–14. According to Patent
Owner, step a of claim 1 requires that the contents of the packet include a
header and a payload. Id. at 12–13. Step a recites “a packet having at least
one header parameter and a payload.” Ex. 1004, col. 1, ll. 37–38. Patent
Owner, thus, argues to be consistent with step a, the rule selection of step c
must be based upon both the header and payload. PO Resp. 12–14. Patent
Owner also argues that this is consistent with the absence of qualifying
language, such as “at least a portion of the contents of the packet” and “at
least some of the contents of the packet.” Id. at 13.
Patent Owner also argues that to maintain internal consistency with
step b of claim 1, step c’s rule selection must be based upon information
from both the header and payload of the packet. PO Resp. 10–12. Step b
requires that the access rule is selected based upon “the contents of the
payload of the packet.” Patent Owner contends that one of ordinary skill in
the art would understand that step c further limits and clarifies the rule
selection in step b. Id. at 11. To further limit and clarify step b, the rule
selection in step c must be based upon information from the both the header
and payload of the packet. Id. at 11–12.
According to Patent Owner, under Petitioner’s construction, the rule
selection of step c could be based upon just the header of the packet and,
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thus, step c does not specify a further requirement or clarify step b. PO
Resp. 12. Patent Owner argues that Petitioner’s construction would
improperly replace steps b’s “payload” with “header.” Id.
Patent Owner further argues that its construction is consistent with the
Specification. Id. 14–20. Patent Owner argues that the Specification states
that a packet includes both a header and a payload and that nowhere does the
Specification state that the packet includes a header and/or payload. Id. at
20.
Patent Owner also argues that, although the Specification describes
embodiments where a rule is selected based only on the payload, every
packet having a payload inspected for rule selection, for example at the
access proxy (e.g., step 106 in Fig. 1) has first its header inspected upon
receipt of the packet (e.g., step 102 in Fig. 1). Id. at 14–20. Patent Owner
argues that Specification supports its construction by disclosing that it is
advantageous to provide filtering based not only on header information but
upon information contained in the packet payload as well. Id. at 14–16.
Patent Owner also argues that we should give Petitioner’s
construction no weight because Petitioner did not provide any evidence to
support its construction. Id. at 9–10. Patent Owner contends that
Petitioner’s declarant Dr. Bellovin’s testimony is conclusory and provides
no reasoning for support his testimony. Id. Patent Owner argues that, in
contrast, its construction is supported by the testimony of Dr. Mir. Id. at 10;
see id. at 10–20 (citing Ex. 2018 ¶¶ 40–79). Dr. Mir’s testimony, however,
substantially repeats Patent Owner’s arguments supporting its construction
(see Ex. 2018 ¶¶ 40–79), and, for the same reasons discussed below with
regards to Patent Owner’s argument, we find it unpersuasive.
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iii. Analysis
We are persuaded by Petitioner that the broadest reasonable
construction, in light of the Specification, of “contents of the packet” in step
c is the header and/or payload of the packet. Petitioner’s construction is
supported, sufficiently, by the ’694 patent, itself, which discloses
embodiments of selecting access rules based upon the header and/or payload
of the packet. The ’694 patent discloses a first embodiment in which the
firewall selects a rule based on header parameters only, and discloses that,
based on the header parameters, the packet may be passed or dropped. See
Ex. 1004, col. 2, ll. 35–37, 40–43, col. 3, ll. 10–12, Fig 1 (path formed by
steps 101, 102, 103, and 104).
The ’694 patent also discloses that an access control proxy selects a
rule based on an analysis of the payload of a single or multiple packets. Id.
at col. 3, ll. 4–8, 18–22, 30–32, col. 4, ll. 28–34, 38–40, Fig. 1 (path formed
by steps 106 and 107). The ’694 patent further discloses alternate
embodiments in which the “access control proxy selects an access rule that
pertains to the packet based both on an analysis of the payload and the
header parameters of the packet” (Ex. 1004, col. 3, ll. 38–41) and the
“access rule is retrieved based upon a combination of the contents and
header parameters of the packet” (id. at col. 4, ll. 36–38).
We are not persuaded by Patent Owner that Petitioner’s construction
is unreasonably broad and that “contents of the packet” in step c should be
construed, in light of the Specification, to require, more narrowly, that the
rule is selected based on information from both the header and the payload.
The ’694 patent’s disclosure that a packet has a header and a payload does
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not require that step c’s rule selection must be based on information from
both the header and the payload. Nor does the ’694 patent’s disclosure of
first selecting a rule at the firewall based on header parameters (i.e., steps
101, 102, and 103 of Fig. 1) prior to selecting another rule at the access
proxy for some packets (i.e., steps 106 and 107 of Fig. 1), require that step
c’s rule selection must be based on information from both the header and the
payload.
Patent Owner’s argument attempts to impermissibly import a
requirement from the Specification into the claim. If a feature is not
necessary to give meaning to what the inventor means by a claim term, it
would be “extraneous,” and should not be read into the claim. Renishaw
PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998);
E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430,
1433 (Fed. Cir. 1988).
We also are not persuaded by Patent Owner that Petitioner’s
construction makes step c inconsistent with steps a and b of claim 1.
Nothing in step a’s recitation that “a packet having at least one header
parameter and a payload,” requires that step c’s rule selection be based upon
both the header and payload of the packet of step a. Step c requires that the
access rule is selected based upon the “contents of the packet received in
step a and the contents of at least one other packet” but, unlike step b, step c
is silent as to whether the information is from the header or payload portion
of the contents of the packets. Step c, thus, does not preclude the
information coming from the header or payload portion of the contents of
the packets.
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Step b requires “selecting an access rule based upon the contents of
the payload of the packet received in step a.” We do not agree with Patent
Owner that Petitioner’s construction of “contents of the packet” in step c
would replace, effectively, step b’s “payload” with “header.” Step c does
not replace step b’s requirement but provides an additional requirement for
selecting the access rule. In other words, claim 1 requires that the access
rule be selected based upon not only the contents of the payload of the
received packet, but additionally requires that the rule be selected based
upon a combination of the contents of the header and/or payload of the
received packet and the contents of the header and/or payload of at least one
other packet. This is consistent with the Specification’s disclosure of an
embodiment in which the contents of several packets are analyzed to select
the access rule. Ex. 1004, col. 5, ll. 1–19.
Upon consideration of both Petitioner’s and Patent Owner’s
arguments, we determine that the broadest reasonable interpretation in light
of the Specification of “contents of the packet” in step c is the “contents of
the header and/or payload of the packet.”

B. Prior Invention
Patent Owner argues that Hughes and Abraham would qualify as prior
art only under 35 U.S.C. §§ 102 (a) or 102(e)
5
and seeks to disqualify
Hughes and Abraham as prior art by establishing a date of invention prior to
their alleged effective dates. PO Resp. 35–54. According to Patent Owner,
the alleged effective date of Hughes is June 18, 1996 and of Abraham is

5
The ’694 patent was filed in 1999, prior to the enactment of the AIA.
Thus, pre-AIA 35 U.S.C. § 102 is applicable in this proceeding.
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March 11, 1997. See id. at 36. Patent Owner alleges that the claimed
invention of the ’694 patent was actually reduced to practice “at least as
early as early 1996 but no later than June 11, 1996.” Id. at 37.
To establish an actual reduction to practice, the patentee must prove
that he (1) constructed an embodiment or performed a process that meets all
the claimed limitations of the invention, and (2) determined that the
invention worked for its intended purpose. Cooper v. Goldfarb, 154 F.3d
1321, 1327 (Fed. Cir. 1998). “The essential inquiry here is whether the
advance in the art represented by the invention . . . was embodied in a
workable device that demonstrated that it could do what it was claimed to be
capable of doing.” Scott v. Finney, 34 F. 3d 1058, 1063 (Fed. Cir. 1994)
(emphasis omitted) (quoting Farrand Optical Co. v. United States, 325 F.2d
3278, 333 (2d Cir. 1963)). “In order to establish an actual reduction to
practice, an inventor’s testimony must be corroborated by independent
evidence. . . . [A] ‘rule of reason’ analysis is applied to determine whether
an inventor’s testimony regarding reduction to practice has been sufficiently
corroborated.” Cooper, 154 f.3d at 1330 (citation omitted); see also
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996)
(corroboration requirement “arose out of a concern that inventors testifying
in patent infringement cases would be tempted to remember facts favorable
to their case by the lure of protecting their patent or defeating another’s
patent”).
The sufficiency of corroboration is determined according to a “rule of
reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This,
however, does not dispense with the requirement that some independent
evidence provide corroboration. Coleman v. Dines, 754 F.2d 353, 360 (Fed.
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Cir. 1985). The requirement of “independent” corroboration requires
evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d
1279, 1291–92 (Fed. Cir. 2011).
To support its argument, Patent Owner proffers the testimony of
inventor Mr. Partha Dutta, (Ex. 2006) and, to corroborate Mr. Dutta’s
testimony, Patent Owner proffers testimony of non-inventor Dr. Dalibor
Vrsalovic (Ex. 2014) and a collection of allegedly contemporaneous
documents regarding AT&T’s GeoPlex project (Exs. 2007–13, collectively
“AT&T documents”). PO Resp. 36–37.
For the reasons discussed below, we are persuaded by Patent Owner
that the claimed invention was reduced to practice prior to the effective
filing date of Hughes and Abraham.

a. Partha Dutta’s Testimony
Partha Dutta testifies that the inventors worked on a project called
GeoPlex at AT&T and that GeoPlex included an access control mechanism
or gate, which contained a packet filter/firewall. Ex. 2006 ¶¶ 5–13; PO
Resp. 36–37. According to Mr. Dutta, a working prototype of the GeoPlex
gate was built at least as early as February 1996 but no later than June 11,
1996. Ex. 2006 ¶ 21.
Mr. Dutta testifies that the GeoPlex gate filtered packets to and from a
GeoPlex cloud. Id. ¶ 23. The packets were allowed to pass through or were
blocked at the gate according to access control and parental control rules for
each user. See id. ¶¶ 24, 31. The rules were selected and loaded into the
firewall for each user by identifying the user based upon the source IP
address contained in the headers of received packets, authenticating a user
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based upon information in the contents of the payloads of the packets, and
identifying the service the user was attempting to access based upon the
addresses of the service in the headers and payloads of multiple received
packets. Id. ¶¶ 26–42, 45, 46.

b. AT&T Documents
Mr. Dutta contends that the prototype code of the GeoPlex gate is no
longer available. Id. ¶ 26. Therefore, Mr. Dutta relies upon Exhibits 2008–
2011 to corroborate his testimony that the filter/firewall of the GeoPlex gate
selected an access rule based upon information from the headers and
payloads of multiple packets. Ex. 2006 ¶ 22. Mr. Dutta refers to Exhibits
2007, 2012, and 2013 to provide an overview and additional examples of the
GeoPlex project, but does not substantively rely upon these exhibits to
establish prior invention. Ex. 2006 ¶¶ 9, 68.
Exhibit 2008 is a slide presentation referred to as Parthas proxy.ppt
and was created by Mr. Dutta and last modified on January 18, 1996. Ex.
2006 ¶¶ 24–25; Ex. 2017, 4. Exhibit 2009 is a slide presentation referred to
as geoplex-slides2.ppt and was created by Dr. Vrsalovic and last saved on
June 17, 1995. Ex. 2006 ¶ 47; Ex. 2017, 5. Ex. 2011 is a slide presentation
referred to as Geosecurity2.ppt and was created by Karal A. Siil and last
saved on June 11, 1996. Ex. 2006 ¶ 57; Ex. 2017, 7.
Exhibit 2010 is a technical memorandum referred to as
ControlDaemon copy.doc. Ex. 2006 ¶ 52; Ex. 2017, 5. ControlDaemon
copy.doc indicates that the memorandum is from Karl A. Siil and is dated
March 8, 1996. Ex. 2010, 1. The meta data for ControlDaemon copy.doc
indicates that ControlDaemon copy.doc was last saved on November 11,
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1998, by Michah Lerner, a named inventor of the ’694 patent. Ex. 2017, 5.
Mr. Dutta, however, testifies that ControlDaemon copy.doc “accurately
represents my understanding of the Gate in early 1996.” Ex. 2006 ¶ 53.
Mr. Dutta testifies that certain figures and statements from Exhibits
2008–2011 demonstrate that the GeoPlex filter/firewall functioned to block
unwanted traffic between peers, as well as between a peer and a cloud. Ex.
2006 ¶¶ 27, 28, 32–35, 48–49, 53–54, 58, 59, 62–66. According to Mr.
Dutta, the relied upon figures and statements demonstrate that the GeoPlex
filter/firewall was configured to authenticate a user, to implement parental
controls based upon a user’s profile, and to allow parental controls over
telnet sites, ftp sites, certain URLs, and other content for each user. Id.
Petitioner argues that the AT&T documents do not sufficiently
demonstrate that the GeoPlex filter/firewall performed step c of the claim.
Pet. Reply 13–15. According to Petitioner, Mr. Dutta admitted during cross-
examination that the AT&T documents only “sort of” relate to the ’694
patent and Mr. Dutta admitted that the AT&T documents are simply high-
level PowerPoint slides that he is unable to correlate to the actual claim
language. Pet. Reply 13–14 (citing Ex. 1033, 66:15–67:4, 85:3–12, 90:13–
91:17, 92:4–11, 95:1–15).
Upon review of the cited portions of the AT&T documents, we are
persuaded that the documents themselves depict high level architecture of
the GeoPlex gate and do not sufficiently disclose the GeoPlex gate
performing a rule selection based on the contents of multiple packets. It is
Mr. Dutta’s added explanation, and not the AT&T documents, that
sufficiently describes and explains features of the GeoPlex project that
correspond to the claimed rule selection. The requirement of “independent”
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corroboration requires evidence other than the inventor’s testimony. In re
NTP, Inc., 654 F.3d 1279, 1291–92 (Fed. Cir. 2011). We are persuaded by
Petitioner that the AT&T documents fail to provide sufficient corroboration
for Mr. Dutta’s testimony.

c. Dr. Vrsalovic’s Testimony
Dr. Vrsalovic testifies that he was employed as the Senior Vice
President of Advanced Technology at AT&T from 1995 to 1999 (Ex. 2014
¶ 4) and was responsible for directing the GeoPlex project (id. ¶ 10). Dr.
Vrsalovic testifies that as head of the GeoPlex project, he oversaw the work
of the inventors of the ’694 patent. Id. ¶ 14. Dr. Vrsalovic testifies that:
[t]o the best of my knowledge, a working prototype of the Gate
firewall was built at least as early as between March and May
of 1996. I know this because I personally reviewed the
software code of the prototype in this timeframe and because I
sat in design review meetings in this timeframe with Partha
Dutta, where Partha would perform tests of the working
prototype for my review.
Id. ¶ 19. Dr. Vrsalovic testifies that the prototype gate verified who the user
was based upon the IP address of the user found in the headers of packets, as
well as based upon authentication information found in the payloads of
packets (id. ¶ 25) and that the prototype gate selects firewall rules based
upon the users, as well as information in the packets’ headers and payloads
about which GeoPlex service the users were attempting to access (id. ¶ 26).
Petitioner questions the reliability of Dr. Vrsalovic’s testimony
because his testimony concerns events that occurred 20 years ago, Mr. Dutta
only indirectly reported to Dr. Vrsalovic around the time of the alleged
reduction to practice, and because Dr. Vrsalovic and Mr. Dutta are “very
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good friends.” Id. (citing Ex. 1036, 65:15–66:12, 76:3–6; Ex. 1033, 34:19–
35:20).
Upon review of the evidence, we are persuaded that Dr. Vrsalovic’s
testimony provides sufficient corroboration for Mr. Dutta’s testimony. We
credit Dr. Vrsalovic’s testimony that he personally reviewed the software
code of the working prototype and that he sat in on a design review meeting
where the working prototype was tested, during the relevant time frame. Ex.
2014 ¶ 19. We also credit Dr. Vrsalovic’s testimony that the GeoPlex gate
selected and loaded a rule based upon information found in the headers and
payloads of multiple packets. Ex. 2014 ¶¶ 19–20, 25–26, 30.
Although Dr. Vrsalovic stated during cross-examination that he
could not recall precisely what type of authentication technique was used
because of “too much time,” Dr. Vrsalovic did recall that the authentication
technique used a token in the payload of a GeoPlex request in addition to the
IP address because of a concern about spoofing of the IP address. Ex. 1036,
65:15–66:12.

d. Petitioner’s Argument Regarding Mr. Kumar
Petitioner argues that the claimed subject matter could not have been
reduced to practice in 1996 because a named inventor, Mr. Kumar, did not
work at AT&T until approximately July 1997. Pet. Reply 10–12. Patent
Owner contends that the ’694 patent erroneously names Mr. Kumar as an
inventor. Paper 48, 5. We are persuaded by Patent Owner that the
discrepancy between Mr. Kumar’s alleged date of employment and the
alleged date of reduction to practice may be the result of an error in
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ascribing inventorship, and is not persuasive evidence that the claimed
subject matter could not have been reduced to practice in 1996.

e. Analysis
Petitioner bears the burden of persuasion to show, by a preponderance
of the evidence, that the challenged claim is unpatentable. 35 U.S.C.
§ 316(e). This burden includes, inter alia, showing that any reference on
which it relies is prior art under 35 U.S.C. § 102. See Mahurkar, 79 F.3d at
1576 (holding that accused infringer “bore the burden of persuasion . . . on
all issues relating to the status of [the asserted reference] as prior art”).
Hughes and Abraham presumptively constitute prior art under 35 U.S.C.
§§ 102(a) or 102(e) because their filing dates are prior to the ‘694 patent’s
earliest effective filing date, giving rise to Patent Owner’s burden of coming
forward with evidence supporting a date of invention before September 9,
1998. Mahurkar, 79 F.3d at 1576–77; see Tech. Licensing Corp. v.
Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (finding that when
party challenging validity came forward with art that is prior to the
challenged patent’s application date, the patentee has the burden of going
forward with evidence that “the asserted claim is entitled to the benefit of a
filing date prior to the alleged prior art”).
Upon consideration of the all the evidence, we are persuaded that
Patent Owner has met its burden of coming forward with sufficient evidence
to corroborate independently inventor Mr. Dutta’s testimony that the
inventors of the ’694 patent reduced to practice the claimed invention “at
least as early as early 1996 but no later than June 11, 1996” (PO Resp. 36).
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Thus, we are not persuaded that Hughes and Abraham are prior art under 35
U.S.C. §§ 102(a) or 102(e).

C. Obviousness over Hughes and Abraham
Petitioner fails to demonstrate that claim 1 is unpatentable under 35
U.S.C. § 103 because Petitioner has not demonstrated that Hughes and
Abraham are prior art.

D. Motions to Exclude
i. Patent Owner’s Motion
Patent Owner moves to exclude Exhibits 1032, 1034, 1035, and 1038
in their entirety. PO Mot. We do not rely on these exhibits in reaching our
Decision and, thus, dismiss Patent Owner’s motion to exclude these exhibits
as moot.

ii. Petitioner’s Motion
Petitioner moves to exclude the entirety of Exhibits 2012 and 2013,
paragraphs 22, 23, and 26 of Exhibit 2006, and paragraphs 13 and 23–30 of
Exhibit 2014. Pet. Mot. 1. Petitioner withdrew its objection to paragraph 31
of Exhibit 2014. Pet. Mot. Reply. 5–6.

a. Exhibits 2012 and 2013
Because we do not rely on Exhibits 2012 and 2013 in reaching our
Decision, we dismiss Petitioner’s motion to exclude these exhibits as moot.

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Patent 6,826,694 B1

20
b. Exhibit 2006
Petitioner moves to exclude paragraphs 22, 23, and 26 of Exhibit 2006
under Federal Rule of Evidence (“FRE”) 602. Pet. Mot. 4–5; Pet. Mot.
Reply 1–3. FRE 602 states that “[a] witness may testify to a matter only if
evidence is introduced sufficient to support a finding that the witness has
personal knowledge of the matter. Evidence to prove personal knowledge
may consist of the witness’s own testimony.” Fed. R. Evid. 602.
Exhibit 2006 is the Declaration of Partha Dutta. According to
Petitioner, in paragraphs 22, 23, and 26, Mr. Dutta testimony contains
statements that require an understanding of the proper legal scope of the
’694 patent, but there is insufficient evidence to support a finding Mr. Dutta
has personal knowledge of that proper legal scope of the ’694 patent. Id. at
4.
We dismiss Petitioner’s motion to exclude paragraphs 22, 23, and 26
paragraphs of Exhibit 2006 as moot because we do not rely upon the
statements made in these paragraphs that Petitioner alleges to require an
understanding of the proper legal scope of the ’694 patent in reaching our
decision. Although we cite to paragraphs 22, 23, and 26 of Ex. 2006 above,
we only rely upon other statements in those paragraphs, which do not
address the legal scope of the ’694 patent, such as “the prototype code is no
longer available.” Ex. 2006 ¶ 26.

c. Exhibit 2014
Petitioner moves to exclude paragraphs 13 and 23–30 of Exhibit 2014
under FRE 602 as not being based upon Dr. Vrsalovic’s personal
knowledge. Pet. Mot. 6–7; Pet. Mot. Reply 3–4. According to Petitioner,
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Patent 6,826,694 B1

21
there is insufficient evidence to establish that Dr. Vrsalovic had personal
knowledge of the functionality of the GeoPlex gate detailed in paragraphs 13
and 23–30 of Exhibit 2014. Id.
Patent Owner argues that Dr. Vrsalovic’s testimony satisfies FRE 602
because Dr. Vrsalovic testifies that: he has personal knowledge of the
matters of his testimony (Ex. 2014 ¶ 1); he directed the GeoPlex project and
oversaw the work of the inventors (id. ¶¶ 10, 14); he personally reviewed the
source code of the prototype GeoPlex gate (id. ¶ 19); and he personally
observed tests of the working prototype GeoPlex gate (id. ¶¶19–22). Pet
Mot. Opp. 4–8.
Upon review of the evidence, we are persuaded by Patent Owner that
there is sufficient evidence that Dr. Vrsalovic has personal knowledge of the
functionality of the GeoPlex gate. Petitioner’s motion to exclude as to
paragraphs 13 and 23–30 of Exhibit 2014 is denied.

III. CONCLUSION
Petitioner fails to demonstrate by a preponderance of the evidence that
claim 1 is unpatentable under 35 U.S.C. § 103 over Hughes and Abraham.
Patent Owner’s Motion to Exclude Evidence is dismissed; and
Petitioner’s Motion to Exclude Evidence is dismissed as to Exhibits
2012 and 2013, and paragraphs 22, 23, and 26 of Exhibit 2006, and is denied
as to paragraphs 13 and 23–30 of Exhibit 2014.
This is a Final Written Decision of the Board under 35 U.S.C.
§ 318(a). Parties to the proceeding seeking judicial review of this decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.

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Patent 6,826,694 B1

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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claim 1 of U.S. Patent No. 6,826,694 B has not been
shown to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude as to
Exhibits 2012 and 2013, paragraphs 22, 23, and 26 of Exhibit 2006 is
dismissed; and
FURTHER ORDERED that Petitioner’s Motion to Exclude
paragraphs 13 and 23–30 of Exhibit 2014 is denied.

PETITIONER:
Kenneth R. Adamo
Eugene Goryunov
Kenneth.adamo@kirkland.com
Eugene.goryunov@kirkland.com

PATENT OWNER:
Brenton BabcockHerbert D. Hart III
Aaron F. Barkoff
Donald J. Coulman
2BRB@knobbe.comhhart@mcandrews-ip.com
abarkoff@mcandrews-ip.com
dcoulman@intven.com