Microsoft Corporationv.Secure Web Conference Corporation

Patent Trial and Appeal Board

Sep 29, 2014

10162800 (P.T.A.B. Sep. 29, 2014)

Trials@uspto.gov Paper 12
571-272-7822 Entered: September 29, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORPORATION,
Petitioner,

v.

SECURE WEB CONFERENCE CORPORATION,
Patent Owner.
____________

Case IPR2014-00745
Patent 6,856,687 B2
____________

Before PHILLIP J. KAUFFMAN, JENNIFER S. BISK, and
BEVERLY M. BUNTING, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner, Microsoft Corporation, filed a Petition on May 9,
2014, requesting an inter partes review of claims 1 and 29 of U.S.
Patent No. 6,856,687 B2 (Ex. 1001, “the ‘687 patent”). Paper 1
(“Pet.”). Patent Owner, Secure Web Conference Corporation, filed a
Preliminary Response on August 21, 2014. Paper 11 (“Prelim.
Resp.”). After considering the Petition and Preliminary Response, we
determine that Petitioner has not established a reasonable likelihood
of prevailing with respect to any of the challenged claims of the ‘687
patent. See 35 U.S.C. § 314(a). Accordingly, we do not institute inter
partes review of the ’687 patent based on any of the asserted grounds.

A. Related Proceedings
Petitioner indicates that the ‘687 patent was asserted against
Petitioner in Secure Web Conference Corp. v. Microsoft Corp., Civil
Action No. 2:13-cv-2642-JS-AKT (E.D.N.Y.). Pet. 1. Petitioner also
identifies the following judicial proceedings that may affect, or be
affected by, a decision in this proceeding: Secure Web Conference
Corp. v. Logitech, Inc., Civil Action No. 2:13-cv-3809-JS-AKT
(E.D.N.Y.) and Secure Web Conference Corp. v. Citrix Systems, Inc.,
Civil Action No. 2:13-cv-3810-JS-AKT (E.D.N.Y.). Id.

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B. Prior Art Relied Upon
Petitioner relies upon the following prior art and declaration of
Stephen D. Bristow (Ex. 1002) as its basis for challenging the claims
of the ‘687 patent:
1003 Crowley US 5,410,599 Apr. 25, 1995
1004 Cox US 5,594798 Jan. 14, 1997
1005 Morris US 4,991,197 Feb. 5, 1991
1006 International
Telecommunication
Union (ITU) -
“H.323”
ITU-T H.323

Aug. 3, 1998
1007 International
Telecommunication
Union (ITU) -
“H.235”
ITU-T H.235

July 15, 1998

C. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds in challenging the
patentability of claims 1 and 29 of the ‘687 patent. Pet. 6-7.
Basis Statutory
Ground
Claims
Challenged
Crowley § 102 1, 29
Crowley, Morris, and Cox
1
§ 103 1, 29
Cox and Morris § 103 1, 29
H.323 and H.235 § 103 1, 29
H.323, H.235, and Morris § 103 1, 29

1
This ground is explained in greater detail in section III.B, below.
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D. The ‘687 Patent
The ‘687 patent is titled, “Portable Telecommunication Security
Device,” and relates to a telecommunications security device adapted
for use with voice and data communications. Ex. 1001, 1:17-19. For
example, a telecommunications system may be configured so that a
first user at first location 55 and a second user at second location 55'
each has a security device (10, 10') and a communication device, such
as: telephone handset or headset (25, 25'), computer (40, 40'), and
wireless communication device (50, 50') (e.g., a cellular telephone).
Id. at 2:30-38, 47-50; Fig., 1. Figure 1 of the ‘687 patent follows:
Figure 1 is illustrates an overview of a communications system of the
’687 patent. Id. at 63-64.
Security device 10 may include port 255 for receiving/
transmitting audio data, port 280 for receiving/transmitting encrypted
audio data, keypad 200, encryption/decryption device 220, vocoder
250 that converts audio to digital data, and microcontroller 210. Id. at
2:63-3:2; 3:41-44; 4:10-11, 27-29; Fig., 2b. Microcontroller 210
directs digitalized voice data to serial port 280 when the presence of a
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wireless communication device is detected at serial data port 280 and
when a wireless communication device is not detected at serial port
280, the digitized voice data is directed to port 245. Id. at 5:21-29.
The ‘687 patent contains claims 1-29, of which, claims 1 and
29 are challenged in this proceeding. Claims 1 and 29 are
independent. Claim 29 is representative and follows:

29. A device for providing secure communications
over a network comprising:
a communication port for transfer of audio data;
a plurality of communication ports for transfer of
digital data;
a keypad;
an encoding/decoding device;
a conversion device operable to convert between
audio and digital data;
a processor, in communication with a memory,
said keypad and said encoding/decoding device, operable
to execute code for:
selecting a configuration of a transmission
and a reception port from among said
communication ports dependent upon the presence
of a network communication device and an
input/output device in communication with said
selected ports;
providing data received from said selected
reception port to said encryption/decryption device
for encrypting; and
providing said encrypted data to said
selected transmission port.
Ex. 1001, 10:58-12:6.
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Independent claim 1 is similar to claim 29, and differs from
claim 29 in two respects: one, claim 1 recites “at least one”
communication port for transfer of audio data rather than “a”
communication port, and two, claim 1 recites “at least one”
communication port for transfer of digital data rather than “a plurality
of” such ports. Id. at 8:58-9:14; 10:58-12:6.

II. CLAIM CONSTRUCTION
Our analysis necessitates construction of one claim term,
namely, “said encryption device”
Petitioner contends that claim 29 is indefinite because the
phrase “said encryption/decryption device” lacks an antecedent basis.
2

Pet 14. Petitioner’s assertion is not accompanied by a cogent
supporting explanation. The lack of an antecedent basis for a term
does not render a claim per se indefinite. See Energizer Holdings Inc.
v. United States ITC, 435 F.3d 1366, 1370-71 (Fed. Cir 2006).
Before reciting the challenged phrase “said encryption/
decryption device,” claim 29 recites that the device for providing
secure communications over a network includes “an
encoding/decoding device.”
The Specification describes that microcontroller 210
(processor) of security device 10' at site 55', in conjunction its
encryption/decryption device 220, encodes information that is
decoded at site 55. Ex. 1001 at 2:30-38; 6:29-34; Figs., 1, 2a.

2
Claim 1 is similar in this respect.
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Consequently, the ‘687 patent uses encoding and encryption as
synonyms.
In light of this, a person of ordinary skill in the art would
understand that “said encryption device” has antecedent basis in “an
encoding/decoding device.”
3

III. ANALYSIS
A. Alleged Anticipation by Crowley
Petitioner alleges that claims 1 and 29 are anticipated by
Crowley. Pet. 32-41. As detailed below, Petitioner has not made an
adequate showing with regard to at least the claimed keypad and
processor that selects a configuration.
Keypad
Independent claims 1 and 29 each require that the device for
providing secure communications over a network includes a keypad.
Petitioner contends that Crowley’s V/DED (Voice and Data
Encryption device) inherently includes a keypad. Pet. 35-36. Patent
Owner contends that Crowley does not inherently disclose a keypad as
claimed because entry of an appropriate encryption key may be
accomplished in a manner other than with a keypad. Prelim. Resp.
17-19.
Crowley’s V/DED is a security module designed specifically
for use with analog cellular and public switched telephone systems,

3
We note that a ground of unpatentability based upon indefiniteness
under 35 U.S.C. § 112, second paragraph, may not be asserted in an
inter partes review. See 37 C.F.R. § 42.104(b) (2).
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computers, facsimiles machines, and other equipment. Ex. 1003 at
1:46-50. Until a user desires secure communications, Crowley’s
V/DED operates in “by-pass” mode (i.e., analog or digital signals go
directly to the private switched telephone network or are transmitted
over the cellular network without processing by the V/DED). Id. at
4:29; 6:28-32. When a user wants to engage secure communications,
the security setup is invoked and keys for encryption are loaded in the
encryption engine. Id. at 6:33-35. Crowley discloses that the security
setup may be invoked in several ways, including the method cited by
Petitioner, namely, for each party to know the appropriate encryption
key for a given day and to enter that key in the V/DED. Id. at 6:33-
7:1; Pet. 35-36; Ex. 1002 ¶ 92 (repeating the claim chart found in the
body of the Petition).
As Patent Owner points out, there are methods for entry of an
encryption key that do not involve a keypad (e.g., entry via
transmission to the V/DED), so that Crowley’s disclosure that a key is
entered does not necessarily mean that a keypad is involved. Prelim.
Resp. 17-19. Petitioner has not established adequately that a person
of ordinary skill in the art would recognize that Crowley necessarily
discloses a keypad.
4
See Continental Can Co. v. Monsanto Co., 948
F.2d 1264, 1268 (Fed. Cir. 1991); see also In re Oelrich, 666 F.2d
578, 581 (CCPA 1981) (Inherency may not be established by
probabilities or possibilities, and the mere fact that a certain thing may

4
Because Petitioner has not adequately established that Crowley does
not disclose a keypad, Petitioner has also not adequately established
that Crowley discloses a processor in communication with a keypad as
required by claims 1 and 29.
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result from a given set of circumstance is not sufficient for
establishing inherency.).
Selecting a configuration
Independent claims 1 and 29 each require that the device for
providing secure communications over a network includes a processor
operable to execute code for selecting a configuration of a
transmission port and a reception port from among the communication
ports. This selection must be dependent upon the presence of a
network communication device or an input-output device in
communication with the selected ports. In parity with the claim
language, the Specification describes, by way of example, that
security device 10 establishes various configurations (blocks 635, 640,
645, 66) by determining if a device is attached to the first and second
serial ports (blocks 625, 630, 650). Ex. 1001 at 8:30-46; Fig., 6; see
also Ex. 1001 5:21-32; Fig., 2b (microcontroller 210 establishes
various configurations based upon presence of a communication
device at various ports). The Specification clarifies that even though
device 10 can operate to transmit and receive, the ports are referred to
by their role in the transmitting mode. Ex. 1001 at 3:2-13. In other
words, although the transmission port and reception port reverse
functional roles when device 10 switches from transmitting to
receiving mode, the ports retain their designation.
Petitioner contends that Crowley’s V/DED is comprised of
three modules: the Voice/Data Module (VDM), the Encryption and
Control Module (EM), and the Modem Module (MM). Pet. 20, 36.
Further, according to Petitioner, the EM includes Control Logic that
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corresponds to a processor as claimed, and utilizes a public or
proprietary polling technique (determining if another device is
connected and has data to transmit) that corresponds to selecting a
configuration of transmission and reception ports as claimed. Pet. 37-
38 (citing Ex. 1003, 5:4-7; Fig., 4; Ex. 1002 ¶¶ 77˗83).
Crowley’s V/DED is a small portable device that may be used
with a variety of equipment to send and receive encrypted data to a
destination via either normal telephone lines, a private switched
telephone network (PSTN), or a local area network. Ex. 1003 at 4:26-
30. For example, as a transmitting device, V/DED 3 receives data
(from one of: unmodified telephone communication equipment 1,
computer 5, or facsimile machine 7), then encrypts that data, and
subsequently transmits the data through a single outgoing line (e.g., a
normal telephone line, PSTN, cellular telephone application, or local
area network) to another V/DED 9. Id. at 4:35-40, 53-56; Fig., 1. The
operation is reversed when the V/DED operates as a receiving device.
Id. at 5:53-59; Fig., 1. That is, encrypted data is received from a
single source, decrypted, and transmitted to one of the receiving
devices (communication equipment 1, computer 5, or facsimile
machine 7). Id.
Therefore, when Crowley’s V/DED is transmitting, at most the
polling technique could correspond to selecting a reception port as
claimed by determining which device (communication equipment 1,
computer 5, or facsimile machine 7) has data to transmit. Crowley
does not select a transmission port on any basis; rather, Crowley
utilizes a single transmission port. See Prelim. Resp. 25.
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Accordingly, Petitioner has not demonstrated that Crowley
discloses the keypad and processor that selects a configuration of
claims 1 and 29. Accordingly, we determine that Petitioner has not
established a reasonable likelihood of prevailing on the assertion that
claims 1 and 29 are anticipated by Crowley.

B. Alleged Obviousness over Crowley, Morris, and Cox
Petitioner asserts that claims 1 and 29 “are rendered obvious
under 103(a) by Crowley ’599 in view of Morris ’197 alone or in
further view of Cox ’798.” Pet. 6-7. Based upon this, Petitioner
asserts that claims 1 and 29 are unpatentable over: (1) Crowley and
Morris, and (2) Crowley, Morris, and Cox.
1. Crowley and Morris
Petitioner presents alternative versions of the ground of
unpatentability based upon Crowley and Morris.
a. Morris provides any element missing from Crowley
Petitioner contends that “to the extent that any feature of claims
1 and 29 are not expressly disclosed in Crowley ’599, the features are
disclosed in Morris ’197 and Cox ’798.”
5
Pet. 41. This assertion does
not state with particularity the differences between the reference
(Crowley) and the subject matter of the claims challenged. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (citing with
approval the four part obviousness test of Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966), that includes determining the differences

5
Here we address Crowley and Morris, and in Section III.B.2., we
address Crowley, Morris, and Cox.
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between the claims at issue and the prior art). Petitioner’s general
contention that if anything is missing from Crowley it may be found
in Morris leaves us to speculate how the references are combined, and
does not explain sufficiently how the claimed subject matter is
unpatentable. See 37 C.F.R. § 42.104(b) (4); see also Prelim. Resp.
36-38 (pointing out the lack of detail in Petitioner’s assertion).
b. Substitution of Morris’s polling technique for Crowley’s
Petitioner contends that it would have been obvious to
substitute Morris’s polling technique for Crowley’s. Pet. 42, 48-50.
Petitioner reasons that a person of ordinary skill would have been
motivated to make such modification because Crowley and Morris
each disclose a polling technique. Pet. 41-42; Ex. 1002 ¶ 98.
As detailed in section III.A above, Crowley does not disclose a
processor that selects a configuration as required by claims 1 and 29.
Petitioner does not utilize Morris to cure this deficiency in Crowley.
Petitioner proposes to substitute Morris’s polling technique with
Crowley’s polling technique for selecting a reception port. The
resulting device selects a reception port but not a transmission port.
Consequently, Petitioner’s ground of unpatentability does not reach
the subject matter of claims 1 and 29.
Beyond this shortcoming, Petitioner’s rationale is unpersuasive.
Petitioner asserts that it would have been obvious to substitute
Morris’s polling technique for Crowley because each discloses a
polling technique. Pet. 41-42; Ex. 1002 ¶ 98. Petitioner does not
identify any advantage gained by this modification. Id. Petitioner
explains what is to be done (substitution of the polling techniques),
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but fails to provide the requisite reason that a person of ordinary skill
in the art would have chosen to do so. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007).
c. Modification of Morris to add encryption
Petitioner contends that Morris discloses every element of the
claimed subject matter except encryption, and that it would have been
obvious to add encryption/decryption capability. Pet. 43 (citing Ex.
1002 ¶ 101). Although not explicit, Petitioner is asserting that it
would have been obvious to modify Morris’s device by adding
encryption and decryption as disclosed by Crowley. Petitioner
reasons that this modification would, “meet the need of maintaining
security of valuable information through a portable ‘security module’
as stated in Crowley.” Pet. 41; see also Pet 43 (similarly reasoning
that modifying Morris would permit secure communications with a
portable device). As stated above, Crowley’s V/DED is a small
portable device that may be used with a variety of equipment to send
and receive encrypted data. See Ex. 1003 at 4:26-30. Because
Crowley is already a portable device that secures valuable
information, Petitioner’s reasoning that the proposed modification
creates a portable device that likewise secures valuable information,
lacks an adequate rational underpinning.
Consequently, Petitioner has not established a reasonable
likelihood of prevailing on the assertion that claims 1 and 29 are
unpatentable over Crowley and Morris.

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2. Crowley, Morris, and Cox
Petitioner contends that “to the extent that any feature of claims
1 and 29 are not expressly disclosed in Crowley ’599, the features are
disclosed in Morris ’197 and Cox ’798.” Pet. 41. Here, as in the
ground of unpatentability based upon Crowley and Morris in Section
III.B.1.a above, Petitioner’s general contention that if anything is
missing from Crowley it can be found in Morris or Cox leaves us to
speculate how the references are combined, and does not sufficiently
explain how the claimed subject matter is unpatentable. See 37 C.F.R.
§ 42.104(b) (4); see also Prelim. Resp. 36˗38 (pointing out the lack of
detail in Petitioner’s assertion).
This ground of unpatentability also lacks a sufficient rationale.
Petitioner reasons that a person of ordinary skill in the art would have
been motivated to combine the features of Crowley and Cox because
both are directed to solving the same need. Pet. 42 (presumably
referring to the previously identified need of securing valuable
information with a portable device at Pet. 41.). Petitioner’s contention
that the references solve the same need is better characterized as a
contention that the references are analogous art than as a rational
underpinning for the proposed combination. See In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (holding
that a reference may be reasonably pertinent as analogous art where
the matter it deals with logically would have commended itself to the
inventor’s attention). Petitioner has not articulated adequate
reasoning based on a rational underpinning to explain why a person of
ordinary skill in the art would have been led to modify Crowley in
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view of Morris and Cox to reach the subject matter of independent
claims 1 and 29.
Consequently, Petitioner has not established a reasonable
likelihood of prevailing on the assertion that claims 1 and 29 are
unpatentable over Crowley, Morris, and Cox.

C. Alleged Obviousness over Cox and Morris
Petitioner alleges that the subject matter of claims 1 and 29
would have been obvious over Cox and Morris. Pet. 51-52
(incorporating the claims chart at Pet. 44-50). Specifically, Petitioner
contends that Cox discloses all the elements of claims 1 and 29 except
multiple ports and port selection, and that Morris discloses all the
elements of claims 1 and 29 except encryption and decryption. Pet.
51. Petitioner reasons that a person of ordinary skill in the art would
have combined Cox and Morris because of the known need for a
portable security device. Id. Further, according to Petitioner, a
person of ordinary skill it the art would recognize that Morris’s
interface could be used in Cox’s device. Pet. 51-52.
Cox discloses a secure telephone device (STD) for use between
calling and called parties. Ex. 1004 at 1:40-43. The STD may, for
example, be disposed between the headset and base of a telephone.
Id. at 43-44; Fig., 1. Because Cox’s STD is already a portable
security device, Petitioner’s reasoning that a person of ordinary skill
in the art would have combined Cox and Morris to create a portable
security device, lacks an adequate rational underpinning. Further,
Petitioner’s assertion that a person of ordinary skill it the art would
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recognize that Morris’s interface could be used in Cox’s device, is an
assertion that the modification is possible, and is not a reason why it
would have been done. See Pet. 51-52.
Consequently, Petitioner has not established a reasonable
likelihood of prevailing on the assertion that claims 1 and 29 are
unpatentable over Cox and Morris.

D. Alleged Obviousness over H.323 and H.235
Petitioner contends that claims 1 and 29 would have been
unpatentable over H.323 and H.235. Pet. 52-58. As detailed below,
Petitioner has not made an adequate showing at least with regard to a
processor operable to execute code to select a configuration as
claimed and a processor in communication with a memory as claimed.
Operable to select a configuration
Petitioner contends that H.323 discloses a System Control Unit
that corresponds to a processor as claimed. Pet. 56 (citing Ex. 1006 at
19; fig. 4). According to Petitioner, the System Control Unit includes
H.245 Control Function. Regarding the ability of the System Control
Unit of H.323 to execute code for selecting a configuration as
claimed, Petitioner contends:
The H.245 Control Function and other elements within
H.323 route the information or media streams between
the input/output devices and network communication
devices depending on the presence and need of the
various devices. H.323 notes that the Control Channel
carries “end-to-end control messages governing the
operation of the H.323 entity, including capabilities
exchange, opening and closing of logical channels,
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mode preference requests, flow control messages and
indications.” Ex. 1006, p. 19.
Pet. 56-57.
6

Petitioner has not demonstrated adequately that H.323 discloses
selecting a configuration as claimed. The portion of the reference
cited by Petitioner does not mention explicitly selection of a port
based upon the presence of a network communication or input/output
device. The reference discloses that the Control Channel carries
control messages governing operation of the H.323 entity including:
capabilities exchange, opening and closing of logical channels, mode
preference requests, flow control messages and indications. Ex. 1006
¶ 6.2.8; see also ¶ 6.2.2 (listing similar capabilities). Petitioner has
not explained adequately how this disclosure corresponds to the
claimed step of selecting a configuration of a transmission and a
reception port based upon the presence of a network communication
device and an input/output device in communication with those ports.
In communication with a memory
Claims 1 and 29 require that the processor is in communication
with a memory. Petitioner contends that the System Control Unit of
H.323 corresponds to a processor as claimed, and inherently includes
a memory. Pet. 56 (citing Ex. 1006, Fig., 4). Notably, Petitioner has
not addressed the claim limitation in that claims 1 and 29 do not
require that the processor include a memory; rather, what is required
is that the processor be in communication with the memory. Further,
Petitioner’s assertion that memory is inherent in H.323’s System

6
This portion of the Petition does not contain a citation to the
Declaration of Mr. Bristow (Ex. 1002).
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Control Unit simply cites to a figure. That figure does not depict a
memory, nor has Petitioner explained cogently how this figure
demonstrates that the processor is in communication with a memory.
As such, Petitioner has not demonstrated adequately that H.323
necessarily discloses a processor that is in communication with
memory as required by claims 1 and 29.
Consequently, we are not persuaded there is a reasonable
likelihood that Petitioner would prevail in establishing that claims 1
and 29 are unpatentable over H.323 and H.235.

E. Alleged Obviousness over H.323, H.235, and Morris
Petitioner contends that it would have been obvious to modify
the H.323 and H.235 combination to include network control as
disclosed in Morris. Pet. 58-59. This ground of unpatentability, like
the previous ground, relies upon Petitioner’s assertion that the System
Control Unit of H.323 corresponds to a processor as claimed and
inherently includes a memory. Id. Petitioner does not rely upon
Morris to overcome this shortcoming. Id. Therefore, this assertion is
deficient for the reasons discussed above.
Consequently, we are not persuaded there is a reasonable
likelihood that Petitioner would prevail in establishing that claims 1
and 29 are unpatentable over H.323, H.235, and Morris.

IV. CONCLUSION
Based on the arguments and evidence presented in the Petition,
we conclude that Petitioner has not demonstrated a reasonable
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likelihood it will prevail in showing claims 1 and 29 of the ‘687 patent
are unpatentable. We, therefore, do not institute an inter partes review
on any of the asserted grounds as to any of the challenged claims.

V. ORDER
Accordingly, it is
ORDERED that the petition is denied; and
FURTHER ORDERED that no inter partes review of the ‘687
patent is instituted.

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PETITIONER:

Jeffrey I.D. Lewis
Ryan Mott
Patterson BelknapWebb & Tyler LLP
securewebipr@pbwt.com
rmott@pbwt.com

PATENT OWNER:

Wayne Helge
Donald Jackson
Davidson, Berquist, Jackson & Gowdey, L.L.P.
whelge@dbjg.com
djackson@dbjg.com

Brett Pinkus
Friedman Suder & Cooke
pinkus@fsclaw.com