PTAB

IPR2014-01133

Pantech Co Ltd v. Cellular Communications Equipment LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Control of terminal applications in a network environment
  • Brief Description: The ’923 patent discloses methods and systems for controlling the behavior of applications residing on a communication terminal. The invention addresses security drawbacks of open development platforms by diverting outbound messages from an application to a separate, trusted controlling entity on the terminal, which evaluates the message and controls the application's behavior before the message is transmitted to the network.

3. Grounds for Unpatentability

Ground 1: Anticipation over Richardson - Claims 1-5, 8-9, 24-26, 31, 33, 39, and 40 are invalid under 35 U.S.C. § 102(e).

  • Prior Art Relied Upon: Richardson (Patent 7,836,494).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Richardson discloses every limitation of the challenged claims. Richardson teaches a "trusted agent" residing in the operating system of a host machine that detects and intercepts communications to or from an application. This trusted agent gathers information about the attempted communication, makes an "autonomous decision" about whether to permit it by consulting an access list or credentials, and does so before the communication is sent to the network. This process was asserted to be the same as the ’923 patent's claimed method of diverting a message to a controlling entity to control an application's behavior in a predetermined manner before network transmission. Richardson’s disclosure of authenticating and signing packets was mapped to claim limitations requiring message modification.

Ground 2: Anticipation over D'Aviera - Claims 1-2, 4-5, 8, 24-26, 31, 39, and 40 are invalid under 35 U.S.C. § 102(a).

  • Prior Art Relied Upon: D'Aviera (U.K. Application No. GB 2376766A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that D'Aviera teaches a system for controlling the transmission of information from a computer. It discloses an "isolation engine" that intercepts all outbound operations of an application program attempting to send messages to the internet. This engine functions as the claimed "controlling entity" by checking the message against a "privacy list" of predetermined criteria. If the message content matches an item on the list, the engine prevents the message from being sent. Petitioner argued this directly maps to the claims' requirements of diverting a message from an application to a controlling entity and, based on the message, controlling the application’s behavior before transmission to the network.

Ground 3: Obviousness over Calder in view of Richardson - Claims 1-5, 8-9, 24-26, 31, 33, 39, and 40 are obvious over Calder in view of Richardson.

  • Prior Art Relied Upon: Calder (Application # US 2002/0065869) and Richardson (Patent 7,836,494).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Calder teaches a system for securing an application by using an "interception module" that acts as a "virtual layer" between an application and the operating system. This module intercepts system calls made by the application to prevent inappropriate behavior. Richardson teaches a similar architecture using a "trusted agent" to control network communications from applications by authenticating them and enforcing policies.
    • Motivation to Combine: Petitioner argued that both Calder and Richardson addressed the identical "drawback" of securing applications running on a terminal connected to a network. A person of ordinary skill in the art (POSITA) would have been motivated to combine Calder's teachings of a system-call based interception module with Richardson's specific application of a trusted agent in a network security environment. This combination would have been a predictable solution to the known problem of controlling application behavior, simply applying Calder’s interception techniques to the specific network messaging context of Richardson.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references because it involved applying a known security technique (Calder's interception) to a similar and analogous field (Richardson's network security) to achieve a predictable result.

  • Additional Grounds: Petitioner asserted an additional anticipation challenge under § 102(e) against claims 24, 26, and 40 based on Williamson (Application # 2004/0103159), which discloses a Viral Anti-propagation Software (VAPS) that monitors and restricts outbound requests from applications based on policy rules.

4. Key Claim Construction Positions

  • "diver[ting] a message of the messages": Petitioner proposed this term be construed as "transferring at least some of the messages to a different destination than their intended destination." This construction was central to mapping prior art interception modules to the claims.
  • "based on the message, control[ing]...whether the application program behaves in a predetermined manner": Petitioner proposed this be construed as "exerting control of the behavior of the application program based on a message diverted to the controlling entity," where such control includes "determining an appropriate disposition" of the message (e.g., transmitting, prohibiting, or modifying it).
  • Means-Plus-Function Terms: Petitioner identified "diverting means" (claims 33, 40), "authentication means" (claim 33), "connection set-up means" (claim 33), and "sending means" (claim 39) as means-plus-function terms. It proposed they be construed as software executing the claimed function and its equivalents, as described in the specification.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-5, 8-9, 24-26, 31, 33, 39, and 40 of the ’923 patent as unpatentable.